LaRose Industries LLC v. Choon's Design LLC

1. Case Identification

• Case #: IPR2014-00218
• Patent #: 8,485,565
• Filed: December 13, 2013
• Petitioner(s): LaRose Industries, LLC
• Patent Owner(s): Choon's Design Inc.
• Challenged Claims: 1-11

2. Patent Overview

• Title: Brunnian Link Making Device and Kit
• Brief Description: The ’565 patent describes a device and kit for creating linked items, such as bracelets, from elastic bands. The device comprises a base member and one or more adjustable pin bars that can be repositioned on the base to form various patterns for looping the bands.

3. Grounds for Unpatentability

Ground 1: Claims 1-4 and 9-11 are obvious over Akers in view of Akita

• Prior Art Relied Upon: Akers (Patent 3,504,453), Akita (Japanese Application # H05-184852).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Akers disclosed all key structural elements of independent claim 1, including a base member and a plurality of adjustable pins or "pin members" for holding loops of material during fabrication of a linked article. Akers taught a device for knitting and weaving using yarn. Petitioner asserted that Akita taught a braiding device specifically for creating linked accessories from elastic bands. Akita’s disclosure of using elastic members for braiding supplied the missing element from Akers. Dependent claims were allegedly obvious as they recited minor, well-known variations such as making the device from plastic (a common material for toys) or arranging the pins in a staggered configuration, a known practice for creating different patterns in textile arts.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine the adjustable loom of Akers with the elastic band material of Akita to improve the versatility of crafting devices. Petitioner argued there was a known desire in the art to create a wider variety of braided or linked items, and applying a different, readily available material like the elastic bands from Akita to a versatile and adjustable loom like Akers would have been an obvious way to achieve this goal.
  • Expectation of Success: The combination was presented as a simple substitution of one known material (yarn in Akers) with another known material suitable for linking (elastic bands from Akita) on a known device structure. A POSITA would have had a high expectation of success because the properties of elastic bands were well understood and their use on a pin-based loom would predictably result in a linked article.

Ground 2: Claims 1-4 and 9-11 are obvious over Spreng in view of Akita

• Prior Art Relied Upon: Spreng (Patent 4,561,154), Akita (Japanese Application # H05-184852).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Spreng, like Akers, disclosed the fundamental structure of the claimed invention. Spreng taught a weaving device with a base and a plurality of pins onto which material is looped. Petitioner mapped the "base member" and "pin bar" limitations of claim 1 directly onto Spreng’s device. The primary difference was Spreng’s use of yarn. As in Ground 1, Petitioner relied on Akita to teach the use of elastic bands as the linking material. The combination of Spreng’s loom structure with Akita’s elastic band material allegedly rendered the claims obvious.
  • Motivation to Combine: The motivation was analogous to that in Ground 1. A POSITA seeking to expand the capabilities of the Spreng weaving device would look to other known materials in the braiding and weaving arts. Akita explicitly taught using elastic bands to form such articles, providing a clear reason to adapt Spreng's device for use with this material to create novel designs.
  • Expectation of Success: Petitioner argued that adapting the Spreng device to use elastic bands would have been a simple and predictable modification. No new or unexpected results would arise from this combination, and a POSITA would fully expect the combined system to function as intended to create elastic-band bracelets.

Ground 3: Claims 5-8 are obvious over Akers, Akita, and the knowledge of a POSITA

• Prior Art Relied Upon: Akers (Patent 3,504,453), Akita (Japanese Application # H05-184852), and the general knowledge of a POSITA regarding kits.
• Core Argument for this Ground:
  • Prior Art Mapping: This ground extended the arguments from Ground 1 to address the kit-related claims (5-8). Having established the obviousness of the linking device over Akers and Akita, Petitioner argued that claims reciting a "kit" including this device, a looping tool, and elastic bands were also obvious. Akita disclosed the use of elastic bands, and Petitioner asserted that providing a simple hook or "looping tool" to manipulate loops on pins was a well-known and rudimentary concept in knitting and weaving.
  • Motivation to Combine: The motivation to create a kit is a matter of commercial convenience. Petitioner argued that once the linking device itself was deemed obvious, it would have been further obvious to package it with the necessary components (elastic bands) and a helpful tool (a simple hook) for sale as a complete consumer product. This practice was standard in the hobby and craft industry.
  • Expectation of Success: There was a high expectation of success in creating such a kit, as it merely involved packaging known, compatible components together.

4. Key Claim Construction Positions

• "Pin Bar": Petitioner argued this term should be construed broadly to mean "a structure having one or more pins," not limited to a removable bar containing multiple pins. This construction was necessary for the prior art looms of Akers and Spreng, which feature individually positionable pins or non-removable rows of pins, to meet the claim limitation.
• "Brunnian Link": Petitioner contended that the term "Brunnian link," while sounding technical, simply described the resulting chain of interconnected loops (a basic chain stitch) created by the device. It was argued that this term should not be given any special, limiting weight beyond the structure of a standard crocheted or knitted chain, which was well known in the art.

5. Key Technical Contentions (Beyond Claim Construction)

• Petitioner's core technical contention was that the ’565 patent claimed a simple aggregation of old and well-known elements from the textile and craft arts. The central argument was that moving from yarn-based looms (Akers, Spreng) to an elastic-band-based loom was a trivial and obvious design choice, not an inventive step. The underlying process of forming a chain stitch on a series of pins was presented as a foundational technique in crafting, and applying it with a different material did not confer patentability.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-11 of Patent 8,485,565 as unpatentable under 35 U.S.C. §103.