IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF MICHIGAN

CHOONS DESIGN LLC,
a Michigan limited liability company,

Plaintiff, Case No.: 4:13-cv-13569

v. Hon. Terrance G. Berg

LAROSE INDUSTRIES, LLC,
a New J ersey limited liability company, and
TOYS R US, INC,
a New J ersey corporation.

Defendants.


NOTICE OF DECISION ON PETITION
TO INSTITUTE INTER PARTES REVIEW




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On May 9, 2014, the Court ordered Choons Design, Inc. (Choons) to file
a notice of the IPR decision within three days after the United States Patent and
Trademark Office (USPTO) decides whether or not to institute the IPR. [Dkt. No.
33, p. 3.] The Court also ordered Choons to file a copy of the decision with the
Court. [Id. at p. 3.]
On May 20, 2014, the USPTO issued a decision: (1) instituting an inter
partes review as to claims 1, 5-8, 10, and 11, and (2) denying the request to
institute an inter partes review as to claims 9 and 12-14. A copy of the Boards
decision is attached as Exhibit A.

Dated: May 21, 2014 CARLSON, GASKEY & OLDS, P.C.

/s/ Brian S. Tobin
Theodore W. Olds, III (P42004)
J ohn M. Siragusa (P62573)
Brian S. Tobin (P67621)
Carlson Gaskey & Olds, P.C.
400 W. Maple, Suite 350
Birmingham, Michigan 48009
Telephone: (248) 988-8360
Facsimile: (248) 988-8363
Email: tolds@cgolaw.com
jsiragusa@cgolaw.com
btobin@cgolaw.com
2

4:13-cv-13569-TGB-MKM Doc # 34 Filed 05/21/14 Pg 2 of 3 Pg ID 571
CERTIFICATE OF SERVICE
I certify that on May 21, 2014, I electronically filed the foregoing Notice and
all referenced exhibits with the Clerk of the Court using the ECF system which
will send notification of such filing to all attorneys of record.
CARLSON, GASKEY & OLDS, P.C.

/s/ Brian S. Tobin
Brian S. Tobin (P67621)
Carlson Gaskey & Olds, P.C.
400 W. Maple, Suite 350
Birmingham, Michigan 48009
Telephone: (248) 988-8360
Facsimile: (248) 988-8363
Email: btobin@cgolaw.com

3

4:13-cv-13569-TGB-MKM Doc # 34 Filed 05/21/14 Pg 3 of 3 Pg ID 572

EXHIBIT A
4:13-cv-13569-TGB-MKM Doc # 34-1 Filed 05/21/14 Pg 1 of 25 Pg ID 573
Trials@uspto.gov Paper 9
Tel: 571-272-7822 Entered: May 20, 2014



UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
LAROSE INDUSTRIES, LLC
Petitioner
v.
CHOONS DESIGN, LLC
Patent Owner
_______________

Case IPR2014-00218
Patent 8,485,565 B2
_______________


Before GRACE KARAFFA OBERMANN, JEREMY M. PLENZLER, and
JON B. TORNQUIST, Administrative Patent Judges.

PLENZLER, Administrative Patent Judge.


DECISION
Institution of Inter Partes Review
37 C.F.R. 42.108

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I. INTRODUCTION
A. Background
LaRose, LLC (Petitioner) filed a petition to institute an inter partes review
of claims 1 and 5-14 of U.S. Patent No. 8,485,565 B2 (the 565 patent). Paper 1
(Pet.). The patent owner, Choons Design, LLC (Patent Owner), filed a
preliminary response. Paper 8 (Prelim. Resp.).
1
The standard for instituting an
inter partes review is set forth in 35 U.S.C. 314(a), which provides as follows:
THRESHOLD.The Director may not authorize an inter partes
review to be instituted unless the Director determines that the
information presented in the petition filed under section 311 and any
response filed under section 313 shows that there is a reasonable
likelihood that the petitioner would prevail with respect to at least
1 of the claims challenged in the petition.
Petitioner contends that the challenged claims are unpatentable under
35 U.S.C. 102 and 103 on the following grounds (Pet. 25-60):
References Basis Claims challenged
MacBain
2
102 1, 5, 6, 8, and 10-14
MacBain and Pugh,
3
Schaub,
4

Parisi,
5
or Gustin
6

103 1
MacBain 103 7
MacBain and Meltzer,
7

Darnell,
8
Hunter,
9
or Carruth
10

103 9

1
Patent Owners response is not indicated as a preliminary response, but we treat
it as such because it was filed within the appropriate time for a preliminary
response and it appears to be a preliminary response in form.
2
U.S. Patent No. 5,231,742 (Ex. 1010) (MacBain).
3
UK Patent App. No. GB 2147918 A (Ex. 1015) (Pugh).
4
U.S. Patent No. 8,316,894 B2 (Ex. 1016) (Schaub).
5
U.S. Patent No. 2,457,064 (Ex. 1006) (Parisi).
6
U.S. Patent No. 7,506,524 B2 (Ex. 1017) (Gustin).
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References Basis Claims challenged
MacBain and Meltzer or
Carruth
103 11
Pugh 102 1 and 5-8
Pugh and Meltzer, Darnell,
Hunter, or Carruth
103 9
Pugh and MacBain, Meltzer, or
Carruth
103 10 and 11
Schaub 102 1 and 5-8
Schaub and Meltzer, Darnell,
Hunter, or Carruth
103 9
Schaub and MacBain, Meltzer,
or Carruth
103 10 and 11
Parisi 102 1 and 8
Parisi and Pugh 103 5
Parisi and Meltzer, Darnell,
Hunter, or Carruth
103 9
Parisi and MacBain, Meltzer,
or Carruth
103 10 and 11
Gustin 102 1 and 8
Gustin and Pugh 103 5
Gustin 103 7
Gustin and Meltzer, Darnell,
Hunter, or Carruth
103 9
Gustin and MacBain, Meltzer,
or Carruth
103 10 and 11

7
U.S. Patent No. 5,426,788 (Ex. 1011) (Meltzer).
8
U.S. Patent No. D592, 537 S (Ex. 1012) (Darnell).
9
U.S. Patent No. 7,040,120 B2 (Ex. 1013) (Hunter).
10
U.S. Patent No. 8,418,434 B1 (Ex. 1014) (Carruth).
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For the reasons given below, we institute an inter partes review of claims 1,
5-8, 10, and 11. We do not institute an inter partes review of claims 9 and 12-14.
B. Real Party-in-Interest
Petitioner indicates that the real parties-in-interest in the Petition are LaRose
Industries, LLC and Toys R Us-Delaware, Inc. Pet. 1.
C. Additional Proceedings
Petitioner indicates that the 565 patent is the subject of the following co-
pending federal district court case: Choons Design LLC v. LaRose Industries,
LLC, No. 2:13-cv-13569-TGB-MKM (E.D. Mich.). Pet. 1.
D. The 565 Patent (Ex. 1001)
The 565 patent is titled Brunnian Link Making Device and Kit and
generally relates to a kit and method for creating a linked item formed from a
series of links, such as Brunnian links. Ex. 1001, 1:1, 27-34, 2:28-30. A
Brunnian link is formed from a closed loop doubled over itself to capture another
closed loop to form a chain. Id. at 1:27-29. The 565 patent provides examples of
linked items such as bracelets, necklaces and other wearable or decorative items.
Id. at 2:29-30. The 565 patent discloses that kits for making uniquely-colored
bracelets and necklaces have always been popular, but that there is a need and
desire for a kit that simplifies construction to make it easy for people of different
skills and artistic levels to create desirable, durable, and wearable items. Id.
at 1:14-23.
Figures 4, 5A, and 5B of the 565 patent illustrate the basic components of
the kit and are reproduced below.
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Figure 4 is a perspective view of an example pin bar. Figure 5A is a perspective
view of interfacing surfaces of an example base and the example pin bar.
Figure 5B is a perspective view of a pin bar mounted to an example base.
The kit includes base 12 that forms a support for pin bars 14. Id. at 2:42-43.
One or more pin bars 14 can be mounted to one or more bases 12 to provide a
desired configuration. Id. at 2:46-49, 54-57. Each base 12 includes tabs (keys) 32
and each pin bar 14 includes slots 34 that receive tabs 32 to maintain pin bars 14
on base 12 in a desired orientation. Id. at 2:63-67. Pin bars 14 each include a
plurality of pins 26. Id. at 2:43. Figure 6 of the 565 patent illustrates pin 26, and
is reproduced below.
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Figure 6 is a perspective view of one pin, illustrating the portions of pin 26. Pin 26
includes flanged top 38, mid portion 46, bottom portion 44, and front access
groove 40. Id. at 3:6-7, 18-19. Flanged top 38 and bottom portion 44 are each
flared outward relative to mid portion 46.
Pins 26 hold links, such as rubber bands 52, 54, 56, in a desired position
during assembly of the linked item, as illustrated in Figures 14A-14C, reproduced
below.

Figures 14A-14C are perspective views of assembly steps for creating a Brunnian
linked article, illustrating a portion of bar 42 and pins 26, and a process of making
a chain of linked items using elastic bands 52, 54, 56, and hook tool 16.
The 565 patent explains that top and bottom flared portions 38, 44 center
rubber bands 52, 54, 56 on mid portion 46, and top flared portion 38 prevents
errant release of rubber bands 52, 54, 56 during creation of the links. Id. 3:10-12,
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23-25. As seen above, adjacent ends of rubber bands (e.g., 56, 54) are disposed on
a common pin 26. Id. at 3:66-4:4. Hook 16 is inserted into access groove 40 of
common pin 26 to grasp the end of rubber band 54 and pull rubber band 54 onto
subsequent pin 26 to link rubber bands 54 and 56. Id. at 4:9-20. The process is
repeated for subsequent rubber bands (52, etc.) until a desired linked item is
created. Id. at 4:11-22. Free ends of the linked item are then secured by a clip. Id.
at 4:29-33.
Claim 1 illustrates the claimed subject matter and is reproduced 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.

E. Claim Construction
Consistent with the statute and the legislative history of the Leahy-Smith
America Invents Act,
11
the Board will interpret claims of an unexpired patent using
the broadest reasonable construction in light of the specification of the patent. See
Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012);
37 C.F.R. 42.100(b). Claims are to be given their broadest reasonable
interpretation consistent with the specification, reading the claim in light of the
specification as it would be interpreted by one of ordinary skill in the art. In re
Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).

11
Pub. L. No. 112-29, 125 Stat. 284 (2011).
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1. for holding a link in a desired orientation
The phrase for holding in claim 1 directly follows the top flared portion.
Petitioner contends that for holding in claim 1 relates back to the pins, rather
than the top flared portions of the pins. Pet. 22. Petitioner argues that the
recitation in dependent claim 5 that the pin has a mid portion for holding a link
supports this construction. Id. Patent Owner disagrees and contends that, instead,
for holding applies to the top flared portion of each pin. Prelim. Resp. 21-22, 29.
The specification explains that [e]ach pin 26 includes the flanged top 38
that is flared outward to prevent errant release of a rubber band during creation of a
link. Ex. 1001, 3:10-12. Based on the information presented at this stage of the
proceeding, we are not persuaded that claim 5 requires Petitioners proposed
construction of claim 1. The claim language and the description in the
specification indicate that the top flared portion of the pin is for holding a link in a
desired orientation. Accordingly, we construe claim 1 to require such an
arrangement.
2. an opening on a front side of each of the plurality of pins
Petitioner does not advance a construction for this term. 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. Prelim. Resp. 22-23. 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. For example, a loom formed by two parallel rows may include pins having
front sides and openings facing a direction outward from a central region of the
loom (i.e., the region between the parallel rows). The central region could be the
common reference point and the openings on one row would face a direction
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opposite the openings on the other row, but all openings would still be located on a
front side of each pin facing away from the common reference point.
In an alternate example, a loom may include pins having front sides and
openings facing a direction toward a central region of the loom. Again, the central
region could be the common reference point, and the openings on one row would
face a direction opposite the openings on the other row, but all openings would still
be located on a front side of each pin facing toward the common reference point.
The common reference point could also be characterized as an exterior region of
the loom, such as an end, side, or outer perimeter of the loom. These examples are
consistent with the specification, which only requires that [e]ach of the pins 28
includes a flanged top 38 and a front access groove 40. Ex. 1001, 3:5-7.
3. access groove
Claim 8 depends from claim 1 and refers to the access groove. However,
there is no recitation of an access groove before its introduction in claim 8.
Petitioner proposes construing the access groove in claim 8 as corresponding to
the opening from claim 1. Pet. 23. Patent Owner does not oppose this
construction, which is consistent with the plain language of the claim as well as the
specification. For example, claim 1 recites that the opening is on a front side of the
pin, and claim 8 recites a hook adapted to extend into the access groove for
capturing one end of a link. The specification describes the features corresponding
to the openings from claim 1 as front access grooves 40 providing clearance for
insertion of hook tool 16 into pins 26. Ex. 1001, 3:4-17 and Figs. 6-9. Thus, for
purposes of this decision, we construe the access groove in claim 8 as
corresponding to the opening in claim 1.
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4. clip
Claim 9 depends from claim 1 and further recites a clip for securing ends of
the series of links together. Petitioner contends that the term clip should be
given its ordinary meaning and proposes the dictionary definition of a device for
gripping or holding things together. Pet. 24 (citing Ex. 1009, 3). Patent Owner
does not oppose this construction, which is consistent with the specification.
Based on the record before us, we find Petitioners proposed construction to be the
broadest reasonable construction consistent with both the specification of the 565
patent and the plain meaning of clip. Consequently, we construe clip as a
device for gripping or holding things together.
5. Brunnian links
Claim 11 depends from claim 1, and further defines the series of links in the
preamble of claim 1 as Brunnian links. The 565 patent describes a Brunnian
link as a link formed from a closed loop doubled over itself to capture another
closed loop to form a chain. Ex. 1001, 1:27-29. Both Petitioner and Patent
Owner propose adopting this definition. Pet. 25; Prelim. Resp. 34. Based on the
record before us, we find the proposed construction to be the broadest reasonable
construction consistent with both the specification of the 565 patent and the plain
meaning of Brunnian link. Consequently, we construe Brunnian link as a
link formed from a closed loop doubled over itself to capture another closed loop
to form a chain.
6. while engaged with another elastic band
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. Petitioner contends that it is unclear whether the claim requires the
elastic band to be engaged with another elastic band or the adjacent pin to be
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engaged with another elastic band. Pet. 15. We determine that the language of the
claim requires the elastic band to be engaged with another elastic band. This is
consistent with the specification, which explains that elastic band 54 is engaged
with elastic band 56, while being pulled over pin 26 and onto adjacent pin 26, as
shown in Figures 14A-14C. See Ex. 1001, 4:9-22.

II. ANALYSIS
A. Overview
Petitioner contends that claims 1 and 5-14 of the 565 patent are
unpatentable over the prior art cited in the table above.
B. Proposed Grounds Based on MacBain
1. Overview of MacBain
MacBain describes a loom and method for twining or weaving. Ex. 1010,
Abstr. Figure 2 from MacBain is illustrative and is reproduced below.

Figure 2 is a perspective view of a loom 11.
Loom 11 includes base 13, plates 15, 17 secured to base 13, and loom
fingers 19 extending through openings in plates 13, 17. Id. at 3:59-62. MacBain
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explains that the arrangement of loom fingers 19 facilitates removal of the weft
weaving or twining from fingers 19 when completed. Id. at 5:46-61. MacBain
further explains that loom fingers 19 can easily be removed from plates 15, 17 to
facilitate weaving from the center out by allowing orientation of pins 19 to be
reversed on plates 15, 17 during weaving. Id. at 6:5-8.
Figure 8 of MacBain illustrates a weaving process using loom 11 and is
reproduced below.

Figure 8 is a perspective view illustrating weft formation 101 located on loom
fingers 19 with hook 105 passing through one of loom fingers 19 and engaged with
warp thread 103. MacBain explains that warp thread 103 or other suitable material
is inserted in the weft formation 101 by attaching such warp thread to hook 105
and passing hook 105 through channels 77 of loom fingers 19. Id. at 5:62-66.
2. Analysis
Petitioner contends that MacBain discloses each of the limitations of
claims 1, 5, 6, 8, and 10-14 and, additionally, contends that claims 1, 7, 9, and 11
would have been obvious in view of MacBain, or in view of a combination of
MacBain and a variety of references. Pet. 25-38.
a. Claim 1
i. Anticipation by MacBain
Petitioners challenge relies on the claim construction requiring any portion
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of the pin used for holding a link in a desired orientation, which we do not adopt
for the reasons explained above. Pet. 30. As discussed above, the claim requires
that the top flared portion is for holding a link in a desired orientation.
Petitioner contends that tapered portions 75 at ends of fingers 19 or the tapered
ends of channels 77 in MacBain correspond to the claimed flared portions, but
does not contend that either of these tapered portions holds, or is capable of
holding, a link in a desired orientation. Id. Therefore, Petitioner fails to establish a
reasonable likelihood of success for this challenge.
ii. Obviousness over MacBain
Petitioner additionally contends that it would have been obvious to modify
Macbains loom fingers so that they are equipped with the radially or laterally
flared tops disclosed in Pugh, Schaub, Parisi and Gustin in order to retain weft and
warp bands on the loom fingers during a twining or weaving process. Pet. 35.
Patent Owner argues that Petitioners proposed modification would serve no
benefit in MacBains device because it would inhibit removal of the fabric from
loom fingers 19 and, also, would not allow for the removal and reversal of loom
fingers 19 for center-out weaving. Prelim. Resp. 30-31.
As MacBain explains, the shape of loom fingers 19 allows for the material to
be slid off when completed and also provides for reversal of loom fingers 19.
Ex. 1001, 5:46-6:15. MacBain explains that this ability to quickly and easily
remove loom fingers 19 (together with the weft formation thereon) from plates 15
and/or 17 provides an additional unique advantage of permitting weaving from the
center out. Id. at 6:5-8. As such, we are not persuaded that one skilled in the art
would modify MacBain as proposed by Petitioner.
b. Claims 5-11
Claims 5-11 depend from claim 1. Petitioners challenges to these claims
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based on MacBain do not cure the underlying deficiencies in the challenges to
claim 1. Thus, Petitioner fails to establish a reasonable likelihood of success for
the challenges to these claims.
c. Claim 12
Claim 12 is a method of creating a linked item 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. Petitioner challenges claim 12 based on
anticipation by MacBain. Pet. 29, 32-35. Petitioner contends that in MacBains
device, [w]hile the warp 103 is pulled through the loom finger 19
2
, the warp 103
would inherently engage the closed loop weft 101
1
(i.e., another elastic band).
Pet. 33. Patent Owner does not specifically address the engaged limitation, but
contends that loop [103] is pulled along a groove 77 in a pin, and between the first
and second loops on that pin. Prelim. Resp. 35. Based on our construction
explained above, we determine the claim requires that an elastic band is
engaged with another elastic band while the elastic band is pulled over and onto
an adjacent pin. Petitioner fails to explain persuasively why warp 103 necessarily
is engaged with one of wefts 101 while warp 103 is pulled along groove 77.
Rather, warp 103 appears simply to pass between wefts 101 and is not engaged
necessarily with wefts 101 while being pulled along groove 77.
For these reasons, Petitioner fails to establish a reasonable likelihood of
success for the challenge to claim 12.
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d. Claims 13 and 14
Claims 13 and 14 depend from claim 12. Petitioner challenges these claims
based on anticipation by MacBain. Pet. 29, 34-35. However, that challenge does
not cure the underlying deficiency in the challenge to claim 12. Thus, Petitioner
has failed to establish a reasonable likelihood of success for the challenges
regarding these claims.
C. Proposed Grounds Based on Pugh
1. Overview of Pugh
Pugh describes a hand knitting apparatus. Ex. 1015, 1:5-7. Figure 1 from
Pugh is illustrative and is reproduced below.

Figure 1 is a perspective view of a knitting apparatus.
Figures 2 and 3, reproduced below, are a variation of the knitting apparatus
shown in Figure 1 to include removable teeth, as discussed below.
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Figure 2 is a first section view of the knitting apparatus. Figure 3 is a second,
fragmentary, section view of the knitting apparatus in Figure 2.
Pugh describes the knitting apparatus including teeth 5 removably coupled
to a pair of spaced bars 1. Id. at 2:61-63. Bars 1 are secured to end plates 4 by
screws 6 extending through end plates 4 and split-cylindrical beads 8 in bars 1. Id.
at 2:71-75. Bars 1 and end plates 4 are coupled to support end plates 17 by
pivots 15. Id. at 2:87-93.
Teeth 5 are coupled detachably to bars 1. Id. at 2:61-63. Each tooth 5
includes upwardly extending portion 39, upper overhanging portion 32, and base
portion 34 with sloping surface 11. Each tooth 5 defines a groove 7 along
upwardly extending portion 39 and a lead-in guide groove 13, which leads into
groove 7. Id. at 2:121-127. Lead-in guide groove 13 facilitates locating a hook in
groove 7. Id. at 1:66-69.
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2. Analysis
Petitioner contends that Pugh discloses each limitation of claims 1 and 5-8
and, additionally, contends that claims 9-11 would have been obvious in view of
Pugh combined with a variety of references. Pet. 39-43.
a. Claim 1
Petitioner argues that claim 1 is anticipated by Pugh. Pet. 39-42. We have
reviewed Petitioners argument and evidence, including the claim charts,
supporting a finding that claim 1 is anticipated by Pugh. See Pet. 38-42. Patent
Owner presents two primary arguments regarding that challenge to claim 1.
Prelim. Resp. 38. First, Patent Owner argues that claim 1 is not anticipated by
Pugh because not all of the openings on each of the pins face a front
direction, and instead, the pins on one side face in completely opposite directions
from the pins on the other side. Id. Second, Patent Owner argues that Petitioners
challenge fails because there is nothing within Pugh that would teach the kit
which includes a link. Id.
Patent Owners first argument relies on the proposed construction of an
opening on a front side of each of the plurality of pins requiring that the openings
on all pins face the same direction (Prelim. Resp. 38), which we do not adopt for
the reasons explained above. Under our construction, the openings do not need to
face the same direction. Petitioner identifies teeth 5 in Pugh as corresponding to
the claimed pins and identifies grooves 7 in teeth 5 as corresponding to the
claimed openings. Pet. 40. We are persuaded by Petitioners contention that each
tooth 5 in Pugh includes a groove 7 on a front side because each groove 7 faces
away from a common reference point, namely, the region between bars 1.
Patent Owners second argument requires that links are included in the
claimed kit. Prelim. Resp. 38. However, the claimed kit does not require a link.
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Instead, the kit only requires that the flared portion of the pin is for holding a
link, which is an intended use. As such, to satisfy that limitation in claim 1, Pugh
need only disclose a flared portion of a pin that is capable of holding a link in a
desired orientation. See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (oil
dispenser inherently anticipated popcorn dispenser, where specified function did
not distinguish the claimed apparatus from a prior art apparatus capable of
performing the function).
Petitioner identifies overhanging portion 32 in Pugh as the claimed top
flared portion. Pet. 40. Petitioner points to Pughs discussion of overhanging
portion 32 retaining an item such as wool on teeth 5 until removal to show that the
structure disclosed in Pugh is capable of holding a link in a desired orientation. Id.
(quoting Ex. 1015, 2:117-121). Patent Owner offers no explanation as to why
overhanging portion 32 would not be capable of performing that function. Based
on Petitioners explanation, and the structure disclosed by Pugh, we are persuaded
at this stage of the proceeding that overhanging portion 32 discloses the claimed
structure and, moreover, that this structure would be capable of holding a link.
Patent Owner does not address Petitioners challenge with respect to the
additional features of claim 1. Based on the record at this stage of the proceeding,
we are persuaded that Petitioner has shown a reasonable likelihood of prevailing at
trial in showing that claim 1 is anticipated by Pugh.
b. Claims 5-8
Claims 5-8 depend from claim 1. Petitioner argues that claims 5-8 are
anticipated by Pugh. Pet. 38-42. We have reviewed Petitioners arguments and
evidence, including the claim charts, supporting that challenge, which Patent
Owner does not address. Based on the information presented at this stage of the
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proceeding, we are persuaded that Petitioner is reasonably likely to establish that
Pugh discloses the limitations of claims 5-8. See Pet. 40-41.
c. Claim 9
Claim 9 depends from claim 1 and further recites a clip for securing ends of
the series of links together. Petitioner acknowledges that Pugh does not explicitly
disclose a clip. Pet. 42. Petitioner cites Meltzer, Darnell, Hunter, or Carruth as
disclosing a clip and contends that it would have been obvious to provide the
apparatus of Pugh with the connecting member 24 in Meltzer [or similar
connecting members in Darnell, Hunter, or Carruth] since ends of the series of
links formed in Pugh can be conveniently secured to one another with the use of
same. Id. Patent Owner counters that the knitting apparatus in Pugh is used to
create a knitted fabric product and, therefore, there would be no reason to clip ends
of such a product. Prelim. Resp. 39.
We agree with Patent Owner that Petitioner fails to explain persuasively why
one skilled in the art would have combined the clips from any of the cited
references with the knitting apparatus of Pugh. Other than the general allegation
that some unspecified item could have its ends secured, Petitioner fails to identify
any reason why a knitted fabric product created by Pughs knitting apparatus
would benefit from such a clip. On this record, Petitioner fails to articulate a
rational reason why a skilled artisan would have been led to include a clip in
Pughs knitting apparatus. Thus, Petitioner fails to establish a reasonable
likelihood of success on the challenge to claim 9.
d. Claims 10 and 11
Claims 10 and 11 depend from claim 1. Claim 10 further defines the series
of links recited in the preamble of claim 1 as a series of elastic bands and claim
11 further defines the series of links as a series of Brunnian links. Thus,
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claim 10 effectively recites that the kit is for creating an item consisting of a series
of elastic bands, and claim 11 effectively recites that the kit is for creating an item
consisting of Brunnian links. Based on the record before us, we do not view the
preamble of claim 1 as a claim limitation because the body of the claim defines a
complete structure and the preamble appears to recite only a purpose or intended
use for the claimed invention. Claim 10 does not require elastic bands, and
claim 11 does not require Brunnian links. Patent Owner has shown no structural
distinction between claims 10 and 11 and claim 1. Therefore, based on the record
before us, claims 10 and 11 do not further limit claim 1.
Petitioner contends that the subject matter of claims 10 and 11 would have
been obvious over Pugh and other references. Pet. 43. Because anticipation is the
epitome of obviousness, a disclosure that anticipates under 35 U.S.C. 102 also
renders the claim unpatentable under 35 U.S.C. 103. See In re Fracalossi, 681
F.2d 792, 794 (CCPA 1982); In re Meyer, 599 F.2d 1026, 1031 (CCPA 1979); In
re Pearson, 494 F.2d 1399, 1402 (CCPA 1974).
As noted above, we are persuaded that Petitioner has shown a reasonable
likelihood of prevailing at trial in showing that claim 1 is anticipated by Pugh.
Because claims 10 and 11 are not shown to add any structural limitations over the
subject matter of claim 1, at this stage of the proceeding, we are persuaded that
Petitioner is reasonably likely to show at trial that the subject matter of claims 10
and 11 would have been obvious based primarily on the disclosure of Pugh.
D. Additional Proposed Grounds
1. Claims 1, 5-8, 10, and 11
Petitioner asserts additional challenges to claims 1 and 5-11 as summarized
in the table above. We deny the grounds directed to claims 1, 5-8, 10, and 11 as
redundant in light of the determination that there is a reasonable likelihood that
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these claims are unpatentable based on the grounds of unpatentability based
primarily on Pugh.
2. Claim 9
Petitioner contends that claim 9 would have been obvious in view of the
combination of Schaub, Parisi, or Gustin with Meltzer, Darnell, Hunter, or Carruth.
Pet. 47-48, 53-54, 58-59. Similar to the challenge based on the combination of
Pugh with Meltzer, Darnell, Hunter, or Carruth, Petitioner acknowledges that none
of Schaub, Parisi, and Gustin discloses the claimed clip. Pet. 48, 53, 58. Similar to
the rationale advanced in the challenge based on the combination of Pugh with
Meltzer, Darnell, Hunter, or Carruth, Petitioner contends that it would have been
obvious to provide the apparatus of Schaub, Parisi, or Gustin with the connecting
member 24 in Meltzer, or similar connecting members in Darnell, Hunter, or
Carruth, because ends of the series of links formed in Schaub, Parisi, or Gustin can
be secured conveniently to one another with the use of such members. Id. at 48,
54, 59. Those challenges suffer from the same deficiency noted above regarding
the challenge based on Pughthat is, Petitioner articulates no rational reason why
a skilled artisan would have been prompted to use a clip with these prior art
apparatuses.
Thus, for similar reasons, we determine that Petitioner fails to explain
persuasively why one skilled in the art would have combined the clips from any of
the cited references with the apparatus of Schaub, Parisi, or Gustin. Petitioner does
not establish a reasonable likelihood of success for these challenges.
E. Secondary Considerations
As explained above, we institute inter partes review of claims 1, 5-8, 10, and
11 based only on the challenges relying primarily on Pugh. The challenge to
claims 1 and 5-8 is based on anticipation. Secondary considerations are not
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relevant to anticipation. The challenge to claims 10 and 11 is based on
obviousness. Patent Owner alleges secondary considerations to rebut this
obviousness challenge.
Patent Owner argues that there is a great deal of evidence of commercial
success, adoption by industry (Toys R Us infringement and the other copiers
and counterfeiters), industry praise, and copying. Prelim Resp. 52. Patent Owner
argues that the evidence of non-obviousness is so strong as to clearly resolve the
question in [Patent Owner] Choons favor. Id. at 54. Patent Owner notes that the
Board has previously found such evidence sufficient to deny institution of inter
partes review. Id. at 52 (citing Omron Oilfield & Marine, Inc. v. MD/Totco, Case
No. IPR2013-00265, Paper 11 (PTAB, Oct. 31, 2013)). However, Patent Owner
fails to explain persuasively why the evidence of secondary considerations,
presented at this preliminary stage, meets the level of the evidence presented in
Omron, and should preclude trial.
The issue of secondary considerations is highly fact-specific, and at this
stage of the proceeding, the record regarding such secondary considerations is
incomplete. At this preliminary stage of the proceeding, based on the record
before us, we determine that Patent Owners evidence of commercial success is
insufficient to preclude trial. Our determination in that regard does not prevent
Patent Owner from further developing such evidence at trial.

III. SUMMARY
Petitioner demonstrates a reasonable likelihood of prevailing on its challenge
to the patentability of claims 1, 5-8, 10, and 11 of the 565 patent. At this stage of
the proceeding, the Board has not made a final determination as to the patentability
of any challenged claim.
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The Petition is granted as to the following grounds:
A. Anticipation of claims 1 and 5-8 based on Pugh; and
B. Obviousness of claims 10 and 11 in view of Pugh and MacBain,
Meltzer, or Carruth.
The Petition is denied as to all other grounds.

IV. ORDER
For the reasons given, it is
ORDERED that the Petition is granted as to claims 1, 5-8, 10, and 11.
FURTHER ORDERED that pursuant to 35 U.S.C. 314(a), inter
partes review of the 565 patent is hereby instituted commencing on the entry date
of this Order, and pursuant to 35 U.S.C. 314(c) and 37 C.F.R. 42.4, notice is
hereby given of the institution of a trial.
FURTHER ORDERED that the trial is limited to the grounds
identified above. No other grounds are authorized.















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For PETITIONER:

Ralph W. Selitto, Jr.
John K. Kim
Joseph Agostino
GREENBERG TRAURIG, LLP
selittor@gtlaw.com
kimjo@gtlaw.com
agostinoj@gtlaw.com




For PATENT OWNER:

John Siragusa
Theodore W. Olds
CARLSON, GASKEY & OLDS, P.C.
jsiragusa@cgolaw.com
tolds@cgolaw.com




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