ANLI SPRING CO., LTD.

Patent Trials and Appeals Board

Apr 8, 2021

PGR2020-00001 (P.T.A.B. Apr. 8, 2021)

Trials@uspto.gov Paper 33
571-272-7822 Date: April 8, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

DONG GUAN LEAFY WINDOWARE CO. LTD.,
Petitioner,

v.

ANLI SPRING CO., LTD. and
HSIEN-TE HUANG,
Patent Owner.
____________

PGR2020-00001
Patent 10,174,547 B2

____________

Before GEORGE R. HOSKINS, MICHAEL L. WOODS, and
SCOTT C. MOORE, Administrative Patent Judges.

HOSKINS, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining Some Challenged Claims Unpatentable
Denying Patent Owner’s Motion to Amend
35 U.S.C. § 328(a)
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I. INTRODUCTION
Dong Guan Leafy Windoware Co. Ltd. (“Petitioner”) filed a Petition
(Paper 1, “Pet.”) pursuant to 35 U.S.C. §§ 321–329 to institute a post-grant
review of claims 1–4 of U.S. Patent No. 10,174,547 B2 (Ex. 1001, “the
’547 patent”). The Petition asserted nine grounds challenging the
patentability of these four claims. See Pet. 2–3. Anli Spring Co., Ltd. and
Hsien-Te Huang (collectively, “Patent Owner”) oppose these challenges.
At the institution stage, we determined it was more likely than not that
claims 1–4 were unpatentable based on only two of the Petition’s nine
grounds. See, e.g., Paper 7 (“Institution Decision” or “Inst. Dec.”), 13–14;
35 U.S.C. § 324(a). Therefore, we instituted a trial as to all nine grounds,
pursuant to USPTO policy implementing SAS Inst., Inc. v. Iancu, 138 S. Ct.
1348 (2018) (“SAS”). See Inst. Dec. 13–14, 53.
Now, upon review of the parties’ post-institution arguments and the
full evidentiary record, we determine Petitioner has not shown by a
preponderance of the evidence that claims 1 and 3 are unpatentable under
any ground, and has shown by a preponderance of the evidence that claims 2
and 4 are unpatentable as indefinite, the only challenge to those claims.
Due to the latter conclusion, we also consider Patent Owner’s
Contingent Motion to Amend the ’547 patent, proposing to replace claims 2
and 4 of the ’547 patent with substitute claims 5 and 6. Upon review of the
parties’ arguments and the full evidentiary record, we deny the Motion to
Amend, because proposed substitute claims 5 and 6 seek to add new matter
to the application leading to the issuance of the ’547 patent, and lack written
description support in the ’547 patent.
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II. BACKGROUND
A. Real Parties in Interest and Related Proceedings
Petitioner identifies Dong Guan Leafy Windoware Co. Ltd. as the sole
real party in interest for Petitioner. Pet. 1. Patent Owner identifies Anli
Spring Co., Ltd. and Hsien-Te Huang as the owners of the ’547 patent, and
the real parties in interest for Patent Owner. Paper 12, 2. The parties
identify Union Winner Int’l Co. Ltd. v. Hsien-Te Huang, Anli Spring Co.,
Ltd., and Elegant Windows Inc., No. 3:19-cv-2060 (N.D. Tex.), as a matter
that might affect, or be affected by, a decision in this proceeding. Pet. 1;
Paper 12, 2. This District Court litigation has been dismissed voluntarily by
joint stipulation of the parties. See Paper 12, 2; Union Winner, ECF No. 29
(filed Jan. 27, 2020).
B. The ’547 Patent
The ’547 patent is directed to a spring motor using a coil spring that
can automatically fold back a curtain. Ex. 1001, code (57).
Prosecution of the ’547 patent began with the filing of a patent
application in Taiwan. Id. at code (30); Ex. 2016, 16, 65, 96, 107. As often
occurs, the translation of the parent application’s disclosure (Ex. 2016,
68–95) into English (id. at 27–63) for filing in the United States appears to
have included a few awkward translations of technical terms. Our
discussion of the ’547 patent and claims throughout this Decision remains
faithful to the terms used in the ’547 patent.
1. Admitted Prior Art to the ’547 Patent
The ’547 patent illustrates and describes the structure and operation of
a prior art curtain set. Ex. 1001, Figs. 1–5, 1:16–3:53, 4:29–38. Figures 2
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and 3 illustrate the structure of spring motor 2 for providing a feedback force
to the curtain set, and are reproduced below.

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Figure 2 is a three-dimensional structural view, and Figure 3 is a top view,
of spring motor 2. Id. at 4:31–34. Spring motor 2 applies a feedback force
to two pull cords 12, which support a lower beam and curtain pieces
supported on the lower beam. Id. at Figs. 1 & 4–5 (illustrating spring
motor 2, lower beam 14, and curtain 15 with curtain pieces 150), 1:19–29,
2:32–53. Figure 5 illustrates that, as the lower beam moves down away
from spring motor 2, more and more curtain pieces are supported by ladder
strings rather than the lower beam. Id. at Fig. 5, 3:6–19.
When the lower beam is at its uppermost position to support all of the
curtain pieces, almost the entire length of equal-torque coil spring 20 is
wound on axle 23, with a small portion of spring 20 received on coiling
axle 24. Id. at Figs. 1 & 3, 1:53–63, 2:3–11. When a user grasps the lower
beam and pulls it downward to close the curtain, cords 12 unwind from reel
drums 21 and 22. Id. at 1:37–40. The resulting rotation of reel drums 21
and 22 causes equal-torque coil spring 20 to unwind from axle 23 and wind
on to coiling axle 24, due to the interactions among chainrings 210, 220,
230, and 240. Id. at Fig. 3, 1:53–2:6. The user’s pulling down of the lower
beam thereby stores the energy of equal-torque coil spring 20 as it winds on
to coiling axle 24, so the tendency of coil spring 20 to wind back on to
axle 23 provides a feedback force that: (a) holds the lower beam and the
curtain pieces supported on the lower beam at a height selected by the user,
and (b) assists the user to raise the lower beam to open the curtain. Id.
at 1:17–37, 2:6–17, 2:32–42, 2:54–60, 3:20–30.
Coil spring 20 of the disclosed prior art curtain set 1 is an
“equal-torque” spring, meaning the spiral shape of spring 20 “generates an
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effective torque curve that is close to being horizontal.” Id. at 1:30–32,
1:45–52.
2. Invention of the ’547 Patent
The claims of the ’547 patent (Ex. 1001, 7:62–8:64) differ from the
above-described admitted prior art in two principal respects.
First, the ’547 patent discloses an unequal-torque coil spring 30,
which has “various curvatures in different sections of a reed strip
longitudinally” to provide an “unequal feedback torque” in a spring motor.
Id. at 3:57–4:11, 4:64–5:6, 5:65–6:14 (describing Fig. 11). Figures 6–8 of
the ’547 patent are reproduced below.

These figures illustrate different sections of reed strip 3 that combine to form
unequal-torque coil spring 30, with each section having different
curvatures A1, A2, A3, and A4. Id. at 5:7–18.
Second, the ’547 patent discloses a specific torque profile provided by
the different curvatures of unequal-torque coil spring 30. Id. at 5:19–41.
Figure 12 of the ’547 patent is reproduced below.
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Figure 12 illustrates a “feedback torque curve” (at the left) which
“corresponds to the requirements for the curtain folding process in a curtain
set [1]” (at the right). Id. at 4:55–57, 6:15–16. Figure 12 correlates various
lengths L1–L5 of reed strip 3 forming unequal-torque coil spring 30 to
various heights H1–H5 of lower beam 14 below spring motor 2
incorporating spring 30. Id. at 5:19–41 (Fig. 9), 6:15–19 (Fig. 12). Strip 3
has an initial curvature A0 between the end that is joined to coiling axle 24
(the origin of Figure 12) and a first length L1, generating a suddenly
increasing torque TC. Id. at 5:19–23, Fig. 9. Strip 3 has a first curvature A1
between first length L1 and second length L2, generating a first torque T1
“of a slowly increasing arc.” Id. at 5:23–26, 6:27–34, 6:44–51, Fig. 9.
Strip 3 has a second curvature A2 between second length L2 and third
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length L3, generating a second torque T2 which “is a constant torque which
is of a curve extending from a highest torque output of the first torque T1.”
Id. at 5:27–31, 6:35–44, Fig. 9. Strip 3 has a third curvature A3 between
third length L3 and fourth length L4, generating a third torque T3 which “is
a decreasing torque.” Id. at 5:31–34, 6:52–54, Fig. 9. Strip 3 has a fourth
curvature A4 between fourth length L4 and fifth length L5, generating a
fourth torque T4 which is less than the third torque T3. Id. at 5:34–38,
6:54–57, Fig. 9.
C. The Challenged Claims of the ’547 Patent
All four claims of the ’547 patent are challenged in the Petition. See
Pet. 2–3. Claim 1 illustratively recites, with line breaks and indenting added
to improve readability:
1. An unequal-torque coil spring, wherein feedback torque is
provided in response to requirements of unequal forces at
a loading end, comprises
a long strip of reed strip;
the reed strip has different sections longitudinally disposed
from a front end to a rear end thereof, and the sections have
different curvatures formed by getting coiled and bent
inwards to generate different torque;
an exposed end serving as a joining end,
wherein the reed strip has torque distributed as follows:
an increasing torque is implemented between the joining
end and a first length,
a first torque that follows the increasing torque and slowly
increases is implemented between the first length and
a second length,
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a second torque that follows the first torque and is equal to
a maximum value of the first torque is implemented
between the second length and a third length,
a third torque that follows the second torque and gradually
decreases is implemented between the third length and a
fourth length, and
a fourth torque that follows a minimum value of the third
torque and gradually decreases is implemented between
the fourth length and a fifth length.
Ex. 1001, 7:63–8:17 (line breaks and indenting added). Claim 2 depends
from claim 1, and adds “wherein the unequal-torque coil spring generates
usable feedback torque values with a ratio between 4:1.” Id. at 8:18–20.
Claim 3 is independent, and recites “[a] spring motor being applied in
a curtain set,” wherein the motor comprises several elements. Id. at
8:21–62. One of the elements is an unequal-torque coil spring, having the
same properties recited in claim 1. Id. at 8:40–58. Claim 4 depends from
claim 3, and adds “wherein the unequal-torque coil spring generates usable
feedback torque values with a ratio between 4:1.” Id. at 8:63–65.
D. The Petition’s Grounds of Unpatentability
The Petition presents nine grounds challenging claims 1–4 of the
’547 patent, as reflected in the following table. See Pet. 2–3.
Claim(s) Challenged 35 U.S.C. § Reference(s) / Basis
1. 1, 3 102(a)(2) Lin ’9431

1 Ex. 1003, US 2011/0277943 A1, published Nov. 17, 2011.
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Claim(s) Challenged 35 U.S.C. § Reference(s) / Basis
2. 1, 3 103 Lin ’943, Yamashita2
3. 1, 3 103 Admitted Prior Art3, Lin ’943
4. 1 103 Maeda4
5. 3 103 Lin ’1095, Maeda
6. 1 103 Wang Drawing6
7. 3 103 Ruggles7, Wang Drawing
8. 2, 4 112(b) Indefiniteness
9. 1 102(a)(1) On Sale Bar (Wang Springs)

E. Witness Testimony
Petitioner relies on the declaration testimony of Mingshao Zhang,
Ph.D., in support of the asserted unpatentability of claims 1–4 of the
’547 patent (Exhibits 1015 and 1016), and in opposition to the Motion to
Amend (Exhibits 1016 and 1017).
Patent Owner relies on the declaration testimony of Glenn. E. Vallee,
Ph.D., in opposition to the asserted unpatentability of claims 1–4 of the

2 Exs. 1007 (English translation) & 1008 (original), JP S53-113955,
published Oct. 4, 1978.
3 Petitioner cites the ’547 patent’s Figures 1–5, and written description at
column 1, line 16 through column 3, line 44, as admitted prior art. See
Pet. 41–43.
4 Exs. 1004 (English translation) & 1005 (original), JP S53-115442,
published Oct. 7, 1978.
5 Ex. 1006, US 2008/0185109 A1, published Aug. 7, 2008.
6 Exs. 1010 (English translation) & 1011 (original), engineering drawing of
a spiral spring by Wei Wang dated Sept. 17, 2015.
7 Ex. 1009, US 6,289,965 B1, issued Sept. 18, 2001.
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’547 patent (Exhibits 2001 and 2020), and in support of the Motion to
Amend (Exhibits 2020 and 2021).
The record of this proceeding does not contain any cross-examination
of either witness concerning the foregoing declaration testimony.
III. POST-GRANT REVIEW TIMELINESS AND ELIGIBILITY
A. Timeliness of the Petition
A petition for post-grant review of a patent “may only be filed not
later than the date that is 9 months after the date of the grant of the patent.”
35 U.S.C. § 321(c). In the Institution Decision, we concluded the Petition
was filed on October 8, 2019, which was not later than 9 months after the
grant of the ’547 patent on January 8, 2019, and therefore timely. See Inst.
Dec. 12. Neither party has challenged that determination during trial, and
we maintain it here.
B. Post-Grant Review Eligibility of the ’547 Patent
The post-grant review provisions of 35 U.S.C. §§ 321–329 apply to
patents subject to the first-inventor-to-file provisions of the Leahy-Smith
America Invents Act8 (“the AIA”). See AIA § 6(f)(2)(A). In the Institution
Decision, we concluded the earliest potential effective filing date for the
’547 patent is March 22, 2016, after the March 16, 2013, effective date of
the AIA’s first-inventor-to-file provisions. See Inst. Dec. 12–13. Neither
party has challenged that determination during trial, and we maintain it here.

8 Pub. L. No. 112-29, 125 Stat. 284 (2011).
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IV. CHALLENGES TO THE ’547 PATENT (CLAIMS 1–4)
A. Introduction
The Petition asserts Grounds 1–9 challenging the patentability of
claims 1–4 in the ’547 patent. See supra Section II.D (identifying
Grounds 1–9).
At the institution stage, we determined it was more likely than not that
claims 1–4 were unpatentable based on Ground 2 (obviousness of claims 1
and 3 over Lin ’943 and Yamashita) and Ground 8 (indefiniteness of
claims 2 and 4). See Inst. Dec. 20–24, 33–36. We also determined the
preliminary record did not establish it was more likely than not that the
’547 patent claims were unpatentable under any one of the other seven
Grounds. See id. at 24–33, 36–53. We instituted a trial as to all nine
Grounds, pursuant to USPTO policy implementing SAS. See id. at 13–14,
53.
Patent Owner then filed a Patent Owner Response (Paper 17,
“PO Resp.”) to the Petition. Petitioner filed a Reply (Paper 19, “Reply” or
“Pet. Reply”) to the Patent Owner Response. Patent Owner filed a Sur-reply
(Paper 22, “Sur-reply”) to the Reply. We held an oral hearing, for which the
transcript was entered into the record (Paper 32, “Tr.”).
Petitioner bears the burden of proving unpatentability of the
challenged ’547 patent claims, and this burden of persuasion never shifts to
Patent Owner. See 35 U.S.C. § 326(e); Dynamic Drinkware, LLC v. Nat’l
Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (applying 35 U.S.C.
§ 316(e), which employs language identical to § 326(e)).
This Decision is a final written decision under 35 U.S.C. § 328(a) and
37 C.F.R. § 42.73 as to the patentability of claims 1–4 of the ’547 patent.
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For reasons provided below, we determine Petitioner has not shown by a
preponderance of the evidence that claims 1 and 3 are unpatentable under
any ground, and has shown by a preponderance of the evidence that claims 2
and 4 are unpatentable as indefinite.
B. Level of Ordinary Skill in the Art
Petitioner contends a person having ordinary skill in the art pertaining
to the ’547 patent would possess a bachelor’s degree in engineering, with
coursework or equivalent experience in mechanical engineering, basic
mechanics, engineering mechanics, materials science, and engineering.
Pet. 11; Ex. 1015 ¶ 9.
Patent Owner asserts “Petitioner’s proposal is inadequate because it
ignores that the field of the ’547 Patent specifically relates to torsional
spring design and spring motors relying on torsional springs.” PO Resp.
13–14 (emphasis added) (citing Ex. 1001, 1:7–14); Ex. 2001 ¶¶ 44–46.
According to Patent Owner, a person having ordinary skill in the art
pertaining to the ’547 patent would have “at least a bachelor’s degree in
mechanical engineering, materials engineering, or similar discipline with
course work relating to torsion spring analysis.” PO Resp. 14–15 (emphasis
added); Ex. 2001 ¶ 47.
We considered these same arguments at the institution stage, and
concluded “the parties agree as to the level of ordinary skill, except that
Patent Owner would require education or experience in torsion spring
design.” Inst. Dec. 11. We found that we would have reached the same
decision under either of the parties’ definitions, so we did not adopt one over
the other. See id.
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Petitioner does not address the level of ordinary skill in the art in its
post-institution arguments. Patent Owner continues to “believe[] its
proposed definition is more appropriate,” but nonetheless “agrees with the
Board that neither party’s definition[] of a POSITA affects the outcome and
thus applies the Board’s position for purposes of this proceeding.” PO
Resp. 15.
Having reviewed the foregoing arguments, and the full evidentiary
record developed during trial, we agree with both parties that a person of
ordinary skill in the art would possess at least a bachelor’s degree in
engineering, with coursework or equivalent experience in mechanical
engineering, basic mechanics, engineering mechanics, materials science, and
engineering. As to the dispute over whether experience with torsion springs
is required, we would reach the same decision as set forth below regardless
of whether such experience is required. Therefore, we need not resolve that
particular dispute.
C. Claim Construction
We interpret the claims of the ’547 patent “using the same claim
construction standard that would be used to construe the claim in a civil
action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.200(b) (2019). This
“includ[es] construing the claim in accordance with the ordinary and
customary meaning of such claim as understood by one of ordinary skill in
the art and the prosecution history pertaining to the patent.” Id.
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1. “the sections have different curvatures formed by getting coiled and
bent inwards to generate different torque”
At the institution stage, the proper construction of the phrase in
claims 1 and 3 reciting that “the sections [of the reed strip] have different
curvatures formed by getting coiled and bent inwards to generate different
torque” was a significantly disputed issue. See Inst. Dec. 15–20. Based on
the preliminary record, we interpreted claims 1 and 3 to require a reed strip
having different sections, wherein each section has a different curvature
from the other sections, such that the different sections are capable of
generating different torques. See id. at 16–17, 19–20. We also determined
the process of manufacture recited in the claims, “formed by [the sections]
getting coiled and bent inwards,” cannot be used to distinguish the claims
from the prior art. See id. at 17–19, 20.
The Patent Owner Response does not disagree with the foregoing
claim construction, and instead “applies” it “for the purposes of discussing
the failings of” Lin ’943 and Yamashita in Ground 2. PO Resp. 12–13.
Petitioner’s Reply does not address the foregoing claim construction.
Accordingly, both parties have waived any challenge to the claim
construction set forth in our Institution Decision. See, e.g., Paper 8, 8
(“Patent Owner is cautioned that any arguments for patentability not raised
in the response may be deemed waived.”).
Based on the record presented, we discern no reason to depart from
our initial claim construction. We, therefore, continue to apply it here.
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2. “a second torque that follows the first torque and is equal to a
maximum value of the first torque is implemented
between the second length and a third length”
Patent Owner contends claims 1 and 3, in reciting the “second
torque . . . is equal to a maximum value of the first torque” (Ex. 1001,
8:8–11, 8:50–53 (emphasis added)), require the spring to generate a
“constant” torque between the second and third lengths. See PO Resp.
23–26 (citing Ex. 1001, Figs. 9 & 12, 6:35–52, 8:4–16); Ex. 2001 ¶¶ 53–58;
Ex. 2020 ¶¶ 20–24.
Petitioner disagrees. See Pet. Reply 3–5; Ex. 1016 ¶¶ 7–9. Petitioner
asserts Patent Owner “arbitrarily read[s]” a “constant” limitation into the
claims from the ’547 patent specification, because the claims do not recite
the term “constant” like the ’547 patent specification does. Pet. Reply 3–4,
5; Ex. 1016 ¶¶ 7–8. Petitioner also cites Figure 12 of the ’547 patent, as
showing second torque T2 “apparently decreasing when the travel length
approaches L3.” Pet. Reply 4–5 (annotating Fig. 12 to identify the portion
of the torque curve at issue); see also Tr. 9:12–11:8 (during the oral hearing,
Petitioner cited Figure 12 as establishing that claims 1 and 3 do not require
“the second torque has to be a constant torque force throughout the whole
length between” the second and third lengths, and instead more broadly
require only that “there is one torque value” between the second and third
lengths “that equals to the maximum value of the first torque” (emphases
added)). Petitioner concludes from Figure 12 that the ’547 patent
specification “is not consistent on whether the second torque has to be a
‘constant’ value.” Pet. Reply 4–5.
Petitioner also provides extrinsic evidence. Dr. Zhang testifies: “No
matter based on a common sense understanding or what a POSHITA would
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perceive, ‘equal to’ a value does not mean the torque has to stay constant at
the exact value.” Ex. 1016 ¶ 7; Pet. Reply 4. Dr. Zhang also testifies that “it
is infeasible to [construct] a coil spring . . . that can maintain a perfectly
unchanging amount of torque,” and “[a] reasonable amount of error or
deviation is always anticipated.” Ex. 1016 ¶ 9; Pet. Reply 4.
Patent Owner replies that “the plain language” of claims 1 and 3
requires the second torque to be a constant torque. Sur-reply 2. Patent
Owner points out that all of the other torque sections recited in the claims
are expressly required to be changing torques, either “increasing” (the
increasing torque and the first torque sections) or “decreasing” (the third
torque and the fourth torque sections). Id. at 2–4 (citing Ex. 1001, 8:4–17);
Tr. 25:4–26:15. By contrast, the second torque must be “equal to a single
value (e.g., ‘the maximum value of the first torque’),” that is, be constant.
Sur-reply 3–4. In this way, Patent Owner asserts the claims incorporate the
“constant” second torque section of the ’547 patent specification. Id. at 4–5
(citing Ex. 1001, 6:35–44).
Upon review of the foregoing, we agree with Patent Owner’s position.
Claims 1 and 3 recite that the second torque must be “equal to a maximum
value of the first torque.” Ex. 1001, 8:8–11, 8:50–53. It is undisputed that
there can be only one maximum value of the first torque. It is also
undisputed that, because the first torque is required to be “slowly
increas[ing],” the maximum value of the first torque is found at the second
length, where the first torque transitions to the second torque. Id. at 8:6–8,
8:48–50. This is illustrated, for example, by Figure 12 of the ’547 patent, in
which first torque T1 slowly increases to a maximum value found at second
length L2, where first torque T1 transitions to second torque T2. See id. at
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Fig. 12, 5:27–32, 6:35–51. We agree with Patent Owner’s argument that, by
requiring the second torque to be equal to one (and only one) value, the
claims necessarily require the second torque to be constant between the
second and third lengths.
Further, the ’547 patent specification twice describes the second
torque as being “constant.” See id. at 5:29, 6:35–37. Figure 12
correspondingly illustrates second torque T2 as a line segment extending
from second length L2 to third length L3, which is flat (i.e., constant) over a
substantial portion of its length. See id. at Fig. 12. It is true, as Petitioner
points out, that the very tail end of this line segment near third length L3
bends downward slightly. Nonetheless, in light of the claim language and
the written description in the ’547 patent specification, we conclude the
second torque must be constant between the second and third lengths.
Dr. Vallee agrees. See Ex. 2001 ¶¶ 16, 43, 55–58; Ex. 2020 ¶¶ 22–24.
Dr. Zhang’s testimony does not persuade us otherwise. Dr. Zhang offers no
support, whether intrinsic evidence or otherwise, for his testimony that
“‘equal to’ a value does not mean the torque has to stay constant at the exact
value.” Ex. 1016 ¶¶ 7–8. It may very well be, as Dr. Zhang testifies, that it
is “infeasible” to construct a coil spring “that can maintain a perfectly
unchanging amount of torque,” and “[a] reasonable amount of error or
deviation is always anticipated.” Id. ¶ 9. Nonetheless, Patent Owner does
not contend that claim 1 requires a perfectly unchanging amount of torque in
the second torque section. Indeed, we determine a person of ordinary skill in
the art would recognize the limited ability of real-world manufacturing
processes to generate a coil spring having a perfectly constant torque at an
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acceptable cost, and would accordingly not interpret claim 1 to require such
a torque.
Thus, we construe the second torque of claims 1 and 3 to require a
constant torque, equal to the maximum value of the first torque, within
reasonable manufacturing tolerances.
3. Remaining Claim Terms
We determine no further explicit constructions of any claim terms are
needed to resolve the issues presented by the arguments and evidence
presented here. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor
Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (per curiam) (claim terms
need to be construed “only to the extent necessary to resolve the
controversy”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
795, 803 (Fed. Cir. 1999)).
D. Grounds 1, 3–7, and 9: Various Challenges
(Claims 1 and 3)
The Petition, in Grounds 1, 3–7, and 9, asserts claims 1 and 3 of the
’547 patent are unpatentable under 35 U.S.C. §§ 102(a)(1), 102(a)(2),
and 103, based on one or more of Admitted Prior Art, Lin ’943, Maeda,
Lin ’109, Ruggles, the Wang Drawing, and sale of the Wang Springs. See
Pet. 2–3, 14–31, 40–85, 88–89.
In the Institution Decision, we determined the preliminary record did
not establish it was more likely than not that claims 1 and 3 were
unpatentable under any one of Grounds 1, 3–7, and 9. See Inst. Dec. 24–33
(Ground 1), 36–37 (Ground 3), 38–45 (Ground 4), 46–48 (Ground 5), 48–50
(Ground 6), 50 (Ground 7), 51–53 (Ground 9). In doing so, we cited the
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provision in the PTAB Consolidated Trial Practice Guide (“Consolidated
Guide”)9 that: “If a trial is instituted, the Board generally will provide
analysis of the strengths and weaknesses of all challenges in the petition in
order to provide guidance to the parties for the upcoming trial.” Inst.
Dec. 14 (citing Consolidated Guide, 5–6). According to the Consolidated
Guide, this is done to “permit the petitioner, in its reply brief, to address
issues discussed in the institution decision.” Consolidated Guide, 73.
Concerning Grounds 1, 3–7, and 9, the Patent Owner Response
“asserts that the Board’s conclusions [in the Institution Decision] are correct
for the reasons set forth in the [I]nstitution [D]ecision.” PO Resp. 21–22
(Ground 1), 37–38 (Ground 3), 38–39 (Ground 4), 39–40 (Ground 5), 40–41
(Ground 6), 41–42 (Ground 7), 45–46 (Ground 9). Petitioner’s Reply does
not address any one of Grounds 1, 3–7, and 9. See, e.g., Pet. Reply i (Table
of Contents).
When asked about the status of these Grounds during the oral hearing,
Petitioner’s counsel stated Petitioner is “only arguing” the other Grounds 2
and 8. See Tr. 22:23–24:4. On this record, we find Petitioner has
abandoned Grounds 1, 3–7, and 9 in this proceeding.
We further determine Petitioner has not proven the unpatentability of
claims 1 and 3 under any one of Grounds 1, 3–7, and 9, by a preponderance
of the evidence. In this regard, the evidence of record is the same as when
we issued the Institution Decision, and we have not discerned anything in
the arguments presented during trial to change our view of the evidence. We
summarize our findings and conclusions here, and rely on the analysis

9 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
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provided in the Institution Decision for support, which Petitioner has not
disputed during trial.
As to Grounds 1 and 3, a preponderance of the evidence does not
support the Petition’s contention that Lin ’943 discloses a spring having
different sections with “different curvatures . . . to generate different torque”
as recited in claims 1 and 3.10 See Inst. Dec. 15–20 (discussing claim
construction), 26–27 (discussing Ground 1), 36–37 (discussing Ground 3).
As to Grounds 4 and 5, a preponderance of the evidence does not
support the Petition’s contention that Maeda’s Figure 3(c) illustrates a torque
that “slowly increases” approximately between turns 14 and 16 of a spring,
as recited in claims 1 and 3. See Inst. Dec. 43–45 (discussing Ground 4),
47–48 (discussing Ground 5). Also, even assuming Maeda’s Figure 3(c)
does disclose such a torque section, a preponderance of the evidence does
not support the Petition’s contention that it would have been obvious to
modify the spring of Maeda’s Figure 3(a) to include a slowly increasing
torque section between turns 0 and 1. See id. at 45.
As to Grounds 6 and 7, a preponderance of the evidence does not
support the Petition’s contention that the Wang Drawing qualifies as prior

10 On August 18, 2020, after we instituted trial in the present proceeding on
April 20, 2020, a USPTO Memorandum was issued with guidance that binds
the Board, limiting a petitioner’s use of admitted prior art in IPR
proceedings. See USPTO Memorandum, “Treatment of Statements of the
Applicant in the Challenged Patent in Inter Partes Reviews Under§ 311”
(Aug. 18, 2020), available at https://www.uspto.gov/sites/default/files/
documents/signed_aapa_guidance_memo.pdf. We need not address whether
or how this Memorandum applies to the present PGR proceeding, because
Ground 3 fails for reasons that are entirely separate from Petitioner’s
reliance on Admitted Prior Art in the ’547 patent.
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art to the ’547 patent as a publicly accessible, printed publication. See id. at
48–50 (discussing Grounds 6 and 7).
As to Ground 9, because the Wang Spring design was obtained
directly or indirectly from a joint inventor of the ’547 patent, the sale of the
Wang Springs is not prior art by virtue of 35 U.S.C. § 102(b)(1)(A). See
Inst. Dec. 51–53. Thus, even if we were to find that a preponderance of the
evidence supports Petitioner’s contentions that the Wang Springs embodied
the invention of claim 1, and were on sale under 35 U.S.C. § 102(a)(1) less
than one year before the earliest potential effective filing date of the
’547 patent, Petitioner’s arguments would still fail.
E. Ground 2: Obviousness over Lin ’943 and Yamashita
(Claims 1 and 3)
Petitioner asserts claims 1 and 3 of the ’547 patent are unpatentable
under 35 U.S.C. § 103 as having been obvious over Lin ’943 and Yamashita.
Pet. 2, 31–40. Petitioner cites Dr. Zhang’s testimony in support. Ex. 1015
¶¶ 45–149; Ex. 1016 ¶¶ 6–20. Patent Owner opposes. PO Resp. 22–37.
Patent Owner cites Dr. Vallee’s testimony in support. Ex. 2001 ¶¶ 50–58,
72–74; Ex. 2020 ¶¶ 15–50.
1. Law of Obviousness
A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
differences between the claimed subject matter and the prior art are such that
the subject matter, as a whole, would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
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factual determinations including: (1) the scope and content of the prior art;
(2) any differences between the claimed subject matter and the prior art;
(3) the level of ordinary skill in the art; and (4) objective evidence of
nonobviousness, if made available in the record, which is not the case here.
See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
2. Summary of Lin ’943
Lin ’943 discloses “[a] window covering [that] includes at least one
spring motor.” Ex. 1003, code (57). An excerpt from Figure 1, and the
entirety of Figure 4, are reproduced below.

Figure 1 (Excerpt) Figure 4
Figure 1 is an exploded view of spring motor 15, powered by two spring
members 61 and 63, for use in connection with window covering 1 (not
shown in the excerpt above) via shaft 13 (also not shown in the excerpt
above) received in opening 51 of second roller 43. Id. at Fig. 1, ¶¶ 28, 36,
41, 44, 45, 50. Figure 4 is a perspective view of spring 61; spring 63 is
identical to spring 61. Id. ¶¶ 31, 50. Spring 61 is attached between first
roller 41 and second roller 43, and spring 63 is attached between third
roller 45 and fourth roller 47, each in a substantially similar fashion as the
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’547 patent’s coil spring 30 is attached between axle 23 and coiling axle 24.
Id. ¶¶ 48, 50. Springs 61 and 63 are unequal torque springs, as is illustrated
in the spring load graph of Figure 6. Id. ¶¶ 33, 45, 49–52, 54.
3. Claim 1
Petitioner relies solely on Figure 6 of Lin ’943—not Yamashita—as
disclosing or suggesting a coil spring having the torque profile recited in
claim 1, including the second torque. See Pet. 14–18, 20–23 (considering
Ground 1, anticipation of claim 1 by Lin ’943); id. at 31, 33–34, 36–37
(considering Ground 2, obviousness of claim 1 over Lin ’943 and
Yamashita); Ex. 1015 ¶¶ 45–49, 63–88, 131–133, 140–141; Ex. 1016
¶¶ 10–20. Patent Owner objects that a preponderance of the evidence does
not support Petitioner’s contention that Lin ’943 discloses a coil spring with
the claimed second torque. See PO Resp. 27–37; Ex. 2001 ¶¶ 52–58;
Ex. 2020 ¶¶ 19, 25–50.
We considered this same dispute at the institution stage, and
concluded, based on the record presented at that time, that Petitioner’s
contention was sufficiently supported to demonstrate it was more likely than
not that claim 1 was unpatentable as having been obvious over Lin ’943 and
Yamashita. See Inst. Dec. 27–31 (considering Ground 1), 35 (considering
Ground 2). Now, with the benefit of a full evidentiary record, we agree with
Patent Owner’s argument that a preponderance of the evidence does not
support Petitioner’s contention.
The Petition pertinently asserts spring 61 of Lin ’943 provides
“a second torque that follows the first torque and is equal to a maximum
value of the first torque . . . between the second length and a third length,” as
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claimed. Ex. 1001, 8:8–11 (emphases added); Pet. 15–18, 22, 37 (citing
Ex. 1003, Fig. 6, ¶ 52); Ex. 1015 ¶¶ 47–49, 77–80. The Petition relies on the
spring load graph depicted in Figure 6 of Lin ’943, which Petitioner
annotates as reproduced below to illustrate Petitioner’s contention. Pet. 17;
Ex. 1015 ¶¶ 49, 78.

Figure 6 is a graph illustrating the load applied by spring 61 when window
covering material is extended.11 Ex. 1003 ¶¶ 33, 52. The Petition annotates

11 Lin ’943 does not describe the difference between the upper and lower
curves depicted in Figure 6. See, e.g., Ex. 1003 ¶¶ 33, 52. Neither
Dr. Zhang nor Dr. Vallee provides a direct opinion on this issue, although
Dr. Vallee testifies that, generally speaking, “[m]easurements of force or
torque would be recorded as the spring motor was wound or unwound.”
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Figure 6 to identify where Petitioner contends the graph reflects the torques
(in blue) and lengths (in red) of claim 1 to be found in the graph. Pet. 16–
17, 22, 37; Ex. 1015 ¶¶ 48–49, 77–79. Thus, the Petition contends the
“second torque” is generated between travel lengths 6 and 14 of spring 61.
Pet. 16–17, 22, 37; Ex. 1015 ¶¶ 48–49, 77–79.
Patent Owner argues a preponderance of the evidence does not
support Petitioner’s contention. See PO Resp. 22–23, 27–34; Ex. 2001
¶¶ 52–58, 63–64; Ex. 2020 ¶¶ 19, 25–40. According to Patent Owner,
Petitioner’s “horizontal, straight blue arrow” annotation in Figure 6
misleadingly suggests the identified second torque between travel lengths 6
and 14 is constant. See PO Resp. 27–34; Ex. 2001 ¶¶ 52–57; Ex. 2020
¶¶ 25–38. In Patent Owner’s view, the “significant signal noise” evident in
Figure 6 between travel lengths 6 and 14 prevents a person of ordinary skill
in the art from finding the torque generated by that section is constant. See
PO Resp. 32–34; Ex. 2001 ¶ 58; Ex. 2020 ¶¶ 39–40. To make such a
finding, Patent Owner insists, requires application of a filter or a data
averaging to the raw spring measurement data illustrated in Figure 6 to
smooth the data, which Lin ’943 does not disclose. See PO Resp. 33;
Ex. 2001 ¶ 58; Ex. 2020 ¶¶ 39–40.
Patent Owner also annotates Figure 6, as reproduced below, to
illustrate Patent Owner’s contention as to the torque distribution shown
therein. See PO Resp. 29; Ex. 2020 ¶ 28.

Ex. 2001 ¶ 58; id. ¶ 83 (opining that Ex. 1004, Fig. 3(a), similarly “shows
two curves, presumably measurements of torque while the spring is wound
and unwound”).
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Thus, as described by Patent Owner, Figure 6 shows a torque distribution
having “a slight upward trend” from about travel length 1 to “a given
point . . . generally between” travel lengths 8 and 12 (in red), and then
“a definite downward trend” from the given point to about travel length 39
(in blue). PO Resp. 27–29; Ex. 2020 ¶¶ 26–29.
Patent Owner further asserts Petitioner’s interpretation of what is
shown in Figure 6 of Lin ’943 is inconsistent with and contradicted by the
written description of Lin ’943. See PO Resp. 27, 34–36; Ex. 2020 ¶¶ 25,
41–48. Patent Owner particularly relies on Lin ’943’s description of
Figure 6 as showing a “progressively changing load.” Ex. 1003 ¶ 52
(emphasis added); see PO Resp. 34; Ex. 2001 ¶¶ 63–64; Ex. 2020 ¶¶ 41–46.
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In reply, Petitioner insists “no single maximum torque value or
specific ‘given point’ was measured or depicted” in Figure 6 of Lin ’943
between travel lengths 6 and 14. Pet. Reply 6–8. The “more reasonable
interpretation,” according to Petitioner, is that Figure 6 discloses the claimed
second torque, as set forth in the Petition and discussed above. Id. at 7, 10;
Ex. 1016 ¶¶ 10–14, 17–20.
Petitioner asserts the written description of Lin ’943 is not to the
contrary. See Pet. Reply 12–13; Ex. 1016 ¶¶ 10–14, 17–20. Petitioner
acknowledges Lin ’943’s description of Figure 6 as illustrating a
“progressively changing load” (Ex. 1003 ¶ 52), but contends this “does not
mean the load asserted must be constantly changing.” Pet. Reply 12–13
(emphasis added); Ex. 1016 ¶ 18. Instead, according to Petitioner, “a load
that is progressively changing describes a load change that happens or
develops gradually or in stages step by step,” which is shown in Figure 6 of
Lin ’943. Pet. Reply 12. Dr. Zhang also testifies that “a ‘progressively
changing load’ means the load is not going to stay constant throughout all
the regions” of a spring, and instead, “[a] load that varies can stay relatively
unchanged in a small region while still considered to be a ‘progressively
changing load.’” Ex. 1016 ¶ 19; Pet. Reply 12.
Petitioner also asserts Dr. Vallee’s testimony that a constant torque
cannot be discerned in Figure 6 of Lin ’943 between travel lengths 6 and 14,
because Lin ’943 does not filter out sensor noise, is belied by Dr. Vallee’s
additional testimony seeking to distinguish claim 1 from Figure 3a of Maeda
by “asserting a torque is more likely to be constant over a region after
filtering out sensor noises.” Pet. Reply 8–10 (citing Ex. 2020 ¶ 29; Ex. 2001
¶ 84); Ex. 1016 ¶¶ 10–14. Petitioner asserts Dr. Vallee’s testimony as a
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whole establishes that the torque in Figure 6 of Lin ’943 is constant between
travel lengths 6 and 14, because the measured torque values at lengths 6
and 14 “are substantially equal” to each other, just like in Figure 3a of
Maeda where “the measured torque values at the beginning and end of the
asserted region are equal in measurement.” Pet. Reply 8–10 (quoting, in
part, Ex. 2001 ¶ 84); Ex. 1016 ¶¶ 10–14.
Petitioner next offers “an alternative interpretation of” Figure 6 of
Lin ’943, which would define the “second torque” section to extend between
travel lengths 8 and 12, rather than lengths 6 and 14 as set forth in the
Petition. Pet. Reply 10–11 (annotating Fig. 6 to illustrate this alternative
interpretation); Ex. 1016 ¶¶ 15–16. With this interpretation, Petitioner
asserts, “[i]t is more evident that” the second torque section at travel
lengths 8–12 is equal to a “maximum” of the first torque section at
lengths 2–8, and is “substantially the same” at its end points 8 and 12. Pet.
Reply 10–11; Ex. 1016 ¶¶ 15–16.
Patent Owner replies that Petitioner’s attempt to manufacture an
inconsistency in Dr. Vallee’s testimony concerning the disclosures in
Lin ’943 and Maeda is unavailing. Sur-reply 7–8. Patent Owner asserts: “It
is not inconsistent for an expert to separately analyze two references and
provide a reasoned opinion that the noise in one reference does not permit a
constant value region to be identified (Lin ’943), while the noise in a second
reference can be filtered out, allowing a constant value region to be
identified (Maeda).” Id. at 8. Such a difference might be justified, for
example, by differences in “the amount of noise shown” in the figures of the
two references, and “the different illustrated test data.” Id.
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Upon review of the foregoing, we determine a preponderance of the
evidence does not support Petitioner’s contention that Lin ’943 discloses the
second torque of claim 1. First, it is clear that only the illustration of
Figure 6 might provide such evidentiary support; the written description
does not. Petitioner does not identify any teaching or suggestion in Lin ’943
that the torque curve depicted in Figure 6 has a constant value between any
two points. Petitioner and Dr. Zhang cite only paragraph 52 of Lin ’943.
See, e.g., Pet. 16; Ex. 1015 ¶ 47. Paragraph 52 of Lin ’943 pertinently
describes Figure 6 as illustrating that “the load applied by the spring
members for maintaining a position of the window covering material [may]
progressively increase when the window covering material is raised or
progressively decrease when the window covering material is lowered.”
Ex. 1003 ¶ 52. Further: “Due to the progressively changing load applied to
the spring . . . , the spring is able to apply a load to maintain the position of
window covering material without providing too much force.” Id. There is
nothing in this disclosure to indicate that the torque provided by the spring
between travel lengths 6 and 14 is a constant torque equal to the maximum
value of the torque directly preceding length 6, as asserted in the Petition, or
that the torque provided by the spring between travel lengths 8 and 12 is a
constant torque equal to the maximum value of the torque directly preceding
length 8, as asserted in the Reply.
Focusing then on Figure 6 of Lin ’943, we discern a significant
amount of sensor noise in the two torque curves. It is undisputed that the
wiggles in these curves are caused by “sensor noise,” resulting from the fact
that Figure 6 “depicts test data representative of the measured load values of
an actual spring motor being taken under real world conditions using
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measurement sensors.” Ex. 2001 ¶ 58; Ex. 2020 ¶ 39. Such measurement
systems “typically employ a force or torque transducer, a power source, and
amplifier and recording device such as an oscilloscope or other data
acquisition system,” to measure “force or torque . . . as the spring motor [is]
wound or unwound.” Ex. 2001 ¶ 58. Therefore, “sensor noise” that is
inherent in the use of electrical measuring tools “is evident in the constant
fluctuation of the force measurements throughout FIG. 6.” Id. This sensor
noise can also be caused by “some mechanical vibration of the spring system
as it was loaded.” Ex. 2020 ¶ 39.
To illustrate the significance of this noise in Figure 6 of Lin ’943, we
reproduce the following excerpt of Figure 6, with our annotations:

Here, we have excerpted Figure 6 to focus on the portion that is in dispute—
the two torque curves between travel lengths 6 and 14—while maintaining
the horizontal and vertical axes’ scales. We have added horizontal red lines
identifying the vertical axis envelope of sensor data in the top curve between
travel lengths 6 and 14 on the horizontal axis, and similar horizontal green
lines for the bottom curve. As can be seen, the top curve varies back and
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forth between a minimum of about 8.65 kg and a maximum of about
9.65 kg, and the bottom curve varies back and forth between a minimum of
about 7.70 kg and a maximum of about 8.70 kg. Thus, both envelopes are
about 1 kg wide, which represents an 11–12% variation from the nominal
8–9 kg values being recorded here. Moreover, many of the individual
variations exhibit a height that extends 50% or more of their respective
vertical axis envelopes.
Given the foregoing variability, we are persuaded by Dr. Vallee’s
testimony that the sensor noise in Figure 6 makes it impossible to conclude,
based solely on the illustration in Figure 6, that the torque provided by the
spring between travel lengths 6 and 14, or between lengths 8 and 12, is a
constant torque equal to the maximum value of the preceding torque region.
See Ex. 2001 ¶¶ 56–58; Ex. 2020 ¶¶ 29, 38–40. It might be possible, as
Dr. Vallee testifies, to apply a “filtering” process or a “data averaging”
process to the raw data illustrated in Figure 6, and thereby discern whether
specific sections of the measured spring’s travel length exhibit discernable
torque trends (e.g., upward, downward, or constant), despite the sensor noise
present in the raw data. See Ex. 2001 ¶ 58; Ex. 2020 ¶ 38 (stating “a person
of ordinary skill in the art would understand that a constant load cannot be
determined or recognized [in Figure 6 of Lin ’943] unless some filtering was
applied to the data”); id. ¶ 39. However, Lin ’943 only provides the raw
data illustration in Figure 6, and does not apply any data processing results
from which torque trends might be reliably discerned. See, e.g., Ex. 2020
¶ 39.
The difficulty in reliably discerning a specific upward, downward, or
constant torque trend in Figure 6 of Lin ’943 between travel lengths 6 and 14
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is demonstrated by the competing interpretations of the illustration offered
by Dr. Zhang and Dr. Vallee. Dr. Zhang’s two, alternative interpretations
are reproduced here.

At the left above is Dr. Zhang’s original interpretation of Figure 6 in which
the second torque extends between travel lengths 6 and 14, and at the right
above is Dr. Zhang’s alternative interpretation in which the second torque
extends between travel lengths 8 and 12. See Ex. 1015 ¶¶ 49, 77–80;
Ex. 1016 ¶¶ 15–16. Dr. Vallee’s competing interpretation is reproduced
here.

See Ex. 2020 ¶¶ 27–29. The uncertainty caused by the sensor noise in
Figure 6 makes it impossible for us to find, by a preponderance of the
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evidence, that any one of these three interpretations of the data is any more
likely than the others to describe the actual torque characteristics of the
measured spring. Yet further interpretations might also be applied to the
illustration of raw data in Figure 6, with equal validity. To resolve this
dispute, by a preponderance of the evidence, would require application of a
filter or a data averaging to the raw data illustrated in Figure 6 to smooth the
data, which has not been done.
We have construed claim 1 to permit deviations from a purely
constant second torque, within reasonable manufacturing tolerances. See
supra § IV.C.2. However, from the foregoing findings, it is apparent that
the sensor noise in Figure 6 of Lin ’943 is too significant to allow us to
apply this construction in any meaningful way.
The lack of clarity of Figure 6 in this regard is further demonstrated
by Dr. Zhang’s own alternative interpretations, which partially contradict
each other. According to Dr. Zhang, the spring region between travel
lengths 6 and 8 provides a torque that is both constant (his first
interpretation, including this region in the second torque) and slowly
increasing (his second interpretation, including this region in the first
torque). Compare Ex. 1015 ¶¶ 49, 73–80, with Ex. 1016 ¶¶ 15–16.
Similarly, according to Dr. Zhang, the spring region between travel
lengths 12 and 14 provides a torque that is both constant (his first
interpretation, including this region in the second torque) and gradually
decreasing (his second interpretation, including this region in the third
torque). Compare Ex. 1015 ¶¶ 49, 77–84, with Ex. 1016 ¶¶ 15–16.
We are not persuaded by Petitioner’s argument that Dr. Vallee’s
interpretation of Figure 6 of Lin ’943 is inconsistent with Dr. Vallee’s
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interpretation of Figure 3a of Maeda, provided in opposition to Ground 4 in
the Petition. Figure 3a of Maeda (Exhibit 1005) is reproduced below.

Figure 3(a) of Maeda is a graph illustrating the torque characteristics of a
spring. Ex. 1004, 5. According to the Petition, the region of Figure 3(a)
between turns 4 and 7 on the horizontal axis corresponds to the fourth torque
of claim 1, because it gradually decreases. See Pet. 56–57, 64. Dr. Vallee
disagreed, and testified that Figure 3(a) instead shows that “the torque
associated with the beginning of this alleged region (4 turns) is shown as
being substantially equal to the torque at the end of this alleged region
(7 turns),” so this cannot be a decreasing torque. Ex. 2001 ¶¶ 82–84.
Further according to Dr. Vallee: “It is far more likely that the torque is
actually constant over this region since the upper curve, presumabl[y]
measured using the same coil spring, displays a constant torque between 4
and 7 turns” as well as “over the next cycle (between 11.5 and 15 turns).”
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Id. ¶ 84 (emphases added). Also: “[T]he noise in the measurement signal
makes it impossible to conclude that the torque varies in this range.” Id.
We discern no inconsistency here, for at least two reasons. First,
Dr. Vallee equivocates as to whether or not Figure 3(a) of Maeda actually
discloses a constant torque between turns 4 and 7. His ultimate opinion,
instead, is that the torque in this region cannot be found to be gradually
decreasing. Second, Figure 6 of Lin ’943 exhibits much more up-and-down
sensor noise between travel lengths 6 and 14, than Figure 3a of Maeda
exhibits between turns 4 and 7. It is much more difficult to discern a flat
line trend in the applicable region of Lin ’943, than in the applicable region
of Maeda, and this discrepancy justifies different conclusions as to whether
these two regions display a constant torque within reasonable manufacturing
tolerances.
For the foregoing reasons, we conclude a preponderance of the
evidence does not support Petitioner’s contention that Lin ’943 discloses a
second torque that is a constant torque equal to the maximum value of the
preceding torque region, as is required by claim 1. Petitioner does not rely
on Yamashita to cure this deficiency of Lin ’943, so claim 1 has not been
proven by a preponderance of the evidence to be unpatentable as having
been obvious over Lin ’943 and Yamashita.
4. Claim 3
Claim 3 of the ’547 patent recites a spring motor comprising a coil
spring, using language identical to that used in claim 1. See Ex. 1001, 8:21,
8:39–57. As with claim 1 discussed above, Petitioner contends Lin ’943
discloses the “second torque” section recited in claim 3. See Pet. 30
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(considering Ground 1, anticipation of claim 3 by Lin ’943), 39 (considering
Ground 2, obviousness of claim 3 over Lin ’943 and Yamashita). Patent
Owner, likewise, presents the same opposition. See, e.g., PO Resp. 37. For
the reasons provided above in connection with claim 1, we conclude claim 3
has not been proven by a preponderance of the evidence to be unpatentable
as having been obvious over Lin ’943 and Yamashita.
F. Ground 8: Indefiniteness (Claims 2 and 4)
Petitioner asserts claims 2 and 4 of the ’547 patent are unpatentable
under 35 U.S.C. § 112(b) for indefiniteness. Pet. 3, 86–88. Petitioner cites
Dr. Zhang’s testimony in support. Ex. 1015 ¶¶ 356–360; Ex. 1016 ¶¶ 21–
27. Patent Owner opposes. PO Resp. 42–45. Patent Owner cites
Dr. Vallee’s testimony in support. Ex. 2001 ¶¶ 97–102; Ex. 2020 ¶¶ 69–76.
1. Law of Indefiniteness
In the Institution Decision, we noted both parties had applied the
“reasonable certainty” standard of Nautilus, Inc. v. Biosig Instruments, Inc.,
572 U.S. 898 (2014), when discussing whether claims 2 and 4 are indefinite.
See Inst. Dec. 22. We then concluded “[t]here is an open issue” as to
whether we should apply that standard, or the “clear” standard of In re
Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014), in this PGR proceeding. Id.
(citing Tinnus Enters., LLC v. Telebrands Corp., 733 F. App’x 1011,
1016–18 (Fed. Cir. 2018)).
A USPTO Memorandum has since been issued to end this uncertainty,
with “binding agency guidance to govern the Board’s implementation of”
§ 112(b) in PGR proceedings. See USPTO Memorandum, “Approach To
Indefiniteness Under 35 U.S.C. § 112 In AIA Post-Grant Proceedings”
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(Jan. 6, 2021), 1–2.12 Pursuant to this Memorandum, we apply the
“reasonable certainty” standard of Nautilus in this Decision. Id. at 2–5.
“Under Nautilus, a claim of a patent challenged for indefiniteness is
unpatentable for indefiniteness if the claim, read in light of the specification
delineating the patent, and the prosecution history, fails to inform, with
reasonable certainty, those skilled in the art about the scope of the
invention.” Id. at 3 (citing Nautilus, 572 U.S. at 901).
2. Claims 2 and 4
Claim 2 depends from claim 1, and recites “the unequal-torque coil
spring generates usable feedback torque values with a ratio between 4:1.”
Ex. 1001, 8:18–20. Claim 4 depends from claim 3, and recites the same
limitation as claim 2. Id. at 8:63–65.
The ’547 patent specification correspondingly discloses one
“objective of the present invention is to allow the unequal-torque coil spring
to generate usable feedback torque values with a ratio between 4:1.” Id. at
4:12–14. The ’547 patent also describes how a coil spring may be
manufactured with five different curvatures A0–A4 along the length of the
spring to generate five different torques TC and T1–T4 (id. at 5:7–58), then
indicates: “A ratio between the above-described torque forces can be set
between 4:1” (id. at 5:59–60).
Petitioner asserts the term “a ratio between 4:1” in claims 2 and 4 is
indefinite, because the ’547 patent specification and prosecution history
“fail[] to inform those skilled in the art about ‘the scope of the invention

12 Available at https://www.uspto.gov/sites/default/files/documents/
IndefinitenessMemo.pdf.
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with reasonable certainty.’” Pet. 86 (quoting Nautilus, 572 U.S. at 910). In
support, Petitioner contends this claim term is not a term of art in the field of
the ’547 patent, and is not defined in the ’547 patent specification. Id. at
86–87 (citing Ex. 1001, 5:59–60); Ex. 1015 ¶ 357. Petitioner also contends
the ’547 patent “is entirely silent regarding which of the five torques [recited
in claims 1 and 3] are to be arranged in ‘a ratio between 4:1’ as a usable
feedback torque.” Pet. 86–87 (citing Ex. 1001, 5:19–50); Ex. 1015
¶¶ 357–359. Petitioner concludes “it is inappropriate to simply ascribe some
meaning to [the ’547] patent’s claims in the absence of supporting
disclosure.” Pet. 87–88 (citing Nautilus, 572 U.S. at 911).
Patent Owner responds that claims 2 and 4 are not indefinite. PO
Resp. 42; Ex. 2001 ¶¶ 97–102; Ex. 2020 ¶¶ 69–76. Patent Owner
particularly relies on several passages in the ’547 patent specification that
Patent Owner describes as “demonstrat[ing] support . . . of features recited in
claims 2 and 4.” PO Resp. 42–44 (citing Ex. 1001, 2:43–53, 5:34–50,
5:59–64, 6:52–57)13; Ex. 2020 ¶¶ 72–73. These passages in the ’547 patent,
in Patent Owner’s view, pertinently disclose that the spring of claims 2 and 4
has “a maximum value at T2” (i.e., the “second torque”) and “a minimum or
smallest value being at T4” (i.e., the smallest value of the decreasing “fourth
torque”). PO Resp. 44–45 (annotating Ex. 1001, Fig. 12, to identify these
“Max.” and “Min.” torques); Ex. 2020 ¶ 74. “Further, the specification
describes that the torque forces can be set between 4:1.” PO Resp. 44;

13 Patent Owner actually cites to the portion of Exhibit 2016 (the
prosecution history of the ’547 patent) corresponding to the original
application that led to the issuance of the ’547 patent. We identify here the
corresponding disclosures in the ’547 patent itself.
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Ex. 2020 ¶ 74. Patent Owner concludes “a person of ordinary skill in the art
would understand that the maximum ratio of torque (e.g., the ratio of the
maximum torque at T2 to the minimum torque at T4) is 4:1,” so claims 2
and 4 “claim this maximum ratio of torque between the maximum torque at
T2 to the minimum torque at T4 is no greater than 4:1,” which is not
indefinite. PO Resp. 44; Sur-reply 18; Ex. 2020 ¶¶ 75–76.
In reply, Petitioner maintains claims 2 and 4 are indefinite because the
claim phrase “a ratio between 4:1” is not reasonably certain. See Pet.
Reply 13–14; Ex. 1016 ¶¶ 21–27. Petitioner asserts the ’547 patent claims
and specification, including the passages cited by Patent Owner, fail to
describe which of the five torques is being compared in the claimed ratio.
See Pet. Reply 14. In response to Patent Owner’s assertion that the ratio
compares the maximum and the minimum torques provided by the spring,
Petitioner argues this specific ratio is not identified in the claims, and instead
the “usable feedback torque values” in the claims “can be interpreted
differently by a person of ordinary skill in the art . . . as comparing any
torque generated by the coil spring, and numbers of possible interpretations
exist.” Id. at 15; Ex. 1016 ¶ 22. Petitioner asserts Patent Owner’s own
witness Dr. Vallee presents “different[]” and “self-contradicting”
interpretations of “a ratio between 4:1,” in stating: (1) the maximum and
minimum torque forces “can be set between 4:1” (Ex. 2020 ¶ 74); and
(2) the ratio of the maximum torque to the minimum torque “is 4:1” (id.
¶ 75) and “is no greater than 4:1” (id. ¶ 76). Pet. Reply 15–16; Ex. 1016
¶¶ 25–27.
Patent Owner replies that the ’547 patent passages cited in the Patent
Owner Response describe that the maximum torque T2 and the minimum
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torque T4 at length L5 “can be set between 4:1,” and a person of ordinary
skill in the art “would understand that the maximum ratio of torque (e.g., the
ratio of the maximum torque at T2 to the minimum torque at T4) is 4:1.”
Sur-reply 15–17; Ex. 2020 ¶¶ 74–75. Patent Owner dismisses Petitioner’s
reliance on testimony from Patent Owner’s witness Dr. Vallee as lacking
“any support from Petitioner’s” witness Dr. Zhang. Sur-reply 15–17.
Upon review of the foregoing, we determine a preponderance of the
evidence establishes claims 2 and 4 are indefinite, because the claims and
specification of the ’547 patent fail to inform, with reasonable certainty,
those skilled in the art about the scope of the invention. The first difficulty
concerns the claimed ratio value(s). Specifically, the claims recite the
“spring generates . . . torque values with a ratio between,” thereby
suggesting a range of ratios is contemplated, but then the claims recite only
one ratio, “4:1.” Ex. 1001, 8:18–20, 8:63–65 (emphasis added). The
problem is thus a matter of missing subject matter, in failing to specify a
second end point of a range of ratio values contemplated by the claims (i.e.,
“between 4:1 and X:Y”, or “between X:Y and 4:1”). Because of this, the
claims are not reasonably certain under Nautilus.
This uncertainty is demonstrated by Patent Owner’s confusing
argument attempting to describe the claimed ratio value(s). See PO
Resp. 44. Dr. Vallee describes the claimed ratio value(s) as “between 4:1,”
“4.1,” and “no greater than 4:1.” Ex. 2020 ¶¶ 74–76. The best we can make
of this argument and testimony is that claims 2 and 4 allegedly require “the
maximum ratio . . . is 4:1.” PO Resp. 44; Ex. 2020 ¶ 75. This interpretation,
however, would alter the claim term “between 4:1,” changing it to “no
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greater than 4:1.” It also has no support in the ’547 patent disclosures cited
by Patent Owner. See Ex. 1001, 2:43–53, 5:34–50, 5:59–64, 6:52–57.
The second difficulty with claims 2 and 4 is that they do not
reasonably specify which two torques are compared, to have the specified
4:1 ratio relationship. The ’547 patent claims and specification first describe
five different torques. See Ex. 1001, 8:1–17 (claims 1 and 2 recite an
increasing torque, and first, second, third, and fourth torques); id. at 8:43–57
(claims 3 and 4); id. at 5:7–58 (specification describes increasing torque TC
and first, second, third, and fourth torques T1–T4). The claims then indicate
the spring “generates usable feedback torque values with a ratio between
4:1.” Id. at 8:18–20 & 8:63–65 (emphasis added). The specification,
somewhat differently, then indicates “[a] ratio between the above-described
torque forces can be set between 4:1.” Id. at 5:59–60 (emphasis added).
Neither the claims, nor the specification, specifies which of the five
previously-described torques is compared in the 4:1 ratio.
We disagree with Patent Owner’s argument that the ’547 patent
specification informs a person of ordinary skill in the art that the torques to
be compared are the maximum and minimum torques of the spring. The
’547 patent passages cited by Patent Owner establish only that an
unequal-torque spring provides a range of feedback torque values, which
necessarily would include a minimum and a maximum of the range. See
Ex. 1001, 2:43–53, 5:34–50, 5:59–64, 6:52–57. However, there is simply
nothing in these passages that correlates the 4:1 ratio to the maximum and
minimum torques of the spring. See id.
Some support for Patent Owner’s position might be found in the claim
recitation of comparing “usable feedback torque values” of the spring.
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Ex. 1001, 8:18–20 & 8:63–66 (emphasis added). However, Patent Owner
does not rely on the “usable” claim term in this regard so as show that this
term is what ties the claimed ratio to the maximum and minimum torques of
the spring. See PO Resp. 42–45; Ex. 2001 ¶¶ 97–102; Ex. 2020 ¶¶ 69–76.
There is, therefore, no evidence of record that can support a determination
that “usable” torques correspond to the maximum and minimum torques of
the spring. Similarly, Patent Owner does not rely on the prosecution history
of the ’547 patent in opposition to Petitioner’s contentions of indefiniteness.
See PO Resp. 42–45.
Patent Owner finally asserts that mechanical systems employing
multiple torques are routinely defined by identifying the ratio between the
maximum and minimum torques in the system, to provide meaningful
boundaries. See Sur-reply 18. No evidence is cited to support this
contention. See id. However, Dr. Vallee provides similar testimony in
Exhibit 2021, supporting Patent Owner’s position that proposed substitute
claims 5 and 6 have written description support in the application that issued
as the ’547 patent. See infra Section V.C.2. Exhibit 2021 was initially
proffered on November 20, 2020, with the filing of Patent Owner’s
Sur-reply concerning issued claims 2 and 4, and Patent Owner’s Revised
Motion to Amend concerning proposed claims 5 and 6. This filing was
untimely as to claims 2 and 4, depriving Petitioner of an opportunity to
respond concerning those claims. See, e.g., Consolidated Guide 73 (“The
sur-reply may not be accompanied by new evidence other than deposition
transcripts of the cross-examination of any reply witness.”). We therefore
do not consider Exhibit 2021 in connection with claims 2 and 4. Even if we
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were to consider it, we would not find it to be persuasive, for reasons similar
to the discussion in Section V.C.2 below.
For the foregoing reasons, we conclude a preponderance of the
evidence establishes claims 2 and 4 are unpatentable as indefinite under
35 U.S.C. § 112(b).
V. MOTION TO AMEND THE ’547 PATENT
(PROPOSED CLAIMS 5 AND 6)
A. Introduction
Patent Owner filed a Motion to Amend the ’547 patent (Paper 18,
“Motion to Amend” or “Mot.”), made contingent upon our determining that
claims 2 and 4 are unpatentable as indefinite, as we have done above. See
id. at 3. Petitioner filed an Opposition (Paper 20, “Opp.”) to the Motion to
Amend.
We issued Preliminary Guidance (Paper 21) regarding the Motion to
Amend, pursuant to the Board’s pilot program concerning motion to amend
practice and procedures.14 In response, Patent Owner filed a Revised
Motion to Amend (Paper 23, “Revised Motion” or “Rev. Mot.”), and
Petitioner filed an Opposition (Paper 25, “Rev. Opp.”) to the Revised
Motion. Patent Owner filed a Reply (Paper 29, “Mot. Reply”) in support of
the Revised Motion, and Petitioner filed a Sur-reply (Paper 30, “Mot.
Sur-reply”) to the Reply.

14 See Notice Regarding a New Pilot Program Concerning Motion to
Amend Practice and Procedures in Trial Proceedings under the America
Invents Act before the Patent Trial and Appeal Board, 84 Fed. Reg. 9,497
(Mar. 15, 2019) (“the Notice”).
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Upon consideration of the foregoing, and for reasons provided below,
we deny Patent Owner’s Motion to Amend, because it seeks to add new
matter to the application that was filed as the ’547 patent, and, therefore, it
lacks written description support in the ’547 patent.
B. Proposed Substitute Claims 5 and 6
Patent Owner proposes to amend the ’547 patent by adding claims 5
and 6. See Mot. 3, 26; Rev. Mot. 2, 26.15 Claim 5 is proposed as a
substitute for existing claim 2, and claim 6 is proposed as a substitute for
existing claim 4. See Rev. Mot. 26.
We reproduce proposed substitute claim 5 here, with square bracketed
verbiage reflecting subject matter omitted from existing claim 2, and
underlined verbiage reflecting subject matter added to existing claim 2:
5. (Proposed Substitute for Claim 2) The unequal-torque coil
spring according to claim 1, wherein the unequal-torque coil
spring generates [[usable]] a maximum feedback torque
value and a minimum feedback torque value[[s with]], and
a ratio [[between]] of the maximum and the minimum
feedback torque values is 4:1.
Rev. Mot. 26; Ex. 1001, 8:18–20. Proposed claim 6 would substitute for
existing claim 4 in an identical fashion, maintaining the dependency from
claim 3 instead of claim 1. Rev. Mot. 26.

15 The Motion and the Revised Motion contain exactly the same set of
proposed claims. This runs afoul of the Notice’s requirement that
“[a] revised MTA includes one or more new proposed substitute claims.”
Notice, 84 Fed. Reg. 9549, 9501 (emphasis added). Nonetheless, in this
Decision, we will consider the entirety of the arguments presented in the
Motion and the Revised Motion in support of proposed substitute claims 5
and 6.
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Thus, proposed substitute claims 5 and 6 make two changes versus
existing claims 2 and 4. First, “usable” torque values are replaced by
“maximum” and “minimum” torque values. See, e.g., Rev. Mot. 2–3;
Opp. 1. Second, the ratio of “torque values” being “between 4:1” is replaced
by specifying that the ratio is 4:1 and is calculated as being the ratio between
the maximum and minimum torque values. See, e.g., Rev. Mot. 2–3; Opp. 2.
C. Threshold Criteria of 35 U.S.C. § 326(d)(3):
Prohibition Against Introducing New Matter
1. Statement of Law
The Motion to Amend “may not . . . introduce new matter.”
35 U.S.C. § 326(d)(3).
“Before considering the patentability of any substitute claims . . . the
Board first must determine whether the motion to amend meets the statutory
and regulatory requirements” set forth in § 326(d) and 37 C.F.R. § 42.221.
Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 15 at 4 (PTAB
Feb. 25, 2019) (precedential) (emphases added) (considering the inter partes
review counterpart statute and regulation). This includes the prohibition
against new matter in § 326(d)(3). See Lectrosonics, at 7–8.
“[T]he patent owner must satisfy the Board that the statutory criteria
in [35 U.S.C.] § 316(d)(3) are met and that any reasonable procedural
obligations imposed by the Director are satisfied.” Aqua Prods., Inc. v.
Matal, 872 F.3d 1290, 1305–06 (Fed. Cir. 2017) (emphasis added) (lead
plurality opinion by J. O’Malley) (discussing 35 U.S.C. § 316(d)(3), which
employs language identical to § 326(d)(3)); see also id. at 1341 (“There is
no disagreement that the patent owner bears a burden of production in
accordance [with] 35 U.S.C. § 316(d).”) (majority opinion by J. Reyna).
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Accordingly: “A motion to amend may be denied where . . . [t]he
amendment seeks to . . . introduce new subject matter.” 37 C.F.R.
§ 42.221(a)(2)(ii); see also Consolidated Guide 69, 71. Further: “A motion
to amend claims must . . . set forth . . . [t]he support in the original disclosure
of the patent for each claim that is added or amended.” 37 C.F.R.
§ 42.221(b)(1).
The test for new matter is whether the original application’s disclosure
“reasonably conveys to those skilled in the art that the inventor had
possession of the claimed subject matter.” Ariad Pharms., Inc. v. Eli Lilly &
Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc); see also Senju Pharm.
Co. v. Apotex Inc., 746 F.3d 1344, 1352 (Fed. Cir. 2014) (citing Ariad as
providing the test for determining new matter under 35 U.S.C. § 132(a)).
We perform “an objective inquiry into the four corners of the specification
from the perspective of a person of ordinary skill in the art,” to determine
whether it demonstrates possession of the claimed subject matter. Ariad,
598 F.3d at 1351.
2. Proposed Substitute Claims 5 and 6
Patent Owner asserts proposed substitute claims 5 and 6 do not
introduce new matter into the ’547 patent. See Mot. 5–13; Rev. Mot. 3–10.
In support, Patent Owner cites various disclosures of U.S. Patent Application
No. 15/439,313 (“the U.S. Application”), which issued as the ’547 patent,
that Patent Owner contends support the inventions recited in proposed
substitute claims 5 and 6. See Mot. 5–13 & Rev. Mot. 3–10 (quoting various
passages found at Ex. 2016, pgs. 27–63, and adding emphases to identify
where Patent Owner contends support for claims 5 and 6 may be found).
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Patent Owner additionally relies on disclosure in Taiwan Patent Application
No. 105204038 U (“the Taiwan Application”), to which the ’547 patent
claims priority. See Mot. 20–22; Ex. 1001, code (30).
Concerning the limitations found in proposed substitute claims 5
and 6 but not existing claims 2 and 4, Patent Owner contends the
U.S. Application “repeatedly describes locations or positions of the reed
strip that provide torque values that are maximum and minimum,” and
“specifically describes that the ratio between the torque forces (e.g., the
maximum and the minimum (smallest)) is 4:1.” Mot. 20. In support, Patent
Owner cites the U.S. Application’s Figures 4, 6–10, and 12, and its written
description at page 5 (line 15) to page 6 (line 5), page 14 (line 6) to page 15
(line 1), page 15 (lines 9–13), and page 18 (lines 4–8). Mot. 11–13, 17–19
(citing Ex. 2016, 30, 32–34, 36, 47–48, 56–57, 60). Patent Owner, further,
provides the following annotations to Figure 12 of the U.S. Application:

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Here, Patent Owner identifies, with dotted red lines, where Patent Owner
contends the “Max” and the “Min” torque values are shown in Figure 12 of
the U.S. Application. See Mot. 13, 19; Rev. Mot. 17. Dr. Vallee provides
testimony in support of these contentions. See Ex. 2020 ¶¶ 80–87; Ex. 2021
¶¶ 11–19.
The Revised Motion to Amend adds further declaration testimony
from Dr. Vallee in support of the motion. See Rev. Mot. 10, 18–25;
Ex. 2021 ¶¶ 1, 19, 22–47. Here, Patent Owner contends “[l]iteral support of
the claim terminology is not required” to demonstrate possession, and
instead: “[T]he test requires an objective inquiry into the four corners of the
specification from the perspective of a person of ordinary skill in the
art,” and “the specification must describe an invention understandable
to that skilled artisan and show that the inventor actually invented the
invention claimed.” Rev. Mot. 19 (citing Ariad, 598 F.3d at 1351).
Dr. Vallee focuses on the statement in the U.S. Application that: “A
ratio between the above-described torque forces can be set between 4:1.”
Ex. 2016, 57 (lines 9–10); Ex. 2021 ¶¶ 28–30. This statement, according to
Dr. Vallee, demonstrates possession of the subject matter recited in proposed
substitute claims 5 and 6, because a person of ordinary skill in the art would
have understood that “spring loaded mechanical systems involving multiple
torques, which decrease from a maximum torque value to a minimum torque
value, are routinely defined by indicating the ratio of maximum and
minimum values of the torque that make up the system.” Ex. 2021 ¶ 31;
Rev. Mot. 20; Mot. Reply 2–6. Dr. Vallee also indicates this is a “routine”
practice, done “in order to distinguish the system from other systems.”
Ex. 2021 ¶ 33; Rev. Mot. 20–21. Dr. Vallee thus disagrees with Dr. Zhang’s
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testimony that the U.S. Application’s reference to a 4:1 torque ratio may
refer to torques other than the maximum and minimum torques, because
such other torque ratios would “not properly distinguish two systems that
may have completely different performance.” Ex. 2021 ¶¶ 34–36
(discussing hypothetical systems); Rev. Mot. 21–22.
Dr. Vallee also concludes the U.S. Application’s reference to
“[a] ratio between the above-described torque forces can be set between
4:1” (Ex. 2016, 57 (lines 9–10) (emphases added)) “is properly read as ‘four
to one’ in plain English,” so “the identified language would be read as ‘a
ratio between the above-described torque forces can be set between 4 to 1.’”
Ex. 2021 ¶¶ 37–41; id. ¶¶ 31–32 (providing various definitions of the term
“ratio,” and citing Exs. 2022 & 2023); Rev. Mot. 22–23. Concerning the
double usage of the term “between” in the U.S. Application here, Dr. Vallee
concludes “it is common for a person of ordinary skill in the art to
understand that use of the word ‘between’ is being used to denote the upper
and lower values of the ratio (e.g., the maximum to minimum ratio),” so only
a single ratio of 4:1 is identified in the U.S. Application, rather than a range
of ratios as found in the Preliminary Guidance. Ex. 2021 ¶¶ 40–43 (citing
Ex. 2022); Rev. Mot. 23–24; Mot. Reply 6–8.
Dr. Vallee finally testifies that Figure 12 of the U.S. Application,
assuming it is drawn to scale along the vertical axis, discloses that the ratio
between the maximum torque (i.e., torque T2) and the minimum torque (i.e.,
torque T4 at length L5) is “0.82:0.21, or 3.9:1; very nearly 4:1 as stated in
the specification.” Ex. 2021 ¶¶ 43–44; Tr. 49:20–52:16, 58:21–59:6.
Petitioner firstly asserts the limitation “generates a maximum
feedback torque value and a minimum feedback torque value” in proposed
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substitute claims 5 and 6 is new matter lacking written description support.
See Opp. 2–4. Petitioner contends the recited “minimum” torque is not
disclosed by the U.S. Application, which instead “simply disclose[s] a
minimum ‘pulling force’ or ‘load’ exists when the lower beam reaches its
bottom position,” which is “exerted by a user through the pull cord [and]
does not necessarily equal to a feedback torque value generated by the coil
spring.” Id. at 4 (citing Ex. 2016, 47–48, 56–57, 60). Petitioner’s further
view is that the U.S. Application discloses simply that “the fourth torque T4
‘gradually decreases,’” and “no minimum value of T4 was identified” in the
U.S. Application. Id.
Petitioner secondly asserts the limitation “a ratio of the maximum and
the minimum feedback torque values is 4:1” in proposed substitute claims 5
and 6 is new matter lacking written description support. See id. at 5–6; Rev.
Opp. 3–12. In particular, according to Petitioner, the U.S. Application does
not “specif[y] any ratio between ‘the maximum and the minimum feedback
torque values,’” much less the specific 4:1 ratio specified in the claims.
Opp. 5. Petitioner asserts the statement in the U.S. Application cited by
Dr. Vallee “is unclear about which of ‘the above-described torque forces’ it
refers to, and . . . is silent on . . . any specific maximum or minimum torque
forces.” Id.; Rev. Opp. 4–6. Petitioner also asserts this statement “lacks
clarity whether it indeed suggests a range of ratios,” or a single ratio as
Patent Owner presently asserts. Rev. Opp. 4, 9–11; Ex. 1017 ¶¶ 17–19.
Petitioner further criticizes Dr. Vallee’s testimony as being untethered
to the disclosure in the U.S. Application, and unsupported by evidence. See
Rev. Opp. 6–7, 8–9; Mot. Sur-reply 3–4. Petitioner offers competing
testimony from Dr. Zhang, who states “[a] ratio between the
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above-described torque forces can be set between 4:1,” as set forth in the
U.S. Application (Ex. 2016, 57 (lines 9–10)), would be interpreted “as the
ratio between any described torque forces can be set at any number between
4 (a ratio of 4 to 1) and 1 (a ratio of 1 to 1).” Ex. 1017 ¶¶ 11, 15–19
(emphases added); Rev. Opp. 7; Mot. Sur-reply 7–9. Dr. Zhang further
takes issue with Dr. Vallee’s reliance on Figure 12 of the U.S. Application,
because the application does not describe the figure as being drawn to scale,
and if there is a scale then it could be a non-linear scale such as a
logarithmic scale. See Ex. 1017 ¶¶ 20–21.
Upon review of the foregoing, we agree with Patent Owner that the
U.S. Application demonstrates possession of an “unequal-torque coil spring
[that] generates a maximum feedback torque value and a minimum feedback
torque value,” as recited in proposed substitute claims 5 and 6. For example,
the U.S. Application describes “an unequal-torque coil spring . . . which uses
a simple method for disposing different curvatures in multiple front and rear
sections of a reed strip, so as to provide a feedback force as multiple levels
of torque in response to actual working requirements from a curtain system.”
Ex. 2016, 54 (lines 12–17) (emphasis added); id. at 36 (Fig. 12, illustrating a
variable torque distribution provided in a spring). Thus, the
U.S. Application describes an unequal-torque coil spring that provides a
range of feedback torque values, which necessarily would include a
minimum and maximum of the range. We, further, agree with Patent
Owner’s annotations to Figure 12 of the U.S. Application, identifying the
maximum and minimum feedback torque values provided in that specific
example. See Mot. 13, 19; Rev. Mot. 17; Paper 21, 9–10.
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However, we agree with Petitioner that the U.S. Application does not
provide written description support for the limitation “a ratio of the
maximum and the minimum feedback torque values is 4:1” in proposed
substitute claims 5 and 6. The key sentence of the U.S. Application at issue
here is: “A ratio between the above-described torque forces can be set
between 4:1.” Ex. 2016, 57 (lines 9–10). First, the meaning of this sentence
is unclear. Stating that the identified ratio “can be set between” suggests a
range of ratios is contemplated, but then only one ratio “4:1” is provided.
And even if we were to assume that Patent Owner is correct, and that a
person of ordinary skill in the art would understand only one ratio (i.e., 4:1)
was contemplated, this would not cure the problem.
Even with that assumption, this sentence of the U.S. Application does
not reasonably specify which two torques are compared, to have the
specified 4:1 ratio between them. The U.S. Application first describes five
different torques. See Ex. 2016, 55 (line 13) – 57 (line 8) (describing
increasing torque TC and first, second, third, and fourth torques T1–T4).
The key sentence then refers to “[a] ratio between the above-described
torque forces.” Id. at 57 (lines 9–10). This does not specify which of the
five “above-described” torques is compared in the ratio. Just as important, it
also does not describe that the compared torques are the maximum and
minimum torques of the spring, which are not even mentioned in the
“above” disclosure. See id. at 55 (line 13) – 57 (line 8). There is simply
nothing in this key sentence, or in the other U.S. Application disclosures
cited by Patent Owner, that correlates the 4:1 ratio to the maximum and
minimum torques of the spring. See id. at 30 (Fig. 4), 32–34 (Figs. 6–10),
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36 (Fig. 12), 47 (line 15) – 48 (line 5), 56 (line 6) – 57 (line 1), 57 (lines 9–
13), 60 (lines 4–8).
Some support for Patent Owner’s position might be found in the
disclosure of a “spring to generate usable feedback torque values with a ratio
between 4:1.” Ex. 2016, 52 (lines 7–9) (emphasis added). However, Patent
Owner does not rely on the “usable” term in this regard so as to show that
this term is what ties the 4:1 ratio to the maximum and minimum torques of
the spring and, thus, reasonably conveys to those skilled in the art that the
inventor had possession of the claimed subject matter. See Mot. 11–13,
17–20; Rev. Mot. 9–10, 14–24; Ex. 2020 ¶¶ 80–87; Ex. 2021 ¶¶ 11–19,
22–47. There is, therefore, no evidence of record that can support a
determination that “usable” torques correspond to the maximum and
minimum torques of the spring.
Dr. Vallee’s testimony on this issue is not persuasive. His extended
discussion of mechanical systems incorporating variable torque springs
being “routinely defined by” the ratio between the maximum and minimum
torques of the spring is largely unsupported by citation to supporting
evidence. See Ex. 2021 ¶¶ 31–36, 41–42. He does cite Exhibits 2022
and 2023, but these exhibits simply define the term “ratio,” and do not
contain any discussion of comparing the maximum and minimum torques of
an unequal-torque spring. See id. ¶¶ 31–32, 42. This lack of evidentiary
support, in combination with the lack of disclosure in the U.S. Application
comparing the maximum and minimum torques of a spring, makes this
particular testimony too conclusory to be persuasive here.
We also agree with Petitioner’s argument that a person of ordinary
skill in the art would have appreciated that comparing even the intermediate
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torques of two variable torque springs, and not just the maximum and
minimum torques of the springs, would have been useful in some instances.
See, e.g., Rev. Opp. 8–9. This consideration further weakens the link
between “the above-described torque forces” in the U.S. Application, and
the maximum and minimum torque forces of the spring, specifically, which
Dr. Vallee attempts to make.
Moreover, Dr. Vallee’s reliance on Figure 12 of the U.S. Application
is unavailing. Dr. Vallee does not cite, and we cannot find, any disclosure in
the U.S. Application indicating that the vertical axis of Figure 12 applies any
particular scale, much less a linear scale specifically. See Ex. 2021
¶¶ 43–44. For example, there is no vertical axis scale provided in Figure 12
itself. See Ex. 2016, 36. We, thus, determine that this testimony is not
adequately supported. See, e.g., Nystrom v. Trex Co., Inc., 424 F.3d 1136,
1148–49 (Fed. Cir. 2005) (reversing district court judgment of patent
invalidity based on software modeling of a Figure in the prior art patent,
which was not explicitly made to scale) (citing Hockerson-Halberstadt, Inc.
v. Avia Group Int’l, Inc., 222 F.3d 951, 956 (Fed. Cir. 2000) and In re
Wright, 569 F.2d 1124, 1127 (CCPA 1977)).
We finally address Patent Owner’s reliance on the Taiwan
Application as demonstrating support for proposed substitute claims 5 and 6.
See Mot. 20–22, 25; Opp. 6–8. We first considered this issue in our
Preliminary Guidance, in which we stated: “We are not aware of any legal
authority that would permit Patent Owner here to rely on disclosures found
in the Taiwan [A]pplication, but not in the four corners of the
U.S. [A]pplication, to satisfy the written description requirement for
proposed substitute claims 5 and 6.” Paper 21, 5–6; see also Ariad, 598 F.3d
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at 1351 (the written description test is “an objective inquiry into the four
corners of the specification from the perspective of a person of ordinary skill
in the art”). The Revised Motion to Amend did not thereafter address the
Taiwan Application at all, or in particular, supply a legal theory that would
support Patent Owner’s reliance on the Taiwan Application here. We, thus,
continue to conclude that Patent Owner’s reliance on the Taiwan
Application’s disclosure as demonstrating support for proposed substitute
claims 5 and 6 is legally unsound for the same reasons set forth in our
Preliminary Guidance. See Paper 21, 5–6.
Further, the disclosure of the Taiwan Application cited by Patent
Owner in this regard provides: “In addition, a maximum force and a
minimum torque force values are determined according to the size of
the curtain set 1, and a ratio between the above-described torque forces can
be set between 4:1.” Ex. 2019, 12–13 (emphasis added in bold). Here, the
plain text also appears in the U.S. Application, but the bolded text does not.
Compare id. at 12 (line 17) – 13 (line 8), with Ex. 2016, 57 (lines 2–13).
Thus, “the above-described torques” in the U.S. Application refers back to
torques TC and T1–T4, shown in Figures 9 and 12, rather than maximum
and minimum torques as in the Taiwan Application. Ex. 2016, 55 (line 12) –
57 (line 8). This discrepancy between the Taiwan and U.S. Applications
demonstrates an intent to disavow the disclosure in the Taiwan Application
that was omitted from the U.S. Application—i.e., a description of comparing
minimum and maximum torque forces in a ratio of 4:1.
For the foregoing reasons, we deny the Motion to Amend, because
adding proposed substitute claims 5 and 6 would introduce new matter to the
’547 patent.
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D. Patentability of Proposed Substitute Claims 5 and 6
We must assess the patentability of Patent Owner’s proposed
substitute claims 5 and 6 without placing the burden of persuasion on Patent
Owner. See 35 U.S.C. § 326(d)–(e); Aqua Prods., 872 F.3d at 1328
(construing 35 U.S.C. § 316(e), which employs language identical to
§ 326(e)); see also Lectrosonics, at 3‒4. Thus, Petitioner here “bears the
burden of proving that the proposed amended claims are unpatentable by a
preponderance of the evidence.” Bosch Auto. Serv. Sols., LLC v. Matal,
878 F.3d 1027, 1040 (Fed. Cir. 2017) (as amended on rehearing, Bosch
Auto. Serv. Sols., LLC v. Iancu, No. 2015-1928 (Fed. Cir. Mar. 15, 2018)
(Order on Petition for Panel Rehearing)); Lectrosonics, at 3–4.
Petitioner argues proposed substitute claims 5 and 6 lack written
description support in the ’547 patent, and are therefore unpatentable under
35 U.S.C. § 112(a), citing its arguments that those claims would add new
matter to the U.S. Application. Opp. 2–8; Rev. Opp. 12–13. Patent Owner’s
opposition, likewise, repeats the same arguments. See Rev. Mot. 18–25.
The pertinent disclosures of the U.S. Application at issue in the § 326(d)
new matter inquiry (Exhibit 2016) are identical to the disclosures of the
’547 patent at issue in the present § 112(a) unpatentability inquiry
(Exhibit 1001). For the reasons discussed above regarding new matter, and
considering all of the evidence and arguments offered by both parties, we
conclude a preponderance of the evidence demonstrates proposed substitute
claims 5 and 6 are unpatentable as lacking written description support in the
’547 patent.
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VI. SUMMARY OF CONCLUSIONS
In summary, we determine a preponderance of the evidence does not
establish claims 1 and 3 of the ’547 patent are unpatentable, but does
establish claims 2 and 4 of the ’547 patent are unpatentable, as shown in the
following table:16
Claim(s) 35 U.S.C. § Reference(s)/Basis
Claims
Shown
Unpatentable
Claims
Not Shown
Unpatentable
1, 3 102(a)(2) Lin ’943 1, 3
1, 3 103 Lin ’943, Yamashita 1, 3
1, 3 103 Admitted Prior Art, Lin ’943 1, 3
1 103 Maeda 1
3 103 Lin ’109, Maeda 3
1 103 Wang Drawing 1
3 103 Ruggles, Wang Drawing 3

16 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
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Claim(s) 35 U.S.C. § Reference(s)/Basis
Claims
Shown
Unpatentable
Claims
Not Shown
Unpatentable
2, 4 112(b) Indefiniteness 2, 4
1 102(a)(1) On Sale Bar (Wang Springs) 1
Overall
Outcome 2, 4 1, 3
In addition, we deny Patent Owner’s Motion to Amend the
’547 patent, as shown in the following table:
Motion to Amend Outcome Claim(s)
Original Claims Cancelled By Amendment
Substitute Claims Proposed in the Amendment 5, 6
Substitute Claims: Motion to Amend Granted
Substitute Claims: Motion to Amend Denied 5, 6
Substitute Claims: Not Reached
VII. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that Petitioner has not shown claims 1 and 3 of the
’547 patent are unpatentable by a preponderance of the evidence;
FURTHER ORDERED that Petitioner has shown claims 2 and 4 of
the ’547 patent are unpatentable by a preponderance of the evidence;
FURTHER ORDERED that Patent Owner’s Motion to Amend the
’547 patent is denied; and
FURTHER ORDERED that, because this is a final written decision,
parties to this proceeding seeking judicial review of our Decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.
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FOR PETITIONER:

Hao Tan
Shen Wang
ARCH & LAKE LLP
haotan@archlakelaw.com
shenwang@archlakelaw.com

FOR PATENT OWNER:

Mainak A. Mehta
Michael C. Jones
Robert H. Sloss (pro hac vice)
PROCOPIO, CORY, HARGREAVES & SAVITCH LLP
miku.mehta@procopio.com
michael.jones@procopio.com
robert.sloss@procopio.com