Norman International, Inc.v.Andrew J. Toti Testamentary Trust

Patent Trial and Appeal Board

Jun 20, 2014

09685312 (P.T.A.B. Jun. 20, 2014)

Trials@uspto.gov Paper 8
Tel: 571-272-7822 Entered: June 20, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
NORMAN INTERNATIONAL, INC.
Petitioner
v.
ANDREW J. TOTI TESTAMENTARY TRUST, RUSSELL L. HINCKLEY, SR.
(CO-TRUSTEE) and ROBERT F. MILLER (CO-TRUSTEE)
Patent Owner
_______________

Case IPR2014-00286
Patent 6,648,050 B1
_______________

Before TONI R. SCHEINER, LINDA M. GAUDETTE, and
JACQUELINE WRIGHT BONILLA, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

Case IPR2014-00286
Patent 6,648,050 B1

2

I. INTRODUCTION
On December 20, 2013, Norman International, Inc. (“Petitioner”) filed a
Petition (Paper 1, “Pet.”) to institute an inter partes review of claims 1, 2, 5, 6, 9-
10, 13, and 14, (the “challenged claims”) of U.S. Patent No. 6,658,050 (Ex. 1001,
“the ’050 patent”). 35 U.S.C. § 311. Andrew J. Toti Testamentary Trust, Russell
L. Hinckley, Sr. (Co-Trustee) and Robert F. Miller (Co-Trustee) (collectively,
“Patent Owner”) timely filed a Preliminary Response (Paper 7, “Prelim. Resp.”).
We have jurisdiction under 35 U.S.C. § 314(a).
The standard for instituting an inter partes review is set forth in 35 U.S.C.
§ 314(a):
THRESHOLD—The Director may not authorize an inter partes
review to be instituted unless the Director determines that the
information presented in the petition filed under section 311 and any
response filed under section 313 shows that 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 the 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. 6,283,192 B1; 6,968,884 B2; and 8,230,896
B2. These Petitions have been assigned the following case numbers: IPR 2014-
00283, IPR 2014-00276, and IPR 2014-00282, respectively. Of the patents at issue
Case IPR2014-00286
Patent 6,648,050 B1

3

in these proceedings, only U.S. Patent No. 6,283,192 B1 (at issue in IPR 2014-
00283) is in the same patent family as the ’050 patent. Petitioner indicates that
Patent Owner, together with Hunter Douglas Inc.,
1
filed suit against Petitioner
alleging infringement of the ’050 patent and the aforementioned three patents in
Hunter Douglas. v. Nien Made Enterprise, 1:13-cv-01412-MSK-MJW (D. Col.
May 31, 2013). Pet. 2.
B. The ’050 patent (Ex.1001)
The ’050 patent
relates generally to spring drives or motors, including flat (or spiral
coil) and coil spring drives, which are useful in numerous
applications, to other components which are useful in combination
with such spring drives, and, in particular, to the application of such
spring drives and components and combinations thereof to window
cover systems.
Ex. 1001, 1:21-27. The word “cover,” as used in the ’050 patent, “refers to
expandable or extendible structures such as blinds and drapes[,] . . . includ[ing] slat
structures such as so-called Venetian or slat blinds.” Id. at 1:33-36. For
convenience, the invention is described below in connection with its application to
venetian blinds. A venetian blind window cover system is depicted in Figure 1,
below.

1
Patent Owner identifies Hunter Douglas as the exclusive licensee of the
’050 patent. Prelim. Resp. 1.
Case IPR2014-00286
Patent 6,648,050 B1

4

Figure 1, above, is a front elevational view of venetian blind window cover
system 10 in the closed (fully lowered) position. Ex. 1001, 9:29-30. Window
cover system 10 comprises top housing 11 having a spring drive unit (not shown)
mounted therein. Id. at 9:31-33. Blind 12 comprises horizontal slats 13 and
bottom rail 14. Id. at 9:33-34. Spaced cord ladders 17 are suspended from top
housing 11 and rungs 21 of ladders 17 are routed along and/or attached to the
underside of individual horizontal slats 13 so that when ladders 17 are fully
extended (lowered) and blind 12 is thus fully lowered, the weight of each slat 13 is
supported by ladders 17, with little weight on lift cords 16, used to raise and lower
blind 12. Id. at 9:47-53. As blind 12 is raised from the fully extended position,
slats 13 are sequentially collected on bottom rail 14, starting with the bottom-most
slats, so that an increasing weight is supported on bottom rail 14 and by lift
cords 16. Id. at 9:54-59. In other words, the weight supported by lift cords 16 is at
a maximum when blind 12 is open (raised), and at a minimum when blind 12 is
closed (lowered), id. at 9:59-62, thereby necessitating the use of differing amounts
of force to raise or lower blind 12 depending on its position, id. at 2:20-24.
Case IPR2014-00286
Patent 6,648,050 B1

5

The background section of the ’050 patent describes the known use of
conventional flat spring drives to assist in the opening and closing operations of
window covers, such as venetian blinds. Id. at 2:26-67. A conventional flat spring
drive (e.g., spring drive 26 illustrated in Fig. 13 below) comprises a pair of
spools 27, 28, having flat metal spring 29 wound thereon. Id. at 11:32-36.
Spool 27 is a storage spool, and spool 28 is a rotatable output spool. Id. at 11:39-
41. In conventional flat spring drive 26, flat metal spring 29 provides nearly
constant torque regardless of its wound position on spools 27, 28. Id. at 2:37-40.
A drawback of conventional flat spring drive 26 is that the torque force may
overcome the decreasing weight supported by lift cords 16 as blind 12 is lowered,
resulting in instability and an uncontrolled raising operation when blind 12 is
partially or fully extended (closed). Id. at 2:41-48. The background section of the
’050 patent also describes the known use of coil spring drives, illustrated in
Figures 5C and 10C, wherein spring force varies inversely to the variation of the
weight of the blind supported by the lift cords. Id. at 13:16-18. Coil spring drives
are similarly subject to instability and uncontrolled raising. Id. at 2:55-60.
The ’050 patent describes the use of varied torque flat spring drives that are
not as susceptible to the above-described drawbacks in the operating characteristics
of conventional flat spring drives and coil spring drives. Id. at 3:35-37. In varied
torque flat spring drive 31, 41(see id. at Figures 7 and 8), as spring 34, 44
“unwinds or winds as the blind is lowered or raised, the spring torque or force
decreases or increases in direct proportion to, and remains closely matched to, the
supported weight or compressive force of the blind.” Id. at 13:23-27. In varied
torque flat spring drive 31, the torque or force of spring 34 is directly proportional
to the degree of cove, or transverse curvature. Id. at 11:41-43. In varied torque
flat spring drive 41, spring 44 is perforated, and the torque or force is directly
Case IPR2014-00286
Patent 6,648,050 B1

6

proportional to the amount of spring material at a given point or region. Id. at
12:57-62.
The ’050 patent also describes the use of a spring drive unit, illustrated in
Figure 13 below, to improve the raising and lowering of window covers.
Figure 13, above, is a top plan view of an exemplary embodiment of spring
drive unit 15 mounted inside housing 11 of venetian blind window cover system
10. Ex. 1001, 7:1-6, 16:52-53. Spring drive unit 15 includes shaft 50,
conventional flat spring drive 26, or varied torque flat spring drive 31, 41, gear
transmission 70, and bevel gear set 60 operatively connecting spring drive 26, 31,
41, to shaft 50 and gear transmission 70. Id. at 16:52-53, 15:40-42; see also id. at
33:39-34:60 (challenged claims 1, 5, 9). Lift cords 16 of venetian blind 12 are
wound around lift pulleys 19, mounted on rotatable shaft 50. Id. at 16:60-65. Gear
transmission 70 comprises power gear 77 intermeshed with idler gear 75 and
intermeshed idler gears 71 and 73. Id. at 15: 51-54.
As the result of this arrangement, pulleys 19 and lift cords 16 rotate at one
rate, the same rate as gear 77 and shaft 50, and spring 29, 34, 44 rotates at another
rate, the same rate as right side output drum 33, idler gear 71, and bevel gears 60.
Id. at 16:3-7. Typically, the gear ratio of gear transmission 70 is selected so that
Case IPR2014-00286
Patent 6,648,050 B1

7

lift cord pulleys 19 rotate faster than the spring drive 26, 31, 41, thereby
diminishing proportionately the torque exerted by spring 29, 34, 44, as blind 12 is
lowered. Id. at 16:8-11, 19-22. As stated in the ’050 patent:
This permits the use of a more powerful spring to hold a large, heavy
blind in position at the uppermost position, where the cord-supported
weight is the greatest, and proportionately diminishes the force
exerted by the spring at the lowermost, closed condition when the
supported weight is a minimum, so that the powerful spring does not
overpower the weight of the blind and does not uncontrollably raise
the blind.
Id. at 17:37-44.
C. Illustrative Claims
Of the challenged claims, claims 1, 5, 9, and 13 are independent. Dependent
claims 2, 6, 10, and 14 depend, respectively, from claims 1, 5, 9, and 13. Claims 1
and 5, reproduced below, are illustrative of the claimed subject matter.
1. A spring drive unit comprising: a base; a rotatable shaft
mounted to the base; a spring mounted to the base and having a first
rotatable end and a second rotatable end; and a gear transmission
comprising a plurality of intermeshed gears, the gear transmission
having a given drive ratio between two of the gears thereof, and the
gear transmission operatively connected at a first one of the two gears
to the second rotatable end of the spring and operatively connected at
the second one of the two gears to the rotatable shaft, thereby
applying the given drive ratio of the gear transmission between the
spring and the rotatable shaft for altering the ratio of the speed of the
rotatable shaft relative to the rotating speed of the second rotatable
end of the spring and altering the force applied between the spring and
the rotatable shaft.
5. A window cover system of the type comprising: a base; an
extendible window cove; and lift means including lift cords attached
to the cover for raising and lowering the window cover to selected
positions, the improvement comprising:
a spring drive unit connected to the lift cords for assisting
Case IPR2014-00286
Patent 6,648,050 B1

8

the raising and lowering of the cover to selected positions,
the spring drive unit comprising a spring mounted to the base
and having a first rotatable end and a second rotatable end;
and a gear transmission of fixed drive ratio; the gear
transmission operatively connected between the second
rotatable end of the spring and the lift means, thereby
applying the fixed ratio of the gear transmission between the
second rotatable end of the spring and the lift cords, for
altering the distance traversed by the cover relative to the
distance traversed by the second rotatable end of the spring
and altering the force applied between the spring and the
cover.
D. Evidence Relied Upon
Petitioner relies upon the following references, as well as the declaration of
Lawrence E. Carlson, executed December 20, 2013 (Ex. 1005, “Carlson
Declaration”):
References Patents/Printed Publications Exhibit
Tachikawa Japanese Patent Application S54-38648
(English Translation)
1002
McClintock US 5,641,229 1003
Ringle US 4,096,903 1004

E. Asserted Grounds of Unpatentability
Petitioner challenges the patentability of claims of the ’050 patent based on
the following grounds:
References Basis Claims challenged
Tachikawa, Ringle and
McClintock
§103 1, 2, 5, 6, 9, 10, 13, and 14

Case IPR2014-00286
Patent 6,648,050 B1

9

III. CLAIM CONSTRUCTION
A. Legal Standard
Consistent with the statute and the legislative history of the
Leahy-Smith America Invents Act (“AIA”), Public Law No. 112-29, 125 Stat. 284
(Sept. 16, 2011), the Board interprets claims of an unexpired patent using the
broadest reasonable construction in light of the specification of the patent. See
Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012);
37 CFR § 42.100(b). Under the broadest reasonable construction standard, claims
are to be given their broadest reasonable interpretation consistent with the
specification, and the claim language should be read in light of the specification as
it would be interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci.
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
We determine no express construction of the claim language is needed for
this decision.
IV. ANALYSIS
A. Evidence
1. Carlson Declaration (Exhibit 1005)
The Board may exclude or give no weight to evidence relied upon to support
the challenge where Petitioner has failed to state its relevance or to identify
specific portions of the evidence that support a challenge. 37 C.F.R.
§ 42.104(b)(5). We give no weight to the Carlson Declaration because Petitioner
fails to state its relevance or identify specific portions of the declaration that
support the challenge. See Pet. 4 (providing the only citation to Ex. 1005, other
than Exhibit List).

Case IPR2014-00286
Patent 6,648,050 B1

10

2. Tachikawa (Ex. 1002)
Tachikawa describes a device for raising and lowering venetian blinds.
Ex. 1002, 209. Tachikawa Figure 2, reproduced below, presents a vertical front,
cross-sectional view of the device. Id. at 210.
Tachikawa Figure 2, above, shows a device for raising and lowering
venetian blinds comprising upper case 1 having rotatable operating shaft 2
mounted thereon. Id. at 209. Drums 3 are attached to multiple locations on
operating shaft 2. Id. Tapes 4 are wound onto drums 3, passed through through-
holes in blind slats 5, and coupled to lower case 6. Id. Bevel gear 7 is attached to
one end of operating shaft 2 and engages bevel gear 8. Id. Chain pulley 10 is
fixed to drive shaft 9 of bevel gear 8. Id. Endless chain 11 is hung on chain pulley
10 and is suspended downward. Id.
The blinds are raised or lowered by pulling chain 11 to turn chain pulley 10,
Case IPR2014-00286
Patent 6,648,050 B1

11

thereby turning operating shaft 2 through engagement and interlocking of bevel
gears 7, 8. Id. at 210. 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. In the closed, or lower-most
position of the blinds, the load is only that of lower case 6. Id. As the blinds are
raised, the torque required to turn operating shaft 2 increases as the load of slats 5
is applied. Id. Conversely, when the blinds are lowered, the load becomes smaller,
decreasing the force necessary to turn operating shaft 2. Id. at 209.
To eliminate the problem of torque variance during operation of the blinds,
Tachikawa employs spring 17. Id. at 210. Spring 17 is wound between spool 16
and spool 14. Id. Spool 16 is rotatably, axially fitted onto center shaft 15 on
support plate 12, mounted inside upper case 1. Id. Spool 14 is fixed to shaft tube
13 (through which operating shaft 2 passes), also mounted on support plate 12. Id.
Alternatively, spool 14 is fixed to drive shaft 9. Id.
[I]n response to the torque of turning the operating shaft 2 based on
the load P as the blinds are rolled up to the uppermost end, . . . spring
17 produces a torque T in the opposite direction and identical to the
torque due to the load P based on reduction of the curvature radius R
of the starting end wound onto spool 14.
Id.
[A]s the blinds are rolled down, the load P decreases gradually,
changing gradually to load p when rolled down to the lowermost end,
in response to which the curvature radius of . . . spring 17 is gradually
increased from the curvature radius R of the starting end to the
curvature radius r of the terminal end . . . so that a spring torque t in
the opposite direction and identical to the torque on the operating
shaft 2 due to load p is generated at the terminal end.
Id.
Case IPR2014-00286
Patent 6,648,050 B1

12

3. Ringle (Ex. 1004)
Ringle describes a power drive for a venetian blind. Ex. 1004, 1:13-14.
Ringle’s “invention is directed solely to tilting of the slats of a blind by power
means.” Id. at 1:15-16. According to Ringle, “[r]aising and lowering of venetian
blinds requires substantial power and mechanisms for this purpose are necessarily
complicated and costly. On the other hand the tilting of the slats of a venetian
blind can be accomplished with very little power and this operation is susceptible
of much less costly drives.” Id. at 1:16-22. Ringle Figure 3, below, shows a plan
view of head rail 18 for venetion blind 14. Id. at 2:23.

In use, head rail 18, shown in Figure 3 above, is secured to an upper sash of
a window. Id. at 3:14-15. Shaft 26 extends lengthwise in head rail 18. Id. at 3:53-
54. Slats 15 of venetian blind 14, see id. Figure 1, are suspended from rotatable
shaft 26 via vertical cords 19 of spaced nylon ladders 17, the upper ends of vertical
cords 19 being secured to cylindrical nylon bushing 29 on rotatable shaft 26. Id. at
3:13-15, 57-59. Ringle effects tilting of slats 15 of venetian blind 14 by electric
motor 25 disposed in one end of head rail 18 that slowly drives shaft 26 by means
of a gear reduction unit 27. Id. at 3:48-56. Shaft 26 rotates in either direction to
lower one side of ladder 17, while simultaneously lifting the other side of ladder
17, giving a range of tilt for slats 15 of any angular movement up to a total of
180 degrees. Id. at 3:61-64; 4:64-66.
Case IPR2014-00286
Patent 6,648,050 B1

13

4. McClintock (Ex. 1003)
McClintock describes a mechanical rotator for mixing samples with reagent
chemicals in medical testing. Ex. 1003, 1:21-22, 45-46. Sample rotator 10
comprises orbiting member 20 connected to output shaft 102 of manually operated
rotary spring motor (or drive) 100. Id. at 2:65-67. Spring motor 100 is illustrated
in Figure 2, reproduced below.

Mcclintock Figure 2, above, shows a schematic view of spring motor 100.
Ex. 1003, 2:61. Spring motor 100 comprises constant-torque producing, flat-coil
spring 104, having one end connected to a fixed member, such as the housing, and
the other end connected to rotatable drive shaft 106. Id. at 3:67- 4:5. Rotatable
drive shaft 106 includes two coaxially arranged gears: driving spur gear 108 and
driven bevel gear 110. Id. at 4:5-6. Driving gear 108 is connected to step-up
transmission 130, which drives output shaft 102. Id. at 4:21-25. Driven bevel gear
Case IPR2014-00286
Patent 6,648,050 B1

14

110 mates with input bevel gear 112, driven by input shaft 114 via crank or key
116. Id. at 4:7-11. Flat-coil spring 104 is energized by winding input bevel gear
112 with crank or key 116. Id. at 5:2-5. Upon release or removal of crank/key
116, flat-coil spring 104 rotates drive shaft 106, in turn rotating output shaft 102 at
a higher speed than driving shaft 106 via transmission 130. Id. at 4:26-30.
B. Obviousness Based on Combinations of References
Petitioner contends Tachikawa discloses the limitations of the challenged
claims with the exception of a “gear transmission,” as recited in independent
claims 1, 5, 9, and 13. See generally Pet. 19-42. Petitioner contends McClintock
demonstrates it was well known to one of ordinary skill in the art at the time of the
invention to use gear transmissions in connection with a spring motor, and that
Ringle shows it was well known to use gear transmissions with venetian blinds.
Id. at 20 (as to claim 1), 25 (as to claim 5), 31 (as to claim 9), and 36 (as to
claim 13). Petitioner asserts “it would have been obvious to modify Tachikawa
with a gear transmission in order to change the speed or torque output from the
spring motor as explained in McClintock (see [Ex. 1003,] 4:21-53) based on the
suggestion in Ringle.” Pet. 20, 25; see also id. at 31, 36-37 (“in light of the
teachings in Tachikawa, Ringle and McClintock, it would have been obvious to
modify Tachikawa with a gear transmission in order to change the speed or torque
output from the spring motor as explained in McClintock (see [Ex. 1003], 4:21-
53)”).
As explained by the Federal Circuit:
Obviousness requires more than a mere showing that the prior
art includes separate references covering each separate limitation in a
claim . . . . Rather, obviousness requires the additional showing that a
person of ordinary skill at the time of the invention would have
selected and combined those prior art elements in the normal course
Case IPR2014-00286
Patent 6,648,050 B1

15

of research and development to yield the claimed invention.
Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011) (citations
omitted). “To render a claim obvious, prior art cannot be ‘vague’ and must
collectively, although not explicitly, guide an artisan of ordinary skill towards a
particular solution. . . . [A] combination is only obvious to try if a person of
ordinary skill has ‘a good reason to pursue the known options.’” Id. at 1361
(quoting KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). “[A]ny need or
problem known in the field of endeavor at the time of invention and addressed by
the patent can provide a reason for combining the elements in the manner
claimed.” KSR, 550 U.S. at 420. Further, “if a technique has been used to improve
one device, and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious unless its
actual application is beyond that person’s skill.” Id. at 417. But see Abbott Labs v.
Sandoz, Inc., 544 F.3d 1341, 1352 (Fed. Cir. 2008) (“[K]nowledge of the goal does
not render its achievement obvious.”).
McClintock describes a spring motor in combination with a gear
transmission for use in mechanically mixing samples with reagent chemicals in
medical testing. Ex. 1003. Although Ringle describes the use of a gear
transmission in a venetian blind, Ringle specifies that the gear transmission is used
solely for tilting the slats of the blinds through an angular movement up to a total
of 180 degrees. Ex. 1004, 1:15-16, 4:64-66. Ringle states that devices used to
raise and lower venetian blinds require more powerful mechanisms and are
complicated and costly. Id. at 1:16-19. Tachikawa describes a device for raising
and lowering venetian blinds comprising a spring drive and bevel gear. Ex. 1002,
209. The device addresses the problem of torque variance during raising and
lowering of the blinds. Id. at 210.
Case IPR2014-00286
Patent 6,648,050 B1

16

An analysis regarding an apparent reason to combine known elements
“should be made explicit.” KSR, 550 U.S. at 418. Petitioner has not explained
adequately why one of ordinary skill in the art would have had a reason to modify
Tachikawa’s device for raising and lowering venetian blinds with McClintock’s
gear transmission, in the manner required by the claims. Petitioner has not
identified evidence on this record indicating that a gear transmission of the type
disclosed in McClintock would have addressed a need or known problem related to
raising and lowering venetian blinds or other window coverings. For example,
Petitioner has not explained sufficiently why or how one of ordinary skill in the art
would have added McClintock’s gear transmission, used to mechanically mix
samples, to Tachikawa’s device for raising and lowering venetian blinds.
In sum, Petitioner has not provided sufficient articulated reasoning with
rational underpinning as to why an ordinary artisan at the time of the invention
would have had a reason to combine the prior art elements in the manner required
by the challenged claims.
V. CONCLUSION
Petitioner has not demonstrated a reasonable likelihood that it would prevail
on the ground that claims 1, 2, 5, 6, 9, 10, 13 and 14 would have been obvious over
Tachikawa in view of Ringle and McClintock.
VI. ORDER
For the reasons given, it is
ORDERED that the Petition is denied, and no trial is instituted.

Case IPR2014-00286
Patent 6,648,050 B1

17

PETITIONER:

Bing Ai
Ai@perkinscoie.com

Kourtney Mueller
kmerrill@perkinscoie.com

PATENT OWNER:

Kristopher Reed
kreed@kilpatricktownsend.com

Darin Gibby
dgibby@kilpatricktownsend.com