Petition for Post-Grant Review
`of U.S. Patent No. 9,879,471
`
`
`
`
`
`Filed on behalf of EMI PORTA OPCO, LLC
`
`
`By: Edward L. Bishop
`
`Bishop Diehl & Lee, Ltd.
`
`1475 East Woodfield Road, Suite 800
`
`Schaumburg, IL 60173
`
`Ph: 847-969-9123
`
`Fax: 847-969-9124
`
`email: ebishop@bdl-iplaw.com
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`EMI PORTA OPCO, LLC,
`Petitioner
`
`v.
`
`WOODFOLD MANUFACTURING, INC.,
`Patent Owner
`
`U.S. Patent 9,879,471 Appln. No. 15/171,478 filed June 2, 2016
`Issued January 30, 2018
`Title: REINFORCED FOLDING DOOR AND HINGE ASSEMBLY
`
`__________________________________
`
`Petition for Post-Grant Review
`Under 35 U.S.C. §§ 321-328 and 37 C.F.R. § 42.200 et seq.
`
`

`

`
`
`TABLE OF CONTENTS
`
`Petition for Post-Grant Review
`of U.S. Patent No. 9,879,471
`
`I.
`
`II.
`
`COMPLIANCE WITH REQUIREMENTS FOR POST-GRANT
`REVIEW .......................................................................................................... 1
`A.
`Certification of Petitioner’s Standing Under 37 C.F.R. § 42.201 ......... 1
`B.
`Time for Filing Petition for Post-Grant Review Under 37 C.F.R. §
`42.202 .................................................................................................... 1
`Identification of Challenge Under 37 C.F.R. § 42.204(b) and Relief
`Requested .............................................................................................. 2
`Eligibility of Challenged Claims for Post-Grant Review ..................... 3
`D.
`E. Mandatory Notices Under 37 C.F.R. § 42.8 ......................................... 4
`1. Real Parties in Interest ..................................................................... 4
`2. Related Matters ................................................................................ 4
`3. Lead and Back-up Counsel .............................................................. 4
`4. Service on Petitioner ........................................................................ 5
`Fee for Post-Grant Review Under 37 C.F.R. § 42.15(b) ...................... 5
`F.
`SUMMARY OF ’471 PATENT DISCLOSURE AND ALLEGED
`INVENTIONS ................................................................................................. 6
`III. CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.204(b)(4) ..................11
`IV. LEVEL OF ORDINARY SKILL IN THE ART ...........................................11
`V.
`EFFECTIVE FILING DATE OF CHALLENGED CLAIMS ......................11
`A.
`Effective Filing Date of Claims 1-5 ....................................................12
`B.
`Effective Filing Date of Claims 6 and 7 ..............................................13
`VI. SUMMARY AND RELEVANCE OF THE PRIOR ART ...........................15
`A. Dixon – U.S. Patent No. 3,232,333 .....................................................15
`B. Dagenais – U.S. Patent No. 3,901,302 ...............................................16
`Lamarre – U.S. Patent No.4,081,881 ..................................................17
`C.
`Ceron – U.S. Patent No. 4,284,118 .....................................................18
`D.
`
`C.
`
`ii
`
`

`

`
`
`Petition for Post-Grant Review
`of U.S. Patent No. 9,879,471
`
`VII.
`
`E. Marontate – U.S. Patent No. 4,922,987 ..............................................19
`Prudhomme – French Publication No. 2 638 778 ...............................20
`F.
`IT IS MORE LIKELY THAN NOT THAT AT LEAST ONE OF
`THE CHALLENGED CLAIMS OF THE ‘471 PATENT IS
`UNPATENTABLE ........................................................................................22
`A. Ground 1: Claims 1, 3 and 5 Are Anticipated under § 102(a)(1) by
`U.S. Patent No. 4,081,881 (“Lamarre”) ..............................................22
`B. Ground 2: Claims 2, 4, 6 and 7 Are Obvious Under § 103(a) Over
`Lamarre Alone Or In View Of Marontate ...........................................34
`C. Ground 3: Claims 1 and 5 Are Anticipated Under 35 U.S.C. §
`102(a)(1) over French Publication No. 2 638 778 (“Prudhomme”) ...48
`D. Ground 4: Claims 3, 4 and 6 Are Unpatentable Under 35 U.S.C. §
`103 over Prudhomme In View of Marontate ......................................56
`Ground 5: Claims 1, 3, and 4 Are Unpatentable Under §103 Over
`Marontate In View Of Ceron ..............................................................67
`VIII. CERTIFICATION UNDER 37 C.F.R. § 42.24(d) ........................................74
`IX. CONCLUSION ..............................................................................................75
`
`
`
`E.
`
`
`
`iii
`
`

`

`Petition for Post-Grant Review
`of U.S. Patent No. 9,879,471
`
`
`
`
`
`
`
`PETITIONER’S EXHIBIT LIST
`
`EXHIBIT
`1001
`1002
`
`1003
`1004
`1005
`1006
`1007
`1008
`1009
`1010
`
`DESCRIPTION
`U.S. Patent Number 9,879,471 to Lewis et al. (the ’471 Patent)
`File history of ’471 Patent (U.S. Patent Application No.
`15/171,478)
`U.S. Provisional Patent Application No. 62/235,455
`U.S. Patent No. 3,232,333 (“Dixon”)
`U.S. Patent No. 3,901,302 (“Dagenais”)
`U.S. Patent No. 4,081,881 (“Lamarre”)
`U.S. Patent No. 4,284,118 (“Ceron”)
`U.S. Patent No. 4,922,987 (“Marontate”)
`French Publn No. 2 638 778 (“Prudhomme”)
`Certified English Translation of French Publn No. 2 638 778
`
`
`
`iv
`
`

`

`Petition for Post-Grant Review
`of U.S. Patent No. 9,879,471
`
`
`
`TABLE OF AUTHORITIES
`
`Cases
`
`Hyatt v. Boone, 146 F.3d 1348, 1354-55 (Fed. Cir. 1998) ......................................12
`
`KSR International Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) ..........................36
`
`Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1571 (Fed. Cir. 1997) ..................12
`
`Tronzo v. Biomet, Inc., 156 F.3d 1154, 1158 (Fed. Cir. 1998) ................................12
`
`Tronzo, 156 F.3d at 1158 .........................................................................................12
`
`Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991) ........................12
`
`Statutes
`
`35 U.S.C. § 102 .......................................................................................................... 2
`
`35 U.S.C. § 102(a)(1) ....................................................................................... passim
`
`35 U.S.C. § 103 ............................................................................................. 2, 47, 56
`
`35 U.S.C. § 120 ........................................................................................................12
`
`35 U.S.C. §§ 102 and 103 ........................................................................................75
`
`35 U.S.C. 102(a)(1) ..................................................................................................15
`
`Section 3(n)(1) of the America Invents Act. Leahy–Smith America Invents Act,
`Pub. L. No. 112-29, § 3(n)(1), 125 Stat. 284, 293 (2011) ...................................... 3
`
`
`Other Authorities
`
`37 C.F.R. § 42.15(b) .................................................................................................. 5
`
`37 C.F.R. § 42.201 ..................................................................................................... 1
`
`37 C.F.R. § 42.202 ..................................................................................................... 1
`
`37 C.F.R. § 42.204(b) ................................................................................................ 2
`
`v
`
`

`

`Petition for Post-Grant Review
`of U.S. Patent No. 9,879,471
`
`
`
`37 C.F.R. § 42.204(b)(4) ..........................................................................................11
`
`37 C.F.R. § 42.24(d) ................................................................................................74
`
`37 C.F.R. § 42.8 ......................................................................................................... 4
`
`
`vi
`
`

`

`Petition for Post-Grant Review
`of U.S. Patent No. 9,879,471
`
`
`
`Petitioner EMI PORTA OPCO, LLC (“Petitioner”) requests post-grant
`
`review of claims 1-7 of U.S. Patent No. 9,879,471 (“the ‘471 Patent”). Ex. 1001,
`
`’471 Patent. As shown in this Petition, the claims of the ‘471 Patent are
`
`unpatentable due to anticipation and obviousness. Accordingly, Petitioner
`
`therefore requests cancellation of Claims 1-7.
`
`I.
`
`COMPLIANCE WITH REQUIREMENTS FOR POST-GRANT
`REVIEW
`A. Certification of Petitioner’s Standing Under 37 C.F.R. § 42.201
`Petitioner certifies that neither the Petitioner nor any of its privies are barred
`
`or estopped from requesting post-grant review challenging the claims of the ’471
`
`Patent. Specifically, Petitioner states: (1) neither Petitioner nor any of its privies
`
`own the ’471 Patent; and (2) neither Petitioner nor any of its privies have filed a
`
`civil action challenging the validity of any claim of the ’471 Patent.
`
`B.
`
`Time for Filing Petition for Post-Grant Review Under 37 C.F.R. §
`42.202
`
`The ’471 Patent issued on January 30, 2018, and the present Petition is being
`
`filed on or before the date that is nine months after the date of the grant of the
`
`patent, or October 30, 2018.
`
`
`
`
`
`1
`
`

`

`Petition for Post-Grant Review
`of U.S. Patent No. 9,879,471
`
`
`
`C.
`
`Identification of Challenge Under 37 C.F.R. § 42.204(b) and Relief
`Requested
`
`In view of the prior art and supporting declarations, Claims 1-7 of the ’471
`
`Patent (the “Challenged Claims”) are unpatentable as anticipated under 35 U.S.C.
`
`§ 102 or obvious under 35 U.S.C. § 103. Accordingly, all of the Challenged
`
`Claims should be canceled. 37 C.F.R. § 42.204(b). The following is a list of prior
`
`art patents and printed publications that anticipate or render obvious Claims 1-7:
`
`Exhibit
`
`
`
`Description
`
`
`
`
`
` Publication /Issue Date
`
`Ex. 1004 U.S. Patent No. 3,232,333 (“Dixon”)
`
`February 1, 1966
`
`Ex. 1005 U.S. Patent No. 3,901,302 (“Dagenais”)
`
`August 26, 1975
`
`Ex. 1006 U.S. Patent No. 4,081,881 (“Lamarre”)
`
`April 4, 1978
`
`Ex. 1007 U.S. Patent No. 4,284,118 (“Ceron”)
`
`August 18, 1981
`
`May 8, 1990
`Ex. 1008 U.S. Patent No. 4,922,987 (“Marontate”)
`Ex. 1009 French Publn No. 2 638 778 (“Prudhomme”)1 May 11, 1990
`
`
`
`
`
`
`
`
`
`
`1 In accordance with Rule 42.63, a Certified English Translation of the ‘778
`Publication is provided as Exhibit 1010.
`
`2
`
`

`

`Petition for Post-Grant Review
`of U.S. Patent No. 9,879,471
`
`
`Petitioner requests cancelation of Claims 1-7 on the following grounds:
`
`Ground Claims
`1
`1, 3, 5
`2
`2, 4, 6, 7
`
`3
`4
`
`5
`
`1, 5
`3, 4, 6, 7
`
`1, 3, 4
`
`Description
`Anticipated under 35 U.S.C. § 102(a)(1) by Lamarre
`Obvious under 35 U.S.C. § 103 over Lamarre in view of
`Marontate
`Anticipated under 35 U.S.C. § 102(a)(1) by Prudhomme
`Obvious under 35 U.S.C. § 103 over Prudhomme in view
`of Marontate
`Obvious under 35 U.S.C. § 103 over Marontate in view
`of Ceron
`
`
`
`Petitioner’s identification of where each element of the Challenged Claims is
`
`found in the prior art, a description of how the claims fail to comply with 35
`
`U.S.C. § § 102 and 103, and a description of the evidence relied upon are
`
`addressed in Section VII of this Petition.
`
`D. Eligibility of Challenged Claims for Post-Grant Review
`As discussed in Section V below, the Challenged Claims have an Effective
`
`Filing date of no earlier than SEPTEMBER 30, 2015, and are therefore eligible
`
`for post-grant review by the Board pursuant to Section 3(n)(1) of the America
`
`Invents Act. Leahy–Smith America Invents Act, Pub. L. No. 112-29, § 3(n)(1),
`
`125 Stat. 284, 293 (2011).
`
`
`
`3
`
`

`

`Petition for Post-Grant Review
`of U.S. Patent No. 9,879,471
`
`
`
`E. Mandatory Notices Under 37 C.F.R. § 42.8
`1. Real Parties in Interest
`
`The real party in interest is EMI PORTA OPCO, LLC which has its
`
`principal place of business located at 250 Hamilton Road, Arlington Heights,
`
`Illinois.
`
`2. Related Matters
`
`The ‘471 Patent is being asserted in the following patent infringement
`
`lawsuit:
`
`WOODFOLD MFG., INC., Plaintiff, v. EMI PORTA OPCO, LLC,
`Defendant, IN THE UNITED STATES DISTRICT COURT FOR THE
`NORTHERN DISTRICT OF ILLINOIS, EASTERN DIVISION,
`Case No.: 18-cv-03984 before the Honorable Robert M. Dow, Jr.
`
`This case may affect, or be affected by, decisions in this proceeding.
`
`3. Lead and Back-up Counsel
`
`Lead Counsel
`Edward L. Bishop
`USPTO Registration No. 39,110
`ebishop@bdl-iplaw.com
`Tel.: (847) 969-9123
`
`BISHOP DIEHL & LEE, LTD
`1475 E. Woodfield Rd., Suite 800
`Schaumburg, IL 60173
`Fax: (847-969-9124)
`
`4
`
`
`
`
`
`Back-Up Counsel
`Nicholas S. Lee
`USPTO Registration No. 54,260
`nlee@bdl-iplaw.com
`
`Avani C. Macaluso
`USPTO Registration No. 61,496
`amacaluso@bdl-iplaw.com
`
`BISHOP DIEHL & LEE, LTD
`1475 E. Woodfield Rd., Suite 800
`Schaumburg, IL 60173
`Fax: (847-969-9124)
`
`
`
`
`
`

`

`Petition for Post-Grant Review
`of U.S. Patent No. 9,879,471
`
`
`
`
`4. Service on Petitioner
`
`Service on Petitioner may be made by mail, hand-delivery, or facsimile to
`
`Edward L. Bishop at the address and fax number specified above. Petitioner also
`
`consents to e-mail service at the following e-mail address: ebishop@bdl-
`
`iplaw.com, copy cmarcello@bdl-iplaw.com.
`
`Fee for Post-Grant Review Under 37 C.F.R. § 42.15(b)
`
`F.
`The required fees for requesting post-grant review, as specified in 37 C.F.R.
`
`§ 42.15(b), were paid at the time of filing this petition. Should any additional fees
`
`be required in association with this petition, the Board is hereby authorized to
`
`deduct such fees from Bishop Diehl & Lee’s Deposit Account No. 50-4487.
`
`
`
`
`
`
`
`5
`
`

`

`Petition for Post-Grant Review
`of U.S. Patent No. 9,879,471
`
`
`
`II. SUMMARY OF ’471 PATENT DISCLOSURE AND ALLEGED
`INVENTIONS
`
`The ‘471 patent, titled “Reinforced Folding Door and Hinge Assembly,” is
`
`generally directed to devices and methods for creating an accordion-type folding
`
`door for placement over openings, such as closets, elevators and room entrances.
`
`Ex. 1001, col. 1, lines 12-15.
`
`The ‘471 patent discloses and claims two different folding door systems 5 as
`
`well as a method of operation for an accordion type door. Both embodiments of
`
`the system 5 are comprised of elongated panels 10, 10a, 10b, 10c which are framed
`
`by cap pieces 12, 12 a, 12b, 12c on a top edge (see Ex. 1001, FIG. 1), framing
`
`members 20a-f along the side edges (see Ex. 1001, FIG. 1), and bottom cap pieces
`
`42 a-d on a bottom edge (see Ex. 1001, FIG. 7). Ex. 1001, col. 2, line 28-col. 3,
`
`line 3. Each of the side framing members 20x2 includes a longitudinally extending
`
`groove 24x, and a longitudinally extending flange 26x. Ex. 1001, col. 3, lines 14-
`
`24. The panels 10, 10a, 10b, 10c are separated by hinge knuckles 30a-x (see Ex.
`
`1001, FIG. 7). Ex. 1001, col. 3, lines 31-52. As constructed, the door assembly in
`
`each embodiment is supported and guided at a top within a track using mounting
`
`
`2 As there are several components of the disclosed invention which are
`differentiated in the ‘471 specification and drawings by only an appended letter
`(e.g., 30a, 30b, 30c, etc.), an “x” is used herein next to a specific component
`reference number to designate all such components having that reference number.
`
`6
`
`

`

`
`roller assemblies and at the bottom by a floor channel. Ex. 1001, col. 5, lines 30-
`
`Petition for Post-Grant Review
`of U.S. Patent No. 9,879,471
`
`40.
`
`A first embodiment of the system of the ‘471 patent is illustrated by the
`
`drawing of FIG. 9, reproduced below. The system is configured to produce a zig
`
`zag arrangement of panels when closed. Ex. 1001, col. 2, lines 31-35.
`
`
`
`
`
`
`
`
`
`
`
`
`
`With reference to FIG. 3 of the ‘471 patent reproduced below, a hinge
`
`knuckle 30x of the first embodiment includes a cylindrical central section 37x
`
`forming a central opening 32x and a longitudinally extending tongue 34x
`
`terminating in a bead 36x. Ex. 1001, col. 3, line 31 – col. 4, line 29. Each knuckle
`
`30x also includes an outwardly flared wedge section 35x. Ex. 1001, col. 4, lines 7-
`
`9.
`
`
`
`7
`
`

`

`Petition for Post-Grant Review
`of U.S. Patent No. 9,879,471
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`The knuckles 30x are positioned alternating, end-to-end between each pair
`
`of adjacent framing members 20a, 20c with a hinge pin 33x received within the
`
`central tubular opening 32x. Ex. 1001, col. 3, lines 53-58. The tongue 34x and
`
`bead 36x nest within the longitudinal groove 24x. Ex. 1001, col. 4, lines 10-19.
`
`The outwardly flared wedge section 35x extends beyond the extension flanges 26x
`
`of the side framing members 20x to limit the unfolding of the two adjacent panels
`
`to a maximum angle B1. Ex. 1001, col. 4, lines 47-54.
`
`Turning to FIG. 14 reproduced below, the second embodiment for system 5
`
`disclosed and claimed in the ‘471 patent includes a hinge knuckle 131x. Ex. 1001,
`
`col. 6, lines 14-15.
`
`
`
`
`
`
`
`
`
`8
`
`

`

`Petition for Post-Grant Review
`of U.S. Patent No. 9,879,471
`
`
`
`
`
`These alternate knuckles 131x are also positioned alternating, end-to-end
`
`between pairs of adjacent framing members 20b, 20d with a hinge pin 133x
`
`received within the central tubular opening 132x. Ex. 1001, col. 6, lines 15-30.
`
`The tongue 134x and bead 136x nest within the longitudinal groove 24x. Id., col. 6,
`
`lines 17-19. However, the knuckle 131x is without an outwardly flared wedge
`
`section that extends beyond the extension flanges 26x of the side framing members
`
`20x. Id., col. 6, lines 21-25. Nonetheless, the extension flanges 26x serve to limit
`
`the unfolding of the two adjacent panels to a maximum angle B2. Id., col. 6, lines
`
`25-30.
`
`
`
`As disclosed, a door assembly 5 is comprised of a plurality of panels 10x
`
`connected in a zig zag configuration using hinge assemblies 100x to connect
`
`adjacent panels 10x together. Ex. 1001, col. 6, line 31 – col. 8, line 24. The hinge
`
`assemblies 100x are comprised of a plurality of hinges, either hinge 30x or 131x,
`
`placed end-to-end and connected by pin 33x. Id., col. 7, lines 28-33.
`
`
`
`The knuckles 30x, 131x are disclosed to be 10 inches long. Ex. 1001, col. 4,
`
`line 34. This dimension is relevant only in that the “typical height door” is
`
`disclosed to be 78⅛ inches [Ex. 1001, col. 4, line 34] and, therefore, a stack of
`
`eight (8) knuckles would result in an 80 inch door hinge assembly, which would be
`
`too long. However, a stack of seven (7) knuckles would only result in a 70 inch
`
`9
`
`

`

`Petition for Post-Grant Review
`of U.S. Patent No. 9,879,471
`
`
`hinge assembly and be too short. Accordingly, the only options to achieve 78
`
`inches would be to use seven hinge knuckles and either cut an eighth hinge
`
`knuckle to be eight inches or, for better aesthetics, cut two hinge knuckles (top and
`
`bottom) to be four inches each (see Ex. 1001, col. 4, lines 33-45). Nonetheless,
`
`other than the dimensions of the opening to be covered by the door assembly 5,
`
`there is no criticality attached to the number or size of the hinge knuckles. In fact,
`
`the ‘471 patent states that “other sizes (and numbers) or hinge knuckle units may
`
`be employed.” Ex. 1001, col. 4, lines 45-46.
`
`
`
`The Patent Office examiner states under the heading of “Reasons for
`
`Allowance” that the prior art of record does not disclose or fairly teach:
`
`. . . an accordion type folding door system comprising adjacent panels and a
`hinge assembly disposed between a pair of the adjacent panels, the hinge
`assembly comprising a hinge pin and a plurality of hinge knuckles, at least one
`of the hinge knuckles including an outwardly flared wedge that extends between
`extension flanges of the adjacent panels, wherein outer surfaces of the wedge
`directly contact the extension flanges to limit angular un-folding of the panels.
`[See Ex. 1002, p. 22]
`
`The alleged patentable configuration is illustrated below; a reproduction of FIG. 3
`
`from the ‘471 patent.
`
`
`
`
`
`
`
`
`
`10
`
`

`

`Petition for Post-Grant Review
`of U.S. Patent No. 9,879,471
`
`
`III. CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.204(b)(4)
`The challenged claims do not contain any means-plus-function or step-plus-
`
`function limitations. A claim subject to post-grant review is to “be given its
`
`broadest reasonable construction in light of the specification of the patent in which
`
`it appears.” 37 C.F.R. § 42.200(b). Petitioner submits that all claim terms of the
`
`‘471 patent should be interpreted accordingly.
`
`IV. LEVEL OF ORDINARY SKILL IN THE ART
`A person of ordinary skill in the art at the time of the invention set forth in
`
`the ‘471 Patent would have been a person having general knowledge of folding
`
`door and hinge design. In particular, a person having ordinary skill in the art
`
`would have at least a bachelor degree in mechanical engineering or a similar field
`
`and at least 3 years experience in the design or construction of folding doors.
`
`Alternatively, a person of skill in the art would have at least 5 years experience in
`
`the design or construction of folding doors.
`
`V. EFFECTIVE FILING DATE OF CHALLENGED CLAIMS
`The ‘471 Patent claims priority to U.S. Provisional Application No.
`
`62/235,455, filed on September 30, 2015. Ex. 1002, p. 162. However, Petitioner
`
`contends that not all the Challenged Claims should be given an effective filing date
`
`of September 30, 2015.
`
`11
`
`

`

`Petition for Post-Grant Review
`of U.S. Patent No. 9,879,471
`
`
`
`Claims are only entitled to the filing benefit of a prior application if the
`
`application adequately discloses the subject matter of the claims. Specifically,
`
`“[f]or a claim in a later-filed application to be entitled to the filing date of an
`
`earlier application under 35 U.S.C. § 120 (1994), the earlier application must
`
`comply with the written description requirement of 35 U.S.C. § 112(a).” Tronzo v.
`
`Biomet, Inc., 156 F.3d 1154, 1158 (Fed. Cir. 1998) (citing Lockwood v. Am.
`
`Airlines, Inc., 107 F.3d 1565, 1571 (Fed. Cir. 1997)). The earlier application,
`
`therefore, must “contain a written description of the invention, and of the manner
`
`and process of making and using it.” Id. And the written description must be
`
`sufficient to reasonably convey to one of skill in the art that the inventor possessed
`
`the later-claimed subject matter at the time the patent application was filed. See
`
`Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991); Hyatt v. Boone,
`
`146 F.3d 1348, 1354-55 (Fed. Cir. 1998). A disclosure in a parent application that
`
`merely renders the later-claimed invention obvious is not sufficient to meet the
`
`written description requirement; it must describe the claimed invention with all its
`
`limitations. See Tronzo, 156 F.3d at 1158.
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`A. Effective Filing Date of Claims 1-5
`Petitioner concedes that Claims 1-5 of the Challenged Claims have an
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`effective filing date as of the date of filing of the ‘455 Provisional Application—
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`i.e., September 30, 2015.
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`Effective Filing Date of Claims 6 and 7
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`B.
`Claims 6 and 7 were not fully disclosed until the filing of U.S. Application
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`No. 15/171,478 on June 2, 2016. Accordingly, Petitioner contends that Claims 6
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`and 7 have an effective filing date of June 2, 2016.
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`Claim 6 is directed to “an accordion type folding door system” and, among
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`other limitations, requires a “first hinge assembly disposed between and
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`interconnecting a first pair of adjacent panels,…” and a “second hinge assembly
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`disposed between and interconnecting a second pair of adjacent panels,…” Ex.
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`1001, col. 9, line 24 – col. 10, line 30. That is, the claimed accordion type door
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`includes at least two distinct pairs of panels, with one pair of panels being hinged
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`together using a first hinge assembly and another pair being hinged together with a
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`second hinge assembly.
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`The first hinge assembly is substantially identical to the hinge assembly set
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`forth in Claims 1-5, including a hinge knuckle having “an outwardly flared wedge
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`that extends between and beyond the extension flanges of the panels…” Ex. 1001,
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`col. 8, line 33 – col. 9, line 24. This claimed hinge knuckle 30a used with the first
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`hinge assembly is described in at least paras. [0021] and [0026] of the ‘455
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`Provisional Application and is illustrated in at least FIG. 3, as shown below. Ex.
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`1003, p. 16, para. [0021] and p. 17, para. [0026].
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`[Ex. 1003, p. 23]
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`However, the second hinge assembly is claimed to include a hinge knuckle
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`that is “without an outwardly flared wedge that extends between and beyond the
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`extension flanges of the panels.” Ex. 1001, col. 10, lines 28-30. The configuration
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`of the second knuckle is not explicitly described in the ‘455 Provisional
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`Application (Ex. 1003). Rather, the configuration is described in U.S. Patent No.
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`4,922,987 to Marontate (Ex. 1008), which is incorporated by reference to both the
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`‘455 Provisional Application (Ex. 1003, p. 14, para. [0014]) and the ‘471 Patent
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`(Ex. 1001, col. 2, lines 29-31). The Marontate ‘987 patent does not disclose the
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`first hinge knuckle having a flared outwardly wedge that extends between and
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`beyond the extension flanges of the panels.
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`As Claim 6 requires an according type folding door having both adjacent
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`panels hinged with a first hinge assembly and adjacent panels hinged with a second
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`hinge assembly, the application must disclose such a configuration. However, as
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`previously noted, the ‘455 Provisional Application does not describe use of hinge
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`assemblies from the incorporated Marontate ‘987 patent, and Marontate does not
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`describe use of hinge assemblies having an outwardly flared wedge.
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`In fact, the first disclosure which describes the configuration of Claim 6 is
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`the application of the ‘471 patent filed on June 2, 2016. Accordingly, Claim 6 has
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`an effective filing date of June 2, 2016. Likewise, as Claim 7 depends from Claim
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`6, the effective filing date for Claim 7 is also June 2, 2016.
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`VI. SUMMARY AND RELEVANCE OF THE PRIOR ART
`The following chronological list of references are considered to be prior art
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`against the ‘471 patent under 35 U.S.C. 102(a)(1).
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`A. Dixon – U.S. Patent No. 3,232,333
`Dixon, a U.S. patent titled “Foldable Door With Hollow Double Hinge,” is
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`directed to foldable doors constructed of vertically elongated rigid panels having
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`flexible hinges to connect adjacent panels such that the panels can be folded into
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`an accordion fold when the door is closed. Ex. 1004, col. 1 lines 16-21. Dixon
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`discloses an embodiment of the foldable door having longitudinally extending
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`grooves (46) in the panels (42) with a corresponding tongue (58) and bead (60)
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`extending longitudinally from the hinge knuckle (hinge strip 40), as shown in FIG.
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`6 below. Ex. 1004, col. 4, lines 7-32. The disclosed hinge strip further includes
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`outwardly flared wedge (tapered flap 62), which cooperates with, and directly
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`contacts, the panel (42) to limit angular unfolding extension. Id., col. 4, lines 33-
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`Dixon issued on February 1, 1966, which is more than one year prior to the
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`effective filing date of the challenged claims. Accordingly, Dixon is prior art
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`under 35 U.S.C. § 102(a)(1).
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`B. Dagenais – U.S. Patent No. 3,901,302
`Dagenais, a U.S. patent titled “Protective Grille,” is directed to a foldable
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`closure structure having detachable hinge members to pivotally secure panels
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`together. Ex. 1005, col. 1, lines 6-8. The foldable closure structure 10 is formed
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`of a plurality of elongated panel members 12 connected along a vertical edge by
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`hinge means 14 which consist of a plurality of hinge members 15. Ex. 1005, col.
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`1, lines 59-68.
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`As shown in FIG. 4 below, the hinge members 15 are alternated and held
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`together by a hinge pin (rod 17) through a circular bore (18). Ex. 1005, col. 2, lines
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`1-11.
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`Ex. 1005, FIG. 4
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`Dagenais issued on August 25, 1975, which is more than one year prior to
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`the effective filing date of the challenged claims. Accordingly, Dagenais is prior
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`art under 35 U.S.C. § 102(a)(1).
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`Lamarre – U.S. Patent No.4,081,881
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`C.
`Lamarre, a U.S. patent titled “Folding Closure,” is directed to hinge
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`members for hinges used for folding closures. Ex. 1006, col. 1, lines 6-12. The
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`disclosed hinges comprise a plurality of identical hinge members 41 arranged end-
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`to-end and connected by a hinge pin 43. Id., col. 3, lines 10-15. The disclosed
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`hinge member 41 is best illustrated in FIG. 7, reproduced below. Each of the
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`disclosed hinge members 41 includes an outwardly extending tongue (T-shaped rib
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`member 69) and an outwardly flared wedge (web 63). Ex. 1006, col. 3, lines 34-40.
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`Lamarre further discloses an alternating arrangement of the hinge members as the
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`tongue engages an elongated groove (slot 83) of panel 21 (see FIG. 5). Ex. 1006,
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`col. 3, lines 40-49.
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`Lamarre issued on April 4, 1978, which is more than one year prior to the
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`effective filing date of the challenged claims. Accordingly, Lamarre is prior art
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`under 35 U.S.C. § 102(a)(1).
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`D. Ceron – U.S. Patent No. 4,284,118
`Ceron, a U.S. patent titled “Folding-Door Comprised Of Wooden Slats And
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`Hinges,” is directed to a folding door comprised of an array of slats connected by
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`wooden joints. Ex. 1007, col. 1, lines 6-10. Ceron discloses panels (slats 1)
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`having extension flanges (longer web 20) which cooperate and contact the flared
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`wedge of hinge knuckle (header 18), as shown in FIG. 2 below, to limit angular
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`unfolding. Ex. 1007, col. 3, lines 19-30.
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`Ceron issued on August 18, 1981, which is more than one year prior to the
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`effective filing date of the challenged claims. Accordingly, Ceron is prior art
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`under 35 U.S.C. § 102(a)(1).
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`E. Marontate – U.S. Patent No. 4,922,987
`Marontate, a U.S. patent titled “Secure Type Folding Door” and assigned to
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`the Assignee of the ‘471 patent, is directed to an accordion type folding door
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`assembly. Ex. 1008, col. 1, lines 7-8. The assembly is comprised of a plurality of
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`elongated panels 10 hinged together by a plurality of hinge knuckles 30 using a
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`tongue and groove connection. Ex. 1008, col. 3, lines 19-30. As shown in FIG. 3
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`below, the hinge knuckles are pinned together using hinge pin 32. Id., col. 3, line
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`16. The panels 10 include side frame 20 having longitudinally extending flange
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`26. Ex. 1008, col. 2, lines 58-61.
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`Marontate issued on May 8, 1990, which is more than one year prior to the
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`effective filing date of the challenged claims. Accordingly, Marontate is prior art
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`under 35 U.S.C. § 102(a)(1).
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`Prudhomme – French Publication No. 2 638 778
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`F.
`Prudhomme, a French published application titled “Joint For A Door Leaf
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`and A Leaf And Door Of An Elevator Cab Containing it,” is directed to a joint
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`(i.e., hinge) for an accordion type foldable door for an elevator cab. (p. 1, lines 1-
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`3). Ex. 1010, p. 2, lines 1-6. The disclosed joint (i.e., hinge), as shown in FIG. 3
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`(Ex. 1010, p. 10), is comprised of a plurality of sleeves/joint elements (5) each
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`having a rib (6) which alternate to connect to a groove (7) in side panel elements
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`(3a and 3b). Ex. 1010, p. 4, lines 25-36.
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`Prudhomme further discloses the use of a joint (19) which contacts and
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`cooperates with projections (14) of the panel elements (3a and 3b). Ex. 1010, p. 4,
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`line 34 – p. 5, line 4.
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`Prudhomme was published on May 11, 1990, which is more than one year
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`prior to the effective filing date of the challenged claims. Accordingly,
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`Prudhomme is prior art under 35 U.S.C. § 102(a)(1).
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`VII.
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`IT IS MORE LIKELY THAN NOT THAT AT LEAST ONE
`OF THE CHALLENGED CLAIMS OF THE ‘471 PATENT
`IS UNPATENTABLE
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`A. Ground 1: Claims 1, 3 and 5 Are Anticipat