Takeaway: In presenting an obviousness argument, you must not only show that the prior art references taken together disclose all of the limitations, but also that there would have been a reason for one of ordinary skill in the art to combine the references.

In its Decision, the Board found that Petitioner had not established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims of the ’896 Patent, and denied institution. The ’896 Patent relates to a modular transport system for coverings for architectural openings, such as venetian blinds, pleated shades, and other horizontal or vertical blinds and shades.  Specifically, the goal of the invention is to provide a system wherein certain mechanisms are housed in independent, self-contained modules.

The Board began by stating that it gave no weight to one of Petitioner’s expert declarations because Petitioner failed to state its relevance or identify specific portions of the declaration that support the challenge. The Board then examined each of the challenges.  First, the Board discussed Petitioner’s assertion that claim 3 is obvious over Todd.  Petitioner argued that Todd discloses all of the limitations of claim 3 with the exception of two, which would have been obvious to a person of ordinary skill in the art.  The Board found that Petitioner had not explained adequately why a person of ordinary skill in the art would have modified the Todd disclosure to include the two missing limitations.

The Board then turned to the argument that claims 1-5 are obvious over Todd in view of Strahm. The Board agreed with Patent Owner that Petitioner did not adequately explain why a person of ordinary skill in the art would have a reason to modify the disclosure of Todd as taught by Strahm.

The Board next reviewed the arguments that claims 1-4 are obvious over Kuhar in view of Lohr. Again, the Board agreed with Patent Owner that Petitioner had not adequately explained why a person of ordinary skill in the art would have a reason to modify Kuhar’s device to include the Lohr mechanism.

Finally, the Board examined the argument that claim 5 is obvious over Kuhar in view of Strahm. The Board found that Petitioner had not explained how claims 3 and 4, from which claim 5 depends, are obvious in view of a combination of Kuhar and Strahm.

Norman International, Inc. v. Hunter Douglas Inc., IPR2014-00282
Paper 8: Decision Denying Institution of Inter Partes Review
Dated: June 20, 2014
Patent 8,230,896 B2
Before: Toni R. Scheiner, Linda M. Gaudette, and Jacqueline Wright Bonilla
Written by: Gaudette
Related Proceedings: IPR2014-00276; IPR2014-00283; IPR2014-00286; Hunter Douglas v. Nien Made Enterprise, No. 1:13-cv-01412-MSK-MJW (D. Colo.)