Jump Rope Systems, LLC

Patent Trials and Appeals Board

Jul 17, 2020

IPR2019-00587 (P.T.A.B. Jul. 17, 2020)

Trials@uspto.gov Paper 25
571-272-7822 Entered: July 17, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

COULTER VENTURES, LLC,
d/b/a ROGUE FITNESS
Petitioner,

v.

JUMP ROPE SYSTEMS, LLC,
Patent Owner.

IPR2019-00587
Patent 8,136,208 B2

Before LINDA E. HORNER, BARRY L. GROSSMAN, and
RICHARD J. SMITH, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
35 U.S.C. § 318(a)

IPR2019-00587
Patent 8,136,208 B2

2
I. INTRODUCTION
Coulter Ventures, LLC d/b/a Rogue Fitness (“Petitioner”) filed a
Petition to institute an inter partes review of claims 1–11 (“the challenged
claims”) of U.S. Patent No. 8,136,208 B2 (the “’208 patent”). Paper 1
(“Pet.”).
On August 1, 2019, we entered our Decision on Institution (Paper 8,
“Inst. Dec.” or “Institution Decision”) instituting inter partes review of all
challenged claims under all asserted grounds. Inst. Dec. 26. Patent Owner
Jump Rope Systems, LLC (“Patent Owner” or “JRS”) filed a Response
(Paper 10, “PO Resp.” or “Response”), Petitioner filed a Reply (Paper 12,
“Reply”), and Patent Owner filed a Corrected Sur-reply (Paper 18, “Sur-
reply”).1
Petitioner and Patent Owner requested an oral hearing. Papers 19, 20.
An oral hearing was held on May 1, 2020, and a transcript of that hearing
has been entered into the record. Paper 24 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6(b). This Final Written
Decision is issued pursuant to 35 U.S.C. § 318(a). Having reviewed the
arguments of the parties and the supporting evidence, we find that Petitioner
has demonstrated by a preponderance of the evidence that claims 1–11 of the
’208 patent are unpatentable.
A. Real Parties-in-Interest
Petitioner identifies itself as the real party in interest. Pet. 1. Patent
Owner identifies itself as the real party in interest. Paper 4, 2

1 Petitioner objected to Patent Owner’s submission of a declaration in
support of its original sur-reply, which was subsequently withdrawn by
Patent Owner with our approval, thus giving rise to the “corrected” Sur-
reply. See Papers 13–17.
IPR2019-00587
Patent 8,136,208 B2

3
B. Related Matters
Petitioner states that Patent Owner asserts infringement of claim 1 of
the ’208 patent by Petitioner in litigation styled Jump Rope Systems, LLC v.
Coulter Ventures, LLC, U.S. District Court for the Southern District of Ohio,
Case No. 2:18-cv-00731. Pet. 1. Patent Owner identifies IPR2019-00586 as
a related matter.2 Paper 4, 2.
C. The ’208 Patent (Ex. 1022)
The ’208 patent was filed April 1, 2008, and discloses embodiments
of a handle that may be attached to a rope or cable used as a jump rope. Ex.
1022, 1:52–67; Fig. 1. The handle includes a ball element pivotally coupled
to an end of the handle which allows any direction of travel by the handle
within a swivel range and a pivot range. Id. at 6:4–6, 48–53; Fig. 11. The
’208 patent issued May 20, 2012.
Figure 5 of the ’208 patent (below) illustrates an embodiment of a
jump rope handle:

2 Petitioner filed a petition in IPR2019-00586 challenging U.S. Patent No.
7,789,809 B2 (the “’809 patent”), which is also owned by Patent Owner and
relates to subject matter similar to the ’208 patent. Ex. 1001. During the
oral hearing, the parties agreed that the present petition and the petition in
IPR2019-00586 rise or fall together. Tr. 20:5‒21:7, 33:10‒34:7. The
decision to institute in IPR2019-00586 (Paper 5) is Exhibit 1030. A Final
Written Decision relating to the ’809 patent is being entered
contemporaneously herewith.

IPR2019-00587
Patent 8,136,208 B2

4

FIG. 5
Figure 5 above is a cross section of a jump rope handle disclosed in
the ’208 patent. Id. at 2:16–17.
An embodiment of an end of the handle is illustrated below.

Figure 11 above is a perspective view of an end of a jump rope handle
disclosed in the ’208 patent. Id. at 2:28–29.
Figure 5 above illustrates an embodiment of a handle 3 having a shaft
9 coaxially rotatably engaged to a first bearing 10 and a second bearing 11.
IPR2019-00587
Patent 8,136,208 B2

5
Id. at 2:45–49. As further illustrated in Figure 5, a first end 34 of shaft 9
extends outwardly of the handle and includes a blade element 40 which
bounds a first shaft end aperture (not numbered in Fig. 5). Id. at 5:7–35. As
illustrated in Figure 11, a ball 54 may be pivotally coupled to the first shaft
end 34, which further provides the first shaft aperture 44 through which a
cable end can pass for attachment to the handle. Id. at 6:48–53; see also Fig.
11 above.
The ’208 patent describes the blade element 40 as “providing a pair of
generally circular . . . or rectangular . . . planar surfaces disposed in
substantially opposed parallel relation.” Id. at 5:20–22. The ’208 patent
also states that “[t]he term ‘pivot’ for the purposes of the invention includes
any direction of travel by one of the pair of handles (3) within a swivel range
(51) and a pivot range (50) defined by the configuration of cable pivot
element 45.” Id. at 6:4–7; see also Fig. 11 above.
D. Illustrative Claim
Independent claim 1 is representative of the challenged claims:
1. A handle, comprising:
a) a handle which retains within a shaft rotatably journaled
in at least one bearing element;

b) a first shaft end extending axially outward of said handle,
wherein said first shaft end comprises a blade element which
bounds an aperture element at a distance from said handle; and

c) a ball element pivotally coupled within said aperture element,
said ball element adapted to couple to a cable element.
Ex. 1022, 9:28–37.
Claims 2–11 depend directly or indirectly from claim 1. Id. at 9:38–
10:39.
IPR2019-00587
Patent 8,136,208 B2

6
E. The Asserted Grounds of Unpatentability and Declaration Evidence
Petitioner contends that the challenged claims are unpatentable under
35 U.S.C. § 103(a) based on the following grounds. Pet. 6.
References Basis Claims challenged
Wolf,3 Terper4 § 103(a)5 1–11
Wolf, Bradley6 § 103(a) 1–11

The Petition further cites Exhibits, such as Exhibits 1007–1009 and
1014‒1017, as evidence of the background knowledge of one having
ordinary skill in the art at the time of the invention. See, e.g., Pet. 27 n.9.
Petitioner relies on the Declaration of Steven M. Lenz, P.E. (Ex. 1024,
“Lenz Declaration”) and a supplemental Declaration by Steven M. Lenz,
P.E. (Ex. 1029, “Supp. Lenz Dec.”) in support of its arguments. Exhibits A–
J are attached to, and referred to, in the Lenz Declaration as support for his
testimony. Ex. 1024, 101–187. Patent Owner relies on the Declaration of
Kim B. Blair, Ph.D. in Support of Patent Owner’s Response (Ex. 2006,

3 Wolf, German Patent Application Publication No. DE 26 41 383 A1,
published March 16, 1978 (“Wolf”). Ex. 1005. Exhibit 1006 is the certified
English translation of Wolf.

4 Terper, French Patent Application Publication No. 2 408 362, published
June 8, 1979 (“Terper”). Ex. 1010. Exhibit 1011 is the certified English
translation of Terper.

5 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103. Because the ’208
patent was filed before the effective date of the relevant amendment, the
pre-AIA version of § 103 applies.

6 Bradley, US 4,248,486, issued Feb. 3, 1981 (“Bradley”). Ex. 1009.
IPR2019-00587
Patent 8,136,208 B2

7
“Blair Declaration”) and the Declaration of Mary L. Metz (Ex. 2003, “Metz
Declaration”) in support of its arguments. The parties rely on other exhibits
as discussed below.
II. DISCUSSION
A. Level of Ordinary Skill in the Art
In determining the level of ordinary skill in the art, various factors
may be considered, including the “type of problems encountered in the art;
prior art solutions to those problems; rapidity with which innovations are
made; sophistication of the technology; and educational level of active
workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
(internal quotation marks and citation omitted).
Petitioner asserts that “a person having ordinary skill in the art at the
time of the invention (‘PHOSITA’) would have had a bachelor’s degree in
mechanical engineering and/or a related field and at least one to three years
of experience or familiarity with jump rope systems and/or mechanically
constructed fitness equipment.” Pet. 14 (citing Ex. 1024 ¶¶ 25–27).
Petitioner states in the alternative that “a person of ordinary skill in this field
would have equivalent experience either in industry or research, such as
designing, [] developing, evaluating [] such systems or equipment.” Id.
Patent Owner does not contest Petitioner’s proposed description of a
PHOSITA or set forth an alternative description of a PHOSITA. See
generally PO Resp.; Sur-reply.
Although Patent Owner does not contest Petitioner’s proffered level
of ordinary skill in its Response, Patent Owner’s declarant, Dr. Kim Blair,
based his testimony on a slightly different level of skill. Ex. 2006 ¶ 33.
Specifically, Dr. Blair opined that a person having ordinary skill in the art
IPR2019-00587
Patent 8,136,208 B2

8
“would have had a bachelor’s degree in mechanical engineering and/or a
related field, or one or more years of experience in the design or
development of jump rope systems and/or mechanically constructed fitness
equipment.” Id. Patent Owner’s expert, thus, defines the level of ordinary
skill in the art as a person have a technical degree or experience, whereas,
Petitioner’s expert defines the level of ordinary skill in the art as a person
having a technical degree and experience, or equivalent experience.
When questioned at the hearing about Patent Owner’s position on the
level of ordinary skill in art, Patent Owner’s counsel conceded that Patent
Owner does not contest Petitioner’s proposed level of ordinary skill in the
art. Paper 24, 38:4‒39:5 (asserting that Dr. Blair’s testimony is the same
regardless of which level of ordinary skill is applied); see also Ex. 2006 ¶ 34
(stating same).
Our Decision herein would be the same regardless of whether we
adopted Petitioner’s position as to the level of ordinary skill in the art or that
of Dr. Blair. Given that Patent Owner does not contest Petitioner’s proposed
level of ordinary skill in the art and did not proffer Dr. Blair’s level of
ordinary skill in the art in its Response, we adopt Petitioner’s position as to
the level of ordinary skill in the art for the purposes of this Decision. See
Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that
specific findings regarding ordinary skill level are not required “where the
prior art itself reflects an appropriate level and a need for testimony is not
shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755
F.2d 158, 163 (Fed. Cir. 1985))).
IPR2019-00587
Patent 8,136,208 B2

9
B. Claim Construction
In this inter partes review, filed January 17, 2019,7 we construe the
claims of the ’208 patent using the same claim construction standard that
would be used to construe the claim in a civil action under 35 U.S.C.
§ 282(b), 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) (2019); see also Phillips v. AWH Corp., 415 F.3d 1303 (Fed.
Cir. 2005). The specification may impose a specialized meaning, departing
from the ordinary and customary meaning, by defining a term with
reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d
1475, 1480 (Fed. Cir. 1994). Only those claim terms that are in controversy
need to be construed, and only to the extent necessary to resolve the
controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
(Fed. Cir. 1999); see also Nidec Motor Corp. v. Zhongshan Broad Ocean
Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in
the context of an inter partes review).
Petitioner proposes claim constructions for “blade element” and
“pivotally coupled.” Pet. 8‒14. Petitioner proposes that “blade element”
should be construed to mean “a flat element providing a pair of planar
surfaces disposed in substantially opposed parallel relation.” Id. at 8
(emphasis omitted). Petitioner’s proposed construction for “blade element”
is taken from the description and depiction of the blade element provided in

7 The claim construction standard to be employed in inter partes reviews has
changed for proceedings in which the petition was filed on or after
November 13, 2018. See 83 Fed. Reg. 51,340, 51,358 (Oct. 11, 2018); 37
C.F.R. § 42.100(b) (2019).
IPR2019-00587
Patent 8,136,208 B2

10
the ’208 patent and is informed by the discussion about the scope and
meaning of “blade element” made during prosecution of the ’208 patent.
Pet. 8‒11 (citing Ex. 1022, 5:15–22, Figs. 5, 6, 10, 11; Ex. 1002, 20, 46).8
Petitioner proposes that “pivotally coupled” should be construed to
mean “coupled to allow at least some swiveling and pivoting movement.”
Pet. 12 (emphasis omitted) (citing Ex. 1024 ¶ 50). Petitioner’s proposed
construction for “pivotally coupled” is based on an express definition of the
term “pivot” provided in the ’208 patent and descriptions of movement
“within a swivel range” and movement within “a pivot range” discussed and
depicted in the ’208 patent. Id. at 12‒14 (citing Ex. 1022, 6:4‒28, Fig. 11;
Ex. 1024 ¶¶ 38, 39, 50, 51).
Patent Owner responds that Petitioner’s proposed constructions “align
with the definitions provided by the specification of the ’208 patent.” PO
Resp. 8–9. Patent Owner argues that “Petitioner’s proposed construction of
‘blade element’ comes directly from the ’208 Patent specification,” and that
“the ’208 Patent adequately defines the term ‘pivotally coupled’ and no
further construction is necessary.” Id. at 9–11.
We agree that Petitioner’s proposed constructions are consistent with
the express definitions of these terms provided in the ’208 patent. Thus, we
adopt these definitions for “blade element” and “pivotally coupled.” No
further construction of these terms is necessary.

8 Exhibit 1002 is the file history of the ’809 patent. Pet. iv. Petitioner
asserts that “the file history of the ’809 patent contains relevant discussion
about the scope and meaning of ‘blade element’ that supports this
construction.” Pet. 9. In making that assertion, Petitioner notes the close
relationship between the ’208 patent and the ’809 patent and that the
respective claims “use many of the same terms, including ‘blade element.’”
Id. n.7.
IPR2019-00587
Patent 8,136,208 B2

11
C. Principles of Law
To prevail in its challenge to the patentability of the challenged
claims, Petitioner must demonstrate by a preponderance of the evidence that
the challenged claims are unpatentable. 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 of persuasion never
shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics,
Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in
inter partes review).
A patent claim is unpatentable under 35 U.S.C. § 103 if the
differences between the claimed subject matter and the prior art are such that
the subject matter, as a whole, would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). “When a patent claims a structure already known in the prior art that
is altered by the mere substitution of one element for another known in the
field, the combination must do more than yield a predictable result.” Id. at
416 (citing United States v. Adams, 383 U.S. 39, 50‒51 (1966)). The
question of obviousness is resolved based on underlying factual
determinations including: (1) the scope and content of the prior art; (2) any
differences between the claimed subject matter and the prior art; (3) the level
IPR2019-00587
Patent 8,136,208 B2

12
of ordinary skill in the art; and (4) objective evidence of non-obviousness.
Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
D. Obviousness over Wolf and Terper
1. Wolf
According to Petitioner’s translation, Wolf discloses a jump rope with
handles attached to the ends. Ex. 1006, 11.9 The disclosure of Wolf can be
understood with reference to Fig. 2 thereof reproduced below.

Figure 2 above illustrates a jump rope handle and rope. Id. at 34.
Wolf discloses a handle 14 having a pin 28, which protrudes out from
the handle 14, and is embodied as a shaft that is supported in the handle 14
in a rotary fashion. Id. at 3, claims 1, 2. Wolf also discloses a pair of
bearings 24, 26 that support the shaft 28, and that the bearings may be roller

9 Petitioner states that citations to Wolf and Terper are to the page numbers
added by Petitioner on the bottom-right corner of the Exhibits. Pet. 6 n.6.
The same citation approach applies to citations to other prior art, and we
follow that approach in citing to prior art.

IPR2019-00587
Patent 8,136,208 B2

13
bearings or ball bearings. Id., claims 3, 4. Wolf states that the use of a
rotary shaft 28 results in the avoidance of the friction, and corresponding
requirement of a high exertion of force to overcome it, that is present
between the handle and the cord in known jump ropes. Id. at 15.
The shaft 28 is connected to a first arm 40 by a cotter pin 50. Id. at
20–21. The first arm 40 is connected to a second arm 42 by an articulation
pin 48 that allows the handle to pivot. Id. at 21; see also id. Fig. 1. A jump
rope cord 12 is connected to the second arm 42. Id. at 21–22.
2. Terper
According to Petitioner’s translation, Terper discloses a jump rope
having handles equipped with swivel joints inside of which the ends of the
cord are crimped. Ex. 1011, 3:5–7. Terper describes that “[t]he invention
allows the rope to easily rotate inside the handle, and to externally oscillate,
because of the swivel joint, thus avoiding shearing.” Id. at 3:11–12. The
motion of the cord or rope 4 is depicted in Figures 1a and 1b of Terper,
reproduced below.

IPR2019-00587
Patent 8,136,208 B2

14
Figures 1a and 1b above illustrate the handle and cord of Terper. Id.
at 6. Figure 1a shows handle sleeve body 1, swivel joint 2, crimping
assembly 3, and cord 4. Id. at 3:19‒21. Figure 1a shows rotating motion of
the cord, indicated by an arrow, and Figure 1b shows oscillating motion of
the cord. Id. at 3:13‒14.
Figures 4a and 4b, reproduced below, show a more detailed view of
the Terper device.

Figures 4a and 4b show cross-sectional views during assembly of the
Terper device. Id. at 4. As described in Terper and shown above, during
assembly, plastic bushing 3a is slid onto the cord and these parts are heated
and then inserted into the bore of the swivel bearing until it is in contact with
the flange of the bushing. Id. at 4:3‒7. Crimping washer 3b is inserted
under the flange of the bushing (Fig. 4a) and pivoted by 90 degrees (Fig. 4b)
to bring the flat sides of the washer into contact with the flat sides of the
IPR2019-00587
Patent 8,136,208 B2

15
bushing to immobilize the cord. Id. at 4:8‒10. The end of the cord is
burned, the part of the sleeve body on the bearing side is heated, and then the
assembly is pressed into the housing. Id. at 4:11‒14.
3. Claim 1
Petitioner sets forth how the combination of Wolf and Terper
discloses each limitation in claim 1. Pet. 24–30. Petitioner also provides
reasons to combine Wolf and Terper and asserts that the combination is
within the capability of a person having ordinary skill in the art. Id. at 30‒
34.
Patent Owner argues that Petitioner has failed to show obviousness
because the combination would decrease the functionality of Wolf, the
combination is not according to known methods, there is no motivation to
combine Wolf with Terper, the combination is not a simple substitution, and
the combination does not disclose all of the limitations of claim 1. PO Resp.
12‒27. Patent Owner also presents evidence that it contends establishes
objective indicia of non-obviousness. PO Resp. 55‒61.
We first analyze the scope and content of the prior art and the
differences between the art and the claimed subject matter. We then
consider the reasons to combine, taking into consideration the level of
ordinary skill in the art and evidence of a reasonable expectation of success,
and the proffered evidence of objective indicia of non-obviousness.
IPR2019-00587
Patent 8,136,208 B2

16
a. Limitation 1.a)
Petitioner contends that Wolf discloses “a handle which retains within
a shaft rotatably journaled in at least one bearing element.”10 Pet. 25. Patent
Owner does not contest Petitioner’s assertions that Wolf discloses these
limitations. See generally PO Resp.
Specifically, Petitioner contends, and we agree, with the following:
Wolf discloses a “pin (28) . . . embodied as a shaft that is supported in the
handle (14) in rotary fashion” by “bearings (24, 26) that support the shaft
(28).” Pet. 25 (citing Ex. 1006, 3, claims 2, 3). The shaft (28) of Wolf is
retained within the handle and “rotatably journaled in at least one bearing
element.” Id. (citing Ex. 1024 ¶¶ 61–68). Petitioner’s expert testifies that
Wolf’s shaft 28 is rotatably journaled in at least one bearing element based
on the ordinary meaning of “journal” and the way a PHOSITA would
understand the term “journaled.” Ex. 1024 ¶¶ 60‒63.
Petitioner provides an annotated Figure 2 of Wolf, reproduced below.
Pet. 25.

10 Regardless of whether the preamble—“A handle, comprising:”—is
limiting, Petitioner has shown that the recitation in the preamble is satisfied
by Wolf.

IPR2019-00587
Patent 8,136,208 B2

17

Annotated Figure 2 depicts shaft 28 in red supported by bearing
element 26, shown in dark blue, within a handle 14 shown in light blue. Id.
Petitioner thus shows, and we agree, that Wolf discloses “a handle
which retains within a shaft rotatably journaled in at least one bearing
element” as recited in claim 1 of the ’208 patent. Pet. 25 (citing Ex. 1006, 3,
claims 2, 3; Ex. 1024 ¶¶ 61–68).
Petitioner contends that the combination of Wolf and Terper yields the
remaining elements of claim 1. Pet. 26.
b. Limitation 1.b)
Limitation 1.b) recites “a first shaft end extending axially outward of
said handle, wherein said first shaft end comprises a blade element which
bounds an aperture element at a distance from said handle.” Ex. 1022, 9:31–
34.
IPR2019-00587
Patent 8,136,208 B2

18
Petitioner contends that “Terper discloses a spherical bearing—
referred to as a swivel joint—for attaching the rope to handles of a jump
rope.” Pet. 26 (citing Ex. 1011, 3:18–22, Figs. 1a–1b; Ex. 1024 ¶ 71).
According to Petitioner, Terper’s spherical bearing includes a ball and a ball
housing, as supported by Petitioner’s annotated and amended versions of
Figure 4a of Terper reproduced below.

Annotated and amended versions of Figure 4a of Terper above show a
rope (in green) fixed within a ball (in purple) that is seated in an aperture of
a ball housing (in yellow). Pet. 26. Petitioner asserts that the ball housing
“is in the form of a flat disk that has planar top and bottom surfaces disposed
in opposed parallel relation,” and that the ball “is seated in an aperture of the
housing.” Id. (citing Ex. 1011, Fig. 4a; Ex. 1024 ¶ 71). Petitioner’s expert
also states that Terper discloses a swivel joint having a ball and a ball
housing, which is in the form of a flat disk with planar top and bottom
surfaces disposed in opposed parallel relation. Ex. 1024 ¶ 71 (citing Ex.
1011, Figs. 4a, 4b).
IPR2019-00587
Patent 8,136,208 B2

19
Petitioner explains that “[a]t the time of the ’208 [p]atent, it was
known in the art of jump ropes to couple a rope to a flat element (including a
flat disk) having an aperture on the end of a rotary shaft in a handle where
the flat element extends axially away from the shaft a distance outward from
the handle.” Pet. 27 (citing Ex. 1024 ¶ 72; Ex. 1015 (JP S59-012912 Y2,
published Apr. 18, 1984, to Katsumi Suzuki (English Translation)
(“Suzuki”)), 2, Fig. 2; Ex. 1017 (JP S47-36558 U, published Dec. 22, 1972,
to Masao Yamaguchi (English Translation) (“Yamaguchi”), Fig. 2).
Figure 2 of Suzuki is reproduced below.

Figure 2 above is a perspective view of a jump rope. Ex. 1015, 2:6–7.
Suzuki discloses grip 7 having engaging portion 9. Id. at 2:17–22. Portion 9
is “fitted into the tip of the grip and secured to the tip while rotatably holding
an engaging terminal 11 for wire 10” to which cord 6 is attached. Id.
IPR2019-00587
Patent 8,136,208 B2

20
Figure 2 of Yamaguchi is reproduced below.

FIG. 2
Figure 2 above shows a jump rope handle connected to a rope. Ex.
1017, 1. Yamaguchi discloses jump rope grip 1 having cap 2 screwed
thereon. Id. Connector 4 is fitted into the cap 2 so that annular portion 3
protrudes from the cap. Id. Rope 5 is attached to connector 4 through
annular portion 3. Id.
Petitioner explains that it also “was known to couple a spherical
bearing (providing a ball within an aperture) on the end of a shaft so that the
housing extends axially from the shaft,” which was known as a “common
rod end.” Pet. 27 (citing Ex. 1024 ¶ 73; Ex. 1009 (Bradley), 3:6‒7, 16‒18).
Figure 1 of Bradley is reproduced below.

IPR2019-00587
Patent 8,136,208 B2

21
Figure 1 is a perspective view of a spherical bearing used in a rod end
assembly. Ex. 1009, 2:52‒54.
Petitioner contends that “coupling the spherical bearing of Terper on
the end of the first arm of Wolf results in the housing of Terper extending
axially outward from the handle,” thereby yielding “a flat element—
providing planar top and bottom surfaces disposed in opposed parallel
relation” and “forming the ‘shaft end extending axially outward of the
handle, wherein [the] shaft end comprises a blade element’ as required by
Claim 1.” Pet. 28 (citing Ex. 1024 ¶¶ 71‒76). Petitioner provides a
depiction of an exemplary combination of Wolf and Terper, as reproduced
below. Id.

The figure shown above depicts the handle, shaft, bearings, and first
arm of Figure 2 of Wolf in combination with the swivel joint of Figure 4a of
Terper. Pet. 28.
Petitioner contends that, as shown in the exemplary combination
above, the ball of Terper is seated in an aperture of the housing that “when
coupled to the first arm of Wolf . . . positions the aperture a distance from
IPR2019-00587
Patent 8,136,208 B2

22
the handle.” Pet. 29 (citing Ex. 1024 ¶¶ 71–75). Petitioner also contends
that “Wolf teaches that the rope is coupled via a hinge joint, which places
the rope a distance from the handle.” Id. (citing Ex. 1006, 18–19; Ex. 1024
¶ 75). Thus, according to Petitioner, “the combination results in the ‘blade
element which bounds [the] aperture [of Terper] at a distance from [the]
handle’ of Wolf, as required by Claim 1, including ‘blade element’ as
construed.” Id. (citing Ex. 1024 ¶¶ 71–76).
We address in this section whether the modification to Wolf with the
teaching of Terper, as proposed by Petitioner, would result in the claimed
“blade element.” We address below Petitioner’s proposed reasons for the
modification and evidence of reasonable expectation of success, and Patent
Owner’s evidence of non-obviousness.
We agree with Petitioner that the modification to Wolf with the
teaching of Terper, as proposed by Petitioner, yields the claimed “blade
element.” Specifically, by removing articulation pin 48 and second arm 42
of Wolf’s assembly, as proposed by Petitioner, one is left with Wolf’s
handle 14, shaft 28, and first arm 40 extending axially from the shaft.
Ex. 1006, 20‒21, Fig. 2. Terper’s spherical bearing includes a ball within a
ball housing, where the ball housing has opposed planar surfaces. Ex. 1011,
Fig. 4a. Thus, by coupling Terper’s spherical bearing to the end of Wolf’s
first arm 40 in place of Wolf’s second arm 42, as proposed by Petitioner, the
resulting assembly would result in the opposed planar surfaces of Terper’s
bearing on the end of Wolf’s first arm 40. Accordingly, the proposed
combination would result in “a blade element which bounds an aperture
element at a distance from said handle,” as recited in claim 1.
IPR2019-00587
Patent 8,136,208 B2

23
Patent Owner argues that the “blade element” is “not present in either
the Wolf or Terper reference.” PO Resp. 27; see also id. at 28 (arguing that
neither reference discloses a blade element). As to Terper, Patent Owner
argues that “[t]he creation of the blade element from Terper is rather
arbitrary and involves cutting a specific section of the handle (T-1) in order
to meet the definition of a ‘blade element.’” Id. at 27 n.12.
Patent Owner’s arguments address each reference individually. We
do not understand Petitioner’s challenge to be based on an assertion that
Terper, taken alone, discloses a blade element. Rather, Petitioner’s
challenge is based on use of Terper’s spherical bearing coupled on the
axially extending end of Wolf’s first arm 40, which results in the claimed
blade element. The combination achieves this result because, as explained
by Petitioner, the top and bottom surfaces of Terper’s bearing housing are
planar, so that when the bearing housing is coupled to Wolf’s first arm 40,
the end of first arm 40 takes the form of a blade element with planar top and
bottom surfaces. Pet. 28. Furthermore, as noted by Petitioner in the Reply,
Terper identifies the swivel joint assembly as a discrete component apart
from the jump rope handle and shows a cross-section of the handle in Figure
2 without the swivel joint installed. Reply 3 (citing Ex. 1011, 3:20, Fig. 2;
Ex. 1029 ¶¶ 11–13). Terper discloses assembly of the jump rope, which
includes pre-assembly of the rope, bushing, swivel bearing (i.e., ball and ball
housing), and washer, and then press fitting this pre-assembly into the
handle sleeve body. Ex. 1011, 4:2‒15, Figs. 1a, 4a. Thus, we agree with
Petitioner that Terper’s swivel joint assembly is separable from Terper’s
handles. Reply 3 (citing Ex. 1011, 4:13‒15, 3:15‒17).
IPR2019-00587
Patent 8,136,208 B2

24
Based on our review of the evidence of record, we find that Petitioner
has shown that Wolf, modified as proposed with the spherical bearing of
Terper, would result in the claimed “blade element.”
c. Limitation 1.c)
Petitioner contends that coupling the spherical bearing of Terper on
the end of the first arm of Wolf results in “a ball element pivotally coupled
within said aperture element, said ball element adapted to couple to a cable
element” as recited in claim 1. Pet. 29 (citing Ex. 1024 ¶¶ 77, 78); see also
Ex. 1022, 9:35–37. Petitioner contends that the rope coupled to Terper’s
ball (seated in an aperture of the housing) pivots relative to the handle and
swivels about the rope’s own axis, so that when Terper’s swivel joint is
added to the end of Wolf’s first arm, the ball element would be pivotally
coupled (as construed) within the aperture and adapted to couple to a cable
element. Id. at 29–30 (citing Ex. 1011, 3:13–14; Ex. 1024 ¶¶ 71, 77–81, 90–
92).
Patent Owner argues that Wolf does not disclose “a ball element
pivotally coupled within said aperture element, said ball element adapted to
cople [sic] to a cable element.” PO Resp. 28. Patent Owner’s arguments
address Wolf individually. Petitioner’s challenge is based on coupling
Terper’s spherical bearing on the axially extending end of Wolf first arm 40,
which results, as discussed above, in the claimed ball element pivotally
coupled within said aperture element, said ball element adapted to couple to
a cable element. To the extent Patent Owner’s argument as to each
reference individually lacking this limitation is further to Patent Owner’s
arguments against Petitioner’s reasons for the proposed combination, we
address the reasons to combine below.
IPR2019-00587
Patent 8,136,208 B2

25
Based on our review of the evidence of record, we find that Petitioner
has shown that Wolf, modified as proposed with the spherical bearing of
Terper, would result in the claimed “ball element pivotally coupled within
said aperture element, said ball element adapted to couple to a cable
element.”
d. Reason to Combine
Petitioner presents several reasons why one having ordinary skill in
the art would have been led to combine the teachings of Wolf and Terper in
the manner claimed. Pet. 30–34. We discuss several of these reasons below.
(1) According to known methods to yield predictable results
Petitioner asserts that the proposed combination of the elements of
Wolf and Terper “is according to known methods and yields predictable
results.” Pet. 30 (citing Ex. 1024 ¶ 82). Petitioner explains that Wolf’s first
arm remains coupled to the pin to form a spinning shaft and positions the
joint to which the rope is attached a distance outward from the handle. Id.
(citing Ex. 1024 ¶¶ 82, 83). Petitioner further explains that in this
combination, Terper’s spherical bearing remains the joint to which the rope
is attached. Id. Thus, according to Petitioner, the combination yields the
“predictable result of introducing a swivel joint to Wolf that allows the rope
of Wolf to pivot relative to the handle and to swivel about the rope’s own
axis—instead of simply pivoting alone.” Id. (citing Ex. 1024 ¶ 83).
Patent Owner responds only that Petitioner’s argument was “rejected
by the Board” in a parallel inter partes review proceeding. PO Resp. 18
(citing Ex. 1030, 21, 22). In that decision, we questioned whether the
Petition “address[es] adequately the fact that the purpose of Wolf’s first arm
40 is to form the first half of a hinge joint.” Ex. 1030, 22. We observed that
IPR2019-00587
Patent 8,136,208 B2

26
“[b]y removing the hinge pin and second arm of Wolf in the modification,
the remaining first arm 40 is no longer part of a hinge joint.” Id.
Petitioner acknowledged in its Reply that the decision to institute in
IPR2019–00586 questioned Petitioner’s position that the first arm of Wolf
and the swivel joint of Terper perform the same functions in combination
that they do separately. Reply 14 (citing Ex. 1030, 21–22). Petitioner
argues, however, that “changing the type of joint on the end of the first arm
of Wolf does not create a change in function that defeats this rationale.” Id.
at 14‒15 (arguing that the first arm of Wolf includes a type of joint structure
that provides pivoting movement for the rope, and combining the swivel
joint with Wolf may involve a different joint structure, but it maintains the
function of providing pivoting movement of the rope, while also adding a
swiveling function).11
Patent Owner argues that the functions of Wolf’s hinge joint are
changed by adoption of the proposed modification because the range of
pivoting movement would be reduced. Sur-reply 11‒12 (arguing that Wolf’s
ability for “continuous ±360° rotation about the handle axis; ±135°
articulation about an axis perpendicular to the handle axis” would be
changed to “continuous ±360° rotation about the handle axis; ±45°
articulation about an axis perpendicular to the handle axis”).

11 Patent Owner argues that Petitioner’s Reply argument is improper. PO
Sur-reply 1–2. Petitioner’s argument is in response to statements made in
the Institution Decision. Such arguments are permitted in light of the
Court’s decision in SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1358 (2018) and
in light of the opportunity for Patent Owner to respond in a sur-reply. Patent
Trial and Appeal Board Consolidated Trial Practice Guide November 2019,
available at https://www.uspto.gov/TrialPracticeGuideConsolidated
(“TPG”), 73.
IPR2019-00587
Patent 8,136,208 B2

27
We find that Petitioner has addressed adequately our concern about
the function of Wolf’s modified jump rope that was raised in the decision to
institute in IPR2019–00586. We are persuaded by Petitioner’s argument that
a change in the type of pivot joint (i.e., from a hinge joint to a swivel joint)
does not change the function of the joint. The rope is able to pivot both
before and after the modification. The proposed modification adds an
additional swivel function at the joint where the rope connects to the end of
Wolf’s first arm 40, but it does not amount to a change in the pivoting
movement of the rope at this location. Furthermore, we are not persuaded
by Patent Owner that an asserted change in the degree of the pivoting range
amounts to a change in function. As discussed, both before and after the
modification, Wolf’s rope is capable of pivoting movement. Thus, the
modification does not change the pivoting function of the joint. We address
the pivoting range argument further below.
For these reasons, Petitioner has shown that the proposed modification
of Wolf with the teaching of Terper “is according to known methods and
yields predictable results.” Pet. 30. We now turn to Petitioner’s additional
reasoning.
(2) Simple substitution
Petitioner also asserts that the proposed combination is “the simple
substitution of the swivel joint of Terper for the hinge joint of Wolf.”
Pet. 30‒31 (arguing “Wolf differs from Claim 1 only by the means for
joining the rope” and “it was known that use of the swivel joint of Terper
allows the rope to pivot relative to the handle and swivel about the rope’s
own axis”) (citing Ex. 1024 ¶¶ 78, 88–91). Petitioner asserts that “the
substitution of the swivel joint of Terper for the hinge joint of Wolf, yields
IPR2019-00587
Patent 8,136,208 B2

28
nothing more than the predictable result of having the swivel joint of Terper
extend axially from the end of the first arm of Wolf and allowing the ball
within the flat housing to swivel and pivot.” Id. at 31 (citing Ex. 1024
¶¶ 88–91).
Patent Owner contends that the proposed modification is not a simple
substitution of one joint for another in Wolf. PO Resp. 23. Patent Owner
argues, with reference to Dr. Blair’s testimony, that the steps necessary to
combine Wolf and Terper in the manner claimed “would not be readily
discernable to a [person having ordinary skill in the art]” and that
“substantial changes to the inventions of Wolf and Terper would be
required.” Id. at 24 (citing Ex. 2006 ¶¶ 73‒75).
Patent Owner’s argument incorporates Dr. Blair’s step-by-step
instructions as to how to combine Wolf and Terper to result in the claimed
handle. PO Resp. 24‒26. These instructions include removing Wolf’s first
arm 40 from the end of shaft 28, disassembly of Terper’s jump rope,
coupling of a newly created “blade element” to the end of Wolf’s shaft 28,
and bodily incorporation of Terper’s swivel joint into this “blade element.”
Id.
We agree with Petitioner that Patent Owner’s argument improperly
focuses on bodily incorporation of Terper’s swivel bearing into Wolf’s jump
rope, instead of properly focusing on the question of whether the teachings
of the prior art would have rendered the subject matter of claim 1 obvious to
a person having ordinary skill in the art at the time of the invention. Reply
21‒22. There is no requirement for bodily incorporation of Terper’s
spherical bearing into Wolf. See Allied Erecting & Dismantling Co. v.
Genesis Attachments, LLC, 825 F.3d 1373, 1381 (Fed. Cir. 2016) (“The test
IPR2019-00587
Patent 8,136,208 B2

29
for obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference....”). Instead,
the question is “whether ‘a skilled artisan would have been motivated to
combine the teachings of the prior art references to achieve the claimed
invention[.]’” Id. (quoting Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1361
(Fed. Cir. 2007)). Thus, Patent Owner’s argument is not persuasive.
Patent Owner further argues that the proposed modification would
require “re-orient[ing] the ball bearing or swivel joint (T-2) 90º,” which
“changes the principle of operation of that element of Terper from being
aligned with the handle axis to being perpendicular to the handle axis.” PO
Resp. 25, 27. Petitioner argues that “moving the swivel joint onto the end of
the first arm of Wolf as proposed ‘does not destroy the overall principle of
operation of [Wolf]’” and Terper’s swivel joint provides for pivoting and
swiveling of the rope in Terper and as combined with Wolf. Reply 17–18
(citing Ex. 1029 ¶¶ 34, 35). Patent Owner’s argument is misplaced because
it is centered on an alleged change to the principle of operation of Terper.
Petitioner’s challenge, however, is based on a proposed modification of
Wolf (not Terper). Pet. 28. We agree with Petitioner that the relevant
inquiry is whether incorporation of Terper’s swivel joint in place of Wolf’s
hinge joint would change the principle of operation of Wolf.
Wolf, as modified, would continue to function in the same manner;
the rotating shaft 28 would allow first arm 40 to rotate 360º relative to the
handle axis, and the spherical bearing would allow the rope to pivot relative
to the handle axis. Terper’s spherical bearing would also add additional
functionality to allow for swiveling of the rope about its own axis for
improved rope movement during use. Where the device would operate on
IPR2019-00587
Patent 8,136,208 B2

30
the same principles as before, the combination does not change the principle
of operation. See In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012)
(noting In re Ratti, 270 F.2d 810, 813 (CCPA 1959) is inapplicable where
the modified apparatus will operate “on the same principles as before”).
As Petitioner explains, Terper demonstrates a known technique of
attaching a rope to jump rope handles using a spherical bearing. Pet. 26;
Ex. 1011, 3:18‒22, Figs. 1a, 1b, 4a, 4b. Petitioner also shows that it was
known in the art of jump ropes at the time of the invention of the ’208 patent
“to couple a rope to a flat element (including a flat disk) having an aperture
on the end of a rotary shaft in a handle where the flat element extends axially
away from the shaft a distance outward from the handle.” Pet. 27; Ex. 1024
¶ 72; Ex. 1015, 2, Fig. 2; Ex. 1017, Fig. 2. Petitioner also shows that
common rod ends having spherical bearings were known at the time of the
invention of the ’208 patent. Pet. 27–28; Ex. 1024 ¶ 73; Ex. 1009, 3:6‒7,
3:16‒18. Based on the explicit teachings in Wolf and Terper as to jump rope
systems and based on the background knowledge of one having ordinary
skill in the art at the time of the invention, we find that Petitioner has
provided sufficient evidence to show that the modification of Wolf’s hinge
joint with Terper’s spherical bearing would have been mere substitution of
one element for another known in the field to yield predictable results.
(3) Explicit teaching, suggestion, or motivation
Petitioner also contends that one having ordinary skill in the art at the
time of the invention would have been led to modify Wolf with the teaching
of Terper in the manner claimed “to allow the rope of Wolf to pivot and
swivel (instead of pivoting alone).” Pet. 31 (citing Ex. 1024 ¶¶ 84–87, 92–
94). Petitioner contends that motivation is found in Terper, which teaches
IPR2019-00587
Patent 8,136,208 B2

31
that “use of swivel joints in jump ropes allow the rope to pivot and swivel,
‘thus avoiding shearing’ forces, which can cause premature wear of the
rope.” Id. at 31–32 (citing Ex. 1011, 3:8–12; Ex. 1024 ¶ 92). Petitioner also
contends that another prior art reference, Sauleau (Ex. 1008), teaches that
“use of swivel joints in jump ropes prevents ‘the danger of winding the cord
onto itself.’” Pet. 32 (citing Ex. 1008, 1:1‒12, 2:7‒8, Fig. 10; Ex. 1024
¶¶ 84, 92). Thus, according to Petitioner, one having ordinary skill in the art
would have made the combination as proposed to “avoid[] forces that cause
premature wear of the rope and the winding of the rope onto itself during
use—thereby extending the life of the jump rope and making it easier to
use.” Id. at 32–33 (citing Ex. 1024 ¶¶ 92–94).
As to the proposed modification based on the teaching in Terper to
avoid shearing, Patent Owner contests Petitioner’s implication that Wolf
does not teach swiveling. PO Resp. 14. Patent Owner asserts that Wolf
teaches “swiveling at the handle with a hinge interposed between the rope
and the point of swiveling,” and that Wolf “reduces the bending forces on
the rope by adding the hinge that allows the articulation of the rope.” Id. at
14–15 (citing Ex. 1006, 21; Ex. 2006 ¶ 78). Patent Owner argues that “Wolf
and Terper have the same degrees of freedom between the end of the rope
where it attaches to the handle system and the handle: (i) rotation about the
handle axis, and (ii) articulation perpendicular to the handle axis.” PO Resp.
17. Patent Owner argues that a person having ordinary skill in the art would
not have been motivated to combine Wolf and Terper because “the
mechanisms in each allow the same types of motion between the rope and
the handle.” Id. (citing Ex. 2006 ¶ 67).
IPR2019-00587
Patent 8,136,208 B2

32
Patent Owner’s argument fails to address Petitioner’s contention that
adding Terper’s swivel joint to the end of Wolf’s first arm adds an additional
degree of freedom to Wolf. In other words, Wolf’s jump rope system is
improved by the addition of Terper’s swivel joint to the end of Wolf’s first
arm. This improvement resulting from the combination is because Wolf’s
first arm allows for a continuous 360 degree rotation about Wolf’s handle
axis, and the use of Terper’s swivel joint on the end of Wolf’s first arm
enables rotation of the rope about the rope’s axis and pivoting of the rope
about the rope’s axis. See Reply 5 (noting that Patent Owner’s declarant
“states only that Wolf provides ‘swiveling at the handle with a hinge
interposed between the rope and the point of swiveling’” [Ex. 2006 ¶ 62
(emphasis added)] and neither Patent Owner nor its declarant “explains how
‘swiveling at the handle’ of Wolf provides for swiveling of the rope about
the rope’s axis, as required by the ’208 Patent.”).
Specifically, as to the teaching in Terper to avoid shearing forces,
Patent Owner argues that “Petitioner eschews the teachings of Wolf which
teach avoidance of shearing forces through the use of a thickened region 78
in the second arm.”12 PO Resp. 21 (citing Ex. 1006, 23). Thus, Patent
Owner contends that Wolf already provides a solution against the threat of
“premature wear” or “shearing forces.” Id. (citing Ex. 2006 ¶¶ 78, 79; Ex.
1006, 23).

12 Thickened region 78 is shown in Figure 6 of Wolf. Ex. 1006, Fig. 6.
Wolf explains that “at the transition point from the longitudinal bore to the
expansion 62 in the second arm according to Figs. 4 through 7, a thickened
region 78 is left.” Id. at 23.

IPR2019-00587
Patent 8,136,208 B2

33
Petitioner has shown that Terper provides an explicit suggestion to use
its spherical bearing to avoid shearing. Terper teaches its spherical bearing
“allows the rope to easily rotate inside the handle, and to externally oscillate,
because of the swivel joint, thus avoiding shearing.” Ex. 1011, 3:8‒12.
Wolf addresses, however, a different shearing problem. The portion of Wolf
cited by Patent Owner discusses the propensity of the rope to break at the
bending point of the cord within second arm 42. Ex. 1006, 22. Wolf uses
thickened region 78 at the transition point from the longitudinal bore to
expansion 62 in the second arm to “permit[] a more favorable bending, i.e. a
bending with a larger radius.” Id. at 23. Wolf also teaches that this
thickened region 78 prevents bridge piece 74 of second arm 42 from
“shearing off or tearing through.” Id. Thus, Wolf addresses a problem with
shearing of a portion of second arm 42 and does not address the same
shearing problem of the rope identified in Terper. See Reply 13; Ex. 1029
¶¶ 22‒24) (explaining that Wolf’s thickened region 78 “does not prevent
shearing forces on the rope that can cause, for example, winding of the rope
on itself during use‒‒and Wolf does not suggest otherwise.”).
As to the issue of winding, we questioned in our decision to institute
in IPR2019-00586 whether winding was a problem in the configuration of
Wolf’s jump rope, which includes Wolf’s rotating shaft 28. Ex. 1030, 23.
In response, Petitioner provided annotated Figures of Wolf’s handle system
and described the movements of the components during use of the jump
rope. Reply 6‒7. Reproduced below are Figures 2 and 3 of Wolf, as
annotated by Petitioner.

IPR2019-00587
Patent 8,136,208 B2

34

Figure 2 above right, as annotated by Petitioner, shows Wolf’s handle
14 in light blue, shaft 28 in red, bearings 24, 26 in dark blue, first arm 40 in
yellow, hinge pin 48 in medium blue, and rope 12 in green. Figure 3 above
left, as annotated by Petitioner, shows the hinge connection of Wolf’s first
arm 40 and second arm 42 via forks 52 and flattened section 54. As shown
above and explained by Petitioner, “[w]hen assembled, [Wolf’s] second arm
42 cannot rotate about its longitudinal axis independent of the first arm 40
because the flattened section 54 is coupled within the fork 52,” and “the rope
is fixed in the second arm and cannot rotate about its own axis independent
of the second arm (without winding on itself).” Reply 6 (citing Ex. 1006,
21; Ex. 1029 ¶¶ 16, 17).
As shown below in Figure 1, Wolf’s handle is not aligned with
longitudinal axis of second arm 42 during normal use.
IPR2019-00587
Patent 8,136,208 B2

35

Figure 1 of Wolf depicts “different positions that the jump rope cord
12 can assume relative to the handle.” Ex. 1006, 18‒19, 33, Fig. 1. As
shown in this figure above, second arm 42 pivots via the hinge joint to form
an angle relative to the axis of first arm 40 and rotating shaft 28. But the
hinge joint prevents second arm 42 from rotating about its own axis while
second arm 42 pivots because flattened section 54 is coupled within fork 42.
Ex. 1024 ¶¶ 85‒87, 92; Ex. 1029 ¶¶ 14, 16‒17. Because the rope is fixed in
second arm 42, the rope cannot rotate about its own axis during use. Id.
This understanding of Wolf’s operation was acknowledged by Patent
Owner’s expert during his deposition.13 Ex. 1026, 43:8‒21, 44:18‒23, 47:6‒
12. Thus, as explained by Petitioner’s declarant, Mr. Lenz, Wolf’s rope can

13 Petitioner asserts that the testimony of Patent Owner’s expert in regard to
the proceedings in IPR2019-00586 apply equally with respect to his
opinions regarding the ’208 patent. Reply 3 n.3 (citing Ex. 1026, 10:13–
13:7; Ex. 1028, 5:18–6:4, 6:17–8:24).
IPR2019-00587
Patent 8,136,208 B2

36
wind on itself because any twisting of the rope cannot be unwound by
second arm 42. Ex. 1029 ¶¶ 18‒20. This twisting can be caused by, for
example, rotation of the jumper’s wrists while jumping rope. Id. at ¶ 19.
Wolf’s rotating shaft 28 cannot, by itself, prevent winding of the rope onto
itself during use. Id. at ¶ 21. Thus, Petitioner has established that winding
of the rope on itself is a problem in the configuration of Wolf, and that a
person having ordinary skill in the art would appreciate that adding the
swivel bearing of Terper in place of Wolf’s hinge joint would ameliorate this
problem. Ex. 1008, 1:2‒4 (evidence of winding problem in the art).
Patent Owner argues that a person having ordinary skill in the art
would not have been led to modify Wolf with Terper because “Terper results
in less articulation than Wolf.” PO Resp. 17–18 (citing Ex. 2006 ¶ 68).
Specifically, Patent Owner asserts that Wolf’s range of pivoting motion of
the rope relative to the centerline of rotating shaft 28 is approximately
±135º. Id. at 15 (citing Ex. 2006 ¶ 63).
Petitioner contests Patent Owner’s assertion that Wolf’s range of
pivoting movement during use is approximately ±135º relative to the
centerline of shaft 28. Reply 18. Petitioner asserts that “the actual pivot
range of the second arm of Wolf during actual use . . . is about 90º.” Id.
(citing Ex. 1006, 18, Fig. 1). Petitioner explains, with reference to Mr.
Lenz’s testimony and Figure 1 of Wolf, reproduced above, that Wolf’s
second arm remains on one side of the hinge as the shaft rotates within the
handle while the user jumps rope. Id. at 19 (citing Ex. 1029 ¶ 32). Mr. Lenz
explains that “during typical use, the inertia and typical motion of the rope
will keep the hinge in about the orientations shown in Figure 1 of Wolf” and
“the second arm will remain on the same relative side of the hinge, as the
IPR2019-00587
Patent 8,136,208 B2

37
whole hinge rotates together based on movement of the spinning shaft.”
Ex. 1029 ¶ 32. Mr. Lenz’s testimony is consistent with the range of motion
depicted in Figure 1 of Wolf. Thus, we agree with Petitioner that the
proposed modification of Wolf’s hinge joint with Terper’s swivel joint
would not change appreciably the range of pivoting movement in Wolf.
Even if the range of pivoting movement afforded by Terper’s swivel
joint is less than the range of pivoting movement afforded by Wolf’s hinge
joint and second arm, the lessened range of pivoting movement resulting
from the combination is offset by the fact that the combination allows for a
third degree of movement of the rope, i.e., rotation about the rope’s own
axis, which reduces the chance of shearing and winding of the rope onto
itself.14 Ex. 1029 ¶ 33 (Mr. Lenz testifying that a person having ordinary
skill in the art would have known that the benefits of swiveling are worth
any tradeoff of losing some amount of pivoting). See Allied Erecting, 825
F.3d at 1381 (a “course of action [with] simultaneous advantages and
disadvantages” can still support a motivation to combine).
(4) Conclusion
For these reasons, we find that Petitioner has articulated sufficient
reasoning with rational underpinnings to support the combination. See
Ex. 1024 ¶¶ 85–97. Thus, we conclude that a person of ordinary skill would
have had reason to combine the teachings of Wolf and Terper.

14 Petitioner also contends that a person having ordinary skill in the art
would have been led to modify Wolf with Terper’s spherical bearing to
eliminate Wolf’s second arm, thereby eliminating a part. Pet. 33 (citing
Ex. 1024 ¶¶ 95‒97). We need not reach this additional rationale.
IPR2019-00587
Patent 8,136,208 B2

38
e. Reasonable Expectation of Success
Petitioner contends that a person having ordinary skill in the art would
have had a reasonable expectation of success in making the proposed
modification to Wolf because the combination of Wolf and Terper “requires
no more than common sense or ordinary skill” and “results in little more
than a rod end, which is an off-the-shelf part well known to a [person having
ordinary skill in the art] and used in the relevant art prior to the time of the
’208 Patent.” Pet. 34 (citing Ex. 1024 ¶¶ 72, 73, 98‒103).
Patent Owner argues that it would not have been obvious to a person
having ordinary skill in the art “how to scale the ball bearing or swivel joint
of Terper so that it properly connects to the (missing) blade element, and is
appropriately sized to accommodate the steel chord from Wolf.” PO
Resp. 27.
Petitioner replies that Patent Owner fails to assert that any of the
alleged steps for implementing the proposed modification would have been
“outside of the skill” of a person having ordinary skill in the art.15 Reply 22
(citing Wyers v. Master Lock Co., 616 F.3d 1231, 1242‒43 (Fed. Cir. 2010)
(finding expectation of success was “clear” even though combination would
require changes to orientation, size, and fit of components in prior art to
yield claims)).

15 As discussed above, the level of skill of a person having ordinary skill in
the art is a person having “a bachelor’s degree in mechanical engineering
and/or a related field and at least one to three years of experience or
familiarity with jump rope systems and/or mechanically constructed fitness
equipment” or “equivalent experience either in industry or research, such as
designing, [] developing, evaluating, or such systems or equipment.” See
supra Section II.B.
IPR2019-00587
Patent 8,136,208 B2

39
We agree with Petitioner that Patent Owner’s argument about no
reasonable expectation of success lacks adequate explanation because Patent
Owner fails to explain how the steps necessary to make the proposed
modification, i.e., disconnecting, removing, discarding, sizing/scaling, and
coupling parts, would require skill other than those used in ordinary
mechanical design and analysis and within the level of ordinary skill. Reply
22; Ex. 1029 ¶ 37. Specifically, as noted by Petitioner, Patent Owner’s
declarant, Dr. Blair, testified that spherical bearings and rod-ends are off-
the-shelf parts available in a variety of sizes. Reply 3 n.3 (citing Ex. 1026,
21:7‒22). Thus, Petitioner has shown that a person having ordinary skill in
the art would have had a reasonable expectation of success in making the
proposed modification of Wolf with the teaching of Terper.
f. Objective Evidence of Nonobviousness
Notwithstanding what the teachings of the prior art would have
suggested to one skilled in the art, objective evidence of nonobviousness
(so-called “secondary considerations”) may lead to a conclusion that the
challenged claims would not have been obvious. In re Piasecki, 745 F.2d
1468, 1473–75 (Fed. Cir. 1984). However, “[e]vidence of objective indicia
is only relevant . . . ‘if there is a nexus between the claimed invention and
the objective indicia.’” Bosch Auto. Serv. Sols., LLC v. Matal, 878 F.3d
1027, 1036–37 (Fed. Cir. 2017) (citation omitted). That is, there must be ‘a
legally and factually sufficient connection’ between the evidence and the
patented invention.” Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324,
1332 (Fed. Cir. 2019) (quoting Demaco Corp. v. F. Von Langsdorff
Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988)). “The patentee bears
IPR2019-00587
Patent 8,136,208 B2

40
the burden of showing that a nexus exists.” WMS Gaming Inc. v. Int’l Game
Tech., 184 F.3d 1339, 1359 (Fed. Cir. 1999).
Patent Owner argues that “two objective indicia weigh in favor of
nonobviousness: unexpected results and copying.” PO Resp. 55; see also id.
at 56–61; Sur-reply 25–28. Petitioner responds that Patent Owner has failed
to establish its alleged objective indicia of nonobviousness. Reply 24–29.
(1) Unexpected Results
(a) Summary of Parties’ Positions
Patent Owner argues that the Metz Declaration and statistics from
national and international jump rope competitions “demonstrate unexpected
results.” PO Resp. 56 (citing Ex. 2003; Ex. 2004). The Metz Declaration
states that Exhibit 2004 lists data related to FISAC World Competitions and
United States National Competitions, and data related to “the type of jump
rope the athletes used” in those competitions. Ex. 2003 ¶¶ 7, 8. According
to Patent Owner, “[t]his evidence indicates a better performance capability
for the technology embodied in the ’208 Patent in the competitive arena.”
PO Resp. 56.
Patent Owner also argues that, as a measure of the ’208 Patent’s
unexpected results, “of the six individual events at the United States national
level . . . over the four-year span of 2013–2016, the event champion used
technology embodied in the ’208 Patent in 19 out of 24 events, or 79% of all
possible wins.” PO Resp. 56. Based on data extracted from Exhibit 2004,
Patent Owner argues that “[t]his technology has been an integral part of the
increase in performance at the elite jump rope level.” Id. at 56–57, Figure 1.
Patent Owner further asserts that “the technology embodied in the ’208
Patent has been directly linked to an increase in scores in these same
IPR2019-00587
Patent 8,136,208 B2

41
[competitions],” as further evidenced by data extracted from Exhibit 2004.
Id. at 57–58, Fig. 2.
Patent Owner further argues that “[t]he nexus between the claimed
invention of the ’208 Patent and the unexpected results is palpable.” PO
Resp. 59. According to Patent Owner, “[t]he statistics demonstrate that the
technology embodied in the ’208 Patent correlates to enhanced performance
in the competitive jump rope arena,” and that “[a]s participants in
competitive jump rope events began utilizing the ’208 Patent’s technology
around 2008, the performance output of contestants increased and new
records continued to be set.” Id. Patent Owner further argues that “the
incredible performance capability of the ’208 Patent technology is
unexpected” because “the prior art, and indeed, Petitioner’s only arguments,
would indicate that the only foreseeable benefits to the ’208 Patent would
have been obviously an avoidance of ‘shearing forces’ or premature wear.”
Id.; see also id. at 56. Moreover, according to Patent Owner, “[t]he prior art
is devoid of any teaching or indication that would suggest a jump rope
system, such as that embodied by the ’208 Patent, would result in record-
setting performance,” and that “[n]o such teaching is contained in the closest
prior art, i.e., Wolf and Terper.” Id. at 59.
Petitioner responds that Patent Owner’s evidence of unexpected
results is insufficient for several reasons. Reply 26–27. According to
Petitioner, Exhibit 2004 “is not objective, reliable evidence—it is an opaque
collection of unauthenticated values and highlighting prepared by [Patent
Owner’s] self-interested owner and named inventor.” Id. at 26 (citing Ex.
2003 ¶¶ 2, 3, 7, 8). Petitioner contends that most of the highlighted scores in
Exhibit 2004 “are for ‘scores obtained’ or ‘likely obtained’ with ‘JRS
IPR2019-00587
Patent 8,136,208 B2

42
technology,’” without an explanation of what “JRS technology”
encompasses, and that “[t]here are . . . missing entries and inconsistent
‘change’ values, indicating the scores may be incorrect.” Reply 26–27
(citing Ex. 2004, 1–4).
Petitioner also responds that “it is impossible to determine from
Exhibit 2004 whether the scores have any probative value,” due to the
absence of comparative data. Reply 27. Petitioner points out that Exhibit
2004 does not show any comparative data between top scores using “JRS
Technology” in certain years and technology used by runners-up, noting that
such data would show, at best, differences of degree rather than differences
in kind. Id. According to Petitioner, “[t]he partial data even indicates there
is no difference in kind: there are numerous non-JRS records and titles, and
non-JRS results that [are] better, or are similar to, JRS results.” Id. (citing
Ex. 2004, 1). Petitioner further asserts that Patent Owner failed to make a
comparison to the closest prior art, such as a controlled comparison of one
competitor using two different jump ropes. Id.
(b) Analysis of Unexpected Results
Patent Owner attempts to satisfy its burden of showing a nexus
between the asserted unexpected results and the claimed invention by
proffering evidence that it contends shows unexpectedly successful
competition scores achieved by athletes that used jump ropes “using JRS
technology.” WMS Gaming, 184 F.3d at 1359; Ex. 2004. That is, Patent
Owner purports to show a “nexus” to the claims by providing competition
results (scores) from the use of jump rope(s) using JRS technology. Ex.
2003 ¶¶ 7, 8; Ex. 2004.
IPR2019-00587
Patent 8,136,208 B2

43
In an effort to tie the jump ropes using JRS technology to the patent
claims, Patent Owner argues in its Sur-reply that its Response “informs the
reader that the unexpected results were the result of [Patent Owner]
implementing its patented technology (’809 and ’208 Patents) into its
commercial jump rope products and thus the nexus between the ’208 Patent,
[Patent Owner] jump ropes and the objective indicia is clear.” Sur-reply 25.
But any such attorney argument in Patent Owner’s Response or Sur-reply is
insufficient because “arguments of counsel cannot take the place of evidence
lacking in the record.” Knorr v. Pearson, 671 F.2d 1368, 1373 (CCPA
1982).
In considering the evidence of record, we find that the portion of the
Blair Declaration regarding unexpected results relies on the Metz
Declaration. Ex. 2006 ¶¶ 182–185. The Metz Declaration states that Ms.
Metz has “extensive knowledge of the type of jump rope the athletes used”
in the referenced competitions. Ex. 2003 ¶ 8. The Metz Declaration refers
to Exhibit 2004 for data supporting the assertion of unexpected results. Id.
at ¶¶ 7, 8. Exhibit 2004 identifies scoring data with colored highlighting that
“reflects scores obtained [or likely obtained] using JRS technology.” Ex.
2004, 1–4. Thus, the only evidence of the characteristics of the jump rope(s)
purportedly providing unexpected results is the references in Exhibit 2004 to
jump ropes (or scores) “using JRS technology.”
Based on the evidence presented by Patent Owner, as opposed to
attorney argument, it is not clear whether the respective jump ropes “using
JRS technology,” referenced in Exhibit 2004 by year, event, and score, are
the same or different models, or even whether the jump ropes are Patent
Owner’s product as opposed to one of the entities that Patent Owner asserts
IPR2019-00587
Patent 8,136,208 B2

44
has copied its product.16 See Ex. 2003 ¶ 4. More importantly, there is no
evidence indicating whether any of those jump ropes “using JRS
technology” are coextensive with, or even covered by, any claim of the ’208
patent. See Reply 25. Patent Owner has thus failed to satisfy its “burden of
proving that the evidence of secondary considerations is attributable to the
claimed combination . . . as opposed to, for example, prior art features in
isolation or unclaimed features.” Fox Factory, Inc. v. SRAM, LLC, 944 F.3d
1366, 1378 (Fed. Cir. 2019).
Even if Patent Owner had established nexus, Patent Owner also fails
to submit sufficient comparative data to establish unexpected results. Patent
Owner acknowledges that unexpected results “must be shown to be
unexpected compared with the closest prior art.” PO Resp. 55 (citing In re
Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991)). Patent Owner
also asserts that Wolf and Terper are the closest prior art. Id. at 59. But
Patent Owner does not provide any evidence of the types of jump ropes that
are purportedly compared to the jump ropes using JRS technology, whether
it be Wolf and/or Terper jump ropes or some other type of jump rope. As
Petitioner argues, Patent Owner provides no controlled comparisons, such as
scores resulting from the same jumper using two different jump ropes.
Reply 27. Patent Owner replies by arguing that Petitioner “attempts to
discredit [Patent Owner’s] data by pointing towards a lack of comparative

16 In its Sur-reply, Patent Owner’s counsel refers to the introduction of
Patent Owner’s jump ropes in 2008, “individuals using a JRS jump rope,”
and that “a patented JRS jump rope [does not] automatically ensure world-
record setting performance.” Sur-reply 26. That attorney argument does not
provide any evidence clarifying the term “JRS technology” or the
characteristics of the jump ropes referred to in Exhibit 2004.
IPR2019-00587
Patent 8,136,208 B2

45
data . . . [but] this type of analysis would mask the critical message: over
time, [Patent Owner’s] jump ropes have catalyzed world-record setting
performances across the board.” Sur-reply 26–27. But it is Patent Owner
that (correctly) acknowledged that unexpected results “must be shown to be
unexpected compared with the closest prior art.” PO Resp. 55 (citing Baxter
Travenol, 952 F.2d at 392 (emphasis added)).
Patent Owner also argues that “the only foreseeable benefits to the
’208 Patent would have been obviously an avoidance of ‘shearing forces’ or
premature wear,”17 and that the “prior art is devoid of any teaching or
indication that would suggest a jump rope system, such as that embodied by
the ’208 patent, would result in record-setting performance.” PO Resp. 59.
That attorney argument is not evidence of unexpected results. Knorr, 671
F.2d at 1373. Nevertheless, we note that many of the scores shown in
Exhibit 2004 are “speed” scores and that Wolf purports to address the prior
art problem of jump ropes that “cannot be whipped quickly” and that “fast
and extremely fast jumping and cord-turning movements cannot be
executed.” Ex. 2004; Ex. 1006, 12–14. Wolf thus suggests that improved
speed is a feature that could be expected from its disclosed jump rope.
Patent Owner also acknowledges that “[u]nexpected results that are
probative of nonobviousness are those that are ‘different in kind and not
merely in degree from the results of the prior art.’” PO Resp. 55 (citing
Galderma Labs., L.P. v. Tolmar, Inc., 737 F.3d 731, 739 (Fed. Cir. 2013)
(citation omitted)). But, even in the light most favorable to Patent Owner,

17 Patent Owner asserts this is “Petitioner’s only arguments.” See PO Resp.
59. However, Petitioner had no obligation to, and in our view did not
attempt to, preemptively address unexpected results in the Petition. See
Reply 26 n.16.
IPR2019-00587
Patent 8,136,208 B2

46
the data “indicates there is no difference in kind: there are numerous
non-JRS records and titles, and non-JRS results that [are] better, or are
similar to, JRS results.” Reply 27 (citing Ex. 2004, 1).
For the forgoing reasons, we find that Patent Owner has failed to
establish a nexus between the claimed invention and the purported
unexpected results, or probative evidence of comparative data as required to
establish unexpected results. Accordingly, we find that the evidence of
unexpected results that Patent Owner has provided is entitled to no weight
and that Patent Owner has failed to establish unexpected results.
(2) Copying
(a) Summary of Parties’ Positions
Patent Owner argues that Exhibit 2005 details “over 200 instances of
copying,” and that the “evidence of copying is attested to in the Metz
Declaration.” PO Resp. 60 (citing Ex. 2004 [sic, Ex. 2005]; Ex. 2003 ¶ 5).
The Metz Declaration states that Ms. Metz has extensive knowledge of
Patent Owner’s (1) “identification of entities [listed in Exhibit 2005] that
have sold without authorization jump rope products that incorporate the ’809
Patent’s and ’208 Patent’s patented technology,” and (2) “efforts to enforce
[listed in Exhibit 2005] the intellectual property rights of the ’809 Patent and
’208 Patent.” Ex. 2003 ¶¶ 4, 5. According to Patent Owner, the
“illustrations and pictures contained [in Exhibit 2005] demonstrate the near-
to-exact replication by pirates and counterfeiters of the ’208 Patent
technology is rampant,” and that “[t]he online marketplace has lent itself to
widespread (and often unregulated) piracy of patent-owner’s rights and the
’208 Patent is no exception.” PO Resp. 60.
IPR2019-00587
Patent 8,136,208 B2

47
Patent Owner also argues that, “[i]n addition to Patent Owner’s online
enforcement efforts, the technology embodied in the ’208 Patent has been
the subject of multiple Federal patent infringement lawsuits,” and that
“Patent Owner has initiated at least one investigation of copying of the
technology embodied in the ’208 Patent at the United States International
Trade Commission.”18 PO Resp. 60. According to Patent Owner, “[h]aving
been the subject of multiple federal lawsuits and countless enforcement
efforts, the ’208 Patent has been the subject of deliberate, conscientious
copying.” Id. (citing Ex. 2003 ¶ 5).
Petitioner argues that Patent Owner “ignores the law and instead
submits two categories of insufficient evidence of alleged copying.” Reply
28 (citing PO Resp. 59–60; Ex. 2003 ¶¶ 2–5; Ex. 2005). First, Petitioner
asserts that Patent Owner “relies on ‘illustrations and pictures’ from
unauthenticated webpages that provide unannotated external views of jump
rope products/parts,” and fails to show that the technology allegedly copied
fell within the asserted claims. Id. (citing Ex. 2005). Moreover, according
to Petitioner, even if the products shown in the illustrations and pictures of
Exhibit 2005 “were infringing, that would still not be enough because
[Patent Owner] fails to show copying of a ‘specific’ patented product—
[Patent Owner] never even identifies its own product.”19 Id. at 28–29.

18 Patent Owner notes four civil actions in United States District Courts,
including the pending civil action against Petitioner identified above, and
one ITC investigation. PO Resp. 60 n.18,19; Ex. 2005, 1; see supra Section
I.B.
19 Petitioner cites Wyers, 616 F.3d at 1246 and Cable Electric Products, Inc.
v. Genmark, Inc., 770 F.2d 1015, 1027–28 (Fed. Cir. 1985) as support for
this assertion. Reply 28–29. Patent Owner contests Petitioner’s
interpretation that Cable Electric stands for the proposition that “failure to
IPR2019-00587
Patent 8,136,208 B2

48
Second, Petitioner asserts that, although Patent Owner “argues that
‘the technology embodied in the ’208 Patent’ has been litigated,” Patent
Owner “presents no evidence about the products at issue or
findings/holdings, let alone whether a patented product was copied.” Reply
29 (citing PO Resp. 59).
Patent Owner replies that its “submissions were more than adequate
given that they were merely secondary evidence of non-obviousness,” and
that it “fulfilled its burden by proving that there is widespread replication of
JRS’ jump rope products that embody the ’208 Patent technology.” Sur-
reply 27.
(b) Analysis of Copying
Patent Owner acknowledges that to establish copying “requires
evidence of efforts to replicate a specific product.” PO Resp. 59 (quoting
Wyers, 616 F.3d at 1246; see also Sur-reply 27 (“Copying in the context of
secondary considerations may be established by showing replication of a
‘product’ covered by the patent claims” (citing Wyers, 616 F.3d at 1246)).
Patent Owner further acknowledges that efforts to replicate a specific
product “may be demonstrated through internal company documents, direct
evidence such as disassembling a patented prototype, photographing its
features, and using the photogrpah [sic] as a blueprint to build a replica, or
access to the patented product combined with substantial similarity to the
patented product.” PO Resp. 59 (quoting Wyers, 616 F.3d at 1246).

provide patent owner device precludes copying analysis.” Sur-reply 27
(citing Reply 28). We do not rely on Cable Electric or Petitioner’s
interpretation thereof for purposes of this Decision. We do, however, rely
on Wyers, cited by Patent Owner.
IPR2019-00587
Patent 8,136,208 B2

49
Patent Owner argues that “illustrations and pictures” shown in Exhibit
2005 (which appear to be printed copies of web pages but are not
authenticated)20 demonstrate near-to-exact replication “of the ’208 Patent
Technology.” PO Resp. 60 (citing Ex. 2004 [sic, Ex. 2005]; Ex. 2003 ¶ 5).
Arguments by Patent Owner’s counsel also refer to “the technology
embodied in the ’208 Patent” and “the ’208 Patent” as having been the
subject of “multiple Federal patent infringement lawsuits” and “deliberate,
conscientious copying.” Id. (citing Ex. 2003 ¶ 5). But notably absent from
the Blair Declaration,21 the Metz Declaration, and Exhibit 2005 is any
identification of a Patent Owner product allegedly copied, or evidence that
any such unidentified product is covered by any claim of the ’208 patent.
See Ex. 2006 ¶ 184; Ex. 2003; Ex. 2005).
Patent Owner also fails to provide any evidence of copying by third
parties. Although the evidence submitted by Patent Owner refers to “jump
rope products that incorporate the ’809 Patent’s and ’208 Patent’s patented
technology” (Ex. 2003 ¶ 4), and Patent Owner’s “efforts to enforce the
intellectual property rights of the ’809 Patent and ’208 Patent” (id. at ¶ 5),
the law is clear that “[n]ot every competing product that arguably falls
within the scope of a patent is evidence of copying. Otherwise every

20 Patent Owner asserts that “[t]his evidence [Exhibit 2005] of copying is
attested to in the Metz Declaration.” PO Resp. 60 (citing Ex. 2003 ¶ 5). But
paragraph 5 of the Metz Declaration states in full: “I have extensive
knowledge of JRS’s efforts to enforce the intellectual property rights of the
’809 Patent and ’208 Patent. These efforts are listed in Exhibit 2005.” Ex.
2003 ¶ 5; see FED. R. EVID. 901, 902 (13), (14).
21 As with Patent Owner’s unexpected results arguments, the Blair
Declaration relies on the Metz Declaration. Ex. 2006 ¶ 184 (citing Ex. 2003
¶¶ 4–5; Ex. 2005).
IPR2019-00587
Patent 8,136,208 B2

50
infringement suit would automatically confirm the nonobviousness of the
patent.” Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1325
(Fed. Cir. 2004). Rather, as Patent Owner acknowledges, what is required is
evidence of “efforts to replicate a specific product,” such as: (1) internal
company documents of a third party alleged to have copied the product,
(2) direct evidence, such as a third party disassembling a patented prototype
of the product, photographing the product’s features, and using the
photograph as a blueprint to build a replica, or (3) access of a third party to
the patented product combined with substantial similarity of the third party’s
product to the patented product. See Wyers, 616 F.3d at 1246; PO Resp. 59.
No such required evidence is provided by Patent Owner.
Patent Owner provides no evidence of a specific product, and a
sufficient connection between that product and a claim of the ’208 patent,
that was copied by a third party. On this record, enforcement efforts and
pictures of competitors’ products do not establish copying in the context of
objective indicia of nonobviousness. See Iron Grip, 392 F.3d at 1325.
Accordingly, we find that Patent Owner has failed to provide evidence of
copying, and that the evidence it has provided is entitled to no weight.
g. Conclusion as to Claim 1
Having considered the parties’ arguments and evidence, we evaluate
all of the evidence together to make a final determination of obviousness. In
re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig.,
676 F.3d 1063, 1075 (Fed. Cir. 2012) (describing the court’s precedent as
“requiring that a fact finder consider all evidence relating to obviousness
before finding a patent invalid”). We find that Petitioner has established that
the combination of Wolf and Terper discloses all of the limitations of claim
IPR2019-00587
Patent 8,136,208 B2

51
1. We further find that the combination of Wolf and Terper would have
been according to known methods to yield predictable results, the simple
substitution of the swivel joint of Terper for the hinge joint of Wolf, and that
the prior art provided explicit teaching, suggestion, or motivation to combine
the teachings of Wolf and Terper to arrive at the invention of claim 1. We
also find that combining the teachings of Wolf and Terper to arrive at claim
1 would have been well within the skill of a person having ordinary skill in
the art, and that such person would have had a reasonable expectation of
success in making such combination.22
We weigh the foregoing findings with Patent Owner’s asserted
evidence of unexpected results and copying. As discussed above, we find
that the evidence of unexpected results and copying submitted by Patent
Owner is not entitled to any weight. Thus, based on our review of the
evidence of record, we are persuaded that Petitioner demonstrates by a
preponderance of the evidence that claim 1 of the ’208 patent would have
been unpatentable as obvious over the combined teachings of Wolf and
Terper.
4. Claim 2
Claim 2 recites as follows: “A handle as described in claim 1, wherein
said shaft has a second shaft end configured to receive a mechanical fastener
which axially limits travel of said shaft within said handle.” Ex. 1022, 9:38–
41.

22 Based on these findings, we find no merit in Patent Owner’s assertions of
hindsight reasoning. See PO Resp. 24, 27; Sur-reply 1, 3–5, 14; see also
Reply 23.
IPR2019-00587
Patent 8,136,208 B2

52
a. Parties’ Positions Regarding Claim 2
Petitioner provides the following annotated illustration of Figure 2 of
Wolf and Figures 6 and 9 of the ’208 patent to show limitations of claim 2:

The illustration above is an annotated illustration of Figure 2 of Wolf
and Figures 6 and 9 of the ’208 patent showing corresponding components
of the respective handles in light red, dark red, and blue. See Pet. 35.
Petitioner refers to the Specification of the ’208 patent to argue that
“the fastener (59) may be a separate piece attached to the shaft end (35) or
an integrated feature of the shaft.” Pet. 35 (citing Ex. 1022, 7:27–37; Ex.
1024 ¶ 106). Petitioner argues that Wolf discloses the elements of claim 2
because Wolf discloses that “‘inner end of the shaft [28]’ (second shaft end)
IPR2019-00587
Patent 8,136,208 B2

53
‘has a widened section 38’ (mechanical fastener) ‘which serves to secure
[the] shaft inside the handle,’” and “[t]he ‘widened section 38’ abuts bearing
26 and axially limits travel of the shaft 28 within the handle.” Id. (citing Ex.
1006, 20, Fig. 2; Ex. 1024 ¶ 107). Thus, according to Petitioner, “Wolf in
view of Terper renders Claim 2 obvious for the same reasons set forth in
regard to Claim 1.” Id. (citing Ex. 1024 ¶¶ 105–110).
As to claim 2, Patent Owner reasserts arguments regarding claim 1
from which claim 2 depends,23 and states that “Dr. Blair’s opinions
expressed in regard to the combination of Wolf and Terper related to Claim
1 extend to Claim 2.” PO Resp. 28–29 (citing Ex. 2006 ¶¶ 82–84). Patent
Owner also argues that neither Wolf nor Terper disclose the limitations of
claim 2, and specifically that “Wolf does not disclose a mechanical fastener
which axially limits travel of the shaft.” Id. at 29 (citing Ex. 1006, 20).
Patent Owner thus asserts that claim 2 “is not obvious by Wolf in view of
Terper as the combination does not disclose all of the material claim
limitations of Claim 2.” Id. (citing Ex. 2006 ¶¶ 85–89).
Petitioner replies that Patent Owner’s “arguments regarding the
dependent claims amount to unsupported assertions for Claim 2 . . . that the
‘widened section (38)’ of Wolf is not a ‘mechanical fastener which axially
limits travel of the shaft.’” Reply 23–24 (citing PO Resp. 29–30).
b. Analysis of claim 2
We find that Wolf discloses that the shaft (28) has a second shaft end
configured to receive a mechanical fastener (38) which axially limits travel
of said shaft within said handle, as recited in claim 2 and as explained by

23 Patent Owner reasserts this argument regarding claim 1 for all of claims
2–11. PO Resp. 28.
IPR2019-00587
Patent 8,136,208 B2

54
Petitioner. We further find that claim 2 covers at least the embodiments
described in the ’208 patent wherein the fastener (59) is a separate piece
attached to the shaft end (35) or an integrated feature of the shaft (see Ex.
1022, 7:27–37). Moreover, we find that claim 2 is not limited to a threaded
engagement of the second shaft end and mechanical fastener due to the
further recitation of that embodiment in claim 3 (that depends from claim 2)
and the doctrine of claim differentiation.
We are not persuaded by Patent Owner’s argument that, although
Wolf discloses that “[t]he inner end of the shaft has a widened section (38),
which serves to secure the shaft inside the handle,” Wolf does not disclose
“a mechanical fastener which axially limits travel of the shaft.” PO Resp. 29
(citing Ex. 1006, 20); see also Ex. 2006 ¶ 87. Rather, we agree with
Petitioner, as supported by Mr. Lenz and shown in Figure 2 of Wolf, that the
“widened section 38” of Wolf “abuts bearing 26 and axially limits travel of
the shaft 28 within the handle.” Pet. 35 (citing Ex. 1006, 20, Fig. 2; Ex.
1024 ¶ 107).
We find that the combination of Wolf and Terper, as argued by
Petitioner, discloses the limitations of claim 2, and that Patent Owner merely
provides conclusory arguments without explaining why Petitioner’s analysis
is incorrect. We further find that Wolf and Terper yield the limitations of
claim 1 as discussed above and that claim 2 would have been obvious for the
same reasons set forth in regard to claim 1. Accordingly, we find that
Petitioner has established by a preponderance of evidence that claim 2 of the
’208 patent would have been obvious in view of the combined teaching of
Wolf and Terper.
IPR2019-00587
Patent 8,136,208 B2

55
5. Claim 3
Claim 3 depends from claim 2 and recites as follows: “A handle as
described in claim 2, wherein said second shaft end configured to receive
said mechanical fastener provides a spiral thread, and wherein said
mechanical fastener provides a spirally threaded fastener body rotatingly
received by said spiral thread, and wherein said spirally threaded fastener
body has a fastener body sufficiently large to engages an external surface of
said at least one bearing element to axially limit travel of said shaft within
said handle.” Ex. 1022, 10:1–8.
a. Parties’ Positions Regarding Claim 3
Petitioner provides the following annotated illustration of Figure 2 of
Wolf and Figures 6 and 9 of the ’208 patent to show limitations of claim 3:
IPR2019-00587
Patent 8,136,208 B2

56

The illustration above is an annotated illustration of Figure 2 of Wolf
and Figures 6 and 9 of the ’208 patent showing corresponding components
of the respective handles in light blue, yellow, dark blue, light red, and dark
red. See Pet. 37.
Petitioner argues that “[t]he common knowledge of PHOSITA and/or
teachings of Wolf render Claim 3 obvious.” Pet. 36. Petitioner refers back
to its discussion of Wolf in connection with claim 2, and further argues that
“[t]he ‘widened section 38’ abuts bearing 26 and is wider than the annulus of
bearing 26, thereby limiting axial travel of the shaft 28 within the handle,”
IPR2019-00587
Patent 8,136,208 B2

57
and “is a ‘fastener body sufficiently large to engage an external surface of
said at least one bearing element to axially limit travel of said shaft within
said handle’ as required by Claim 3.” Id. (citing Ex. 1024 ¶ 111).
Petitioner further argues that “Wolf does not expressly state how the
‘widened section 38’ (mechanical fastener) is fastened to the ‘inner end of
the shaft [28]’ (second shaft end).” Pet. 37 (citing Ex. 1006, 20, Fig. 2; Ex.
1024 ¶ 111). However, according to Petitioner, “it is unquestionable that a
PHOSITA had knowledge that a mechanical fastener, such as a ‘widened
section 38’ of Wolf, can be fastened to the ‘inner end of the shaft [28]’ with
spiral threads—i.e. the mechanical faster [sic] having female spiral threads
and the end of the shaft having male spiral threads,” and that “[t]his type of
threaded fastening between a mechanical fastener and the end of a shaft is a
basic and ubiquitous feature in the mechanical arts.” Id. (citing Ex. 1024
¶¶ 111–115).
Petitioner also argues that “Wolf teaches the very type of threaded
fastening required by Claim 3 . . . just on the opposite end of the shaft 28.
Specifically, Wolf teaches that the ‘first arm [40] can be screw-mounted’
onto shaft 28.” Pet. 37 (citing Ex. 1006, 21; Ex. 1024 ¶ 112). Petitioner
further asserts that “in the screw-mounted embodiment, the first arm 40 of
Wolf performs the same function of limiting axial travel of the shaft as the
‘widened section 38’ of Wolf.” Id. at 38 (citing Ex. 1024 ¶ 113). Thus,
according to Petitioner, a person having ordinary skill in the art would have
readily recognized that “‘widened section 38’ of Wolf can be fastened to the
‘inner end of the shaft [28]’ with spiral threading, just as the first arm of
Wolf is ‘screw-mounted’ to the ‘outward-protruding end of the shaft [28]’
with spiral threading,” thereby making the spirally threaded engagement of
IPR2019-00587
Patent 8,136,208 B2

58
the fastener body to the second shaft end “entirely predictable and well
within the common knowledge and capability of a PHOSITA.” Id. (citing
Ex. 1024 ¶ 114).
Patent Owner argues in its Response that “Dr. Blair’s opinions
expressed in regard to the combination of Wolf and Terper related to Claims
1–2 extend to Claim 3.” PO Resp. 29. Patent Owner also argues that neither
Wolf nor Terper disclose the limitations of claim 3, and specifically that
“Wolf does not disclose a mechanical fastener which axially limits travel of
the shaft.” Id. at 30 (citing Ex. 1006, 20). Patent Owner thus asserts that
Claim 3 “is not obvious by Wolf in view of Terper as the combination does
not disclose all of the material claim limitations of Claim 3.” Id. (citing Ex.
2006 ¶¶ 90–94).
Petitioner replies by arguing that Patent Owner “makes conclusory
statements . . . [and] does not challenge Petitioner’s specific citations to the
art that identify particular elements of the dependent claims,”24 and
specifically that Patent Owner’s “arguments regarding the dependent claims
amount to unsupported assertions for . . . Claim 3 that the ‘widened section
(38)’ of Wolf is not a ‘mechanical fastener which axially limits travel of the
shaft.’” Reply 23–24 (citing PO Resp. 29–30). In its Sur-reply, Patent
Owner argues that Petitioner’s contention that Patent Owner “has failed to
refute [Petitioner’s] arguments regarding the dependent claims of the ’208
Patent is incorrect.” Sur-reply 22. Patent Owner thereafter argues that
Claim 3 “requires the second shaft end to be configured to receive a
mechanical fastener through specific use of a spiral thread whereby the

24 Petitioner advances this argument as to all of dependent claims 2–11.
Reply 23.
IPR2019-00587
Patent 8,136,208 B2

59
mechanical fastener provides a spirally threaded fastener body,” and that
“[Petitioner] does not even attempt to argue that Wolf teaches either of the
limitations iterated in Claim 3.” Id. (citing Ex. 1022, 10:1–4).
b. Analysis of Claim 3
As to claim 3, we find that the use of threaded fastening between a
mechanical fastener and the end of a shaft would have been common
knowledge to a person having ordinary skill in the art, at least because it was
and is a basic and ubiquitous feature in the mechanical arts. Pet. 37 (citing
Ex. 1024 ¶¶ 111–115). We credit the testimony of Mr. Lenz at least because
he relies on Wolf and other prior art. See Ex. 1024 ¶¶ 112, 115, Exhibit J.
We further find that, as argued by Petitioner, Wolf discloses the same kind
of threaded engagement on the opposite end of its shaft, such that a person
having ordinary skill in the art would have also known of the type of
claimed engagement based on the disclosure by Wolf. Pet. 37–38 (citing Ex.
1024 ¶¶ 112–114).
Patent Owner argues in its Sur-reply25 that Petitioner does not even
attempt to argue that Wolf teaches the limitations of claim 3. Sur-reply 22.
We disagree. As Petitioner explains, Wolf does not expressly state how the
mechanical fastener (38) is fastened to the second shaft end, but Wolf does
disclose the same type of threaded engagement as recited in claim 3 in
connection with the opposite end of the shaft, and for the same purpose of
limiting axial movement of the shaft. Pet. 37–38 (citing Ex. 1024 ¶¶ 112–
114). Moreover, to the extent the threaded engagement of the fastener to the

25 Patent Owner’s failure to include this argument in its Response constitutes
waiver thereof. 37 C.F.R. § 42.23(a); see also id. at 42.120. We
nevertheless address it for the sake of completeness.
IPR2019-00587
Patent 8,136,208 B2

60
second shaft end is a limitation that is missing from Wolf, it is permissible
for Petitioner to rely on common knowledge in the art to supply that
limitation because the limitation in question is “unusually simple and the
technology particularly straightforward,” and the reliance is not based on
conclusory statements and unspecific expert testimony. See Arendi S.A.R.L.
v. Apple Inc., 832 F.3d 1355, 1361–62, 1366 (Fed. Cir. 2016); Koninklijke
Philips N.V. v. Google LLC, 948 F.3d 1330, 1337–38 (Fed. Cir. 2020)
(finding claims would have been obvious over prior art in light of the
general knowledge of a skilled artisan).
Here, the fastener mechanism is “unusually simple” and “particularly
straightforward,” and, like the facts in Koninklijke, we rely “on expert
evidence [Dr. Lenz], which was corroborated by [Wolf], in concluding that
[threaded fastening] was not only in the prior art, but also within the general
knowledge of a skilled artisan. Moreover, [Patent Owner] offered no
evidence to rebut the conclusion that a skilled artisan would have known
about [threaded fastening].” Id. at 1338.
We find that the combination of Wolf and Terper along with common
knowledge in the art, as argued by Petitioner, discloses the limitations of
claim 3, and that Patent Owner merely provides conclusory arguments
without explaining why Petitioner’s analysis is incorrect. We further find
that Wolf and Terper yield the limitations of claims 1 and 2 as discussed
above, and that claim 3 would have been obvious for the same reasons set
forth in regard to claim 1. Accordingly, we find that Petitioner has
established by a preponderance of evidence that claim 3 of the ’208 patent
would have been obvious in view of the combined teaching of Wolf and
Terper, and common knowledge in the art.
IPR2019-00587
Patent 8,136,208 B2

61
6. Claim 4
Claim 4 depends from claim 1 and recites as follows: “A handle as
described in claim 1, wherein said shaft comprises a two piece shaft,
wherein a first shaft piece couples to a second shaft piece, and wherein said
first shaft piece coupled to said second shaft piece is rotatably journaled in
said at least one bearing element.” Ex. 1022, 10:9–13.
a. Parties’ Positions Regarding Claim 4
Petitioner provides the following annotated illustration of Figure 2 of
Wolf and Figure 9 of the ’208 patent to show limitations of claim 4:

The illustration above is an annotated illustration of Figure 2 of Wolf
and Figure 9 of the ’208 patent showing corresponding components of the
respective handles in yellow, blue, light red, and dark red. See Pet. 40.
IPR2019-00587
Patent 8,136,208 B2

62
Petitioner argues that Wolf discloses all elements of claim 4 and that
the combination of Wolf and Terper renders claim 4 obvious for the same
reasons as set forth with respect to claim 1. Pet. 40 (citing Ex. 1024 ¶¶ 117–
119). Specifically, Petitioner argues that “Wolf discloses first arm 40 (‘a
first shaft piece’) coupled to pin 28 (‘a second shaft piece’) to form a two-
piece shaft,” and that the “pin 28 (‘second shaft piece’) is rotatably journaled
in bearing 26.” Id. (citing Ex. 1006, 5 (claim 10), 20–21; Ex. 1024 ¶ 117).
The Lenz Declaration cited by Petitioner states that “it would be obvious to a
PHOSITA to provide either or both shaft pieces in ball bearings to provide
Wolf’s spinning shaft.” Ex. 1024 ¶ 118.
Patent Owner states in its Response that “Dr. Blair’s opinions
expressed in regard to the combination of Wolf and Terper related to Claims
1–3 extend to Claim 4.” PO Resp. 30. Patent Owner further argues that
Terper does not disclose the limitations listed in claim 4, and that “Claim 4
of the ’208 Patent is not obvious by Wolf in view of Terper as the
combination does not disclose all of the material claim limitations of Claim
4.” Id. at 30–31 (emphasis added) (citing Ex. 2006 ¶¶ 95–97).26
Petitioner does not specifically address claim 4 in its Reply, other than
to argue that Patent Owner “makes conclusory statements that groups of
claim elements are missing from Wolf, Terper, and Bradley” and “does not
challenge Petitioner’s specific citations to the art that identify particular
elements of the dependent claims.” Reply 23 (citing PO Resp. 28–35, 48–
55; compare id. with Pet. 35–47, 57–60). Patent Owner argues in its Sur-
reply that “it is clear that Wolf’s ‘first arm (40)’ and the outward-protruding

26 Dr. Blair also states that “Terper does not disclose the . . . limitations
listed in Claim 4.” Ex. 2006 ¶ 96 (emphasis added).
IPR2019-00587
Patent 8,136,208 B2

63
end of the pin (28),’ i.e., the ‘second arm’ are inapposite to the ’208 Patent’s
first and second shaft piece,” and that Patent Owner “specifically pointed out
this deficiency in its Response.” Sur-reply 23 (citing Ex. 1002, 4:42–45; Ex.
1006, 4 (claim 9); PO Resp. 30–31, 50–51). Patent Owner further states
“[t]hus, the combination of Wolf and Terper . . . cannot disclose all the
material limitations of Claim 4 of the ’208 Patent as the Wolf’s first arm is
not rotatably journaled in at least one bearing.” Id. at 23–24.
b. Analysis of Claim 4
Petitioner specifically argues that Wolf discloses the elements of
claim 4, and cites to the Lenz Declaration in support, which also states that
Wolf discloses the elements of claim 4. See Pet. 40 (citing Ex. 1024 ¶¶ 117–
119). In its Response, Patent Owner does not address or otherwise respond
to Petitioner’s arguments regarding Wolf’s disclosures or the cited
statements in the Lenz Declaration regarding claim 4. See PO Resp. 30–31.
In fact, both the Patent Owner Response and the Blair Declaration
specifically state that Terper does not disclose the limitations of claim 4.27
PO Resp. 30–31; Ex. 2006 ¶ 96.
Although Patent Owner ultimately provides a specific response in its
Sur-reply to Petitioner’s position regarding Wolf’s disclosure of the
elements of claim 4, that response is waived because our rules instruct that,
if a petition contains a statement of material fact (e.g. “Wolf discloses all
elements of Claim 4”), the patent owner response “must include a listing of
facts that are . . . denied. Any material fact not specifically denied may be

27 As to Wolf and claim 4, Patent Owner and Dr. Blair state in a conclusory
manner that claim 4 “is not obvious by Wolf in view of Terper as the
combination does not disclose all of the material claim limitations of Claim
4.” PO Resp. 31; Ex. 2006 ¶ 97.
IPR2019-00587
Patent 8,136,208 B2

64
considered admitted.” 37 C.F.R. § 42.23(a); see also id. at 42.120 (“A
patent owner response is filed as an opposition”).28 This is no small matter.
Our rules are intended to provide the petitioner an opportunity to address in
its reply material facts in dispute identified in the patent owner response.
Accordingly, the material fact that Wolf discloses the elements of claim 4 is
deemed admitted by Patent Owner. 37 C.F.R. § 42.23(a).
Notwithstanding Patent Owner’s waiver of any arguments regarding
Wolf’s disclosure of the elements of claim 4, we address Patent Owner’s
belated arguments for the sake of completeness. Patent Owner argues that it
pointed out the “deficiency” that Wolf’s “first arm” and “second arm” are
inapposite to the ’208 patent’s first and second shaft pieces in its
Response.29 See Sur-reply 23. As we understand Patent Owner’s argument
and alleged “deficiency,” an embodiment of the handle shown in Figure 5 of
the ’208 patent is described in the Specification as having a first shaft piece
37 that corresponds to Wolf’s second shaft piece 28 and a second shaft piece
38 that corresponds to Wolf’s first shaft piece 40. Compare Ex. 1022, 4:42–
45 with Ex. 1006, 4 (claim 9). We do not find this argument persuasive
because the appropriate comparison is between the claims (not the
Specification) and Wolf’s disclosure.
Patent Owner further argues in its Sur-reply that “Wolf’s first arm is
not rotatably journaled in at least one bearing.” Sur-reply 23–24.

28 Patent Owner was also “cautioned that any arguments for patentability not
raised in the response may be deemed waived.” Paper 9, 7.
29 Patent Owner contends this “deficiency” was raised in its Response at
pages 30–31 and 50–51. Sur-reply 23 (citing PO Resp. 30–31, 50–51). Our
review of those cited pages indicates the alleged deficiency was not raised in
the Response.
IPR2019-00587
Patent 8,136,208 B2

65
However, that conclusory statement is simply attorney argument without
evidence rebutting the testimony of Mr. Lenz, and thus not probative of
Wolf’s disclosure. See Knorr, 671 F.2d at 1373; see also Ex. 1024 ¶ 118.
We find that the combination of Wolf and Terper, as argued by
Petitioner, discloses the limitations of claim 4, and that Patent Owner has
waived any arguments as to claim 4 regarding the disclosure of Wolf. We
further find that Wolf and Terper yield the limitations of claim 1 as
discussed above and that claim 4 would have been obvious for the same
reasons set forth in regard to claim 1. Accordingly, we find that Petitioner
has established by a preponderance of evidence that claim 4 of the ’208
patent would have been obvious in view of the combined teaching of Wolf
and Terper.
7. Claim 5
Claim 5 depends from claim 4 and recites as follows: “A handle as
described in claim 4, wherein said first shaft piece provides said first shaft
end.” Ex. 1022, 10:14–15.
Petitioner refers to the illustration shown above of the example
combination of Wolf and Terper (see supra Section II.D.3.b.) to argue that
“coupling the spherical bearing of Terper on the end of the first arm of Wolf
results in the housing of Terper extending axially outward from the handle.”
Pet. 41 (citing Ex. 1024 ¶¶ 71–75, 120). According to Petitioner, “[i]n this
combination, the housing of Terper forms the end [of] the first arm of Wolf,
thereby yielding the ‘first shaft end’ of the ‘first shaft piece’ as required by
Claim 5.” Id. (citing Ex. 1024 ¶ 120). Petitioner thus asserts that “the
combination of Wolf and Terper yields all elements of Claim 5 and is
IPR2019-00587
Patent 8,136,208 B2

66
obvious for the same reasons set forth in regard to Claim 1.” Id. (citing Ex.
1024 ¶¶ 120–121).
Patent Owner responds that “Dr. Blair’s opinions expressed in regard
to the combination of Wolf and Terper related to Claims 1–4 extend to
Claim 5.” PO Resp. 31. Patent Owner also argues that Terper does not
disclose the limitations listed in claim 5, and that claim 5 is “not obvious by
Wolf in view of Terper as the combination does not disclose all of the
material claim limitations of Claim 5.” Id. (citing Ex. 2006 ¶¶ 98–100).
We find that the combination of Wolf and Terper, as argued by
Petitioner, discloses the limitations of claim 5, and that Patent Owner merely
provides conclusory arguments without explaining why Petitioner’s analysis
is incorrect. We further find that Wolf and Terper yield the limitations of
claim 4 and claim 1 as discussed above and that claim 5 would have been
obvious for the same reasons set forth in regard to claim 1. Accordingly, we
find that Petitioner has established by a preponderance of evidence that
claim 5 of the ’208 patent would have been obvious in view of the combined
teaching of Wolf and Terper.
8. Claim 6
Claim 6 depends from claim 5 and recites as follows: “A handle as
described in claim 5, wherein said first shaft piece provides a closed end
conduit, and wherein said second shaft piece provides an elongate body
received within said closed end conduit to couple said first shaft piece to
said second shaft piece.” Ex. 1022, 10: 16–20.
Petitioner provides the following annotated illustration of Figure 2 of
Wolf and Figure 9 of the ’208 patent to show limitations of claim 6:
IPR2019-00587
Patent 8,136,208 B2

67

The illustration above is an annotated illustration of Figure 2 of Wolf
and Figure 9 of the ’208 patent showing corresponding components of the
respective handles in yellow, light red, and dark red. See Pet. 42.
Petitioner argues that Wolf discloses the elements of claim 6 because
“Wolf’s first arm 40 (first shaft piece) ‘has an inner bore 46 whose inner
diameter corresponds to the outer diameter of the shaft 28’ (second shaft
piece),” and the “‘inner bore 46’ terminates within first arm 40 and thereby
provides a ‘closed end conduit’ within the first arm 40” as recited in claim 6.
Pet. 42 (citing Ex. 1006, 20–21; Ex. 1024 ¶ 124); see also illustration at
Section II.D.6.a supra. Petitioner further argues that Wolf “discloses that
‘[i]n the assembled state, the outward-protruding end of the shaft [28] is slid
into the inner bore 46 and connected to [first arm 40],’” and thus “the
outwardly protruding end of Wolf (‘elongate body’) is received within the
bore 46 of the first arm 40 (‘closed end conduit’) to couple the first arm
IPR2019-00587
Patent 8,136,208 B2

68
(‘first shaft piece’) to the shaft (‘second shaft piece’)” as recited in claim 6.
Id. (citing Ex. 1006, 21; Ex. 1024 ¶¶ 122–125). Petitioner thus asserts that
“the combination of Wolf and Terper yields all elements of Claim 6 and is
obvious for the same reasons set forth in regard to Claim 1.” Id. (citing Ex.
1024 ¶¶ 122–126).
Patent Owner responds that “Dr. Blair’s opinions expressed in regard
to the combination of Wolf and Terper related to Claims 1, 4, and 5 extend
to Claim 6.” PO Resp. 31. Patent Owner also argues that Terper does not
disclose the limitations listed in claim 6, and that claim 6 is “not obvious by
Wolf in view of Terper as the combination does not disclose all of the
material claim limitations of Claim 6.” Id. at 32 (citing Ex. 2006 ¶¶ 101–
103).
As discussed above, Petitioner has shown that Wolf’s first arm 40
corresponds to the claimed “first shaft piece” and Wolf’s shaft or pin 28
corresponds to the claimed “second shaft piece,” as recited in claim 4. See
Section II.D.6 above. We further find, as it pertains to claim 6, that
Petitioner has shown that Wolf’s first arm 40 provides a “closed end
conduit” formed by inner bore 46 that terminates within first arm 40. Ex.
1006, 21. We further find that Petitioner has shown that Wolf’s shaft 28,
which corresponds to the second shaft piece, provides an elongate body
received within inner bore 46 (closed end conduit) of first arm 40 (first shaft
piece). Id. Patent Owner’s arguments that Terper fails to disclose these
features of claim 6 are not persuasive as they fail to address Petitioner’s
assertion that Wolf discloses this claimed subject matter.
Accordingly, we find that the combination of Wolf and Terper, as
argued by Petitioner, discloses the limitations of claim 6, and that Patent
IPR2019-00587
Patent 8,136,208 B2

69
Owner merely provides conclusory arguments without explaining why
Petitioner’s analysis is incorrect. We further find that Wolf and Terper yield
the limitations of claims 5, 4 and 1 as discussed above and that claim 6
would have been obvious for the same reasons set forth in regard to claim 1.
Accordingly, we find that Petitioner has established by a preponderance of
evidence that claim 6 of the ’208 patent would have been obvious in view of
the combined teaching of Wolf and Terper.
9. Claim 7
Claim 7 depends from claim 6 and recites as follows: “A handle as
described in claim 6, wherein said first shaft piece comprises a ball link and
wherein said second shaft piece comprises a bolt.” Ex. 1022, 10:21–23.
Petitioner argues that the combination of Wolf and Terper yields all
elements of claim 7, asserting that “coupling the spherical bearing of Terper
on the end of the first arm of Wolf results in the housing of Terper extending
axially from the first arm of Wolf, forming a ‘first shaft piece,’” and that
“[s]uch configuration was known as a rod end, which is also commonly
referred to as a ‘ball link.’” Pet. 43 (citing Ex. 1024 ¶ 128). Petitioner
further argues that “the rope of Terper is connected (i.e. linked) to the ball,
and thereby forms a ball link,” and that, accordingly, combining the first arm
of Wolf with Terper as described in connection with claim 1, “provides a
‘first shaft piece compris[ing] a ball link’” as recited in claim 7. Id. (citing
Ex. 1024 ¶¶ 127–130).
Petitioner also argues that “Wolf teaches that shaft 28 (second shaft
piece) can be in the form of a bolt,” and specifically that “Wolf teaches that
the ‘first arm [40] can be screw-mounted’ onto shaft 28.” Pet. 43 (citing Ex.
1006, 21; Ex. 1024 ¶ 129). Moreover, Petitioner asserts that “[i]n such
IPR2019-00587
Patent 8,136,208 B2

70
embodiment, the ‘outwardly-protruding end of the shaft’ that ‘is slid into the
inner bore 46’ of the first arm has male threading,” and that “Wolf discloses
‘inner end of the shaft [28] has a widened section.’” Id. (citing Ex. 1006, 20,
21, Fig. 2; Ex. 1024 ¶ 129). According to Petitioner, the “widened section
38” is in the form of a bolt head, and “Wolf discloses a shaft having widened
section on the inner end and male thread on the opposite end—which is a
typical bolt.” Id. at 43–44 (citing Ex. 1024 ¶ 129). Petitioner thus asserts
that “the combination of Wolf and Terper yields all elements of Claim 7 and
is obvious for the same reasons set forth in regard to Claim 1.” Id. (citing
Ex. 1024 ¶¶ 127–130).
Patent Owner responds that “Dr. Blair’s opinions expressed in regard
to the combination of Wolf and Terper related to Claims 1, 4, 5 and 6 extend
to Claim 7.” PO Resp. 32. Patent Owner also argues that neither Wolf nor
Terper disclose the limitations listed in claim 7, and that claim 7 is “not
obvious by Wolf in view of Terper as the combination does not disclose all
of the material claim limitations of Claim 7.” Id. (citing Ex. 2006 ¶¶ 104–
107).
We find that the combination of Wolf and Terper, as argued by
Petitioner, discloses the limitations of claim 7, and that Patent Owner merely
provides conclusory arguments without explaining why Petitioner’s analysis
is incorrect. We further find that Wolf and Terper yield the limitations of
claims 6, 5, 4 and 1 as discussed above and that claim 7 would have been
obvious for the same reasons set forth in regard to claim 1. Accordingly, we
find that Petitioner has established by a preponderance of evidence that
claim 7 of the ’208 patent would have been obvious in view of the combined
teaching of Wolf and Terper.
IPR2019-00587
Patent 8,136,208 B2

71
10. Claim 8
Claim 8 depends from claim 7 and recites as follows: “A handle as
described in claim 7, wherein said bolt has a fastener head which engages an
external surface of said at least one bearing element to axially limit travel of
said shaft within said handle.” Ex. 1022, 10:24–27.
Petitioner provides the following annotated illustration of Figure 2 of
Wolf and Figure 9 of the ’208 patent to show limitations of claim 8:

The illustration above is an annotated illustration of Figure 2 of Wolf
and Figure 9 of the ’208 patent showing corresponding components of the
respective handles in light red, dark red, and blue. See Pet. 44.
Petitioner argues that Wolf discloses the elements of claim 8 because
“Wolf discloses a bolt that includes ‘widened section 38’ (fastener head) . . .
[that] abuts bearing 26 and ‘serves to secure the shaft inside the handle’ . . .
IPR2019-00587
Patent 8,136,208 B2

72
by axially limiting travel of the rotary shaft 28.” Pet. 44 (citing Ex. 1006,
20, Fig. 2; Ex. 1024 ¶ 131). Petitioner thus asserts that “Wolf discloses the
elements of Claim 8 and Wolf in view of Terper renders Claim 8 obvious for
the same reasons set forth in regard to Claim 1.” Id. (citing Ex. 1024 ¶¶ 131,
132).
Patent Owner responds that “Dr. Blair’s opinions expressed in regard
to the combination of Wolf and Terper related to Claims 1, 4, 5, 6 and 7
extend to Claim 8.” PO Resp. 33. Patent Owner also argues that neither
Wolf nor Terper disclose the limitations listed in claim 8, and that claim 8 is
“not obvious by Wolf in view of Terper as the combination does not disclose
all of the material claim limitations of Claim 8.” Id. (citing Ex. 2006
¶¶ 108–111).
We find that the combination of Wolf and Terper, as argued by
Petitioner, discloses the limitations of claim 8, and that Patent Owner merely
provides conclusory arguments without explaining why Petitioner’s analysis
is incorrect. We further find that Wolf and Terper yield the limitations of
claims 7, 6, 5, 4 and 1 as discussed above and that claim 8 would have been
obvious for the same reasons set forth in regard to claim 1. See also
discussion at Section II.D.4, D.5 supra. Accordingly, we find that Petitioner
has established by a preponderance of evidence that claim 8 of the ’208
patent would have been obvious in view of the combined teaching of Wolf
and Terper.
11. Claim 9
Claim 9 depends from claim 1 and recites as follows: “A handle as
described in claim 1, wherein said first shaft end has a configuration which
axially limits travel of said shaft within said handle.” Ex. 1022, 10:28–30.
IPR2019-00587
Patent 8,136,208 B2

73
Petitioner argues that Wolf in view of Terper yields the elements of
claim 9, asserting that “coupling the spherical bearing of Terper on the end
of the first arm 40 of Wolf results in the claimed ‘first shaft end’” and that
“Wolf further teaches that ‘[t]he shaft [28] is prevented from being able to
slide inward by the first arm 40.’” Pet. 45 (citing Ex. 1006, 20). Thus,
according to Petitioner, “the first shaft end resulting from the combination of
Wolf and Terper would also have a configuration adapted to axially limit
travel of the shaft of Wolf” as claim 9 requires. Id. (citing Ex. 1024 ¶ 136).
Petitioner also argues that “configuring a flat element on the end of a
shaft of a jump rope handle to limit axial travel of the shaft was within the
general knowledge available to a PHOSITA for at least the reason that
multiple prior art jump ropes include such features.” Pet. 45–46 (citing Ex.
1024 ¶ 135). Petitioner thus asserts that “Wolf in view of Terper renders
Claim 9 obvious for the same reasons set forth in regard to Claim 1.” Id.
(citing Ex. 1024 ¶¶ 133–137).
Patent Owner responds that “Dr. Blair’s opinions expressed in regard
to the combination of Wolf and Terper related to Claim 1 extends to Claim
9.” PO Resp. 33. Patent Owner also argues that Terper does not disclose
the limitations listed in claim 9, and that claim 9 is “not obvious by Wolf in
view of Terper as the combination does not disclose all of the material claim
limitations of Claim 9.” Id. at 33–34 (citing Ex. 2006 ¶¶ 112–114).
We find that the combination of Wolf and Terper, as argued by
Petitioner, discloses the limitations of claim 9, and that Patent Owner merely
provides conclusory arguments without explaining why Petitioner’s analysis
is incorrect. We further find that Wolf and Terper yield the limitations of
claim 1 as discussed above and that claim 9 would have been obvious for the
IPR2019-00587
Patent 8,136,208 B2

74
same reasons set forth in regard to claim 1. Accordingly, we find that
Petitioner has established by a preponderance of evidence that claim 9 of the
’208 patent would have been obvious in view of the combined teaching of
Wolf and Terper.
12. Claim 10
Claim 10 depends from claim 1 and recites as follows: “A handle as
described in claim 1, wherein said at least one bearing element comprises:
i) a first bearing element; and
ii) a second bearing element disposed in coaxial relation a distance
apart within said handle.” Ex. 1022, 10:31–35.
Petitioner provides the following annotated illustration of Figure 2 of
Wolf and Figure 9 of the ’208 patent to show the first and second bearing
elements of claim 10:

IPR2019-00587
Patent 8,136,208 B2

75
The illustration above is an annotated illustration of Figure 2 of Wolf
and Figure 9 of the ’208 patent showing the first and second bearings of
Wolf in dark blue, and the corresponding bearings of an embodiment of the
handle of the ’208 patent in light blue. See Pet. 46.
Petitioner argues that “Wolf discloses ‘bearings (24, 26) . . . are kept
apart by means of first spacer sleeve (32) and an additional spacer sleeve
(36)’ within the handle,” and “further discloses ‘pin (28) . . . embodied as a
shaft that is supported in the handle (14) in rotary fashion’ by ‘bearings (24,
26) that support the shaft (28).’” Pet. 46 (citing Ex. 1006, 3, claims 2, 3, 4,
Fig. 2). Thus, according to Petitioner, “Wolf discloses ‘first [and] second
bearing element[s] [(‘bearings (24, 26)’)] disposed in coaxial relation a
distance apart within [the] handle’ as required by Claim 10. . . . [and] Wolf
and Terper renders claim 10 obvious for the same reasons set forth regarding
Claim 1.” Id. at 46–47 (citing Ex. 1024 ¶¶ 138–140).
Patent Owner responds that “Dr. Blair’s opinions expressed in regard
to the combination of Wolf and Terper related to Claim 1 extends to Claim
10.” PO Resp. 34. Patent Owner also argues that Terper does not disclose
the limitations listed in claim 10, and that claim 10 is “not obvious by Wolf
in view of Terper as the combination does not disclose all of the material
claim limitations of Claim 10.” Id. (citing Ex. 2006 ¶¶ 115–117).
We find that Wolf, as argued by Petitioner, discloses the limitations of
claim 10. Patent Owner’s arguments as to Terper failing to disclose the
limitations of claim 10 are not persuasive, as they do not address Petitioner’s
argument that Wolf discloses those limitations, and Patent Owner otherwise
merely provides conclusory arguments without explaining why Petitioner’s
analysis is incorrect. We further find that Wolf and Terper yield the
IPR2019-00587
Patent 8,136,208 B2

76
limitations of claim 1 as discussed above and that claim 10 would have been
obvious for the same reasons set forth in regard to claim 1. Accordingly, we
find that Petitioner has established by a preponderance of evidence that
claim 10 of the ’208 patent would have been obvious in view of the
combined teaching of Wolf and Terper.
13. Claim 11
Claim 11 depends from claim 10 and recites as follows: “A handle as
described in claim 10, wherein said first bearing element and said second
bearing element comprise a first rolling element bearing and a second rolling
element bearing.” Ex. 1022, 10:36–39.
Petitioner argues that “Wolf discloses ‘roller bearings . . . as the
bearings (24, 26).’” Pet. 47 (citing Ex. 1006, 3, claim 4, Fig. 2). Thus,
according to Petitioner, “Wolf discloses a ‘first . . . and a second rolling
element bearing’ of Claim 11 and Claim 11 is accordingly rendered obvious
in view of Wolf and Terper for the same reasons set forth regarding Claim
1.” Id. (citing Ex. 1024 ¶¶ 141–143).
Patent Owner responds that “Dr. Blair’s opinions expressed in regard
to the combination of Wolf and Terper related to Claims 1 and 10 extends to
Claim[] 11.” PO Resp. 34. Patent Owner also argues that Terper does not
disclose the limitations listed in claim 11, and that claim 11 is “not obvious
by Wolf in view of Terper as the combination does not disclose all of the
material claim limitations of Claim 11.” Id. at 34–35 (citing Ex. 2006
¶¶ 118–120).
We find that Wolf, as argued by Petitioner, discloses the limitations of
claim 11. Patent Owner’s arguments as to Terper failing to disclose the
limitations of claim 11 are not persuasive, as they do not address Petitioner’s
IPR2019-00587
Patent 8,136,208 B2

77
argument that Wolf discloses those limitations, and Patent Owner otherwise
merely provides conclusory arguments without explaining why Petitioner’s
analysis is incorrect. We further find that Wolf and Terper yield the
limitations of claims 1 and 10 as discussed above and that claim 11 would
have been obvious for the same reasons set forth in regard to claim 1.
Accordingly, we find that Petitioner has established by a preponderance of
evidence that claim 11 of the ’208 patent would have been obvious in view
of the combined teaching of Wolf and Terper.
14. Summary of Challenge Based on Wolf and Terper
Our determination regarding claim 1 is set forth above. See supra
Section II.D.3.g. In weighing the above evidence and arguments regarding
dependent claims 2–11 with Patent Owner’s asserted evidence of
nonobviousness, and based on our review of the totality of the evidence, we
are persuaded that Petitioner demonstrates by a preponderance of the
evidence that claims 2–11 of the ’208 patent would have been unpatentable
as obvious over the combined teachings of Wolf and Terper, and common
knowledge in the art.
E. Petitioner’s Additional Challenges
Petitioner also presents a second asserted ground of unpatentability of
claims 1‒11 as obvious over Wolf and Bradley. Pet. 47‒60. Because the
challenge based on Wolf and Terper, discussed above, is dispositive of all
the challenged claims, we need not reach Petitioner’s other challenge as to
these same claims. See SAS, 138 S. Ct. at 1359 (holding a petitioner “is
entitled to a final written decision addressing all of the claims it has
challenged”).
IPR2019-00587
Patent 8,136,208 B2

78
III. CONCLUSION30
For the foregoing reasons, we conclude that Petitioner has established
by a preponderance of evidence that claims 1–11 of the ’208 patent are
unpatentable.
In summary:

IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that Petitioner has proven by a preponderance of the
evidence that claims 1–11 of U.S. Patent No. 8,136,208 B2 are unpatentable;
and

30 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
31 As explained above, we do not reach this ground because the challenge
based on the first ground is dispositive of all the challenged claims. See
SAS, 138 S. Ct. at 1359.

IPR2019-00587
U.S. Patent No. 8,136,208 B2
Claims

35
U.S.C. §
Reference(s)/Basis Claims
Shown
Unpatentable
Claims
Not Shown
Unpatentable
1–11 103(a) Wolf, Terper 1–11
1–11 103(a) Wolf, Bradley31
Overall
Outcome
1–11
IPR2019-00587
Patent 8,136,208 B2

79
FURTHER ORDERED that, because this is a Final Written Decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

For PETITIONER:
Louis DiSanto
Eric Hamp
Brian Apel
Camille D. Sauer
BANNER AND WITCOFF, LTD.
ldisanto@bannerwitcoff.com
ehamp@bannerwitcoff.com
bapel@bannerwitcoff.com
csauer@bannerwitcoff.com

For PATENT OWNER:
Gregory F. Ahrens
Thomas J. Burger
Charles D. Pfister
WOOD HERRON & EVANS, LLP
gahrens@whe-law.com
tburger@whe-law.com
cpfister@whe-law.com