Free Brief in Opposition to Motion - District Court of Colorado - Colorado

Case 1:02-cv-02394-RPM

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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF COLORADO

Civil Action No. SCOTT PIVONKA, JOHN TOTTLEBEN,

02-cv-02394-RPM

Plaintiffs, v.

TFH PUBLICATIONS, INC.

Defendant. ________________________________________________________________________ PLAINTIFFS' OPPOSITION TO DEFENDANTS' MOTION FOR SUMMARY JUDGMENT OR STAY ________________________________________________________________________ Plaintiffs Scott Pivonka and John Tottleben ("Plaintiffs"), through their attorney, Ramon L. Pizarro responds to defendants' motion for summary judgment as follows:

I. SUMMARY 1. Defendant TFH Publications (TFH) asks this Court to follow the PTO's Board

of Patent Appeals and Interferences' conclusions regarding patentability of Plaintiffs' U.S. Patent No. 6,408,797 ("the'797 patent") and apply this conclusions to Plaintiff's U.S. Patent No. 6,216,638. However extrapolation of the PTO's conclusion is simply unwarranted to the facts in this case. 2. TFH proposes that this Court follow the PTO's decision, which is based on

expert testimony of an expert that is not in this case (a Dr. Sam Shina), and on the board's incorrect analysis of the claims. Because the board's decision does not conform to applicable

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law, and the analysis does not truly address the invention as claimed, summary judgment is not appropriate as to the claims of the `797 patent and especially not to the claims of the `638 patent. 3. For at least the reasons discussed below, Plaintiff's will appeal this case to the

Court of Appeals for the Federal Circuit.

II.

THE BOARD'S DECISION REGARDING THE `797 PATENT DOES NOT RENDER THE `638 PATENT INVALIID 4. TFH argues that because the `797 patent claims common subject matter as the

`638 patent, that a finding of invalidity of the `797 patent necessarily renders the `638 patent invalid. This position is not supported by the facts in this case or the relevant law. TFH presents no claim analysis that would support this proposition. The `797 patent is broader than the `638 patent. Thus the fact that the claims of these two patents cover common ground does not mean that the "common ground" covered is prior art or an obvious variation of prior art. These issues must be resolved at trial.

III.

THE BOARD'S DECISION IS NOT SUPPORTED BY SUBSTANTIAL EVIDENCE AND IS NOT IN ACCORDANCE TO LAW

5.

Obviousness is a legal question based on underlying fact-findings. KSR Intl.

Co. v. Teleflex Inc., 127 S.Ct. 1727, 1745-46 (2007). A reviewing court will uphold the factual findings of the board where they are supported by substantial evidence. In re Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000). Substantial evidence "is something less than the weight of the evidence but more than a mere scintilla of evidence." In re Kotzab, 217 F.3d 1365, 1369 (Fed. Cir. 2000). Substantial evidence "means such relevant evidence as a 2

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reasonable mind might accept as adequate to support a conclusion." Consol. Edison Co. v. NLRB, 305 U.S. 197, 229 (1938). There is no factual support for the boards claim construction. Furthermore, the board's conclusions regarding obviousness are not in accordance with current status of law regarding obviousness. An agency's decision is to be set aside only if it is "arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with law," 5 U.S.C. § 706(2)(A) (2007). See Impresa Construzioni Geom. Domenico Garufi v. United States, 238 F.3d 1324, 1332 (Fed. Cir. 2001). 6. The board's conclusion regarding obviousness is based on its categorization of

the invention being a "barn-like" structure. See attached Memorandum Opinion and Order, Paper 56, attached hereto as Exhibit A, "Facts", pp. 3, lines 11-12. The board then adopted this categorization as a definition of the invention, even though the word "barn" is nowhere to be found in the `797 patent or the prosecution record (and clearly not in the claims). A copy of the '797 patent is attached hereto as Exhibit D. The board accepted Dr. Shina's conclusion regarding the art as involving "basic mechanical considerations regarding walls, panels, and hinges and the stability of a given configuration." The board then categorized the shape of the folded cardboard boxes of the "Heath" patent (U.S. Patent No. 4,940,106, Exhibit E) and the "Monetti" patent (U.S. Patent 5,465,686, Exhibit F) as being "barn-like". The board then reasoned that because the Beard patent (U.S. Patent No. 3,195,506, Exhibit G) uses hinged panels to make a rectangular collapsible pet cage, it would be obvious to make the invention claimed in the `797 patent. Specifically the board concluded:

Since "barn-like" roofs were known and collapsible techniques were known, what this case amounts to is the use of a combination of known elements for their intended

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purpose to achieve an entirely expected result. Recent Supreme Court and Federal Circuit precedent confirm that the use of a combination of known elements to achieve an expected result counsels against non-obviousness. KSR International Co. v. Teleflex Inc., 127 S.Ct. 1727, 1739 (2007); In re Trans Texas Holdings Corp., Nos. 2006-1599, -1600, slip op. 18-19 (Fed. Cir. Aug. 22, 2007). See also Anderson'sBlack Rock, Inc. v. Pavement Salvage Co., Inc., 396 U.S. 57, 59-62 (1969). See page 19 of initial Memorandum and Order, Paper 52, attached hereto as Exhibit B (without exhibits).

This type of analysis is simply hindsight that violates even the broadest application of what is known as the "TSM" test, which asserts that combinations as carried out by the board must be based on teachings, suggestions, or motivation found in the prior art. In KSR, the Supreme Court explained that a "rigid" TSM test "is incompatible with our precedents." KSR, 127 S. Ct. at 1741. The Supreme Court explained its reason for castigating a "rigid" TSM test: "The obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents." Id.

In the recent (March 31, 2008) case of Ortho-McNeil Pharmaceutical, Inc. v. Mylan Laboratories, Inc. and Mylan Pharmaceuticals, Inc., No. 2007-1223, Fed. Cir.; 2008 U.S. App. LEXIS 6790, copy attached as Exhibit C, the Federal Circuit explained that "a flexible TSM test remains the primary guarantor against a non-statutory hindsight analysis such as occurred in this case. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007)

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("[A]s the Supreme Court suggests, a flexible approach to the TSM test prevents hindsight and focuses on evidence before the time of invention.").

TFH's expert, Dr. Shina, simply retraced the path of the inventors with hindsight, discounted all of the limitations of the claims, and concluded that the claimed invention was really just a another "barn-shaped" enclosure (like Heath and Monetti) with hinges (like Beard), and thus was obvious. Of course, this reasoning is always inappropriate for an obviousness test based on the language of Title 35 that requires the analysis to examine "the subject matter as a whole" to ascertain if the claimed invention "would have been obvious at the time the invention was made." 35 U.S.C. § 103(a) (emphasis added). In this case, there is no evidence or suggestion of the function of the cooperation of the claimed walls that fold over 180 degrees as incorporated into the rest of the structure of the claims. The board's analysis provides no support for why one would be motivated to make the Pivonka invention, nor does it point to any suggestion as to how to achieve the functions further discussed below.

7.

Plaintiffs' invention is a novel and nonobvious arrangement that leads to the

cooperation of all of the components of the carrier in order to make full use of the strength of each of the components and providing ease of use. The claims recite folding of the sidewalls from a first position to a second position. This folding requires that the wall panels move from the first position where the wall panels (30) are an acute angle relative to one another to the second position, where the wall panels (30) are at an angle greater than 180 dgrees relative to one another. This movement is accomplished while the roof panel remains

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hingedly attached to the walls (28) of Plaintiffs' invention, as recited in the claims. Plaintiffs' device also includes a pair of endwalls that cooperate with the floor panel and the wall panels (30) to maintain the device in the second position.

Teachings and Differences With Beard 8. The Beard device limits the travel of the walls to an erect position where the

sides (5) (made of two generally equal upper and lower sections 6 and 7) are generally parallel to one another (see column 2, lines 28 to 49 of Beard). Thus Beard uses its sides as straight columns to support the roof (top1) of his device, and then uses the front end wall or the back end wall to prevent the sides from buckling inwards, towards one another. See column 2, lines 41 to 48 of Beard. The load paths of the Beard device are illustrated below:

Small side load leads to immediate collapse through buckling. (No "toggle" effect to overcome.)

The disadvantage of this parallelogram shape is clear. Vertical loads lead to instability through buckling.

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9.

In contrast, the invention of the `797 patent discloses geometry and

cooperation between the roof panel, walls, wall panels, and floor panel, that forces the panels into a bent shape (in the second position where the wall panels (30) are at greater than 180 degrees to one another), which does not react to loads in direct vertical compression. In the bent shape (caused by the wall panels being at greater than 180 degrees to one another), loads on the roof panel will lead to further bending of the walls (28), and thus the wall panels would bow outwardly, away from one another. The claimed invention forces cooperation of all of the parts, in a different manner than Beard, in order to allow the structure to resist the weight of the roof or anything placed on top of the roof.

10.

As to the cooperation of the components of the `797 patent, it is also

important to reiterate that allowing the wall panes to rotate to a position that is greater than 180 degrees achieves an important useful result that is not contemplated or achievable with the prior art. By allowing the wall panes to fold more than 180 degrees achieves a toggle effect that prevent buckling of the walls back down into the folded, acute angle, position. This function could be categorized as a toggling action of the side walls. This toggle action biases the sidewalls towards the second position, which in turn forces the side walls, roof, end walls, and floor to cooperate with one another in order to retain the shape of the structure. The function of the mechanism can be further understood by analyzing Fig. 4 of the `797 patent, which has been presented below, without the patent's reference characters for clarity:

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Angle BAC A Arrow

D

B Longest Side of Triangle Angle BCA C

Fig.4
Fig. 4 illustrates initial collapse of the device claimed in the `797 patent. It can be appreciated that triangles ADC and ABC share the common line AC, which will always be the longest line between triangles ADC and ABC. When the device claimed in the `797 patent is being folded, and the wall panels form triangle ADC, gravity and the weight of the roof and panels causes the device to collapse. However, when the device is being opened, the roof must be raised until the wall panels will first pass through a co-planar condition, where points D and B are at the same location (triangles flatten into a line), and then the side walls (with the aid of the user) are then advanced outwardly to form triangle ABC. The weight of the roof (gravity) will cause the device to further "advance" triangle ABC by causing angles BAC and BCA to get larger as the roof once again begins to approach the floor. This function helps deploy the device by maintaining the sidewalls in an open position, allowing easy

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raising of the end walls. Once the end walls have been raised, the arrangement allows the parts to cooperate with one another to retain the rigidity of the structure. To collapse the device, triangle ABC is collapsed by raising the roof until the two side walls are in a coplanar arrangement and then the side walls are urged (with the aid of the user) to form triangle ADC. Once triangle ADC is formed, gravity can take over and the device can proceed into its collapsed arrangement. Alternatively, the "toggle" function can be explained by observing the roof in relation to the floor. The roof panel is raised as triangle ADC is flattened, and then lowered as the wall panels proceed as triangle ABC. Accordingly gravity biases the wall panels away from forming triangle ADC, and thus urges the panels to cooperate with the end walls.

Still further, it will be understood that the invention claimed in the `797 patent allows cooperation of several of the devices positioned together, as illustrated below:

vertical load

vertical load Loads are reacted at an angle.

vertical load

Loads are reacted at an angle.

Vertical load is reacted as outward load, which allows carriers to cooperate with one another when arranged in parallel to increase strength and rigidity.

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In contrast, Beard and his straight walls create a parallelogram shape when erect. This is an inherently less stable arrangement because the sidewalls can assume a myriad of parallelogram shapes. Beard does not recognize the possibility of the function of the device claimed in the `797 patent.

Teachings and Differences With Heath And Monetti 11. The cardboard or corrugated board references of Heath and Monetti simply do not concern themselves with collapsibility and the later erection of the container that function as claimed in the `797 patent, nor do they disclose how the collapsibility of the claimed invention may be achieved. It is clear that the board only cited these references because, according to the board, they had a "barn-like" shape. However, these references only collapse by disassembling the cardboard of corrugated panels, so that they can lay flat like any well-known cardboard box. They do not function like the invention claimed in the `797 patent.

12. Known devices, such as the Beard reference, limit the motion of hinged panels to 180 degrees, indicating that until the device claimed in the `797 patent, those with ordinary skill in the art did not appreciate the important new and useful results that can be achieved by providing a hinge that allows motion beyond 180 degrees. Namely, the cooperation of the final position of the wall panels to cooperate with the roof and take advantage of the weight of the roof to stabilize the structure as discussed above, with or without the raising of the end walls (which aids in stabilizing the end walls).

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13.

The board asserted that both (Beard and the invention claimed in the `797

patent) are pet containers used for essentially the same purpose, and that is to collapse and hold pets. However, this is such a broad statement that it provides little guidance as to whether the solutions are obvious over one another. The board compared Pivonka Fig. 5 and Beard Fig. 5 and concluded that they both use hinged panels, the mechanical method by which both collapse is the same. However, as explained above, this is simply not true in regards to the claimed invention. The board was correct in pointing out that the second position involves an angle of greater than 180° as is apparent from Pivonka Fig. 3 whereas the Beard "second" position involves an angle of 180°. However, its conclusion that the Pivonka angle of greater than 180° results from Pivonka's use of a "barn-like" roof misses the point that the shape of the device claimed in the `797 patent is dictated by the arrangement of the parts that perform a new and nonobvious function, or cooperation, as described above. (The roof is actually flat, as clearly set forth in the claims of the `797 patent -- which recite that the roof is generally parallel to the floor -- and the walls articulate more than 180°.) The claims do not mention a "barn-like" shape or the goal of achieving any shape, for that matter. The claims concern a collapsible enclosure that includes panels that articulate more than 180 during the collapse and erection of the device. The claims are not directed at the problem of how to make a barn-shaped structure.

Beard does not function like Pivonka, and to transform the Beard device into the device claimed in the `797 patent would take much more than the mere replacement of parts--an inventive step requiring the visualization of the movements of the wall panels to create a toggle

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effect would have to be first envisioned. Beard does not even come close to discussing or recognizing the possibility of buildinga device such as the device claimed in the `797 patent.

14.

The boa rd ass ert ed tha t the roof of the invention claimed in the `797

patent is shorter than the Beard roof due to the "barn-like" shape. However, as explained above, this demonstrates a complete lack of understanding of the cooperation of the invention claimed in the `797 patent and mischaracterizes the function of this invention: the function is not to "create a `barn-like' shape, and does not claim a barn-like shape. Accordingly the board's conclusions are not supported by facts on the record.

IV. CONCLUSION For the reasons asserted above, the board's decision regarding obviousness of the invention claimed in the `797 is not supported by facts on the record and the conclusions do not conform to applicable law prohibiting hindsight. The whether the references of record would teach or suggest to someone with ordinary skill in the art that the invention claimed in the `797 patent is obvious is not ascertained by the board's decision. The board engaged in the same kind hindsight that was disapproved by the Federal Circuit in Ortho-McNeil Pharmaceutical, supra. Thus this Court should not follow the analysis and conclusions of the board, and should deny TFH's renewed motion. Furthermore, the claims of the `638 patent are clearly not addressed by the board, and thus the validity of the claims of this patent must be addressed on their own at trial.

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Respectfully submitted on this 28th day of April, 2008, s/ Ramon L. Pizarro Ramon L. Pizarro Attorney for Plaintiffs 3515 South Tamarac Drive, Suite 200 Denver, CO 80237 (303) 779-9551 [email protected]

CERTIFICATE OF SERVICE I hereby certify that on the 28th day of April 2008, I served the foregoing PLAINTIFFS' OPPOSITION TO DEFENDANTS' MOTION FOR SUMMARY JUDGMENT OR STAY by e-filing such with the U.S. District Court, who will then copy to the following people at the email addresses listed below: Russell S. Burnside, Esq. Greenberg Dauber Epstein & Tucker [email protected] Daniel Evans, Esq. Godin & Baity, LLP [email protected] Peggy E. Kozal, Esq. Godin & Baity, LLP [email protected] s/ Ramon L. Pizarro
Ramon L. Pizarro

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