IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

Transcription

1 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE In re Patent of: Cheong Choon Ng U.S. Patent No.: 8,485,565 Issue Date: July 16, 2013 Appl. Serial No.: 13/227,638 Filing Date: September 8, 2011 Title: BRUNNIAN LINK DEVICE AND KIT Mail Stop Patent Board Patent Trial and Appeal Board U.S. Patent and Trademark Office P.O. Box 1450 Alexandria, VA PETITION FOR INTER PARTES REVIEW OF UNITED STATES PATENT NO. 8,485,565 PURSUANT TO 35 U.S.C , 37 C.F.R 42

2 TABLE OF CONTENTS I. INTRODUCTION... 1 II. MANDATORY NOTICES UNDER 37 C.F.R A. REAL PARTY-IN-INTEREST UNDER 37 C.F.R. 42.8(b)(1)... 2 B. RELATED MATTERS UNDER 37 C.F.R. 42.8(b)(2)... 2 C. LEAD AND BACK-UP COUNSEL... 5 D. SERVICE INFORMATION... 5 III. PAYMENT OF FEES 37 C.F.R IV. REQUIREMENTS FOR INTER PARTES REVIEW UNDER A. Grounds for Standing Under 37 C.F.R (a)... 6 B. Identification of Challenge Under 37 C.F.R (b) and Relief Requested Effective Filing Date and Prosecution History Claims 9 and Claim Construction Under 37 C.F.R (b)(3) a. The Preamble of Claim b. pin bar supported on the base c. an opening on a front side of each of the plurality of pins d. top flared portion e. clip for securing ends of the series of links together f. capturing one end of an elastic band g. capturing and pulling subsequent ends over V. SUMMARY OF THE 565 PATENT VI. 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 CANCELED CLAIM ii

3 1. Patent Owner is Estopped From Arguing Patentability Claim 9 Is Not Patentably Distinct From Cancelled Claim Claim 14 Is Not Patentably Distinct From Cancelled Claims Claim 12 Is Not Patentably Distinct From Cancelled Claims Claim 13 Is Not Patentably Distinct From Cancelled Claims Claim 14 Is Not Patentably Distinct From Cancelled Claims B. GROUND II: CLAIM 9 IS ANTICIPATED UNDER 35 U.S.C. 102(b) BY CHARMAN C. GROUND III: CLAIM 9 IS OBVIOUS UNDER 35 U.S.C 103(a) BY SASUR IN VIEW OF CARRUTH Claim 1 is Anticipated by Sasur Claim 9 is Obvious in View of Sasur and Carruth D. GROUND IV: CLAIM 9 IS OBVIOUS UNDER 35 U.S.C. 103(a) IN VIEW OF PUGH IN FURTHER VIEW OF LINSTEAD E. GROUND V: CLAIM 14 IS OBVIOUS UNDER 35 U.S.C. 103(a) IN VIEW OF CARRUTH IN FURTHER VIEW OF PUGH F. GROUND VI: CLAIM 14 IS OBVIOUS UNDER 35 U.S.C. 103(a) IN VIEW OF WANG IN VIEW OF SASUR VII. CONCLUSION iii

4 Cases TABLE OF AUTHORITIES Bettcher Indus., Inc. v. Bunzl USA, Inc., 661 F.3d 629, 654 (Fed. Cir. 2011) Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469 (Fed. Cir. 1990) KSR Int l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007)... 25, 39 In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004) NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282, 1306 (Fed. Cir. 2005) Toshiba Corp. v. Imation Corp., 681 F.3d 1358 (Fed. Cir. 2012) In re Venezia, 530 F.2d 956 (C.C.P.A. 1976)... 31, 37 Warner-Lambert Co. v. Apotex Corp., 316 F.3d 1348, 1356 (Fed. Cir. 2003) Statutes 35 U.S.C 103(a)... 7, 32, U.S.C. 102(a)... 33, U.S.C. 102(b)... 7, 26, U.S.C U.S.C C.F.R (a)... 6 iv

5 37 C.F.R (b)... 6, C.F.R (a) C.F.R (b)(2) C.F.R (b)(2) C.F.R (d)... 13, 17, C.F.R v

6 Ex 1001: US. Patent No ,565 EXHIBITS Ex 1002: Ex 1003: Summons and Complaint Return of Service in 2:13-cv Declaration of Eric A. Langberg Ex 1004: File History of U.S. Patent No. 8,485,565 Ex 1005: File History of U.S. Provisional Application No. 61/410,399 Ex 1006: Ex 1007: Ex 1008: Choon s Design Inc. s Proposed Claim Terms Decision to Institute Inter Partes Review in the 218 IPR The American Heritage Dictionary Ex 1009: Rules of Practice, 77 Fed. Reg. No. 157 (Aug. 14, 2012) Ex 1010: Ex 1011: Ex 1012: Ex 1013: Ex 1014: Ex 1015: Ex 1016: Ex 1017: Judgment and Final Written Decision in the 218 IPR Carruth et al. U.S. Patent No. 8,418,434 ( Carruth ) Petition for Inter Partes Review in the 838 IPR Charman U.S. Patent No. 3,905,133 ( Charman ) Sasur U.S. Patent No. 8,402,794 ( Sasur ) Pugh U.K. Patent Publication No. GB 2,147,918 A ( Pugh ) Linstead U.S. Patent No. 3, 438,223 ( Linstead ) Wang U.S. Patent No. 4,248,063 ( Wang ) Ex 1018: U.S. Patent No. 7,578,146 Ex 1019: Ex 1020: Craft Critique Website Phelps Article vi

7 Ex 1021: Ex 1022: Ex 1023: Finger Weave Jump Rope Website How to Make a Geobard Website Bipes Article vii

8 I. INTRODUCTION Petitioner IdeaVillage Products, Corp. ( Petitioner or IV ) petitions for Inter Partes Review under 35 U.S.C and 37 C.F.R. 42 of Claims 9 and 14 of U. S. Patent No. 8,485,565 ( the 565 Patent ). Petitioner demonstrates below that there is a reasonable likelihood of prevailing in its challenge of at least one claim identified in the Petition as being unpatentable. Patent Owner has accused Petitioner s FunLoom Product of infringing the 565 Patent in federal district court. The Petitioner s FunLoom Product, shown below on the right, discloses a knitting loom kit formed as a single unitary structure with a base portion and a plurality of pins projecting from the base. Conversely, the 565 Patent, as shown below in Figs. 5A and 5B, discloses a knitting loom kit for creating a linked item including a base, a plurality of pin bars (including a plurality of pins) that can be removably attached to the base in different alignments. Claims 9 and 14 of the 565 Patent respectively target the unremarkable features of a clip for securing together ends of the series of links that can be made using the claimed kit and a method of knitting the series of links using a hook tool. 1

9 Neither the original Examiner nor the members of the Board (in IPR ) were aware of the references cited herein, which disclose the limitations of Claim 9 (clip) and Claim 14 (use of a hook tool). As discussed in additional detail below, one skilled in the art would have seen reason to incorporate a clip for securing ends of a series of links together and a method of knitting the series of links using a hook tool with at least one of the knitting loom kits disclosed by the references cited below. II. MANDATORY NOTICES UNDER 37 C.F.R A. REAL PARTY-IN-INTEREST UNDER 37 C.F.R. 42.8(b)(1) Petitioner IdeaVillage Products, Corp. 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: 2

10 Choon s Design LLC v. Zenacon, LLC, filed August 19, 2013 (2:13-cv-13568) (the Litigation ); 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); 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, 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). IV was named as a defendant in the Litigation in the third amended complaint filed April 22, The earliest Petitioner was served was May 2, Exhibit Patent Owner has asserted the 565 Patent 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). Patent Owner has asserted the 565 Patent in the United States International Trade Commission, In the Matter of Certain Loom Kits for Creating Linked Articles, Inv. No. 337-TA

11 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 filed by Tristar Products, Inc. for declaratory judgment 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-01254). The 565 Patent has been the subject of three other IPR proceedings: IPR ( the 218 IPR ), IPR ( the 353 IPR ) and IPR ( the 838 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, IPR , 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 of the 565 Patent. LaRose Indus. LLC v. Choon s Design Inc., IPR , Paper 1 (PTAB Aug. 20, 2014). The Board 4

12 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. The third Petition for Inter Partes Review was filed by Tristar Products, Inc. and challenged Claims 9 and 14 of the 565 Patent. Tristar Products, Inc. v. Choon s Design Inc., IPR , Paper 1. This Petition is currently pending in the PTAB. C. LEAD AND BACK-UP COUNSEL Petitioner provides the following designation of counsel. LEAD COUNSEL John S. Artz (Reg. No. 36,431) Dickinson Wright PLLC 2600 West Big Beaver Road Suite 300 Troy, MI Tel: Fax: jsartz@dickinsonwright.com BACKUP COUNSEL Dan Delarosa (Reg. No. 38,429) Delarosa & Associates 300 East 77 th St., Suite 24C New York NY Tel: Fax: danmdelarosa@gmail.com D. SERVICE INFORMATION Please address all correspondence and service to the address of all counsel listed above. Petitioner also consents to electronic service by at the same. 5

13 III. PAYMENT OF FEES 37 C.F.R Petitioner submits herewith the fees set forth in 37 C.F.R (a) for this Petition for Inter Partes Review and authorize the USPTO to charge Deposit Account No for any additional fees. IV. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R A. Grounds for Standing Under 37 C.F.R (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 (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 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 explanation below. In support, this Petition includes a supporting evidentiary declaration of Eric A. Langberg. Exhibit

14 Ground 565 Patent Basis for Unpatentability Claims Ground I Claims 9 and 14 Not patentably distinct from a canceled claim Ground II Claim 9 Anticipated under 35 U.S.C. 102(b) by U.S. Patent No. 3,905,133 issued to Charman (hereinafter Charman ) Ground III Claim 9 Obvious under 35 U.S.C. 103(a) in view of U.S. Patent No. 8,402,794 issued to Sasur (hereinafter referred to as Sasur ) in view of U.S. Patent No. 8,418,434 issued to Carruth et al. (hereinafter Carruth ) Ground IV Claim 9 Obvious under 35 U.S.C. 103(a) by U.S. Patent No. U.K. Patent Pub. No. GB 2,147,918A issued to Pugh (hereinafter Pugh ) in view of U.S. Patent No. 3,438,223 to Linstead (hereinafter Linstead ) Ground V Claim 14 Obvious under 35 U.S.C. 103(a) by Carruth in view of Pugh Ground VI Claim 14 Obvious under 35 U.S.C. 103(a) by U.S. Patent No. 4,248,063 issued to Wang ( Wang ) in view of Sasur 1. Effective Filing Date and Prosecution History 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 1004 and 1005, respectively. The earliest effective filing date for Claims 9 and 14 is November 5,

15 With reference to Ex. 1004, the 638 Application was originally filed with Claims 1-18, which were allowed by the Examiner in a first substantive Office Action mailed 4/26/13. Ex at In allowing these claims, the Examiner stated "Claims 1 and are found to be allowable because the prior art of record neither teaches nor reasonably suggests the recitations found therein, including pins having a top flared portion and opening in the front, as well as the method of using the pin bars/base to stretch, capture and pull elastic bands. Ex at 38. Claims 1-18 of the 638 Application subsequently issued as Claims 1-18, respectively, of the 565 Patent. To avoid a decision by the Board in the 218 IPR, Patent Owner disclaimed Claims 1, 5-8, 10 and 11. Patent Owner subsequently disclaimed Claims 12, 13, and as part of a settlement agreement to dispose of the litigation adverse to LaRose Industries, thereby leaving Claims 9 and 14 which are at issue in this proceeding. As discussed in detail below, multiple prior art references each disclose the point of novelty perceived by the Examiner in allowing the claims at issue. Had the Examiner been aware of these prior art references during the prosecution of the 638 Application, the Examiner would not have allowed Claims 9 and 14. 8

16 2. Claims 9 and 14 Claim 9 is dependent on Claim 1 and 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: 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 9

17 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 (b)(3) In the PTO, a claim in an unexpired patent receives its broadest reasonable interpretation ( BRI ) in light of the specification i.e., claim terms get their plain meaning unless that meaning is inconsistent with the specification. See 37 C.F.R (b). In the following paragraphs, Petitioner explains the proper BRI standard for certain claim terms and where appropriate provides Patent Owner s proposed litigation constructions (which Patent Owner must admit are encompassed by the BRI). See Exhibit 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. Furthermore, Petitioner construes the terms contained herein using the BRI standard. a. The Preamble of Claim 1 Claim 9 depends on Claim 1. The preamble of Claim 1 recites [a] kit for creating an item consisting of a series of links. The Board found that the term series of links in the preamble of Claim 1 is not a limitation as it recited only a purpose or intended use of the claimed invention. 218 IPR, Ex at p. 20. In 10

18 light of the adverse judgment against Patent Owner in the 218 IPR, it is estopped from arguing that the phrase series of links in the preamble of Claim 1 is a claim limitation. Conversely, the term kit as used in the preamble is instructive of the orientation of the remaining elements in Claim 1 and gives meaning to the remainder of the claim. As used in the specification, the disclosed kit includes several pin bars that are supported in a desired spatial orientation by at least one base. Ex at 1: With reference to Figure 1, the specification teaches that the example kit 10 includes a base 12 that supports pin bars 14 that each includes a plurality of pins 26. Ex at 2: The plain dictionary meaning of the term kit is a set of materials that can be assembled. Dictionary Definition, Ex Accordingly, the BRI of the term kit is a set of separate parts which when assembled can be used to create an item consisting of a series of links with the discrete parts being called out in by the remainder of the claim. b. pin bar supported on the base As used in the 565 Patent, the term pin bar refers to an integral structure having the plurality of pins 28 defined in a single row. Exhibit 1001 at 3:4-5. This structure allows groups of pins to be mounted on the base as a single unit. As shown in the Figures, multiple pin bars 14 can be disposed on the base. 11

19 The specification also teaches that the pin bar is a separate structure from the base and that the structures can be assembled in various combination and orientations to provide endless variation of completed link orientations. Exhibit 1001 at 1: The separate nature of these structures allows additional bases and pin bars [to] be added to further expand possible completed article creation. Exhibit 1001 at 1: The pin bars can thus be supported on the base to form a composite structure and removed to leave separate structures than can then be attached in different alignments. Dependent Claim 2 which recites that the pin bar and the base include[e] corresponding mating features for securing the pin bar to the base further confirms that these structures are separate and distinct. The BRI of this term is thus an elongated structure including a group of interconnected pins mountable as a unit on the base in different alignments. follows: c. an opening on a front side of each of the plurality of pins In the 218 IPR, the Board construed the phrase front side in Claim 1 as 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, although each opening is still on the front side of the pin relative to some common reference point. 218 IPR, Ex at 9. Because Patent Owner has accepted adverse judgment with respect to Claim 1 in the 218 IPR, it is estopped from presenting any claim 12

20 construction inconsistent with the foregoing construction. 37 C.F.R (d)(3). The Board should thus adopt that same interpretation here. d. 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 an upper section of a pin expanding outward in shape in at least one direction. The ordinary and customary meaning of the term flare is to expand or open outward in shape. See Exhibit 1008 at 2. Consistent with the foregoing construction, the 565 Patent discloses a flanged top 38 that is flared outward. Ex 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. e. 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 means a device for gripping or holding things together. 218 IPR, Ex at p. 10. Petitioner hereby proposes the same claim construction for the term clip. 13

21 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. ) (internal citation omitted); see also MPEP f. 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. Research in Motion, Ltd., 418 F.3d 1282, 1306 (Fed. Cir. 2005); Warner-Lambert 14

22 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. Ex The Petitioner submits that this same construction should be adopted by the Board. g. 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. 15

23 V. 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 chain. Ex at 1: 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) removeably supported on the bases 12. Ex at 2:42-43, Fig. 1. Each pin bar 14 is a separate and discrete structure that includes a plurality of pins 26 that can be attached to each base 12 as a singular unit. Ex at 2:42-44, Fig. 1. As shown in Figs. 5A and 5B, the bases 12 and pin pars 14 are separate and discrete structures. The kit 10 also includes a hook 16. Ex 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 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 at 3:7, 3:18-21, and 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. 16

24 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 at 4:9-11, Figs. 14B-C. VI. 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 CANCELED 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 (b)(2). Under 37 C.F.R (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 17

25 and Appeal Board Decisions, 42.73(d)(3) applies to inter partes review. Rules of Practice, 77 Fed. Reg. No. 157 at Ex 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, Ex at p. 2. The Board then entered adverse judgment against Patent Owner under 37 C.F.R (b)(2). 218 IPR, Ex at p Thus, Patent Owner is estopped from taking any action that is inconsistent with the adverse judgment, including obtaining any patent claims that 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. 1011; see also Ex at 20. 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 18

26 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, Ex at p. 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. Removing one link 20 results in all of the links becoming loose from each other. Ex at 2:31-41 (emphasis added). A Brunnian link when completed has two unattached ends that must be secured to form a completed loop. As admitted in the specification of the 565 Patent, it is known to form a Brunnian link in a circular structure. See Ex at 20, B; Ex at Figs. 2 and 3. It is also known that removing one link from a chain of Brunnian links will cause all of the links to unravel. Ex at 2: 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 19

27 the links from unraveling. Accordingly, it would have been obvious to a skilled person to provide the kit of Claim 11 with a clip. Ex at 20, B. Thus, Claim 9 is patentably indistinct from Claim 11. The links disclosed in Carruth are formed in exactly the same manner as described in the 565 Patent. Ex at 20, C. 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 at 2: Carruth, Figs. 2-3 (Ex. 1011) Because the links formed in Carruth must be secured in order to prevent them from unraveling, it discloses a clip or equivalent mechanism to secure ends of 20

28 the links together to form a circular chain. Specifically, 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. Ex at 2:45-51 and Fig. 4 (emphasis added). 21 Carruth discloses a series of links that are identical to the series of Brunnian links described in the 565 Patent and recited in Claim 11. As shown below, Carruth also utilizes 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 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 unraveling of the links and to form a ring structure that can be worn by a person. Ex at 20, C. Thus, Claim 9 is obvious over Claim 11 in view of 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 C.F.R (d); see also Ex.

29 1006 at 39. Because Claim 9 is obvious over Claim 11 in view of Carruth, Claim 9 is unpatentable. See 838 IPR, Ex 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 IPR, Ex at p. 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. As discussed below, Claims 12, 13, and 14 are obvious over the subject matter of the cancelled claims. See 838 IPR, Ex Claim 12 Is Not Patentably Distinct From Cancelled Claims The following chart compares Claim 12 to cancelled Claims 1, 8, 10, and 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 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 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. 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. 22

30 and configuration is obtained. 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 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 at 2:30-49; Ex at 2:31-41 and Fig. 3; see also 1003 at 28, C. 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 23

31 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. Ex 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 a person s fingers as is known to occur) 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 and that an end of an elastic band below an end of another 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 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 instrument 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 at 28, C. A skilled person would have utilized ordinary skill and common sense in trying these options and would, through trial 24

32 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. Ex at 20, C. In such circumstances, Claim 12 is not patentably distinct over Claims 1, 5-8, 10 and/or 11, either alone or in view of 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. ). 838 IPR, Ex Claim 13 Is Not Patentably Distinct From Cancelled Claims 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 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. 838 IPR, Ex

33 6. 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 IPR, Ex B. GROUND II: CLAIM 9 IS ANTICIPATED UNDER 35 U.S.C. 102(b) BY CHARMAN Claim 9 is anticipated by U.S. Patent No. 3,905,133 to Charman ( Charmin ) (Ex. 1013). 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 26

34 petition in the 353 IPR, but the proceedings were terminated before a decision on institution was made. Thus, Charman was not previously considered by the Board. Claim 1, Limitation 1A, 1B: A kit for creating an item consisting of a series of links, the device comprising: a base. With reference to Fig. 2 (shown below), Charman discloses a kit (consisting of separate parts) for making threaded designs. Specifically, Charman discloses separate parts that can be assembled together to form a device capable of creating threaded loops looped over pins. See, e.g., Ex at 1:5-7, 2: Charman thus discloses the preamble of Claim 1. Charman also discloses a base board 1, which as shown on the left serves as a bottom portion of a composite structure. Limitation 1C: 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. As shown above, the base board 1 includes 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 27

35 the free end of the rod to provide positive resistance to the slipping of thread loops over such heads 4A. Ex at 3:7-9. 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 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 at 2: Charman discloses an alternate embodiment wherein the pins have more than one enlargement. Ex at 3: These enlargements would be opened lengthwise of the pin. See Ex at 3: Each opening runs lengthwise (i.e., vertically) along the depicted pin. 838 IPR, Ex at 39. The following chart summarizes the evidence demonstrating that Claim 1 is anticipated and rendered unpatentable by Charman under 35 U.S.C. 102(b). Claim 1 of the 565 Patent 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 Charman / Anticipation The strips 2 are firmly mounted on a base board 1. Charman at 2: 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 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 at 2:52-54, 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 28

36 pin. Ex at 3: Petitioner s rendering of this design is reproduced herein. Claim 9: The kit as recited in claim 1, including a clip for securing ends of the series of links together. Charman also discloses an alternate means of attaching the strip 2 to the base board 1 via the use of separable clips. See Ex at 3: Petitioner s rendering of this alternate attachment mechanism is presented as Fig. B on the right. See also Ex at 27, A, ix and 838 IPR, Ex at 39. 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 at 3: 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. ). Ex at p. 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 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 Thus, 29

37 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 this language of Claim 1 mentions a series of links, the Board held in the 218 IPR that this language in the preamble does not limit Claim IPR, Ex at p. 20. 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, which has already been construed in the 218 IPR as a device for gripping or holding things together. 218 IPR, Ex at p. 10. Applying this definition, the term clip in Claim 9 reads on the clip disclosed by Charman, which 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,

38 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). 838 IPR, Ex at 41. 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 the series of links language of the preamble has already been excluded as a claim limitation in the 218 IPR. 218 IPR, Ex at p. 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 31

39 Claim 9 (i.e., the recited clip, with or without its associated functional language) is anticipated by Charman. 838 IPR, Ex at p. 42. 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 at 20, A, ix. 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 at 20, A, ix. Thus, Claim 9 is anticipated by Charman, even if the functional language of Claim 9 is considered a limitation. 838 IPR, Ex at p. 42. For the foregoing reasons, Claim 9 is anticipated by Charman. C. GROUND III: CLAIM 9 IS OBVIOUS UNDER 35 U.S.C 103(a) BY SASUR IN VIEW OF CARRUTH 1. Claim 1 is Anticipated by Sasur In the Litigation, Patent Owner asserts a claim construction for Claim 1 where the pin bar, pins and base are an integral or one-piece structure. Ex at p. 3. Even under the Patent Owner s claim construction, Claim 1 is anticipated by U.S. Patent 8,402,794 issued to Sasur ( Sasur ). Ex Sasur has an earliest effective filing date of August 25, 2010, which is earlier than the earliest effective 32

40 filing date of the 565 Patent, and therefore, constitutes prior art thereto under 35 U.S.C. 102(a). Sasur was neither cited during prosecution of the 565 Patent nor the 218 IPR. Thus, Sasur was not previously considered by the Board. Claim 1, Limitation 1A, 1B: A kit for creating an item consisting of a series of links, the device comprising: a base. Sasur discloses a knitting loom or kit for creating an item consisting of a series of links. See Ex Fig. 2. With reference to Fig. 2 (reproduced on the left ), the knitting loom disclosed in Sasur comprises a base 10, including a plurality of pin bars 16 removeably attached to the base 10. Ex at 2:22-30 and Fig. 1. The knitting loom in Sasur includes a base 10. Sasur thus embodies limitations 1A and 1B of Claim 1. Limitation 1C: 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 33

41 plurality of pins. As shown above, Sasur discloses at least one pin bar supported on the base. With reference to Fig. 7 (reproduced on the right), each pin 34 includes a top flared portion 36 for holding a link in a desired orientation. Each pin 34 defines an opening 38, 44 extending along each of the plurality of pins 34. Claim 1 of the '565 Patent Sasur / Anticipation at least one pin bar 14 supported on the base 12, the pin bar 14 including a plurality of pins 26 each including a top flared portion 38 for holding a link in a desired orientation and an opening 40 on a front side of each of the plurality of pins 26. The knitting loom in Sasur includes at least one pin bar 16 supported on the base 10, the pin bar 16 including a plurality of pins 34 each including a top flared portion 36 for holding a link in a desired orientation and an opening 38, 44 on a front side of each of the plurality of pins 34. Ex at 2:40-46 and Figs Claim 9 is Obvious in View of Sasur and Carruth Claim 9 is unpatentable by Sasur in view of U.S. Patent 8,418,434 issued to Carruth (see Ex. 1011). Carruth has an earliest effective filing date of July 7, 2010, which is earlier than the earliest effective filing date of the 565 Patent, and therefore, constitutes prior art thereto under 35 U.S.C. 102(a). Carruth was cited 34

42 in the petition in the 218 IPR, but the proceedings were terminated before a decision on institution was made. Thus, Carruth was not previously considered by the Board. Claim 9: The kit as recited in claim 1, including a clip for securing ends of the series of links together. As indicated above, Sasur 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 Sasur does not specifically disclose a clip, Carruth discloses securing or locking devices e.g., a clip mechanism, a hook mechanism, or a hook-and-loop fastener mechanism, which connects the ends of each unit of an accessory. See Ex at 3:42-52, Fig. 4 (on right). The accessory in Carruth is constructed by linking the ends of each unit through a predetermined looping or linking guide. The guide may comprise a linear device or be replaced with any other type device or linear guide that services the same function. Ex at 3:10-20 and Fig. 2 (left). 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, but the Board ruled that the petitioner failed to establish a reasonable likelihood of success on its challenge to Claim 9 because the 35

43 petitioner failed to explain why there would be reason to clip ends of the product in Pugh. 218 IPR Ex at p. 18. Sasur provides reason to clip ends, which Pugh did not. Sasur suggests a configuration of knitting articles using flexible materials suitable for weaving knitted loops known to one skilled in the art to knit a desired item, which can then be secured as desired. See Ex at 2:15-20, 2:40-42, and 4:60-67 (emphasis added). Applying the definition of the term clip a device for gripping or holding things together, it would be obvious to one skilled in the art to use the clip in Carruth to secure the knitted item formed by knitted loops in Sasur to arrive at the clip in Claim 9. For the reasons previously discussed, a skilled person in the art would have been motivated to provide the knitting loom or linear guide in Sasur with the clip disclosed in Carruth. Thus, Claim 9 is obvious over Sasur in view of Carruth. As discussed above, the functional language (i.e., for securing ends of the series of links together ) in Claim 9 is only an intended use and does not serve to structurally differentiate the claimed apparatus over the prior art. See Toshiba, 681 F.3d at 1369 ( [A]pparatus claims cover what a device is, not what a device does. ) (internal quotation omitted.) Thus, Claim 9 recites a catalog of parts, and a result, the clip is not connected to anything. Although the preamble of Claim 1 mentions a series of links, the Board held in the 218 IPR that this language in 36

44 the preamble does not limit Claim IPR, Ex at p. 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, Ex at p. 10. Applying this definition, the term clip in Claim 9 reads on the clip disclosed by Carruth. Sasur in view of Carruth, therefore, anticipates Claim 9. As noted above, 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) Also noted above, 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. 37

45 Finally, even assuming that the functional language of Claim 9 further limits the claimed device or kit, the Carruth clip is capable of performing the recited function of securing ends of the series of links together, thereby disclosing this feature of Claim 9. Ex at 3: Thus, Claim 9 is met by Carruth, even if the functional language of Claim 9 is considered a limitation. D. GROUND IV: CLAIM 9 IS OBVIOUS UNDER 35 U.S.C. 103(a) IN VIEW OF PUGH IN FURTHER VIEW OF LINSTEAD Claim 9 depends from Claim 1. Claim 9 is obvious under 35 U.S.C (a) in view of U.K. Patent Application No. 2,147,918 ( Pugh ) (Ex. 1015) in combination with U.S. Patent No. 3,438,223 ( Linstead ) (Ex. 1016). Pugh published on May 22, 1985 and Linstead issued on April 15, Therefore, both Linstead and Pugh are prior art under 35 U.S.C. 103(a). Neither Pugh nor Linstead were cited during the prosecution of the 565 Patent. However, Pugh was considered by the Board in the 218 IPR, and was further cited in the 353 IPR which was terminated prior to consideration by the Board. As the Board noted in 218 IPR, Claim 1 is anticipated by Pugh (thus, Patent Owner ultimately disclaimed Claim 1). As to Claim 9, the Board agreed with the Patent Owner in the 218 IPR stating that the Petitioner failed to explain persuasively why one skilled in the art would have combined the clips from the cited references with the knitting apparatus of Pugh. 38

46 Claim 1, however, is not limited to "elastic" as evidenced by dependent Claim 10 and hence, the device can be used with non-elastic as well as elastic material. Thusly, Claim 9 which depends on Claim1 has no material limitation (and covers both non-elastic and elastic materials). Therefore, it would be obvious to one skilled in the art to use the looming devices of Pugh, Linstead and the 565 Patent for both knitted and elastic products. In view of the above, it is further noted that references directed to a knitted product are properly combinable with references that are for elastic products. See, 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. ) Pugh is a knitting apparatus that discloses every element of Claim 1, a base (frame member 1), at least one pin bar (spaced bars 1 ) supported on the base, the pin bar includes a plurality of pins (spaced pins 5) each including a top flared portion (over hanging portion 32) for holding a link in a desired orientation and an opening (groove 7) 39

47 on a front side of each of the plurality of pins. See Ex. 1015, Fig. 1 (reproduced on right). While Pugh does not disclose the clip for securing ends of the series of links together of Claim 9, such a feature would be obvious in view of Linstead. Specifically, Linstead teaches a stitch holder for use in knitting. Ex. 1016, 1: The stitch holder is designed to retain knitted stitches by inserting the holder through a row of stitches. Ex at 2: Linstead further discloses knitted products that require a clip to close the open ends of a knitted links 14. See Ex at Fig. 7 (reproduced above on left). The construction of the holders in Figures 7-9 are described in the specification as follows: The stitch holder 21 is preferably made of a relatively resilient metal and is bent so that in the unflexed state the needle ends are separated as illustrated in FIG. 8, which is a top view of FIG. 7. In this position, stitches 14 may readily be inserted on either of the needle ends 22, after which the needed ends 22 may be brought together and crossed over each other as in FIG. 9. The resilience of the stitch holder 21 causes the needle ends 22 to press against each other in an effort to return to the unflexed state, thereby maintaining the stitches on the holder and providing a releasable engagement between the ends. Ex at 3: This description of the stitch holder not only complies with the claim construction of the clip as a device for gripping or holding things 40

48 together, but also reads directly on the functional language of for securing ends of a series of links together (stitches are a series of links). Linstead further provides express rationale for combining the disclosed stitch holder with the product created by Pugh: Stitch holders are commonly used in knitting an article to hold stitches in one part of the piece while another part is being knitted. Ex. 1016, 1: For example, certain knitted articles need to be knitted in sections with the sections then being assembled. Therefore, a user knitting such an article would be required to stop knitting and remove a section from a device such as Pugh and apply the clip of Linstead to the section until it is time for the separate components of the article to be stitched together to form the finished article. It would have been obvious to one skilled in the art to use the apparatus of Pugh in combination with the holder disclosed in Linstead to secure the ends of the links created by the apparatus of Pugh. Thus, Claim 9 is obvious in view of Pugh in combination with Linstead because their combination renders each and every element required by the claim obvious. E. GROUND V: CLAIM 14 IS OBVIOUS UNDER 35 U.S.C. 103(a) IN VIEW OF CARRUTH IN FURTHER VIEW OF PUGH Claim 14 depends from Claim 13 which depends from Claim 12. Claim 14 is obvious under 35 U.S.C. 103(a) over Carruth in view of Pugh. Carruth discloses 41

49 a method for creating a fashion accessory using bands ( e.g. similar to hair bands, Ex at 1:54-55) or loops ( The units 100 are loops, Ex :7:). Carruth further discloses that the bands or loops may be elastic ( the units 110 are constructed from a material comprising elastic, Ex. 1011, 2:17-18). Carruth also discloses using a guide to make a fashion accessory formed of Brunnian links. Ex at 3: Instead of a guide, Carruth teaches that the fashion accessory can be created by any other type of device that serves the same function. Ex. 1011, 3: Pugh discloses a knitting apparatus that serves the same function as the guide in Carruth. The operation of creating the fashion accessory disclosed in Carruth is essentially the same process as traditional knitting, with elastic being substituted for yarn. Therefore, it would be obvious to one skilled in the art to use the apparatus of Pugh to create the fashion accessory of Carruth. The 565 Patent itself discloses that it would be obvious to one skilled in the art that its device can be used with elastic or non-elastic material to create Brunniain links made from any material. The method of Claim 14, depending indirectly from Claim 12, includes an apparatus configured as the apparatus of Claim 1. As demonstrated above, the apparatus of Claim 1 is not restricted to use with elastic bands and the Board previously found that the apparatus of Pugh anticipates the apparatus of Claim 1. The apparatus of Pugh, therefore fulfills the 42

50 requirements for the apparatus cited in the first step of method Claim 12. By patentee s own claims in the 565 Patent, it would therefore be obvious to use the apparatus of Pugh when practicing the method of Claim 12 to form Brunnian links. Claim 12 Claim 12 also requires capturing one end of an elastic band and pulling the end over and onto an adjacent pin while engaged with another elastic band. This feature is taught by Carruth, which teaches using bands ( e.g. similar to hair bands, Ex at 1:54-55) to create a fashion accessory. Carruth further discloses capturing one end of an elastic band and pulling the end over and onto adjacent pin ( a first unit 110a is folded substantially or in part back of the guide, Ex. 1011, 3:21-23). Claim 12 also requires capturing and pulling subsequent ends over until a desired link length and configuration is obtained. Carruth teaches capturing and pulling subsequent ends of bands over until a desired link length and configuration is obtained. Specifically, Carruth teaches: 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) Additional units are added as described until a desired length or number of units 110 is achieved. 43

51 Ex at 2: As discussed above, Carruth teaches that the accessory can be formed using a guide or any other suitable device. Ex An exemplary device suitable for making the accessory of Carruth is disclosed in Pugh, which as discussed above in connection with Claim 9 teaches supporting at least one pin bar (spaced bars 1 ) including a plurality of pins (spaced pins 5) to a base (frame member 1) to define a special relationship between at least two adjacent pins as required by Claim 12. Ex at Fig. 1. To make the accessory of Carruth using the device of Pugh, Pugh discloses assembling two elastic bands across adjacent pins. Specifically, Pugh teaches cord like material to be used in knitting operation is first passed around the required number of pins in the two rows there of twice. Ex at p. 1: Accordingly, Claim 12 would be obvious to one skilled in the art over Carruth in view of Pugh. Claim 13 Claim 13 is also obvious under 35 U.S.C. 103(a) over Carruth in view of Pugh. Claim 13 depends from Claim 12 and requires 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. 44

52 Carruth discloses a method of using bands ( e.g. similar to hair bands ), to create a fashion accessory. Ex at 1: Pugh discloses wherein a second of the at least two rubber bands is placed atop one end of the first of the at least two elastic bands on a common pin ( cord like material to be used in knitting operation is first passed around the required number of pins in the two rows there of twice. Ex at p. 1: In other words, Pugh discloses placing two different bands on the same pin and then weaving to create a fashion accessory. As Carruth teaches using a guide or other suitable device to make its fashion accessory, it would be obvious to combine Carruth with Pugh to arrive at Claim 13. Claim 14 Claim 14 is obvious under 35 U.S.C. 103 (a) over Carruth in view of Pugh. Claim 14 further requires 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. Pugh discloses this additional limitation of Claim 14. Specifically, Pugh teaches capturing one end of the elastic band using a hook tool reaching into an access groove (groove 7) of the pin (spaced pin 5) to extend below the top most elastic band and grasp a bottom elastic band with the hook tool. For example, Pugh teaches that by means of a suitable hand-held hook, the second 45

53 strand is raised over the hooked portion of each pin in turn to form a stitch loop around each pin. Ex at p. 1: As discussed above, Carruth similarly discloses using bands ( e.g. similar to hair bands ) to create a fashion accessory. Ex at 1: Thus, Claim 14 is obvious in view of Carruth in combination with Pugh because each and every element required by Claim 14 of the 565 Patent is disclosed in view of Carruth in combination with Pugh. F. GROUND VI: CLAIM 14 IS OBVIOUS UNDER 35 U.S.C. 103(a) IN VIEW OF WANG IN VIEW OF SASUR Claim 14 is obvious under 35 U.S.C. 103(a) over U.S. Patent No. 4,248,063 ( Wang ) (Ex. 1017) in view of with Sasur (Ex. 1014). Wang issued on February 3, 1981 and is thus prior art under 35 U.S.C. 102(b) and 103(a). Wang was not cited in the prosecution of the 565 Patent nor has it been in front of the board in connection with any of the other IPR proceedings for the 565 Patent. Claim 12 Wang teaches each and every element of Claim 12. Specifically, Wang discloses a manual knitting apparatus for making hair bands or similar goods from a series of links. Ex at 4: Like the device of the 565 Patent, the frame of Wang includes adjustable and removable parts permitting the selection of various sizes and patterns in making knitted goods. Ex at 1: Wang 46

54 thus teaches a kit for creating an item consisting of a series of links as required by the preamble of Claim 12. As shown below, Wang also teaches a base portion consisting of a pair of generally rectangular blocks 14, 16 that are removably attached to rods 20. Ex at 2: The blocks are designed to rest on a table or other surface and serve to support the knitting frame 10. Wang thus discloses the base required by Claim 12. With reference to Figure 1 below, Wang further discloses that a plurality of elongated cross-bars 22 may be mounted on the rods via sliding engagement. Ex at 2: The cross-bars 22 are thus separate and discrete items from the base and thus constitute pin bars as required by Claim 12. Additionally, each of the cross-bars 22 include holes formed therein for receipt of a plurality of threaded pegs 34. Ex at 2: The pegs 34 of Wang are disposed on the cross-bars 22 in a fixed spatial relationship and are configured to receive and retain loops of knitting material during the process of forming an item. Specifically, Wang teaches that the selection of holes 32 for pegs 34 and the distance between bars 22 depends on the size of the yarn and the desired effect. Ex at 3:1-4. Wang teaches that the relationship between the pegs 34 in adjacent rows can by varied by rotating knobs 28 to vary the size of the loops. Ex at 2:

55 Wang thus also embodies at least one pin bar supported to a base, which pin bar includes a plurality of pins defined in a desired relative spatial relationship between two adjacent pins as required by Claim 12. Regarding the next limitation of Claim 12, namely assembling at least two elastic bands across adjacent pins, Wang teaches placing yarn material on the pegs by alternatively making loops on the pegs in the first row and drawing yarn around the pegs in the second row. Ex at 3: Wang thus teaches assembling loops around at least two pegs of the device. Instead of yarn, Wang also teaches that a rubber band or the like may be tied to each pair of pegs. Ex at 3: Wang therefore expressly embodies this limitation of Claim 12 as well. Wang also teaches the next limitation of Claim 12, namely capturing one end of an elastic band and pulling the end over and onto an adjacent pin while engaged with another elastic band. Specifically, in connection with Figure 25 (reproduced below), Wang teaches placing two loops on different pegs. 48 For

56 example, Wang teaches that there are two loops on peg 228 and peg 229, respectively. Ex at 4: Thereafter, using a tool, the loop on peg 228 can be brought onto the peg 230. Ex at 4: Wang teaches that a first loop may be located atop a second loop on a common peg ( there are two loops on peg 228 and peg 229, respectively. Ex at 4:21-22). Figure 6 reproduced below illustrates the first loop atop the second loop on the common peg 28. Therefore when a user grabs the second loop on peg 228 to move it to peg 230, the second loop is engaging the first loop as it is lifted off peg 228 to be moved to the adjacent peg 230. By moving the second loop on peg 228 to peg 230, Wang is disclosing the step of capturing one end of an elastic band and pulling the end over and onto an adjacent pin while engaged with another elastic band. Wang also teaches the claimed step of capturing and pulling subsequent ends over until a desired link length and configuration is obtained. Figs. 6 through 8 (shown below) illustrate the steps of creating a knitting stitch. Figs 6 and 7 show the steps necessary to create the knitting stitch, and these steps can be 49