Limoss US, LLC

Patent Trials and Appeals Board

Dec 9, 2020

IPR2019-01184 (P.T.A.B. Dec. 9, 2020)

Trials@uspto.gov Paper 39
571-272-7822 Date: December 9, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

KAIDI LLC and CHANGZHOU KAIDI ELECTRICAL CO., LTD.,
Petitioner,

v.

LIMOSS US, LLC,
Patent Owner.
____________

IPR2019-01184
Patent 10,066,717 B2
____________

Before MITCHELL G. WEATHERLY, JAMES A. TARTAL, and
CHARLES J. BOUDREAU, Administrative Patent Judges.

BOUDREAU, Administrative Patent Judge.

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

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I. INTRODUCTION
Kaidi LLC and Changzhou Kaidi Electrical Co., Ltd. (“Petitioner”)1
filed a Petition requesting inter partes review of claims 1, 5–12, 15,
and 18–20 (the “challenged claims”) of U.S. Patent No. 10,066,717 B2
(Ex. 1001, “the ’717 patent”). Paper 2 (“Pet”). Limoss US, LLC (“Patent
Owner”) filed a Preliminary Response. Paper 12 (“Prelim. Resp.”). After
reviewing these papers, we determined that Petitioner had demonstrated a
reasonable likelihood of success in proving that the challenged claims are
unpatentable, and we instituted an inter partes review of all challenged
claims on the ground set forth in the Petition. Paper 16 (“Institution
Decision” or “Inst. Dec.”).
After institution, Patent Owner filed a Response (Paper 20, “PO
Resp.”), Petitioner filed a Reply (Paper 24, “Pet. Reply”), and Patent Owner
filed a Sur-Reply (Paper 26, “PO Sur-Reply”). Concurrently with the filing
of the Response, Patent Owner also filed a statutory disclaimer of claim 9.
Ex. 2017. An oral hearing in this proceeding was held on September 16,
2020, and a transcript of the hearing is included in the record (Paper 38,
“Tr.”).
We have jurisdiction under 35 U.S.C. § 6. This Final Written
Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
For the reasons discussed below, we conclude that Petitioner has shown by a

1 Petitioner indicates that, in addition to Kaidi LLC and Changzhou Kaidi
Electrical Co., Ltd., Kaidi Electrical Vietnam Co. Ltd. also is a real party in
interest. Pet. 1.
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preponderance of the evidence that claims 1, 5–8, 10–12, 15, and 18–20 of
the ’717 patent are unpatentable under 35 U.S.C. § 103(a).2
A. Related Proceedings
The parties report that the ’717 patent is the subject of ongoing district
court litigation in Limoss US, LLC v. Kaidi LLC, No. 1:18-cv-00166-SA-RP
(N.D. Miss.), and that the ’717 patent previously was asserted in Limoss US,
LLC v. Remacro Machinery & Technology Co., No. 1:18-cv-00948
(M.D.N.C.). Pet. 1; Paper 4, 2.
B. The ’717 Patent
The ’717 patent, titled “Linear Actuator,” issued September 4, 2018,
from U.S. Patent Application No. 15/639,307 (“the ’307 application”), filed
June 30, 2017. Ex. 1001, codes (21), (22), (45), (54). The Related U.S.
Application Data field on the front page of the ’717 patent, as issued,
included a claim that the ’717 patent is a “[c]ontinuation of application
No. 14/445,432, filed on Jul. 29, 2014, now Pat. No. 9,732,832” (Ex. 1001,
code (63)), as well as a reference to “[p]rovisional application
No. 61/862,409 [(“the ’409 provisional”)], filed on Aug. 5, 2013” (id.
at code (60)). In a section titled “CROSS-REFERENCE TO RELATED
APPLICATIONS,” the ’717 patent states:
This application is a continuation of U.S. patent
application Ser. No. 14/445,432, filed on Jul. 29, 2014 and

2 As stated above, Patent Owner filed a statutory disclaimer of claim 9
concurrently with its Response. Ex. 2017. Because “[a] statutory disclaimer
under 35 U.S.C. § 253 has the effect of canceling the claims from the patent
and the patent is viewed as though the disclaimed claims had never existed
in the patent” (Guinn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996)), we treat
claim 9 as though it never existed and do not address Petitioner’s asserted
grounds with respect to that claim below.
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entitled LINEAR ACTUATOR, which claims the benefit of
U.S. Provisional Application No. 61/862,409, filed Aug. 5,
2013 and entitled IMPROVED LINEAR ACTUATOR, both of
which are hereby incorporated by this reference in their
entireties.
Ex. 1001, 1:6–12.
On July 26, 2019, with the Board’s authorization provided in an Order
dated July 19, 2019 (Paper 8), Patent Owner filed a petition to accept an
unintentionally delayed priority claim under 37 C.F.R. § 1.78(e), a request
for a certificate of correction under 37 C.F.R. § 1.322, a petition under
37 C.F.R. § 1.182 to expedite processing, and other related papers with the
Office. Ex. 2001. On October 22, 2019, the Office issued the requested
Certificate of Correction (Ex. 2007), which replaces the Related U.S.
Application Data under code (63) on the front page of the ’717 patent with
the following: “Continuation-in-part of application No. 14/445,432, filed on
Jul. 29, 2014, now Pat. No.9,732,832, and continuation of application
No. 14/445,399 [(“the ’399 application”)], filed on Jul. 29, 2014, now
abandoned.” Ex. 2007, 1. The Certificate of Correction also replaces the
text recited in column 1, lines 6–12 with the following:
This application is a continuation-in-part of U.S. patent
application Ser. No. 14/445,432, filed on Jul. 29, 2014 and
entitled LINEAR ACTUATOR, which claims the benefit of
U.S. Provisional Application No. 61/862,409, filed Aug. 5,
2013 and entitled IMPROVED LINEAR ACTUATOR, both of
which are hereby incorporated by this reference in their
entireties, and is also a continuation of U.S. patent application
Ser. No. 14/445,399, filed on Jul. 29, 2014 and entitled
LINEAR ACTUATOR, now abandoned, which also claims the
benefit of U.S. Provisional Application No. 61/862,409, filed
Aug. 5, 2013 and entitled IMPROVED LINEAR ACTUATOR.
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Ex. 2007. Thus, in view of the Certificate of Correction, the ’717 patent
claims the benefit of the July 29, 2014, filing date of the ’399 and
’432 applications, as well as the August 5, 2013, filing date of the
’409 provisional. Ex. 1001, code (60); Ex. 2007.3
The ’717 patent is directed to “a new design for a linear actuator that
modifies the positioning in adjustable furniture.” Ex. 1001, 1:16–17. In a
section labeled as “Background,” the ’717 patent describes that a linear
actuator typically comprises an electric motor drive assembly that drives a
threaded spindle retained within a rigid arm attached to the electric drive
motor assembly. Id. at 1:28–32. “A pusher block is threaded onto the
spindle and is secured in linear recesses within the arm,” and “[a]s the
electric motor drive assembly turns the spindle, the pusher block moves
from one end of the arm to the other end.” Id. at 1:32–36. One end of the
linear actuator is secured to furniture using a bracket, and the pusher block
connects to levers or linkages that transfer movement from the pusher block
to the furniture. Id. at 1:38–45. The ’717 patent explains that prior art
linkages were attached to the pusher block using threaded fasteners (e.g.,
screws), but that such attachments were time-consuming and difficult for
assembly workers to align. Id. at 1:41–42, 1:51–54. According to the

3 In the Reply, Petitioner contends that certificates of correction have only a
prospective effect and that Patent Owner’s Certificate of Correction should
not be given effect in this proceeding because it was filed after the filing of
the Petition. Pet. Reply 18–19. Patent Owner disagrees, contending that the
Certificate of Correction should be given effect at least because it issued
prior to our institution of trial. PO Sur-Reply 2–6. Because the priority date
of the challenged claims is relevant only to asserted grounds not reached in
this Decision, we need not address the question of whether the Certificate of
Correction should be given effect in this proceeding. See infra § II.E.
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’717 patent, the invention is an improved linear actuator that simplifies
assembly to save production costs. Id. at 2:15–17.
Figures 1 and 4 of the ’717 patent are reproduced below.

Figures 1 and 4 of the ’717 patent, above, are perspective and side views,
respectively, illustrating an embodiment of linear actuator 16. Ex. 1001,
1:41–42, 1:46, 3:9–10. With reference to Figures 1 and 4 (as well as
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Figure 7, not reproduced here), the ’717 patent explains that electric drive
motor assembly 2 is connected to rigid arm 3, with threaded spindle 5
retained therein. Id. at 3:10–14. Spindle nut 6 is threaded onto spindle 5,
and pusher block 7 attaches to spindle nut 6. Id. at 3:14–16. The top of
pusher block 7 incorporates clevis 18 with apertures to receive clevis pin 19,
which is used to connect pusher block 7 to the lower end of linkage 8, and
the upper end of linkage 8 is attached to torque tube assembly 14 for
communicating with the adjustable furniture. Id. at 3:24–30, 3:58–59. The
’717 patent explains that using clevis pin 19 to attach linkage 8 and pusher
block 7 simplifies assembly of the actuator with adjustable furniture by
eliminating the need for additional brackets, threaded fasteners, and threaded
apertures in pusher block 7. Id. at 3:23–25, 3:31–35.
C. Illustrative Claims
Challenged claims 1 and 15 are independent, illustrative of the
challenged claims, and reproduced below:
1. A method of assembling a linear actuator for adjustable
furniture comprising:
assembling an arm assembly of the linear actuator, wherein
assembling the arm assembly comprises :
housing a threaded spindle within a rigid arm;
threadably engaging a spindle nut coupled to a pusher
block with the threaded spindle;
slidably engaging the pusher block with the rigid arm by
inserting the rigid arm within a rigid arm passage
defined by the pusher block such that the rigid arm
extends through the rigid arm passage; and
pivotally connecting a first end of a linkage within a
linkage channel of an attachment projection of the
pusher block, wherein the attachment projection
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extends outwardly from an outer surface of the pusher
block; and
connecting a drive assembly to the arm assembly, wherein
the drive assembly is configured to rotate the threaded
spindle within the rigid arm.
15. An arm assembly for a linear actuator for adjustable
furniture comprising:
a rigid arm;
a threaded spindle housed within the rigid arm;
a spindle nut threadably engaged with the threaded spindle;
and
a pusher block coupled with the spindle nut and comprising:
a rigid arm passage, wherein the rigid arm extends
through the rigid arm passage such that the pusher
block is slidable along the rigid arm; and
an attachment projection integrally formed with the
pusher block and extending outwardly from an outer
surface of the pusher block and defining a linkage
channel,
wherein the attachment projection is configured to receive
an end of a linkage within the linkage channel and
pivotally connect the linkage to the pusher block in the
linkage channel of the attachment projection.
Ex. 1001, 5:21–39, 6:49–67. Challenged claims 5–12 depend directly
or indirectly from independent claim 1, and challenged claims 18–20
depend directly or indirectly from independent claim 15. Id.
at 5:56–6:38, 7:12–32.
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D. Asserted Grounds
Petitioner asserts the following grounds of unpatentability:4
Claim(s) Challenged 35 U.S.C. § Reference(s)/Basis
1, 5–7, 10, 15, 18, 20 1025 Duhame6
1, 5, 6, 8, 11, 12, 15, 18, 19 103 Koch,7 Lipinski8
1, 5–8, 10–12, 15, 18–20 102 ’885 Publication9
Petitioner submits the testimony of Dr. Kimberly K. Cameron to support its
contentions. Ex. 1004; Ex. 1030. Patent Owner submits testimony of
Mr. James Bennett Babcock in support of its contentions with respect to
claim construction. Ex. 2008.

4 In the Petition, Petitioner also asserted two grounds with respect to
now-disclaimed claim 9. See Pet. 10, 39–46, 93–97. As stated in note 2
above, we treat claim 9 as though it never existed and do not further address
those grounds.
5 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
(2011), amended 35 U.S.C. §§ 102 and 103 effective March 16, 2013. The
amended statutory provisions apply to any patent application that contains or
contained at any time a claim to a claimed invention that has an effective
filing date that is on or after the effective date of the amendment. Because
the ’717 patent does not claim the benefit of any filing date earlier than the
August 5, 2013, filing date of the ’409 provisional application, we refer to
the AIA-amended versions of §§ 102 and 103.
6 Duhame et al., U.S. Patent No. 5,588,257, issued December 31, 1996
(Ex. 1013, “Duhame”).
7 Koch, U.S. Patent No. 5,927,144, issued July 27, 1999 (Ex. 1009, “Koch”).
8 Lipinski et al., U.S. Patent No. 4,512,208, issued April 23, 1985 (Ex. 1015,
“Lipinski”).
9 Kristen, U.S. Patent Application Publication No. 2015/0033885 A1,
published February 5, 2015 (Ex. 1007, “the ’885 Publication”).
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II. DISCUSSION
A. Principles of Law
In an inter partes review, the petitioner has the burden of proving
unpatentability by a preponderance of the evidence. 35 U.S.C. § 316(e).
That burden never shifts to the patentee. Dynamic Drinkware, LLC v. Nat’l
Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015).
A claim is anticipated under 35 U.S.C. § 102 “only if each and every
element as set forth in the claim is found, either expressly or inherently
described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union
Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). Moreover,
unless a reference discloses within the four corners of the
document not only all of the limitations claimed but also all of
the limitations arranged or combined in the same way as recited
in the claim, it cannot be said to prove prior invention of the
thing claimed and, thus, cannot anticipate under 35 U.S.C.
§ 102.
Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008);
accord In re Arkley, 455 F.2d 586, 587 (CCPA 1972).
A patent claim is unpatentable under 35 U.S.C. § 103 if the 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). The legal question of obviousness is resolved on the basis of
underlying factual determinations, including (1) the scope and content of the
prior art; (2) any differences between the claimed subject matter and the
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prior art; (3) the level of skill in the art;10 and (4) when in evidence,
objective evidence of obviousness or nonobviousness, i.e., secondary
considerations.11 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
One seeking to establish obviousness based on more than one reference also
must articulate sufficient reasoning with rational underpinnings to combine
teachings. See KSR, 550 U.S. at 418.
We analyze the asserted grounds with the principles stated above in
mind.
B. Claim Construction
For an inter partes review petition filed on or after November 13,
2018, we interpret claim terms 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).” See Changes to the Claim Construction Standard for Interpreting
Claims in Trial Proceedings Before the Patent Trial and Appeal Board,
83 Fed. Reg. 51,340, 51,340, 51,358 (Oct. 11, 2018) (amending 37 C.F.R.
§ 42.100(b) effective November 13, 2018) (now codified at 37 C.F.R.
§ 42.100(b) (2019)). In applying that standard, we are guided by the

10 Petitioner proposes that a person of ordinary skill in the art as of the
alleged or claimed priority date of the ’717 patent “would have had at least
an undergraduate degree in mechanical engineering, with at least one year of
experience with the design and development of rotary and linear motion
systems.” Pet. 14–15 (citing Ex. 1004 ¶¶ 15–17). Patent Owner does not
challenge this definition. Petitioner’s unopposed proposal is supported by
the testimony of Dr. Cameron and is consistent with both the ’717 patent
specification and the asserted prior art. Accordingly, we adopt the level of
ordinary skill as articulated by Petitioner.
11 The record does not include allegations or evidence of objective indicia of
obviousness or nonobviousness.
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principle that the words of a claim “are generally given their ordinary and
customary meaning,” as understood by a person of ordinary skill in the art in
question at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303,
1312–13 (Fed. Cir. 2005) (en banc) (citation omitted).
Only terms that are in controversy need to be construed, and then 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); 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). Further, any
special definition for a claim term must be set forth in the specification with
reasonable clarity, deliberateness, and precision. See In re Paulsen, 30 F.3d
1475, 1480 (Fed. Cir. 1994). In the absence of such a definition, limitations
are not to be read from the specification into the claims. See Hill-Rom
Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014).
1. Preambles of Claims 1 and 15
The preamble of claim 1 recites a “method of assembling a linear
actuator for adjustable furniture.” Ex. 1001, 5:21–22. The preamble of
claim 15 recites an “arm assembly for a linear actuator for adjustable
furniture.” Id. at 6:49–50. In view of arguments raised in the Petition and
Patent Owner’s Preliminary Response, we preliminarily determined in the
Institution Decision that the recitations of “assembling a linear actuator” in
the preamble of claim 1 and an “arm assembly for a linear actuator” in the
preamble of claim 15 should be treated as limitations of those claims but that
the additional recitation “for adjustable furniture” in the preamble of each
claim merely states the intended use for the purported invention, and, as
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such, is not a limitation. Inst. Dec. 8–14 (citing, e.g., Pet. 18, 47–48, 60–61,
72; PO Resp. 25–32).
In its Response, Patent Owner contends that, notwithstanding the
Board’s preliminary determination, “the preambles of claims 1 and 15
require construction to confirm that the preambles as a whole are limiting.”
PO Resp. 25. According to Patent Owner, “[t]he claims and the
specification confirm that [Patent Owner’s] invention is limited to linear
actuators ‘for adjustable furniture,’ and that the claims do not cover other
linear actuators or devices for converting rotary to linear motion.” Id. at 26.
Patent Owner argues, “the preamble of claim 1 . . . provides antecedent basis
for other limitations of the claim and its dependent claims,” citing, for
example, the recitation of “assembling an arm assembly of the linear
actuator” in the body of the claim and the recitation of “pivotally connecting
a dual angle bracket with a torque tube assembly configured to engage
adjustable furniture” in dependent claim 2. Id. at 27 (quoting Ex. 1001,
5:23, 5:41–43 (emphasis added)). Similarly, Patent Owner argues, “[t]he
preamble of claim 15 . . . provides antecedent basis for at least dependent
claim 18, which further recites and refers back to ‘the arm assembly.’” Id.
at 27–28 (quoting Ex. 1001, 7:22 (emphasis added)). Patent Owner
analogizes the preambles of claims 1 and 15 to those at issue in Deere & Co.
v. Bush Hog, LLC, 703 F.3d 1349 (Fed. Cir. 2012). In that case, Patent
Owner argues, the Federal Circuit held that the preamble term “rotary cutter
deck” was a limitation of the claim because, for example, (1) it was
“necessary to understand the subject matter encompassed by the claim”;
(2) “the specification repeatedly referred to the invention as ‘an improved
deck for a rotary cutter’ or a ‘rotary cutter deck,’ and explained ‘that the
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invention addresses a concern specific to rotary cutters’”; and (3) the
recitation of a rotary cutter deck informed the meaning of another limitation
in the body of the claim, “torsional stiffness,” insofar as the Court found that
“the claimed structure must possess sufficient stiffness to withstand the
torsional loads imposed by the operation of a rotary cutter.” Id. at 28–29
(quoting Deere, 703 F.3d at 1353, 1357–58). As in Deere, Patent Owner
contends, the preambles of claims 1 and 15 “inform[] one of skill in the art
as to the structure required by the claim.” Id. at 29. For example, Patent
Owner alleges, “that the claims are drawn to a ‘linear actuator for adjustable
furniture’ informs the meaning of the ‘rigid arm’ limitation in each of
claims 1 and 15,” as “[t]he claimed structure must possess sufficient rigidity
to withstand the loads imposed by the operation of a linear actuator for
adjustable furniture.” Id. at 29–30 (citing Ex. 2008 ¶ 47; Deere, 703 F.3d
at 1358). Similarly, Patent Owner contends, the preamble informs the
meaning of spindle nut as “an element . . . that mates with and circumscribes
the threaded spindle, and thus cannot disengage from the spindle under the
forces experienced in furniture applications.” Id. at 29–30 (citing Ex. 1001,
3:14–15; Ex. 2008 ¶¶ 28–36).
Patent Owner further contends that the Board improperly “parse[d]
the preamble into limiting and non-limiting portions in this case,” alleging
that “the linear actuator that forms the antecedent basis is ‘a linear actuator
for adjustable furniture,’” and “[t]he ‘adjustable furniture’ portion of the
preamble cannot be separated from the linear actuator that it describes and
that forms antecedent basis for other claim limitations.” Id. at 30–31 (citing
Frac Shack Inc. v. Fuel Automation Station, LLC, 300 F. Supp. 3d 1333,
1353 (D. Colo. 2018); Blue Calypso, Inc. v. Groupon, Inc., 93 F. Supp. 3d
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575, 594 (E.D. Tex. 2015)). Finally, Patent Owner contends that “the . . .
recitation ‘for adjustable furniture’ does not ‘merely state’ the intended use
of the claimed invention,” but that “the invention addresses a concern
specific to linear actuators ‘used within the area of adjustable furniture,’
noting that ‘prior art actuators are . . . difficult to mount on adjustable
furniture’” and “the preambles . . . inform one of skill in the art as to the
structure required by the claim, . . . just as in Deere.” Id. at 31–32.
Petitioner responds that it agrees with the Board’s determinations in
the Institution Decision that the preamble recitations of “assembling a linear
actuator” and an “arm assembly for a linear actuator” are limiting whereas
the further recitations of “for adjustable furniture” are not. Pet. Reply 2–3
(citing Inst. Dec. 12–13). Petitioner points out that, “[w]hile Patent Owner
correctly identifies a reference to ‘the linear actuator’ in claim 1’s body,
noticeably absent is the phrase ‘for adjustable furniture.’” Id. at 3.
Therefore, Petitioner contends, “while ‘the linear actuator’ might be
structurally relevant, the phrase ‘for adjustable furniture’ is not.” Id. at 3–4.
Moreover, Petitioner contends that the reference in dependent claim 18 to
“the arm assembly” of claim 15, cited by Patent Owner, “fails to recite ‘the
linear actuator’ or make any mention of furniture.” Id. at 4. Similarly,
Petitioner argues that the language of dependent claim 2 undermines Patent
Owner’s argument that claim 2’s recitation of a torque tube assembly
configured “to engage adjustable furniture” has an antecedent basis in
claim 1, because the phrase “‘adjustable furniture’ is introduced anew in
claim 2, i.e., there is no antecedent reference to ‘the adjustable furniture.’”
Id.
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Responding to Patent Owner’s arguments based on Deere, Petitioner
contends:
[W]hile it was important in Deere that the “specification
repeatedly refers to the ‘present invention’ as ‘an improved
deck for a rotary cutter,’ or a ‘rotary cutter deck’” (Deere, 703
F.3d at 1358), the specification here fails to link the purported
invention to “adjustable furniture.” Unlike Deere, neither the
title nor the figures of the ’717 patent mention or show
furniture. Cf. id. (noting in Deere that “title of the patent, the
summary of the invention, and every drawing describe the
invention as a deck for a rotary cutter.”).
And, even if the ’717 patent had any statements linking
the invention to “adjustable furniture,” which it does not, the
patent forbids limiting the claims based on such statements.
Ex-1001, 1:61–2:11 (noting that statements concerning the
invention “should be understood not to limit the subject matter
described herein or to limit the meaning or scope of the
patent claims below.”), 2:64–67, and 4:59–5:18.
Pet. Reply 5–6.
Responding to Patent Owner’s argument that meanings of the claim
terms “rigid arm” and “spindle nut” are informed by the preambles of
claims 1 and 15, Petitioner contends that argument is belied by the
specification and its own expert. Pet. Reply 6. According to Petitioner,
Rather than indicate that the “rigid arm” must be rigid enough
“such that is [sic] does not deform enough to affect its intended
purpose under expected loads” ([PO Resp. 30], the specification
mentions no rigidity requirements of the “rigid arm,” let alone
mentioning specific rigidity requirements for adjustable
furniture. Likewise, the specification does not mention a no-
disengagement requirement for the spindle nut, contrary to
Patent Owner’s contention (id.). Patent Owner’s expert even
explained that his understanding of “spindle nut” and “rigid arm
passage” was not informed by the preambles’ recitation of “for
adjustable furniture” because that is a mere statement of
intended use . . . .
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Id. at 6–7 (citing Ex. 1031, 197:2–17 (Babcock Deposition Tr.)).
Finally, Petitioner argues that the cases cited by Patent Owner in
support of its contention that it is not proper to parse the preamble into
limiting and non-limiting portions are easily distinguishable, and controlling
precedent from the Federal Circuit has held, for example, that a finding that
one phrase in a preamble can provide necessary structure “does not
necessarily convert the entire preamble into a limitation.” Pet. Reply 8–9
(emphasis omitted) (quoting TomTom, Inc. v. Adolph, 790 F.3d 1315, 1323
(Fed. Cir. 2015)) (citing Cochlear Bone Anchored Sols. AB v. Oticon Med.
AB, No. 2019-1105, 2020 WL 2503475, at *5 (Fed. Cir. May 15, 2020);
Frac Shack, 300 F. Supp. 3d at 1352; Koninklijke KPN N.V. v. Samsung
Elecs. Co., No. 2:14-cv-1165-JRG, 2016 WL 2610649, at *14 (E.D. Tex.
May 6, 2016)).
In the Sur-Reply, Patent Owner repeats its contention that “the recited
‘linear actuator for adjustable furniture’ provides antecedent basis for ‘the
linear actuator’ recited in the body of the claims,” arguing that “[t]here is no
linear actuator recited in the claims other than ‘a linear actuator for
adjustable furniture.” PO Sur-Reply 10. According to Patent Owner,
Petitioner misleads the Board in the Reply by incorrectly arguing that the
specification of the ’717 patent does not mention “adjustable furniture” as
part of the “present invention,” quoting disclosure that “[t]he present
invention relates to an improved linear actuator,” where “[t]he improved
linear actuator is designed to provide the moving force for adjustable
furniture, such as beds, chairs, or tables”; that “[t]he present disclosure
reveals a new design for a linear actuator that modifies the positioning in
adjustable furniture”; and that “[a] linear actuator is configured to provide
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the moving force for adjustable furniture.” PO Sur-Reply 8–9 (quoting
Ex. 1001, 2:12–15, 1:16–17, code (57)) (citing Pet. Reply 5 & n.3). Patent
Owner argues, “[t]he ‘invention’ both described and claimed in the
’717 Patent is a ‘linear actuator for adjustable furniture,’” and “[t]he Deere
case . . . is on all fours.” Id. at 9. Patent Owner further contends that “[a]
Federal Circuit decision issued after institution further confirms that a term
in the body of a claim that relies on the preamble for antecedent basis need
not re-recite the entirety of a phrase in the preamble for the entire phrase to
be limiting.” Id. at 10 (citing Shoes by Firebug LLC v. Stride Rite
Children’s Grp., LLC, 962 F.3d 1362, 1365, 1368 (Fed. Cir. 2020).
As explained by the Federal Circuit, preamble language “as a general
rule . . . is not treated as limiting” (Aspex Eyewear, Inc. v. Marchon
Eyewear, Inc., 672 F.3d 1335, 1347 (Fed. Cir. 2012) (citing Allen Eng’g
Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002))), and
“[w]hether to treat a preamble as a limitation is ‘determined on the facts of
each case in light of the overall form of the claim, and the invention as
described in the specification’” (Deere, 703 F.3d at 1357 (quoting Applied
Materials, Inc. v. Advanced Semiconductor Materials Am., Inc., 98 F.3d
1563, 1572–73 (Fed. Cir. 1996))). Further, it is a “‘well settled’
fundamental principle ‘that the recitation of a new intended use for an older
product does not make a claim to that old product patentable.’” Arctic Cat
Inc. v. GEP Power Prods., Inc., 919 F.3d 1320, 1328 (Fed. Cir. 2019)
(quoting In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997)).
Accordingly, the Federal Circuit has “long ruled that ‘a preamble is not
limiting, “where a patentee defines a structurally complete invention in the
claim body and uses the preamble only to state a purpose or intended use for
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the invention.”’” Id. (quoting Catalina Mktg. Int’l, Inc. v. Coolsavings.com,
Inc., 289 F.3d 801, 808 (Fed. Cir. 2002); Rowe v. Dror, 112 F.3d 473, 478
(Fed. Cir. 1997)). On the other hand, the court also has explained that “a
preamble is limiting if it is necessary to give life, meaning, and vitality to the
claim.” Deere, 703 F.3d at 1357 (internal quotation marks omitted). For
example, “when limitations in the body of the claim rely upon and derive
antecedent basis from the preamble, then the preamble may act as a
necessary component of the claimed invention.” Pacing Techs., LLC v.
Garmin Int’l, Inc., 778 F.3d 1021, 1024 (Fed. Cir. 2015) (quoting Eaton
Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003)).
With these principles in mind, and having fully considered the parties’
respective contentions, we maintain our prior determination that the
preamble recitations of “assembling a linear actuator” and an “arm assembly
for a linear actuator” provide antecedent basis for limitations in the bodies of
claims 1 and 15 and thus are limiting, whereas the further recitations of “for
adjustable furniture” merely state an intended use of the recited linear
actuator and do not constitute claim limitations. As we explained in the
Institution Decision, the recitations of adjustable furniture in the preambles
of claims 1 and 15 do not provide antecedent basis for any other claim
limitations. There is no recitation of furniture elsewhere either in claim 1 or
claim 15 or in any dependent claim other than claim 2 pointed to by Patent
Owner. See PO Resp. 27–28. And although dependent claim 2 recites the
phrase “adjustable furniture,” that recitation, read in context, does not
require any antecedent. In particular, the recitation in claim 2 of “a torque
tube assembly configured to engage adjustable furniture” (Ex. 1001,
5:41–43) appears to define characteristics of the torque tube assembly first
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recited in claim 2, rather than any limitations of the “linear actuator” recited
in the preamble of claim 1. Likewise, claim 18 introduces nothing about
“adjustable furniture.”
Indeed, the ’717 patent expressly contemplates applications for the
described linear actuator other than in adjustable furniture, stating, for
example, that “the improved linear actuator may be adapted for use in
machine tools and industrial machinery, in computer peripherals such as disk
drives and printers, in valves and dampers, and in many other places where
linear motion is required.” Ex. 1001, 2:18–23. We recognize Patent
Owner’s contention that the phrase “may be adapted for” in the quoted
sentence indicates that “[t]his portion of the specification is not describing
the invention, but rather other adaptations that may be possible.” PO
Sur-Reply 9 n.2. That argument is unpersuasive, however, not least because
the quoted disclosure is followed immediately by further statements that
“[v]arious implementations described in the present disclosure can include
additional systems, methods, features, and advantages, which cannot
necessarily be expressly disclosed herein but will be apparent to one of
ordinary skill in the art upon examination of the following detailed
description and accompanying drawings,” and that “[i]t is intended that all
such systems, methods, features, and advantages be included within the
present disclosure and protected by the accompanying claims.” Ex. 1001,
2:24–32 (emphasis added).
Further, we find no persuasive evidence in the record that the arm
assembly for a linear actuator as recited in claim 15 or the assembly method
as recited in claim 1 is particular to adjustable furniture such that a limitation
to adjustable furniture is necessary to give life, meaning, and vitality to any
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challenged claim. Cf. Deere, 703 F.3d at 1357. Notwithstanding Patent
Owner’s argument that “[t]he claimed structure must possess sufficient
rigidity to withstand the loads imposed by the operation of a linear actuator
for adjustable furniture (i.e., such that [it] does not deform enough to affect
its intended purpose under expected loads)” (PO Resp. 30 (citing Ex. 2008
¶ 47)), we do not find any reference to “rigidity” in the ’717 patent, and we
find no persuasive evidence of record that a linear actuator for adjustable
furniture requires any greater or lesser rigidity than linear actuators for other
applications, such as, for example, a garage door opener. Indeed, the
purported improvement of the claimed linear actuator is in “overcom[ing]
problems with the prior art by reducing the number of necessary parts and
simplifying assembly to save production costs”—not, for example, any
alleged improvement in rigidity. Ex. 1001, 2:15–17; see also id. at 1:46–54
(describing prior art linear actuators as “costly to manufacture,” “time-
consuming and complicated [to] . . . assembl[e],” and “difficult to mount”).
We acknowledge that Mr. Babcock testifies that it is important “that
the pusher block have excellent structural integrity, as well as a strong
structural relationship with the rigid arm housed within the pusher block,”
and that a configuration in which the cross section of the rigid arm is housed
within the pusher block “would promote a compact form factor of the linear
actuator, which is required for installation in adjustable furniture.” Ex. 2008
¶ 47. Mr. Babcock, however, does not testify or point to any evidence that
such “excellent” structural integrity, “strong” structural relationship, and
“compact” form factor is in any way uniquely directed to linear actuators for
use in adjustable furniture applications or that such characteristics would not
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be generally desirable characteristics of linear actuators irrespective of their
intended application.
We also agree with Petitioner that parsing of the preamble into
limiting and non-limiting portions is proper and that the Frac Shack and
Blue Calypso cases cited by Patent Owner are distinguishable for the reasons
argued by Petitioner. See Pet. Reply 8–9. In particular, as Petitioner points
out, the Federal Circuit held in TomTom that a conclusion that one phrase in
a preamble is necessary to provide structure “does not necessarily convert
the entire preamble into a limitation, particularly one that only states the
intended use of the invention.” TomTom, 790 F.3d at 1323; see also
Cochlear Bone Anchored Sols., 2020 WL 2503475, at *5 (explaining that a
“conclusion that some preamble language is limiting does not imply that
other preamble language, or the entire preamble, is limiting”).
Accordingly, consistent with our Institution Decision, we determine
that the recitations of “assembling a linear actuator” in claim 1 and an “arm
assembly for a linear actuator” in claim 15 are limitations of those claims but
that the remaining elements of claims 1 and 15 fully set forth a structurally
complete invention and that the additional recitations of “for adjustable
furniture” in the claims’ preambles merely state the intended use for the
purported invention, and, as such, are not limitations. See Catalina Mktg.,
289 F.3d at 808.
2. “spindle nut”
Claim 1 recites “threadably engaging a spindle nut coupled to a
pusher block with the threaded spindle.” Ex. 1001, 5:26–27. Claim 15
similarly recites “a spindle nut threadably engaged with [a] threaded
spindle.” Id. at 6:53–54.
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Patent Owner contends that “[a] person of ordinary skill in the art at
the time of the ’717 Patent would have understood the ordinary and
customary meaning of ‘spindle nut,’ as used in the ’717 Patent, to be ‘an
element with an internally threaded hole that mates with a threaded
spindle.’” PO Resp. 32 (citing Ex. 2008 ¶ 28). Patent Owner further
contends that “the specification of the ’717 Patent describes and illustrates
‘spindle nut 6’ as an element with a hole to receive and threadably engage
with ‘spindle 5.’” Id. at 32–33.
A version of Figure 3 of the ’717 patent, annotated by Patent Owner,
is reproduced below:

Patent Owner’s annotated Figure 3 above is a sectional view of a linear
actuator of the ’717 patent, with color coding and labels added by Patent
Owner. PO Resp. 33; Ex. 1001, 2:45. With reference to annotated Figure 3,
Patent Owner contends, “a person of ordinary skill in the art at the time of
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the invention of the ’717 Patent would understand that a full circumscribing
of the spindle (shown in green) by the ‘spindle nut’ (shown in orange) is
required by the ordinary and customary meaning of the term ‘spindle nut.’”
Id. at 32–33 (citing Ex. 1001, 3:14–16, 4:44–45, Figs. 3, 6, 10; Ex. 2008
¶¶ 23–26). In fact, Patent Owner contends, “a person of ordinary skill in the
art would understand that a full circumscribing of the ‘spindle’ by the
‘spindle nut’ in the ’717 Patent would be required due to the forces applied
on linear actuators for adjustable furniture.” Id. at 33 (citing Ex. 2008
¶¶ 34–35). Quoting Mr. Babcock, Patent Owner argues that a spindle nut is
required to ensure the nut “cannot accidentally or otherwise disengage from
the threaded spindle during the use of the linear actuator” and that a nut “is
internally or self-balanced, with regard to the forces that are created due to
the thread angle of trapezoidal threads present in spindle nuts and threaded
spindles for linear actuators,” meaning that, “for example, the separating
force generated by the threads on the right side of the nut is counterbalanced
by the separating force on the left side of the nut.” Id. at 33–34 (quoting
Ex. 2008 ¶ 35). Citing several dictionary definitions, Patent Owner further
contends that “[t]he extrinsic record is also consistent with the ordinary and
customary meaning of the term ‘nut’—one of the most common machine
elements in the world—as evidenced by both technical and general purpose
dictionaries,” and that “[e]ach of these dictionaries support the ordinary and
customary meaning of ‘nut’ as an element with an internally threaded hole
that engages the full circumference of a threaded bolt or screw.” Id. at 34
(citing Ex. 2002 ¶¶ 30–32; Exs. 2009–2016).
In the Reply, relying on the testimony of Dr. Cameron, Petitioner
responds that “a ‘spindle nut’ is nothing more than ‘a mechanical element
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with internal threads that engage with external threads of a spindle, where
the internal threads are on an inner or concave surface of the mechanical
element.’” Pet. Reply 9 (quoting Ex. 1030 ¶ 35). According to Petitioner,
“[t]his construction is consistent with the claims, the specification and
figures, as well as Patent Owner’s extrinsic evidence,” whereas “Patent
Owner’s claim construction is myopically focused, not on the plain and
ordinary meaning of the term ‘spindle nut,’ but on excluding one particular
type of nut—a half nut—from the claims’ scope.” Id. at 9–10. Petitioner
points out that the specification of the ’717 patent mentions “spindle nut”
only twice, each time indicating only that “spindle nut 6 is threaded onto the
spindle 5,” and never excluding any particular type of nut as the spindle nut.
Id. (quoting Ex. 1001, 3:14–16, 4:44–45). Even more significantly,
Petitioner contends that by reciting “threadably engaged” rather than the
specification’s narrower “threaded onto,” “the claims seek broader coverage
than any examples described in the specification.” Id. at 12.
Petitioner further contends that Patent Owner “violates the cardinal
rule of claim construction by importing a purported feature from the
preferred embodiment into the claims” in order to support its narrow
interpretation requiring the spindle nut to have a “hole.” Pet. Reply 10
(citing PO Resp. 32–33). But, Petitioner points out, even the intrinsic
evidence relied upon by Patent Owner does not show that purported feature,
absent Patent Owner’s annotations:
[T]he only intrinsic evidence relied on by Patent Owner to
support its narrow claim construction is Figures 3, 6, and 10.
[PO Resp.] 32–33. But, Patent Owner had to draw-in a
circular-shaped spindle nut over Figure 3, because the figures
do not delineate the boundaries of the spindle nut 6, let alone
show if the spindle nut is a full or half nut:
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[Id. at] 33 (PO’s annotated figure on left-hand side); Ex[.] 1001,
Figure 3 (original figure on right-hand side). Patent Owner’s
new annotation is one example of the depicted spindle nut 6,
but not the only example covered by the scope of the claims as
written. . . .
And crucially, by using the language “threadably
engaged” rather than the specification’s narrower “threaded
onto,” the claims seek broader coverage than any examples
described in the specification. Patent Owner avoids accounting
for this, and improperly seeks to limit the claimed “spindle nut”
to a single ambiguous example from the figures.
Id. at 10–12 (citing SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d
870, 875 (Fed. Cir. 2004); Electro Med. Sys. S.A. v. Cooper Life Sci., Inc.,
34 F.3d 1048, 1054 (Fed. Cir. 1994)). Petitioner further contends that Patent
Owner’s attempt to exclude half nuts is inconsistent with Mr. Babcock’s
testimony referring, for example, to a half nut as “a nut with less than
180 degrees of contact with [a] mating screw,” and also cannot be squared
with recognized mechanical uses of half nuts as spindle nuts. Id. at 11–12
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(quoting Ex. 1031, 18:18–20) (citing Ex. 1030 ¶ 32; Ex. 1031,
113:25–114:6, 114:8–14; Ex. 1038, 1:23–25, 1:61, 2:4).
Lastly, Petitioner contends that Patent Owner’s extrinsic evidence also
“countenances against including ‘hole’ in the construction,” because
(1) none of the three technical definitions of “nut” relied on by Patent Owner
and Mr. Babcock mentions the word “hole”; (2) Mr. Babcock admitted that
the word “hole” adds no clarity to the meaning of “spindle nut”; and (3) the
extrinsic “technical considerations” cited by Patent Owner require accepting
that the claims are limited to adjustable furniture, are based on an incomplete
understanding of the patent and claimed linear actuator, and contain
numerous flaws, as demonstrated by Dr. Cameron. Pet. Reply 12–14 (citing
PO Resp. 33–34; Ex. 1030 ¶¶ 38–44; Ex. 1031, 131:15–133:14,
136:13–143:17, 188:3–192:4).
In the Sur-Reply, Patent Owner contends that Petitioner’s construction
and supporting evidence are untimely because Petitioner took the position at
the outset of this proceeding that it was giving claim terms their plain and
ordinary meaning but now proposes a new construction that, according to
Patent Owner, “contradicts the plain and ordinary meaning.” PO Sur-
Reply 6–7 (citing Pet. 15; Pet. Reply 9, 14). Moreover, Patent Owner
asserts, Petitioner relies on a dictionary definition of “internal thread” as “a
screw thread on an inner or concave surface,” but the same dictionary also
defines “nut” as “a perforated block usually of metal that has an internal
screw thread and is used on a bolt or screw for tightening or holding
something,” or as “a piece of metal that has a hole though it so that it can be
screwed onto a bolt or screw.” Id. at 11 (quoting Ex. 2018, 1, 5 (emphasis
added)). Patent Owner contends that “Petitioner cannot maintain that a nut
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does not need a hole on the basis of a dictionary that itself defines ‘nut’ as
requiring a hole.” Id. at 11–12.
Having considered the parties’ respective contentions, we agree with
Petitioner that the claim term “spindle nut” is properly understood as “a
mechanical element with internal threads that engage with external threads
of a spindle, where the internal threads are on an inner or concave surface of
the mechanical element,” and that this construction reflects the plain and
ordinary meaning of that term. Pet. Reply 9; Pet. 15. The only requirement
the claims impose on the spindle nut is that it be capable of being threadably
engaged with the spindle. They do not require that there be a “hole” or
“perforated block” or that the spindle nut “engages the full circumference”
of the spindle, as alleged by Patent Owner, or even that the spindle nut be
capable of being “threaded onto” the spindle. See PO Resp. 34–35; PO
Sur-Reply 11–12; Ex. 1001, 3:14–16, 4:44–45. Further, despite Patent
Owner’s addition of an orange circular-shaped annotation to Figure 3 with
the label “spindle nut,” neither the figures nor the corresponding description
in the specification provides any indication of the shape of the spindle nut.
Absent Patent Owner’s annotations, Figure 3 (and identically Figure 6)
merely labels an undelineated portion of pusher block 7 adjacent to spindle 5
as “spindle nut 6.” As Petitioner points out, a spindle nut that
circumferentially surrounds a spindle is only one possible configuration, and
other configurations have been recognized in the art. Pet. Reply 11–12; see
also SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed.
Cir. 2004) (citing Electro Med. Sys. S.A. v. Cooper Life Sci., Inc., 34 F.3d
1048, 1054 (Fed. Cir. 1994) (“Though understanding the claim language
may be aided by the explanations contained in the written description, it is
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important not to import into a claim limitations that are not a part of the
claim. For example, a particular embodiment appearing in the written
description may not be read into a claim when the claim language is broader
than the embodiment.”).
Further, we disagree with Patent Owner’s contention that Petitioner’s
Reply violates the Board’s rules prohibiting submission of certain new
evidence or argument in a reply. See PO Sur-Reply 7–8 (citing Patent Trial
and Appeal Board Consolidated Trial Practice Guide 73 (Nov. 2019)
(“CTPG”), https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf).
The Trial Practice Guide expressly permits that “[a] petitioner may file a
reply to a patent owner response,” that “the Board will permit the petitioner,
in its reply brief, to address issues discussed in the institution decision,” and
that “[a] party also may submit rebuttal evidence in support of its reply.”
CTPG 73. The Federal Circuit supports certain uses of new argument and
evidence by petitioners as well. See, e.g., Chamberlain Grp., Inc. v. One
World Techs., Inc., 944 F.3d 919, 925 (Fed. Cir. 2019) (interpreting the
prohibition against presentation of new “arguments” in the Trial Practice
Guide as referring to new “issues” and explaining that “[p]arties are not
barred from elaborating on their arguments on issues previously raised”);
Anacor Pharm., Inc. v. Iancu, 889 F.3d 1372, 1380–81 (Fed. Cir. 2018)
(explaining that “the petitioner in an inter partes review proceeding may
introduce new evidence after the petition stage if the evidence is a legitimate
reply to evidence introduced by the patent owner, or if it is used ‘to
document the knowledge that skilled artisans would bring to bear in reading
the prior art identified as producing obviousness.’” (quoting Genzyme
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Therapeutic Prod. Ltd. P’ship v. Biomarin Pharm. Inc., 825 F.3d 1360, 1366
(Fed. Cir. 2016))).
In view of arguments raised by Patent Owner in its Preliminary
Response regarding the scope of the term “spindle nut,” we expressly stated
in our Institution Decision that the record was not sufficiently developed
with respect to the meaning of that term and that the parties would have the
opportunity during trial to present claim construction briefing to assist in our
final resolution of this proceeding. Inst. Dec. 35–37. The Response and
Reply were Patent Owner’s and Petitioner’s respective first opportunities to
provide such briefing under the Scheduling Order in this case (see Paper 13),
and the Reply was, moreover, Petitioner’s first and only opportunity to reply
to Patent Owner’s arguments. Because Petitioner’s arguments and evidence
are responsive to Patent Owner’s Response and to our Institution Decision,
we find the Reply complies with our Rules. Moreover, the Petition makes
clear that Petitioner contended from the outset that the plain and ordinary
meaning of “spindle nut” includes a half nut because Petitioner’s
unpatentability contentions expressly rely on a “half nut” taught by Duhame
as corresponding to the recited “spindle nut.” Pet. 50–52. For this
additional reason, we find that Petitioner has not materially changed its
position with respect to the scope of that term, “relied on an entirely new
rationale,” or otherwise to have raised any “new issue” as that phrase is used
in the Trial Practice Guide. See, e.g., CTPG 74–75 (providing examples of
“indications that a new issue has been raised in the reply).
Notwithstanding Patent Owner’s argument that it had no opportunity
to submit testimony from its own expert to address Petitioner’s proposed
constructions (see PO Sur-Reply 7), Patent Owner neither requested leave
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from the Board to submit additional evidence with its Sur-Reply nor filed a
motion to strike any material allegedly outside the proper scope of
Petitioner’s Reply. Patent Owner notably also did not either seek to depose
Dr. Cameron or move to exclude her reply declaration. See also CTPG 73
(providing that “[i]f a party submits a new expert declaration with its reply,
the opposing party may cross-examine the expert, move the exclude the
declaration, and comment on the declaration an cross-examination in any
sur-reply”); Genzyme, 825 F.3d at 1366 (“[T]he introduction of new
evidence in the course of the trial is to be expected in inter partes review trial
proceedings and, as long as the opposing party is given notice of the
evidence and an opportunity to respond to it, the introduction of such
evidence is perfectly permissible under the APA.”).
3. “the rigid arm extends through the rigid arm passage”
Claim 1 recites “slidably engaging the pusher block with the rigid arm
by inserting the rigid arm within a rigid arm passage defined by the pusher
block such that the rigid arm extends through the rigid arm passage.”
Ex. 1001, 5:28–31 (emphasis added). Claim 15 similarly recites “a pusher
block . . . comprising: a rigid arm passage, wherein the rigid arm extends
through the rigid arm passage such that the pusher block is slidable along
the rigid arm.” Id. at 6:55–59 (emphasis added).
Patent Owner contends that “[a] person of ordinary skill in the art at
the time of the invention of the ’717 Patent would . . . understand the
ordinary and customary meaning of the claim to require ‘an opening within
the pusher block configured to house the rigid arm, so as to allow the
cross-section of the full body of the rigid arm—not just a portion thereof—to
pass through.” PO Resp. 36 (citing Ex. 2008 ¶ 46). According to Patent
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Owner, the person of ordinary skill “would understand that this
configuration is ‘desirable for technical reasons due to the forces applied on
linear actuators for adjustable furniture.’” Id. at 37 (citing Ex. 2008 ¶ 47
(stating that “[t]he pusher block 7 provides a connection point for
communicating forces generated by the improved linear actuator 16 to the
adjustable furniture” and that “it is important that the pusher block have
excellent structural integrity, as well as a strong structural relationship with
the rigid arm housed within the pusher block”)). Quoting the testimony of
Mr. Babcock, Patent Owner further contends:
Furthermore, “in embodiments wherein the linkage 8 and
clevis 18 are to the side of the pusher block 7, such as those
illustrated in Figures 3 and 6, a moment or twisting force will
likely be created in the pusher block around the rigid arm. If
the pusher block did not house the full cross-section of the rigid
arm within an opening in the pusher block, the moment or
twisting force would increase the risk of separation of the
pusher block from the rigid arm and severely reduce the
capability of the linear actuator to perform as intended.”
Ex. 2008 at ¶ 47. “Additionally, a person of ordinary skill in
the art at the time of the invention of the ’717 Patent would
understand that this configuration—wherein the cross-section
of the rigid arm is housed within the pusher block—would
promote a compact form factor of the linear actuator, which is
required for installation in adjustable furniture.” Ex. 2008
at 47; see also Ex. 1009 at Abstract (noting same with respect
to “compact” form factor).
Id. at 37–38. Thus, Patent Owner contends, “in view of both the intrinsic
and extrinsic evidence,” a person of ordinary skill in the art at the time of the
invention “would understand the claimed ‘rigid arm passage’ defined by the
pusher block such that ‘the rigid arm extends through the rigid arm passage’
requires an opening within the pusher block ‘that allows the full cross-
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section of the rigid arm—not just a portion thereof—to pass through.’” Id.
at 38 (citing Ex. 2008 ¶ 48).
In the Reply, Petitioner responds that independent claims 1 and 15 do
not specify that a full cross section of the rigid arm passes through the
pusher block, but only that the rigid arm passage be “defined by” or
“comprised as part of” the recited pusher block; that “the rigid arm extends
though the rigid arm passage”; and that the pusher block has “an outer
surface.” Pet. Reply 14. Petitioner points out that, outside of the
independent claims, the term “passage” does not appear anywhere in the
’717 patent. Id. Petitioner further points out that dependent claims 3, 4,12
16, and 17 each recite that “the outer surface of the pusher block comprises a
top surface and at least one side surface extending downwardly from the top
surface.” Id. at 15. Under the doctrine of claim differentiation, Petitioner
contends, the pusher block of the independent claims thus must be broad
enough to include just top and side surfaces and need not circumferentially
surround the rigid arm. Id. (citing Ex. 1030 ¶ 48).
Petitioner further contends that, although the ’717 patent states that
pusher block 7 in certain embodiments straddles and slides up and down
rigid arm 3 as electric driver motor 2 turns spindle 5 (see Ex. 1001,
3:16–18), that does not require “the cross-section of the full body of the rigid
arm—not just a portion thereof—to pass through.” Id. at 15–16. Rather,
citing dictionary definitions of “passage” and “through,” as well as the

12 Although Petitioner refers to “claims 2 and 3” in the context of this
argument (Pet. Reply 14), claim 2 does not include the quoted limitation (see
Ex. 1001, 5:40–45). Claims 3 and 4 do, however (see id. at 5:46–55), and
we accordingly understand Petitioner’s reference to claim 2 to be a
typographical error.
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testimony of Dr. Cameron, Petitioner contends that a person of ordinary skill
in the art would instead have understood the recited “rigid arm passage” to
be “a path or channel through, over, or along which a rigid arm passes,” and
would have further understood that phrase “rigid arm extends through the
rigid arm passage” to mean that “a portion of the rigid arm extends from one
side of a channel or path of the pusher block to the other.” Id. at 16–17
(citing Ex. 1030 ¶¶ 46–47; Ex. 1041). According to Petitioner, these
constructions not only encompass the embodiment of Figure 3 of the
’717 patent, to which Patent Owner improperly seeks to import into the
claims, but also properly capture the “straddling” described in the
specification. Id. Finally, Petitioner contends that the extrinsic “technical
matters” cited by Patent Owner are unsupported by the intrinsic record,
require accepting the premise that the claims are limited to adjustable
furniture, are based on an incomplete understanding of the patent and its
claims, and contain numerous flaws, as demonstrated by Dr. Cameron. Id.
at 17–18 (citing PO Resp. 37–38; Ex. 1030 ¶¶ 48–49).
In the Sur-Reply, Patent Owner contends that Petitioner’s construction
and supporting evidence are untimely because Petitioner took the position at
the outset of this proceeding that it was giving claim terms their plain and
ordinary meaning but now proposes a new construction that, according to
Patent Owner, “broadens the term beyond its plain and ordinary meaning by
reading ‘a portion of’ into the claims.” PO Sur-Reply 6–8 (citing Pet. 15;
Pet. Reply 16–17; CTPG 73–74), 12. According to Patent Owner, “[t]he
claims could not be more clear that it is ‘the rigid arm’—not a portion
thereof—that must extend through the passage in the pusher block.” Id.
at 12. Still further, Patent Owner contends that Petitioner’s claim
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differentiation argument is flawed because the claims are “open-ended.” Id.
at 12–13. In particular, Patent Owner argues, “[t]he recitation that the
pusher block ‘comprises’ top and side surfaces does not mean that the
pusher block only has just those two surfaces,” but instead “[t]he claims
recite those surfaces not to encompass a pusher block that has only a top and
a side, but rather to specify the location of the attachment projections in
those claims.” Id. at 13.
Having considered the parties’ respective contentions, we agree with
Petitioner that the phrase “the rigid arm extends through the rigid arm
passage” does not require that the “full cross-section of the rigid arm”
necessarily must pass through the rigid arm passage, as Patent Owner
contends. Pet. Reply 14. We agree with Petitioner that this is made clear by
the recitation in dependent claims 3, 4, 16, and 17 of the pusher block
comprising “a top surface and at least one side surface extending
downwardly from the top surface.” Id. at 15; Ex. 1001, 5:46–48, 5:51–53,
7:1–3, 7:6–8. Although Patent Owner correctly states that this recitation
“does not mean that the pusher block only has just those two surfaces,” it
does mean that the pusher block is broadly defined to encompass a block
that only has just those two surfaces. Strictly speaking, this is not an issue
of claim differentiation because it does not require us to presume that the
dependent claims are narrower in scope than the independent claims.
Rather, it is an application of the “axiom[] that a dependent claim cannot be
broader than the claim from which it depends.” Alcon Research, Ltd. v.
Apotex Inc., 687 F.3d. 1362, 1367 (Fed. Cir. 2012). In other words, because
claims 16 and 17 encompass an arm assembly having a pusher block without
two side surfaces, we conclude that independent claim 15 from which they
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depend also does. We adopt Petitioner’s proposed construction of “rigid
arm passage” as “path or channel through, over, or along which a rigid arm
passes,” as well as its construction of the phrase “rigid arm extends through
the rigid arm passage” as requiring that “a portion of the rigid arm extends
from one side of a channel or path of the pusher block to the other.” See Pet.
Reply at 16–17. We agree with Petitioner that these constructions are
consistent with and encompass the embodiment shown in Figure 3, as well
as the description relied upon by Patent Owner that “pusher block 7
straddles the rigid arm 3.” See Pet. 15 (citing PO Resp. 35–36); Ex. 1001,
3:16–18, Fig. 3.
Finally, we again disagree with Patent Owner’s contention that
Petitioner’s arguments and evidence in the Reply are untimely, for the
reasons previously stated. See supra § II.B.2.
C. Anticipation of Claims 1, 5–7, 10, 15, 18, and 20 by Duhame
1. Brief Overview of Duhame
Duhame, titled “Garage Door Operator” (Ex. 1013, code (54)), is a
United States Patent that “relates to an apparatus for operating a garage door
and the like, and more particularly to a screw drive type of operator” (id.
at 1:6–8). An embodiment of a screw drive garage door operator is
illustrated in Figure 1 of Duhame, reproduced below.
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Figure 1 of Duhame, above, is a cross-sectional side view of an embodiment
for apparatus 10 for opening and closing overhead garage door 12. Id.
at 2:29–31, 62–64. Duhame explains that apparatus 10 “includes drive
assembly 18 (not show in FIG. 1), guide rail 20 for supporting drive
assembly 18 and traveler 22 coupled to garage door 12. Traveler 22 is
connected to door 12 by means of pivoting link 24 and door bracket 26.” Id.
at 3:6–10 (boldface omitted). “As the motor in housing 11 rotates,
traveler 22 is caused to be displaced along guide rail 20 between preset
limits of travel which correspond to fully opened and fully closed positions
of door 12.” Id. at 3:13–17 (boldface omitted).
A cross-sectional view of apparatus 10 is shown in Figure 3 of
Duhame, reproduced below.
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Figure 3 of Duhame, above, depicts guide rail 20 having triangular
channel 42, within which is drive screw 52 of drive assembly 18. Id.
at 3:36–38. Drive screw 52 “is driven in alternate directions by the motor in
housing 11 to cause bidirectional travel of traveler 22 along guide rail 20 for
the purpose of opening and closing door 12.” Id. at 3:38–41. More
particularly, traveler 22 includes half nut 70, which is threaded to mesh with
drive screw 52. Id. at 3:59–61. “During engagement between drive
screw 52 and half nut 70, half nut 70 is held against rotation whereby the
rotation of drive screw 52 causes nut 70 to be displaced linearly along guide
rail 20.” Id. at 4:15–18.
2. Analysis
We begin by considering each element recited by independent
claim 15, followed by the remaining claims challenged as anticipated by
Duhame.
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a. Independent claim 15
i. “An arm assembly for a linear actuator for adjustable
furniture”
The preamble of independent claim 15 recites “[a]n arm assembly for
a linear actuator for adjustable furniture.” Ex. 1001, 6:49–50. As discussed
in Section II.B.1 above, the parties dispute whether this preamble language
should be treated as a claim limitation. See Pet. 47–48; PO Resp. 25–32.
“Even if limiting,” Petitioner contends, “Duhame teaches the preamble,” by,
for example, “disclos[ing] a screw-drive type of operator or apparatus 10,
which is a linear actuator.” Id. at 47 (citing Ex. 1013, 1:5–8, 3:6–8, Fig. 1).
Patent Owner responds that “Duhame does not disclose a ‘linear actuator for
adjustable furniture,’” but instead “describes and illustrates a ‘door operator
for garage doors.’” PO Resp. 40; PO Sur-Reply 8. According to Patent
Owner, the issues Duhame is intended to address are “specific to
commercial apparatuses for opening and closing garage doors” and “do[] not
arise in the context of adjustable furniture.” PO Resp. 40. At most, Patent
Owner contends, “Duhame states its ‘invention relates to an apparatus for
operating a garage door and the like,’” and “[s]uch a non-descriptive,
generic statement is not an anticipatory disclosure of a ‘linear actuator for
adjustable furniture.’” Id. (emphasis omitted) (quoting Ex. 1013, 1:5–8).
For the reasons previously stated, we determine for purposes of this
Decision that the preamble phrase “arm assembly for a linear actuator” is
limiting, but that the further preamble recitation, “for adjustable furniture,”
merely states the intended use of the purported invention and is not a claim
limitation. See supra § II.B.1. Moreover, Patent Owner does not dispute
that Duhame discloses the recited “arm assembly for a linear actuator,” apart
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from arguing that Duhame does not disclose a linear actuator specifically
“for adjustable furniture,” and we are persuaded that Petitioner has shown by
a preponderance of the evidence that Duhame discloses this limitation. See
Pet. 47–48.13
ii. “a rigid arm”
Independent claim 15 recites “a rigid arm.” Ex. 1001, 6:51.
Petitioner has persuasively shown that Duhame’s guide rail 20 corresponds
to this limitation. Pet. 48–49 (citing Ex. 1013, 3:7–8, 3:13–16, 3:26–31,
Fig. 1; Ex. 1004 ¶ 174). Patent Owner does not challenge Petitioner’s
contentions with respect to this14 limitation. Petitioner’s assertions are
supported by the cited evidence (see id.), and we are persuaded that
Petitioner has shown by a preponderance of the evidence that the recited
rigid arm is disclosed by Duhame.

13 Petitioner also argues, for the first time in its Reply, that “[t]he plain and
ordinary meaning of ‘furniture’ includes components attached to a garage
door, such as those disclosed in Duhame,” and that, “[t]hus, even if the
Board finds that the recitation of ‘for adjustable furniture’ is limiting . . .
Duhame’s garage door operator is a linear actuator for adjustable furniture.”
Pet. Reply 22 (citing Ex. 1039; Ex. 1040). Patent Owner argues in its
Sur-Reply that the Board’s “rules forbid the new argument in reply.” PO
Sur-Reply 8 (citing CTPG 74). Because we conclude that the recitation “for
adjustable furniture” is not limiting, we do not reach either the merits or the
propriety of this alternative argument.
14 As discussed in more detail in Section II.C.2.a.v below, Patent Owner
does challenge Petitioner’s contention that Duhame’s guide rail 20 satisfies a
later limitation of claim 15, concerning the positioning of the recited rigid
arm relative to another claim element. See PO Resp. 46–49.
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iii. “a threaded spindle housed within the rigid arm”
Independent claim 15 recites “a threaded spindle housed within the
rigid arm.” Ex. 1001, 6:52. Petitioner has persuasively shown that
Duhame’s drive screw 52 corresponds to the recited threaded spindle and
that it is housed within the triangular channel 42 of guide rail 20, previously
identified as the recited rigid arm. Pet. 49–50 (citing Ex. 1013, 3:26–31,
3:36–38, Fig. 3; Ex. 1004 ¶ 175). Patent Owner does not challenge
Petitioner’s contentions with respect to this limitation. Petitioner’s
assertions are supported by the cited evidence (see id.), and we are
persuaded that Petitioner has shown by a preponderance of the evidence that
the recited threaded spindle is disclosed by Duhame.
iv. “a spindle nut threadably engaged with the threaded
spindle”
Independent claim 15 recites “a spindle nut threadably engaged with
the threaded spindle.” Ex. 1001, 6:53–54. Petitioner maps Duhame’s half
nut 70 to the recited “spindle nut,” pointing out, for example, that Duhame
discloses that “upper surface 72 of half nut 70 is threaded to mesh with the
threads of drive screw 52” and that “[d]uring engagement between drive
screw 52 and half nut 70, half nut 70 is held against rotation . . . .”
Pet. 50–51 (quoting Ex. 1013, 3:60–61, 4:15–18). To illustrate, Petitioner
provides the following annotated versions of Figures 3 and 10 of Duhame
and annotated enlarged version of a portion of Duhame’s Figure 9.
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In the annotated figures reproduced above, showing cross-sectional and
perspective views of Duhame’s apparatus and components thereof,
Petitioner highlights drive screw 52 in red, labeled as “threaded spindle,”
and half nut 70 in blue, labeled as “spindle nut.” Id. at 51–52; Ex. 1013,
2:36–37, 2:52–55.
Patent Owner responds that “Duhame’s ‘half nut’ is not a ‘spindle
nut’ as described and claimed in the ’717 Patent” because it “does not
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contain an internally threaded hole that mates with a threaded spindle.” PO
Resp. 42. According to Patent Owner, “instead of being a nut threaded onto
the drive screw, Duhame’s ‘half nut’ requires support by a bracket that holds
the half nut against the threads of the drive screw.” Id. (citing Ex. 1013,
3:62–4:9). “[W]ithout the support of the bracket,” Patent Owner contends,
“the half nut disengages the drive screw.” Id. at 42–43 (citing Ex. 1013,
4:10–14). According to Patent Owner, the “difference between Duhame and
the claims of the ’717 Patent is a significant and intentional one on the part
of Duhame.” Id. at 43. In particular, Patent Owner argues, “Duhame
specifically uses a ‘half nut’ with threads on an upper surface of the block in
order to enable an emergency release for Duhame’s garage door operator.”
Id. (citing Ex. 1013, 4:10–24). According to Patent Owner, “[i]f Duhame
were to use a nut instead of a half nut, the garage door operator could not
perform its emergency release function—because the nut could not be
disengaged like the ‘half nut’ of Duhame,” and, “on the other hand, if a
linear actuator for adjustable furniture were to use a ‘half nut’ instead of a
nut, any disengagement of the half nut from the spindle would cause the
linear actuator to stop working and could cause a catastrophic failure and
serious injury to anyone using the furniture.” Id. (citing Ex. 2008 ¶ 35).
Patent Owner further contends that a person of ordinary skill in the art
would understand that “nuts” and “half nuts” are “distinctly different
machine elements with different uses, including distinct advantages for
each.” Id. at 44 (quoting Ex. 2008 ¶ 40). For example, Patent Owner
argues, a nut cannot disengage from a threaded member such as a bolt or
screw without being completely unscrewed, whereas a half nut is
intentionally designed to freely disengage with a bolt or screw. Id. at 44–45
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(citing Ex. 2008 ¶¶ 40–41). Patent Owner contends that the specification of
the ’717 patent “demonstrates a design in which a ‘nut’—not a half nut or
other portion of a nut—is required to achieve the purpose of the linear
actuator.” Id. at 45 (citing Ex. 2008 ¶ 42).
In its Reply, Petitioner responds that Patent Owner’s arguments are
based on an incorrect claim construction and that, under the proper
construction, the evidence establishes that Duhame anticipates claims 1, 5–7,
10, 15, 18, and 20. Pet. Reply 19–20 (citing Ex. 1013, Figs. 3, 9, 10;
Ex. 1030 ¶¶ 61, 64–69). Petitioner contends that Duhame’s half nut is a
spindle nut, as that term is properly construed, consistent with other
recognized mechanical uses of half nuts as spindle nuts in the prior art. Id.
at 11–12. Petitioner points out that U.S. Patent No. 3,498,152 to Gerner
(Ex. 1038), for example, disclosed an invention “relat[ing] to a backlash-free
adjustable spindle nut for machine-tool carriages and slides, using a half-nut
half-embracing the spindle” and interchangeably referred to “half-nuts 5”
and “spindle nut 5.” Pet. Reply 12 (quoting Ex. 1038, 1:23–25, 1:61, 2:4)
(citing Ex. 1030 ¶ 32).
In the Sur-Reply, Patent Owner argues again that Duhame does not
disclose a “spindle nut,” based on its claim construction positions that a
spindle nut must have an internally threaded hole, not merely threads on a
concave surface, and that, under the ordinary and customary meaning of the
term, “a half-nut is less than a nut and is a different machine element that
would not be suitable for linear actuators for adjustable furniture.” PO
Sur-Reply 11–12 (citing PO Resp. 32–35, 41–45; Ex. 1030 ¶ 35; Ex. 1031,
222:6–223:12; Pet. Reply 9; Ex. 2009; Ex. 2018).
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Having considered the parties’ arguments and the full record, we are
persuaded by Petitioner’s arguments and evidence that Duhame’s half nut 70
is a “spindle nut” as that term is properly construed and that half nut 70 is
“threadably engaged” with the threaded spindle (i.e., drive screw 52). As
explained in Section II.B.2 above, we disagree with Patent Owner’s
contentions that a spindle nut necessarily must have a hole that fully
circumscribes the recited spindle. We are not persuaded to the contrary by
Patent Owner’s contentions that, for example, the potential for
disengagement of a half nut from the spindle is a “significant and material
difference between Duhame and the claims of the ’717 Patent” that “could
cause a catastrophic failure and serious injury to anyone using the furniture.”
PO Resp. 43. As an initial matter, we find no persuasive evidence in the
record that disengagement of adjustable furniture poses a materially or
significantly greater risk of “catastrophic failure and serious injury” than
would the failure of the garage door operator described by Duhame, or even
that there is a risk of unintentional disengagement. See Tr. 33:20–34:7
(Petitioner arguing that a falling garage door would cause more damage than
a falling chair); see also Ex. 1013, 4:7–9 (Duhame disclosing that bracket 28
engages threads 72 of half nut 70 to engage drive screw 52); Ex. 1030 ¶ 42
(Dr. Cameron testifying that “components besides the spindle nut are used to
structurally support the spindle in the patent, which would mitigate any
limited concerns of a disengaging spindle”). Moreover, Petitioner has
adduced evidence that half nuts have, in fact, been long-recognized as
spindle nuts in linear actuators, and, indeed, that Duhame’s half nut is itself
a spindle nut that is threadably engaged with a threaded spindle (i.e., drive
screw 52) in a linear actuator. See Pet. Reply 11–12 (citing Ex. 1038,
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1:23–25, 1:61, 2:4; Ex. 1030 ¶ 32); Pet. 50–52 (citing, e.g., Ex. 1013,
3:60–61 (describing upper surface 72 of half nut 70 as being “threaded” to
mesh with the threads of drive screw 52), 4:15–18 (referring to
“engagement” between drive screw 52 and half nut 70, such that “rotation of
drive screw 52 causes nut 70 to be displaced linearly along guide rail 20”);
Ex. 1004 ¶ 176).
Accordingly, we conclude that Petitioner has shown by a
preponderance of the evidence that Duhame discloses “a spindle nut
threadably engaged with the threaded spindle,” as recited in claim 15.
v. “a pusher block coupled with the spindle nut and
comprising: a rigid arm passage, wherein the rigid arm
extends through the rigid arm passage such that the pusher
block is slidable along the rigid arm; and . . .”
Independent claim 15 recites “a pusher block coupled with the spindle
nut and comprising: a rigid arm passage, wherein the rigid arm extends
through the rigid arm passage such that the pusher block is slidable along the
rigid arm . . . .” Ex. 1001, 6:55–59. Petitioner maps Duhame’s traveler 22
to this limitation, arguing that the recited coupling of the pusher block with
the spindle nut is shown in various figures of Duhame and also disclosed by
Duhame’s disclosure that half nut 70 is connected to traveler 22 and fits
within a seat defined by the walls of cavity 68 thereof. Pet. 52–54 (citing
Ex. 1013, 3:6–8, 3:58–60, 4:18–21, Figs. 3, 9; Ex. 1004 ¶ 177). Petitioner
further contends that Duhame “discloses a passage . . . through which the
rigid arm extends,” defined by L shaped extensions 64 and 66 and flanges 60
and 62 running along the length of traveler 22, as shown in cross section in
Petitioner’s annotated version of Duhame’s Figure 3, reproduced below. Id.
at 54–55 (citing Ex. 1013, 3:32–33, 3:46–57).
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In the annotated figure reproduced above, Petitioner highlights traveler 22 in
purple, labeled as “pusher block”; guide rail 20 in yellow, labeled as “rigid
arm”; and portions of the surfaces of L shaped extensions 64 and 66 and
flanges 60 and 62 in red, labeled as “rigid arm passage.” Id. at 54–55. With
reference to the annotated Figure, Petitioner contends that a person having
ordinary skill in the art would have understood that the passage shown in red
corresponds to the claims rigid arm passage. Id. at 55 (citing Ex. 1004
¶ 178). Petitioner further argues that “the body of traveler 22 slides along
the rigid arm within the passage,” quoting disclosure in Duhame that “L
shaped extensions 64, 66 each have an inner surface which rests on, i.e.,
supported by flanges 48 as traveler 22 moves along guide rail 20.” Id. at 54
(emphasis omitted) (quoting Ex. 1013, 3:49–51).
Patent Owner responds that Duhame does not disclose either a “rigid
arm passage” or “a rigid arm that extends ‘through’ the rigid am passage as
described and claimed in the ’717 Patent.” PO Resp. 46. In particular,
according to Patent Owner, Duhame’s traveler 22 “does not include []or
otherwise form a ‘rigid arm passage’—a defined opening within the pusher
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block configured to house the rigid arm,” but “[i]nstead . . . forms only two
separate L-shaped extensions 64, 66.” Id. at 47. Moreover, Patent Owner
argues, “the body of guide rail 20 of Duhame does not ‘extend through’ a
‘rigid arm passage’ in traveler 22, as required by the challenged claims,” but
instead “sits on top of traveler 22 (as opposed to being housed within), and
traveler 22 simply rests on two separate flanges 48 of the guide rail 20.” Id.
at 47–48. Accordingly, Patent Owner contends, “[t]he interface of the
purposed pusher block of Duhame (traveler 22) and purported rigid arm of
Duhame (guide rail 20) thus does not disclose the ‘rigid arm passage’ of the
challenged claims.” Id. at 48. Additionally, Patent Owner contends, “a
person of ordinary skill in the art at the time of the invention of the ’717
Patent would understand that the claimed configuration in which ‘the rigid
arm extends through the rigid arm passage’ would promote a compact form
factor of the linear actuator, which is required for installation in adjustable
furniture,” whereas “the configuration of the purposed pusher block of
Duhame (traveler 22) and purported rigid arm of Duhame (guide rail 20) is
far from compact.” Id. at 48–49 (citing Ex. 2008 ¶ 47; Ex. 1009, code (57);
Ex. 1013, Fig. 3).
We are persuaded that Petitioner has shown by a preponderance of the
evidence that Duhame discloses this limitation under the construction of
“rigid arm passage,” adopted above. See supra § II.B.3. In particular, we
are persuaded that flanges 60, 62 and L shaped extensions 64, 66 of
Duhame’s traveler 22 (i.e., the recited pusher block) together define rigid
arm passages through and along which flanges 48 of guide rail 20 (the
recited rigid arm) pass and extend, such that traveler 22 is slidable along
guide rail 20. Pet. 54–55. Notwithstanding Patent Owner’s contentions, we
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find no recitation in claim 15 requiring that the “body” of the rigid arm must
extend through the passage (see PO Resp. 47–48), nor do we find any
recitation requiring the recited linear actuator to have a “compact form
factor” (see id. at 48–49).
vi. “an attachment projection integrally formed with the
pusher block and extending outwardly from an outer
surface of the pusher block and defining a linkage
channel,” “wherein the attachment projection is configured
to receive an end of a linkage within the linkage channel
and pivotally connect the linkage to the pusher block in the
linkage channel of the attachment projection”
Independent claim 15 lastly recites that the pusher block further
comprises “an attachment projection integrally formed with the pusher block
and extending outwardly from an outer surface of the pusher block and
defining a linkage channel,” “wherein the attachment projection is
configured to receive an end of a linkage within the linkage channel and
pivotally connect the linkage to the pusher block in the linkage channel of
the attachment projection.” Ex. 1001, 6:60–67. Petitioner asserts that
Duhame teaches this limitation by virtue of its disclosure of hanging
portion 82 of traveler 22. Pet. 56. A version of Duhame’s Figure 9,
annotated by Petitioner, is reproduced below.
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Figure 9 of Duhame is a perspective view of traveler 22 shown in Duhame’s
Figure 1. Ex. 1013, 2:52–53. In the annotated version of Figure 9
reproduced above, Petitioner highlights traveler 22 in purple, labeled as
“pusher block”; hanging portion 82 in blue, labeled as “attachment
projection”; channel 8015 in hanging portion 82 in red, labeled as “linkage
channel”; and hole 89 in hanging portion 82 and unthreaded bolt 85 in
orange, labeled as “pivotally connect.” Pet. 59. With reference to the
illustration in annotated Figure 9, as well as Figures 1 and 3 of Duhame
previously reproduced, Petitioner contends that hanging portion 82 is
integrally formed with the body of traveler 22, extends outwardly therefrom,
and defines a linkage channel (channel 80) configured to receive an end of a
linkage (pivoting link 24) and to pivotally connect that linkage to traveler 22

15 We note that although the reference numeral 80 does not expressly appear
in Figure 9, the same channel is shown in a different view in Figure 3 of
Duhame with that numeral associated with it. Ex. 1001, Fig. 3; see also id.
at 3:65–66 (“Manual bracket 28 is disposed in channel 80 of hanging
portion 82 of traveler 22 . . . .”).
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(the pusher block) using unthreaded bolt 85. Pet. 56–60 (citing Ex. 1013,
3:8–10, 3:64–66, 5:7–10, Figs. 1, 3, 9; Ex. 1004 ¶¶ 179–186). Patent Owner
does not challenge Petitioner’s contentions with respect to this limitation in
its Response. Petitioner’s assertions are supported by the cited evidence (see
id.), and we are persuaded that Petitioner has shown by a preponderance of
the evidence that it is disclosed by Duhame.
b. Independent Claim 1
Independent claim 1 recites “[a] method of assembly a linear actuator
for adjustable furniture” that includes (i) a step of “assembling an arm
assembly of the linear actuator,” where the arm assembly includes elements
substantially similar to those recited in independent claim 15, discussed
above, and (ii) a step of “connecting a drive assembly to the arm assembly,
wherein the drive assembly is configured to rotate the threaded spindle
within the rigid arm.” Id. at 5:21–39. Petitioner asserts that, except for the
“connecting” step, claim 1 recites elements that are analogous in scope to the
elements of claim 15 and are disclosed by Duhame for the same reasons as
that claim. Pet. 61. With regard specifically to the connecting step,
Petitioner raises two arguments. First, Petitioner contends, Figure 1 of
Duhame, like Figure 1 of the ’717 Patent, discloses connecting a drive
assembly (i.e., motor housing 11 of Duhame) to its arm assembly, and
“Duhame discloses that motor housing 11 is connected to drive screw 52,”
“within guide rail 20.” Id. at 62–63 (citing Ex. 1013, 2:66–3:3, 6:43,
7:63–65, Fig. 1). Second, Petitioner contends that “Duhame discloses that
the motor in motor housing 11 is configured to rotate drive screw 52 (i.e.,
the claimed threaded spindle) within the guide rail 20 (i.e., the claimed rigid
arm),” and, therefore, Duhame discloses each limitation of the connecting
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step. Id. at 63–64 (citing Ex. 1013, 3:38–40, 4:15, 6:43; Ex. 1004
¶¶ 194–198).
Patent Owner relies on the same arguments for claim 1 as for the
corresponding recitations of claim 15 and does not raise any additional
arguments specific to claim 1. See PO Resp. 39–49; PO Sur-Reply 6–13.
For the same reasons as set forth for claim 15 (see supra § II.C.2.a), as well
as for the additional reasons presented by Petitioner with respect to the
connecting step of claim 1 (see Pet. 62–63), we conclude that Petitioner also
has shown by a preponderance of the evidence that Duhame discloses all
limitations of claim 1.
c. Dependent Claim 5
Claim 5 depends from claim 1 and further recites that (i) “the
attachment projection further defines a securing aperture extending
transversely to the linkage channel and in communication with the linkage
channel”; (ii) “the securing aperture extends along a securing aperture axis”;
(iii) “the threaded spindle extends along a threaded spindle axis”; and
(iv) “the securing aperture axis is vertically offset from the threaded spindle
axis.” Ex. 1001, 5:56–65. Petitioner maps hole 89 of hanging portion 82 of
Duhame’s traveler 22 to the recited “securing aperture,” arguing that the axis
along which hole 89 extends is vertically offset from the axis along which
Duhame’s drive screw 52 (i.e., the recited threaded spindle) extends.
Pet. 64–67 (citing Ex. 1013, 3:66, 5:5–10, Figs. 1, 9, 10; Ex. 1004
¶¶ 200–202. Patent Owner does not challenge Petitioner’s contentions.
Petitioner’s mapping is supported by the cited evidence (see id.), and we are
persuaded that Petitioner has shown by a preponderance of the evidence that
the limitations of claim 5 are disclosed by Duhame.
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d. Dependent Claims 6, 7, 18, and 20
Claim 6 depends from claim 5 and further recites “removably
positioning a fastener within the securing aperture such that the fastener is
engaged with the first end of the linkage positioned within the linkage
channel.” Ex. 1001, 5:66–6:2. Claim 18 depends from claim 15 and recites
essentially the same additional limitations as claims 5 and 6 taken together.
Id. at 7:12–26. Claims 7 and 20 depend from claims 6 and 18, respectively,
and add to the respective base claims the further limitation “wherein the
fastener is a clevis pin.” Id. at 6:3–4; 7:31–32.
Petitioner maps Duhame’s unthreaded bolt 85 to the fastener of
claims 6 and 18, arguing that it is a clevis pin, as recited in claims 7 and 20,
and that it is removably positioned within hole 89 (i.e., the recited securing
aperture) such that it is engaged with the first end of link 24 (the linkage)
positioned within channel 80 (the linkage channel). Pet. 67–71 (citing
Ex. 1013, 5:7–10, Figs. 1, 9; Ex. 1004 ¶¶ 204–206, 208–210, 215–218,
220–221). Patent Owner does not challenge Petitioner’s contentions with
respect to these limitations, and Petitioner’s contentions are supported by the
cited evidence. See id. Accordingly, we are persuaded that Petitioner has
shown by a preponderance of the evidence that the limitations of each of
claims 6, 7, 18, and 20 are disclosed by Duhame.
e. Dependent Claim 10
Claim 10 depends from claim 1 and further recites “attaching a holder
to an end of the rigid arm.” Ex. 1001, 6:25–26. Petitioner has persuasively
shown that Duhame’s header bracket 34, which according to Duhame
mounts guide rail 20 (i.e., the recited rigid arm) to wall 32 of a garage,
corresponds to the recited “holder.” Pet. 69–70 (citing Ex. 1013, 3:18–19,
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Fig. 1; Ex. 1004 ¶¶ 212–213). Patent Owner does not challenge Petitioner’s
contentions with respect to this limitation. Petitioner’s assertions are
supported by the cited evidence (see id.), and we are persuaded that
Petitioner has shown by a preponderance of the evidence that it is disclosed
by Duhame.
f. Conclusion Regarding Anticipation by Duhame
For the foregoing reasons, we conclude that Petitioner has shown by a
preponderance of the evidence that each of claims 1, 5–7, 10, 15, 18, and 20
is anticipated by Duhame.
D. Obviousness of Claims 1, 5, 6, 8, 11, 12, 15, 18, and 19 over Koch
and Lipinski
1. Brief Overview of Koch
Koch, titled “Drive for Adjusting Parts of Seating and Reclining
Furniture” (Ex. 1009, code (54)), is a United States Patent that “relates to a
drive for adjusting parts of seating and reclining furniture, preferably for
adjustable chairs” (id. at 1:4–6).
An embodiment of a drive for adjusting parts of seating and reclining
furniture is illustrated in Figure 1 of Koch, reproduced below.

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Figure 1 of Koch, above, depicts a drive including basic housing 1, motor 2,
guide sections 8 and 9, and rotating spindle 6, to which gearwheel 6 is
fastened. Id. at 4:13–15, 20–21, 24. Koch explains that “gearwheel 7
engages with worm 3 driven by motor 2, so that rotating worm 3 causes
spindle 6 to rotate.” Id. at 4:22–23 (boldface omitted). “Arranged between
guide sections 8 and 9 on spindle 6, which has a screw thread, is a nut 16
whose external profile corresponds to the internal profile of guide sections 8
and 9. Nut 16 can thus be moved backwards and forwards by spindle 6
without twisting (FIG. 4).” Id. at 4:53–57 (boldface omitted). Nut 16 is
connected to slider 18, which surrounds guide sections 8 and 9. Id.
at 4:58–59, 66–67.
An installation of the drive is shown in Figure 7 of Koch, reproduced
below.

Figure 7 of Koch, above, depicts basic housing 1 hinged to holding arm 26
by accepting device 25. Id. at 5:42–45. Koch explains that
fork 27 is fastened in pivoting fashion to slider 18, the fork in
turn being connected to an operating device (not illustrated) for
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adjustable parts of seating and reclining furniture via a shaft 28.
Fork 27 can be fastened to slider 18 by a fastening device 29—
via screws laterally screwed into slider 18, for example.
Id. at 5:45–50 (boldface omitted).
2. Brief Overview of Lipinski
Lipinski, titled “Mechanical Rotary-to-Linear Motion Conversion
Element” (Ex. 1015, code (54)), is a United States Patent that “relates to a
mechanical element which converts rotary motion, applied to a spindle, to
linear motion, by sensing travel of a spindle nut on the spindle” (id.
at 1:6–8).
An embodiment of a rotary-to-linear motion conversion element is
shown in Figure 1 of Lipinski, reproduced below.

Figure 1 of Lipinski, above, depicts elongated housing 1 and, located
therein, a spindle drive having central spindle 4 and spindle nuts 5 and 6. Id.
at 2:63–67.
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A cross-section view of Lipinski’s rotary-to-linear motion conversion
element is shown in Figure 2, reproduced below.

Figure 2 of Lipinski, above, depicts web-shaped portion 13 of force transfer
element 14 extending through longitudinal slit 12 of housing 1 and merging
with cylindrical element 15 that surrounds spindle 4 inside housing 1. Id.
at 3:16–21. Guide yolk 16 is secured to web-shaped portion 13 of force
transfer element 14 outside of housing 1 and connects to coupling
member 16 via screw 18. Id. at 3:28–30. Rotation of spindle 4 moves
spindle nuts 5 and 6 in an axial direction, which, thereby, shifts transfer
element 14 axially. Id. at 3:49–51, 4:56–58.
3. Analysis
a. Independent claims 1 and 15
Petitioner asserts that claims 1, 5, 6, 8, 11, 12, 15, 18, and 19 are
unpatentable over Koch and Lipinski. Pet. 71–92. Petitioner relies on Koch
as teaching all limitations of independent claims 1 and 15, with the
exception of the step of “pivotally connecting a first end of a linkage within
a linkage channel of an attachment projection of the pusher block, wherein
the attachment projection extends outwardly from an outer surface of the
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pusher block” recited in claim 1 and the similar recitation “wherein the
attachment projection is configured to receive an end of a linkage within the
linkage channel and pivotally connect the linkage to the pusher block in the
linkage channel of the attachment projection” in claim 15. Pet. 72–82,
90–91. With respect to those specific limitations, Petitioner relies on the
combination of Koch with Lipinski. Id. at 77–80. A version of Figure 9 of
Koch, annotated by Petitioner, is reproduced below.

Figure 9 depicts a side view of a version of Koch’s drive with fork 27 hinged
to slider 18 via plate 30. Ex. 1009, 3:65–67, 5:56–60. In the annotated
version of Figure 9 reproduced above, Petitioner highlights Koch’s slider 18
in lavender, labeled as “pusher block”; fork 27 in green, labeled as
“linkage”; the location of fastening device 29 in red, labeled as “linkage
channel”; and plate 30 in blue, labeled as “attachment projection.” Pet. 77.
With reference to annotated Figure 9, Petitioner contends that Koch
discloses “pivotally connecting a first end” of fork 27 to slider 18 via
plate 30, but concedes that “Koch does not explicitly disclose that its
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attachment projection of the pusher block both extends outwardly from the
pusher block and defines a linkage channel.” Pet. 77–78 (citing Ex. 1009,
5:45–52; Ex. 1004 ¶ 232). Nonetheless, Petitioner contends, “Lipinski fills
this gap.” Id. at 78 (citing Ex. 1004 ¶ 233). A version of Figure 2 of
Lipinski, annotated by Petitioner, is reproduced below.

Figure 2 of Lipinski is a section view along a line II—II depicted in
Lipinski’s Figure 1. Ex. 1015, 2:57. In the annotated version of Figure 2
reproduced above, Petitioner highlights Lipinski’s guide yoke 16 mostly in
lavender, labeled as “pusher block,” with a portion thereof colored in blue
and labeled as “attachment projection” and another portion thereof colored
in red and labeled as “linkage channel”; coupling member 17 in green,
labeled as “linkage”; and screw 18 in brown. Pet. 78.
With reference to annotated Figure 2, Petitioner contends that Lipinski
“discloses a guide yoke 16 (i.e., the claimed pusher block, lavender) that has
an attachment projection (blue) extending outwardly therefrom and also
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defining a linkage channel (red) that is used to pivotally connect a first end
of a coupling member 17 (i.e., claimed linkage, green) with the pusher
block.” Pet. 78 (citing Ex. 1015, Abstract, 3:28–34, 4:33–36). Petitioner
further contends that Lipinski shows “it was known to include outwardly
extending attachment projections on a pusher block, which attachment
projections include a linkage channel,” and accordingly, Petitioner argues, a
person having ordinary skill in the art “would have found it a routine matter
to modify Koch in accordance with this known technique.” Id. at 79.
Petitioner concludes:
Therefore, Koch as modified by Lipinski discloses
“pivotally connecting a first end of a linkage [e.g., Koch’s
fork 27 (and Lipinski’s coupling member 17), green above]
within a linkage channel [e.g., Lipinski’s channel, red above] of
an attachment projection [e.g., Lipinski’s channel, red above] of
the pusher block [e.g., Lipinski’s guide yoke portion 16, purple
above] wherein the attachment projection extends outwardly
from an outer surface of the pusher block.” Ex-1004,
¶¶ 234-235.
Id. (alterations in original). Relying in part on the testimony of
Dr. Cameron, Petitioner further contends “[t]here was ample motivation to
make this change to Koch’s system,” including that (1) both references relate
to designs for linear actuators; (2) “modifying Koch’s system as discussed
above would have allowed for improved stability of the actuator and a
reduction in manufacturing cost, and Koch explicitly motivates a [person
having ordinary skill in the art] to seek to improve ‘mechanical stability’ and
to achieve ‘low-cost manufacture of the drive’”; and (3) “modifying Koch’s
slider 18 or plate 30 to form an outwardly-extending attachment projection
defining a linkage channel was a routine matter for the skilled person, and
would have been done with a reasonable expectation of success” and
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“without requiring any undue experimentation.” Id. at 79–80 (citing
Ex. 1004 ¶¶ 236–240; Ex. 1009, 1:1–2, 3:35–38, 4:62–67; Ex. 1015, 1:5–7,
4:2–5). Petitioner’s contentions are supported by Dr. Cameron based on the
same explanation of the rationale supporting the asserted combination
provided in the Petition. See Pet. 80 (citing Ex. 1004 ¶¶ 236–240).
Patent Owner raises two principal arguments in response to
Petitioner’s contentions. First, Patent Owner argues that “[n]either Koch nor
Lipinski teaches pivotally connecting a linkage within a linkage channel of
an attachment projection of a pusher block,” as recited in the challenged
independent claims. PO Resp. 50–54. Second, Patent Owner contends that
a person of ordinary skill in the art would not have combined the disclosures
of Koch and Lipinski. Id. at 54–61. We address these arguments in turn
below.
Versions of Koch’s Figures 7 and 8, annotated by Patent Owner, are
reproduced below.
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In the annotated figures reproduced above, depicting side and front views,
respectively, of a version of Koch’s drive with fork 27 coupled to slider 18,
Patent Owner highlights fastening devices 29 in blue, labeling them as
“screws.” PO Resp. 51; Ex. 1009, 3:61–64, 5:42–49. With reference to
annotated Figures 7 and 8, Patent Owner argues that, contrary to Petitioner’s
assertions, Koch does not teach “pivotally connecting a linkage within a
linkage channel,” but instead “teaches the old prior art method of screwing a
linkage to a pusher block to create a pivotal connection.” PO Resp. 50–51.
More specifically, according to Patent Owner, “Koch describes and depicts a
traditional linear actuator in which a linkage called a ‘fork 27’ is screwed to
a slider 18 (Fig. 7) or to a plate 30 attached to the slider 18 (Fig. 9),” and
“Koch describes connecting a ‘slider 18’ to an ‘operating device . . . for
adjustable parts of seating and reclining furniture’ via a ‘fork,’” where “[t]he
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fork is ‘fastened to slider 18 by a fastening device 29—via screws laterally
screwed into slider 18, for example,’ or ‘via a plate 30 screwed or welded to
the slider.’” Id. at 51 (citing Ex. 1009, 5:45–58, Figs. 7–13). According to
Patent Owner, however, “[t]he claims require pivotally connecting an end of
a linkage within a linkage channel of an attachment projection of the
pusher block,” which, Patent Owner contends, is “more than a simple pivotal
connection between a linkage and the pusher block.” Id. at 50.
Patent Owner also contends that “[t]he Petition includes an annotated
drawing that purports to label the screws of Koch as a ‘linkage channel,’”
but that “Koch does not disclose any linkage channel, such as a clevis, for
connecting a linkage to the slider.” PO Resp. 52. Moreover, Patent Owner
contends, “Lipinski also fails to teach pivotally connecting a linkage within
a linkage channel,” but instead “teaches an elongated force transfer
element 14 . . . that is fixed in place at both ends and unable to rotate upon
movement of the spindle nuts.” Id. Patent Owner illustrates this argument
with annotated versions of Figures 1 and 2 of Lipinski, reproduced below.

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In the annotated figures reproduced above, depicting a longitudinal sectional
view of Lipinski’s rotary-to-linear motion conversion element and a section
along a line thereof, Patent Owner highlights force transfer element 16 in
blue and screws 18 in red. PO Resp. 52; Ex. 1015, 2:55–57. With reference
to annotated Figures 1 and 2, Patent Owner argues:
The Petition states that the Lipinski device has an
attachment projection “defining a linkage channel . . . that is
used to pivotally connect a first end of a coupling member 17
(i.e., claimed linkage, . . .) with the pusher block.” Pet. at 78.
The Petition is again wrong. Lipinski explains that the force
transfer element (shown in blue) is attached at both ends to
“two holding fingers 37” by screws (shown in red). Ex. 1015
at 4:40–42. The force transfer element is also attached by a
series of screws in the transverse direction (also shown in red).
Ex. 1015, Figs. 1 and 2, 3:28–32. It is apparent from the
figures that the elongated force transfer element including the
coupling member 17 is fixed in place and unable to rotate.
Indeed, Lipinski expressly states that force transfer element 14
is “held securely and non-rotatably.” Ex. 1015 at 3:53–54
(emphasis added).
PO Resp. 53 (ellipses in original).
Patent Owner acknowledges that we preliminarily found in the
Institution Decision that Koch teaches “pivotally connecting” a first end of a
linkage to a pusher block and that Lipinski teaches an “attachment
projection” that defines a “linkage channel.” PO Resp. 53 (citing Inst.
Dec. 52). According to Patent Owner, however, “even if the Board
maintains these findings, neither reference teaches ‘pivotally connecting a
first end of a linkage within a linkage channel.’” Id. And, Patent Owner
contends, “[t]his is a single limitation recited by the claims—not two
independent limitations—and should not be parsed into separate elements to
be located independently in Koch and Lipinski.” Id.
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Patent Owner argues further that Petitioner fails to establish that a
person of ordinary skill in the art would have been motivated to combine the
teachings of Lipinski with Koch to arrive at the claimed invention. PO
Resp. 54. First, according to Patent Owner, Petitioner’s purported
motivations are conclusory, unsupported, and legally insufficient. Id. For
example, Patent Owner contends, the portions of Koch’s disclosure cited by
Petitioner in support of its argument suggest that Koch already provides the
specific benefits that Petitioner alleges would have motivated the
combination, and Petitioner’s argument that the proposed modification
would have been a simple process without requiring undue experimentation
is unsupported attorney argument. Id. at 54–57 (citing Pet. 79–80; Ex. 1009,
3:33–38, 4:62–69). Second, Patent Owner further contends Dr. Cameron’s
original declaration should not be given weight because it “parrots the
attorney argument in the Petition . . . nearly verbatim.” Id. at 57–58 (citing
Ex. 1004 ¶¶ 236–240). Third, Patent Owner contends, there is “no plausible
reason that a person of ordinary skill in the art would have been motivated to
modify the linear actuator of Koch in view of Lipinski—a patent issued in
1985, nearly 15 years before Koch, and nearly 30 years before the invention
of the ’717 Patent,” and “Petitioner’s argument otherwise is nothing more
than an example of impermissible hindsight.” Id. at 58. According to Patent
Owner, Koch is fundamentally different from Lipinski, and Lipinski “is an
example of the kind of drive that Koch explained cannot be used in
adjustable furniture.” Id. at 58–59. Moreover, Patent Owner argues,
modifying Koch with Lipinski would render Koch unsatisfactory for its
intended purpose. Id. at 60–61.
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In the Reply, Petitioner argues that Patent Owner mischaracterizes and
fails to rebut the Koch-Lipinski combination that was presented in the
Petition. Pet. Reply 23. First, Petitioner contends that, contrary to Patent
Owner’s contention, the Petition argued that Koch teaches pivotally
connecting a linkage within a linkage channel of an attachment projection.
Id. (citing Pet. 77). Moreover, according to Petitioner, “Patent Owner
misunderstands the location of Koch’s linkage channel, which is not ‘the
screws’ in Figure 9 [of Koch], but instead the space behind fastener 29 and
plate 30,” as labeled as “linkage channel” in Petitioner’s annotated version
of Figure 9, reproduced above. Id. at 23–24 (citing PO Resp. 52; Ex. 1030
¶¶ 76–77). Nevertheless, Petitioner explains, “because Koch ‘does not
explicitly disclose that its attachment projection of the pusher block both
extends outwardly from the pusher block and defines a linkage channel,’
due to Koch failing to explicitly depict a cross-sectional view of its linkage
channel,” Petitioner instead relied in the Petition on Lipinski’s disclosure of
an upwardly extending attachment projection. Id. at 24 (quoting
Pet. 79–80). Second, Petitioner contends, Patent Owner mischaracterizes
Koch’s Figure 9 as showing that linkage 27 is connected to plate 30 via
screws. Id. at 24. Rather, Petitioner points out, fastener 29 is depicted in
Koch as either a bolt (i.e., in Koch’s Figures 7 and 8) or an unthreaded pin
(in Koch’s Figures 9 and 10), and in either case, neither has threads on the
portion that engages with fork 27, allowing the fork to pivot in relation to
slider 18. Id. at 24–26. Third, Petitioner contends, Patent Owner’s
arguments (1) that Lipinski fails to teach pivotally connecting a linkage (PO
Resp. 52–54) and (2) that Koch would have been rendered unsatisfactory for
its intended purpose if Lipinski’s purportedly non-pivotal connection were
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incorporated (id. at 60–61) both are irrelevant, because “Koch supplies the
pivotally-connected linkage to the combination” and “the Petition only relied
on Lipinski as teaching that ‘it was known to include outwardly extending
attachment projections on a pusher block.” Id. at 26.
Responding to Patent Owner’s contention that a person of ordinary
skill in the art would not have been motivated to combine the teachings of
Koch and Lipinski, Petitioner argues that Koch expressly motivates
mechanical-stability improvements and lowering manufacturing costs and
that the proposed modification would have been simple and routine. Pet.
Reply 27 (citing Pet. 79–80). Regardless of whether Koch itself may have
also described certain other features to help improve mechanical stability
and lower manufacturing costs, Petitioner contends, Koch expressly
motivates a person of ordinary skill to try different ways of connecting the
linkage, and the proposed use of Lipinski’s upwardly-extending attachment
projection with Koch’s pusher block would have advanced these goals. Id.
at 27–28 (citing Ex. 1009, 5:51–62; Figs. 7–10; Ex. 1030 ¶¶ 78–82).
According to Petitioner, “Koch also recognizes shifting ‘the hinge point on
the slider backwards towards basic housing 1 or forwards’ ([Ex. 1009],
5:58–60 and 3:1–4), and using Lipinski’s upwardly-extending attachment
projection would have helped advantageously move Koch’s hinge point.”
Id. at 28 (citing Ex. 1030). Petitioner contends that, contrary to Patent
Owner’s assertion, Koch does not limit use of extrusion processes to guide
sections alone, but instead indicates that the “one-piece nut/slide
combination 16/18 or the individual parts can be manufactured by injection
moulding or extrusion.” Id. (emphasis omitted) (quoting Ex. 1009, 5:6–9).
According to Petitioner, “[i]t is the slider 18 (or its associated plate 30) that
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would have been modified in the proposed Koch-Lipinski combination, as
was explained in the Petition,” and, thus, “Koch plainly demonstrates that a
[person of ordinary skill in the art] knew of manufacturing techniques to
allow for adding Lipinski’s upwardly-extending attachment projection to
Koch.” Id. (citing Ex. 1030 ¶¶ 84–85). Finally, Petitioner argues that Patent
Owner’s position that Koch “disparages” drives like Lipinski’s is
demonstrably false because the drives mentioned in Koch are not the same
as Lipinski’s drive, and Patent Owner has not met the high bar set by the
Federal Circuit for a teaching away. Id. at 28–29 (citing PO Resp. 58–59;
Ex. 1030 ¶¶ 87–93).
In the Sur-Reply, Patent Owner repeats its argument that neither Koch
nor Lipinski discloses pivotally connecting a linkage within a linkage
channel (PO Sur-Reply 13–17) and further contends that Petitioner
impermissibly presents new arguments and evidence in its Reply (id.
at 17–22). In particular, Patent Owner argues that, notwithstanding
Petitioner’s Reply argument that “Koch teaches pivotally connecting a
linkage within a linkage channel of an attachment projection” (Pet.
Reply 23), “Petitioner previously conceded that Koch does not disclose this
limitation.” PO Sur-Reply 14 (citing Pet. 77–78). According to Patent
Owner, “Petitioner’s arguments with respect to Lipinski confirm Petitioner’s
admission that Koch failed to disclose both (1) an attachment projection of
the pusher block ‘extend[ing] outwardly from the pusher block,’ and (2) an
attachment projection of the pusher block ‘defin[ing] a linkage channel,’”
and “Petitioner’s shifting position regarding the purported ‘linkage channel’
of Koch is thus impermissible new argument.” Id. at 15 (citing Pet. 77–78;
CTPG 73).
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Patent Owner further contends that Petitioner’s annotated version of
Figure 9 in the Petition “labels ‘fastening device 29’ of Koch (e.g., ‘screws,’
Ex. 1009, at 5:49–50) as a ‘linkage channel,’ which is clearly incorrect,”
whereas “Petitioner newly argues in its Reply that ‘Koch’s linkage channel’
is not fastening device 29, ‘but instead the space behind fastener 29 and
plate 30.’” PO Sur-Reply 14–15 (citing Pet. 77–78; Pet. Reply 23–24).
According to Patent Owner, “this explanation and argument is wholly absent
from the Petition,” which, Patent Owner again contends, “conceded that
Koch does not disclose a linkage channel.” Id. at 15. Similarly, Patent
Owner alleges, “Petitioner’s argument that ‘the Petition only relied on
Lipinski as teaching that “it was known to include outwardly extending
attachment projections on a pusher block,” which was then added to Koch in
the asserted combination’ (Reply, at 26) is a misrepresentation of the
Petition,” because “Petitioner admitted in the Petition that Koch did not
disclose an attachment projection of a pusher block that (1) ‘extends
outwardly from the pusher block’ or (2) ‘defines a linkage channel.’” Id.
at 16 (citing Pet. 77–78).
Having considered the parties’ arguments and the full record, we are
persuaded by Petitioner’s arguments and evidence that the combination of
Koch and Lipinski teaches all limitations of independent claims 1 and 15. In
particular, Petitioner has persuasively shown that Koch teaches an arm
assembly for a linear actuator that includes a threaded spindle (i.e., Koch’s
spindle 9) housed within a rigid arm (guide sections 8, 9); a spindle nut
(nut 16) coupled to a pusher block (slider 18) and threadably engaged with
the spindle, where the pusher block defines a rigid arm passage (internal
contour of slider 18); a linkage (fork 27) pivotally connected to the pusher
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block within a linkage channel by way of an attachment projection
(plate 30); and a drive assembly (motor 2). Pet. 72–77, 80–82. Petitioner
has further persuasively shown that Lipinski teaches an attachment
projection extending outwardly from a pusher block (i.e., Lipinski’s guide
yoke 16) and that a person of ordinary skill would have been motivated to
modify Koch’s system to include an outwardly extending attachment
projection as taught by Lipinski. Id. at 77–80. We agree with Petitioner that
Patent Owner appears to have misapprehended Petitioner’s arguments with
respect to Koch’s teaching of “pivotally connecting a first end of a linkage
within a linkage channel.” See id. at 77–79; PO Resp. 50–52; Pet.
Reply 23–24; PO Sur-Reply 13–17. This is evident, for example, from
Patent Owner’s Sur-Reply contention that “Petitioner admitted in the
Petition that Koch did not disclose an attachment projection of a pusher
block that (1) ‘extends outwardly from the pusher block’ or (2) ‘defines a
linkage channel.’” PO Sur-Reply 16 (emphasis added) (citing Pet. 77–78).
Referring to the pages of the Petition cited by Patent Owner in support of
that contention, we find that Petitioner actually argued that “Koch does not
explicitly disclose that its attachment projection of the pusher block both
extends outwardly from the pusher block and defines a linkage channel.”
Pet. 77–78 (emphasis added). We understand from that statement, viewed in
context, that Petitioner meant that although Koch discloses a pusher block
having an attachment projection that defines a linkage channel, Koch does
not explicitly disclose that an attachment projection that extends outwardly
from the pusher block defines a linkage channel, and that it is that gap in
Koch’s teaching that Petitioner seeks to fill with the teachings of Lipinski.
See id. at 77–79. Our understanding is confirmed by the Reply. See, e.g.,
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Pet. Reply 23–24. By replacing the above-emphasized “both . . . and”
formulation in the quoted sentence from the Petition with the word “or,”
Patent Owner appears to suggest that Petitioner had conceded that Koch
does not disclose either an attachment projection that extends outwardly or a
linkage channel, thereby changing the meaning of Petitioner’s statement.
We also agree with Petitioner that Patent Owner appears to have
misapprehended Petitioner’s identification of the linkage channel in its
annotated version of Koch’s Figure 9. See Pet. 77–78; PO Resp. 51–52; Pet.
Reply 23–26; PO Sur-Reply 14. Annotated Figure 9, previously reproduced,
is reproduced again below for reference. Notwithstanding Patent Owner’s
contention that Petitioner identified “screw 29” or “fastening device 29” as a
linkage channel, we do not find such an identification in the Petition.
Rather, we understand Petitioner to have labeled as the “linkage channel” an
unnumbered channel into which fastening device 29 apparently is inserted.
This is apparent from Petitioner’s annotated Figure 9, previously reproduced
and reproduced again for reference below:

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In annotated Figure 9, above, Petitioner included annotations pointing to
Koch’s original reference numerals where Petitioner mapped the claim
elements to structures expressly numbered by Koch—in particular,
Petitioner has annotated reference numeral 18 as “Pusher block,” where
Petitioner maps Koch’s slider 18 to the pusher block of claims 1 and 15;
reference numeral 27 as “Linkage,” where Petitioner maps Koch’s fork 27 to
the recited linkage; and reference numeral 30 as “Attachment projection,”
where Petitioner maps Koch’s plate 30 to the recited attachment projection.
See Pet. 77. For the linkage channel, however, Petitioner does not annotate
reference numeral 29, corresponding to Koch’s fastening device 29, but
instead points directly to the unnumbered channel into which fastening
device 29 is inserted.
We have considered but are unpersuaded for similar reasons by Patent
Owner’s remaining contentions with respect to this ground. We are
persuaded that a person of ordinary skill in the art would have been
motivated to combine Koch and Lipinski as Petitioner proposes. Pet. 79–80.
Citing the testimony of Dr. Cameron, Petitioner argues that a person of
ordinary skill in the art would have been motivated by Koch to seek to
improved mechanical stability and to achieve low-cost manufacture of the
drive—both qualities cited by Koch—and that modifying Koch’s slider 18 to
form an outwardly-extending attachment projection as taught by Lipinski
would have been a routine matter for the skilled artisan person, and would
have been done with a reasonable expectation of success. Id. (citing
Ex. 1004 ¶¶ 238–239; Ex. 1009, 3:35–38, 4:62–67). Such a modification
would have been simple, according to Dr. Cameron, and would not have
required any undue experimentation. Ex. 1004 ¶ 239. Dr. Cameron’s
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testimony is credible, as it is logical and consistent with the evidence of
record.
We are not persuaded by Patent Owner’s contention that the proposed
combination of Koch and Lipinski would render Koch unsatisfactory for its
intended purpose because of Lipinski’s non-pivotal connection (PO
Resp. 60), for example, because we understand Petitioner to propose only to
incorporate Lipinski’s teaching of outwardly extending attachment
projections—and not its purportedly non-pivotal linkage—into Koch, given
Koch’s own teaching of a pivotally connected linkage. See Pet. 78–79;
accord Pet. Reply. 26. Similarly, we do not understand Petitioner and
Dr. Cameron to have impermissibly raised new issues or to have
“substantially modified” their original positions in the Reply and Reply
Declaration (see PO Sur-Reply 17–22), but rather to have elaborated on the
arguments first made in the Petition and opening Declaration in light of
Patent Owner’s arguments and issues addressed in the Institution Decision,
as permitted by the Board’s rules and controlling precedent. See, e.g.,
CTPG 73–74; Chamberlain, 944 F.3d at 925 (explaining that parties in an
inter partes review proceeding “are not barred from elaborating on their
arguments on issues previously raised”).
b. Dependent Claims 5, 6, and 18
Petitioner points out that, after adding Lipinski’s outwardly extending
attachment projection to the combined Koch-Lipinski system, the
combination would include an attachment projection that further defines a
securing aperture, as recited in claim 5, and that such securing aperture
would extend along an axis that is vertically offset from a threaded spindle
axis along which the threaded spindle extends. Pet. 83 (citing Ex. 1015,
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Figs. 1, 2; Ex. 1004 ¶¶ 246–247). Petitioner further contends that the
combination of Koch and Lipinski renders claims 6 and 18 obvious based on
Lipinski’s disclosure of screw 18 being positioned such that it is engaged
with a first end of coupling member 17 within the linkage channel, as shown
in Figure 2 of Lipinski. Id. at 84–85 (citing Ex. 1015, Fig. 2; Ex. 1004
¶¶ 250–251), 91 (citing Ex. 1004 ¶ 267). Patent Owner does not challenge
Petitioner’s contentions with respect to these limitations. Petitioner’s
contentions are supported by the cited evidence (see id. at 83–85, 91;
Ex. 1015, Figs. 1, 2; Ex. 1004 ¶¶ 246–247, 250–251, 267), and we are
persuaded that Petitioner has shown by a preponderance of the evidence that
the limitations of claims 5, 6, and 18 are taught by the combination of Koch
and Lipinski.
c. Dependent Claims 8 and 19
Claim 8 depends from claim 5 and further recites “wherein the
securing aperture axis is above the threaded spindle axis.” Ex. 1001, 6:5–6.
Claim 19 depends from claim 18 and further recites “wherein the securing
aperture axis extends transversely to the threaded spindle axis, and wherein
the securing aperture axis is above the threaded spindle axis.” Ex. 1001,
7:27–30. Petitioner persuasively demonstrates that the combination of Koch
and Lipinski renders the limitations of claims 8 and 19 obvious based on the
illustration in Lipinski’s Figures 1 and 2 of the securing aperture axis being
above the threaded spindle axis, as in claims 8 and 19, and extending
transversely thereto, as in claim 19. Pet. 85–86 (citing Ex. 1015, Figs. 1, 2;
Ex. 1004 ¶¶ 253–254), 91–92 (citing Ex. 1015, Figs. 1, 2; Ex. 1004
¶¶ 269–270). Patent Owner does not challenge Petitioner’s contentions with
respect to these limitation, and we are persuaded that Petitioner has shown
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by a preponderance of the evidence that they are taught by the combination
of Koch and Lipinski.
d. Dependent Claim 11
Claim 11 depends from claim 10 and further recites:
wherein the end of the rigid arm comprises a plurality of
fastener receiving channels, wherein the holder comprises a
plurality of apertures, and wherein attaching the holder to the
end of the rigid arm comprises:
aligning the plurality of fastener receiving channels with the
plurality of apertures; and
inserting fasteners through each of the aligned fastener
receiving channels and apertures.
Ex. 1001, 6:27–35. Petitioner maps end cap 19, shown in Figure 1 of Koch,
to the holder of claim 10, and contends that Koch teaches or suggests each of
the limitations of claim 11. Pet. 86–89 (citing Ex. 1009, 2:40–43, 5:9–11,
5:21–26, Figs. 1, 5–9; Ex. 1004 ¶¶ 256–260). Petitioner acknowledges that
Koch only shows one screwed connection in Figure 6, but contends that
Koch’s “text makes clear that there can be screwed connections (plural) 22
used to secure the end cap.” Id. at 88 (citing Ex. 1009, 2:40–43). Patent
Owner does not challenge Petitioner’s contentions with respect to these
limitations. Petitioner’s assertions are supported by the cited evidence (see
id. at 86–89; Ex. 1009, 2:40–43, 5:9–11, 5:21–26, Figs. 1, 5–9; Ex. 1004
¶¶ 256–260), and we are persuaded that Petitioner has shown by a
preponderance of the evidence that the limitations of claim 11 are taught by
the combination of Koch and Lipinski.
e. Dependent Claim 12
Claim 12 depends from claim 1 and further recites “attaching a cover
to the rigid arm such that the threaded spindle is between the rigid arm and
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the cover.” Ex. 1001, 6:36–38. Petitioner maps guide sections 8 and 9
shown in Figure 5 of Koch to the recited cover, arguing that Koch discloses
attaching guide sections 8 and 9 to the rigid arm such that spindle 6 is
between them, just as in Figure 1 of the ’717 patent. Pet. 89–90 (citing
Ex. 1009, code (57), 4:24–25, Figs. 1–10). Petitioner further contends that
Koch also discloses an additional cover in the form of a bellows and that
Koch’s threaded spindle 6 would have been between at least part of the
bellows and guide section 8. Id. at 90 (citing Ex. 1009, 5:34–38, claim 20;
Ex. 1004 ¶¶ 261–264). Patent Owner does not challenge Petitioner’s
contentions with respect to this limitation. Petitioner’s assertions are
supported by the cited evidence (see id. at 89–90; Ex. 1009, code (57),
4:24–25, claim 20, Figs. 1–10; Ex. 1004 ¶¶ 261–264), and we are persuaded
that Petitioner has shown by a preponderance of the evidence that it is taught
by the combination of Koch and Lipinski.
f. Conclusion Regarding Obviousness over Koch and Lipinski
Accordingly, for the foregoing reasons, we conclude that Petitioner
has shown by a preponderance of the evidence that each of claims 1, 5, 6, 8,
11, 12, 15, 18, and 19 is unpatentable over the combination of Koch and
Lipinski.
E. Anticipation of Claims 1, 5–8, 10–12, 15, and 18–20 by the
’885 Publication
Petitioner additionally asserts that claims 1, 5–8, 10–12, 15, and
18–20 are anticipated by the ’885 Publication. Pet. 17–38. Because we
conclude that the challenged claims are unpatentable on other grounds (see
supra §§ II.C, II.D), we do not reach this additional ground. See SAS Inst.
Inc. v. Iancu, 138 S. Ct. 1348, 1359 (2018) (holding a petitioner “is entitled
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to a final written decision addressing all of the claims it has challenged”);
Boston Sci. Scimed, Inc. v. Cook Grp. Inc., 809 F. App’x 984, 990 (Fed.
Cir. 2020) (non-precedential) (recognizing that the “Board need not address
issues that are not necessary to the resolution of the proceeding” and, thus,
agreeing that the Board has “discretion to decline to decide additional
instituted grounds once the petitioner has prevailed on all its challenged
claims”).
F. Petitioner’s Motion to Exclude Evidence
Petitioner moves to exclude certain evidence relied on by Patent
Owner in the Sur-Reply, specifically, certain redirect testimony of
Mr. Babcock, which Petitioner alleges to have been elicited by leading
questions, and Exhibit 2018, which Petitioner alleges to be new evidence
filed with the Sur-Reply without prior authorization from the Board.
Paper 29 (Motion to Exclude Evidence). We dismiss Petitioner’s motion as
moot because even without excluding the subject testimony and exhibit,
Petitioner has shown by a preponderance of the evidence that claims are
unpatentable.
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III. CONCLUSION16
Based on the evidence presented with the Petition, the evidence
introduced during the trial, and the parties’ respective arguments, Petitioner
has shown by a preponderance of the evidence that the subject matter of
claims 1, 5–8, 10–12, 15, and 18–20 of the ’717 patent is unpatentable.
IV. ORDER
It is hereby:
ORDERED that claims 1, 5–8, 10–12, 15, and 18–20 of the
’717 patent are determined to be unpatentable;
FURTHER ORDERED that Petitioner’s Motion to Exclude Evidence
(Paper 29) is denied; and
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.

16 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).
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In summary:
Claim(s) 35 U.S.C. § Reference(s)/ Basis
Claims
Shown
Unpatentable
Claims
Not Shown
Unpatentable
1, 5–7,
10, 15,
18, 20
102 Duhame 1, 5–7, 10, 15, 18, 20

1, 5, 6, 8,
11, 12,
15, 18, 19
103 Koch, Lipinski
1, 5, 6, 8, 11,
12, 15, 18, 19

1, 5–8,
10–12,
15, 18–20
102 ’885 Publication17

Overall
Outcome
1, 5–8, 10–12,
15, 18–20

17 As explained above, we do not reach this ground. See supra § II.E.
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For PETITIONER:
Dion M. Bregman
Shaobin Zhu
Nicholaus E. Floyd
Alexander B. Stein
MORGAN, LEWIS & BOCKIUS LLP
dion.bregman@morganlewis.com
shaobin.zhu@morganlewis.com
nicholaus.floyd@morganlewis.com
alexander.stein@morganlewis.com

For PATENT OWNER:
David A. Reed
John C. Alemanni
Joshua Lee
KILPATRICK TOWNSEND & STOCKTON LLP
dreed@kilpatricktownsend.com
jalemanni@kilpatricktownsend.com
jlee@kilpatricktownsend.com