Tuftco Corp.v.Card-Monroe Corp.

Patent Trial and Appeal Board

Jul 22, 2015

12122004 (P.T.A.B. Jul. 22, 2015)

Trials@uspto.gov Paper 6
571-272-7822 Entered: July 22, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

TUFTCO CORP.,
Petitioner,

v.

CARD-MONROE CORP.,
Patent Owner.
____________

Case IPR2015-00505
Patent 8,141,505 B2
____________

Before KEN B. BARRETT, MEREDITH C. PETRAVICK,
and CARL M. DEFRANCO, Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314(a) and 37 C.F.R. § 42.108

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I. INTRODUCTION
Tuftco Corp. filed a Petition (Paper 2, “Pet.”) for an inter partes
review of U.S. Patent No. 8,141,505 B2 (“the ’505 patent”). The Petition
challenges the patentability of claims 1–19 of the ’505 patent on the ground
of obviousness under 35 U.S.C. § 103(a). Card-Monroe Corp., the owner of
the ’505 patent, filed a Preliminary Response to the Petition. Paper 5. We
have jurisdiction under 35 U.S.C. § 314(a).
We have authority to determine whether to institute an inter partes
review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). Pursuant to 35 U.S.C.
§ 314(a), an inter partes review may not be instituted unless “the
information presented in the petition . . . and any response . . . shows that
there is a reasonable likelihood that the petitioner would prevail with respect
to at least 1 of the claims challenged in the petition.”
For the reasons that follow, we deny the Petition.

II. BACKGROUND
A. The ’505 Patent
The ’505 patent pertains to a method of controlling the feeding and
placement of yarns of different colors in tufted articles such as carpets.
Ex. 1001, col. 1, ll. 11–19. The yarn color placement system described in
the specification utilizes a shift mechanism to shift the needle bar(s)
transversely and a yarn feed attachment for controlling the feeding of yarn to
the needles. Id. at col. 2, ll. 9–10, 26–30. According to the specification,
“[t]he yarn color placement system according to the principles of the present
invention further generally will be operated at increased or denser effective
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process stitch rates than conventional tufting processes.” Id. at col. 2, ll. 60–
63. Yarns of colors not to be visible in the completed pattern may be pulled
low so as to be hidden or buried, or may be pulled out of the backing. Id. at
col. 9, ll. 3–10, 19–25. This is performed by the yarn feed attachment. Id. at
col. 6, l. 67–col. 7, l. 5.

B. The Challenged Claims
The Petition challenges the patentability of claims 1–19. Of the
challenged claims, claims 1 and 8 are independent. These two independent
claims are reproduced below.
1. A method of tufting patterned articles including tufts of
multiple different color yarns, comprising:
feeding a backing material through a tufting machine at a
prescribed stitch rate for the patterned tufted article;
as the backing material is fed through the tufting
machine, reciprocating a series of needles to deliver the yarns
into the backing material;
engaging the yarns delivered into the backing material by
the needles with a series of gauge parts to pull loops of yarns
from the needles for forming tufts of yarns in the backing
material;
shifting at least some of the needles transversely
according to a shift profile of a pattern for the article;
selectively controlling feeding of the yarns to the needles
in accordance with the shift profile of the pattern for the article
to form high tufts of yarns and to pull back loops of yarns as
desired;
wherein the tufts of yarns are formed in the backing
material at an increased effective process stitch rate that is
substantially equivalent to the prescribed stitch rate times the
number of different colors formed in the pattern.
Ex. 1001, col. 9, l. 64–col. 10, l. 18.
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8. A method of operating a tufting machine to form
patterned tufted articles having multiple colors, comprising:
feeding a backing material through the tufting machine;
feeding a plurality of yarns to a series of needles carried
by a shiftable needle bar;
shifting the needle bar transversely according to a
programmed shift profile for the pattern of the tufted article;
controlling the feeding of the yarns to the needles in
accordance with programmed pattern instructions so as to feed
desired amounts of the yarns to the needles as needed to form
rows of high and low tufts of yarns in the backing material;
forming the tufts of yarns at an increased effective stitch
rate determined by multiplying the number of colors being
formed in the patterned tufted article by a desired fabric stitch
rate that comprises a number of stitches per inch desired for the
patterned tufted articles; and
wherein the feeding of the yarns to form the high and low
tufts tracks the shifting of the needles so as to substantially
maintain density of the tufts of yarns being formed in the
backing material in a direction of the rows of tufts and location
of the high tufts of yarns at desired positions across the backing
to form the patterned tufted articles.
Id. at col. 10, ll. 39–61.

C. Related Matters
The parties identify, as a related proceeding involving the ’505 patent,
Card-Monroe Corp. v. Tuftco Corp., Civil Action No. 1:14-cv-00292 (E.D.
Tenn.). Pet. 2; Paper 3 (“Patent Owner’s Mandatory Notice Information”).

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D. The Asserted Grounds
Petitioner asserts the following grounds of unpatentability (Pet. 19,
34):
Reference[s] Basis Claims
Kaju1 and Admitted Prior Art2 § 103(a) 1–19
Smith,3 Morgante ’203,4
Morgante ’521,5 and Admitted
Prior Art
§ 103(a) 1–19
Petitioner also relies on the Declaration of Ian Slattery, dated
December 23, 2014, (Ex. 1004) in support of Petitioner’s arguments.

III. ANALYSIS
A. Claim Construction
In an inter partes review proceeding, we give claim terms in
unexpired patents their broadest reasonable interpretation in light of the
specification of the patent in which they appear. 37 C.F.R. § 42.100(b).
Under that standard, we assign claim terms their ordinary and customary
meaning, as understood by a person of ordinary skill in the art, in the context
of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
1257 (Fed. Cir. 2007).

1 U.S. Patent No. 5,392,723, iss. Feb. 28, 1995 (Ex. 1005).
2 Petitioner also characterizes both grounds as being based on “conventional
tufting prior art” rather than Admitted Prior Art. See Pet. 4.
3 U.S. Patent No. 7,426,895 B2, iss. Sept. 23, 2008 (Ex. 1017).
4 U.S. Patent No. 6,244,203 B1, iss. June 12, 2001 (Ex. 1006).
5 U.S. Patent No. 6,502,521 B2, iss. Jan. 7, 2003 (Ex. 1007).
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On this record and for purposes of this Decision, we determine that
only the claim terms addressed below require express construction.
1. Prescribed Stitch Rate and Desired Fabric Stitch Rate
Independent claim 1 recites the step of “feeding a backing material
through a tufting machine at a prescribed stitch rate for the patterned tufted
article.” Independent claim 8 recites “a desired fabric stitch rate that
comprises a number of stitches per inch desired for the patterned tufted
articles.” The parties agree that the phrases “prescribed stitch rate” and
“desired fabric stitch rate” are synonymous. See Pet. 12; Prelim. Resp. 12.
The specification explains that, in some conventional machines, stitch
rate generally has been matched to the gauge (the number of needles per
inch in the widthwise direction). See Ex. 1001, col. 5, ll. 31–43, Fig. 3
(depicting needles 36 arranged in the widthwise direction of the tufted
article). The parties appear to agree that a “stitch rate” refers to the number
of stitches in the longitudinal direction. See Pet. 12–13 (proposing a
construction of “effective process stitch rate” in terms of stiches in the
longitudinal direction); Prelim. Resp. 12 (proposing a construction of
“prescribed stitch rate” in terms of stitches in the longitudinal direction); see
also Ex. 1004 ¶ 54 (Petitioner’s expert referring to “a usual prescribed
longitudinal stitch rate.”). The specification offers the example where there
are ten needles per inch and, thus, “the desired or prescribed fabric stitch rate
typically will be approximately ten stitches per inch.” Ex. 1001, col. 5, ll.
39–41.
The parties’ proposed constructions differ in that Petitioner maintains
that the prescribed or desired stitch rate is that resulting in a “square
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construction.” Pet. 12; Prelim. Resp. 12. We do not see a need to
incorporate what appears to be an area component into an otherwise linear
measurement. For purposes of this Decision, we construe “prescribed stitch
rate” and “desired fabric stitch rate” as meaning the number of stiches per
inch in the longitudinal direction, where that number is approximately equal
to the number of needles per inch in the transverse direction across the tufted
article.
2. Effective Process Stitch Rate and Effective Stitch Rate
Independent claim 1, with emphasis added, recites: “the tufts of yarns
are formed in the backing material at an increased effective process stitch
rate that is substantially equivalent to the prescribed stitch rate times the
number of different colors formed in the pattern.” Independent claim 8
recites an “effective stitch rate” similarly determined. The parties do not
draw a distinction between the two effective-stitch-rate terms. See Pet. 12–
13; Prelim. Resp. 14 (Patent Owner stating that the phrase including
“process” appears in claims 1 and 8). For purposes of this Decision, we treat
“effective process stitch rate” and “effective stitch rate” as synonymous and
use the two terms interchangeably.
Petitioner argues that “‘[e]ffective process stitch rate’ refers to the
number of needle bar strokes over a longitudinal increment of backing
material.” Pet. 13. Petitioner offers no basis for this construction other than
a citation to the declaration of its expert. Id. (citing Ex. 1004 ¶ 546). The

6 To the extent the declaration testimony contains claim construction
arguments, Petitioner’s reliance thereon is an inappropriate incorporation by
reference. 37 C.F.R. § 42.6(a)(3).
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cited paragraph is the declarant’s application of the Kaju reference to the
limitation along with a conclusory assertion that the phrase “reflects not the
number of yarn tufts, but instead the number of needle bar strokes.”
Ex. 1004 ¶ 54. Thus, Petitioner offers no persuasive argument or evidence
as to why its proposed claim construction is correct.
Patent Owner argues that effective process stitch rate “refers to the
number of needles that actually insert yarn tufts into the backing per linear
(not square) inch.” Prelim. Resp. 14. As Patent Owner points out, the
specification describes the desired increased tuft density as resulting from
the increased number of stitches per inch. Id. at 14–15; see, e.g., Ex. 1001,
col. 5, ll. 43–47 (“In the present invention, the operative or effective process
stitch rate run by the yarn color placement system will be substantially
higher or faster than typical desired fabric stitch rates, thus providing
enhanced or increased density of the tufts formed in the backing material.”).
Further, Patent Owner’s proposed construction is consistent with the
language of the claims which recite “tufts of yarns are formed . . . at an
increased effective process stitch rate” (claim 1) and “forming the tufts of
yarns at an increased effective stitch rate” (claim 8). Petitioner’s proposed
construction, where the term apparently would encompass needle bar strokes
even if no tufts were created, is inconsistent with the claim language and the
description in the specification.
Additionally, Patent Owner’s proposed construction—referring to
stitches per linear inch rather than per unit area—is consistent with our
construction of prescribed/desired stitch rate, which is in terms of stitches
per inch in the longitudinal direction.
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Accordingly, for purposes of this Decision, we adopt Patent Owner’s
construction of “effective process stitch rate” and “effective stitch rate” as
the number of needles that actually insert yarn tufts into the backing per
linear (not square) inch. Prelim. Resp. 14.

B. Obviousness of Claims 1–19 over Kaju and Admitted Prior Art
Petitioner asserts that claims 1–19 would have been obvious to a
person of ordinary skill in the art over Kaju (Ex. 1005) and Admitted Prior
Art. Pet. 19–34. Patent Owner argues that Petitioner has failed to show how
the references teach certain claim limitations. Prelim. Resp. 39–40.
Both parties characterize the machine disclosed in Kaju as an
Individually Controlled Needle (ICN) machine. Pet. 20; Prelim. Resp. 4–5.
Kaju’s machine has a needle select means that selects the needles to be
inserted into the backing. Ex. 1005, col. 3, ll. 12–14. The needle select
means is composed of, inter alia, a needle push bar, a plurality of needle
holders, and a plurality of air cylinders. Id. at col. 6, ll. 17–20. Selected
needles are latched to the needle push bar and are pierced into the backing
material upon a needle push bar stroke. See id. at col. 7, ll. 1–10. Patent
Owner explains “[i]n such a[n ICN] machine, if each needle is not engaged
within a needle holder by an air cylinder, that needle does not move and thus
no yarn is pulled thereby and no tuft is formed.” Prelim. Resp. 19; accord
Pet. 20 (“With ICN, the yarn feed is only active to selected needles for any
particular needle bar stroke, so the needle selection acts as the pattern yarn
feed control.”).
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Petitioner, in its claim charts, provides citations to “[a]dmitted prior
art.” See, e.g., Pet. 30.
1. Selectively controlling feeding of yarns to pull back loops
As mentioned, the ’505 patent discloses a method utilizing a yarn feed
attachment to pull yarn low or out of the backing in locations where the
particular yarn color is not to be visible. See Ex. 1001, col. 6, l. 67–col. 7,
l. 5. Independent claim 1, with emphasis added, recites the step of
“selectively controlling feeding of the yarns to the needles in accordance
with the shift profile of the pattern for the article to form high tufts of yarns
and to pull back loops of yarns as desired.” Petitioner identifies as the only
distinction between the subject matter of claim 1 and Kaju that “claim 1
states that yarn loops are pulled back, while Kaju[] never tufts those yarn
loops that are to be pulled back to a low height or out of the backing
entirely.” Pet. 22.
Petitioner argues:
Although the method described in detail in Kaju-723 does not
include the selective controlling of yarns to create high tufts of
yarn and to pull back loops of yarn, it does contemplate that
possibility of providing this feature by “controlling the length
of yarn fed to the needle in each stroke cycle.”
Id. at 21 (citing Kaju, 5:19–24). Petitioner points out that, in Kaju, yarn is
not fed to non-selected needles. Id. at 21–22. Petitioner’s expert explains
that “[i]n the ICN technique of Kaju-723, it is not necessary to pull back
loops of yarn, because the loops that would be pulled back are never tufted
through the backing fabric.” Ex. 1004 ¶ 53. Thus, Kaju avoids the visibility
of non-desired colors by not feeding such yarn to the backing. We fail to
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see, and Petitioner does not adequately explain, how Kaju’s disclosure of
controlling the length of the yarn fed “contemplate[s]” selective controlling
of the yarn to pull it back. Petitioner does not rely on any admitted prior art
for this feature. See Pet. 21–23, 30. We determine that Petitioner has not
offered persuasive argument or evidence to support the conclusion that a
person of ordinary skill in the art would have found it obvious to selectively
control feeding of yarn to pull back loops of yarn as recited in claim 1.
2. Effective process stitch rate
Independent claim 1 recites: “wherein the tufts of yarns are formed in
the backing material at an increased effective process stitch rate that is
substantially equivalent to the prescribed stitch rate times the number of
different colors formed in the pattern.” Independent claim 8 similarly recites
the step of “ forming the tufts of yarns at an increased effective stitch rate
determined by multiplying the number of colors being formed in the
patterned tufted article by a desired fabric stitch rate.”
Patent Owner argues that Petitioner has failed to show how Kaju or
any admitted prior art teach forming tufts at an increased effective process
stitch rate or effective stitch rate. Prelim. Resp. 39–40; see id. at 22–24. We
agree. Petitioner relies on Kaju for this feature. Pet. 22; see also id. at 25–
26 (referring, for claim 8, to its arguments regarding claim 1). Petitioner
asserts that, in a hypothetical situation applied to Kaju, “[t]he number of
tufts of yarn formed in the backing material by Kaju-723 is the same as with
conventional needle bar tufting in a square construction,” but argues Kaju
utilizes more needle strokes to obtain this tuft density thereby satisfying the
claimed effective rate limitation. Id. Petitioner’s arguments—in terms of
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area (square construction) and needle bar strokes—are premised on its
incorrect claim constructions for prescribed/desired stitch rate and effective
process stitch rate. Accordingly, Petitioner’s arguments are not
commensurate in the scope with the properly construed claim, and therefore
are not persuasive.
Petitioner has not met its burden with regard to either independent
claim 1 or independent claim 8. In addressing the remaining challenged
claims, all of which depend from one of these independent claims, Petitioner
does not present any persuasive argument or evidence that cures the
underlying defects concerning the independent claims. Accordingly,
Petitioner has not demonstrated a reasonable likelihood of prevailing on its
assertion that claims 1–19 are unpatentable over Kaju and admitted prior art.

C. Obviousness of Claims 1–19 over Smith, Morgante ’203,
Morgante ’521, and Admitted Prior Art
Petitioner asserts that claims 1–19 would have been obvious to a
person of ordinary skill in the art over Smith (Ex. 1017), Morgante ’203 (Ex.
1006), Morgante ’521 (Ex. 1007), and Admitted Prior Art. Pet. 34–56.
Patent Owner argues Petitioner’s cited references, including the “Admitted
Prior Art,” lack: “(1) selective controlling of yarn to pull back or ‘back-rob’
loops of yarn as desired; and (2) forming tufts of yarns at an increased
effective stitch rate or process stitch rate.” Prelim. Resp. 44–45. For the
reasons set forth below, we are not persuaded that Petitioner has established
a reasonable likelihood of prevailing on its asserted ground based on Smith,
Morgante ’203, Morgante ’521, and Admitted Prior Art.
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Smith discloses a system with variable stitch rate control such that the
rate of the feeding of the backing may be varied in order to control density
of the face yarn. Ex. 1017, col. 5, ll. 24–59. Petitioner relies on the two
Morgante references for, inter alia, the disclosure of independently
controlled yarn feed attachments. Pet. 36–39. Petitioner, in its claim charts,
provides citations to “[a]dmitted prior art.” See, e.g., id. at 53.
1. Selectively controlling feeding of yarns to pull back loops
For independent claim 1, Petitioner argues that “Smith describes the
selective controlling of yarns to create high tufts of yarn and to pull back
loops of yarn.” Id. at 42. However, Petitioner does not explain, and it is not
clear to us, how any of the cited portions (see id. at 42, 52) of Smith,
Morgante ’521, and admitted prior indicate that it was known in the prior art
to selectively control feeding of yarns to pull back loops. As such, we are
not persuaded that Petitioner has established a reasonable likelihood of
prevailing on its assertion that the subject matter of claim 1—including the
selective controlling of yarn to pull back loops—would have been obvious.
2. Effective process stitch rate
Petitioner asserts that Smith discloses an apparatus that could be
capable of forming tufts at the claimed effective process stitch rate but notes
that Smith does not disclose that the specific claimed rate should be used.
Pet. 42. Petitioner argues one would be motivated to increase the needle
stroke rate and that “[t]he precise ratio of the claim is shown in the high/low
multicolor patterning described in Morgante ’521.” Id. at 43 (citing Ex.
1007, col. 8, ll. 53–63); see id. at 47 (citing the same and Ex. 1004 ¶ 95).
Petitioner’s arguments—in terms of the number of needle bar strokes rather
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than the number of tufts formed—are not commensurate with the properly
construed claim.
Further, the cited portion of Morgante ’521 does not disclose any
“precise ratio.” Rather, the cited paragraph merely discloses the use of two
needle bars utilizing four colors of yarn. See Ex. 1007, col. 8, ll. 53–63.
The purported disclosure of the claimed ratio is developed by Petitioner’s
expert through the creation of a hypothetical situation using four colors and
two needle bars. Pet. 43; Ex. 1004 ¶ 78. We find the expert’s calculations
to be flawed. The hypothetical situation has two needle bars inserting four
colors of yarn at “the usual prescribed stitch rate . . . [of] 10 yarn tufts per
inch.” Ex. 1004 ¶ 78. Thus, the claimed rate should be 40 tufts per inch (the
prescribed rate of ten times four colors). However, Petitioner’s expert
concludes that the hypothetical situation results in 20 needle bar strokes per
inch for the combined two needle bars. Id. Petitioner’s reliance (Pet. 43) on
the expert’s alternative calculation (Ex. 1004 ¶ 78), where two colors are
tufted by one needle bar, is likewise misplaced as the pertinent claim
limitations refer to number of colors in the pattern (thus, four in the
hypothetical) not the number of colors for one needle bar.
To the extent that Petitioner asserts the claimed rate would be
obvious, we are not persuaded. Petitioner argues one would be motivated to
increase the stitch rate based upon the desired density but does not
adequately explain why one would select the claimed effective process stitch
rate. Pet. 43, 47. Petitioner’s expert testifies:
[w]hile the amount of increase [from the prescribed rate to the
effective process stitch rate] could vary significantly depending
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upon the types of yarns and pile heights used in a particular
pattern, it would in most circumstances be in the range of from
one to two times the “prescribed stitch rate” corresponding to
the gauge of the needles.
Ex. 1004 ¶ 87. Petitioner does not explain why, where the typical increase
purportedly is one to two times, the ordinary artisan would utilize an
effective rate of four times the prescribed stitch rate for a four-color pattern
such as mentioned in Morgante ’521.
Petitioner has failed to demonstrate a likelihood of prevailing with
respect to the effective process stitch rate limitation of claim 1 or the
effective stitch rate limitation of claim 8.
We determine that Petitioner has not met its burden with regard to
either independent claim 1 or independent claim 8. In addressing the
remaining challenged claims, all of which depend from one of these
independent claims, Petitioner does not present any persuasive argument or
evidence that cures the underlying defects concerning the independent
claims. Accordingly, Petitioner has not demonstrated a reasonable
likelihood of prevailing on its assertion that claims 1–19 are unpatentable
over Smith, Morgante ’203, Morgante ’521, and admitted prior art.

IV. CONCLUSION
For the reasons discussed above, we determine Petitioner has failed to
demonstrate there is a reasonable likelihood that Petitioner would prevail
with respect to at least one of the claims challenged in the Petition.

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V. ORDER
Accordingly, it is
ORDERED that pursuant to 35 U.S.C. § 314(a), inter partes review is
denied.

FOR PETITIONER:

Douglas Johnson
MILLER & MARTIN PLLC
djohnson@millermartin.com

FOR PATENT OWNER:

D. Scott Sudderth
Preston H. Heard
WOMBLE CARLYLE SANDRIDGE & RICE LLP
ssudderth@wcsr.com
pheard@wcsr.com