Whole Space Industries LTDv.z

Patent Trial and Appeal Board

Jul 24, 2015

10743178 (P.T.A.B. Jul. 24, 2015)

Trials@uspto.gov Paper 14
Tel: 571-272-7822 Entered: July 24, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

WHOLE SPACE INDUSTRIES LTD.,
Petitioner,

v.
ZIPSHADE INDUSTRIAL (B.V.I.) CORP.,
Patent Owner.
_______________

Case IPR2015-00488
Patent 8,245,756 B2
_______________

Before, PHILLIP J. KAUFFMAN, MEREDITH C. PETRAVICK, and
BARRY L. GROSSMAN, Administrative Patent Judges.

GROSSMAN, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

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I. INTRODUCTION
Whole Space Industries Ltd. (“Petitioner”) filed a Corrected Petition
requesting an inter partes review of claims 1–24 of U.S. Patent No. 8,245,756 B2
(“the ’756 patent”). Paper 5. In response to a Board Order to file a further
corrected Petitioner in compliance with 37 C.F.R. §§ 42.6(a)(2), 42.24(a)(1)(i)
(Paper 13), Petitioner filed a Second Corrected Petition. Paper 11 (“Pet.”).
1

Zipshade Industrial (B.V.I.) Corp. (“Patent Owner”) filed a Preliminary Response.
Paper 9 (“Prelim. Resp.”).
2
We review the Petition under 35 U.S.C. § 314, which
provides that an inter partes review may not be instituted “unless . . . there is a
reasonable likelihood that the petitioner would prevail with respect to at least 1 of
the claims challenged in the petition.”
Based on the record before us, we are not persuaded that the information
presented in the Petition demonstrates a reasonable likelihood that Petitioner would
prevail in proving that at least one challenged claim is unpatentable based on the
cited references. Accordingly, we deny the Petition and do not institute an inter
partes review.
A. Related Proceedings
Petitioner and Patent Owner agree that the ’756 patent is involved in a
pending district court case, Zipshade Industrial (B.V.I.) v. Lowe’s Home Centers,
Civil Action No. 2:14-cv-05934 (C.D. Cal.). Pet. 1–2; Paper 8, 2. Petitioner is a

1
In this Decision, references to the “Petition” or to “Pet.” are to the Second
Corrected Petition (Paper 11).
2
Patent Owner filed its Preliminary Response before Petitioner filed its Second
Corrected Petition. Accordingly, citation in the Preliminary Response to pages in
the first Corrected Petition may not coincide with page numbers in the Second
Corrected Petition. To avoid ambiguity, if necessary, we will cite to both the
Petition page cited in the Preliminary Response and the corresponding page in the
Second Corrected Petition.
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named defendant in this case. The original complaint was filed on July 29, 2014.
Petitioner was served with the complaint and related papers on July 31, 2014. A
First Amended Complaint was filed on August 15, 2014 (Ex. 1001).
3

B. The ’756 Patent
The disclosure in the ’756 patent relates generally to a control system and
method for raising and lowering window shades. Ex. 1005, col. 1, ll. 9–11. The
disclosed device and method are directed particularly to raising and lowering
pleated window shades and Venetian blinds without manipulation of a cord or
cords hanging downwardly from an upper support or rail member. Id. at col. 1, ll.
11–13.
The disclosed device is illustrated generally in Figure 1 of the ’756 patent,
reproduced below.

3
Based on docket report accessed on July 6, 2015. Ex. 3001.
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Figure 1 of the ’756 patent shows a perspective view
of a cordless shade assembly, with the shade in the lowered position.
As shown in Figure 1, a collapsible window covering or Venetian blind
capable of height adjustments without use of external pull cord has upper
elongated support 11, which, in a preferred form, includes channel 12. Ex. 1005,
col. 3, l. 66–col. 4, l. 4. Extending downwardly from upper elongated support 11 is
a collapsible member (e.g., pleats 16). Id. at col. 4, ll. 7–10. At the bottom of the
window blind is lower elongated member 13. Id. at col. 4, ll. 4–7. At least one
primary line (Figure 1 shows two primary lines 20, 21) is used to suspend lower
member 13. Id. at col. 4, ll. 15–18. Primary lines 20, 21 extend through pleats 16
and into channel 12 of upper elongated support 11. Id.
Primary rotors or winders are provided at upper support or rail 11, to entrain
the primary lines, and guide them toward a common connection or junction 22 (see
Figure 7) with at least one secondary line 24. Ex. 1005, col. 4, ll. 22–25.
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Secondary line 24 leads into a counterbalancing mechanism, shown generally at 30
(see also, structure circled in Figure 1, and Figures 9 and 10). Id. at col. 4, ll. 39–
46. Counterbalancing mechanism 30 includes rotary members 34 and 35 and
spring 32 coupled to one (e.g., rotary member 34) of the two rotary members so as
to urge the other rotary member (e.g., rotary member 35) to rotate in a winding
direction to wind and store the secondary line 24 onto one of the rotary members.
Id. at col. 4, ll. 50–62. The window covering is raised or lowered simply by
exerting up or down force on lower elongated member 13. Ex. 1005, col. 1, ll. 20–
24.
C. Illustrative Claim
Claims 1, 13, 18, and 21 are independent claims. Claim 1 recites a
collapsible window covering. Claim 13 recites a method of raising a collapsible
window covering without using a manual pull cord. Claim 18 recites a window
covering system. Claim 21 recites a cordless window covering system. Claim 1 is
illustrative and is reproduced below.
1. A collapsible window covering capable of height
adjustments, comprising:
an upper elongated support having a longitudinally extending
channel;
a collapsible member coupled to said upper elongated
support;
a lower elongated member coupled to said collapsible
member;
a first primary line coupled to said lower elongated member
and extends through a length of said collapsible member;
a counterbalancing mechanism having a first and second
rotary members, and wherein the counterbalancing mechanism is
disposed within said longitudinally extending channel;
a first secondary line having a distal end coupled to said first
primary line and a proximal end leading into said
counterbalancing mechanism;
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a pulley assembly having a first rotor and a second rotor
wherein said first primary line is entrained about said first and
second rotors; and
wherein said counterbalancing mechanism has a spring
coupled to said first rotary member thereby urging said first
rotary member to rotate in a winding direction to wind and store
said first secondary line onto said first rotary member.
D. References Relied Upon
Petitioner relies upon the following prior art references:

Reference Date Exhibit Number
Bixler
U.S. Pat. No. 13,251
Iss. Jul. 17, 1855 Ex. 1011
Gertzon
U.S. Pat. No. 2,594,637
Iss. Apr. 29, 1957 Ex. 1012
Debs
U.S. Pat. No. 3,703,920
Iss. Nov. 28, 1972 Ex. 1013
Coslett
U.S. Pat. No. 5,170,830
Iss. Dec. 15, 1992 Ex. 1014
Kuhar
U.S. Pat. No. 5,482,100
Iss. Jan. 9, 1996 Ex. 1015
Wang
U.S. Pat. No. 6,012,506
Iss. Jan. 11, 2000 Ex. 1016
Todd
U.S. Pat. No. 6,056,036
Iss. May 2, 2000 Ex. 1017
Toti
U.S. Pat. No. 6,283,192
Iss. Sep. 4, 2001 Ex. 1018
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E. The Asserted Grounds
Petitioner asserts several grounds of unpatentability. (Pet. 3–28.) As
explained below in this Decision, there is ambiguity and inconsistency in
identifying the references asserted. Accordingly, where such ambiguity exists, we
cite to the Petition rather than identifying specific references in this summary
chart:
Claim(s) Challenged Statutory Basis
35 U.S.C. §
References/Petition
Citations
1, 13, 18, 21 102 Bixler
1, 13, 18, 21 102 Toti
1, 13, 18, 21 103 Pet. 16; see also Pet. 34, 35,
45, 45, 46, 49, 51, 54–55, 56
2–5, 8, 15 102 Pet. 23, 24, 37–40, 41, 42,
47, 48
2–5, 8, 15 103 Pet. 23, 24, 37–40, 41, 42,
47, 48
6, 9, 14, 16 102 Pet. 25, 40, 41, 42, 43, 47,
48, 49
6, 9, 14, 16 103 Pet. 25, 40, 41, 42, 43, 47,
48, 49
7, 17 102 Pet. 27, 41
7, 17 103 Pet. 27, 41
12 103 Pet. 28, 44
10, 11 102 Pet. 29, 43, 44
10, 11 103 Pet. 29, 43, 44
19, 20 102 Pet. 29, 53, 54
19, 20 103 Pet. 29, 53, 54
22–24 102 Pet. 32, 56, 58–60
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Claim(s) Challenged Statutory Basis
35 U.S.C. §
References/Petition
Citations
22–24 103 Pet. 32, 56, 58–60
II. ANALYSIS
A. Claim Construction
In an inter partes review, claim terms in an unexpired patent are interpreted
according to their broadest reasonable construction in light of the specification of
the patent in which they appear. 37 C.F.R. § 42.100(b); In re Cuozzo Speed
Technologies LLC, No. 2014-1301, 2015 WL 4097949, at *7–8 (Fed. Cir. July 8,
2015) (“Congress implicitly approved the broadest reasonable interpretation
standard in enacting the AIA,” and “the standard was properly adopted by PTO
regulation”). Claim terms also are given their ordinary and customary meaning, as
would be understood by one of ordinary skill in the art in the context of the entire
disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
We determine, for purposes of this Decision, that no specific claim
construction is required.
B. Asserted Grounds of Unpatentability
The challenged claims, claims 1–24, are asserted to be unpatentable under
35 U.S.C. § 102 based on Bixler or Toti, and under 35 U.S.C. § 103 based on
various combinations of references.
Petitioner has the burden of proof to establish that it is entitled to the
requested relief. 37 C.F.R. § 42.20(c). We address only the basis, rationale, and
reasoning put forth by the Petitioner in the Petition, and resolve all vagueness and
ambiguity in Petitioner’s arguments against the Petitioner. See Liberty Mutual Ins.
Co. v. Progressive Casualty Ins. Co., Case CBM-2012-00003, slip op. at 10
(PTAB Oct. 25, 2012) (Paper 8).
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Under our rules, the petition must contain a “full statement of the reasons for
the relief requested, including a detailed explanation of the significance of the
evidence . . . .” 37 C.F.R. § 42.22(a)(2). Our rules also require that the petition
itself must: (1) “identify specific portions of the evidence that support the
challenge,” and (2) “specify where each element of the claim is found in the prior
art patents or printed publications relied upon.” 37 C.F.R. §§ 42.104(b)(4),
104(b)(5)). The Petition fails to satisfy each of these requirements. As explained
below, the Petition contains confusing, inconsistent grounds. Also, the Petition
repeatedly cites the thirty-one page, seventy-four paragraph Declaration of Ren
Judkins (Ex. 1002) in its entirety, rather than citing specific portions thereof, for
evidentiary support on a substantial number of specific factual issues. As
explained in the Office Patent Trial Practice Guide, parties requesting inter partes
review should “avoid submitting a repository of all the information that a judge
could possibly consider, and instead focus on concise, well-organized, easy-to-
follow arguments supported by readily identifiable evidence of record.” 77 Fed.
Reg. 48,756, 48,763 (Aug. 14, 2012).
Moreover, regarding the grounds based on obviousness, the Petition does not
articulate specific modifications of the references that support its asserted
obviousness grounds, nor does it provide a persuasive rationale for the proposed
combinations of references.
We discuss these and other issues below.
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1. The Obviousness Grounds
Petitioner’s substantive analysis and arguments asserting unpatentability are
contained in a section of the Petition entitled “Summary of Invalidity Arguments.”
4

Pet. 13. Petitioner also presents claim charts to provide a “detailed explanation” to
supplement the Summary of Arguments. Pet. 34.
a. Inconsistent Grounds
In the Summary of Arguments, Petitioner groups the independent claims
and, concerning obviousness, asserts in a subsection heading:
Independent Claims 1, 13, 18 And 21 . . . Are Rendered Obvious
By Bixler Alone, Toti Alone, Combining Bixler And Toti,
And/or Combining Bixler And/or Toti With At Least one Of
Gertzon, Debs, Kuhar, Todd et al., Coslett And Wang et al.
Pet. 16.
In other words, the various combinations and permutations of the references
identified in the Summary of Arguments against each of the independent claims
include obviousness based on: Bixler alone; Toti alone; combining Bixler and Toti;
and combining Bixler and/or Toti with at least one of Gertzon, Debs, Kuhar, Todd,
Coslett, and Wang. This represents twenty-one distinct grounds against each of the
independent claims. Most of these grounds are not identified or addressed in the
claim charts.
One example of the inconsistency in the Petition is the asserted ground
based on “combining Bixler and Toti.” Pet. 16. The claim charts, however, do not
identify or address any ground of unpatentability based on Bixler and Toti.

4
We note that an inter partes review considers patentability, not invalidity. See 35
U.S.C. § 311(b) (“A petitioner in an inter partes review may request to cancel as
unpatentable 1 or more claims of a patent only on a ground that could be raised
under section 102 or 103 and only on the basis of prior art consisting of patents or
printed publications.”).
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Concerning Bixler, the only obviousness ground asserted against claim 1 in the
claim charts is based on Bixler alone and/or Bixler with Gertzon. Pet. 34. Similar
inconsistencies between the claim charts and the Summary of Arguments exist for
all the independent claims. Thus, we are uncertain as to whether Petitioner is or is
not asserting an obvious ground based on Bixler and Toti.
In discussing all the independent claims generally, the Summary of
Argument refers to Wang. Pet. 16 (in the subheading), 19. The claim charts,
however, do not refer to Wang for any asserted ground of obviousness for claims
1, 13, and 18. The claim charts mention Wang only in the context of claim 21. Id.
at 54–55, 56
5
. Thus, we are uncertain as to whether Petitioner is or is not asserting
Wang against claims 1, 13, and 18.
A subsection heading in the Summary of Argument asserts that “Dependent
Claims 2–5, 8 And 15 Are Anticipated And/or Obvious.” Pet. 23 (emphasis
added). The text of this subsection asserts, however, only that “Bixler and Toti
both anticipate these dependent claims 2–5 and 15.” Id. at 24 (emphasis added).
The text does not mention anticipation of claim 8 by any reference. The claim
charts, however, assert that claim 8 is anticipated by Bixler or Toti. Id. at 41, 42.
Thus, we are uncertain whether Petitioner intends to assert that claim 8 is
anticipated by Bixler or Toti.
Also regarding claims 2–5, 8, and 15, the text in the Summary of Argument
subsection asserts “[f]urther, Bixler and Toti render such claims
6
obvious from
their own disclosures as well as when each are viewed in combination with Debs

5
The claim chart on page 56 refers to “Claim 22.” This is an obvious
typographical error. The claim reproduced in the claim chart is claim 21.
6
We are uncertain whether the phrase “such claims” refers to the immediate
antecedent of claims 2–5 and 15, or the subsection antecedent of claims 2–5, 8, and
15. Under either interpretation, the inconsistency identified exists.
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and/or Gertzon.” Pet. 24. Thus, here Petitioner is asserting grounds of
unpatentability based on Bixler and Debs and also based on Bixler, Debs, and
Gertzon. The claim charts for claims 2–5, 8, and 15, however, do not assert
obviousness based on any combination of references involving Bixler and Debs.
Id. at 37, 38, 39, 40, 41, 47. Thus, we are uncertain whether Petitioner is asserting
a ground based on Bixler combined with Debs against claims 2–5, 8, and 15.
The claim charts for claims 2–5, 8, and 15 also refer to obviousness based on
Toti in combination with Todd. E.g., Pet. 37–38. In discussing claims 2–5, 8, and
15 in the Summary of Argument, however, Petitioner does not mention or assert
Todd. Id. at 23–24.
The claim charts for claim 6 refer to grounds of obviousness based on
(1) Bixler alone or combined with Gertzon, Coslett, and/or Kuhar; or, (2) Toti
alone or combined with Gertzon, Debs, Coslett, Kuhar, and/or Todd. Pet. 40–41.
The Summary of Argument for claim 6, however, does not discuss Gertzon, Debs
or Todd, as mentioned in claim charts.
We have provided representative examples of the inconsistencies in the
asserted grounds. This is not an exhaustive list.
b. Incorporation By Reference
Patent Owner asserts the Petition improperly incorporates by reference the
Judkins Declaration. Prelim. Resp. 5.
Our rules preclude incorporation by reference. 37 C.F.R. § 42.6(a)(3)
(“Arguments must not be incorporated by reference from one document into
another document.”). Incorporation by reference occurs, for example, when one
document cites large portions of another document, without sufficient explanation
of those portions. Cisco Sys., Inc. v. C-Cation Techs., LLC, Case IPR2014-00454,
slip op. at 8 (PTAB Aug. 29, 2014) (Paper 12) (citing “large portions of another
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document, without sufficient explanation of those portions, amounts to
incorporation by reference”).
The Petition includes a substantial number of conclusory statements that cite
to the entirety of the Judkins Declaration, which is thirty-one pages and includes
seventy-four paragraphs. See, e.g., Pet. 20 (“Indeed, this is a common design issue
that those of skill in the window cover art routinely address. (Ex. 1002)”, 23
(“Such limitations are all within the art. (See e.g. Ex. 1002, 1007-10
7
)”), 25 (“. . .
would be [a] combination that would be obvious to try. (Exs. 1002, 1007-10))”,
and 28 (“. . . would be an obvious design choice . . . (Ex. 1002)”). In this context,
this type of general citation amounts to incorporation by reference, which is
impermissible under our rules. See 37 C.F.R. § 42.6(a)(3). Incorporation by
reference serves to circumvent the 60-page limit imposed on petitions for inter
partes review, while also obscuring the arguments and evidence by requiring the
Patent Owner and the Board to sift through the entire Declaration to locate
specific, relevant arguments. Arguments and information that are not presented
and developed in the Petition, and instead are incorporated by reference to the
Judkins Declaration, are not entitled to consideration.
c. Lack of Specificity
The Petition’s consistent citation to the entirety of the Judkins Declaration
(Ex. 1002), as discussed above, also fails to comply with the particularity and
specificity required of supporting evidence under our governing statute and rules.

7
Throughout the Petition, Petitioner cites to what appears to be a reference to
Ex. 1007, page 10. The numerals “1007-10” have no meaning within the context
of this Petition other than as a reference to Exhibit 1007. Exhibit 1007 is the
prosecution history of U.S. Patent No. 6,837,294. Page 10 of Exhibit 1007 is
Figure 9 from the patent application filed with the Patent and Trademark Office
that matured into the ’294 patent. Petitioner does not explain the relevance or
purpose of citation to this exhibit.
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See 35 U.S.C. § 312(a)(3); 37 C.F.R. §§ 42.22(a)(2), 42.104(b)(4)–(5).
Additionally, Petitioner’s citation of large portions of the reference disclosures also
fails to comply with these requirements.
An example of the lack of specificity is in the claim chart for claim 1,
asserting grounds of anticipation and obviousness based on Toti. In asserting that
Toti discloses a “counterbalancing mechanism”, Petitioner cites “Figs 5–59” in
Toti and columns 6–23 of the Toti specification. Pet. 36. Petitioner does not
identify where or what in these fifty-four figures and seventeen columns of text
from Toti is an element corresponding to the claimed “counterbalancing
mechanism.” Petitioner provides the same generic citation to the text of Toti for
the “first secondary line” recited in claim 1 and for the final clause in claim 1.
Id. at 36, 37.
Similar examples of citation to excessive portions of the reference
disclosures are in the claim charts for claim 2 (id. at 37); claim 3 (id. at 38); claim
4 (id. at 39); claim 8 (id. at 42); claim 9 (id. at 43); claim 13 (id. at 46); and
numerous other claims.
d. Defects in the Proffered Obviousness Analysis
Turning to the assertions made in the Petition, Petitioner’s analysis of the
asserted ground of obviousness over the references is deficient. We decline to
consider any arguments beyond those presented and developed in the Petition, such
as arguments improperly incorporated by reference to the Judkins Declaration, as
discussed above.
Section 103(a) provides that a patent claim is unpatentable when “the
differences between the subject matter sought to be patented 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
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subject matter pertains.” In Graham v. John Deere Co., 383 U.S. 1 (1966), the
Court set out a framework for applying the statutory language of § 103:
Under § 103, the scope and content of the prior art are to be
determined; differences between the prior art and the claims at
issue are to be ascertained; and the level of ordinary skill in the
pertinent art resolved. Against this background, the obviousness
or nonobviousness of the subject matter is determined.
Id. at 17–18. “While the sequence of these questions might be reordered in any
particular case, the factors continue to define the inquiry that controls.” KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 407 (2007).
We determine that the Petition’s obviousness analysis does not provide
sufficient information to enable us to perform a proper Graham analysis, and lacks
sufficient articulated reasons with rational underpinnings to support the
modifications it proposes.
In the Summary of Argument section of the Petition (beginning at Pet. 13),
Petitioner summarizes the disclosures of the various references. In the subsection
of the Summary of Argument discussing independent claims 1, 13, 18, and 21, for
example, after discussing what structures are disclosed in Bixler and Toti,
Petitioner asserts
modifications to pulley arrangements for having lift cords pass
through a headrail channel in a desired path is an obvious design
choice as can be appreciated from the pulley arrangements
disclosed by U.S. Pat. No. 3,703,920 to Debs and/or U.S. Pat.
No. 2,594,637 to Gertzon and U.S. Pat. No. 6,012,506 to Wang
et al. (See also e.g. Ex. 1002, 1007-10).
Pet. 19. Petitioner does not state which of claims 1, 13, 18 or 21 are being
addressed; nor does the Petition identify the differences between the prior art and
the claims at issue, which is one of the fundamental factual inquiries underlying an
obviousness analysis. See Outside the Box Innovations, LLC v. Travel Caddy, Inc.,
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695 F.3d 1285, 1295 (Fed. Cir. 2012). These factual inquiries promote “uniformity
and definiteness” in determining what would have been obvious. Id. Here,
Petitioner has not identified clearly the differences between the challenged claims
and the multiple combinations and permutations of references asserted by
Petitioner.
Moreover, in determining the differences between the prior art and the
claims, the question under 35 U.S.C. § 103 is not whether the differences
themselves would have been obvious, but whether the claimed invention as a
whole would have been obvious. Litton Indus. Prods., Inc. v. Solid State Sys.
Corp., 755 F.2d 158, 164 (Fed. Cir. 1985) (“It is elementary that the claimed
invention must be considered as a whole in deciding the question of
obviousness.”); see also Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1537
(Fed. Cir. 1983) (“the question under 35 U.S.C. § 103 is not whether the
differences themselves would have been obvious. Consideration of differences,
like each of the findings set forth in Graham, is but an aid in reaching the ultimate
determination of whether the claimed invention as a whole would have been
obvious.”). Petitioner has not provided a persuasive, fact-based analysis of
whether the claimed invention as a whole would have been obvious.
Petitioner also does not identify a persuasive, fact-based “reason that would
have prompted a person of ordinary skill in the relevant field to combine the
elements in the way the claimed new invention does.” KSR, 550 U.S. at 418.
Whether a patent claiming the combination of prior art elements would have been
obvious is determined by whether the improvement is more than the predictable
use of prior art elements according to their established functions. Id. at 417. To
reach this conclusion, however, requires more than a mere showing that the prior
art includes separate references covering each separate limitation in a claim under
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examination. Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir.
2011) (citing KSR, 550 U.S. at 418). Rather, obviousness requires the additional
showing that a person of ordinary skill at the time of the invention would have
selected and combined those prior art elements in the normal course of research
and development to yield the claimed invention. Id.
Petitioner must clearly express and explain its positions, especially on
precisely how the teachings of multiple references are used in combination to meet
a claimed feature. Petitioner’s assertions, for example, without persuasive
supporting evidence, that proposed modifications would have been “an obvious
design choice” (Pet. 19), “a common design issue” (id. at 20), “a design choice that
is obvious” (id.), and “obvious to try such a modification in the art as these units
are configured to perform a similar function” (id. at 27), are insufficient to
demonstrate a reasonable likelihood of prevailing on any of its obviousness
challenges. These conclusory labels do not substitute for a fact-based analysis in
the Petition establishing what is being modified, and why it would have been
obvious to a person of ordinary skill to make the modification.
2. The Anticipation Grounds
“A claim is anticipated only if each and every element as set forth in the
claim is found, either expressly or inherently described, in a single prior art
reference.” Verdegaal Bros. v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987).
“The identical invention must be shown in as complete detail as is contained in
the . . . claim.” Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed. Cir.
1989). The elements must be arranged as required by the claim, but this is not an
ipsissimis verbis test, i.e., identity of terminology is not required. In re Bond,
910 F.2d 831, 832 (Fed. Cir. 1990).
Petitioner’s assertions that the challenged claims are anticipated by Bixler
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and Toti suffer from the same improper incorporation by reference of the Judkins
Declaration as discussed above. The anticipation grounds also suffer from the lack
of specificity as discussed above.
III. CONCLUSION
Based on the deficiencies addressed above, the Petition fails: (1) to identify
clearly the grounds and references on which Petitioner is relying to assert that the
challenged claims are not patentable; (2) to specify sufficiently where the
limitations of the challenged claims are taught or suggested by the cited references;
and (3) to provide a sufficiently detailed explanation of the significance of the
citations to these references and the Judkins Declaration—as required under 35
U.S.C. § 312(a)(3), 37 C.F.R. § 42.22(a)(2), and 37 C.F.R. § 42.104(b)(4)–(5).
The Petition improperly shifts the burden of deciphering Petitioner’s arguments
onto Patent Owner and the Board, which, as we discussed above, is contrary to the
statutory and regulatory provisions governing inter partes review proceedings, as
well as the best practices outlined in the Office Patent Trial Practice Guide.
8

Upon consideration of the Petition and Preliminary Response, we are not
persuaded that the record before us demonstrates a reasonable likelihood that
Petitioner will prevail in establishing that at least one challenged claim would have
been obvious under 35 U.S.C. § 103(a) based on the cited references.
Accordingly, we deny the Petition and do not institute an inter partes
review.

8
“A brief must make all arguments accessible to the judges, rather than ask them
to play archaeologist with the record.” DeSilva v. DiLeonardi, 181 F.3d 865, 867
(7th Cir. 1999).
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IV. ORDER
For the reasons given, it is:
ORDERED that the Petition is denied and inter partes review is not
instituted.

IPR2015-00488
Patent 8,245,756 B2

20

For Petitioner:

Lynn Alstadt
Ralph Fischer
Buchanan Ingersoll & Rooney PC
lynn.alstadt@bipc.com
ralph.fischer@bipc.com

For Patent Owner:

Anthony King
WPAT Law Group, P.C.
aking@wpatca.com