RTC Industries, Inc.

Patent Trials and Appeals Board

Nov 3, 2020

IPR2019-00994 (P.T.A.B. Nov. 3, 2020)

Trials@uspto.gov Paper 39
571.272.7822 Entered: November 3, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

FASTENERS FOR RETAIL, INC.,
Petitioner,

v.

RTC INDUSTRIES, INC.,
Patent Owner.
____________

IPR2019-00994
Patent 9,895,007 B2
____________

Before PATRICK R. SCANLON, MICHAEL L. WOODS, and
JASON W. MELVIN, Administrative Patent Judges.

WOODS, Administrative Patent Judge.

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

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I. INTRODUCTION
Fasteners for Retail, Inc., (“Petitioner”) filed a Petition (Paper 1,
“Pet.”) requesting inter partes review of claims 1, 2, 8, 10–16, 18–22, and
24–26 of U.S. Patent No. 9,895,007 B2 (Ex. 1001, “the ’007 patent”). Pet.
4. We issued a decision to institute an inter partes review of these claims.
Paper 9 (“Inst. Dec.”).
After institution, RTC Industries, Inc. (“Patent Owner”) filed a Patent
Owner Response (Paper 14 (“PO Resp.” or “Response”)), to which
Petitioner replied (Paper 21 (“Pet. Reply” or “Reply”)). Patent Owner also
filed a Sur-Reply to Petitioner’s Reply. Paper 30 (“PO Sur-Reply” or “Sur-
Reply”).
Oral argument, or hearing, was held on August 4, 2020, and the
transcript of the hearing has been entered as Paper 38.
We have jurisdiction under 35 U.S.C. § 6. Petitioner bears the burden
of proving unpatentability of the challenged claims, and the burden of
persuasion never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l
Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To prevail, Petitioner
must prove unpatentability by a preponderance of the evidence. See 35
U.S.C. § 316(e); 37 C.F.R. § 42.1(d). This Final Written Decision is issued
pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons that
follow, we determine that Petitioner has shown that claims 1, 2, 8, 10, and
11 of the ’007 patent are unpatentable. Petitioner has not shown that claims
12–16, 18–22, and 24–26 of the ’007 patent are unpatentable.

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A. Related Proceedings
The parties represent that that the ’007 patent is at issue in RTC
Industries, Inc. v. Fasteners for Retail, Inc., No. 1:18-cv-02782 (N.D. Ill.),
filed April 18, 2018. Pet. 2; Paper 3, 2.
The parties also represent that patents related to the ’007 patent were
challenged in IPR2018-00741, IPR2018-00742, IPR2018-00743, and
IPR2018-00744. Pet. 2; Paper 3, 2.
Finally, the parties represent that they are parties to related matters
RTC Industries, Inc. v. Fasteners for Retail, Inc., No. 1:17-cv-3595 (N.D.
Ill.), filed May 12, 2017, and Fasteners for Retail, Inc. v. RTC Industries,
Inc., No. 1:18-cv-00861 (N.D. Ill.), filed February 2, 2018. Pet. 2; Paper 3,
2.

B. The ’007 Patent (Ex. 1001)
The ’007 patent, titled “Product Management Display System with
Trackless Pusher Mechanism,” describes a merchandise display system with
a divider, pusher, rail, and lock. Ex. 1001, codes (54), (57).
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To illustrate the ’007 patent’s system, we first reproduce its Figure 4,
below:

Figure 4 depicts product placed in an exemplary embodiment of the ’007
patent’s product display system. See Ex. 1001, 8:12–14, 17–18.
The ’007 patent further describes, in one embodiment, “a product
management display system for merchandising product on a shelf [that]
includes using a trackless pusher mechanism that travels along a surface on
which product is placed and one or more dividers for separating product
into rows.” Ex. 1001, 3:42–46 (emphasis added). We reproduce its Figure
46, below:
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Figure 46 depicts a top view of an exemplary embodiment with different
product displayed in the system. See id. at 9:54–56. In particular, Figure 46
depicts the product management display system loaded with product, and
that dividers 266 may be adjusted to accommodate a wide variety of product.
Id. at 22:3–6.
The ’007 patent further provides that a “front lock may be coupled to
the divider” and that “the front lock may be configured to rotate, pivot or
move between a first position and a second position.” Ex. 1001, 7:63–66.
“When in the first position, the front lock may permit slidable movement of
the divider relative to the front rail.” Id. at 7:66–8:1. “When in the second
position, the front lock locks the divider to the front rail and prevents
slidable movement between the divider and the front rail.” Id. at 8:2–5. To
illustrate a particular embodiment of the ’007 patent’s locks, we reproduce
Figure 86H, below:
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Figure 86H depicts in-part cam 720 that “serves as a lock to lock the divider
or pusher to either the front rail or rear rail, or both.” Id. at 39:52–53. When
cam 720 is “moved to a locked position, [it] will lock the divider or pusher
to the rail and prevent lateral movement of the divider or pusher relative to
the rail.” Id. at 39:53–56. When in the unlocked position, cam 720 “permits
slidable movement of the divider or pusher relative to the rail.” Id. at 39:56–
58

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C. Illustrative Claims
Claims 1, 11–13, and 19 are independent. Ex. 1001, 49:56–52:55.
Independent claims 1 and 11–13 are representative of the subject matter at
issue and are reproduced below, with emphases added to limitations
addressed in this decision.
1. A merchandise display system comprising:
a front rail that is mountable to a shelf;
at least one divider floor configured to engage the front
rail and to hold product;
a front end of the divider floor having a front lock; and
a pusher mechanism mounted to the divider floor and
configured to slide along the divider floor;
wherein the front lock is in front of the pusher mechanism
and is configured to be digitally accessible by a user’s thumb or
finger when product is on the divider floor,
wherein the front lock is shiftable between a first position
and a second position,
wherein the front lock moves the divider floor out of
engagement with the front rail when in the first position to permit
slidable movement of the divider floor relative to the front rail,
and
wherein the front lock prevents slidable movement of the
divider floor relative to the front rail when in the second position.

11. A merchandise display system comprising:
a front rail that is mountable to a shelf;
at least one divider floor configured to engage the front
rail and to hold product;
a front end of the divider floor having a front lock; and
a pusher mechanism mounted to the divider floor and
configured to slide along the divider floor,
wherein the front lock is in front of the pusher mechanism
and is configured to be digitally accessible by a user's thumb or
finger when product is on the divider floor,
wherein the front lock is shiftable between a first position
and a second position,
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wherein the front lock moves the divider floor out of
engagement with the front rail when in the first position to permit
slidable movement of the divider floor relative to the front rail,
wherein the front lock prevents slidable movement of the
divider floor relative to the front rail when in the second position,
and
wherein the front rail further defines a plurality of teeth,
and wherein the front lock can engage the plurality of teeth to
prevent slidable movement of the divider floor relative to the
front rail.

12. A merchandise display system comprising:
a front rail that is mountable to a shelf;
at least one divider floor configured to engage the front
rail and to hold product;
a front end of the divider floor having a front lock; and
a pusher mechanism mounted to the divider floor and
configured to slide along the divider floor,
wherein the front lock is in front of the pusher mechanism
and is configured to be digitally accessible by a user's thumb or
finger when product is on the divider floor,
wherein the front lock is shiftable between a first position
and a second position,
wherein the front lock moves the divider floor out of
engagement with the front rail when in the first position to permit
slidable movement of the divider floor relative to the front rail,
wherein the front lock prevents slidable movement of the
divider floor relative to the front rail when in the second position,
and
wherein the front rail further defines a tongue extending
upwardly from the rail, and wherein the divider floor defines a
groove for receiving the tongue when the divider floor is mounted
to the front rail.

13. A merchandise display system comprising:
a front rail that is mountable to a shelf;
at least one divider floor configured to engage the front
rail and to hold product and a divider wall extending upwardly
from the divider floor;
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a front end of the divider floor having a front lock;
a front barrier mounted to a front end of the divider, the
front barrier defining a plane extending perpendicularly to both
the divider floor and the divider wall; and
a pusher mechanism coupled to the divider floor,
wherein the front lock is positioned in front of the barrier
and is configured to be digitally accessible by a user's thumb or
finger when product is on the divider floor and without having to
push back product located on the divider floor,
wherein the front lock is shiftable between a first position
and a second position,
wherein the front lock when in the first position permits
slidable movement of the divider floor relative to the front rail,
and
wherein the front lock prevents slidable movement of the
divider floor relative to the front rail when in the second position.
Id. at 49:56–50:7, 50:33–51:34 (emphases added).

D. References Relied Upon
Petitioner’s challenges rely on the following references (Pet. 4–5):
Name Reference Ex. No.
Merit US Pat. No. 7,395,938, iss. July 8, 2008 1004
Alves US Pub. No. 2008/0296241, pub. Dec. 4, 2008 1005
Howerton US Pub. No. 2005/0218094, pub. Oct. 6, 2005 1006
Bernardin US Pat. No. 5,111,942, iss. May 12, 1992 1007
Rataiczak US Pub. No. 2008/0017598, pub. Jan. 24, 2008 1008

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E. Alleged Grounds of Unpatentability
Petitioner contends that claims 1, 2, 8, 10–16, 18–22, and 24–26 of
the ’007 patent are unpatentable under the following grounds:
Ground Claim(s)
Challenged
35 U.S.C.
§1
Reference(s)/Basis
1 1, 2, 10, 12 102 Merit
2 1, 2, 10, 12 103 Merit, Alves
3 8 103 Merit, Howerton
4 8 103 Merit, Alves, Howerton
5 11 103 Merit, Rataiczak
6 11 103 Merit, Alves, Rataiczak
7 13, 14, 18 103 Merit, Bernardin
8 15, 19–21,
24–26
103 Merit, Bernardin,
Rataiczak
9 16, 22 103 Merit, Bernardin,
Rataiczak, Howerton
10 26 103 Merit, Alves, Bernardin,
Rataiczak
Pet. 5. Petitioner also relies on the declaration testimony of Ronald B.
Kemnitzer (Exs. 1002, 1025) in support of its Petition and Reply Brief. See,
e.g., id. at 10 (referencing Ex. 1002); see also, e.g., Pet. Reply 5 (referencing
Ex. 1025).

1 Because the application from which the ’007 patent issued claims priority
to an application filed before March 16, 2013, the pre-AIA version of §§ 102
and 103 applies. See The Leahy-Smith America Invents Act (“AIA”), Pub.
L. No. 112-29, 125 Stat. 284, 287–88 (2011), effective March 16, 2013; see
also Ex. 1001, code (60).
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Patent Owner relies on the declaration testimony of Steven C. Visser
(Exs. 2001, 2006). See, e.g., PO Resp. iii (Exhibit List, referencing Exs.
2001, 2006).

II. ANALYSIS
A. Level of Ordinary Skill in the Art
In determining whether an invention would have been obvious at the
time it was made, we consider the level of ordinary skill in the pertinent art
at the time of the invention. Graham v. John Deere Co. of Kansas City, 383
U.S. 1, 17 (1966).
Factors pertinent to a determination of the level of ordinary skill in the
art include: (1) educational level of the inventor; (2) type of problems
encountered in the art: (3) prior art solutions to those problems; (4) rapidity
with which innovations are made; (5) sophistication of the technology, and
(6) educational level of workers active in the field. Environmental Designs,
Ltd. v. Union Oil Co., 713 F.2d 693, 696–697 (Fed. Cir. 1983) (citing
Orthopedic Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376,
1381–82 (Fed. Cir. 1983)). Not all such factors may be present in every
case, and one or more of these or other factors may predominate in a
particular case. Id. Moreover, these factors are not exhaustive but are
merely a guide to determining the level of ordinary skill in the art. Daiichi
Sankyo Co. Ltd, Inc. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007).
In determining a level of ordinary skill, we also may look to the prior
art, which may reflect an appropriate skill level. Okajima v. Bourdeau, 261
F.3d 1350, 1355 (Fed. Cir. 2001).
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Petitioner relies upon the declaration of Mr. Kemnitzer (Ex. 1002) and
contends that a person of ordinary skill in the art (“POSITA”) would have
had “a Bachelor’s degree in Engineering or Industrial Design or more than
three years of experience in the design or manufacturing of mechanical
display systems.” Pet. 10 (citing Ex. 1002 ¶ 50).
Patent Owner does not propose a level of ordinary skill in the art. See
generally PO Resp.
There is no evidence before us of the educational level of the inventor,
rapidity with which innovations are made, or the educational level of
workers active in the field.
Based on our review of the ’007 patent, the types of problems and
solutions described in the ’007 patent and applied prior art, we adopt
Petitioner’s proposed level of ordinary skill in the art.

B. Claim Construction
In an inter partes review proceeding for a petition filed on or after
November 13, 2018, a patent claim shall be construed 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)). This rule adopts the same claim
construction standard used by Article III federal courts, which follow
Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) and its
progeny. Under the Phillips standard, the words of a claim are generally
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given their “ordinary and customary meaning,” which is the meaning the
term would have to a person of ordinary skill at the time of the invention, in
the context of the entire patent including the specification. See Phillips, 415
F.3d at 1312–13. “[W]here a party believes that a specific term has meaning
other than its plain meaning, the party should provide a statement identifying
a proposed construction of the particular term and where the disclosure
supports that meaning.” Office Trial Practice Guide, 77 Fed. Reg. 48,756,
48,764 (Aug. 14, 2012).
The parties dispute construction of the claimed terms “front end,”
“slidable movement . . . relative to the front rail,” and “front lock.” PO
Resp. 8–29; Pet. Reply 1–14. We address each of claimed terms, below.

1. “front end”
Patent Owner proposes that the claim term “front end” of the divider
floor should be construed to mean the “front extremity” of the divider floor.
See PO Resp. 22. In support of this construction, Patent Owner submits that
a POSITA would understand that “front end” means “front extremity” (id. at
9) and that the Specification consistently uses the term “front end” to mean
“front extremity” (id. at 16).
Petitioner, on the other hand, disagrees with Patent Owner’s proposed
construction that “front end” means “front extremity.” See Pet. 11; see also
Pet. Reply 2.
For the following reasons, we find Patent Owner’s construction too
narrow and not supported by the record.
First, the patent applicant chose to use the term “front end,” not “front
extremity,” and “we construe the claim as written, not as the patentees wish
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they had written it.” Chef Am. Inc. v. Lamb-Weston, Inc., 358 F.3d 1371,
1374 (Fed. Cir. 2004). Although the ’007 patent describes embodiments in
which the “front end of the divider” appears to be the front extremity of the
divider (see, e.g., Ex. 1001, Figs. 92, 93A, 41:64–66), Patent Owner's
proposed construction attempts to read limitations improperly from the
Specification into the claims.
Moreover, we find at least one example within the ’007 patent that
uses the term “front end” interchangeably with “front portion,” which
conflicts with Patent Owner’s proposed construction that “front end” should
narrowly be construed as “front extremity.” To illustrate this point, we
reproduce Figures 87A and 89A of the ’007 patent, below:
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Figure 87A (reproduced at the top) is a side view of an exemplary divider
and front rail. Ex. 1001, 11:44–46. Figure 89A (reproduced at the bottom)
is also a side view of an exemplary divider attached to a front rail. Id. at
11:50–52. The Specification describes Figure 87A as depicting cam 720
“located . . . at the front end of the divider.” Id. at 41:64–42:1 (emphasis
added). The Specification describes Figure 89A as depicting T-lock 900 as
“attached to a front portion of the divider.” Id. at 47:19–20 (emphasis
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added). We find that these figures depict similar locations of cam 720 and
T-lock 900, yet the Specification describes cam 720 as “located . . . at the
front end,” while T-lock 900 is “attached to a front portion.” We find the
Specification’s interchangeable use of “front end” and “front portion” is akin
to a definition equating “front end” to “front portion.” See Edwards
Lifesciences LLC v. Cook Inc., 582 F.3d 1322, 1329 (Fed. Cir. 2009)
(“[I]nterchangeable use of . . . terms is akin to a definition equating the
two”).
Second, Patent Owner’s proposed construction is at odds with the
explicit language of claim 13. Claim 13 recites, inter alia, “a front end of
the divider floor having a front lock” and “a front barrier mounted to a front
end of the divider.” Ex. 1001, 51:12–34. In other words, claim 13 requires
the “front end” to have a “front lock” and a “front barrier.” Yet, claim 13
further recites that “the front lock is positioned in front of the barrier.” Id.
If we construe “front end” to mean “front extremity,” as Patent Owner
proposes, we do not see how the “front lock” can be in front of the “front
barrier,” when both are located at the “front extremity.”
Third, Patent Owner’s own dictionary definition of “end” does not
support its narrow construction. Patent Owner’s Exhibit 2011 defines “end”
in relevant part as:
1. the last part or extremity, lengthwise, of anything that is longer
than it is wide or broad: the end of a street; the end of a rope. 2.
a point, line, or limitation that indicates the full extent, degree,
etc., of something; limit; bounds: kindness without end; to walk
from end to end of a city. 3. a part or place at or adjacent to an
extremity; at the end of the table; the west end of town. 4. the
furthermost imaginable place or point: an island at the very end
of the world.
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Ex. 2011, 4. The first definition defines “end” as “the last part or
extremity.” Id. It does not define “end” as simply “extremity,” but rather
“part or extremity.” Id. The third definition uses “the west end of town” as
an example of “a part or place at or adjacent to an extremity.” Id. We
understand that the “west end of town” broadly refers to the western part or
region of that town, and not just the outermost border, or “extremity,” of that
town.
Patent Owner also argues that if we do not construe “front end” to
mean “front extremity,” the claims would be indefinite. See PO Resp. 16.
We disagree, as “a patentee need not define his invention with mathematical
precision.” Sonix Tech. Co. v. Publ’ns Int’l, Ltd., 844 F.3d 1370, 1377 (Fed.
Cir. 2017). Petitioner’s proposed construction is definite enough.
For the foregoing reasons, we construe “front end of the divider floor”
to mean the front part or portion of the divider floor. We do not construe
“front end” to mean “front extremity.”

2. “slidable movement . . . relative to the front rail”
Patent Owner argues that the claim limitation “slidable movement . . .
relative to the front rail” means “slidable movement . . . along the front rail.”
See PO Resp. 22 (citing Ex. 2006 ¶¶ 56, 64) (emphasis omitted, emphases
added). In support of this proposed construction, Patent Owner contends
that the Specification “uses the term ‘slidable movement’ 13 times, always
in a manner consistent with a single meaning: slidable movement limited to
movement along the longitudinal axis, or directionally, of the thing being
slid upon.” Id. at 23. Patent Owner further asserts that in each instance
when the Specification refers to “slidable movement of a divider relative to a
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rail,” the reference is to “slidable movement along the front rail.” Id. at 24–
25.
Petitioner disagrees with Patent Owner’s proposed construction. See
Pet. Reply 12–14.
Petitioner has the better position.
As similarly explained above in connection with “front end,” the
patent applicant chose to use the term “slidable movement . . . relative to the
front rail,” not “slidable movement . . . along the front rail.” “[W]e construe
the claim as written, not as the patentees wish they had written it.” Chef Am.
Inc., 358 F.3d at 1374. Indeed, the patent applicant was aware of the term
“slide along” in reciting “a pusher mechanism . . . configured to slide along
the divider floor” (Ex. 1001, 49:62 (emphasis added)), yet Patent Owner
asks that we now treat “slidable . . . relative to” to mean “slide along” (PO
Resp. 24–25). The different terms mean different things, and we decline to
prescribe the same meaning to the terms “relative to” and “along.” See
Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010) (noting
“inference . . . that two different terms used in a patent have different
meanings.”).
Moreover, even if the Specification of the ’007 patent describes
embodiments in which the divider slides along the front rail, Patent Owner's
proposed construction attempts to read limitations improperly from the
Specification into the claims. Patent Owner’s interpretation goes beyond the
plain and ordinary meaning of the claimed phrase by adding limitations from
particular embodiments described in the specification into the claims. See In
re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
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The relevant language of Claim 1 merely recites, “to permit slidable
movement of the divider floor relative to the front rail.” Ex. 1001, 49:56–
50:7. The term “relative” does not mean “along,” and we do not construe
“slidable movement . . . relative to the front rail” to mean “slidable
movement . . . along the front rail,” as Patent Owner proposes. PO Resp.
22–25.
Other than Patent Owner’s proposal to require movement “along” the
front rail, the parties do not dispute the construction for the slidable
movement. We determine that the phrase requires no express construction.

3. “front lock”
Independent claim 1 recites “a front end of the divider floor having a
front lock.” Ex. 1001, 49:60. Patent Owner proposes that the claim term
“front lock” means a “forwardly accessible lock.” PO Resp. 29 (citing Ex.
2006 ¶ 48). Patent Owner explains that a skilled artisan “would understand
that a ‘front lock’ does not merely mean a lock located at the front end of the
divider floor, for such an interpretation would entirely read out the word
‘front’ from the limitation ‘front lock.’” Id. Patent Owner contends that a
skilled artisan “would understand the ‘front’ in ‘front lock’ refers to
accessibility of the lock.” Id. at 30 (citing Ex. 2006 ¶ 52). Patent Owner
submits an annotated version of Figure 86H of the ’007 patent (id. at 31), a
copy of which we reproduce below:
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Figure 86H depicts “components of an exemplary product management
display system.” Ex. 1001, 11:41–43. Patent Owner’s expert, Mr. Visser,
testifies that this figure “shows a lock that is at the front and that is
forwardly accessible even when the divider floor is full of product.” Ex.
2006 ¶ 55 (referencing also annotated Figure 84D).
Petitioner, on the other hand, contends that Patent Owner’s proposed
construction ignores the plain meaning of the claim. See Pet. Reply 14.
We agree with Petitioner.
Patent Owner’s proposed construction goes beyond the plain and
ordinary meaning of the claimed phrase by adding limitations from
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particular embodiments described in the specification into the claims. See In
re Van Geuns, 988 F.2d at 1184.
Here, the relevant language of claim 1 simply recites “a front end of
the divider floor having a front lock . . . wherein the front lock is in front of
the pusher mechanism and is configured to be digitally accessible by a user’s
thumb or finger when product is on the divider floor.” Ex. 1001, 49:56–
50:7. Although independent claim 1 requires the lock to be digitally
accessible when at least some product is on the divider floor, claim 1 does
not require that the front lock be accessible “when ‘the divider floor . . . is
full of product,’” as Patent Owner contends. See PO Resp. 29–33 (emphasis
added). Although the ’007 patent describes embodiments in which the lock
may be accessible when the divider floor is full of product, such as in its
Figure 86H, Patent Owner's proposed construction attempts to read
limitations improperly from the Specification into the claims.
In other words, the word “front” does not require the lock to be
“forwardly accessible.” “[W]e construe the claim as written, not as the
patentees wish they had written it.” Chef Am. Inc., 358 F.3d at 1374.
As to independent claims 1, 11, and 12, the claims expressly require
the “front lock” to be “in the front of the pusher mechanism” and be
“configured to be digitally accessible by a user’s thumb or finger when
product is on the divider floor.” Ex. 1001, 49:63–50:65. Other than the
express limitations, the claim term “front lock” requires no express
construction.
As to independent claim 13, the claim expressly requires the “front
lock” to be “positioned in front of the barrier” and is “configured to be
digitally accessibly by a user’s thumb or finger when product is on the
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divider floor and without having to push back product located on the divider
floor.” Id. at 51:22–26. Other than the express limitations, the claim term
“front lock” requires no express construction.
As to independent claim 19, the claim expressly requires the “front
lock” to be “in front of the product on the divider floor” and to be
“configured to be digitally accessible by a user’s thumb or finger when
product is on the divider floor and without having to push back product
located on the divider floor.” Id. at 52:3–7. Other than the express
limitations, the claim term “front lock” requires no express construction.

4. Other Claim Terms
We determine that no other claimed limitation requires express
construction for purposes of this Decision.

C. Principles of Law
“In an . . . [inter partes review], the petitioner has the burden from
the onset to show with particularity why the patent it challenges is
unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
Cir. 2016). This burden never shifts to Patent Owner. Dynamic Drinkware,
LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015).
Petitioner’s challenges are based on anticipation and obviousness.
Pet. 5.
As to anticipation, “[a] prior art reference anticipates a patent’s claim
under § 102(b) if it ‘discloses each and every element of the claimed
invention arranged or combined in the same way as in the claim.’”
Monsanto Tech. LLC v. E.I. DuPont de Nemours & Co., 878 F.3d 1336,
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1342–43 (Fed. Cir. 2018) (quoting Blue Calypso, LLC v. Groupon, Inc., 815
F.3d 1331, 1341 (Fed. Cir. 2016)).
As to obviousness, a claim is unpatentable as obvious under 35 U.S.C.
§ 103(a) 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 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
prior art; (3) the level of skill in the art; and (4) where in evidence, so-called
secondary considerations. Graham, 383 U.S. at 17–18.

D. Ground 1 – Claims 1, 2, 10, and 12 as Anticipated by Merit
Petitioner contends that claims 1, 2, 10, and 12 are anticipated by
Merit. Pet. 25.

1. Merit (Ex. 1004)
Merit is a U.S. Patent titled “Method and Apparatus for Selective
Engagement of Shelf Divider Structures Within a Shelf Management
System.” Ex. 1004, code (54). We reproduce Figure 1 of Merit, below, to
illustrate its shelf management system.
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Figure 1 depicts “a shelf divider structure in a shelf management system
according to the present invention” of Merit. Id. at 2:43–45. In particular,
Figure 1 depicts divider system 1 with vertical divider wall 2 and horizontal
divider base 3. Id. at 3:22–24. Base 3 includes an L-shaped extension with
protrusion 15 (shown in Fig. 4) and recess 17 that “cooperatively engage
with and lock onto a generally horizontal mounting member 7 . . . [which] is
attached to a shelf” not shown. Id. at 3:28–33.
Merit further discloses
As a feature of this invention, it is possible to reposition a divider
laterally along a shelf merely by pressing down on a resilient
extension (i.e. a resilient “latch”) from the divider base to unlock
the base from the mounting member, push back on the divider to
remove the latch from a slot in the mounting member, slide the
divider and base laterally left or right along the shelf until the
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new position of the divider is reached, and then pull the divider
and base forward to reinsert the latch from the base into a slot on
the mounting member and cause a protrusion on the extension
from the base to catch (i.e. lock) against another protrusion on a
surface of the slot in the mounting member.
Id. at 2:17–28.

2. Claim 1
a) Petitioner’s Challenge
In challenging independent claim 1, Petitioner submits that Merit
discloses the claimed “merchandise display system,” relying on annotated
versions of Merit’s figures and multiple citations to Merit, and supports its
assertions through citations to Mr. Kemnitzer’s declaration testimony. See
Pet. 25–39.
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To address the claimed “front rail that is mountable to a shelf,”
Petitioner submits an annotated version of Merit’s Figure 9, which we
reproduce below:

According to Petitioner, annotated Figure 9 depicts mounting member 7—
the claimed “front rail,” shown in purple—with bolt 23 (shown in red) for
attaching “front rail” 7 to an underlying shelf. Pet. 26 (citing Ex. 1004,
3:13–14).
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Petitioner also submits an annotated version of Merit’s Figure 8 to
further illustrate this structure, which we reproduce, below:

According to Petitioner, annotated Figure 8 depicts “front rail” 7 (annotated
in purple by Petitioner) located at the front of “shelf” 22. Pet. 27 (citing Ex.
1002 ¶ 90).
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To address the claimed “at least one divider floor configured to
engage the front rail and to hold product,” Petitioner submits annotated
versions of Merit’s Figures 5A and 5B, which we also reproduce, below:

According to Petitioner, Figures 5A and 5B depict Merit’s “engaged divider
member and mounting member.” Pet. 28 (quoting Ex. 1004, 2:55–57).
Petitioner further cites to Merit’s disclosure that “the divider structure
comprises a pusher track and a spring urged pusher assembly to
automatically push merchandise to the front of the shelf.” Pet. 28 (quoting
Ex. 1004, code (57)); see also Ex. 1004, 4:10–14 (“Pusher 5 is able to slide
along base 3 in a manner well known in the art, to cause the articles stacked
or arrayed in front of pusher 5 to move along base 3 toward the front of the
shelf 22.”)
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To address the claimed “a front end of the divider floor having a front
lock,” Petitioner submits an annotated version of Merit’s Figure 8, which we
reproduce, below:

According to Petitioner, annotated Figure 8 depicts a green front lock and a
blue divider floor, specifically, “divider 2 and base 3 using the latching and
locking structure of this invention showing the opening 6 in the base 3
through which a person is able to unlock the base 3 from the mounting
member 7.” Pet. 29 (quoting Ex. 1004, 3:7–12).
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Petitioner further submits an annotated version of Merit’s Figures 5A
and 5B to further illustrate Merit’s “lock,” which we reproduce, below:

According to Petitioner, “FIG. 5A shows . . . the latching and locking
structure of one embodiment when divider 2 is mounted on base 3 and
extension 14 is fully inserted in slot 9, such that protrusion 15 on extension
14 locks in place base 3 on mounting member 7.” Pet. 30 (quoting Ex. 1004,
5:17–21) (alteration in original).
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To address the claimed “pusher mechanism mounted to the divider
floor and configured to slide along the divider floor,” Petitioner submits an
annotated version of Merit’s Figure 1, which we reproduce, below:

According to Petitioner, annotated Figure 1 depicts green pusher mechanism
5 mounted to the blue divider floor and configured to slide along a red
pusher track in the divider floor. Pet. 31.
To address the claimed “wherein the front lock is in front of the
pusher mechanism and is configured to be digitally accessible by a user’s
thumb or finger when product is on the divider floor,” Petitioner submits an
annotated version of Merit’s Figure 2, which we reproduce, below:
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According to Petitioner, and as shown in annotated Figure 2, Merit discloses
its front lock (green) at the front end of the divider floor. Pet. 32 (citing Ex.
1002 ¶ 104). Mr. Kemnitzer testifies that it is his opinion that “a POSITA
would understand that the pusher 5 of Merit is restrained from forward
motion by the end of the pusher track, such that the pusher mechanism 5
never passes in front of the front lock access opening highlighted in green in
Figure 2.” Ex. 1002 ¶ 104. Mr. Kemnitzer further testifies that “the lock of
Merit is always in front of the pusher mechanism of Merit.” Id.
To address the claimed “wherein the front lock is shiftable between a
first position and a second position,” Petitioner cites to Merit’s disclosure
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that “opening 6 is provided in the front of base 3 to allow a clerk, or another
person, to place fingers in the opening and push down on portion 14a of
extension 14.” Pet. 34 (quoting Ex. 1004, 4:35–38). Mr. Kemnitzer testifies
that a “POSITA would understand that ‘pushing down on’ the resilient
extension 14 necessarily moves the extension 14 from a second position
(locked) to a first position (unlocked).” Ex. 1002 ¶ 107.
To address the claimed “wherein the front lock moves the divider floor
out of engagement with the front rail when in the first position to permit
slidable movement of the divider floor relative to the front rail,” Petitioner
submits an annotated version of Merit’s Figure 8, which we reproduce,
below:

According to Petitioner, and as shown in annotated Figure 8, “arrows ‘A’
and ‘B’ depict[] directions in which the divider can be slid when it is
unlocked.” Pet. 37–38 (citing Ex. 1004, 5:53–63). Petitioner cites to
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Merit’s disclosure that “divider 2 and base 3 are easily slid back . . . away
from the front of the shelf and then can be laterally moved along the shelf
to allow a different sized article to be displayed using divider 2 and base 3,”
when the user places his or her “fingers in the opening and push[es] down on
portion 14a of extension 14.” Id. at 37 (citing Ex. 1004, 4:35–42, code
(57)).
To address the claimed “wherein the front lock prevents slidable
movement of the divider floor relative to the front rail when in the second
position,” Petitioner submits an annotated version of Merit’s Figure 5B,
which we reproduce, below:

According to Petitioner, and as shown in annotated Figure 5B, “[o]nce
protrusion 15 is to the left of protrusion 10a, portion 14a of extension 14
snaps upward vertically causing protrusion 15 to be held in position by
protrusion 10a, on extension 10, of the mounting member 7, thereby locking
base 3 and divider 2 in position.” Pet. 38–39 (quoting Ex. 1004, 4:51–55).
Mr. Kemnitzer testifies that “the front lock of Merit, when it locks into a
second position, prevents movement of the divider both laterally along the
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front rail and rearwardly (that is, toward the back of the shelf).” Ex. 1002
¶ 113.

b) Patent Owner’s Arguments
Patent Owner presents the following three arguments in response to
Petitioner’s challenge of claim 1:
(1) Merit fails to disclose the claimed “front end of [a]
divider floor having a front lock.” PO Resp. 33.
(2) Merit fails to disclose a “front lock [that] is in front of
[a] pusher mechanism.” Id. at 78.
(3) Merit fails to disclose a “front lock [that] permit[s]
slidable movement of the divider floor relative to the front rail.”
See id. at 85.
We address Patent Owner’s three arguments separately, below.

c) “front end of [a] divider floor having a front lock”
Patent Owner contends that Merit does not disclose a “front end of [a]
divider floor having a front lock,” because Merit’s “lock” is “set back from”
Merit’s “front end” and is not “forwardly accessible.” See PO Resp. 33. In
support of this assertion, Patent Owner submits an annotated version of
Merit’s Figure 5B (id. at 34), which we reproduce, below:
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Figure 5B illustrates an engaged divider base member and mounting
member of Merit’s shelf management system. Ex. 1004, 2:58–61.
According to Patent Owner, Figure 5B depicts Merit’s extension 14 (the
claimed “front lock”) as being set back from the front extremity of Merit’s
base 3. PO Resp. 34 (citing Ex. 2006 ¶¶ 82–85, 88).
Patent Owner also reiterates its claim construction position that a
skilled artisan “would understand ‘front lock’ to mean a ‘forwardly
accessible lock’ in the context of the ’007 Patent.” PO Resp. 38 (emphasis
added).
Patent Owner’s arguments are not persuasive, as they are premised on
erroneous constructions of claim 1.
As discussed above, we disagree with Patent Owner’s proposed
construction that “front end” means “front extremity” (supra Part II.B.1) and
that “front lock” means “forwardly accessible lock” (supra Part II.B.3).
Rather, we construe “front end of the divider floor” to mean the front part or
portion of the divider floor. Supra Part II.B.1. Also, the claim does not
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recite that the “front lock” be “forwardly accessible,” it instead requires that
the “front lock” be “configured to be digitally accessible by a user’s thumb
or finger when product is on the divider floor.” Supra Part II.B.3; Ex. 1001,
50:63–65.
We agree with Petitioner that Merit discloses the claimed structure,
and we credit Mr. Kemnitzer’s testimony in support of these findings. Ex.
1002 ¶¶ 102–105. To illustrate, we reproduce Merit’s annotated Figure 2,
which Mr. Kemnitzer cites to (id. ¶ 103), below:

Figure 2 is a plan view of Merit’s shelf divider structure of a shelf
management system. Ex. 1004, 2:46–47. Mr. Kemnitzer testifies that
Figure 2 depicts the front lock (highlighted in green) located at the front end
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of the divider floor. Ex. 1002 ¶ 104. We agree and credit Mr. Kemnitzer’s
testimony as to this finding.
Mr. Kemnitzer further testifies that Merit’s “front lock” is “configured
to be digitally accessible by a user’s thumb or finger when product is on the
divider floor.” Id. ¶ 105 (citing Ex. 1004, 4:35–38).
Indeed, Merit discloses that “opening 6 is provided in the front of base
3 to allow a clerk, or another person, to place fingers in the opening and
push down on portion 14a of extension 14.” Ex. 1004, 4:35–38. Merit
further discloses, “[a]n advantage of this invention is that the divider system
1 can be reoriented laterally along the shelf without removing articles stored
on the shelf 22.” Id. at 5:64–66 (emphasis added); see also id. at 6:58–63.
Merit further discloses,
[L]atching and locking mechanism for a . . . combination divider
and spring urged pusher structure, or a divider base, which allows
convenient engagement, release and re-engagement of the
relevant structure to a mounting member that is securable to the
front edge of a shelf without necessitating removal of the
displayed articles from the shelf.
Id. at 1:57–63. We find Merit’s disclosure to satisfy the claimed limitation.
For the foregoing reasons, we find that Merit discloses a “front end of
the divider floor having a front lock.” We further find that Merit’s “front
lock is in front of the pusher mechanism and is configured to be digitally
accessible by a user’s thumb or finger when product is on the divider floor,”
as required by claim 1.

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d) “front lock [that] is in front of [a] pusher
mechanism”
Patent Owner also argues that Merit fails to disclose a “front lock”
that is “in front of the pusher mechanism,” as required by claim 1. See PO
Resp. 78. In support of this argument, Patent Owner contends that “Merit
does not expressly teach that its pusher mechanism stops behind its
‘extension 14’—the alleged front lock.” Id. (citing Ex. 2006 ¶¶ 115–116).
Petitioner replies that “Merit’s front lock is in front of the pusher in all
[of Merit’s] figures.” Pet. Reply 37.
We agree with Petitioner’s assertion that Merit discloses the claimed
structure.
Patent Owner’s argument is premised on a construction of the claim
limitation that the “front lock” must be in front of the pusher mechanism at
all times. See Pet Reply 37 (confirming the same). Yet, claim 1 does not
require this structure.
Moreover, and even if Merit required this structure, which it does not,
we find that Merit’s front lock is always in front of its pusher. We find
persuasive Mr. Kemnitzer’s testimony that “[a]lthough it is not required by
the claims . . . a POSITA reviewing Merit would understand that the pusher
paddle never travels in front of the front lock of Merit.” Ex. 1025 ¶ 129; see
also id. ¶¶ 130–133 (explaining the same). To illustrate this point, we
reproduce Merit’s annotated Figures 1 and 7 (id. ¶ 131), below:
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Merit’s Figure 1 (top figure) is a top perspective view of Merit’s shelf
divider structure. Ex. 1004, 2:43–44. Merit’s Figure 7 (bottom figure)
depicts an underside perspective of Merit’s shelf divider. See id. at 3:3–4.
Mr. Kemnitzer testifies that these figures
show that the pusher track is recessed below the divider floor.
Further, the pusher track includes a vertical wall at its front edge
that creates a stop well behind the locking mechanism.
Therefore, the pusher track provides a “mechanical stop” that
would prevent the pusher from moving past the pusher track.
Ex. 1025 ¶ 132. We agree with and credit Mr. Kemnitzer’s testimony
as to this finding.
For the foregoing reasons, we find that Merit discloses a “front
lock [that] is in front of the pusher mechanism,” as required by claim
1.
e) “front lock [that] permit[s] slidable movement of
the divider floor relative to the front rail”
Patent Owner argues that Merit fails to disclose a “front lock” that
“permit[s] slidable movement of the divider floor relative to the front rail.”
See PO Resp. 86. Patent Owner bases its argument on its proposed claim
construction that a skilled artisan “would understand ‘slidable movement . . .
relative to the front rail’ to mean ‘slidable movement . . . along the front
rail.’” Id. (alterations in original).
Patent Owner’s argument is not persuasive, as it is premised on the
wrong claim construction. See supra Part II.B.2; see also Pet. Reply 39
(arguing the same).
We agree with Petitioner that Merit discloses the claimed structure.
We credit the testimony of Mr. Kemnitzer that “Merit discloses a ‘front
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lock’ that ‘permit[s] slidable movement of the divider floor relative to the
front rail.’” Ex. 1025 ¶ 139 (alteration in original); see also Ex. 1002
¶¶ 109–111 (testifying to the same). Indeed, Merit discloses that “pushing
down on portion 14a of extension 14 . . . disengage[s] the divider 2 from
mounting member 7.” Ex. 1004, 5:53–57. Petitioner’s and Patent Owner’s
experts appear to agree that when Merit’s “front lock” 14 is no longer in a
state of interference, surfaces 18a and 12a are no longer in frictional
engagement, and Merit’s base 3 moves relative to its mounting member 7.
See Ex. 1025 ¶ 141 (Mr. Kemnitzer testifying to the same); see also Ex.
2006 ¶¶ 169–170 (Mr. Visser testifying to the same).
For the foregoing reasons, we find that Merit discloses a “front lock
[that] permit[s] slidable movement of the divider floor relative to the front
rail when in the second position,” as required by claim 1.

f) Summary of Claim 1
We are persuaded by Petitioner’s argument and evidence, and find
that Petitioner has established by a preponderance of the evidence that Merit
discloses all of the limitations of claim 1, for the reasons stated by Petitioner
in the Petition, which we adopt as our own findings, as further supported by
the declarations of Mr. Kemnitzer.

3. Claim 2
Claim 2 depends from claim 1 and further requires, “wherein the front
lock defines a cam surface that engages and disengages with the front rail.”
Ex. 1001, 50:8–10.
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To address this claim, Petitioner submits that Merit discloses this
limitation, with the cam surface being “protrusion 15 on extension 14.” Pet.
39–40 (citing Ex. 1004, 4:46–51). Merit states, “Once protrusion 15 is to the
left of protrusion 10a, portion 14a of extension 14 snaps upward vertically
causing protrusion 15 to be held in position by protrusion 10a, on extension
10, of the mounting member 7, thereby locking base 3 and divider 2 in
position.” Ex. 1004, 4:51–55.
As to claim 2, Patent Owner does not present additional arguments
beyond those presented to its independent claim 1. See PO Resp. 33–93.
We are persuaded by Petitioner’s argument and evidence, and find
that Petitioner has established by a preponderance of the evidence that Merit
discloses the limitations of claim 2 for the reasons stated by Petitioner in the
Petition, which we adopt as our own findings, as further supported by the
testimony of Mr. Kemnitzer.

4. Claim 10
Claim 10 depends from claim 1 and further requires, “wherein the
front lock defines a portion that extends upwardly from the divider floor.”
Ex. 1001, 50:30–32.
To address this claim, Petitioner submits that Merit discloses this
limitation. Pet. 40. Petitioner cites to Merit’s disclosure of a “ring or other
type of pull (such as a ‘T’ member) [that] is attached to extension 14a to
allow extension 14a to be pulled up to release base 3 from member 7.” Id. at
41 (quoting Ex. 1004, 6:44–48). Petitioner explains that “[i]n order for the
lock to be ‘pulled up’ to ‘release’ the base 3 from the member 7 as described
in Merit at 6:44–48, the locking tab would need to be on top of base 3 and
extend upwardly therefrom.” Id.
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Patent Owner argues that Petitioner has failed to show that Merit
discloses this limitation. See PO Resp. 82. Patent Owner asserts that Merit
“never states that the ‘pull’—or any other part of extension 14—‘extends
upwardly’ from the floor of base 3.” Id. at 83 (citing Ex. 1004, 6:44–50).
Patent Owner further asserts that Merit does not depict a pull or extension
that extends upwardly from the floor of base 3. See id. Patent Owner’s
expert, Mr. Visser, testifies, “[i]f any part of extension 14 extended
upwardly from the floor of base 3, it would interfere with product being
pushed by Merit’s pusher 5 toward the front of the shelf.” Ex. 2006 ¶ 133.
We agree with Petitioner that Merit discloses the claimed structure. In
response to Patent Owner’s argument, Petitioner submits four annotated
figures to depict the structure described in Merit (Pet. Reply 41), which we
reproduce, below:
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The four figures shown above depict: an isometric partial view of a divider
connected to a rail (top); an isometric partial view of a divider (mid-left); an
isometric view of a rail (bottom); and a partial side view of the divider
engaged with the rail (mid-right). Mr. Kemnitzer testifies that these figures
illustrate what a skilled artisan would understand in reading Merit’s
disclosure. See Ex. 1025 ¶ 143. In particular, Mr. Kemnitzer testifies that a
skilled artisan would understand that “by inverting the structure and motion
of extension 14, a portion of Merit’s lock would extend upwardly from the
base to allow a user to actuate a lock.” Id.; see also supra p. 40 (reproducing
Figure 7, which depicts “front lock” 14).
In response to Mr. Visser’s testimony that the location of the lock
would interfere with product sitting on the shelf, Mr. Kemnitzer disagrees,
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testifying that a skilled artisan “would recognize that Merit’s inverted lock
could extend only a small distance above the divider floor, be close to the
barrier, and angle forward such that it would not interfere with product being
pushed.” Ex. 1025 ¶ 144.
Having reviewed Merit’s disclosure at lines 44–50 of column 6 and
after weighing the competing testimony of Patent Owner’s expert (Mr.
Visser) and Petitioner’s expert (Mr. Kemnitzer), we find that Merit discloses
the claimed limitation. Although Merit does not provide a figure to depict
the structure described at 6:44–50, as pointed out by Patent Owner (see PO
Resp. 83), we credit Mr. Kemnitzer’s testimony that Merit discloses a lock
that extends upwardly from the base to allow a user to actuate a lock (see,
e.g., Ex. 1025 ¶ 143). Importantly, Merit discloses that a “ring or other type
of pull (such as a ‘T’ member) is attached to extension 14a to allow
extension 14a to be pulled up to release base 3 from member 7.” Ex. 1004,
6:44–50 (emphasis added). We determine one of ordinary skill in the art
would have understood from this disclosure that Merit’s pull would extends
upwardly from the base. Thus, by disclosing extension 14a that is “pulled
up to release base 3 from member 7,” Merit discloses a “front lock [that]
defines a portion that extends upwardly from the divider floor,” as recited in
claim 10. Ex. 1001, 50:30–32.
We are persuaded by Petitioner’s argument and evidence, and find
that Petitioner has established by a preponderance of the evidence that Merit
discloses the limitations of claim 10 for the reasons stated by Petitioner in
the Petition, which we adopt as our own findings, as further supported by the
testimony of Mr. Kemnitzer.

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5. Claim 12
Claim 12 is an independent claim that is similar to claim 1 with the
exception that claim 12 further recites, “wherein the front rail further defines
a tongue extending upwardly from the rail, and wherein the divider floor
defines a groove for receiving the tongue when the divider floor is mounted
to the front rail.” Compare Ex. 1001, 49:56–50:7, with id. at 50:56–51:11.
To address the claimed “tongue extending upwardly from the rail, and
wherein the divider floor defines a groove for receiving the tongue,”
Petitioner asserts that Merit discloses this limitation. Pet. 43. In support of
this assertion, Petitioner submits an annotated version of Merit’s Figure 6B,
which we reproduce, below:
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Figure 6B is an exploded view that illustrates “the method of disengaging
and re-engaging a divider base member and mounting member of a shelf
management system.” Ex. 1004, 2:66–3:2. Petitioner’s expert, Mr.
Kemnitzer, testifies that the annotated figure shows the tongue (in green)
and groove (in red) prior to when the divider floor is mounted to the front
rail. Ex. 1002 ¶ 134.
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Patent Owner, on the other hand, contends that Merit does not
disclose a tongue that extends upwardly from the rail. PO Resp. 72. Patent
Owner asserts that Merit’s tongue, “at best,” is substantially horizontal. Id.
We agree with Patent Owner that Merit does not disclose the claimed
tongue. Petitioner’s assertion that Merit discloses this structure is not
supported by the record.
The plain and ordinary meaning of the limitation requires a tongue
that extends upwardly, or vertically, from the rail. Ex. 1001, 51:8–9. At
least Figure 93A of the Specification (reproduced below, and highlighted by
Patent Owner (PO Resp. 77)) provides subject matter support for the
claimed limitation:
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Figure 93A depicts an exemplary divider mounting to a front rail. Ex. 1001,
11:62–63. The Specification describes that tongue 584 extends upwardly
from front rail 550 and that the tongue is received in corresponding groove
560. See Ex. 1001, 26:38–49; see also Ex. 2006 ¶ 113 (testifying to the
same).
Patent Owner submits an annotated version of Merit’s Figure 4 to
further illustrate how Merit’s structure does not disclose an upwardly-
extending tongue (PO Resp. 76), which we reproduce, below:
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Figure 4 depicts an isometric view of Merit’s “disengaged divider member
and mounting member of a shelf management system.” Ex. 1004, 2:52–54.
Patent Owner asserts that Merit’s “‘base 3’ may be unlocked from
‘mounting member 7’ by ‘slid[ing] back’ base 3 away from the front of the
shelf.” PO Resp. 76 (citing Ex. 1004, 4:38–42) (alteration in original); see
also supra p. 40 (reproducing Petitioner’s annotated version of Merit’s
Figure 1 that depicts “base” 3 in relation to “mounting member” 7). Patent
Owner’s expert, Mr. Visser, testifies that “[t]his ‘slid[ing] back’ of base 3 is
done using ‘predominantly horizontal motion.’” Ex. 2006 ¶ 112 (citing Ex.
1004, 6:7–11) (alteration in original).
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Patent Owner further asserts that a skilled artisan would have
understood Merit’s “tongue” to only extend horizontally, and submits an
annotated version of Merit’s Figure 6B (PO Resp. 74), reproduced below, to
illustrate this point:

Figure 6B depicts Merit’s method of disengaging and re-engaging a divider
base. Ex. 1004, 2:66–3:2. Patent Owner’s expert, Mr. Visser, testifies that a
skilled artisan “would only consider the portion of the green-highlighted
projection that is actually received by the corresponding groove to be a
‘tongue’ within the meaning of the Patent.” Ex. 2006 ¶ 108.
Having weighed the competing testimony of Mr. Visser (Patent
Owner’s expert) and Mr. Kemnitzer (Petitioner’s expert), and having
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reviewed the relevant disclosure within Merit, we agree with Patent Owner,
and credit Mr. Visser’s testimony in support of Patent Owner’s argument.
We find that Merit’s structure—which Petitioner relies on for satisfying the
claimed “extending upwardly”—is simply a nominal height for allowing
Merit’s horizontal “tongue” to be received within Merit’s horizontal
“groove.” Merit’s “tongue” is three dimensional (see, e.g., Ex. 1004, Fig. 4)
and will have a height, width, and length, and we do not find the presence of
a height to satisfy the claimed “extending upwardly.” We find that the
height, which Petitioner relies on for “extending upwardly” (see Pet. 43), is
simply vertical spacing to allow Merit’s horizontal “tongue” to fit within
Merit’s horizontal “groove.” See, e.g., Ex. 1004, Figs. 5B, 6B.
The claim not only recites a “tongue” that “extends upwardly from the
rail,” but also recites a “groove for receiving the tongue.” Ex. 1001, 51:8–
11. We agree with Patent Owner that Merit does not disclose an upwardly
extending tongue that is received in a groove. As shown in Merit’s Figures,
Merit’s “tongue” is horizontal and is received in a horizontal groove.
Although this tongue has a nominal height so that it can fit within the
groove, we find that it is substantially horizontal and does not extend
upwardly. Petitioner has failed to persuade us that Merit’s horizontal tongue
and horizontal groove satisfy the claimed structure.
We find that Petitioner has not established by a preponderance of the
evidence that Merit discloses the limitations of claim 12 for the reasons
argued by Patent Owner, and as further supported by the declarations of Mr.
Visser.

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6. Summary of Ground 1
Based on the foregoing, we determine Petitioner has proven by a
preponderance of the evidence that claims 1, 2, and 10 are anticipated by
Merit. Petitioner has not shown that claim 12 is anticipated by Merit.

E. Ground 3 – Claim 8 as Unpatentable Over Merit and Howerton
Petitioner submits that claim 8 is unpatentable over Merit in view of
Howerton. Pet. 52.

1. Howerton (Ex. 1006)
Howerton is a U.S. Patent Application titled “Pusher-Type Display
System.” Ex. 1006, code (54). Howerton discloses a display device having
a spring-based pusher carried on an elongated track. Id. at code (57). To
depict an embodiment of Howerton’s display device, we reproduce its
Figure 2, below:

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Figure 2 depicts a product-holding display system. Id. ¶¶ 15, 16. In
particular, Figure 1 depicts an empty display system for displaying and
dispensing products. Id. ¶ 39. Products are driven forward by pusher
element 20. Id.
Howerton further discloses that, in an exemplary embodiment, “[t]he
faceplate and body have interengaged features permitting the faceplate to be
rotated about a longitudinal axis . . . , in which the faceplate presents a
relatively narrow contract surface and a second orientation . . . wherein the
faceplate presents a relatively wide contact surface.” Ex. 1006 ¶ 43.

2. Analysis
Claim 8 depends from claim 1 and further recites, “wherein the pusher
mechanism further includes a pusher extender that can rotate to one or more
positions.” Ex. 1001, 50:24–26.
To satisfy the claim, Petitioner relies on Howerton. See Pet. 52–53.
In particular, Petitioner relies on Howerton’s disclosure of a “faceplate and
body hav[ing] interengaged features permitting the faceplate to be rotated
about a longitudinal axis 512 at least between a first orientation” in which
“the faceplate presents a relatively narrow contact surface and a second
orientation . . . wherein the faceplate presents a relatively wide contact
surface.” Id. at 52–53 (quoting Ex. 1006 ¶ 43) (emphases omitted, ellipses
in original).
In combining Merit with Howerton, Petitioner reasons that
A POSITA would have been motivated to apply the
teachings of Howerton to Merit [to] provide the ability to adjust
the pusher contact span for wide and narrow products . . . .
Incorporating Howerton’s faceplate on the system of Merit
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would have required no modification to the system of Merit other
than to mount a faceplate onto paddle 5 of Merit.
Pet. 53–54 (citing Ex. 1002 ¶ 158).
Patent Owner generally argues that Petitioner’s obviousness ground is
tainted by impermissible hindsight. See PO Resp. 91–93. Patent Owner
argues that a skilled artisan “would not have been motivated to add
Howerton’s faceplate to Merit’s pusher 5 in order to accommodate wider
products.” Id. at 93 n.11.
Patent Owner’s argument is not persuasive. We agree with Petitioner
that the proposed modification would have improved Merit’s device by
allowing it to accommodate products with a more diverse range of sizes.
See Pet. 52–54. Petitioner submits the following annotated figure to
illustrate the combined structure (id. at 54):
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The above figure depicts Petitioner’s proposed modification to Merit, in
which Howerton’s rotatable “pusher extender” (peach color) is attached to
Merit’s “pusher” (green color). See id.
We agree with Petitioner and credit the testimony of Mr. Kemnitzer
that the proposed modification would have improved Merit’s device by
accommodating products of varying widths. See Ex. 1002 ¶ 159. Patent
Owner’s argument to the contrary is not persuasive.
We are persuaded by Petitioner’s argument and evidence, and find
that Petitioner has established by a preponderance of the evidence that Merit,
as modified by the teachings of Howerton, satisfies the limitations of claim 8
for the reasons stated by Petitioner in the Petition, which we adopt as our
own findings, and as further supported by the testimony of Mr. Kemnitzer.
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Based on the foregoing, we determine Petitioner has proven by a
preponderance of the evidence that claim 8 is unpatentable over Merit and
Howerton.

F. Ground 5 – Claim 11 as Unpatentable Over Merit and
Rataiczak
Petitioner submits that claim 11 is unpatentable as obvious over Merit
in view of Rataiczak. Pet. 57.

1. Rataiczak (Ex. 1008)
Rataiczak is a U.S. Patent Application titled “Merchandising System.”
Ex. 1008, code (54). To illustrate Rataiczak’s merchandising system, we
reproduce its Figure 1, below:

Figure 1 is a perspective view of a merchandising system including a track
mounted on a front rail. Id. ¶ 17.
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Rataiczak discloses an embodiment in which its tracks and dividers
are secured to its front rail through “teeth,” or “engaging elements which
selectively contact a suitably shaped engagement surface on the front rail.”
See id. ¶¶ 88, 90, 91.

2. Petitioner’s Challenge
Claim 11 is an independent claim that is similar to claim 1, with the
exception that claim 11 further recites, “wherein the front rail further defines
a plurality of teeth, and wherein the front lock can engage the plurality of
teeth to prevent slidable movement of the divider floor relative to the front
rail.” Compare Ex. 1001, 49:56–50:7, with id. at 50:33–55.
To address this limitation, Petitioner proposes to modify Merit’s
display system, as discussed above in connection with Ground 1, claim 1, to
include the teaching of Rataiczak. See Pet. 57. In particular, Petitioner
relies on Rataiczak’s disclosure that “front rail 490 accommodates one or
more tracks 492 and one or more dividers” and that “teeth 502 are provided
on the front rail . . . [to] selectively engage . . . teeth 504 provided on a
moveable engaging member 506.” Id. (quoting Ex. 1008 ¶¶ 88, 91; citing id.
at Figs. 25–28). We reproduce Figure 27 of Rataiczak, below:
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Figure 27 depicts an enlarged perspective view of Rataiczak’s track and
front rail, including teeth 502 on the front rail for engaging teeth 504 of
engaging member 506. See Ex. 1008 ¶¶ 45, 90.
In combining Merit with Rataiczak’s teachings, Petitioner reasons that
A POSITA would understand that engagement of teeth
(Rataiczak) rather than flat surfaces (Merit) increases the amount
of force required to displace the engaging elements. A POSITA
would recognize that the Rataiczak solution offers a more secure
engagement with the front rail, which offers potential benefits
such as a stronger lock between the divider and the front rail, and
would be motivated to incorporate the teachings of Rataiczak
when reviewing the Merit reference, for example as shown
below.
Pet. 58 (citation omitted) (citing Ex. 1002 ¶¶ 177–179). Petitioner submits
the following illustration to depict the proposed combination (id. at 59):
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The above figure depicts the location where, according to Petitioner, a
skilled artisan would have added teeth to Merit’s front rail and divider. See
id.

3. Patent Owner’s Arguments
Patent Owner responds that a skilled artisan would not have added
Rataiczak’s teeth to Merit’s display system. See PO Resp. 39; see also id. at
91 (arguing that Petitioner is relying on impermissible hindsight). In support
of this argument, Patent Owner presents the following sub-arguments:
(1) Petitioner’s expert “disavowed” Petitioner’s theory of obviousness
(PO Resp. 40–46);
(2) Petitioner’s “new obviousness theory fails” because Merit’s
system meets its stated goals without further modification (id. at 46–50);
(3) Adding teeth to Merit’s system would “create significant
drawbacks” (id. at 50–52); and
(4) A skilled artisan would not add teeth to the suggested location (id.
at 53–57).
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We address each of Patent Owner’s arguments separately, below.

4. Analysis
a) Petitioner’s expert did not “disavow” Petitioner’s
theory of obviousness
Patent Owner first argues Petitioner’s expert, Mr. Kemnitzer,
“testified that Merit’s mounting member 7 cannot be injection molded but
must instead be fabricated through a process called extrusion” (PO Resp. 41
(citing Ex. 2007, 186:22–187:8)) and that extrusion “would not allow for the
addition of teeth to the ‘backside of [Merit’s] protrusions 15 and 10a” (id. at
42) (emphasis omitted).
Patent Owner’s argument is not persuasive. Patent Owner
mischaracterizes Mr. Kemnitzer’s testimony as being a “disavowal” of
Petitioner’s theory of obviousness. See PO Resp. 40. We do not find Mr.
Kemnitzer’s cross-examination testimony (Ex. 2007, 186:22–187:8) as to
the extrusion of Merit’s rail as upending Petitioner’s obviousness theory, as
Patent Owner contends. See PO Resp. 41–46. Rather, we agree with and
credit Mr. Kemnitzer’s testimony that a skilled artisan would have
recognized numerous ways (not just extrusion) to manufacture a device
incorporating the concept of “teeth” from Rataiczak onto Merit. Ex. 1025 ¶¶
83, 84.
b) Petitioner’s obviousness theory does not “fail”
and Petitioner’s proposed modification improves Merit’s
system
Patent Owner also argues that Merit’s system “is perfectly adequate
for its intended purpose” and incorporating teeth would “present significant
drawbacks,” including adding “significant cost and complexity to the
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system.” See PO Resp. 46. Patent Owner further asserts that Merit’s
“interference fit is perfectly adequate for the retail setting” (id. at 47) and
that Merit’s interference fit “allows for ‘convenient[’] repositioning [of] the
divider[s],” thereby teaching against the use of teeth (id. at 48) (alterations in
original). Patent Owner also asserts that “there would be no reason to
incorporate teeth into Merit’s system to prevent fishtailing,” as “Merit’s
system already accomplishes this goal.” Id. at 49 (citing Ex. 2006 ¶ 165).
Patent Owner’s argument is not persuasive. Even if we assume that
Merit’s system is already adequate for its intended purpose, we find that the
proposed modification would nevertheless improve Merit’s system. More
particularly, even if we assume that Merit’s system already allows for
convenient repositioning of the dividers and prevents fishtailing (see PO
Resp. 47–49), we find that the modification improves Merit’s design by
providing dividers that are less likely to move out of position. We agree
with and credit Mr. Kemnitzer that
[T]he improvement provided by teeth is significant. Teeth would
increase the contact surface area between the front rail and the
lock of Merit, and proportionately increase the frictional force
between these two components. This is true for teeth running
parallel to the length of the rail and teeth running perpendicular
to the length of the rail. Teeth running perpendicular to the length
of the rail configuration further increase the amount of force
required to displace the engaging elements, by virtue of the
mechanical interaction of the teeth. A POSITA would understand
that additional security of the engagement would provide
benefits. For example, the more secure engagement would be
helpful for cylindrical-shaped products being pushed forward by
the pusher because these products tend to slide past one another,
creating lateral pressure on the dividers and moving them
sideways. Rataiczak teaches that a lock with teeth is effective to
prevent any tendency for “dividers to ‘walk’ in relation to the
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mounting member when cylindrical items, such as cans or
bottles, are pushed forward on a track.”
Ex. 1025 ¶ 72 (citing in part Ex. 1008 ¶ 9, quoting id. at ¶ 98).

c) Adding teeth to Merit’s system would not “create
significant drawbacks”
Patent Owner also argues that the proposed modification “would
necessarily allow some degree of divider fishtailing” and that it would
“present[] manufacturing challenges that would increase the cost of Merit’s
system.” PO Resp. 50. In particular, Patent Owner contends that a skilled
artisan would not be motivated to add teeth to Merit as proposed, because
doing so would introduce “tolerance, or play, into the system,” resulting in
fishtailing and rendering Merit inoperable for its intended purpose. Id. at 51.
Patent Owner also contends that “adding teeth would require additional
manufacturing processes that would be costly to implement,” further
deterring a skilled artisan from making the modification. Id. at 52.
Patent Owner’s arguments are not persuasive.
As to fishtailing, we are not persuaded that the proposed modification
would introduce fishtailing. We credit Mr. Kemnitzer’s testimony that
“teeth do not necessarily create extra space or ‘play’ beyond what is already
required for the lock of Merit to operate.” Ex. 1025 ¶ 80. “A person of
ordinary skill is also a person of ordinary creativity, not an automaton”
(KSR, 550 U.S. at 421), and we find that a skilled artisan would have been
able to incorporate teeth into Merit’s front rail and divider without
introducing undesirable fishtailing.
We disagree with Patent Owner’s argument that a skilled artisan
would have been dissuaded from making the modification due to added cost
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and complexity. See PO Resp. 52. Even if we assume Patent Owner’s
argument that the modification would have added cost and complexity to
Merit’s system (see id.), a skilled artisan would have weighed the benefit
gained—a more secure connection—against the added cost of manufacture
and would have nevertheless made the modification. See Winner Int’l
Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact
that the motivating benefit comes at the expense of another benefit, however,
should not nullify its use as a basis to modify the disclosure of one reference
with the teachings of another. Instead, the benefits, both lost and gained,
should be weighed against one another.”). Having reviewed the competing
testimony of Petitioner’s expert (Mr. Kemnitzer) and Patent Owner’s expert
(Mr. Visser), we find more persuasive Mr. Kemnitzer’s testimony that the
modification would add minimal costs to the tooling and parts, if any. See
Ex. 1025 ¶¶ 85–89. We further find that the downside of the added cost is
outweighed by the benefit of providing a more secure engagement. See id.
¶ 72 (“A POSITA would understand that additional security of the
engagement would provide benefits. For example, the more secure
engagement would be helpful for cylindrical-shaped products being pushed
forward by the pusher because these products tend to slide past one another,
creating lateral pressure on the dividers and moving them sideways.”).

d) A skilled artisan would have added teeth at the
suggested location
Patent Owner further argues that a skilled artisan, in combining the
Rataiczak’s teachings of teeth with Merit, would not add teeth to Merit’s
front rail as Petitioner proposes. See PO Resp. 53–57. Patent Owner
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submits that a skilled artisan, desiring to add teeth to Merit in order to
provide a more secure engagement between Merit’s rail and divider, would
have instead located teeth on Merit’s surface 12a. See id. To illustrate this
point, Patent Owner submits an annotated version of a partial view of
Merit’s Figure 4 (id. at 55), which we reproduce, below:

Figure 4 depicts Merit’s disengaged divider member and mounting member
of its shelf management system. Ex. 1004, 2:51–53. Patent Owner contends
that “it would be simpler and less expensive to implement a manufacturing
process that added teeth to surface 12a,” rather than on the underside of
10—which is what Petitioner’s expert proposes. PO Resp. 55 (citing Ex.
2006 ¶ 187).
Patent Owner’s argument is not persuasive. Rather, we find
persuasive Petitioner’s explanation that “because the front of [Merit’s]
system receives the most lateral forces (e.g., bumping/contact) during use”
(Pet. Reply 25 (citing in part Ex. 1025 ¶ 92)), a skilled artisan would have
located Merit’s teeth to Merit’s front rail and front lock as reasoned by
Petitioner (see Pet. 57–58).

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5. Summary of Ground 5
We are persuaded by Petitioner’s argument and evidence, and find
that Petitioner has established by a preponderance of the evidence that Merit
in view of Rataiczak satisfies the limitations of claim 11 for the reasons
stated by Petitioner in the Petition, which we adopt as our own findings, as
further supported by the testimony of Mr. Kemnitzer.
Petitioner has proven by a preponderance of the evidence that claim
11 is unpatentable over Merit in view of Rataiczak.

G. Ground 7 – Claims 13, 14, and 18 as Unpatentable Over Merit
and Bernardin
Petitioner contends that claims 13, 14, and 18 are unpatentable over
Merit in view of Bernardin. Pet. 65.

1. Bernardin (Ex. 1007)
Bernardin is a U.S. Patent titled “Display Tray for Aligned Particles.”
Ex. 1007, code (54). Below, we reproduce Figure 1 to depict an
embodiment of Bernardin’s display tray:
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Figure 1 is a perspective view of Bernardin’s “merchandiser.” Id. at 2:66.
More particularly, Figure 1 depicts “a merchandiser in accordance with the
invention” with a casing comprising “base module 10 and a variable number
of extension modules 11, 12, etc. The length of each extension module
represents a fraction (one third, for example) of the base module.” Id. at
3:38–43 (emphasis omitted). Two sidewalls (numbered as 21, 22 in Figure
6) are provided above bottom 23 for articles A0, A1, A2, etc. Id. at 3:44–48.
The articles are pushed by clamp/pusher member 24 against anterior wall 25.
Id. at 3:50–52.

2. Claim 13
Claim 13 is independent and is similar to claim 1 with the exception
that claim 13 further recites numerous other limitations, namely, “a divider
wall extending upwardly from the divider floor,” “a front barrier mounted to
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a front end of the divider, the front barrier defining a plane extending
perpendicularly to both the divider floor and the divider wall,” and “wherein
the front lock is positioned in front of the barrier and is configured to be
digitally accessible by a user’s thumb or finger when product is on the
divider floor and without having to push back product located on the divider
floor.” Compare Ex. 1001, 49:56–50:7, with id. at 51:12–34.

a) Petitioner’s Challenge
In challenging claim 13, Petitioner relies on Merit for satisfying the
same limitations recited in independent claim 1, and as set forth in Ground 1.
See Pet. 65–66.
The parties acknowledge, however, that Merit does not disclose a
“front barrier mounted to a front end of the divider.” See Pet. 65–66
(emphasis added); PO Resp. 58.
Instead, Petitioner submits that Merit discloses a “front barrier,” or
“baffle plate 20,” mounted to the front rail. Ex. 1004, 4:56–64, Figs. 2, 4,
6A, 6B. To illustrate Merit’s “front barrier” mounted to its front rail, we
reproduce Merit’s Figure 4, below:
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Figure 4 depicts a disengaged divider member and mounting member of
Merit’s shelf management system. Id. at 2:51–53. In particular, Figure 4
depicts slot 13 in mounting member 7 for holding baffle plate 20, which
prevents articles from being pushed off the shelf by spring 4 acting on
pusher plate 5 (shown in Figure 2). Id. at 4:56–58.
To address the claimed “front barrier mounted to a front end of the
divider,” Petitioner relies on Bernardin’s teachings and proposes to modify
Merit. See Pet. 66. In particular, Petitioner asserts that “Bernardin discloses
a barrier, referred to as an anterior abutment wall 25A, located on a front
end of a divider.” Id. (citing Ex. 1002 ¶ 213) (emphasis added). To
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illustrate this finding, Petitioner submits an annotated version of Bernardin’s
Figure 16 (id. at 69), which we reproduce, below:

Figure 16 is a perspective view of two merchandisers of the merchandiser
shown in Figure 10. See Ex. 1007, 2:66–68, 3:11–12, 3:30–33. Petitioner
submits that the annotated figure illustrates a “front barrier,” abutment wall
25A (shown in blue), located on a front end of a divider wall. See Pet. 66.
Petitioner submits that this figure further depicts a “front lock access
opening” (shown in peach color) as being in front of the “front barrier.” See
id. at 68–69.
Petitioner further explains that Merit’s modified display system would
result in a “front lock . . . [that] is configured to be digitally accessible by a
user’s thumb or finger when product is on the divider floor and without
having to push back product located on the divider floor,” as also required
by claim 13. See Pet. 76.
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In modifying Merit based on Bernardin’s teachings, Petitioner
provides the following reasons:
(1) “A POSITA would have been motivated to apply the
teachings of Bernardin to Merit [to] prevent accidental tilting of
tall products at the front of the pusher rack” (Pet. 66);
(2) “Combining the teachings of Merit and Bernardin
would have been obvious to try and would have been a simple
substitution of one known element for another to obtain the same
predictable result, namely, preventing products from falling off
the shelf” (id. at 67);
(3) A “POSITA would have found it obvious to implement
the barrier configuration of Bernardin on the system of Merit for
the benefit of permitting access to the front lock of Merit
regardless of the location of product on the divider floor, thereby
saving time and improving safety for store personnel” (id. ); and
(4) “A POSITA would be motivated to apply the teachings
of Bernardin to Merit because by placing the barrier onto the
divider, the two components could be formed in one piece,
thereby reducing the number of system components and also
reducing material usage by not requiring a barrier across the
entire length of the front rail” (id. at 69).

b) Patent Owner’s Argument
Patent Owner argues that Petitioner’s proposed modification of Merit
is based on impermissible hindsight. PO Resp. 92 (citing Pet. 66). Patent
Owner contends that it is the ’007 Patent that teaches this structure and “[i]t
is improper for Petitioner to use that teaching of the ’007 Patent to guide its
obviousness analysis.” Id.
Patent Owner also presents numerous other arguments challenging
Petitioner’s combinability of Merit and Bernardin (see id. at 67–72), which
we also consider in our analysis.
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We find Patent Owner’s argument persuasive.

c) Analysis
Petitioner’s reasoning for modifying Merit (Pet. 66–69) is based on
impermissible hindsight.
Petitioner’s first reason for modifying Merit is to “prevent accidental
tilting of tall products at the front of the pusher rack.” Pet. 66. Petitioner’s
expert (Mr. Kemnitzer) testifies that a “POSITA would have been motivated
to apply the teachings of Bernardin to Merit as an alternative means of
preventing accidental tilting of tall products at the front of the Merit pusher
track.” Ex. 1002 ¶ 213. Petitioner submits that the modification would be
“obvious to try” and a “simple substitution.” Pet. 67.
Merit discloses a “barrier wall” for preventing the accidental tilting of
tall products. Indeed, Petitioner acknowledges as much. See Pet. 66 (“Merit
discloses a front barrier, i.e., ‘the baffle plate 20.’”). Patent Owner submits
an annotated version of Merit’s Figure 4 (PO Resp. 60) to illustrate Merit’s
“barrier wall,” which we reproduce, below:
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Figure 4 depicts a disengaged divider member and mounting member of
Merit’s shelf management system. Ex. 1004, 2:51–53. Patent Owner
explains that baffle plate 20 prevents articles supported on Merit’s divider
base 3 from being pushed off the front of the shelf. PO Resp. 60. Merit
discloses that “[s]lot 13 in mounting member 7 holds a baffle plate 20 which
prevents articles from being pushed off the shelf by spring 4 acting on
pusher plate 5.” Ex. 1004, 4:56–58. Merit further discloses that “[b]affle
plate 20 can be any appropriate size but preferably allows a shopper to see a
substantial part of the article behind the plate.” Id. at 4:62–64.
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Because Merit already discloses a “front barrier” that is adjustable in
size to prevent tall articles from falling off of the front of the shelf, we are
not persuaded that a skilled artisan would have modified Merit to include
barriers mounted to its dividers for the purpose of “prevent[ing] accidental
tilting of tall products at the front of the pusher rack.” Pet. 66. We do not
find that the proposed modification would have improved Merit’s ability to
prevent products from falling off of the front of the shelf in any way.
Petitioner also reasons that relocating Merit’s baffle plate 20 from its
front rail to its divider “would have been a simple substitution of one known
element for another to obtain the same predictable result, namely, preventing
products from falling off the shelf.” Pet. 67 (emphasis added).
We disagree.
We do not find the proposed modification to be a simple substitution.
Rather, we find the proposed modification to be complex, involving a
complete redesign of Merit’s dividers. We also find that the modified design
would not function as effectively for restraining products of varying widths
without removal of its dividers, as Merit’s original design boasts. See, e.g.,
Ex. 1002, 2:12–17 (“This invention allows . . . the widths of the articles to
be displayed to be adjusted without having to physically remove the divider
structures from the shelves”).
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To illustrate our point, we start with Merit’s current “barrier wall”
(baffle plate 20) by reproducing Merit’s Figure 4, below:

Figure 4 depicts a disengaged divider member and mounting member of
Merit’s shelf management system. Ex. 1004, 2:51–53. We find Merit’s
current “barrier,” or baffle plate 20, to be straightforward, as it utilizes slot
13 within mounting member 7 for holding a variably-sized baffle plate 20 to
prevent variably-sized products from falling off the front shelf. See id. at
4:56–58, 4:62–64.
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Turning to Bernardin’s teachings, Petitioner submits an annotated
version of Bernardin’s Figure 16 (Pet. 69), which we reproduce, below:

According to Petitioner, the annotated figure depicts Bernardin’s “front
barrier” (shown in blue) mounted to the front end of a “divider” (21A, 22A)
and a “front lock” (shown in peach color) with an access opening at the front
of the “front barrier.” See id. at 68–69.
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Petitioner submits that Bernardin’s teaching would lead a skilled
artisan to transform Merit as shown below (Pet. 70):

The above figure is a modified version of Merit’s Figure 2. Id. Merit’s
Figure 2 depicts a plan view of a shelf divider structure of a shelf
management system. Ex. 1004, 2:46–47. Petitioner submits that a skilled
artisan would have modified Merit by replacing Merit’s baffle plate 20—
which can extend along the entire length of the product and between
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adjacent dividers—with the shortened “barrier” shown in blue. See Pet. 68–
69; see also Ex. 2006 ¶ 203. Petitioner reasons that a skilled artisan would
have “plac[ed] the barrier onto the divider, the two components could be
formed of one piece, thereby reducing the number of system components
and also reducing material usage by not requiring a barrier across the entire
length of the front rail.” Pet. 69.
Having reviewed the competing testimony of Petitioner’s expert (Mr.
Kemnitzer) and Patent Owner’s expert (Mr. Visser), however, we agree with
and credit Mr. Visser’s testimony that “a POSITA would not have been
motivated to adopt this configuration.” Ex. 2006 ¶ 194.
We find that Petitioner’s proposed modification of Merit is not
simple, as it proposes to replace Merit’s baffle plate 20 with a separate
barrier on each of Merit’s dividers (Pet. 70), which itself is not taught by
Bernardin (see Ex. 1007, Figs. 10, 16; see also PO Sur-Reply 30 (“Bernardin
teaches barriers [25A] inserted into slots on two opposing walls within a
fixed-width tray”)). Adding further complexity to Merit’s original design is
the fact that Petitioner’s new “barriers” are formed as part of each “divider.”
Pet. 69. Petitioner explains that a skilled artisan would have “plac[ed] the
barrier onto the divider, the two components could be formed of one piece,
thereby reducing the number of system components and also reducing
material usage by not requiring a barrier across the entire length of the front
rail.” Id. (emphasis added).
We are not persuaded that designing partial-width barriers formed on
each divider to replace Merit’s full-width baffle plate is as simple as
Petitioner contends.
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Notably, Merit’s system utilizes dividers that slide laterally along the
shelf to accommodate products of varying widths. See, e.g., Ex. 1004, 1:56–
65, 2:12–28. We are not persuaded that replacing Merit’s full-width baffle
plate 20—which varies in size but can be easily removed from the front rail
(see id. at 4:56–64)—with shortened barriers formed as part of Merit’s
dividers would easily accommodate products of varying widths.
For example, under the proposed modification, if the barriers are too
narrow, products with wide diameters may fall off or extend past the front of
the shelf (e.g., a large can of coffee grounds). If the barriers are too wide,
the dividers could not be adjusted narrowly to accommodate a narrow
product (e.g., a vertical tube of toothpaste). In Petitioner’s modified design,
if wider “barriers” were desired (e.g., to accommodate a large can of coffee
grounds), and because the dividers are formed as part of the barriers, the
dividers would need to be removed and replaced with dividers having wider
barriers.
To accommodate products of vastly varying widths, on the other hand,
Merit’s original design simply requires its baffle plate to be replaced,
without requiring the removal of its dividers. See Ex. 1004, 2:12–20, 4:56–
64. Indeed, Merit discloses that its “invention allows . . . the widths of the
articles to be displayed to be adjusted without having to physically remove
the divider structure from the shelves . . . merely by pressing down on a
resilient extension.” Id. at 2:12–20 (emphasis added).
We find that the proposed modification would have required extensive
redesign and would have resulted in more dividers than Merit’s original
system. Because Petitioner’s proposed design would have required the
removal of the divider structure in order to change the width of the front
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barrier, we are not persuaded that a skilled artisan would have found
Petitioner’s modification to be obvious to try or a simple substitution.
Furthermore, neither Merit nor Bernardin teach shortened barriers,
which only extend partway across a product’s width. See Ex. 2006 ¶ 203
(“Similar to Merit’s baffle plate 20, [Bernardin’s] abutment wall 25A
extends across the entire width of the product support in each tray”). Absent
any teaching from either Bernardin or Merit, we find that Petitioner’s
proposed modification is based on impermissible hindsight. Indeed, we find
that the proposed modification is based solely on a desire to meet the claim
limitation “a front barrier mounted to a front end of the divider” while
maintaining Merit’s functionality of slidable divider walls. See Ex. 1004,
1:56–65, 2:17–28.
Claim 13 also recites, “wherein the front lock is positioned in front of
the barrier and is configured to be digitally accessible by a user’s thumb or
finger when product is on the divider floor and without having to push back
product located on the divider floor.” Ex. 1001, 51:22–26.
Petitioner reasons that a skilled artisan would have relocated Merit’s
front lock to be in front of the barrier “for the benefit of permitting access to
the front lock of Merit regardless of the location of product on the divider
floor, thereby saving time and improving safety for store personnel.” Pet. 67
(citing Ex. 1002 ¶¶ 216, 217). Of the ’007 patent, Merit, and Bernardin,
however, the only one of these patent documents to explicitly teach
permitting easy access when product is on the divider floor is the ’007
patent. We agree with Patent Owner’s contention that “[Petitioner] has not
identified any teaching in the prior art that placing a barrier back from the
front of a shelf to make a lock ‘digitally accessible . . . when product is on
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the divider floor’ was desirable.” PO Sur-Reply 30 (ellipsis in original).
Rather, it is the ’007 patent that describes this desirability:
When located at the front end of the divider and in front of the
divider wall 522 and in front of barrier 556, the lock is digitally
accessible by an individual providing maintenance to the shelf,
restocking the shelf or replanogramming the shelf, even when
product is on the divider floor 554 and even when the divider
floor 554 is full of product (i.e., no additional product can fit on
the divider floor). The lock (such as cam 720) can be located on
the divider such that the lock is in front of product when product
is on the divider floor 554 and product will not interfere with
access to the lock in any position of the product when the 15
product is on the divider floor 554.
Ex. 1001, 42:4–15 (emphasis added).
Given the extent of the proposed modifications, we determine that the
Petition improperly uses Patent Owner’s claim 13 as a guide to modify
Merit’s merchandising system to resemble the claimed invention. See W.L.
Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1552 (Fed. Cir. 1983)
(“The result is that the claims were used as a frame, and individual, naked
parts of separate prior art references were employed as a mosaic to recreate a
facsimile of the claimed invention.”). In other words, Petitioner’s
modification of Merit is a bridge too far, and Petitioner’s analysis is
distorted by impermissible hindsight. See KSR, 550 U.S. at 421 (“A
factfinder should be aware, of course, of the distortion caused by hindsight
bias and must be cautious of arguments reliant upon ex post reasoning.”);
Graham, 383 U.S. at 36 (warning against a “temptation to read into the prior
art the teachings of the invention in issue” and instructing courts to “guard
against slipping into use of hindsight”).

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d) Summary of Claim 13
We find that Petitioner has not established by a preponderance of the
evidence that Merit in view of Bernardin satisfies the limitations of claim 13.
Petitioner has not shown that claim 13 is unpatentable over Merit and
Bernardin.

3. Claims 14 and 18
Claims 14 and 18 depend directly from independent claim 13 (Ex.
1001, 51:35–38, 51:50–52) and Petitioner’s challenge of claims 14 and 18
suffers from the same infirmities as its challenge to claim 13 (see Pet. 81–
82).
For the same reasons discussed above in connection with independent
claim 13, Petitioner has not established by a preponderance of the evidence
that Merit in view of Bernardin satisfies the limitations of claims 14 and 18,
and Petitioner has not shown that claims 14 and 18 are unpatentable over
Merit and Bernardin.

H. Ground 8 – Claims 15, 19–21, and 24–26 as Unpatentable
Over Merit, Bernardin, and Rataiczak
In challenging claims 15, 19–21, and 24–26 as unpatentable over
Merit in view of Bernardin and Rataiczak, Petitioner relies on the same
unsupportable findings and reasoning discussed above in connection with
Ground 7, which proposes to combine Merit with Bernardin. See Pet. 82 (“It
would have been obvious to combine the teachings of Merit, Bernardin, and
Rataiczak for the same reasons set forth [above]”).
For the same reasons discussed above in connection with Ground 7
(supra Part II.G.2.c), Petitioner has not established by a preponderance of
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the evidence that Merit in view of Bernardin and Rataiczak satisfies the
limitations of claims 15, 19–21, and 24–26, and Petitioner has not shown
that claims 15, 19–21, and 24–26 are unpatentable over Merit, Bernardin,
and Rataiczak.

I. Ground 9 – Claims 16 and 22 as Unpatentable Over Merit,
Bernardin, Rataiczak, and Howerton
In challenging claims 16 and 22 as unpatentable over Merit in view of
Bernardin, Rataiczak, and Howerton, Petitioner relies on the same
unsupportable findings and reasoning discussed above in connection with
Ground 7, combining Merit with Bernardin. See Pet. 91 (referencing
Petitioner’s analysis under Ground 7).
For the same reasons discussed above in connection with Ground 7
(supra Part II.G.2.c), Petitioner has not established by a preponderance of
the evidence that Merit in view of Bernardin, Rataiczak, and Howerton
satisfies the limitations of claims 16 and 22, and Petitioner has not shown
that claims 16 and 22 are unpatentable over Merit, Bernardin, Rataiczak, and
Howerton.

J. Grounds 2, 4, 6, and 10 – Claims 1, 2, 8, 10–12, and 26 as
Unpatentable Over Merit, Alves, and Other References
Petitioner alternatively contends that claims 1, 2, 8, 10–12, and 16 are
unpatentable over at least Merit and Alves. See Pet. 5. As distinguished
from Ground 1, in which Petitioner contends that claims 1, 2, 10, and 12 are
anticipated by Merit, Petitioner’s alternative challenges (based on Merit and
Alves) are premised on a contingent claim construction that has not been
argued by Petitioner or Patent Owner.
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In particular, Petitioner relies on Alves in the event that we construe
the claimed “front lock moves the floor out of engagement with the front
rail” to mean “front lock moves the floor out of contact with the front rail.”
See Pet. 45 (citing Ex. 1002 ¶¶ 135–137) (emphases added). Petitioner does
not actually proffer this claim construction, however. See id. at 13
(explaining that “[i]n a prior case not involving the ’007 Patent, Petitioner
proposed a construction of the ‘front lock moves the floor out of contact
with the front rail’” (quoting Ex. 1016, 12)).
Patent Owner does not propose this claim construction, either. See
PO Resp. 7–33. Rather, Patent Owner argues that “[t]he Board thus need
not consider [these] grounds that rely on this combination (grounds 2, 4, 6,
10).” Id. at 89.
We agree with Patent Owner that we need not consider these grounds.
These grounds are contingent on a claim construction that neither party
advances and that we do not adopt. The contingency has not occurred and
any analysis under these grounds would be academic. See, e.g., Intex
Recreation Corp. v. Bestway (USA) Inc., IPR2019-00454, Paper 34 at 64
(PTAB June 22, 2020) (Final Written Decision) (“we need not address the
merits of . . . contingent grounds based on a claim construction we have not
adopted”).
Moreover, these grounds that rely on Alves (Grounds 2, 4, 6, and 10)
do not overcome the Petition’s infirmities as to claims 12–16, 18–22, and
24–26 addressed under Grounds 1, 7, 8, or 9. See Pet. 45–52, 56–57, 64–65,
92–93.
Because Petitioner submits these grounds under a contingency that has not
occurred, Petitioner has not established by a preponderance of the evidence
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that Merit and Alves in view of the other cited art (i.e., the art relied on under
Grounds 2, 4, 6, and 10) renders any of claims 1, 2, 8, 10–12, or 26
unpatentable.

III. CONCLUSION
Petitioner has shown that claims 1, 2, 8, 10, and 11 of the ’007 patent
are unpatentable. Petitioner has not shown that claims 12–16, 18–22, and
24–26 of the ’007 patent are unpatentable.

Claims
35
U.S.C. §
Reference(s)/Basis
Claims
Shown
Unpatentable
Claims
Not Shown
Unpatentable
1, 2, 10,
12
102 Merit 1, 2, 10 12
1, 2, 10,
12
103 Merit, Alves 1, 2, 10, 12
8 103 Merit, Howerton 8
8 103 Merit, Alves,
Howerton
8
11 103 Merit, Rataiczak 11
11 103 Merit, Alves,
Rataiczak
11
13, 14,
18
103 Merit, Bernardin 13, 14, 18
15, 19–
21, 24–
26
103 Merit, Bernardin,
Rataiczak
15, 19–21,
24–26
16, 22 103 Merit, Bernardin,
Rataiczak,
Howerton
16, 22
26 103 Merit, Alves,
Bernardin,
Rataiczak
26
Overall
Outcome
1, 2, 8, 10, 11 12–16, 18–22,
24–26
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IV. ORDER
Weighing the evidence of the disclosure of the references, the
competing testimony, and the reasoning to combine the references, we
determine that Petitioner has shown by a preponderance of the evidence that
claims 1, 2, 8, 10, and 11 of the ’007 patent are unpatentable.
A party seeking judicial review of this Final Written Decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.2

2 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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PETITIONER:

Gianni L. Cutri
Joel R. Merkin
Brian A. Verbus
Daniel R. Shearer
KIRKLAND & ELLIS LLP
gianni.cutri@kirkland.com
jmerkin@kirkland.com
brian.verbus@kirkland.com
daniel.shearer@kirkland.com

PATENT OWNER:

Joseph J. Berghammer
Scott A. Burow
Jordan N. Bodner
Kurt C. Riester
BANNER & WITCOFF, LTD.
jberghammer@bannerwitcoff.com
sburow@bannerwitcoff.com
jbodner@bannerwitcoff.com
kriester@bannerwitcoff.com