Varidesk LLC

Patent Trials and Appeals Board

Jul 6, 2021

IPR2020-00387 (P.T.A.B. Jul. 6, 2021)

Trials@uspto.gov Paper 21
Tel: 571-272-7822 Entered: July 6, 2021
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

VERSA PRODUCTS,
Petitioner,
v.
VARIDESK, LLC,
Patent Owner.

IPR2020-00387
Patent 10,159,336 B2

Before KEVIN W. CHERRY, ROBERT L. KINDER, and
MATTHEW S. MEYERS, Administrative Patent Judges.
CHERRY, Administrative Patent Judge.
JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
35 U.S.C. § 318(a)
I. INTRODUCTION
A. BACKGROUND
Versa Products (“Petitioner”) filed a petition (Paper 1, “Pet.”) to
institute an inter partes review of claims 1–18 (the “challenged claims”) of
U.S. Patent No. 10,159,336 B2 (Ex. 1001, “the ’336 patent”). 35 U.S.C.
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§ 311 (2018). Varidesk, LLC (“Patent Owner”) timely filed a Preliminary
Response. Paper 8. On July 10, 2020, based on the record before us at the
time, we instituted an inter partes review of all challenged claims on all
grounds alleged as indicated in the table below. Paper 13 (“Institution
Decision” or “Dec.”).
Claim(s) challenged 35 U.S.C. § References
1–18 102(a)1, 103 Laudadio2
1–16 102(a), 103 Wynn3
1–18 103 Laudadio, Chouinard,4 Wynn
1–4, 9–12, 17 102(a), 103 Faitel5
1–18 103 Chouinard, Laudadio, Wynn
After we instituted this review, Patent Owner filed a Patent Owner
Response in opposition to the Petition (Paper 18, “PO Resp.”). Petitioner
filed a Reply in support of the Petition (Paper 19, “Reply”). Patent Owner
did not file a Sur-reply responding to the Reply. See Paper 14, at 10

1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
(2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Because the effective
filing date of the ’336 patent is after the effective date of the applicable AIA
amendment, we refer to the AIA versions of 35 U.S.C. §§ 102 and 103.
2 U.S. Patent No. 10,413,055 B2, issued September 17, 2019 (Ex. 1005,
“Laudadio”).
3 U.S. Patent No. 3,928,946, issued Dec. 30, 1975 (Ex. 1008, “Wynn”).
4 U.S. Patent No. 7,677,518 B2, issued Mar. 16, 2010 (Ex. 1007,
“Chouinard”).
5 U.S. Patent Application Publication No. US 2003/0047388 A1, published
Mar. 13, 2003 (Ex. 1009, “Faitel”).
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(Scheduling Order authorizing Patent Owner’s sur-reply). Patent Owner
also did not move to amend any claim of the ’336 patent.
Neither party requests oral argument. See Paper 20.
We have jurisdiction under 35 U.S.C. § 6. The evidentiary standard is
a preponderance of the evidence. See 35 U.S.C. § 316(e); 37 C.F.R.
§ 42.1(d) (2019). This Final Written Decision is issued pursuant to
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
For the reasons expressed below, we conclude that Petitioner has
demonstrated by a preponderance of evidence that claims 1–18 are
unpatentable.
B. RELATED PROCEEDINGS
The parties do not identify any pending petitions for inter partes
review involving patents that are related to the ’336 patent, and do not
identify any district court proceeding that is related to the ’336 patent.
Pet. 9; Paper 3, 1.
C. THE ’366 PATENT
The ’336 patent is titled “Electrically-Lifted Computer Desk and
Office Desk Thereof.” Ex. 1001, [54]. The ’336 patent relates to an
electrically-lifted computer desk and office desk, which can be used
separately or in combination and can be lifted stably with low noise and
great bearing power. Id. at 1:9–12. The ’336 patent achieves these
advantages by including a frame-shaped driving mechanism and a frame-
shaped intermediate support member, with a nut sliding rod seat of the
intermediate support member providing a reciprocating motion upon rotation
of a screw rod. Id. at 1:28–36.
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The ’336 patent describes an electrically-lifted computer desk. Id. at
1:56–57. An illustrative embodiment of such a desk is depicted in Figure 1,
reproduced below.

Figure 1 is a three-dimensional structure schematic diagram of an
electrically-lifted computer desk. Id. at 3:40–41. Desk 100 includes bottom
plate 110, driving mechanism 120, intermediate support member 130, first
side-support member 140 connected by transverse link 134 to second side-
support member 150, and face plate 160. Id. at 3:57–61. Driving
mechanism 120 includes first guide rod 123 and second guide rod 124 that
are parallel to each other, and screw rod 125 between first and second guide
rods 123, 124. Id. at 4:1–11. Intermediate support member 130 includes nut
sliding rod seat 131, first side-support piece 132, and second side-support
piece 133, wherein nut sliding rod seat 131 reciprocates along first guide rod
123 and second guide rod 124 upon rotation of screw rod 125. Id. at
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4:17–24. Respective lower ends of first and second side-support pieces 132,
133 are connected to nut sliding rod seat 131, and respective upper ends of
first and second side-support pieces 132, 133 are connected to transverse
link 134. Id. at 4:24–31. Driving source 126 such as motor 1261 causes
screw rod 125 to rotate, which causes nut sliding rod seat 131 to move along
screw rod 125 to raise and lower face plate 160. Id. at 4:41–42; 4:56–59;
Figs. 3 and 4.
Claim 1 is the sole independent claim among the challenged claims.
Independent claim 1, which is illustrative, recites:
1. A desk comprising:
[1.1] a bottom plate;
[1.2] a first side-support member coupled to the bottom
plate;
[1.3] a second side-support member coupled to the bottom
plate;
[1.4] a face plate coupled to the first side-support member
and the second side-support member;
[1.5] a transverse link coupled to the first side-support
member and the second side-support member;
[1.6] a driving mechanism, the driving mechanism
comprising:
[1.7] a first guide rod;
[1.8] a second guide rod parallel to the first guide
rod;
[1.9] a screw rod parallel to the first guide rod; and
[1.10] a driving source configured to rotate the
screw rod, and
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[1.11] a nut sliding rod seat coupled to the transverse link
with at least one side-support piece, the nut sliding rod seat
configured to move along the screw rod,
[1.12] wherein the driving mechanism is configured to
rotate the screw rod moving the nut sliding rod seat to raise
and lower the face plate.
Ex. 1001, 5:63–6:15 (with labels 1.1–1.12 added to aid discussion).
II. ANALYSIS
A. CLAIM INTERPRETATION
We interpret claims in the same manner used in a civil action under
35 U.S.C. § 282(b) “including 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.”
37 C.F.R. § 42.100(b). When applying that standard, we interpret the claim
language as it would be understood by one of ordinary skill in the art in light
of the specification. In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed.
Cir. 2010). Thus, we give claim terms their ordinary and customary
meaning as they would be understood by an ordinarily skilled artisan. See In
re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (“The
ordinary and customary meaning ‘is the meaning that the term would have to
a person of ordinary skill in the art in question.’” (quoting Phillips v. AWH
Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005)). Only terms that are in
controversy need to be construed, and then only to the extent necessary to
resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean
Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).
1. “Desk”
Neither party proposes expressly construing the term “desk,” but the
parties do dispute whether this term, which is found in the preamble of
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independent claim 1, is limiting. PO Resp. 2–3 (arguing that Wynn and
Faitel fail to disclose a “desk”); Reply 17–18. Whether preamble language
is limiting is a claim-construction issue. See Cochlear Bone Anchored
Solutions AB v. Oticon Med. AB, 958 F.3d 1348, 1354 (Fed. Cir. 2020).
“Generally, a preamble is not limiting.” Summit 6, LLC v. Samsung
Elecs. Co., 802 F.3d 1283, 1292 (Fed. Cir. 2015). Whether a preamble is
limiting is “determined on the facts of each case in light of the overall form
of the claim, and the invention as described in the specification and
illuminated in the prosecution history.” Applied Materials, Inc. v. Advanced
Semiconductor Materials Am., Inc., 98 F.3d 1563, 1572–73 (Fed. Cir. 1996).
A preamble limits the claimed invention if it recites essential structure or
steps, or if it is “necessary to give life, meaning, and vitality” to the claim.
Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir.
1999). A preamble is not limiting, for example, if the patentee “defines a
structurally complete invention in the claim body and uses the preamble only
to state a purpose or intended use for the invention.” Catalina Mktg. Int'l,
Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002). And, a
preamble is generally not limiting unless there is “clear reliance on the
preamble during prosecution to distinguish the claimed invention from the
prior art.” Id. A preamble can be limiting if it recites “additional structure
or steps underscored as important by the specification,” is “essential to
understand limitations or terms in the claim body,” or provides necessary
structure absent from the claim body. Id. at 808–09.
We see no basis, in this case, for departing from the general rule that a
preamble is not limiting. First, the descriptor “desk” does not embody an
essential component of the invention. The body of the claim recites “a
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bottom plate,” “support members” coupled to the bottom plate, a “face
plate,” a “transverse link” coupling the “support members,” and a “driving
mechanism” for raising and lowering the face plate. The body of claim 1
recites all of the structural components of the apparatus, and neither party
suggests any differently. See PO Resp. 4–5 (arguing Wynn and Faitel are
not “desks” but identifying no structural difference between a “work
surface” and a “desk”). This is consistent with the type of case where the
preamble is not limiting because the “deletion of the preamble phrase does
not affect the structure of steps of the claimed invention.” Catalina
Marketing, 289 F.3d at 809. Instead, the term “desk” is a descriptive name
for the invention that is fully set forth in the body of the claims. See Storage
Tech. Corp. v. Cisco Sys., Inc., 329 F.3d 823, 831 (Fed. Cir. 2003)
(preamble term “policy caching method” did not limit claims because it
served only as a “convenient label for the invention as a whole”); IMS Tech.,
Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1434–35 (Fed. Cir. 2000)
(noting the preamble is not limiting when “the preamble merely gives a
descriptive name to the set of limitations in the body of the claim that
completely set forth the invention”).
The Specification of the ’336 patent further confirms that “desk” is a
label for the overall invention and not a limitation on the claims. Although
the phrase “desk” appears in the title, in the abstract, and in the rest of the
written description, it is consistently used as a reference for the overall name
for the apparatus comprised of the components listed in claim 1. The
Specification supports the understanding that the phrase is meant to serve as
a label for the invention as a whole. In the background the invention, the
Specification identifies the problem in the art that
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In a household environment, the desk has been incorporated into
human lives with multiple functions. On the current stage, the
desk is generally used only as a dining table, a computer desk, a
study desk and the like. Therefore, the functions of the desk are
single at present, and can not satisfy the multi-purpose
requirements.
Ex. 1001, 1:21–26. Thus, the Specification indicates that, although the
claimed apparatus is termed a “desk,” it, in fact, serves many purposes.
We further note that clear reliance on a preamble during prosecution
can distinguish a claimed invention from the prior art and render the
preamble a claim limitation, Catalina Marketing, 289 F.3d at 809, but there
was no such reliance here. During the prosecution history both Faitel and
Wynn were relied on by the Examiner, but the applicants never raised the
preamble as a basis for patentability. See Ex. 1002, 97–100. Indeed, in
response to the Examiner’s rejection, the applicants amended the claims to
add a different, structural limitation, in their efforts to overcome the prior
art. Id.
Accordingly, we determine that “desk” as used in the preamble is
merely a descriptive name for the set of limitations in the body of the claim
that completely sets forth the invention and that “desk” is not limiting.
We discern no other terms in need of express interpretation. See
Pet. 17–18. Accordingly, we apply the legal standards set forth above when
reading the claims.
B. THE PARTIES’ POST-INSTITUTION ARGUMENTS
In our Institution Decision, we concluded that the argument and
evidence adduced by Petitioner demonstrated a reasonable likelihood that
claims 1–18 were unpatentable as obvious based on the challenges identified
in the table in Part I.A above. Dec. 41. We must now determine whether
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Petitioner has established by a preponderance of the evidence that the
specified claims are unpatentable over the cited prior art. 35 U.S.C.
§ 316(e). We previously instructed Patent Owner that “any arguments not
raised in the [Patent Owner Response] may be deemed waived.” Paper 14,
8; see also In re Nuvasive, Inc., 842 F.3d 1376, 1381 (Fed. Cir. 2016)
(holding that patent owner’s failure to proffer argument at trial as instructed
in scheduling order constitutes waiver). Additionally, the Board’s Trial
Practice Guide states that the Patent Owner Response “should identify all the
involved claims that are believed to be patentable and state the basis for that
belief.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766
(Aug. 14, 2012).
C. LEGAL STANDARDS
Petitioner challenges the patentability of claims 1–18 on the grounds
that the claims are anticipated or obvious, or both. To prevail in its
challenges to the patentability of the claims, Petitioner must establish
unpatentability by a preponderance of the evidence. 35 U.S.C. § 316(e);
37 C.F.R. § 42.1(d). “In an [inter partes review], the petitioner has the
burden from the onset to show with particularity why the patent it challenges
is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363
(Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
petitions to identify “with particularity . . . the evidence that supports the
grounds for the challenge to each claim”)). This burden never shifts to
Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800
F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek,
Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of
proof in inter partes review).
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A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987). The Supreme Court in KSR International Co. v.
Teleflex Inc., 550 U.S. 398 (2007), reaffirmed the framework for
determining obviousness as set forth in Graham v. John Deere Co., 383
U.S. 1 (1966). The KSR Court summarized the four factual inquiries set
forth in Graham that we apply in determining whether a claim is
unpatentable as obvious under 35 U.S.C. § 103 as follows: (1) determining
the scope and content of the prior art, (2) ascertaining the differences
between the prior art and the claims at issue, (3) resolving the level of
ordinary skill in the pertinent art, and (4) when in evidence, considering
objective evidence indicating obviousness or nonobviousness.6 KSR, 550
U.S. at 406 (citing Graham, 383 U.S. at 17–18). In an inter partes review,
Petitioner cannot satisfy its burden of proving obviousness by employing
“mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d
1364, 1380 (Fed. Cir. 2016).
Petitioner must explain how the proposed combinations of prior art
would have rendered the challenged claims unpatentable. An obviousness
analysis “need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ.”
KSR, 550 U.S. at 418; accord Translogic, 504 F.3d at 1259. However,
Petitioner cannot satisfy its burden of proving obviousness by employing

6 The record does not include any evidence of secondary considerations.
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“mere conclusory statements,” but “must instead articulate specific
reasoning, based on evidence of record” to support an obviousness
determination. Magnum Oil, 829 F.3d at 1380–81. Petitioner also “must
articulate a reason why a person of ordinary skill in the art would have
combined the prior art references.” NuVasive, 842 F.3d at 1382.
At this final stage, we determine whether a preponderance of the
evidence of record shows that the challenged claims would have been
anticipated or rendered obvious in view of the asserted prior art. We analyze
the asserted grounds of unpatentability in accordance with these principles.
D. LEVEL OF ORDINARY SKILL
We review the grounds of unpatentability in view of the
understanding of a person of ordinary skill in the art at the time of the
invention. Graham, 383 U.S. at 17. Petitioner proposes that a person of
ordinary skill
would have had at least an undergraduate degree in mechanical
engineering, plus 1–3 years of experience in mechanical design,
or equivalent experience and education
Pet. 15 (citing Ex. 1012 ¶ 17; Ex. 1013 ¶ 24). Patent Owner does not dispute
this definition of a person of ordinary skill. See generally PO Resp. We
disagree with Petitioner’s use of “at least” because it leaves open the
potential skill level. Otherwise, we adopt Petitioner’s proposed level of
ordinary skill as it appears to be consistent with the level of skill reflected in
the specification and in the asserted prior art references. See Okajima v.
Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can
reflect the appropriate level of ordinary skill in the art).
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E. CLAIMS 1–16:
ANTICIPATION/OBVIOUSNESS BASED ON WYNN
Petitioner argues that Wynn anticipates claims 1–16 or by itself
renders claims 1–16 unpatentable as obvious. Pet. 31–39. Claim 1 is
independent and claims 2–16 each directly or indirectly depend from claim
1. Ex. 1001, 5:63–8:8. Patent Owner presents one argument against
Petitioner’s anticipation challenge to independent claim 1, further argues
that claims 5–8, 11, and 14–16 are not adequately accounted for, and argues
that Petitioner’s obviousness rationale is insufficient. See PO Resp. 2–3, 4–
5, 10–12. As explained below, we determine that Petitioner has proven by a
preponderance of evidence that Wynn anticipates claims 1–16.
1. Independent Claim 1
Petitioner argues that Wynn anticipates or renders obvious claim 1.7
Pet. 31–34.
a. Wynn
Wynn is titled “Three Axis Adjustable Disc Sander.” Ex. 1008, [54].
Figure 1, reproduced below, is a perspective view of the device. Id. at 2:49.

7 Petitioner’s obviousness contentions based on Wynn appear to be
presented only in the alternative if we find Wynn does not anticipate.
Because we find that Wynn anticipates claims 1–16, we do not reach
Petitioner’s obviousness contentions.
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Figure 1 depicts device A supporting electric motor Q of sander disc
S. Ex. 1008, 3:50–56. Device A has base E and two sets of first and second
elongate rigid members L and M that are arranged in the form of an “X” and
disposed on base E, are pivotally connected at their lower ends to first and
second cross member H-1 and H-2, and are centrally connected by
transverse shaft N. Id. at 3:14; 3:39–47. Elongate members L and M
support a pair of side walls O having horizontal plate 110 there between. Id.
at 3:50–52; 4:55–60. Threaded rod K engages tapped bore 12, and rotation
of threaded rod K causes first and second members L and M to pivot, which
raises or lowers sander disc S held between support walls O. Id. at 3:33–34;
3:67–4:1.
b. Petitioner’s Argument and Evidence
Petitioner provides a detailed accounting of the manner in which
specific portions of Wynn describe all aspects of claim 1. Pet. 33–34 (citing
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Ex. 1008, 1:4–5, 3:16–30, 5:18–31, 5:36–46, Fig. 1, refs. E, L, M, O, N, F, J,
44, 46, H-1, H-2).
c. Patent Owner’s Counterarguments
Patent Owner argues that Petitioner fails to prove the unpatentability
of claim 1 because Wynn fails to disclose a “desk.” PO Resp. 2–3. We do
not find Patent Owner’s argument to be persuasive.
i. Desk
Patent Owner contends that Wynn is a disc sander, not a desk. PO
Resp. 2. Specifically, Patent Owner contends (in entirety) that
While the Board initially found that Petitioner had demonstrated
a reasonable likelihood that Wynn and Faitel anticipate (Paper
No. 13 at 28, 33–34), neither Wynn nor Faitel disclose the very
first element recited by the claims, “a desk,” in view of the
Specification. This is a critical deficiency as the claimed
invention involves a desk and all of the elements relate[d]
thereto. Those elements are not disclosed or suggested in Wynn
or Faitel, and therefore the same cannot anticipate the challenged
Claims.
Id. at 3.
Petitioner responds that the term “desk” is found only in the preamble
and does not limit claim. Reply 17. Petitioner argues that instead the term
“desk” merely recites an intended use of the device. Id. Petitioner further
argues that even if “desk” is limiting that its plain and ordinary meaning is
merely “a table, frame, or case with a sloping or horizontal surface
especially for writing and reading and often with drawers, compartments,
and pigeonholes; or a table, counter, stand, or booth at which a person
works.” Id. at 18. Petitioner submits that Wynn meets this definition
because it is “an adjustable-height work surface on which a disk sander
could be placed (Wynn).” Id.
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As we explained above, we agree with Petitioner that the term “desk,”
as it appears in the preamble, does not limit the claim. For apparatus claims,
such as those in the ’336 patent, generally patentability “depends on the
claimed structure, not on the use or purpose of that structure.” Catalina
Marketing, 289 F.3d at 809. Accordingly, we do not find Patent Owner’s
argument that Wynn does not disclose a “desk” persuasive.
ii. Consideration during Examination
Patent Owner argues that because the applicant overcame rejections
by the Examiner based upon Wynn during prosecution, and we should defer
to the Examiner’s determination that the claims distinguish Wynn.8 PO
Resp. 6, 9–10 (citing MPEP § 706.04). To the extent that Patent Owner is
arguing that, in an inter partes review, we are bound by the Examiner’s prior
findings during the ex parte examination, we disagree. First, Petitioner was
not a party to the Examination and is not bound by the Examiner’s ex parte
determinations. Second, MPEP § 706.04, which is cited by Patent Owner,
deals with ex parte examination and does not apply in an inter partes
proceeding. Finally, and most importantly, as we explained in our
Institution Decision, we determined that the Examiner materially erred in the
Examiner’s consideration of Wynn, so to the extent those findings are
erroneous, we decline to defer to them. See Dec. 15–16.
Patent Owner also makes the following argument:
Similar deficiencies appear in Grounds 2 and 5 with respect to
Wynn and Chouinard. In Ground 2, the Petition aligns “shaft N”

8 To the extent Patent Owner still argues that we should have exercised our
discretion under 35 U.S.C. § 325(d) and denied institution, PO Resp. 6 n.3,
we reject that argument for the reasons explained in detail in our Decision on
Institution. Dec. 8–18.
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of Wynn with the claimed “transverse link” (Paper 1 at 33-34).
However, the “shaft N” is not coupled to “cross members H-1/H-
2” (aligned with the claimed “nut sliding rod seat”) with at least
one side-support piece. As in Faitel, the Petition fails to identify
any component which aligns with the “at least one side-support
piece.”
PO Resp. 8. As best as we can understand this argument, Patent Owner
seems to be asserting, not so much that Examiner is correct, but that
Petitioner fails to account for limitation [1.11], which requires that the “nut
sliding rod seat” be “coupled to the transverse link with at least one side-
support piece.” Ex. 1001, 6:10–12 (emphasis added). We disagree with
Patent Owner. The Petition explains how the “nut sliding rod seat” is
coupled to the “transverse link” by “at least one side-support piece.” See
Pet. 31–33; Reply 11–12. Namely, the Petition explains that element H-1 of
Wynn is coupled to transverse shaft N by side-support piece M. See id. To
the extent Patent Owner is arguing that Petitioner already identified side-
support M as the “second side member,” we note that the claim only requires
one “second side member” and Wynn’s apparatus has two side-support
pieces identified as “M.” Patent Owner provides no reason, and we can
discern none, why one of two “M” pieces does not correspond to the claimed
“second side support member” and the other does not correspond to the
“side support piece” recited in claim 1. Accordingly, we find that Petitioner
has adequately shown that Wynn discloses this limitation.
d. Conclusion
Based on our review of the evidence of record and Petitioner’s
argument, which we adopt as our own (see In re NuVasive, 841 F.3d at 974),
and for all the reasons expressed above, we conclude that Petitioner has
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established by a preponderance of evidence that claim 1 is unpatentable as
anticipated by Wynn.
2. Dependent Claims 2–4, 9, 10, and 12
Claim 2 depends from claim 1 and adds the limitations of first and
second “fixing pieces” that act so that, “the first fixing piece, the second
fixing piece, the first guide rod, and the second guide rod form a frame.”
Ex. 1001, 6:16–20. Petitioner submits that in Wynn, “cross-pieces” ref. G in
Fig. 1 correspond to the claimed “fixing pieces” and the two guide rods F
and the two cross-pieces G form a frame identical in structure to that
claimed in Claim 2. Pet. 34.
Claim 3 depends from claim 2 and requires that, “a first end of the
screw rod is connected to the first fixing piece and a second end of the screw
rod is connected to the second fixing piece, and wherein the driving source
is disposed at the first end of the screw rod.” Ex. 1001, 6:21–25. Petitioner
submits that “it can be seen in Fig. 1 that screw J is connected to one fixing
piece G at the right side (and driving mechanism 42/46 is also connected at
that end of screw J), and to the second fixing piece G at the opposite end.”
Pet. 34.
Claim 4 depends from claim 3 and requires that “the bottom plate is
fixed to the first fixing piece and the second fixing piece.” Ex. 1001,
6:26–27. Petitioner submits that Figure 1 of Wynn shows that fixing pieces
G are fixed to bottom plate E. Pet. 35.
Claim 9 depends from claim 1, and adds the limitation, “wherein the
nut sliding rod seat is coupled to the first guide rod, the second guide rod,
and the screw rod, and wherein the nut sliding rod seat is in threaded
engagement with the screw rod for reciprocating motion along the first guide
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rod and the second guide rod upon rotation of the screw rod.” Ex. 1001,
6:49–54. Petitioner refers to Figure 1 of Wynn to argue that nut sliding rod
seat H-1 is coupled to screw J as well as guide rods F on either side, and that
when screw J rotates H-1, which is in threaded engagement with it, moves
along screw J and guide rods F. Pet. 37 (citing Ex. 1008, 3:25–38, Fig. 1).
Claim 10 depends from claim 1, and adds the limitation, “wherein the
first side-support member and the second side-support member are each
slidably coupled to the face plate.” Ex. 1001, 6:55–57. Petitioner contends
that side-support members L and M of Wynn are slidably coupled to the face
plate O at one end by rod 64 sliding in groove 66. Pet. 37.
Claim 12 depends from claim 1 and requires that each side-support
member comprise a side-support piece that is slidably attached to a desktop
connecting piece that is fixedly attached to the face plate on its upper end
and pivotally attached to the bottom plate on its lower end. Ex. 1001,
6:66–7:6. Petitioner contends that side-support members L and M each are
pivotally connected to bottom plate E via nut 34, and are slidably coupled to
the face plate O at one end by rod 64 sliding in groove 66, which is fixedly
attached to face plate O. Pet. 38.
Patent Owner does not argue separately that Wynn fails to anticipate
claims 2–4, 9, 10, and 12. See generally PO Resp. (advancing arguments
directed to independent claim 1 and dependent claims 5–8, 11, and 13–16).
Based on our review of the evidence of record and Petitioner’s argument,
which we adopt as our own (see NuVasive, 841 F.3d at 974), we determine
that Petitioner has demonstrated by a preponderance of evidence that Wynn
anticipates dependent claims 2–4, 9, 10, and 12.
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3. Dependent Claims 5–8, 11, and 13–16
Claim 5 depends from claim 1, adding the limitation, “further
comprising an intermediate support member, the intermediate support
member configured to couple the driving mechanism to the first side-support
member and the second side-support member.” Ex. 1001, 6:28–31.
Petitioner submits that if we consider “that the first and second side-support
members are the two scissor-lift assemblies (L and M in Wynn’s Fig. 1), and
that the driving mechanism in Wynn is screw J, then cross-bars H-1 and H-2
each act as ‘intermediate support members’ that link the driving mechanism
J to the side-support members L and M as shown in Fig. 1 and described in
col. 3, lines 26–38 of Wynn.” Pet. 35.
Claim 6 depends from claim 5 and requires that the intermediate
support member, “further compris[es] the nut sliding rod seat configured to
slide along the first guide rod and the second guide rod.” Ex. 1001, 6:32–34.
Petitioner contends that “it can be seen in Wynn’s Fig. 1 that cross-bars H-1
and H-2 slide along guide rods F as required.” Pet. 35.
Claim 7 depends from claim 5 and requires that the intermediate
support member, “compris[es] the nut sliding rod seat, the at least one side-
support piece, and the transverse link, wherein the at least one side-support
piece includes a first side-support piece coupled to the nut sliding rod seat
and a second side-support piece coupled to the nut sliding rod seat.”
Ex. 1001, 6:35–41. Petitioner argues that in one approach the intermediate
support member of claim 7 comprises one of cross-bars H-1 and H-2,
transverse link N, and at least one of side-support pieces L or M, which are
connected in the manner prescribed (first side-support piece L is coupled to
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the nut sliding rod seat H-1 and second side-support piece M is coupled to
nut sliding rod seat H-1). Pet. 35–36.
Claim 8 depends from claim 7 and further requires that, “the first side-
support piece includes a lower end pivotally connected with a first end of the
nut sliding rod seat, the second side-support piece includes a lower end
pivotally connected with a second end of the nut sliding rod seat, and an
upper end of the first side-support piece and an upper end of the second side-
support piece are fixedly connected with the transverse link.” Ex. 1001,
6:42–48. Petitioner submits that there are several ways Wynn’s Figure 1
reads on this claim. Pet. 36. For example, Petitioner submits this is
disclosed where first side-support piece L is pivotally connected to nut
sliding rod seat H-1 and second side-support piece M is also pivotally
connected to nut sliding rod seat H-1. Id. Petitioner argues that both L and
M have lower halves (for example, the lower right arm of L from 38 to 14 in
Figure 1) that are pivotally connected to transverse link N (e.g. by nut 14).
In the alternative, Petitioner further notes that rod 70 also acts as a transverse
link (and there is a corresponding rod on the right, ending at pin 64), which
is at the upper ends of L and M. Id. at 36–37.
Claim 11 depends from claim 1, and adds the limitation, “wherein the
first side-support member and second side-support member each comprise a
side support piece having an upper end and a lower end, wherein the upper
end of each side-support piece is pivotally connected to a respective desktop
connecting piece fixedly connected with the face plate and wherein the
lower end of each side-support piece is pivotally connected to a transverse
link.” Ex. 1001, 6:58–65. Petitioner contends that side-support members L
and M each have a leg that is pivotally connected to the face plate O via
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washer 60 and nut 64, and they are pivotally connected to transverse link N
directly.9 Pet. 38.
Claims 13–16 depend from claim 12 and recite similar limitations to
those introduced in claims 5–8, and Petitioner relies on its mapping of
claims 5–8 to Wynn for its argument that claims 13–16 are anticipated. See
Pet. 39.
Patent Owner argues that Petitioner has failed to show that Wynn
anticipates claims 5–8, 11, and 1310–16 because “the Petition aligns several
claim features with the same component.” PO Resp. 4. Patent Owner
argues that “[s]uch double duty of the prior art components results in
references failing to include the structural relationships recited in the
Claims.” Id. Patent Owner argues that Petitioner has impermissibly aligned
Wynn’s cross members H-1 and H-2 with both the “nut sliding seat” and
“intermediate member.” Relying on In re Robertson, 169 F.3d 743, 744–45
(Fed. Cir. 1999), Patent Owner argues that it is improper to conflate
structural elements by asserting that a single prior art feature disclosed two
separate and independent claim features. Id. at 4–5.

9 Petitioner notes that there is some ambiguity in claim 11 about whether the
“transverse link” referred to is the same as in claim 1 or another “transverse
link.” Pet. 38. For purposes of the analysis, Petitioner assumes that the
“transverse link” referred to is the same as in claim 1. Id. Patent Owner
does not dispute that interpretation, so we apply the same interpretation for
our analysis of claim 11 for all grounds.
10 Patent Owner only lists 5–8 and 14–16 in its argument (PO Resp. 4), but
claim 13 is similar to claim 5 and claims 13–16 recite similar limitations to
those introduced in claims 5–8, which Patent Owner argues. See Pet. 39.
Thus, we assume that the omission of claim 13 was an oversight and include
it in our discussion here for completeness.
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Petitioner responds that the ’336 patent describes that the
“intermediate support member” is described as comprising subcomponents
that are each expressly claimed as limitations in claim 1. Reply 20–21
(citing Ex. 1001, 4:16–19). Petitioner contends that
PO’s own attempted use of a doctrine of “no double duty,” citing
Robertson, cannot function as PO urges, for if it did claim 5
would be requiring each of the subcomponents of the
intermediate support member to be doing double-duty, since
each of them is already part of “the desk of claim 1,” which is
expressly also part of claim 5.
Id. at 21.
Patent Owner is generally correct that separate limitations are
“distinct component[s]” of the patented invention. Becton, Dickinson & Co.
v. Tyco Healthcare Group, LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010) (citing
Gaus v. Conair Corp., 363 F.3d 1284, 1288 (Fed. Cir. 2004)). In addition,
“[i]n the absence of any evidence to the contrary, we must presume that the
use of . . . different terms in the claims connotes different meanings.” CAE
Screenplates, Inc. v. Heinrich Fiedler GmbH & Co. KG, 224 F.3d 1308,
1317 (Fed. Cir. 2000). Although the use of two terms in a claim usually
requires that they connote different meanings, it does not necessarily require
that they refer to two different structures. Applied Med. Res. Corp. v. U.S.
Surgical Corp., 448 F.3d 1324, 1333 n.3 (Fed. Cir. 2006). Instead, “[t]he
prosecution history, specification, comparison with other claims in the
patent, and other evidence may require that two terms in a claim refer to
different structures, . . . but preserving claim integrity does not.” Id.
Beginning with the claim language, it becomes apparent why Patent
Owner’s “double duty” argument is not persuasive. Claim 5, which depends
from claim 1, introduces the “intermediate member” limitation and recites
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that “the intermediate support member configured to couple the driving
mechanism to the first side-support member and the second side-support
member.” Ex. 1001, 6:28–31. Claims 6 and 7 inform us that the
“intermediate member” further comprises “the nut sliding rod seat,” “the at
least one side-support piece,” and “the transverse link.” Thus, claims 6 and
7 confirm that the “intermediate member,” rather than necessarily referring
to a separate structure, can refer collectively to the nut sliding rod seat and
transverse link together (along with possibly other components).
This interpretation is further supported by the Specification, which
explains that
the intermediate support member 130 comprises a nut sliding rod
seat 131, a first side-support piece 132, a second side-support
piece 133 and a transverse link 134, wherein the nut sliding rod
seat 131 is threaded on the first guide rod 123, the second guide
rod 124 and the screw rod 125 of the driving mechanism 120 . . .
Ex. 1001, 4:16–24; see also id. at 2:27–30 (“As an improvement to the
invention, the intermediate support member comprises a nut sliding rod seat,
a first side-support piece, a second side-support piece and a transverse link
. . .”). The Specification also explains that “[t]he invention adopts a frame-
shaped driving mechanism and a frame-shaped intermediate support
member, and transfers the motive power via the frame-shaped intermediate
support member.” Id. at 4:56–59. Thus, the Specification suggests that the
“intermediate support member” is the name given to the collection of
already recited elements that serve to “transfer[] the motive power” from the
driving mechanism to the face plate. Id. It does not suggest that the claim
terms require separate structures. See Powell v. Home Depot U.S.A., Inc.,
663 F.3d 1221, 1231–32 (Fed. Cir. 2011) (finding the terms “cutting box”
and “dust collection structure” did not require separate structures in the
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context of the claims and specification); Retractable Techs., Inc. v. Becton,
Dickinson & Co., 653 F.3d 1296, 1303 (Fed. Cir. 2011) (“The claims and the
specifications indicate that the ‘needle holder’ and ‘retainer member’ need
not be separately molded pieces.”); Linear Tech. Corp. v. Int’l Trade Com’n,
566 F.3d 1049, 1054–56 (Fed. Cir. 2009) (finding “second circuit” and
“third circuit” recited in claims did not require separate circuits); see also
NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282, 1310 (Fed. Cir. 2005)
(noting that the asserted claim language did not support a limitation
requiring that the claimed “RF receiver” and “destination processor” be
separate and distinct).
Here, because the claims and specification allow overlap between the
various structures identified in claim 1 and the claimed “intermediate
support member” in claims 5–8, we see nothing wrong with Petitioner’s
mapping that identifies cross members H-1 and H-2 as satisfying both the
“nut sliding rod seat” and “intermediate support member.” See Pet. 35–37.
Patent Owner gives no other explanation why Petitioner’s mapping is
incorrect. We have reviewed Petitioner’s mapping and find that Petitioner
has shown by a preponderance of the evidence that Wynn discloses the
limitations of claims 5–8 and 13–16, and therefore, anticipates claims 5–8
and 13–16.
Patent Owner provides no explanation of why claim 11 is included in
this argument. See PO Resp. 4–5. We discern no potential “double duty”
problem as with the other claims in this group. We have reviewed
Petitioner’s allegations with respect to claim 11, and find that Petitioner has
shown by a preponderance of the evidence that claim 11 is anticipated by
Wynn.
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4. Summary
For all the reasons expressed above, we conclude that Petitioner has
established by a preponderance of evidence that Wynn anticipates
claims 1–16.
F. CLAIMS 1–18:
ANTICIPATION/OBVIOUSNESS BASED ON LAUDADIO AND OBVIOUSNESS
BASED ON LAUDADIO, CHOUINARD, AND WYNN
Petitioner argues that Laudadio by itself anticipates or renders claims
1–18 unpatentable as obvious, or that Laudadio in combination with either
Chouinard, or Wynn, or both renders claims 1–18 obvious. Pet. 21–31,
39–44. We consider these grounds together because of the extensive overlap
between them. Patent Owner presents arguments that Petitioner’s challenge
to independent claim 1 fails, and further argues that claims 5–8, 11, and
14–16 have for additional reasons not been shown unpatentable. See PO
Resp. 2, 4–5, 10–12 (not presenting arguments solely directed to dependent
claims 2–4, 10, 12, 17, and 18). As explained below, we determine that
Petitioner has proven by a preponderance of evidence that Laudadio by itself
and Laudadio in combination with either Chouinard or Wynn or both renders
claims 1–18 unpatentable as obvious. Petitioner has not shown by a
preponderance of the evidence Laudadio anticipates claims 1–18.
1. Independent Claim 1
Petitioner argues that Laudadio anticipates or renders obvious claim 1.
Pet. 21–25. Petitioner further contends that claim 1 is obvious in view of
Laudadio, Chouinard, and Wynn. Pet. 39–42.
a. Laudadio
Laudadio is titled “Motorized, Height Adjustable Desktop System.”
Ex. 1005, [54]. Laudadio discloses a motorized desktop system. Id. at 2:14.
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Figure 2, reproduced below, is an exploded view of a frame assembly of a
desktop system. Id. at 1:46–47.

Figure 2 shown above depicts frame assembly 103 that together with
surface assembly 102 forms the desktop system of Figure 1. Id. at 2:13–15.
Frame assembly 103 uses scissor assembly 108 that allows frame assembly
103 to be adjusted to varying heights. Id. at 2:15–18. Scissor assembly 108
includes a pair of inner scissor arms 109 and a pair of outer scissor arms 110
that form a crisscross shape. Id. at 2:29–31. “Reinforcer tube 111 is
attached at one end of inner scissor arms 109 to maintain a set distance
between the arms, to allow the arms to move together in parallel,” and to
“give the system stability when the frame assembly is raised into an elevated
position.” Id. at 2:33–37. Roller wheels 125 and 126 enable scissor arms
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109 and 110 to move within U-shaped tracks 114 and 123 that are provided
in upper and lower trays 104 and 105. Id. at 2:41–43; 2:56–57. “Carrier
bracket 115 is provided at one end of scissor arms 109 to transfer the force
of electric motor 119 to scissor arms 109 and 110.” Id. at 2:43–45.
Specifically, motor 119 powers a linear actuator with carrier plate 115
connected to a top of the actuator so that ends of scissor arms 109 that are
attached to carrier plate 115 move along U-shaped tracks 114 and 123,
which in turn moves the scissor arms in either horizontal direction, thereby
raising and lowering upper tray 105. Id. at 3:59; 4:9–14.
b. Chouinard
Chouinard is titled “Adjustable Stand for Monitor and Keyboard.”
Ex. 1007, [54]. Chouinard discloses an adjustable stand composed of two
components, a lower component and an upper component, where the two
components can be opened and closed by adjusting the elevation of the
upper component relative to the lower component. Id. at 2:24–29. Figure 3,
reproduced below, shows an exploded perspective view of the adjustable
stand.
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Figure 3 shows two pairs of spaced apart arms (labeled 30, 32) that
extend upwardly from lower wall 34 of the adjustable stand. Id. at 2:46–48.
Each pair of arms is pivotally interconnected at a point intermediate their
ends by means of pin 36. Id. at 2:48–50. With respect to arms 30, the lower
end of arm 30a is pivotally connected to ear 38. Id. at 2:51–52. With
respect to the lower end of arm 30b, it is interconnected to the lower end of
arm 32b by means of horizontally extending bar 40 which extends between
the two ends. Id. at 2:52–53. Pins 42a, b extend outwardly from opposite
ends of the bar and the pins pass through openings in the lower ends of the
two arms 30b, 32b and into a track 44 formed in horizontally extending
channel 46 along which the pin is free to slide. Id. at 2:53–59. Both the ear
and channel are bolted to the upper surface of the lower wall 34 of the lower
component. Id. at 2:59–61.
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The upper end of arm 30b is pivotally connected to ear 50 while the
upper end of arm 30a has an outwardly extending pin 52 which runs in a
horizontally extending track formed in channel 54. Id. at 2:62–65. Both ear
50 and channel 54 are bolted to the lower surface of the upper wall 15 of the
upper component of the adjustable stand. Id. at 2:65–67. The other pair of
arms 32 are attached to the lower and upper walls of the adjustable stand in
the same manner. Id. at 3:1–2. The tracks in the two channels attached to
the lower wall are parallel to each other as are the tracks in the two channels
attached to the upper wall. Id. at 3:2–5. All four tracks are parallel to one
another. Id. at 3:5–6.
“Bar 40 extends between and interconnects the lower ends of arms
30b and 32b.” Id. at 3:7–8. “[T]hreaded opening 60 is formed centrally of
the ends of the bar for receipt of threaded spindle 62. Id. at 3:8–10. The
spindle is rotated by electric motor or prime mover 64 which is bolted to the
lower wall of the stand.” Id. at 3:10–11. “The spindle and motor are
positioned such that the longitudinal axis of the spindle is oriented parallel to
the tracks in all four channels.” Id. at 3:11–14. “The motor operates both
forward and in reverse to cause the spindle to rotate selectively clockwise or
counterclockwise.” Id. at 3:14–16.
c. Petitioner’s Argument and Evidence
Petitioner provides a detailed accounting of the manner in which
specific portions of Laudadio describe all aspects of claim 1. Pet. 22–25
(citing Ex. 1005, Fig. 1 (ref. 104), Fig. 2 (refs. 101, 104, 105, 109, 110, 111,
115, 119 123), Figs. 5–8, 2:33–37, 3:66–67, 4:15–19). Specifically,
Petitioner submits that “the ‘bottom plate’ of Claim 1 is taught by
Laudadio’s lower tray (reference number 105 in Fig. 2), and the “‘face plate’
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is the upper tray 102, which is coupled to the first (left) side-support member
109/110 and the second (right) side-support member 109/110; both side-
support members are also coupled to the lower tray 109, as shown in
Laudadio’s Fig. 2.” Id. at 22. Petitioner argues that Laudadio teaches a
transverse link as shown in reinforcer tube 111 in Fig. 2 of Laudadio. Id.;
see also Ex. 1005, 2:29–37 (describing the relationships between side-
support members 109/110 and transverse link 111).
With respect to the driving mechanism, Petitioner asserts that
Laudadio teaches a driving mechanism “equivalent” to that claimed in
claim 1. Pet. 22. Specifically, Petitioner identifies the first and second
guide rods are taught by roller wheel tracks 123 (one on each side), which
allow roller wheels at the lower ends of side-support pieces 110 (again, one
on each side); the lower ends are also attached to moving plate/carrier
bracket 115 (which Petitioner asserts reads on the “nut sliding seat”), which
moves toward or away from motor/linear actuator driver 119 along the linear
actuator. Id. at 22–23. Petitioner notes that this actuator can be of any type
known in the art, including screw type drives as shown in Chouinard, Wynn,
and Faitel. Id. at 23 (citing Ex. 1005, 4:15–19).
Petitioner argues that, in Laudadio, the nut driving rod seat is taught
by the carrier bracket 115 and/or the moving plate described as moving
along the top of linear actuator 119; it is attached to side-support pieces 110
which, via attached roller wheels that move in roller wheel tracks 123, allow
the side-support members (scissor-arms) 109 and 110 to “open” and “close,”
moving face plate “down” and “up” respectively, relative to the bottom
plate, thus teaching the final wherein clause of Claim 1. Id.
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Petitioner contends that
Since Laudadio does not expressly disclose a “screw rod” as the
means of moving carrier bracket 115, but shows a single type of
linear actuator and states that other types of linear actuators can
be used—which necessarily includes screw-type linear actuators
such as that shown in Chouinard, Petitioner asserts Laudadio
does teach the screw rod limitation of Claim 1 but, alternatively,
it would have been obvious to adopt the well-known screw-type
drive of Chouinard, Wynn and Faitel to achieve the same effect
as that achieved by the linear actuator disclosed in Laudadio.
Id.
With respect to the obviousness ground of Laudadio, Chouinard, and
Wynn, Petitioner argues that, “in the event that Laudadio is construed as not
using a screw-type drive,” Chouinard teaches
a driving mechanism using a screw rod (Fig. 4, ref. 62) parallel
to the first guide rod (track 123 in Laudadio; channels 46 in Fig.
1 of Chouinard); a drive source configured to rotate the screw
rod (motor 64 in Fig. 6); and that ‘the drive mechanism is
configured to rotate the screw rod moving the nut rod sliding seat
to raise and lower the face plate” (same mechanism as in
Laudadio, but using a screw drive in Chouinard to move bar 40
toward or away from motor 64 to raise or lower the face plate
respectively.
Pet. 40–41.
As for the motivation to combine, Petitioner notes that “Chouinard
and Laudadio are both directed to adjustable-height desktops that are
electrically operated,” and “Laudadio expressly contemplated using other
types of linear actuators (such as the screw type taught by Chouinard; see
col. 4, lines 15-19 of Laudadio).” Id. at 41. Petitioner argues that “there
was a clear motivation to combine Chouinard with Laudadio to provide a
screw-type drive mechanism while keeping the lateral structural stability of
Laudadio (provided by reinforcement tube 111).” Id.
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Similarly, Petitioner also notes that
Wynn discloses a screw rod J parallel to the first guide rod F; a
driving source 46 via coupling 42 configured to rotate the screw;
such that “the drive mechanism is configured to rotate the screw
rod moving the nut rod sliding seat to raise and lower the face
plate”, as in Laudadio.
Pet. 41.
Petitioner submits that “[l]ike Chouinard and Laudadio, Wynn is
directed to the provision of adjustable-height work surfaces generally using
a scissor-type lifting means.” Id. Petitioner argues that a person of ordinary
skill would have been motivated to combine Wynn with Laudadio for the
same reasons articulated above for the combination of Laudadio and
Chouinard. Id. at 41–42.
d. Patent Owner’s Counterarguments
Patent Owner argues that Petitioner fails to prove the unpatentability
of claim 1 for two reasons. PO Resp. 2, 10–12. More specifically, Patent
Owner argues that Petitioner fails to show anticipation because it admits that
Laudadio does not disclose a screw drive. See id. at 2. As for the asserted
obviousness claim, Patent Owner also argues that an ordinarily skilled
artisan would not have been motivated to modify Laudadio or combine
Laudadio with Chouinard or Wynn as Petitioner contends. Id. at 10–12. We
agree with Patent Owner that Petitioner has failed to show that Laudadio
anticipates any claim, but we are not persuaded that Petitioner has failed to
show an adequate motivation to combine the cited references.
i. Anticipation by Laudadio
Patent Owner argues that Laudadio is not anticipatory because
Laudadio does not disclose a screw rod. PO Resp. 2. According to Patent
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Owner, Laudadio discloses a linear actuator, and Petitioner does not provide
evidence that a linear actuator “necessarily” includes a screw rod. Id.
As we explained above, Petitioner admits that Laudadio does not
expressly disclose a screw rod. Pet. 23. Moreover, in the Reply, Petitioner
does not contend that Laudadio expressly or inherently discloses a screw
rod. See generally Reply.
Laudadio discloses that the “[a]ctuator can be of a number of different
types of actuators, for example, but without limitation, a linear track actuator
or a linear telescopic rod actuator. One notable feature of this exemplary
embodiment in accordance with this invention is that different types of
actuators can be used.” Ex. 1005, 4:15–19. We agree Patent Owner’s
argument that a linear actuator does not necessarily include a screw rod, so
Petitioner has not met its burden of showing that Laudadio anticipates. See
Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008)
(noting “differences between the prior art reference and a claimed invention,
however slight, invoke the question of obviousness, not anticipation” and “it
is not enough [for anticipation] that the prior art reference discloses part of
the claimed invention, which an ordinary artisan might supplement to make
the whole”).
ii. Motivation to Combine for Obviousness based on Laudadio
Patent Owner argues that Petitioner “provides no expert support or
factual evidence as to the motivation for combing such references, instead
citing to an unknown (and unnamed) person of ordinary skill in the art.” PO
Resp. 10. Patent Owner asserts that “Petitioner’s arguments ‘amount to
nothing more than unsupported assertions about the common knowledge of
skilled artisans and what they would have considered desirable.’” Id. at 11
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(quoting Google Inc. v. Koninklijke Philips N.V., IPR2017-00409, Paper 10,
at 13–14 (PTAB June 5, 2017)). Patent Owner contends that “‘[C]onclusory
statements’ alone are insufficient and, instead, the finding must be supported
by a ‘reasoned explanation.’” Id. (quoting Nuvasive, 842 F.3d at 1383).
An obviousness challenger “must demonstrate . . . that a skilled
artisan would have had reason to combine [or modify] the teaching of the
prior art references to achieve the claimed invention, and that the skilled
artisan would have had a reasonable expectation of success from doing so.”
Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 449 (Fed.
Cir. 2015) (quoting PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186,
1193 (Fed. Cir. 2014)). A reason “to modify a reference can come from the
knowledge of those skilled in the art, from the prior art reference itself, or
from the nature of the problem to be solved.” SIBIA Neurosciences, Inc. v.
Cadus Pharm. Corp., 225 F.3d 1349, 1356 (Fed. Cir. 2000).
Those standards follow the Supreme Court’s various formulations in
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007). “In KSR, the Supreme
Court criticized a rigid approach to determining obviousness based on the
disclosures of individual prior-art references, with little recourse to the
knowledge, creativity, and common sense that an ordinarily skilled artisan
would have brought to bear when considering combinations or
modifications.” Randall Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013).
“[T]he Court required an analysis that reads the prior art in context, taking
account of ‘demands known to the design community,’ ‘the background
knowledge possessed by a person having ordinary skill in the art,’ and ‘the
inferences and creative steps that a person of ordinary skill in the art would
employ.’” Id. (quoting KSR, 550 U.S. at 418). We “must ask whether the
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[claimed] improvement is more than the predictable use”—a “predictable
variation”—“of prior art elements according to their established functions,”
considering whether more is involved than “the simple substitution of one
known element for another or the mere application of a known technique to
a piece of prior art ready for the improvement.” Intercontinental Great
Brands LLC v. Kellogg N. Am. Co., 869 F.3d 1336, 1344 (Fed. Cir. 2017)
(quoting KSR, 550 U.S. at 417). “[I]f 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 his or her skill.” KSR, 550
U.S. at 417. We also “should consider a range of real-world facts to
determine ‘whether there was an apparent reason to combine the known
elements in the fashion claimed by the patent at issue.’” Intercontinental,
869 F.3d at 1344 (quoting KSR, 550 U.S. at 418).
We disagree with Patent Owner’s contention that Petitioner’s
motivation to combine is insufficient. Here, Petitioner identified an explicit
teaching in Laudadio that
[The] Actuator can be of a number of different types of actuators,
for example, but without limitation, a linear track actuator or a
linear telescopic rod actuator. One notable feature of this
exemplary embodiment in accordance with this invention is that
different types of actuators can be used.
Ex. 1005, 4:15–19. We agree with Petitioner that this statement from
Laudadio contains an explicit teaching that would motivate a person of
ordinary skill to look to other options for actuating the device. See SIBIA
Neurosciences, 225 F.3d at 1356.
Petitioner also provided evidence of strikingly similar devices to
Laudadio—Chouinard, Wynn, and Faitel—that used a screw rod drive to
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perform exactly the same function as the linear actuator in Laudadio—raise
and lower the face plate of the device, in a similar way, with a reasonable
expectation of success. See Exs. 1005, 1007, 1008, 1009. Whether termed a
“simple substitution” or the rearrangement of known elements to achieve a
predictable result, we find this evidence and reasoning sufficient to meet
Petitioner’s burden to show a motivation to combine Laudadio with the
teachings of Chouinard or Wynn or the knowledge of a person of skill in the
art.11 See Realtime Data LLC v. Iancu, 912 F.3d 1368, 1374 (Fed. Cir.
2019) (finding a motivation to combine sufficient where “a person of
ordinary skill in the art would have looked to [the prior art reference]
because [the reference] is ‘well known,’ . . . “share[s] striking similarities”
to [other references] techniques, and [the other reference] itself ‘suggests
that a wide variety of adaptive compression algorithms could be used and
encourages a person having ordinary skill in the art to turn to ‘well known’
algorithms such as [the references].” Patent Owner offers no evidence to the
contrary to rebut Petitioner’s showing. “[W]hen [as we find here] a patent
simply arranges old elements with each performing the same function it had
been known to perform and yields no more than one would expect from such
an arrangement, the combination is obvious.” See KSR, 550 U.S. at 417.
For all these reasons, we are persuaded that Laudadio’s suggestion to
use alternative devices in place of its actuator would have motivated an
ordinarily skilled artisan to replace Laudadio’s actuator with the well-known
screw rod drive taught in either Chouinard or Wynn. See Icon Health &

11 Patent Owner argues that Petitioner cites to “an unknown (and unnamed)
person of ordinary skill in the art.” However, Petitioner has offered a
definition of the person of ordinary skill. See Pet. 14–15.
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Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1045 (Fed. Cir. 2017) (finding
the rationale of the “mere ‘combination of familiar elements’ . . .” to be
sufficient). We also find persuasive and adopt as our own Petitioner’s
argument, which is supported by the evidence that Petitioner cites, that an
ordinarily skilled artisan would have had a reasonable expectation of success
in combining teachings. See Pet. 22–24, 41–42; Reply 7–10.
e. Conclusion
For all the reasons expressed above, we conclude that Petitioner has
established by a preponderance of evidence that Laudadio alone and the
combined teachings of Laudadio, Chouinard, and Wynn render claim 1
unpatentable as obvious. Petitioner has not shown by a preponderance of the
evidence that Laudadio anticipates claim 1.
2. Dependent Claims 2–4, 9, 10, 12, 17, and 18
Claim 2 depends from claim 1 and adds the limitations of first and
second “fixing pieces” that act so that, “the first fixing piece, the second
fixing piece, the first guide rod, and the second guide rod form a frame.”
Ex. 1001, 6:16–20. Petitioner submits that Laudadio teaches welded tubes
120 and stop tubes 122 at each end of bottom plate 105 each act as fixing
pieces (thus teaching “first fixing piece” and “second fixing piece,” which
provide rigidity and operate, with guide rods 123, to form a rectangular
frame that provides structural rigidity for the driving mechanism and the
scissor-lift mechanism of Laudadio. Pet. 25–26. Alternatively, Petitioner
identifies “flange 124 is provided on the lower tray to secure the back of the
motor 119” (Ex. 1005, 2:54–55), thus acting as one of the fixing points, with
the leftmost stop tube 122 acting as the other fixing point. Pet. 26.
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Claim 3 depends from claim 2 and requires that, “a first end of the
screw rod is connected to the first fixing piece and a second end of the screw
rod is connected to the second fixing piece, and wherein the driving source
is disposed at the first end of the screw rod.” Ex. 1001, 6:21–25. Petitioner
submits that “Laudadio teaches that each end of screw rod/linear actuator is
attached to one of the fixing pieces (see Laudadio, Fig. 2: left and right ends
of the rod holding linear actuator 119 are attached to stop tubes 122, or to
one stop tube 122 and to flange 124).” Pet. 26.
Claim 4 depends from claim 3 and requires that “the bottom plate is
fixed to the first fixing piece and the second fixing piece.” Ex. 1001, 6:26–
27. Petitioner identifies the disclosure in Fig. 2 and col. 2, lines 49–55 that
first and second fixing points are fixed to the bottom plate (lower tray) 105.
Pet. 26.
Claim 9 depends from claim 1, and adds the limitation, “wherein the
nut sliding rod seat is coupled to the first guide rod, the second guide rod,
and the screw rod, and wherein the nut sliding rod seat is in threaded
engagement with the screw rod for reciprocating motion along the first guide
rod and the second guide rod upon rotation of the screw rod.” Ex. 1001,
6:49–54. Petitioner contends that “[t]aking linear actuator shaft to be a
screw rod and carrier block 115 as the nut sliding rod seat as before, the
carrier block is threadedly engaged with carrier block 115, which moves in
reciprocal motion (toward and away from motor 119); carrier block 115 is
also slidably coupled to the first and second guide rods 123 (via roller
wheels 125).” Pet. 28–29.
Claim 10 depends from claim 1, and adds the limitation, “wherein the
first side-support member and the second side-support member are each
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slidably coupled to the face plate.” Ex. 1001, 6:55–57. Petitioner identifies
Laudadio Fig. 2 as teaching that “side-support pieces 109 are slidably
coupled to the face plate 104 by roller wheels 125 (see also col. 2, lines
56–61).” Pet. 29.
Claim 12 depends from claim 1 and requires that each side-support
member comprise a side-support piece that is slidably attached to a desktop
connecting piece that is fixedly attached to the face plate on its upper end
and pivotally attached to the bottom plate on its lower end. Ex. 1001,
6:66–7:6. Petitioner contends that side-support pieces 109 teach the required
limitation. In particular, Petitioner asserts that Laudadio teaches that “side-
support pieces 109 are slidably attached at their upper end to face plate 104
by roller wheels 125 running in roller wheel tracks 114, and they are
pivotally attached to bottom plate 105 at their lower end by clevis pins 112
and cotter pins 113.” Pet. 30.
Claim 17 depends from claim 1 and adds the limitation that the
driving source is a motor. Ex. 1001, 8:9–10. Petitioner submits that
Laudadio teaches that “‘the driving source comprises a motor”, at least in
Fig. 2, ref. 119 and in col. 2, lines 43-48, which disclose a motor 119.
Pet. 30.
Claim 18 depends from claim 1 and adds the limitation, “a keyboard
plate, the keyboard plate coupled with a first desktop connecting piece and a
second desktop connecting piece, wherein the first desktop connecting piece
and the second desktop connecting piece are fixedly connected to the face
plate.” Ex. 1001. 8:11–17. Petitioner submits that Laudadio teaches a
keyboard plate. Id. at 30–31 (citing Ex. 1005, Fig. 3, ref. 128; 2:62–3:13).
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Patent Owner does not argue separately that Laudadio or the
combination of Laudadio, Chouinard, and Wynn fails to render claims 2–4,
9, 10, 12, 17, and 18 unpatentable as obvious. See generally PO Resp.
(advancing arguments directed to independent claim 1 and dependent claims
5–8, 11, and 13–16). Based on our review of the evidence of record and
Petitioner’s argument, which we adopt as our own (see NuVasive, 841 F.3d
at 974), we determine that Petitioner has demonstrated by a preponderance
of evidence that both Laudadio by itself, and Laudadio in combination with
Chouinard and Wynn renders dependent claims 2–4, 9, 10, 12, 13, 17, and
18 unpatentable as obvious.
3. Dependent Claims 5–8, 11, and 13–16
Claim 5 depends on claim 1, adding the limitation, “further
comprising an intermediate support member, the intermediate support
member configured to couple the driving mechanism to the first side-support
member and the second side-support member.” Ex. 1001, 6:28–31.
Petitioner submits that he intermediate support member in Laudadio
comprises at least the lower portions of each side-support piece 110; each of
these is pivotally attached at its lower point to carrier block/nut sliding rod
seat 115 and is attached at its midpoint to side-support pieces 109 (thus
jointly forming each of the two scissor-arm lifting mechanisms or side-
support members). Pet. 26–27. Petitioner argues that side-support pieces
110 at least read on the intermediate support member and its required
function of coupling the driving mechanism to the corresponding side-
support pieces 109, as required by Claim 5. Id.
Claim 6 depends from claim 5 and requires that the intermediate
support member, “further compris[es] the nut sliding rod seat configured to
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slide along the first guide rod and the second guide rod.” Ex. 1001, 6:32–34.
Petitioner contends that in Laudadio, roller wheels 126 move within roller
wheel tracks 123, which act as the first and second guide rods. Roller wheels
126 are attached to carrier block/nut sliding rod seat 115 and to side-support
pieces 110, thus Laudadio teaches that the intermediate support member
“further comprises the nut sliding rod seat configured to slide along the first
guide rod and the second guide rod.” Pet. 27.
Claim 7 depends from claim 5 and requires that the intermediate
support member, “compris[es] the nut sliding rod seat, the at least one side-
support piece, and the transverse link, wherein the at least one side-support
piece includes a first side-support piece coupled to the nut sliding rod seat
and a second side-support piece coupled to the nut sliding rod seat.”
Ex. 1001, 6:35–41. Petitioner argues that In Laudadio, the relevant side-
support pieces are scissor arms 110, at least from their connection to carrier
block 115 to their connection to reinforcement tube/transverse link 111, and
so the intermediate support member of Claim 7 is taught in Laudadio by
transverse link 111, first and second side-support pieces 110, and nut sliding
rod seat/carrier block 115, as required. Pet. 27–28.
Claim 8 depends from claim 7 and further requires that, “the first side-
support piece includes a lower end pivotally connected with a first end of the
nut sliding rod seat, the second side-support piece includes a lower end
pivotally connected with a second end of the nut sliding rod seat, and an
upper end of the first side-support piece and an upper end of the second side-
support piece are fixedly connected with the transverse link.” Ex. 1001,
6:42–48. Petitioner submits that Laudadio teaches that each side-support
piece is pivotally connected to the nut sliding rod seat/carrier block 115 at
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one end and fixedly attached to the transverse link 111 at an upper end (from
the perspective of its role as a part of the intermediate support member, each
side-support piece comprises a lower portion of side-support piece 110 and a
portion of the corresponding side-support piece 109 connected at its upper
end to transverse link 111, and the connection to 111 is fixed rather than
pivotal). Pet. 28.
Claim 11 depends from claim 1, and further requires that “wherein the
first side-support member and second side-support member each comprise a
side-support piece having an upper end and a lower end, wherein the upper
end of each side-support piece is pivotally connected to a respective desktop
connecting piece fixedly connected with the face plate and wherein the
lower end of each side-support piece is pivotally connected to a transverse
link.” Ex. 1001, 6:58–65. Petitioner argues that side-support pieces 109
each are pivotally connected to the face plate 104 via roller wheels 125, and
they are connected to transverse link 111 directly. Pet. 29.
Claims 13–16 depend from claim 12 and recite similar limitations to
those introduced in claims 5–8 respectively, and Petitioner relies on its
mapping of Laudadio to claims 5–8 for its argument that claims 13–16 are
obvious. See Pet. 30.
Patent Owner argues that Petitioner has failed to show that Laudadio
accounts for the limitations of claims 5–8 and 1312–16 because “the Petition
aligns several claim features with the same component.” PO Resp. 4. Patent

12 Patent Owner only lists 5–8 and 14–16 in its argument (PO Resp. 4), but
claim 13 is similar to claim 5 and claims 13–16 recite similar limitations to
claims 5–8, which Patent Owner argues. See Pet. 39. Thus, we assume that
the omission of claim 13 was an oversight and include it in our discussion
here for completeness.
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Owner argues that “[s]uch double duty of the prior art components results in
references failing to include the structural relationships recited in the
Claims.” Id. With respect to Laudadio, Patent Owner argues that Petitioner
has impermissibly aligned scissor arms 110 with both the “side-support
member” and the “intermediate support member.” Id. Relying on In re
Robertson, 169 F.3d 743, 744–45 (Fed. Cir. 1999), Patent Owner argues that
it is improper to conflate structural elements by asserting that a prior art
feature disclosed two separate and independent claim features. Id. at 4–5.
For the reasons given in detail in Part II.E.3 above with respect to
anticipation of claims 5–8 and 13–16 by Wynn, we disagree with Patent
Owner that Petitioner’s mapping of the claims on Laudadio is deficient.
Here, because the claims and specification allow overlap between the
various structures identified in claim 1 and the claimed “intermediate
support member” in claims 5–8, we see nothing wrong with Petitioner’s
mapping that identifies scissor arms 110 with both the “side-support
member” of claim 1 and the “intermediate support member” of claim 5. See
Pet. 26–28. Patent Owner gives no other explanation why Petitioner’s
mapping for these claims is incorrect. We have reviewed Petitioner’s
mapping and find that Petitioner has shown by a preponderance of the
evidence that Laudadio and the combination of Laudadio, Chouinard, and
Wynn teach the limitations of claims 5–8 and 13–16, and therefore, renders
claims 5–8 and 13–16 obvious.
4. Summary
For all the reasons expressed above, we conclude that Petitioner has
established by a preponderance of evidence that the Laudadio and the
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combination Laudadio, Chouinard, and Wynn render claims 1–18
unpatentable as obvious.
G. REMAINING GROUNDS
Having determined that Petitioner establishes by a preponderance of
the evidence that Wynn anticipates claims 1–16, and that the subject matter
of claims 1–18 would have been obvious over Laudadio alone or in
combination with Chouinard and Wynn, we do not address Petitioner’s
additional grounds challenging claims 1–18.13 See SAS Inst. Inc. v. Iancu,
138 S. Ct. 1348, 1359 (2018) (holding a petitioner “is entitled to a final
written decision addressing all of the claims it has challenged”); Boston Sci.
Scimed, Inc. v. Cook Grp. Inc., 809 F. App’x 984, 990 (Fed.
Cir. 2020) (nonprecedential) (“We agree that the Board need not address
[alternative grounds] that are not necessary to the resolution of the
proceeding.”).

III. CONCLUSION14
In summary,
Claim(s)
35
U.S.C. § Reference(s)
Claim(s)
Shown
Unpatentable
Claim(s) Not
Shown
Unpatentable
1–16 102 Wynn 1–16

13 Petitioner’s alternative obviousness ground of Chouinard in view of
Laudadio or Wynn or both begins with Chouinard and proposes modifying
Chouinard in view of Laudadio or Wynn, we find it is necessary to reach this
alternative obviousness argument as expressed above.
14 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
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Claim(s)
35
U.S.C. § Reference(s)
Claim(s)
Shown
Unpatentable
Claim(s) Not
Shown
Unpatentable
1–18 102 Laudadio 1–18
1–18 103 Laudadio 1–18
1–18 103 Laudadio, Chouinard, Wynn 1–18
1–16 103 Wynn15
1–4, 9–
12, 17 102 Faitel
1–4, 9–
12, 17 103 Faitel
1–18 103 Chouinard, Laudadio, Wynn
Overall
Outcome 1–18

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).
15 For the reasons explained above, we do not reach this and the following
grounds.
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IV. ORDER
For the reasons given, it is:
ORDERED, based on a preponderance of evidence, that claims 1–18
of U.S. Patent 10,159,336 B2 are unpatentable as set forth above; and
FURTHER ORDERED because this is a final written decision, the
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.

PETITIONER:
Brian Galvin
GALVIN PATENT LAW LLC
brian@galvinpatentlaw.com

Vanessa B. Pierce
LAW OFFICE OF VANESSA B. PIERCE
vanessa@bowmanpierce.com

PATENT OWNER:
Jason Dorsky
Tamatance Aga
VENABLE LLP
jmdorsky@venable.com
tjaga@venable.com