Takeaway: If commercial success is due to an element in the prior art, no nexus exists.

In its Final Written Decision, the Board determined that claims 1-17 of the ’268 patent are unpatentable under the asserted grounds.

According to the Board, the ’268 patent describes an eyewear retention device having two temple retainers connected by a resilient member, such that when the temple retainers are attached to a pair of eyeglasses and the eyeglasses are worn over the ears of a wearer, the resilient member extends rearward from the head of the wearer and is suspended off the neck of the wearer. The Board had instituted review based on the following grounds: (1) claims 1, 3-9, and 11-17 are obvious in view of Monroe and Mackay, (2) claims 1-17 are obvious in view of Monroe, Mackay, and Miller, (3) 1, 3-9, and 11-17 are obvious in view of Chisolm and Monroe, and (4) claims 1-17 are obvious in view of Chisolm, Monroe, and Miller. The Board maintained construction of claim terms that were provided in its Decision on Institution.

Patent Owner asserted that (1) the cited art fails to teach any connection between a resilient cable/member and two temple retainers; (2) no connection is disclosed in Monroe, so the prior art fails to teach that the cable extends rearward from the head of the wearer; (3) Monroe is only plastic, and Miller does not disclose the materials for its Figure 9 embodiment, and thus the prior art fails to teach the cable/member made of a “metallic core coated in a smooth casing” of claims 2 and 10; (4) Mackay and Chisolm fail to teach the “said back portion being connected to said cable [resilient member]” of claims 5 and 13; (5) Mackay and Chisolm do not teach the “angle” of claims 7 and 15; and (6) Monroe does not teach the “arc suspended substantially in the air” element of claims 8 and 17.

Petitioner, in response to Patent Owner’s assertions, argued: (1), (2), Patent Owner’s understanding of “connection” is inconsistent with its plain and ordinary meaning, and under the broadest reasonable interpretation of the term, Monroe discloses a connection between a resilient cable/member and two temple retainers; (3) Miller’s disclosure explicitly lists options for its flexible temple element, and one of ordinary skill in the art would consider all these materials; (5) Mackay describes its connectors 18, 20 as being “angled,” and Chisolm expressly states that the temple retainers are angled; and (6) it would have been obvious to one of ordinary skill in the art to bend the monofilament of Monroe into a natural arc shape.

The Board stated that the “specification does not discuss the term ‘connected,’ much less give it a meaning beyond its ordinary and customary one.” The Board determined that Monroe’s resilient cable/member must in some way be connected or attached to the eyeglasses in order to function. The Board stated that it was persuaded that (1) Miller discloses materials including a cable/member made from a metallic cord coated in a smooth casing, and (2) Mackay and Chisolm teach the “said back portion being connected to said cable/resilient member,” and the “angle” limitations of claims 7 and 15, and (3) Monroe teaches the “arc shape.”

Patent Owner argued that the prior art references teach away from each other: (1) Monroe teaches against attaching 300 pound test monofilament to a flexible temple retainer; (2) the slider in Mackay and Chisolm teaches away from using a resilient member; (3) “Monroe’s flexible temple retainers with readily bendable accordion-like ends teach away from keeping the resilient member of Monroe off the neck;” (4) Mackay and Chisolm secure glasses to the face by tightening the cord against the neck, teaching away from Monroe’s purpose of staying off the neck; (5) Mackay teaches against using a normalizing angle that would lift the cable/resilient member up; and (6) Miller teaches away from using the resilient member of Monroe because Miller requires a flexible temple element.

Petitioner responded that: (1) Patent Owner does not explain how Monroe affirmatively dissuades one of skill in the art from using monofilament line with flexible temple retainers; (2), (4) Mackay discloses an embodiment without a slider, and the slider of Chisolm is optional; (5) the teachings of Mackay upon which Patent Owner relies are optional; and (6) Miller merely illustrates the variety of materials that could be used as interchangeable replacements for monofilament line. The Board agreed with Petitioner and concluded that “[n]one of Patent Owner’s examples of purported “teaching away” criticize, discredit, or otherwise discourage the solution claimed.”

Patent Owner also asserted that ordinary artisans had not recognized the “being in the way” problem as one that needed to be solved and that Petitioner employs improper hindsight. Petitioner argued, and the Board agreed, that the problem had been recognized and solved in the prior art. Patent Owner asserted that there was no reason to combine the references. Petitioner argued that ordinary artisans had not attempted to make an off-the-neck retainer, and thus had never failed. The Board was persuaded by this argument. Patent Owner argued that the age of the references shows a lack of a reason to combine. The Board was not persuaded by this argument. In regards to the Visser declaration, the Board agreed with Petitioner that it is sound testimony. The Board also noted that Patent Owner did not depose Mr. Visser, and thus the Board did not have any testimony that established or clarified any shortcomings of Mr. Visser’s testimony. Finally, the Board also was not persuaded by Patent Owner’s argument that it would have been complicated to arrive at the claimed invention.

Patent Owner asserted secondary considerations including copying, commercial success, and industry praise. Copying, as objective evidence of non-obviousness, requires evidence of effort to replicate a specific product. Patent Owner asserts that Petitioner copied Patent Owner’s invention. The Board was not persuaded that Petitioner’s product is a copy of Patent Owner’s product. Petitioner’s product, according to the Board, uses a different configuration than Patent Owner’s product, and Petitioner obtained its own patent on that product. Moreover, given the timing of the ’268 patent, the Board concluded that Petitioner could not have had access to “the patented product” in 2007–08.

Evidence of commercial success requires a “a nexus between the claimed invention and the commercial success.” To establish a proper nexus between a claimed invention and the commercial success of a product, a patent owner must offer proof that the sales were a direct result of the unique characteristics of the claimed invention, and not a result of economic and commercial factors unrelated to the quality of the patented subject matter. If “commercial success is due to an element in the prior art, no nexus exists.” The Board was not persuaded that Patent Owner had established a nexus between its claimed invention and its product.

Lastly, Patent Owner argues that industry recognition of its product supports its argument of nonobviousness. The Board stated that it is unclear that the voting criteria for Patent Owner’s award required that the voters consider the merits of the claimed invention.
Thus, the Board concluded that claims 1-17 are unpatentable under the asserted grounds. The Board granted Petitioner’s Motion to Seal as well as Patent Owner’s Motion to Seal.

CHUMS, INC., and CROAKIES, INC. v. CABLZ, INC., IPR2014-01240
Paper 43: Final Written Decision
Dated: February 8, 2016
Patent 8,366,268
Before: Josiah C. Cocks, Jeremy M. Plenzler, and Kristina M. Kalan
Written by: Kalan
Related Proceedings: Cablz, Inc. v. Chums, Inc., 2:14-cv-00091-SLB (N.D. Ala.) and Cablz, Inc. v. Croakies, Inc., 2:14-cv-00126-SGC (N.D. Ala.).