GeigTech LLC

Patent Trials and Appeals Board

Oct 1, 2020

PGR2020-00012 (P.T.A.B. Oct. 1, 2020)

Trials@uspto.gov Paper 22
571.272.7822 Entered: October 1, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

LUTRON ELECTRONICS CO., INC.,
Petitioner,

v.

GEIGTECH EAST BAY LLC,
Patent Owner.
____________

PGR2020-00012
Patent 10,294,717 B2
____________

Before BARRY L. GROSSMAN, FRANCES L. IPPOLITO, and
BRENT M. DOUGAL, Administrative Patent Judges.

IPPOLITO, Administrative Patent Judge.

DECISION
Denying Petitioner’s Request for Rehearing of Decision Denying Institution
of Post-Grant Review
37 C.F.R. § 42.71(d)

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Patent 10,294,717 B2
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I. INTRODUCTION
Petitioner Lutron Electronics Co., Inc., filed a Petition (Paper 3) and a
Corrected Petition (Paper 4, “Pet.”) requesting post-grant review of claims
1–6 and 8–15 of U.S. Patent No. 10,294,717 B2 (Ex. 1001, “the ’717
patent”). On August 4, 2020, this panel denied institution of post-grant
review of claims 1–6 and 8–15. (Paper 20, “Decision” or “Dec”). Petitioner
filed a request for rehearing of our determination that the Petitioner fails to
demonstrate that it is more likely than not that at least 1 of the claims
challenged in the Petition is unpatentable. Paper 21 at (“Request” or “Req.
Reh’g”). For the reasons given below, we deny the Request.
II. LEGAL STANDARDS
“The burden of showing a decision should be modified lies with the
party challenging the decision,” and the challenging party “must specifically
identify all matters the party believes the Board misapprehended or
overlooked, and the place where each matter was previously addressed” in a
paper of record. 37 C.F.R. § 42.71(d) (2019). Because Petitioner seeks
rehearing of our Decision denying the Petition, it must show an abuse of
discretion. See 37 C.F.R. § 42.71(c) (“When rehearing a decision on
petition, a panel will review the decision for an abuse of discretion.”). An
abuse of discretion may arise if the decision is based on an erroneous
interpretation of law, if a factual finding is not supported by substantial
evidence, or if an unreasonable judgment is made in weighing relevant
factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005);
Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re
Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).
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III. ANALYSIS
The Decision addressed five grounds of unpatentability, all of which
rely on Colson as the primary reference. In the Petition, Petitioner asserts
the following grounds of unpatentability:
Reference(s)/Basis 35 U.S.C. § Claims Challenged
Colson1 102 1–4, 8–10, 13, 15
Colson 102 1–4, 8–10, 13, 15
Colson 103 5, 14
Colson, Fraczek2 103 6, 11
Colson 103 12
Pet. 17. According to Petitioner, the Board overlooked and misapprehended
Petitioner’s arguments based on the teachings of Colson with regard to claim
element [1.2] and similar elements in other independent claims. Req. Reh’g
2. We are not persuaded.
Colson is a reference entitled “Control of Architectural Opening
Coverings” and generally relates to architectural opening covering
assemblies. Ex. 1005 at [54], ¶ 2. Colson’s Figure 1 is reproduced below.

1 Colson et al., WO 2013/052084 A1, published Apr. 11, 2013 (Ex. 1005)
(“Colson”).
2 Fraczek et al., U.S. Patent No. 6,817,402 B1, issued Nov. 16, 2004 (Ex.
1021) (“Fraczek”).
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Figure 1 depicts an exemplary roller type architectural opening covering
with a manual control. Id. ¶ 5. Covering 100 includes slip-ring connector
114 and clutch mount 116. Id. ¶ 27. Slip-ring connector 114 is insertable in
mating connector 118 for mounting covering 100 and for electrically
connecting covering 100 to electrical power. Id. ¶ 28. Mating connector
1183 includes frame 120 that defines opening 123 into which axially
extending protrusion 115 of slip-ring connector 114 is inserted. Id. ¶ 28.
Outer radial surface 127 of frame 120 receives an inner radial surface of
slip-ring connector 114’s bracket 134. Id. Colson further discloses that
frame 120 is fixed to bracket 128, and “supply wires 130 pass through
openings (not illustrated) in the bracket 128 and the frame” 120. Id. ¶ 31.
In the Decision, we found that “Petitioner has not adequately shown
why a POSITA would have understood Colson’s Figure 1 to teach the

3 Colson refers to slip-ring connector 114 when describing frame 120 and its
opening 123, but Colson’s Figure 1 shows that frame 120 and opening 123
are part of mating connector 118.
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“passage extending through the bracket from the side to an area of the
bracket adjacent the roller window shade assembly” as recited in claim 1.
We determined that Petitioner’s arguments relied on annotated versions of
Colson’s Figure 1 that were not in the original or otherwise supported
sufficiently by evidence in the record, including Dr. Messner’s testimony
and paragraph 31 of Colson. Dec. 23–26.
In its Request, Petitioner contends that Colson clearly and explicitly
discloses a passage (i.e., openings) for wiring through the bracket. Req.
Reh’g 9. For example, Petitioner argues that “Colson’s disclosure taken as a
whole, including the unambiguous language of Colson paragraph 31, points
to only one conceivable conclusion: supply wires do in fact extend within a
passage in the bracket.” Id. at 5 (citing Pet. 42–43; Ex. 1003 ¶ 113), 10
(citing Pet. 32, 42–43; Ex. 1003 ¶ 113) (“[T]he wiring could not pass
through the solid material of the bracket in order to reach the connector 118
unless the disclosed passage in Colson’s actual bracket run with the wiring
shown in the figure.”). Petitioner further asserts that Figure 1’s cross-
sectional view confirms that the path of the passage runs through Colson’s
bracket and satisfies the required passage recited in the challenged claims of
the ’717 patent. Id. at 7. Petitioner adds that “Colson’s ‘not illustrated’
parenthetical does not mean undisclosed in Colson as a whole. Rather, the
parenthetical simply indicates that the wiring ‘openings’ themselves (as
opposed to the path of the wiring extending through those openings are not
shown in Figure 1).” Id. at 6 (citing Ex. 1005 ¶ 31). Further, Petitioner
contends that its annotations of Figure 1 did not change Colson’s disclosure,
and that Dr. Messner’s testimony is consistent with Colson’s teachings. Id.
at 7–8.
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Because independent claims 1, 4, 6, 8, and 13–15 recite similar
limitations regarding a “passage” and “opening,” our discussion focuses on
claim 1, but our analysis applies equally to all of the challenged claims.
Claim 1 is directed to a bracket configured to be coupled to a support surface
and configured to support a roller window shade assembly. Ex. 1001,
10:20–23. The recited bracket includes “a side configured to bear against
the support surface such that the bracket extends away from the support
surface and is adjacent an end of the roller window shade assembly.” Id. at
10:24–27. Claim 1 also requires “a passage extending through the bracket
from the side to an area of the bracket adjacent the roller window shade
assembly[.]”
As discussed in the Decision, we disagree with Petitioner that
Colson’s teaching of the claimed passage is clear and express, or otherwise
supported by the evidence in the preliminary record. Dec. 23–25. Paragraph
31 of Colson is provided in its entirety below:
The example frame 120 of Figure 1 is fixed to a bracket 128 that
is fixed in or adjacent to an architectural opening using a
mechanical fastener such as a screw 132. In the illustrated
example, the supply wires 130 pass through openings (not
illustrated) in the bracket 128 and the frame 130.
Ex. 1005 ¶ 31. Referring to its annotated Figure 1, shown below, Petitioner
contends that when read with paragraph 31, a POSITA would conclude that
there must be a passage through the bracket and frame as shown in
Petitioner’s annotated Figure 1. Req. Reh’g 5.
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Annotated Figure 1 from Page 44 of Petition
Pet. 44. However, we observe that Colson makes no mention of a passage
that wires 130 must pass through. Instead, Colson teaches that there are
“openings” in the bracket and frame. Id. ¶ 31. And, Colson explicitly states
that the openings are not shown in Figure 1. Thus, Colson, at most, teaches
that wires pass through the bracket and frame, but does not specify where
the openings are in Figure 1 or, otherwise, define the path of the passage.
This is important because claim 1 requires a specific passage that extends
“through the bracket from the side to an area of the bracket adjacent the
roller window shade assembly.” Petitioner would have us assume that
Colson’s two-dimensional Figure 1 read with paragraph 31 must disclose
wires passing through a specific path through the bracket, as recited in the
claims. However, we decline to make Petitioner’s proposed assumption
because it is not supported by Colson or other evidence.
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Indeed, as Patent Owner points out in its Preliminary Response
(which we also noted in the Decision):
Colson never discusses or describes such a passage. The Petition
just assumes that it is there. The only reference in Colson that
could possibly relate to the “passage” limitation is Colson’s
reference to an opening (not a passage) with respect to Figure 1
is the following: “the supply wires 130 pass through openings
(not illustrated) in the bracket 128 and the frame [120].” Ex. 1005
¶0031 (emphasis added). Openings are holes not a passage that
allows the wires to obscured as required by the claims. There is
no explanation of where these openings are or anywhere these
openings are or any other information about them in Colson other
than a lone sentence. And they are expressly not shown in the
drawing, contrary to the Petition.
Prelim. Resp. 47. Consistent with the preliminary record, we agreed with
Patent Owner, in our Decision, that “[e]ven if Colson’s paragraph 31
describes an opening in the bracket for wiring, we are not persuaded that this
general disclosure teaches the specific passage recited in claim 1 (i.e., “a
passage extending through the bracket from the side to an area of the bracket
adjacent the roller window shade assembly”) that Petitioner has highlighted
in blue in the annotated figures.” Dec. 25. Additionally, we note also that
the preliminary record supports Patent Owner’s position that “Colson’s
Figure 1 is a two-dimensional rendering . . . [and] Figure 1 makes clear that
the wires are running outside, in front of the bracket.” Prelim. Resp. 44.
Patent Owner provides an enlarged view of Figure 1, reproduced below,
which shows an exposed right wire passing outside of the bracket. Id. at 45.
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Patent 10,294,717 B2
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Enlarged Portion of Figure 1 from Page 45 of the Preliminary Response.
Prelim. Resp. 45. Thus, at a minimum, the parties’ competing versions of
Colson’s Figure 1 highlight the ambiguity of Colson’s disclosure at issue
here. In particular, it is unclear from Colson’s Figure 1 where the wires pass
through the bracket and frame and whether the specific passage recited in
claim 1 (and the other challenged independent claims) is disclosed. See Dec.
25. Furthermore, we disagree with Petitioner’s argument that we
misapprehended Dr. Messner’s testimony. In the Decision, we considered
Dr. Messner’s testimony, but found it unpersuasive because his conclusions
are based on this same disclosure in Colson, which we have determined does
not show Colson must teach the recited passage. See id. at 24–25 (citing Ex.
1005 ¶¶ 113, 115).
IV. CONCLUSION
After considering Petitioner’s arguments for rehearing, we determine
that Petitioner has not carried its burden of showing that we misapprehended
or overlooked any matter or that the Decision denying institution of post-
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Patent 10,294,717 B2
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grant review was an abuse of discretion.
V. ORDER
Accordingly, it is:
ORDERED that Petitioner’s request for rehearing is denied.

PETITIONER:

Nirav Desai
Ndesai-ptab@sternekessler.com

Jason Eisenberg
Jasone-ptab@sternekessler.com

Trevor O’Neill
Toneill-ptab@sternekessler.com

PATENT OWNER:

Gary Sorden
Gary.sorden@klemchuk.com

Marcella Bodner
mbodner@coleschotz.com