Norman International, Inc.v.Hunter Douglas Inc.Download PDFPatent Trial and Appeal BoardFeb 10, 201512856969 (P.T.A.B. Feb. 10, 2015) Copy Citation Trials@uspto.gov Paper 7 Tel: 571-272-7822 Entered: February 10, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _______________ NORMAN INTERNATIONAL, INC., Petitioner, v. HUNTER DOUGLAS INC., Patent Owner. _______________ Case IPR2014-01176 Patent 8,230,896 B2 _______________ Before LINDA M. GAUDETTE, JAMES P. CALVE and HYUN J. JUNG, Administrative Patent Judges. GAUDETTE, Administrative Patent Judge. DECISION Denying Institution of Inter Partes Review 37 C.F.R. § 42.108 IPR2014-01176 Patent 8,230,896 B2 2 I. INTRODUCTION On July 16, 2014, Norman International, Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) to institute an inter partes review of claims 1–5 (the “challenged claims”) of U.S. Patent No. 8,230,896 B2 (Ex. 1001, “the ’896 patent”). 35 U.S.C. § 311–319. Hunter Douglas Inc. (“Patent Owner”) timely filed a Preliminary Response (Paper 6, “Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314, which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of Petitioner’s Petition and Patent Owner’s Preliminary Response, we determine Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, the Petition is denied under 35 U.S.C. § 314(a) for the reasons that follow. II. BACKGROUND A. Related Matters Contemporaneous with the instant Petition, Petitioner also filed Petitions for inter partes review of U.S. Patent Nos. 6,968,884 B2, 6,283,192 B1, and 6,648,050 B1. These Petitions have been assigned the following case numbers: IPR 2014-01175, IPR 2014-01174 and IPR 2014- 01173, respectively. Of the patents at issue in these proceedings, only U.S. Patent No. 6,968,884 B1 (at issue in IPR 2014-01175) is in the same patent family as the ’896 patent. Petitioner previously submitted petitions for inter partes review of the same four patents on December 19–20, 2013. Pet. 2. On June 20, 2014, trial was instituted on claims 17 and 26 of U.S. Patent No. IPR2014-01176 Patent 8,230,896 B2 3 6,283,192 B1 in IPR2014-00283 (Paper 9). Trial was denied in the remaining three petitions: IPR2014-00276 (Paper 11), IPR2014-00282 (Paper 8) and IPR2014-00286 (Paper 8). Petitioner indicates that Patent Owner filed suit against Petitioner alleging infringement of the ’896 patent and the aforementioned three patents in Hunter Douglas Inc. v. Nien Made Enterprise Co., 1:13-cv-01412-MSK-MJW (D. Colo. May 31, 2013). Pet. 1. Petitioner was served with a complaint in the district court action on July 16, 2013. Id. at 3; Ex. 1009. B. The ’896 patent (Ex. 1001) The ’896 patent relates to a modular transport system for coverings for architectural openings, such as venetian blinds, pleated shades, and other horizontal or vertical blinds and shades. Ex. 1001, Title, 1:18–22. Typically, a transport system for such horizontal coverings includes a top head rail which both supports the covering and hides the mechanisms used to raise and lower, and/or open and close the covering. Id. at 1:25–27. A goal of the invention is to provide a system wherein these mechanisms are housed in independent, self-contained modules. Id. at 3:21–23. “Each module is easily and readily installed, mounted, replaced, removed, and interconnected within the blind transport system with an absolute minimum of time and expense.” Id. at 3:23–26. One embodiment of the invention is shown in Figure 214, reproduced below. IPR2014-01176 Patent 8,230,896 B2 4 Figure 214, above, is a schematic view of a covering for an architectural opening wherein the covering is supported by head rail 12 and the transport system is mounted in movable intermediate rail 12A. Ex. 1001, 65:42, 46–49. The transport system includes power module 20, transmission module 30, lift rod 26 and lift module 40. Id. at 65:46–48. The transport system travels up and down with the covering during extension and retraction thereof. Id. at 65:46–51. C. Illustrative Claims Of the challenged claims, claims 1 and 3 are independent. Claim 2 depends from claim 1. Claim 4 depends from claim 3, and claim 5 depends IPR2014-01176 Patent 8,230,896 B2 5 from claim 4. Claim 3, reproduced below, is illustrative of the claimed subject matter: 3. A transport mechanism for a covering for an architectural opening, comprising: a first rail; a second rail, which is movable relative to said first rail; a window covering extending between, and functionally secured to, said first and second rails, wherein movement of said second rail relative to said first rail extends and retracts said window covering; and a lifting mechanism mounted on said second rail, said lifting mechanism including a lift spool; a spring motor functionally connected to the lift spool; and a lift cord which wraps onto and off of said lift spool as said second rail moves; and a one-way brake mechanism mounted on said second rail which provides greater force to prevent the second rail from falling than to prevent the second rail from being raised. Claim 1 is identical to claim 3, with the exception of the last paragraph, which, in claim 1, reads: wherein the lifting mechanism provides sufficient lifting force and sufficient friction that the second rail may be raised and lowered just by the user urging it up and down and wherein, when the user releases the second rail at any elevation, the second rail remains stationary, neither rising nor falling, without the user activating or deactivating any additional mechanism wherein the sufficient friction includes braking friction provided by a one-way brake mechanism mounted on said second rail, wherein said one-way brake mechanism does not require activation or deactivation by the user. D. The Evidence of Record Petitioner’s patentability challenges are based on the following IPR2014-01176 Patent 8,230,896 B2 6 references: References Patents/Printed Publications Exhibit Tachikawa Japanese Patent Application S54-38648 (English Translation) 1002 Strahm US 3,327,765 1003 Skidmore GB 1,174,127 1004 Schuetz US 1,870,532 1005 Cohn US 2,390,826 1006 Petitioner also relies on the declaration of Lawrence E. Carlson, executed July 16, 2014 (Ex. 1007, “Carlson Declaration”), and the declaration of Patrick E. Foley, executed July 16, 2014 (Ex. 1008, “Foley Declaration”) in support of its patentability challenges. Pet. 4. E. The Asserted Grounds of Unpatentability Petitioner challenges the patentability claims 1–5 of the ’896 patent based on the following grounds: References Basis Claims challenged Tachikawa and Strahm §103 1–5 Tachikawa, Skidmore and Schuetz §103 1–5 Cohn and Strahm §103 1–5 III. CLAIM CONSTRUCTION Claims of an unexpired patent are interpreted using the broadest reasonable construction in light of the specification of the patent. See Office IPR2014-01176 Patent 8,230,896 B2 7 Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012); 37 C.F.R. § 42.100(b). At this stage of the proceeding, for purposes of this Decision, we determine no express construction of the claim language is required. IV. ANALYSIS A. Obviousness of Claims 1-5 Over Tachikawa in View of Strahm 1. Tachikawa (Ex. 1002) Tachikawa Figure 2, reproduced below, presents a vertical front, cross-sectional view of a device for raising and lowering venetian blinds. Ex. 1002, 1:2, 4:29–30. As shown in Figure 2, above, Tachikawa’s device for raising and lowering venetian blinds comprises upper case 1 having rotatable operating shaft 2 mounted thereon. Id. at 2:12–13. Drums 3 are attached to multiple IPR2014-01176 Patent 8,230,896 B2 8 locations on operating shaft 2. Id. at 2:14–16. Tapes 4 are wound onto drums 3, passed through through-holes in blind slats 5, and coupled to lower case 6. Id. at 2:14–18. Bevel gear 7 is attached to one end of operating shaft 2 and engages bevel gear 8. Id. at 2:18–21. Chain pulley 10 is fixed to drive shaft 9 of bevel gear 8. Id. at 2:19–20. Endless chain 11 is hung on chain pulley 10 and is suspended downward. Id. at 2:21–22. The blinds are raised or lowered by pulling chain 11 to turn chain pulley 10, thereby turning operating shaft 2 through engagement and interlocking of bevel gears 7, 8. See id. at 3:1–5. When the blinds are raised, tapes 4 wrap around drums 3 that turn in the same direction as operating shaft 2, pulling lower case 6 and sequentially stacking slats 5 on lower case 6. Id. at 3:7–9. 2. Strahm (Ex. 1003) Strahm describes “a raising and lowering mechanism for a blind” that includes a brake for controlling the rate of descent of the blind, the brake being “automatically released during raising of the blind so that raising can be performed with [a] minimum of effort.” Ex. 1003, 1:29–34. Figure 1 of Strahm, reproduced below, presents a front elevational view of a blind. Id. at 1:60–61. IPR2014-01176 Patent 8,230,896 B2 9 Strahm Figure 1, above, shows a blind comprising a number of parallel slats 1 suspended from operating shaft 4 by flexible ladders 2. Id. at 2:2–9. Operating shaft 4 can be driven by a crank or a motor. Id. at 4:10– 11. Pull-tapes 6, attached to bottom cross-member 5 of the blind, are wound around drums disposed in a raising and lowering mechanism received in box 7 secured to plate 8 disposed at the top of a window opening. Id. at 2:13–17. 3. Analysis Petitioner contends Tachikawa’s “blinds roll-up device . . . corresponds to the lifting mechanism” of claims 1 and 3, and is “mounted in upper case 1, which is a stationary rail.” Pet. 24, 30. Petitioner likewise contends “Strahm []discloses a raising and lowering mechanism corresponding to the lifting mechanism of [claims 1 and 3] mounted in the stationary plate 8 of the blind.” Id. Petitioner thus maintains both Tachikawa and Strahm disclose “a lifting mechanism mounted on said second rail” as recited in claims 1 and 3. Id. As acknowledged by Petitioner, Tachikawa’s upper case 1 and Strahm’s stationary plate 8 are stationary. Id. Claims 1 and 3, however, require that the lifting mechanism is mounted on a movable rail. Moreover, Petitioner’s assertions that each of Tachikawa’s and Strahm’s lifting mechanisms are mounted on the second rail (upper case 1 and stationary plate 8, respectively) is inconsistent with its identification of Tachikawa’s upper case 1 and Strahm’s stationary plate 8 as corresponding to “a first rail,” and Tachikawa’s lower case 6 and Strahm’s bottom cross-member 5 as corresponding to “a second rail.” See id. at 23–24, 30. Because Petitioner has failed to explain how Tachikawa and Strahm disclose or suggest “a lifting mechanism mounted on [a] second rail” “which IPR2014-01176 Patent 8,230,896 B2 10 is movable relative to [a] first rail” as recited in independent claims 1 and 3, Petitioner has not shown a reasonable likelihood it would prevail in showing claims 1–5 would have been obvious over Tachikawa and Strahm. B. Obviousness of Claims 1–5 Over Tachikawa in View of Skidmore and Schuetz Petitioner’s challenge based on Tachikawa in view Skidmore and Schuetz, relies on Tachikawa as disclosing a lifting mechanism (blinds roll- up device) mounted in a second rail (upper case 1). Pet. 37–38, 43–44. Skidmore and Schuetz are relied upon for a disclosure or suggestion of the recited “one-way brake mechanism,” claims 1 and 3. See id. at 38–42, 44–45. As discussed in Section IV.A.3., above, Tachikawa’s upper case 1 is stationary and, therefore, not “movable relative to [a] first rail” as recited in independent claims 1 and 3. Because Petitioner has failed to explain how Tachikawa in view of Skidmore and Schuetz discloses or suggests “a lifting mechanism mounted on [a] second rail” “which is movable relative to [a] first rail” as recited in independent claims 1 and 3, Petitioner has not shown a reasonable likelihood it would prevail in showing claims 1–5 would have been obvious over this combination of references. C. Obviousness of Claims 1–5 Over Cohn in View of Strahm 1. Cohn (Ex. 1006) Cohn describes a cordless venetian blind A which may be secured to a window casing by spaced mounting brackets 5. Ex. 1006, 1, right col., ll. 28–32. Cohn Figure 1 is a fragmentary front elevational view of the venetian blind. Id. at 1, right col., ll. 1–2. An upper portion of Figure 1 is reproduced below. IPR2014-01176 Patent 8,230,896 B2 11 As shown in Figure 1, above, Cohn’s venetian blind A includes drums 8 mounted on shaft 7. Id. at 1, right col., ll. 36–37. Flexible metal lift tapes 10 are wound on drums 8 (id. at ll. 39–40) and connected to bottom rail 13, for raising and lowering slats 17 (id. at 2, left col., ll. 3–6). “[T]o lower the blind, a person merely grasps [] bottom rail 18 and pulls it downwardly[,] . . . effect[ing] an unreeling of [] lift tapes 10 from [] drums 8 and caus[ing] rotation of said drums and [] shaft 7, upon which they are mounted.” Id. at 3, left col., ll. 43–48. “The blind may be stopped and maintained at any desired height . . . by suitable means, such as centrifugal pawl stops [43].” Id. at 3, right col., ll. 1–3. To raise the blind from a lowered position, pawl stops 43 must be released (id. at ll. 20–21) to allow spring motor 20 to raise the blind (id. at 3, left col., ll. 16–17). This is accomplished by a quick downward pull followed by a sudden relaxing of the pull “in the well known manner used in operating conventional window shades.” Id. at 3, right col., ll. 22–24. IPR2014-01176 Patent 8,230,896 B2 12 2. Analysis Petitioner contends the portion of Cohn’s blind described as structurally containing the lifting mechanisms corresponds to a stationary head rail and, thus, “a first rail” as recited in independent claims 1 and 3. Pet. 51 (citing Ex. 1006, 2 [sic 1], right col., ll. 30–43), 56. Petitioner contends Cohn’s bottom rail 18 moves relative to this stationary head rail and, therefore, corresponds to “a second rail, which is movable relative to said first rail.” Id. Petitioner relies on Strahm solely for a disclosure or suggestion of a “one-way brake mechanism” (claims 1 and 3). Pet. 54–55, 57–58. Petitioner contends Cohn’s lifting mechanisms, which are contained in the stationary head rail, correspond to “a lifting mechanism mounted on said second rail.” Id. at 51–52, 57. Petitioner has not explained how Cohn’s lifting mechanisms mounted on the stationary head rail meet the claim limitation of “a lifting mechanism mounted on [a] second rail” “which is movable relative to [a] first rail” as recited in independent claims 1 and 3. Moreover, Petitioner’s position is inconsistent with its identification of Cohn’s stationary head rail as corresponding to the first rail. See id. at 51, 56. Accordingly, Petitioner has not shown a reasonable likelihood it would prevail in showing claims 1–5 would have been obvious over Cohn and Strahm. V. CONCLUSION For the above reasons, Petitioner has not demonstrated that there is a reasonable likelihood it would prevail in showing the unpatentability of at least one of the challenged claims. IPR2014-01176 Patent 8,230,896 B2 13 VI. ORDER For the reasons given, it is ORDERED that the Petition is denied, and no trial is instituted. IPR2014-01176 Patent 8,230,896 B2 14 PETITIONER: Bing Ai Kourtney Mueller Perkins Coie LLP Ai-ptab@perkinscoie.com KMerrill@perkinscoie.com PATENT OWNER: Kristopher Reed Darin Gibby Kilpatrick Townsend & Stockton LLP HD-Norman-IPR@kilpatricktownsend.com dgibby@kilpatricktownsend.com Copy with citationCopy as parenthetical citation