PTAB

IPR2014-01240

Chums Inc v. Cablz Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Eyewear Retention Device
  • Brief Description: The ’268 patent discloses an eyewear retainer comprising two temple retainers connected by a resilient cable. The central inventive concept is that the cable has sufficient resiliency to extend rearward from the wearer’s head and remain suspended off the neck, thereby avoiding contact with the wearer's skin or collar.

3. Grounds for Unpatentability

Ground 1: Obviousness over Monroe and Mackay - Claims 1, 3-9, and 11-17 are obvious over Monroe in view of Mackay.

  • Prior Art Relied Upon: Monroe (a 1991 newspaper article) and Mackay (Patent 6,941,619).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Monroe, a reference not considered during prosecution, teaches the dispositive limitation of the independent claims: a resilient member that extends rearward and is suspended off the neck. Monroe described an eyewear retainer made from "300-pound test monofilament so thick and stiff" that it "sticks straight out behind his head at all times the glasses are worn" and "never drapes around his neck." Petitioner asserted that Mackay teaches all the conventional features of the temple retainers recited in the dependent claims, such as having an opening to receive an eyeglass temple, being retained by a friction fit, and normalizing the direction of the cable rearward.
    • Motivation to Combine: A POSITA would combine these references as a simple matter of design choice. The retainer in Monroe was attached crudely by tying the monofilament to the eyeglass frame with dental floss. Mackay discloses improved, well-known temple connectors for eyewear retainers. Petitioner argued a POSITA would have been motivated to replace Monroe's rudimentary attachment method with the more robust and functional connectors of Mackay to produce a commercially viable and improved product.
    • Expectation of Success: A POSITA would have a high expectation of success, as the combination involved replacing one known attachment element with another known attachment element for its intended purpose, yielding only predictable results.

Ground 2: Obviousness over Monroe, Mackay, and Miller - Claims 1-17 are obvious over Monroe in view of Mackay and Miller.

  • Prior Art Relied Upon: Monroe (a 1991 newspaper article), Mackay (Patent 6,941,619), and Miller (Application # 2007/0046889).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground incorporated the teachings of Monroe and Mackay from Ground 1 and added Miller to address the limitations of claims 2 and 10, which recite a cable "made from a metallic core coated in a smooth casing." Petitioner contended that Miller expressly teaches the interchangeability of various materials for the flexible portion of an eyewear retainer. Miller disclosed that the flexible material could be "clear monofilament polymer" (as in Monroe) or other materials including "wire," "cable," "multi-clad cable," and "coaxial cable," which are commonly understood to have a metallic core and a smooth casing.
    • Motivation to Combine: The motivation to incorporate Miller's teachings was based on the simple substitution of one known element for another. A POSITA, having conceived of the Monroe/Mackay device, would find it obvious to use a different, known cable material as taught by Miller to achieve desired characteristics such as increased durability or a different aesthetic. Miller established that these materials were well-known equivalents in the art.
    • Expectation of Success: The substitution of one known, suitable material for another was a routine design choice that a POSITA would expect to work for its intended purpose.

  • Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations of Monroe with Chisolm (Patent 6,764,177) and Monroe with McClellan (Patent 5,181,052), both with and without the further addition of Miller. These grounds relied on the same core theory as the grounds above: replacing Monroe's crude monofilament attachment with the conventional temple retainers taught by Chisolm or McClellan, and using Miller to demonstrate the known interchangeability of resilient plastic and coated metallic cable materials.

4. Key Claim Construction Positions

  • Petitioner argued for a broad construction of the term "resilient cable," proposing it should encompass, at a minimum, "a plastic coated wound wire cable or a replacement member exhibiting resiliency characteristics similar to a plastic coated wound wire cable, such as a resilient plastic or carbon fiber replacement member."
  • This construction was critical to Petitioner's arguments, as it ensured that the "300-pound test monofilament" disclosed in the Monroe reference—a stiff, resilient plastic line—would fall within the scope of the term "resilient cable" as used in the ’268 patent claims.

5. Relief Requested

  • Petitioner requests institution of inter partes review (IPR) and cancellation of claims 1-17 of Patent 8,366,268 as unpatentable under 35 U.S.C. §103.