Filed: March 3, 2015 Filed on behalf of: Tristar Products ... · Inc. v. Essaar Inc., filed October...

Paper No.: ____ Filed: March 3, 2015

Filed on behalf of: Tristar Products, Inc. By:

Noam J. Kritzer Email: [email protected]

Ryan S. McPhee Email: [email protected]

BAKOS & KRITZER

UNITED STATES PATENT AND TRADEMARK OFFICE

_________________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD _________________________

TRISTAR PRODUCTS, INC.

Petitioner

v.

CHOON’S DESIGN INC. Patent Owner

_________________________

Patent No. 8,485,565 _________________________

PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,485,565

Petition for Inter Partes Review of U.S. Patent No. 8,485,565

ii

TABLE OF CONTENTS I. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(a)(1) .......................... 1

A. REAL PARTY-IN-INTEREST UNDER 37 C.F.R. § 42.8(b)(1) .............. 1 B. RELATED MATTERS UNDER 37 C.F.R. § 42.8(b)(2) .......................... 1 C. LEAD AND BACK-UP COUNSEL .......................................................... 4 D. SERVICE INFORMATION ...................................................................... 5

II. PAYMENT OF FEES – 37 C.F.R. § 42.103 ................................................... 5 III. REQUIREMENTS FOR INTER PARTES REVIEW

UNDER 37 C.F.R. § 42.104 ............................................................................ 5 A. Grounds for Standing Under 37 C.F.R. § 42.104(a) .................................. 5 B. Identification of Challenge Under 37 C.F.R. § 42.104(b)

and Relief Requested .................................................................................. 5 1. Effective Filing Date ......................................................................... 7 2. Claims 9 and 14 ................................................................................ 7 3. Claim Construction Under 37 C.F.R. § 42.104(b)(3) ....................... 8

IV. SUMMARY OF THE ‘565 PATENT ........................................................... 12 V. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE

CLAIM OF THE ‘565 PATENT IS UNPATENTABLE ............................. 14 A. GROUND I: CLAIMS 9 AND 14 ARE NOT PATENTABLY

DISTINCT FROM A CANCELLED CLAIM ......................................... 14 1. Patent Owner is Estopped From Arguing Patentability ................. 14 2. Claim 9 Is Not Patentably Distinct From Cancelled Claim 11 ...... 15 3. Claim 14 Is Not Patentably Distinct From Cancelled Claims ........ 21 4. Claim 12 Is Not Patentably Distinct From Cancelled Claims ........ 21 5. Claim 13 Is Not Patentably Distinct From Cancelled Claims ........ 24 a. Claim 14 Is Not Patentably Distinct From Cancelled Claims ........ 25

B. GROUND II: CLAIM 9 IS OBVIOUS UNDER 35 U.S.C. § 103(a) IN VIEW OF PUGH AND PHELPS ....................................................... 26 1. Claim 1 Is Anticipated by Pugh ...................................................... 27 2. Claim 9 Is Obvious in View of Pugh and Phelps ........................... 28

C. GROUND III: CLAIM 9 IS OBVIOUS UNDER 35 U.S.C. § 103(a) IN VIEW OF PUGH AND NORRIS ....................................................... 33

D. GROUND IV: CLAIM 9 IS OBVIOUS UNDER 35 U.S.C. § 103(a) IN VIEW OF GUSTIN IN VIEW OF PHELPS OR NORRIS ................ 35

E. GROUND V: CLAIM 9 IS ANTICIPATED UNDER 35 U.S.C. § 102(b) BY CHARMAN ........................................................ 37

F. GROUND VI: CLAIM 14 IS ANTICIPATED UNDER 35 U.S.C. § 102(b) BY MACBAIN ......................................................... 44 1. Claim 12 is Anticipated by Macbain .............................................. 44


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2. Claim 13 is Anticipated by Macbain .............................................. 52 3. Claim 14 is Anticipated by Macbain .............................................. 53

G. GROUND VII: CLAIM 14 IS OBVIOUS UNDER 35 U.S.C. § 103(a) IN VIEW OF PUGH IN VIEW OF CARRUTH OR MELTZER ........... 54

VI. CONCLUSION .............................................................................................. 56


iv

TABLE OF AUTHORITIES

Cases Page(s)

Bettcher Indus., Inc. v. Bunzl USA, Inc.,

661 F.3d 629 (Fed. Cir. 2011) ............................................................................ 11

Clio USA, Inc. v. The Procter and Gamble Co.,

IPR2013-00438 (PTAB) ....................................................................................... 3

Graves v. Principi,

294 F.3d 1350 (Fed. Cir. 2002) ............................................................................ 3

In re Ngai, 367,

F.3d 1336 (Fed. Cir. 2004) ................................................................................. 41

In re Venezia,

530 F.2d 956 (C.C.P.A. 1976) ............................................................................ 41

Invue Security Prods. v. Merchandising Techs., Inc.,

IPR2013-00122 (PTAB) ....................................................................................... 3

Nautique Boat Co., Inc. v. Malibu Boats, LLC,

IPR2014-01045 (PTAB) ....................................................................................... 3

NTP, Inc. v. Research in Motion, Ltd.,

418 F.3d 1282 (Fed. Cir. 2005) .......................................................................... 12

Toshiba Corp. v. Imation Corp.,

681 F.3d 1358 (Fed. Cir. 2012) .......................................................................... 40


v

Warner-Lambert Co. v. Apotex Corp.,

316 F.3d 1348 (Fed. Cir. 2003) .......................................................................... 12

Statutes

35 U.S.C. § 102 .................................................................................................passim

35 U.S.C. § 103 .................................................................................................passim

35 U.S.C. §§ 311-319 ............................................................................................ 1, 3

Regulations

37 C.F.R. § 42 et seq .........................................................................................passim

Rules of Practice, 77 Fed. Reg. No. 157 ............................................................ 14, 21

Other Authorities

MPEP 2114 ........................................................................................................ 11, 40


vi

EXHIBITS

Ex. 1001. U.S. Patent No. 8,485,565

Ex. 1002. File History of U.S. Patent No. 8,485,565

Ex. 1003. File History of U.S. Provisional Application No. 61/410,399

Ex. 1004. Certificate of Service in the 10848 Litigation

Ex. 1005. Stipulated Order of Dismissal Without Prejudice in the 01254

Litigation

Ex. 1006. Petition for Inter Partes Review in the ‘218 IPR

Ex. 1007. Decision to Institute Inter Partes Review in the ‘218 IPR

Ex. 1008. Judgment and Final Written Decision in the ‘218 IPR

Ex. 1009. Rules of Practice, 77 Fed. Reg. No. 157 (Aug. 14, 2012)

Ex. 1010. Pugh U.K. Patent Publication No. GB 2147918 A (“Pugh”)

Ex. 1011. Gustin U.S. Patent No. 7,506,524 (“Gustin”)

Ex. 1012. Charman U.S. Patent No. 3,905,133 (“Charman”)

Ex. 1013. Macbain U.S. Patent No. 5,231,742 (“Macbain”)

Ex. 1014. Carruth et al. U.S. Patent No. 8,418,434 (“Carruth”)

Ex. 1015. Meltzer U.S. Patent No. 5,426,788 (“Meltzer”)

Ex. 1016. Linstead U.S. Patent No. 3,432,223 (“Linstead”)

Ex. 1017. Yates U.S. Patent No. 2,274,572 (“Yates”)


vii

Ex. 1018. Phelps, Isela. Looming Knitting Primer (New York: St.

Martin’s Griffin 2007) (“Phelps”)

Ex. 1019. Norris, Kathy. I Can’t Believe I’m Loom Knitting! (Little

Rock, AR: Leisure Arts, Inc. 2010) (“Norris”)

Ex. 1020. The American Heritage Dictionary

Ex. 1021. Declaration of Youjiang Wang, Ph.D., P.E.

Ex. 1022. Declaration of Woli I. Urbe, Esq.


1

Pursuant to 35 U.S.C. §§ 311-319 and 37 C.F.R. § 42, Tristar Products, Inc.

(“Petitioner”) respectfully petitions for Inter Partes Review (IPR) of claims 9 and

14 of U.S. Patent No. 8,485,565 (“the ‘565 Patent”), which was filed on September

8, 2011 and issued on July 16, 2013, to Cheong Choon Ng, and is currently assigned

to Choon’s Design Inc. (“Patent Owner”) according to the United States Patent and

Trademark Office assignment records.

I. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(a)(1)

A. REAL PARTY-IN-INTEREST UNDER 37 C.F.R. § 42.8(b)(1)

Petitioner Tristar Products, Inc. is the real party-in-interest for the instant

petition.

B. RELATED MATTERS UNDER 37 C.F.R. § 42.8(b)(2)

The ‘565 Patent has been asserted by the Patent Owner in the following

litigations in the United States District Court for the Eastern District of Michigan:

Choon’s Design LLC v. Zenacon, LLC, filed August 19, 2013 (2:13-cv-13568;

Choon’s Design LLC v. LaRose Indus., LLC, filed August 19, 2013 (4:13-cv-13569;

Choon’s Design Inc. v. NGS iCommerce Enters. Corp., filed February 24, 2014

(2:14-cv-10847); Choon’s Design Inc. v. Tristar Products, Inc., filed February 24,

2014 (2:14-cv-10848) (“the 10848 Litigation”); Choon’s Design Inc. v. Quality

Innovations Inc., filed March 14, 2014 (2:14-cv-11102); Choon’s Design Inc. v.

Altatac, Inc., filed April 8, 2014 (2:14-cv-11442); Choon’s Design Inc. v. Jayfinn,


2

LLC, filed May 5, 2014 (2:14-cv-11802); Choon’s Design Inc. v. My Imports USA

LLC, filed June 6, 2014 (2:14-cv-12259); and Choon’s Design Inc. v. Midwest

Trading Group, Inc., filed September 22, 2014 (4:14-cv-13666). Petitioner is the

named defendant in the Choon 10848 Litigation. The earliest that Petitioner was

served was March 4, 2014. Ex. 1004.

The ‘565 Patent has been asserted by Patent Owner in the following litigations

in the United States District Court for the District of New Jersey: Choon’s Design

Inc. v. AC Moore Inc., filed February 18, 2014 (1:14-cv-00980); Choon’s Design

Inc. v. ARCO Int’l, Inc., filed September 17, 2014 (3:14-cv-05794); Choon’s Design

Inc. v. Essaar Inc., filed October 20, 2014 (2:14-cv-06458).

The ‘565 Patent has been asserted by Patent Owner in the United States

International Trade Commission, In the Matter of Certain Loom Kits for Creating

Linked Articles, Inv. No. 337-TA-923.

The ‘565 Patent was the subject of a complaint by LaRose Industries, LLC for

declaratory judgment filed in the United States District Court for the District of New

Jersey in LaRose Indus., LLC v. Choon’s Design LLC, filed August 28, 2013 (2:13-

cv-05172).

The ‘565 Patent was the subject of a complaint by Petitioner for declaratory

judgment filed in the United States District Court for the District of New Jersey in

Tristar Products, Inc. v. Choon’s Design LLC, filed February 25, 2014 (2:14-cv-


3

01254) (“the ‘01254 Litigation”). Petitioner and Patent Owner stipulated to a

dismissal of the ‘01254 Litigation on September 8, 2014, and the ‘01254 Litigation

was dismissed without prejudice on September 9, 2014. Ex. 1005.

Although the ‘01254 Litigation was a civil action challenging the validity of

the ‘565 Patent, the ‘01254 Litigation is not a bar to this petition under 35 U.S.C. §

315(a)(1). The Court of Appeals for the Federal Circuit has held that “[t]he dismissal

of an action without prejudice leaves the parties as though the action had never been

brought.” Graves v. Principi, 294 F.3d 1350, 1356 (Fed. Cir. 2002). On this

principle, the Board has repeatedly held that dismissal of a civil action without

prejudice does not bar inter partes review under 35 U.S.C. § 315(a). See, e.g.,

Nautique Boat Co., Inc. v. Malibu Boats, LLC, IPR2014-01045, Paper 13 at 9-11

(PTAB Nov. 26, 2014) (holding that petitioner’s declaratory judgment action for

invalidity in the United States District Court for the Middle District of Florida, which

was dismissed without prejudice, did not bar inter partes review); Invue Security

Prods. v. Merchandising Techs., Inc., IPR2013-00122, Paper 17 at 8-10 (PTAB, Jun.

27, 2013) (holding that dismissal without prejudice of petitioner’s declaratory

judgment action in the United States District Court for the Western District of North

Carolina does not trigger the statutory bar prohibiting inter partes review); Clio

USA, Inc. v. The Procter and Gamble Co., IPR2013-00438, Paper 9 at 6-9 (PTAB,

Jan. 9, 2014) (holding that where petitioner’s action for declaratory judgment was


4

dismissed without prejudice, it is treated as if it never existed, and does not bar inter

partes review under 35 U.S.C. § 315(a)).

The ‘565 Patent has been the subject of two other IPR proceedings: IPR2014-

00218 (“the ‘218 IPR”) and IPR2014-01353 (“the ‘353 IPR”). The first Petition for

Inter Partes Review was filed by LaRose Industries, LLC (“LaRose”) and

challenged claims 1 and 5-14 of the ‘565 Patent. LaRose Indus., LLC v. Choon’s

Design LLC, IPR2014-00218, Paper 1 (PTAB, Dec. 3, 2013). The Board instituted

Inter Partes Review of claims 1, 5-8, 10, and 11. Id., Paper 9 (PTAB, May 20,

2014). On June 7, 2014, the Board issued a Judgment and Final Written Decision

granting a Joint Motion for Adverse Judgment and cancelling claims 1, 5-8, 10, and

11.

The second Petition for Inter Partes Review was also filed by LaRose and

challenged claims 9 and 12-18 of the ‘565 Patent. LaRose Indus. LLC v. Choon’s

Design Inc., IPR2014-01353, Paper 1 (PTAB Aug. 20, 2014). The Board terminated

the proceeding pursuant to a Joint Motion to Terminate and a Written Settlement

Agreement submitted by the parties. Id., Paper 9 (PTAB Jan. 5, 2015). The Board

had not determined whether to institute inter partes review of the ‘565 Patent at the

time of termination. Id., at 3.

C. LEAD AND BACK-UP COUNSEL

Petitioner provides the following designation of counsel.


5

LEAD COUNSEL:

Noam J. Kritzer Email: [email protected] Bakos & Kritzer 147 Columbia Turnpike Suite 102 Florham Park, New Jersey 07932 Tel: 908-273-0770 Fax: 973-520-8260

BACKUP COUNSEL:

Ryan S. McPhee Email: [email protected] Bakos & Kritzer 945 Fourth Avenue Suite 411 San Diego, California 92101 Tel: 619-377-0770 Fax: 973-520-8260

D. SERVICE INFORMATION

Please address all correspondence to the lead counsel at the address provided

in section I.C of this Petition. Petitioner also consents to electronic service by email

at [email protected].

II. PAYMENT OF FEES – 37 C.F.R. § 42.103

Petitioner submits herewith the fees set forth in 37 C.F.R. § 42.15(a) for this

Petition for Inter Partes Review.

III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R. § 42.104

A. Grounds for Standing Under 37 C.F.R. § 42.104(a)

Petitioner certifies that the ‘565 Patent is available for IPR and that Petitioner

is not barred or estopped from requesting IPR.

B. Identification of Challenge Under 37 C.F.R. § 42.104(b) and Relief Requested

Petitioner requests inter partes review of claims 9 and 14 of the ‘565 Patent

on the grounds set forth in the table below and requests that each of the claims be


6

found unpatentable. An explanation of how claims 9 and 14 are unpatentable under

the statutory grounds identified below, including the identification of where each

element is found in the prior art references, and the relevance of each of the prior art

references, is provided in the form of detailed claim charts. Additional explanation

and support for each ground of rejection is set forth in the Declaration of Youjiang

Wang, Ph.D., P.E. Ex. 1021.

Ground ‘565 Patent Claims

Basis for Unpatentability

Ground I Claims 9 and 14 Not patentably distinct from a cancelled claim Ground II Claim 9 Obvious under 35 U.S.C. § 103(a) in view of

Pugh U.K. Patent Publication No. GB 2147918 A (“Pugh”) and Isela Phelps, Looming Knitting Primer (New York: St. Martin’s Griffin 2007) (“Phelps”)

Ground III Claim 9 Obvious under 35 U.S.C. § 103(a) in view of Pugh and Kathy Norris, I Can’t Believe I’m Loom Knitting! (Little Rock, AR: Leisure Arts, Inc. 2010) (“Norris”)

Ground IV Claim 9 Obvious under 35 U.S.C. § 103(a) in view of Gustin U.S. Patent No. 7,506,524 (“Gustin”) in view of Phelps or Norris

Ground V Claim 9 Anticipated under 35 U.S.C. § 102(b) by Charman U.S. Patent No. 3,905,133 (“Charman”)

Ground VI Claim 14 Anticipated under 35 U.S.C. § 102(b) by Macbain U.S. Patent No. 5,231,742 (“Macbain”)

Ground VII Claim 14 Obvious under 35 U.S.C. § 103(a) in view of Pugh in view of Carruth et al. U.S. Patent No. 8,418,434 (“Carruth”) or Meltzer U.S. Patent No. 5,426,788 (“Meltzer”)


7

1. Effective Filing Date

The ‘565 Patent issued from U.S. Application Serial No. 13/227,638 which

was filed on September 8, 2011 (“the ‘638 Application”) and claims priority to U.S.

Provisional Application No. 61/410,399 which was filed on November 5, 2010 (“the

‘399 Application”). Copies of the USPTO file wrappers for the ‘638 and ‘399

Applications are submitted as Exhibits 1002 and 1003, respectively. The earliest

effective filing date for claims 9 and 14 is November 5, 2010.

2. Claims 9 and 14

Claim 9 is dependent on claim 1. Claim 14 is dependent on claim 13, which

is dependent on claim 12. The relevant claims are reprinted below:

1. A kit for creating an item consisting of a series of links, the device

comprising:

a base; and

at least one pin bar supported on the base, the pin bar including a

plurality of pins each including a top flared portion for holding a

link in a desired orientation and an opening on a front side of each

of the plurality of pins.

9. The kit as recited in claim 1, including a clip for securing ends of the

series of links together.

12. A method of creating a linked item comprising the steps of:


8

supporting at least one pin bar including a plurality of pins to a base to

define a desired relative special relationship between at least two

adjacent pins;

assembling at least two elastic bands across adjacent pins;

capturing one end of an elastic band and pulling the end over and onto

an adjacent pin while engaged with another elastic band; and

capturing and pulling subsequent ends over until a desired link length

and configuration is obtained.

13. The method as recited in claim 12, wherein a second of the at least

two elastic bands is placed atop one end of the first of the at least

two elastic bands on a common pin.

14. The method as recited in claim 13, wherein capturing one end of the

elastic band includes using a hook tool reaching into an access

groove of the pin to extend below the top most elastic band and grasp

a bottom elastic band with the hook tool.

3. Claim Construction Under 37 C.F.R. § 42.104(b)(3)

Pursuant to 37 C.F.R. § 42.100(b), and solely for the purpose of this review,

Petitioner construes the claim language such that the claims are given their broadest

reasonable interpretation in light of the specification of the ‘565 Patent. For terms

not specifically listed and construed below, Petitioner construes them for purposes

of this review in accordance with their plain and ordinary meaning under the required

broadest reasonable interpretation.


9

Petitioner reserves the right to challenge the validity of claims 9 and 14 as

failing to satisfy the requirements of 35 U.S.C. § 112, and Petitioner’s proposed

claim constructions should not be construed as a waiver to challenge the claims on

such grounds. For the purpose of discussing invalidity of claims 9 and 14 in view

of prior art references, Petitioner will attempt to construe various ambiguous claim

terms under the broadest reasonable interpretation standard.

a. The Preamble of Claim 1

Claim 9 depends on claim 1. The preamble of claim 1 (i.e., “[a] kit for creating

an item consisting of a series of links”) is not a claim limitation. In the ‘218 IPR,

the Board held that the preamble in claim 1 is not a claim limitation. ‘218 IPR, Paper

9. In light of the adverse judgment against Patent Owner in the ‘218 IPR, Patent

Owner is estopped from arguing that any portion of the preamble of claim 1 is a

claim limitation.

b. “an opening on a front side of each of the plurality of pins”

In the ‘218 IPR, the Board construed the phrase “front side” of claim 1 as

follows:

Patent Owner contends that the front side recited in claims 1 and

5-11 requires that the openings on all pins face the same

direction. ... We see no such requirement. The phrase “a front

side” applies to the pins individually. The pins may have

openings facing in different directions relative to one another,


10

although each opening is still on the front side of the pin relative

to some common reference point.

‘218 IPR, Paper 9 at 8; Ex. 1007 at 9. Petitioner requests that the Board adopt

the same interpretation used in the ‘218 IPR for the term “a front side.” Because

Patent Owner has accepted adverse judgment with respect to claim 1 in the ‘218 IPR,

it is estopped from presenting any claim construction inconsistent with the foregoing

construction. 37 C.F.R. § 42.73(d)(3).

c. “top flared portion”

Claim 1 requires “a plurality of pins each including a top flared portion for

holding a link in a desired orientation.” Petitioner requests that the term “top flared

portion” should be construed to mean “a portion of a pin located at the top of the pin

and expanding outward in shape.” The ordinary and customary meaning of the term

“flare” is “to expand or open outward in shape.” See Ex. 1020 at 2. Consistent with

the foregoing construction, the ‘565 Patent discloses a “flanged top 38 that is flared

outward.” Ex. 1001 at 3:10-11, Fig. 6. Because claim 1 does not limit the direction

in which the top flared portion expands, Petitioner submits that the direction of

expansion can be in any direction, including laterally, radially, or axially.

d. “clip for securing ends of the series of links together”

Claim 9 is dependent on claim 1 and further recites “a clip for securing ends

of the series of links together.” In the ‘218 IPR, the Board ruled that the term “clip”


11

means “a device for gripping or holding things together.” ‘218 IPR, Paper 9 at 10.

Petitioner hereby proposes the same claim construction for the term “clip.”

Petitioner submits that the phrase “for securing ends of the series of links

together” recites an intended use of the clip and does not constitute a limitation of

claim 9. If a prior art reference discloses a device that corresponds to the structure

of the clip of claim 9, the prior art device would read on the claim. If the Board

construes this phrase as a limitation, a prior art device need only be capable of

performing the recited function. See, Bettcher Indus., Inc. v. Bunzl USA, Inc., 661

F.3d 629, 654 (Fed. Cir. 2011) (“Where all structural elements of a claim exist in a

prior art product, and that prior art product is capable of satisfying all functional

or intended use limitations, the claimed invention is nothing more than an

unpatentable new use for an old product.”) (citation omitted); see also MPEP 2114.

e. “capturing one end of an elastic band…”

Claim 14 is dependent on claim 13, which is dependent on claim 12. Claim

12 is a method claim and recites “capturing one end of an elastic band and pulling

the end over and onto an adjacent pin while engaged with another elastic band.”

The phrase “an elastic band” uses the indefinite article “an” to describe the

element “elastic band.” Given the specific use of the indefinite article “an,” rather

than a definite article “the” or “said,” it is clear that the element does not take

antecedent basis from any element previously recited in the claim. See NTP, Inc. v.


12

Research in Motion, Ltd., 418 F.3d 1282, 1306 (Fed. Cir. 2005); Warner-Lambert

Co. v. Apotex Corp., 316 F.3d 1348, 1356 (Fed. Cir. 2003). Therefore, the phrase

“an elastic band” does not refer back to the “at least two elastic bands” recited in the

preceding step in claim 12 (i.e., “assembling at least two elastic bands...”). Instead,

the phrase refers to an additional, separate elastic band. For this reason, Petitioner

submits that the phrase “an elastic band” should be construed as “an additional

elastic band.”

The phrase “while engaged with another elastic band” was construed by the

Board in the ‘218 IPR to require that the elastic band be engaged with another elastic

band.

f. “capturing and pulling subsequent ends over…”

Claim 12 recites “capturing and pulling subsequent ends over until a desired

link length and configuration is obtained.” For the purpose of this petition only,

Petitioner submits that “capturing and pulling subsequent ends over” may be

construed as “capturing and pulling ends of subsequent or additional elastic bands

over adjacent pins.”

IV. SUMMARY OF THE ‘565 PATENT

The ‘565 Patent is directed to a kit for making an item formed by a series of

Brunnian links. The ‘565 Patent discloses that “[a] Brunnian link is a link formed

from a closed loop doubled over itself to capture another closed loop to form a


13

chain.” Ex. 1001 at 1:27-29. With reference to Fig. 1, the kit 10 includes a plurality

of bases 12 (three bases 12 are shown in Fig. 1) and a plurality of pin bars 14 (three

pin bars 14 are shown in Fig. 1) supported on the bases 12. Ex. 1001 at 2:42-43,

Fig. 1. Each of the pin bars 14 includes a plurality of pins 26. Ex. 1001 at 2:42-44,

Fig. 1. The kit 10 also includes a hook 16. Ex. 1001 at 2:44, Fig. 1.

With reference to Fig. 6, each of the pins 26 includes a flanged top 38 that is

flared outward. Ex. 1001 at 3:10-11, Fig. 6. Each of the pins 26 also includes an

access groove 40 formed on a front side thereof, as well as bottom portion 44, which

is flared outward, and a mid portion 46, where a band is secured during assembly.

Ex. 1001 at 3:7, 3:18-21, Fig. 6.

Fig. 14A-C (reproduced below) illustrate a method of forming Brunnian links.

Elastic bands 52, 54, and 56 are placed on pins 26. Ex. 1001 at 3:62-4:4, Fig. 14A.

Once the bands are placed on each of the pins, hook 16 is used to grip and pull ends

of the elastic bands as shown in Figs. 14B-C. Ex. 1001 at 4:9-11, Figs. 14B-C.


14

V. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE CLAIM OF THE ‘565 PATENT IS UNPATENTABLE

A. GROUND I: CLAIMS 9 AND 14 ARE NOT PATENTABLY DISTINCT FROM A CANCELLED CLAIM

Claims 9 and 14 are not patentably distinct from a cancelled claim, and Patent

Owner is estopped from arguing that claims 9 and 14 are patentable.

1. Patent Owner is Estopped From Arguing Patentability

In the ‘218 IPR, Patent Owner requested judgment against itself in the form

of cancellation of all claims such that Patent Owner had no remaining claim in the

trial. See 37 C.F.R. § 42.73(b)(2). Under 37 C.F.R. § 42.73(d)(3), “[a] patent

applicant or owner is precluded from taking action inconsistent with the adverse

judgment, including obtaining in any patent…[a] claim that is not patentably distinct

from a…canceled claim….” According to the Rules of Practice for Trials and

Appeal Board Decisions, § 42.73(d)(3) applies to inter partes review. Rules of

Practice, 77 Fed. Reg. No. 157 at 48649 (see Ex. 1009 at 39).

In the ‘218 IPR, Patent Owner voluntarily disclaimed claims 1, 5-8, 10, and

11 of the ‘565 Patent and requested the Board to issue judgment adverse to Patent

Owner. ‘218 IPR, Paper 18 at 2; Ex. 1008 at 2. The Board then entered adverse

judgment against Patent Owner under 37 C.F.R. § 42.72(b)(2). ‘218 IPR, Paper 18

at 2-3; Ex. 1008 at 2-3. Thus, Patent Owner is estopped from taking any action that

is inconsistent with the adverse judgment, including obtaining any patent claims that


15

are patentably indistinct from those disclaimed by Patent Owner in the ‘218 IPR.

Claim 9 and 14 are patentably indistinct from one or more of claims 1, 5-8, 10, and

11. Accordingly, Patent Owner is estopped from arguing that claims 9 and 14 are

patentable.

2. Claim 9 Is Not Patentably Distinct From Cancelled Claim 11

Claim 9 recites “a clip for securing ends of the series of links together.” For

the reasons discussed below, Petitioner submits that claim 9 is obvious over the

subject matter of claim 11, either by itself or in view of Carruth (Ex. 1014) or Meltzer

(Ex. 1015). Ex. 1021 at ¶¶ 1005-1006.

Claim 11 does not specifically recite the clip required by claim 9. However,

claim 1, from which both claims 9 and 11 depend, is directed to “a kit for creating

an item consisting of a series of links,” while claim 11 additionally requires that “the

series of links comprise a series of Brunnian links.” In the ‘218 IPR, the Board

construed the term “Brunnian link” as “a link formed from a closed loop doubled

over itself to capture another closed loop to form a chain.” ‘218 IPR, Paper 9 at 10;

Ex. 1007 at 10. The ‘565 Patent further discloses:

Referring to FIG. 3, a Brunnian link 20 is formed from a continuous

looped structure without forming an actual knot. Several links are

formed in a chain to form a circular structure. The ends are then

secured and a durable wearable item is created. … Each link is formed

by capturing ends 22 of one loop structure with a mid portion 24 of


16

another loop structure in series. Each link depends on the previous and

subsequent links to maintain the desired shape and integrity. Removing

one link 20 results in all of the links becoming loose from each other.

Ex. 1001 at 2:31-41 (emphasis added).

‘565 Patent; Ex. 1001, Fig. 3.

As admitted in the specification of the ‘565 Patent, it is known to form a

Brunnian link in a circular structure (see Ex. 1021 at ¶ 21; Ex. 1014 at Fig. 2; Ex.

1014 at Fig. 3). It is also known that removing one link from a chain of Brunnian

links will cause all of the links to unravel. Ex. 1021 at 21. In such circumstances, a

person skilled in the art (“a skilled person”) would have readily recognized that ends

of the series of Brunnian links recited in claim 11 must be secured to one another

with a clip (i.e., a device for gripping or holding things together) to prevent the links

from unraveling. Accordingly, it would have been obvious to a skilled person to


17

provide the kit of claim 11 with a clip. Ex. 1021 at ¶ 103. Thus, claim 9 is patentably

indistinct from claim 11.

As noted above, Brunnian links are known in the art. Ex. 1021 at ¶ 15. For

instance, the links disclosed in Carruth and Meltzer are formed in exactly the same

manner as described in the ‘565 Patent. Ex. 1021 at ¶ 15. Referring to Figs. 2-3,

Carruth describes its links as follows:

The units 110 are interlocked to form a continuous chain (e.g., via a

connecting mechanism). For example, as shown in FIG. 3, to form the

chain, a first unit 110 a is folded (e.g., in half) in a folded configuration,

wherein the folded configuration has a first top arc 210 a and a second

top arc 210 b that are positioned next to each other, and a first bottom

hook 220 a and a second bottom hook 220 b, wherein the bottom hooks

220 are positioned across from each other. A second unit 110 b is fed

through both bottom hooks 220 of the first unit 110, then the second

unit 110 b is folded to the folded configuration (as described above).

Ex. 1014 at 2:30-40.


18

Carruth, Ex. 1014, Figs. 2-3.

Meltzer also discloses a chain formed by Brunnian links. Referring to Figs.

4-5, Meltzer discloses:

[T]o make the ornament 20 the connecting loop 24 is supported by hand

(or by some mechanical means) and a second toroidal loop 26 is

connected to it to form the first looped link 22A. In particular, the

second toroidal loop 26 is squeezed together to flatten it somewhat.

This flattened loop is then passed through the central opening 28 of the

looped connecting member 24. Then the ends of the flattened second

toroidal loop 26 are opened while its mid-portion is within the opening

28 of the looped connecting member 24 so that the second toroidal loop

26 is in a configuration having a bridging midsection 30 and a pair of

end openings 32, with the bridging midsection 30 extending through

the opening 28 in the looped connecting member 24 and the end

openings 32 being axially aligned with each other and located outside

of the looped connecting member 24. … After the first looped link 22A


19

is formed (and connected to the connecting loop 24) a third toroidal

loop 26 is squeezed flat and inserted through the axially aligned

extending end openings 32 of the first looped link 22A. The third

toroidal shaped loop 26 is then opened so that it is in the same

configuration as the first looped link 22A, to thereby form the third

toroidal loop into the second looped link 22B. This procedure is then

repeated to form and connect the remaining looped links 22C-22H of

the ornament 20.

Meltzer, Ex. 1015 at 4:21-49.

Meltzer, Ex. 1015, Figs. 4-5.


20

Because the links formed in Carruth and Metlzer must be secured in order to

prevent the links from unraveling, each discloses a clip or equivalent mechanism to

secure ends of the links together and to form a circular chain. For instance, Carruth

discloses a clip mechanism for connecting opposite ends of the disclosed chain:

When the units 110 are interlocked to form a

continuous chain, the accessory has a first

end 101 and a second end 102…[which] can be

connected together via a locking means 150.

The locking means 150 may be one or more of

any securing or locking devices … e.g., a clip

mechanism….

Carruth, Ex. 1014 at 2:45-51, Fig. 4.

Similarly, Meltzer includes a connecting loop 24 for connecting ends of the

chain. See Meltzer, Ex. 1015, Fig. 5 (reproduced above).

As illustrated above, Meltzer and Carruth disclose a series of links that are

identical t the series of Brunnian links described in the ’565 Patent and recited in

claim 11. Meltzer and Carruth also utilize a device for gripping or holding ends of

the series of links disclosed therein. Since the ‘565 Patent itself recognizes that

“[r]emoving one link 20 results in all of the links becoming loose from each other”

Ex. 1001 at 2:40-41, it would have been obvious to provide the kit of claim 11 with

a clip to secure the ends of the series of Brunnian links together in order to prevent


21

unraveling of the links and to form a ring structure that can be worn by a person.

Ex. 1021 at ¶ 103. Thus, claim 9 is obvious over claim 11 in view of Meltzer or

Carruth.

As explained above, claim 11 was disclaimed by Patent Owner in the ‘218

IPR, and Patent Owner is prohibited from obtaining any claim that is not patentably

distinct from cancelled claim 11. 37 C.F.R. § 42.73(d); see also Ex. 1009 at 39.

Because claim 9 is obvious over claim 11 in view of Meltzer or Carruth, claim 9 is

unpatentable.

3. Claim 14 Is Not Patentably Distinct From Cancelled Claims

Claim 14 is dependent on claim 13, which is dependent on claim 12. In the

‘218 IPR, Patent Owner requested adverse judgment against claims 1, 5-8, 10 and

11. ‘218 IPR, Paper 18; Ex. 1008 at 2. Thus, Patent Owner has admitted that the

collective subject matter recited in these claims is unpatentable, as well as any

subject matter that is not patentably distinct over such subject matter. Claims 12,

13, and 14 are obvious over the subject matter of the cancelled claims.


The following chart compares claim 12 to cancelled claims 1, 8, 10, and 11.

12. A method of creating a linked item comprising the steps of: supporting at least one pin bar including a plurality of pins to a base to

1. A kit for creating an item consisting of a series of links, the device comprising: a base; and


22

define a desired relative special relationship between at least two adjacent pins; assembling at least two elastic bands across adjacent pins; capturing one end of an elastic band and pulling the end over and onto an adjacent in while engaged with another elastic band; and capturing and pulling subsequent ends over until a desired link length and configuration is obtained.

at least one pin bar supported on the base, the pin bar including a plurality of pins each including a top flared portion for holding a link in a desired orientation and an opening on a front side of each of the plurality of pins. 8. The kit as recited in claim 1, including a hook adapted to extend into the access groove for capturing one end of a link. 10. The kit as recited in claim 1, wherein the series of links comprises a series of elastic bands. 11. The kit as recited in claim 1, wherein the series of links comprise a series of Brunnian links.

Claim 1 is directed to a kit having a base and a pin bar with a plurality of pins.

When these elements are assembled with each other, their assembly would

necessarily involve the supporting step recited in claim 12. Moreover, claim 11

recites that the kit (i.e., the base and pin bar with the pins) of claim 1 is for creating

an item consisting of a series of Brunnian links, while claim 10 recites a series of

elastic bands. When using the kit of claim 1, the elastic bands of claim 10, and the

hook of claim 8 to create the Brunnian links of claim 11, it would have been obvious

to a skilled person to perform the remaining three steps recited in claim 12.

As evidenced by Carruth and Meltzer and as acknowledged by Patent Owner

in the ‘565 Patent, methods of manually creating Brunnian links with elastic bands

are well known in the art. See, e.g., Ex. 1014 at 2:30-49; Ex. 1015 at 4:19-55; Ex.


23

1001 at 2:31-41 and Fig. 3. See also Ex. 1021 at ¶ 25. The methods are virtually

identical to one another and basically involve the steps of (1) holding a first elastic

band, (2) inserting one end of a second elastic band through an opening formed in

the first elastic band, (3) folding over the end of the second elastic band onto the

opposite end of the second elastic band, (4) inserting one end of a third elastic band

through the openings formed in the folded-over ends of the second elastic band, (5)

folding over the second end of the third elastic band onto the opposite end of the

third elastic band to link the third elastic band to the second elastic band, and (6)

continue with subsequent elastic bands. Id.

When the foregoing steps are performed manually, the elastic bands are held

by a person’s fingers. When the steps are performed on the device of claim 1, as

recited in claim 11, a skilled person would have readily recognized that the elastic

bands could be loaded on, and held by, the pins of such device (instead of such

person’s fingers) in order to facilitate the performance of these steps. For example,

a skilled person would have recognized the need to load two or more elastic bands

on a plurality of pins in a certain desired relationship (i.e., the elastic bands in each

adjacent pair need to be assembled on a common pin) and that an end of an elastic

band below an end of the other elastic band on the same common pin would need to

be gripped by a hook and pulled over onto an adjacent pin, and so on. The basic

method steps involved in forming Brunnian links (i.e., inserting an end of an elastic


24

band through an opening of another elastic band and folding over that end onto the

opposite end of the elastic band to link the two bands together) would remain the

same, regardless of the instrumentalities utilized to hold, grip and pull the elastic

bands. As a result, there are only a very limited set of predictable options or

modifications that could be tried to form Brunnian links out of elastic bands using

the device of claim 1. Ex. 1021 ¶ 26. A skilled person would have utilized ordinary

skill and common sense in trying these options and would, through trial and error,

have figured out how these bands need to be held, grasped, and pulled to carry out

steps (1)-(6) above to form Brunnian links identical to those in the prior art. Id. In

such circumstances, claim 12 is not patentably distinct over claims 1, 5-8, 10 and/or

11, either alone or in view of Meltzer or Carruth. See also KSR Int’l Co. v. Teleflex

Inc., 550 U.S. 398, 421 (2007) (holding that when “there are a finite number of

identified, predictable solutions, a person of ordinary skill has good reason to pursue

the known options within his or her technical grasp. If this leads to the anticipated

success, it is likely the product not of innovation but of ordinary skill and common

sense.”).


Claim 13 is dependent on claim 12 and further recites: “wherein a second of

the at least two elastic bands is placed atop one end of the first of the at least two

elastic bands on a common pin.” As demonstrated above, claim 12 is not patentably


25

distinct over cancelled claims 1, 8, 10, and 11. Creating a linked item by further

placing a second elastic band atop one end of the first elastic band is a basic method

step involved in forming Brunnian links (which are recited in cancelled claim 11).

Placing the second elastic band atop one end of the first elastic band on a common

pin is also obvious. A person of skill would find it obvious to do so when using the

kit of cancelled claims 1, 8, 10, and 11. Thus, claim 13 is not patentably distinct

over the cancelled claims.

a. Claim 14 Is Not Patentably Distinct From Cancelled Claims

Claim 14 is dependent on claim 13 and further recites: “wherein capturing

one end of the elastic band includes using a hook tool reaching into an access groove

of the pin to extend below the top most elastic band and grasp a bottom elastic band

with the hook tool.” As demonstrated above, claims 12 and 13 are not patentably

distinct over cancelled claims 1, 8, 10, and 11. Cancelled claim 8 recites “a hook

adapted to extend into the access groove for capturing one end of a link,” and

cancelled claim 11 recites “wherein the series of links comprise a series of Brunnian

links.” A person of skill would find it obvious that creating Brunnian links (as

recited in claim 11) using a hook adapted to extend into the access groove (as recited

in claim 8) involves using the hook to reach into the access groove to grasp the

bottom elastic band with the hook. Thus, claim 14 is not patentably distinct over

cancelled claims 1, 8, 10, and 11.


26

B. GROUND II: CLAIM 9 IS OBVIOUS UNDER 35 U.S.C. § 103(a) IN VIEW OF PUGH AND PHELPS

Pugh (Ex. 1010) was published on May 22, 1985 and therefore constitutes

prior art against the ‘565 Patent under 35 U.S.C. § 102(b). Referring to Figs. 1-3,

the knitting apparatus disclosed in Pugh includes a frame member 1, and a pair of

bars 1’ supported on the frame member 1. Each of the bars 1’ includes a plurality

of pins 5 removably arranged on a corresponding one of the bars 1’. The pins 5 are

formed with grooves 7, which extend lengthwise of the pins 5 (i.e., heightwise) for

receiving a knitting hook, and plate-like overhanging portions 32 at top ends thereof

for retaining a wool (i.e., yarn) on the pins 5 until lifted therefrom during a knitting

operation.

Pugh, Ex. 1010, Fig. 1 Pugh, Ex. 1010, Fig. 2 Pugh, Ex. 1010, Fig. 3

Claim 9 is dependent on claim 1. As discussed below, claim 1 is anticipated

by Pugh, and claim 9 is obvious in view of Pugh and Phelps.


27

1. Claim 1 Is Anticipated by Pugh

In the ‘218 IPR, the Board ruled that the petitioner had a reasonable likelihood

of prevailing at trial showing that claim 1 is anticipated by Pugh (‘218 IPR, Paper 9

at 17-18), and Patent Owner voluntarily requested and accepted adverse judgment

with respect to claim 1 (‘218 IPR, Paper 18 at 2). As such, Patent Owner conceded

to the unpatentability of claim 1 over Pugh. While the adverse judgment

conclusively establishes that claim 1 is anticipated by Pugh, for the Board’s benefit,

Petitioner is providing the following chart demonstrating that claim 1 is anticipated

by Pugh.

Claim 1 Pugh GB 2 147 918 A 1. A kit for creating an item consisting of a series of links, the device comprising:

Pugh discloses a knitting apparatus for use in creating a knitted item (see Ex. 1010 at p. 1, lns. 5-7) which consists of a series of links.

a base; and The knitting apparatus disclosed by Pugh includes a frame member 1 (see Ex. 1010 at p. 2, lns. 11-12, Figs. 1-3).

at least one pin bar supported on the base,

Bars 1’ are supported on the frame member 1. See, e.g., Ex. 1010 at p. 2, lns. 61-63, Fig. 3.

the pin bar including a plurality of pins

Each of bars 1’ includes a plurality of pins 5. See, e.g., Ex. 1010 at p. 2, lns. 61-63, Figs. 2-3.

each including a top flared portion

Each of pins 5 includes an upper plate-like overhanging portion 32 at a top end thereof. See, e.g., Ex. 1010 at p. 2, lns. 114-121. As illustrated in Fig. 2, the overhanging portions 32 extend outward from their corresponding pins 5.


28

for holding a link in a desired orientation and

Each of pins 5 holds yarns or the like in a desired orientation. Pugh also discloses “overhanging portion 32 providing the hook proper for retaining the wool on the hooks until lifted thereoff during the knitting operation by manipulation of a hand-held knitting hook….” Ex. 1010 at p. 2, lns. 117-121.

an opening on a front side of each of the plurality of pins.

Each of pins 5 has a groove 7 on an outwardly facing side (i.e., a front side) thereof. See Ex. 1010 at p. 2, lns. 18-20, Figs. 1-2.

2. Claim 9 Is Obvious in View of Pugh and Phelps

Phelps has a copyright date of 2007 (Ex. 1018 at 2), which is more than one

year before the filing date of the ‘565 Patent. Because Phelps was not cited in the

‘218 IPR or during the prosecution of the ‘565 Patent, the Board did not previously

consider the unpatentability of claim 8 based on the Pugh/Phelps combination.

Claim 9 is dependent on claim 1 and further requires “a clip for securing ends

of the series of links together.” In the ‘218 IPR, the Board construed the term “clip”

as “a device for gripping or holding things together.” Ex. 1007 at 10. While Pugh

does not specifically teach such a “clip,” Phelps does. More particularly, Phelps


29

discloses various methods of making knitted articles with the use of looms. Ex. 1018

at 3-13. As part of components for use with looms, Phelps discloses stitch holders,

such as those illustrated herein, “for holding live stitches that will be worked on later

in the project, like a neckline or a tricky bit of shaping.” Ex. 1018 at 8 (emphasis

added).

The use and function of stitch holders, such as those in Phelps, are well known

in the art. Ex. 1021 at ¶ 43. For instance, Yates (Ex. 1017) and Linstead (Ex. 1016)

disclose examples of such stitch holders. Yates describes stitch holders as follows:

In the art of hand knitting it is customary, when knitting various

garments which require that one or more openings be maintained in the

body of the garment, at some given point or points, to temporarily

transfer from the knitting needles a number of stitches to a stitch holder

for later consideration, so that the main knitting can be continued

irrespective of the stitches on the stitch holder. The stitches on the

stitch holder are later picked up and knitted in, when finishing that

section of the garment.

Ex. 1017 at 1:3-13. As shown in Fig. 4, a piece of knitting is placed on the stitch

holder, wherein each of the stitch loops of the piece is loaded onto, and held by, a

leg portion 11 of the holder such that the stitch loops are prevented from becoming

loose (i.e., unraveled).


30

Yates, Ex. 1017, Fig. 4 (with annotation).

Linstead (Ex. 1016) also discloses a stitch holder 10 used for basically the

same purpose as in Yates. The stitch holder 10 is illustrated in Figure 1.

Linstead, Ex. 1016, Fig. 1 (with annotation).

As shown above, stitch holders and their usage/functions are well known in

the art. Ex. 1021 at ¶ 43. Accordingly, when the stitch holders shown in Phelps are

used in conjunction with the loom knitting as taught by Pugh, they receive and hold

“live stitches” or stitch loops of a knitted component from the loom for assembly

with another knitted component so as to complete a finished knit article. Ex. 1021

Piece of knitting

Stitch loops

Stitch holder Stitch loops


31

at ¶ 48. The following illustration depicts how the stitch holder in Phelps would

hold live stitches together. Ex. 1021 at ¶ 49.

As shown above, the live stitches of the knit component are loaded onto and

held by the stitch holder in Phelps. Each of these live stitches is an end of a series

of knitted loops and therefore constitutes an “end of a series of links.” Ex. 1021 at

¶ 50. Accordingly, the stitch holder of Phelps holds and thereby secures ends of a

series of links together. At a minimum, the stitch holder of Phelps is capable of

securing ends of a series of links together. Thus, Phelps discloses the clip recited in

claim 9 of the ‘565 Patent. Ex. 1021 at ¶ 51.

The device disclosed in Pugh is a knitting apparatus (i.e., loom). Phelps

specifically teaches that its stitch holder can be used when knitting with a loom,

stating “Essential Tools for your Loomy Bag.” Ex. 1018 at 8. Thus, a skilled person

would have been motivated to provide the knitting apparatus of Pugh with the Phelps

stitch holder such that a partially finished component made with the Pugh knitting

apparatus could be loaded onto the stitch holder for assembly with another knit


32

component for completing a finished knit article. Ex. 1021 at ¶ 54. Accordingly,

claim 9 is obvious over Pugh in view of Phelps. Ex. 1021 at ¶ 55.

Phelps also teaches additional “clips” (i.e., devices for holding things

together) for securing ends of a series of links made with the use of knitting looms.

Phelps discloses a scarflet comprising a series of links, and two ends thereof secured

to one another by a pin/brooch (i.e., a clip). Ex. 1018 at 14. The pin/brooch

disclosed by Phelps would inherently have a backside pin fastener or clasp to secure

the pin/brooch to the scarflet. Ex. 1021 at ¶ 57.

Phelps also teaches an eyeglass case having a series of links. Two ends of the

case are secured to one another by buttons (i.e., clips). Ex. 1018 at 13.

As demonstrated, Phelps teaches use of these additional holding devices (i.e.,

the pin/brook and buttons) specifically in conjunction with knit articles made with

the use of knitting looms. Ex. 1018 at 13-14. In such circumstances, a skilled person

Pin/brooch (clip)

Ends of series of links

Buttons (clips)


33

would have been motivated to provide the knitting apparatus of Pugh with the Phelps

pin/brooch and buttons as part of a kit such that two ends of a linked article can be

secured to one another. Ex. 1021 at ¶ 61. Accordingly, claim 9 is obvious over Pugh

in view of Phelps. Ex. 1021 at ¶ 55.

C. GROUND III: CLAIM 9 IS OBVIOUS UNDER 35 U.S.C. § 103(a) IN VIEW OF PUGH AND NORRIS

Claim 9 is unpatentable over Pugh and Norris. Norris (Ex. 1019) was

published on or about May 1, 2010 (Ex. 1021 at ¶ 6) and constitutes prior art against

the ‘565 Patent. Norris was not cited during prosecution of the ‘565 Patent or in the

‘218 IPR. Norris was cited in the petition in the ‘353 IPR, but the proceedings were

terminated before a decision on institution was made. Thus, Norris was not

previously considered by the Board.

Norris teaches that “stitches [can be] removed from the pegs and placed on a

cable needle while other stitches are being worked. We used a U-shaped cable

needle.” Ex. 1019 at 3.

Norris, Ex. 1019 at 4-5.


34

As illustrated above, the cable needle in Norris holds together two live stitches

or loops when they are removed from the loom while other stitches are worked on.

Since each of these live stitches form ends of a series of knitted knots, they constitute

“ends of a series of links.” Ex. 1021 at ¶ 69. Accordingly, Norris’ cable needle

holds and secures ends of a series of links together. To the extent that the cable

needle does not specifically perform that function, it is certainly capable of

performing that function. Ex. 1021 at ¶ 52.

Besides the cable needle, Norris disclose other types of “clips” (i.e., devices

for holding things together) for securing ends of a series of links together. For

instance, Norris discloses a scarf set and vest, each comprising a series of links, and

two ends thereof being secured to one another by buttons (i.e., clips). Ex. 1019 at 6-

7.

Norris, Ex. 1019 at 6-7.

The device in Pugh is a knitting apparatus (i.e., a loom). Norris specifically

teaches that its “clip” devices, including the cable needle and buttons discussed

Buttons Button

Ends of series of links Ends of series of links


35

above, are used in conjunction with knitting with a loom. Ex. 1019 at 3-5, 8. In

such circumstances, a skilled person would have been motivated to provide the

knitting apparatus of Pugh with the Norris clip devices for the same purposes

disclosed in Norris. Ex. 1021 at ¶ 72. Accordingly, claim 9 is obvious over Pugh in

view of Norris. Ex. 1021 at ¶ 73.

D. GROUND IV: CLAIM 9 IS OBVIOUS UNDER 35 U.S.C. § 103(a) IN VIEW OF GUSTIN IN VIEW OF PHELPS OR NORRIS

Claim 9 is unpatentable in view of Gustin and Phelps or Norris. Gustin (Ex.

1011) issued on March 24, 2009 and thereby constitutes prior art to claim 9 of the

‘565 patent. Gustin discloses a hand knitting loom

100 and a method of using same. With reference

to Figs. 1 (at right) and 5A and 5B (below), the

loom includes a base structure 100 and a plurality

of pegs 1-18 mounted thereon. The loom 100 is

also provided cross-bridges 400 for providing an

additional row of pegs or pins 501 between the

pegs 1-18.

Gustin states that “the knitting pegs may have a groove or channel starting at

or near the top end of the knitting peg and running to the bottom end or near the

bottom end” (see Ex. 1011 at 2:61-64). Each of these grooves or channels is used


36

for receiving a hook tool for moving stitches on the pegs and is provided on a front

side of its corresponding peg. Ex. 1021 at ¶ 80.

The following chart demonstrates that claim 1 is anticipated and rendered

unpatentable by Gustin under 35 U.S.C. § 102(b).

Claim 1 Gustin U.S. Patent No. 7,506,524 1. A kit for creating an item consisting of a series of links, the device comprising:

Gustin discloses a hand knitting loom for use in creating a knitted item. See Ex. 1011, Abstract.

a base; and Gustin discloses a loom with a base structure 100. Ex. 1011 at 2:66-67, Figs. 5A-5C.


Gustin discloses a cross-bridge 400 removably supported on the base 100. Ex. 1011 at 4:25-27, Figs. 5A-5C.


The cross-bridge 400 includes a pin 501, 505. Ex. 1011 at 4:56-64, Figs. 5A-5C. Two or more pins may be provided on a single cross-bridge: “[O]ne or more knitting pegs may be located between the substantially parallel rows of knitting pegs by means of a cross-bridge 400….” Ex. 1011 at 4:24-26 (emphasis added).


The pin 501, 505 includes a flanged top. See Figs. 5A-5C.


The pin 501, 505 holds yarn in a desired orientation. See Figs. 1, 2A-2C.


37


Gustin discloses that “the knitting pegs may have a groove or channel starting at or near the top end of the knitting pin and running to the bottom end or near the bottom end of the knitting peg.” Ex. 1011 at 2:61-64. A groove formed in accordance with this description would be formed on a front side of the pin. Ex. 1011 at ¶ 81.

As indicated above, Gustin discloses all of the elements of claim 1. Claim 9,

which is dependent on claim 1, further requires “a clip for securing ends of the series

of links together.” While Gustin does not specifically disclose a clip, Phelps and

Norris disclose various “clips” such as stitch holders, pin/brooches, cable needles

and buttons, etc., all of which are specifically used in conjunction with knitting

looms. See Section V(B)(2) above. Gustin discloses a knitting loom. Ex. 1011 at

1:13-14. Thus, for the reasons previously discussed, a skilled person would have

been motivated to provide Gustin with the clips disclosed in Phelps and Norris. Ex.

1021 at ¶ 89. Thus, claim 9 is obvious over Gustin in view of Phelps or Norris. Ex.

1021 at ¶ 90.

E. GROUND V: CLAIM 9 IS ANTICIPATED UNDER 35 U.S.C. § 102(b) BY CHARMAN

Claims 9 is anticipated by Charman (Ex. 1012). Charman issued on

September 16, 1975 and is prior art to the ‘565 Patent under 35 U.S.C. § 102(b).

Charman was not cited during prosecution of the ‘565 Patent or in the ‘218 IPR.

Charman was cited in the petition in the ‘353 IPR, but the proceedings were


38

terminated before a decision on institution was made. Thus, Charman was not

previously considered by the Board.

With reference to Fig. 2, Charman discloses and claims a “kit” for making

“threaded designs,” which includes a base board 1 and strips 2 removably mounted

thereon. Each of the strips 2 includes a spine that supports a plurality of spaced

parallel pins or rods 4 which are molded integrally with the spines of the strips 2.

Each rod 4 has an enlarged portion in the form of an enlarged head 4A at the free

end of the rod to “provide positive resistance to the slipping of thread loos over such

heads 4A.” Ex. 1012 at 3:7-9.

Charman, Ex. 1012 at Fig. 2.

The kit disclosed by Charman is capable of making “thread designs,” which

are created by looping thread around pins positioned on the strips 2 supported on the

base board 1. See Ex. 1012 at 1:4-7. The threads are looped around the pins

according to a predetermined pattern (i.e., a desired orientation) so as to create a

“threaded design.” Ex. 1012 at 2:58-64.


39

Charman discloses an alternate embodiment wherein

the pins have more than one enlargement. Ex. 1012 at 3:38-

40. These “enlargements would be opened lengthwise of

the pin.” See Ex. 1012 at 3:38-40 (emphasis added).

Petitioner’s rendering of this alternate embodiment is

presented (at right) as Fig. A. Ex. 1021 at ¶ 92. Each

“opening” runs lengthwise (i.e., vertically) along the depicted pin.

Charman also discloses an alternate means of attaching the strip 2 to the base

board 1 via the use of “separable clips.” See Ex. 1012 at 3:21-22. Petitioner’s

rendering of this alternate attachment means is presented (at

right) as Fig. B. See also Ex. 1021 at ¶ 96. As shown, the

inverted U-shape of the depicted clip is dictated by the fact

that it must be adapted to grip the strip 2 (which has a

rectangular cross-section) and then plug into the holes 6 in

the base board 1. Ex. 1012 at 3:22-24. As a result, the “clip” disclosed in Charman

satisfies the Board’s previous construction of the term “clip” (i.e., it is a device “for

gripping or holding things together.”). See Ex. 1007 at 10.

Patent Owner may argue that claim 9 includes functional language (i.e., “for

securing ends of the series of links together”) that limits the clip recited in the claim.

However, the law is clear that functional language which does not structurally


40

differentiate the claimed apparatus, such as a new or intended use, cannot

differentiate the claimed apparatus over the prior art. See Toshiba Corp. v. Imation

Corp., 681 F.3d 1358 (Fed. Cir. 2012) (“[A]pparatus claims cover what a device is,

not what a device does”) (quoting Hewlett-Packard Co. v. Bausch & Lomb Inc., 909

F.2d 1464, 1469 (Fed. Cir. 1990)); see also MPEP 2114. Thus, where the prior art

discloses a structurally equivalent device, a new or intended use will not save an

apparatus claim from being unpatentable in view of the equivalent device.

With regard to claim 9, the functional language “for securing ends of the series

of links together” is merely an intended use and does not structurally differentiate

the claimed apparatus (i.e., the clip of claim 9 or any of the component parts of the

kit recited in claim 1). For example, the phrase “the series of links” has no

antecedent basis in the bodies of either claim 1 or claim 9. Although the preamble

of claim 1 mentions a “series of links,” the Board held in the ‘218 IPR that the

preamble does not limit claim 1. ‘218 IPR, Paper 9 at 20; Ex. 1007 at 20. As a

result, there is no structural element in either claim 1 or claim 9 that can be modified

by the functional language of claim 9. The functional language merely recites an

intended use of the clip recited in claim 9 and does not further limit the structure of

the claimed apparatus. Therefore, claim 9 recites one structural limitation – the clip.

The term “clip” has already been construed in the ‘218 IPR as “a device for gripping

or holding things together.” ‘218 IPR, Paper 9 at 10; Ex. 1007 at 10. Applying this


41

definition, the term “clip” in claim 9 reads on the clip disclosed by Charman.

Charman therefore anticipates claim 9.

While “kit” claims are not per se unpatentable, the claim elements must be

structurally interrelated in order to qualify for patent protection, assuming the kit

otherwise satisfies the requirements of patentability. See, e.g., In re Venezia, 530

F.2d 956 (C.C.P.A. 1976) (finding that the components of a “splice connector kit”

were sufficiently interrelated because they were described in relation to each other).

The elements must be so interrelated that one element requires the other to function,

and vice versa. See, e.g., In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004) (holding

that printed matter in a kit claim must relate to the underlying product such that its

purpose could not be fulfilled without the product, and the product would be

similarly inoperable without the printed matter).

The “clip” and the “series of links” of claim 9 are not structurally interrelated

with any of the component parts of the kit recited in claim 1. While the kit

components recited in claim 1 structurally limit one another (e.g., “a base; and at

least one pin bar supported on the base”), the term “clip” in claim 9 does not impart

any structural limitation to either the base or the pin bar recited in claim 1, or to any

other element or feature which is positively recited in claim 1. Even if the functional

language of claim 9 were considered a claim limitation, such functional language

relates to a term (i.e., “series of links”) recited only in the preamble of claim 1, and


42

the preamble has already been excluded as a claim limitation in the ‘218 IPR. ‘218

IPR, Paper 9 at 20; Ex. 1007 at 20. Accordingly, claim 9 does not further limit claim

1. Because claim 9 does not add any structural limitation to the “kit” of claim 1, the

subject matter of claim 9 (i.e., the recited “clip,” with or without its associated

functional language) is anticipated by Charman.

Finally, even assuming that the functional language of claim 9 further limits

the claimed device or kit, the Charman clip is capable of performing the recited

function of “securing ends of the series of links together,” thereby anticipating the

subject matter of claim 9. Ex. 1021 at ¶¶ 99-100. As shown in Fig. B (above), the

“separable clips” of Charman include a crossbar extending between a pair of legs,

each of which is capable of gripping or otherwise holding the end of a link such that

the associated clip is capable of securing “ends of the series of links together.” Ex.

1021 at ¶¶ 96, 98. Thus, claim 9 is anticipated by Charman, even if the functional

language of claim 9 is considered a limitation.

The following chart demonstrates that claim 9 is anticipated and rendered

unpatentable by Charman under 35 U.S.C. § 102(b).

Claim 1 Charman U.S. Patent No. 3,905,133 1. A kit for creating an item consisting of a series of links, the device comprising:

The preamble of claim 1 is not a limitation. Notwithstanding, Charman discloses a kit capable of creating threaded loops looped over pins. See, e.g., Ex. 1012 at 1:5-7, 2:55-57.


43

a base; and Charman discloses a base board 1 for supporting strips 2. See, e.g., Ex. 1012 at 2:35-40, Fig. 2.


The “strips 2 are firmly mounted on a base board 1….” Ex. 1012 at 2:35-40.


As shown in Fig. 2 (above), Charman discloses spaced apart parallel pins or rods 4 which are integrally formed with the spine of the strip 2. See, e.g., Ex. 1012 at 2:51-52, Fig. 2.


As shown in Fig. 2 (above), “each rod 4 has an enlarged portion in the form of an enlarged head 4A at the outer extremity thereof.” Ex. 1012 at 2:52-54, see also Fig. 2.


“The heads 4A … provide positive resistance to the slipping of thread loops over such heads 4A….” Ex. 1012 at 3:7-9, see also Fig. 2.


Charman discloses providing pins that have more than one enlargement (i.e., enlarged head 4A), and such enlargements are “opened lengthwise of the pin.” Ex. 1012 at 3:37-40. Petitioner’s rendering of this design is reproduced herein.

Claim 9 Charman U.S. Patent No. 3,905,133 9. The kit as recited in claim 1, including

See above with respect to claim 1.

a clip for securing ends of the series of links together.

Charman discloses that “separable clips may be used for attaching the strips to the base board, such clips being adapted to wrap round the strip spine and plug


44

into the holes in the base board….” Ex. 1012 at 3:21-25, see also Fig. B. If the phrase “for securing ends of the series of links together” is considered a limitation, Charman discloses a clip capable of serving this function. Petitioner’s rendering of the design is reproduced herein.

For the foregoing reasons, claim 9 is anticipated by Charman.

F. GROUND VI: CLAIM 14 IS ANTICIPATED UNDER 35 U.S.C. § 102(b) BY MACBAIN

Claim 14 is unpatentable over Macbain (Ex. 1013), which issued on August

9, 1993 and is thus prior art against the ‘565 Patent under 35 U.S.C. § 102(b).

Because claim 14 is dependent on claim 13, which is dependent on claim 12, each

of these claims will be addressed in order.

1. Claim 12 is Anticipated by Macbain

Macbain discloses a weaving apparatus including a loom 11 having a base 13

and a plurality of plates 15, 17 removably supported on the base 13 and having a

plurality of through holes 49, 59, 61 therein. The weaving apparatus also includes a

plurality of elongated loom fingers 19 adapted to be mounted to the plates 15, 17

through the holes 49, 59, 61. Each of the loom fingers 19 is elongated and has an


45

elongated groove 77 running the entire length thereof for receiving a hook 105. As

illustrated in Figs. 2, 3, and 7A-8, each opposite end of the elongated groove 77 is

flared outwardly, presumably to facilitate entry of hook 105 into the elongated

groove 77, thereby forming a top flared portion on its corresponding loom finger 19.

Each of the loom fingers 19 also has opposing ends 731, 732 with tapered portions

751, 752, respectively. Ex. 1013 at Fig. 3.

Macbain, Ex. 1013 at Figs. 2-3.


46

The plates 15, 17 are assembled with the base 13 as illustrated in Figs. 2-3.

Ex. 1013 at 5:11-20. Macbain teaches that the

number of plates 15, 17 held by the base 13 can be

varied to form a desired hole pattern (e.g., circle,

oval, partial oval, semi-circle, or straight line, as

illustrated in Figs. 4-6). See Ex. 1013 at 4:36-43.

After mounting the plates 15, 17 on the base 13, a desired number of loom

fingers 191,2,3,4… are slidably received in the holes 49, 59 and/or 61 of the plates 15,

17. Macbain specifically teaches that while only four loom fingers 19 are illustrated

in Figs. 2 and 3, “an elongated straight line of loom fingers can be formed utilizing

all of openings 61. Alternatively, a closed oval can be formed utilizing all of

openings 49, 59.” Ex. 1013 at 5:16-20.

The apparatus of Macbain is used to weave closed loop wefts (i.e., bands) or

the like. With reference to Figs. 7B-7D, closd loop wefts 1011, 1012 are twined on

loom fingers 19 such that the closed loop wefts 1011, 1012 are weaved onto a

common loom finger 193. Ex. 1013 at 5:30-45, Figs. 7B, 7D.


47

More particularly, the closed loop weft 1011 is wrapped around opposite sides of

each loom finger 191,2. Ex. 1013 at 5:30-32. When an end of the row is reached, the

weft 1011 is double turned around the loom finger 193. Ex. 1013 at 5:32-34, Fig. 7C.

Once the weft 1011 has been wrapped around the loom fingers 191-3, a second closed

loop weft (i.e., the weft 1012) is weaved on adjacent loom fingers. The first loop of

the second weft 1012 is attached to the same loom finger 193 on which the previous

weft 1011 ended. Ex. 1013 at 5:39-43, Fig. 7D.

After the weft weaving has been completed as illustrated in Figs. 7B-7D

(above), a conventional hook 105 having a hook portion 107 is then inserted into the

groove 77 of one of the loom fingers (see loom finger 192 in Fig. 8) and then moved

toward an opposite end of

loom finger 192 such that the

hook portion 107 is positioned

below the weft 1011. See Ex.


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1013 at Fig. 8. A warp thread 103 (illustrated in Fig. 8 as a band) is grasped by the

hook portion 107 of the hook 105 and pulled through the groove 77 of the loom

finger 192. The warp thread 103 “is passed through grooves 77 of loom fingers 19.”

Ex. 1013 at 5:62-66.

It is inhere that as the warp thread 103 is pulled through the loom finger 192

by the hook 105, it would engage the closed loop weft 1011. This engagement would

necessarily occur due to the manner in which the warp 103 is pulled through the

loom finger 192 by hook 105, as well as the physical dimensions of the relevant parts

of Macbain’s loom, namely, the depth of the channel 77 of the loom finger 192 and

the diameters of the hook 105 and the warp 103, which is shown in Fig. 8 in the form

of a band (i.e., a closed loop having a pair of opposed arcuate ends and a pair of

opposed legs extending between the arcuate ends).


49

Referring to the modified view of Fig. 7A shown below, the warp 103 is in

the form of a band. Ex. 1013 at Fig. 8. Thus, the two strands of the warp 103 would

have to pass through the weft 1011 when the warp 103 is pulled through the loom

finger 192 by the hook 105. At the point

where the hook portion 107 of hook 105

reaches the weft 1011, the hook portion

107 would need to pass through the

weft 1011 together with the two warp

strands. At such point, hook 105 and its

hook portion 107 complete occupy the

channel 77 (see Fig. 8), thereby causing both of the warp strands to be positioned

outside the channel 77. The modified view of Fig. 7A herein shows the hook portion

107 (the solid black circle) and the two warp strands of the warp 103 (the two white

circles) as they pass through the weft 1011. It should be noted that the weft 1011

illustrated in Fig. 7A is wrapped loosely around the loom fingers 191, 192, 193 such

that it is spaced from their associated channels 77. However, Fig. 7A illustrates the

weft 1011 prior to it being completely wrapped around the loom fingers 191, 192, 193.

Once the wrapped weft 1011 is tightened around the loom fingers 191, 192, 193 as

illustrated in Figs. 7C and 8, loom fingers 191-3 are roped between the weft 1011 such

that the weft 1011 is positioned directly against the channels 77. With the weft 1011


50

in such a position, when the two strands of the warp 103 and the hook portion 107

of the hook 105 pass through the weft 1011 simultaneously, the warp strands would

necessarily engage the weft 1011, as shown in the modified view of Fig. 7A above.

After the hook portion 107 passes through the weft 1011, there would be

continued engagement between the weft 1011 and the warp 103 as the two strands

of the warp 103 are pulled through the weft 1011. As illustrated in the modified

version of Fig. 7A shown above, the depth of channels 77 is substantially similar to

the diameter of warp 103. As a result, channel 77 of the loom finger 192 is only large

enough to receive, at most, one of the two warp strands as warp 103 is pulled through

the weft 1011. In such circumstances, only one of the two warp strands (“the 1st

strand”) could possibly pass through channel 77 of loom finger 192. The other strand

of warp 103 (“the 2nd strand”) must pass through the weft 1011 while positioned

outside channel 77. When the weft 1011 is roped (i.e., tightly wrapped) around the

loom fingers 191-3 such that the weft 1011 is positioned directly against the loom

fingers’ channels 77 (see Figs. 7C and 8), at least the 2nd strand of the warp 103

would continue to be engaged with the weft 1011. For the foregoing reasons, it is

inherent that the warp 103 would engage the weft 1011 while it is being pulled over

and onto the loom finger 192.

Macbain teaches that “it is preferred to use closed loop material made from

fabric which as some elasticity, such as closed loops made from T-shirt type


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material.” Ex. 1013 at 5:24-27 (emphasis added). Accordingly, the wefts 1011, 1012,

each of which is in the form of a band, and the warp 103, which is illustrated in Fig.

8 as a band, constitute elastic bands.

The following chart demonstrates that claim 12, on which claim 14 is

dependent, is anticipated by Macbain.

Claim 12 Macbain U.S. Patent No. 5,231,742 12. A method of creating a linked item comprising the steps of:

Macbain discloses a method for twining or weaving (i.e., creating a linked item).

supporting at least one pin bar including a plurality of pins to a base to define a desired relative special relationship between at least two adjacent pins;

Macbain discloses the step of supporting plates 15, 17 (i.e., pin bars) to a base 13. See, e.g., Ex. 1013 at 5:11-12, Figs. 2, 4-6. The plates 15, 17 include loom fingers 19 (i.e., pins). When supported on the base 13, the plates 15, 17 define a desired relative special relationship between at least two adjacent loom fingers 19. “The pattern formed by openings 61 is a straight line. As is also evident with reference to FIGS. 4, 5, and 6, the number of plates held by base 13 can be varied to form the desired hole pattern (e.g., circle, oval, partial oval, semi-circle, or straight line) and the desired size.” Ex. 1013 at 4:38-43.

assembling at least two elastic bands across adjacent pins;

At least two closed loop wefts (i.e., bands) 1011 and 1012 are assembled across adjacent loom fingers 192, 193, 194 (see Fig. 7D). The wefts 1011 and 1012 are elastic bands. See Ex. 1013 at 5:24-27.

capturing one end of an elastic band and pulling the end over and onto an adjacent pin while

Macbain discloses that once the closed loop wefts 1011, 1012 have been placed on the loom fingers 192, 193, 194, an end of a warp 103 (see Fig. 8) is captured and pulled over and onto an adjacent pin (loom finger 192 in Fig. 8).


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engaged with another elastic band; and

capturing and pulling subsequent ends over until a desired link length and configuration is obtained.

Macbain contemplates additional loom fingers 19 to be used in twining or weaving. “In operation, with plates 15 and 17 assembled with base 13 as illustrated in FIGS. 2 and 3, the desired plurality of loom fingers 191,2,3,4… are slidably received in opening 49, 59 and/or 61.” Ex. 1013 at 5:11-14. “While only four loom fingers 19 are illustrated, it will be appreciated that, for instance, an elongated straight line of loom fingers can be formed utilizing all of openings 61.” Ex. 1013 at 5:16-19.

With reference to the last limitation recited in claim 12 (i.e., “capturing and

pulling subsequent ends…”), Macbain contemplates utilizing a large number of

loom fingers 19 and utilizing long plates to link two or more base members 13. Ex.

1013 at 4:46-47, 5:16-19. When loom fingers 19 are utilized in large numbers,

additional warp loops 103 would be required to be inserted into a large weft

formation formed by multiple closed loop wefts. Accordingly, subsequent ends of

additional warp bands are captured and pulled over and through the loom fingers

until a desired link length and configuration is obtained.


Claim 13 is dependent on claim 12 and further recites: “wherein a second of

the at least two elastic bands is placed atop one end of the first of the at least two


53

elastic bands on a common pin.” As demonstrated in the following chart, Mabain

discloses this limitation.

Claim 13 Macbain U.S. Patent No. 5,231,742 13. The method as recited in claim 12,

Macbain discloses the method of claim 12. See chart above.

wherein a second of the at least two elastic bands is placed atop one end of the first of the at least two elastic bands on a common pin.

One of the two closed loop elastic wefts 1011, 1012 (i.e., bands) is placed atop one end of the other closed loop elastic wefts on a common loom finger (i.e., the loom finger 193. See Ex. 1013 at Fig. 7D.


Claim 14 is dependent on claim 13 and further recites: “wherein capturing

one end of the elastic band includes using a hook tool reaching into an access groove

of the pin to extend below the top most elastic band and grasp a bottom elastic band

with the hook tool.” As demonstrated in the following chart, Mabain discloses this

limitation.

Claim 14 Macbain U.S. Patent No. 5,231,742 14. The method as recited in claim 13,

Macbain discloses the method of claim 13. See chart above.

wherein capturing one end of the elastic band includes using a hook tool reaching into an access groove of the pin to extend below the top most elastic band and grasp a bottom elastic band with the hook tool.

After the wefts 1011, 1012 (i.e., bands) are weaved or twined on the loom fingers 19 as illustrated in Fig. 7D (see Ex. 1013 at 5:30-45), a hook 105 having a hook portion 107 is inserted into the grooves 77 of the loom fingers 19 such that the hook portion 15 extends


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below the weft 1011 and grasps a warp thread 103 (shown as a band in Fig. 8).

G. GROUND VII: CLAIM 14 IS OBVIOUS UNDER 35 U.S.C. § 103(a)

IN VIEW OF PUGH IN VIEW OF CARRUTH OR MELTZER

Claim 14 is unpatentable as obvious over Pugh in view of Carruth or Meltzer.

Claim 14 is dependent on claim 13, which is dependent on claim 12. Each of these

claims will be addressed in order.

In the ‘218 IPR, the Board held that claim 11 is anticipated by Pugh. ‘218

IPR, Paper 9 at 20, Ex. 1007 at 20. This holding establishes that the device disclosed

in Pugh is identical to the device recited in claim 11. As demonstrated above in

Section V(A)(4), claim 12 is obvious over claim 11, either alone or in view of

Carruth or Meltzer. For the same reasons discussed above, Petitioner submits that

Pugh renders claim 12 obvious when considered in combination with Carruth or

Meltzer.

While Pugh does not disclose Brunnian links, both Carruth and Meltzer

provide a motivation or suggestion for using a device like that disclosed by Pugh to

make Brunnian links. For example, Carruth teaches that the “the present invention


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is constructed by linking the units 110 through a predetermined looping or linking

guide … The guide may be replaced with any other type device that services the

same function as would be evident and obvious to those of ordinary skill in the art.”

Ex. 1014 at 3:10-20. Similarly, Meltzer teaches that “the connecting loop 24 is

supported by … some mechanical means….” Ex. 1015 at 4:21-22. Accordingly,

both Carruth and Meltzer suggest using mechanical devices to facilitate the

construction of Brunnian links. Given this suggestion and various similarities

existing between Brunnian links and knitted links, a skilled person would have

readily recognized that the knitting device of Pugh is especially suited for making

Brunnian links. See KSR, 550 U.S. at 421 (holding that when “there are a finite

number of identified, predictable solutions, a person of ordinary skill has good

reason to pursue the known options within his or her technical grasp.”).

As discussed in Section V(A)(5) above, claim 13 (from which claim 14

depends) is obvious over one or more of claims 1, 5-8, 10, and 11. In the ‘218 IPR,

the Board held that each of claims 1, 5-8, 10, and 11 is anticipated by Pugh. Ex.

1007, Paper 9 at 23; Ex. 1007 at 23. Accordingly, for the same reasons discussed

above, claim 13 is obvious over Pugh in view of Carruth or Meltzer.

Likewise, as discussed in Section V(A)(6), claim 14 is obvious over one or

more of claims 1, 5-8, 10, and 11. In the ‘218 IPR, the Board held that each of claims

1, 5-8, 10, and 11 is anticipated by Pugh. Ex. 1007, Paper 9 at 23; Ex. 1007 at 23.


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Accordingly, for the same reasons discussed above, claim 14 is obvious over Pugh

in view of Carruth or Meltzer.

VI. CONCLUSION

For the above reasons, Petitioner respectfully requests institution of inter

partes review of claims 9 and 14 of the ‘565 Patent.

Dated: March 3, 2015 Respectfully submitted, /Noam J. Kritzer/ Noam J. Kritzer, Lead Counsel Registration No. 60,369 Ryan S. McPhee, Backup Counsel Registration No. 59,752 BAKOS & KRITZER

CERTIFICATE OF SERVICE

I hereby certify that on this 3rd day of March, 2015, a copy of the foregoing

Petition for Inter Partes Review of U.S. Patent No. 8,485,565 and all supporting

exhibits were served by Federal Express upon the following party, listed as the

correspondence address of record for U.S. Patent No. 8,485,565:

John M. Siragusa, Esq. Carlson, Gaskey & Olds, P.C. 400 West Maple Road, Suite 350 Birmingham, Michigan 48009

Dated: March 3, 2015 Respectfully submitted, /Ryan S. McPhee/ Ryan S. McPhee BAKOS & KRITZER

Filed: March 3, 2015 Filed on behalf of: Tristar Products ... · Inc. v. Essaar Inc., filed October...

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