J Squared Inc v. Sauder Mfg Co

1. Case Identification

• Case #: IPR2015-00774
• Patent #: 8,585,136
• Filed: February 19, 2015
• Petitioner(s): J Squared, Inc. d/b/a University Loft Company
• Patent Owner(s): Sauder Manufacturing Company
• Challenged Claims: 1-14

2. Patent Overview

• Title: Chair with Coupling Companion Stool Base
• Brief Description: The ’136 patent relates to a reconfigurable furniture system. The system comprises a chair with base legs that function as rockers, which can be detachably coupled to a companion stool base to form a high chair, or used separately as a floor rocker and a stool/table.

3. Grounds for Unpatentability

Ground 1: Anticipation over Wright - Claims 1, 2, 4-8, 10, and 11 are anticipated by Wright under 35 U.S.C. §102.

• Prior Art Relied Upon: Wright (Patent D139,241).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Wright, a 1944 design patent for a "combination high chair, rocking chair and stool," discloses every element of the challenged claims. Wright teaches a chair with an upper backrest and lower sitting portion that can be placed on a stool base (first configuration) or used separately as a rocking chair on the floor (second configuration). Petitioner contended Wright’s curved base legs inherently meet the claim 1 limitation of being "structured so as to function as rockers" and that the top of its stool is a "saddle." Petitioner further asserted that Wright discloses the manual convertibility between configurations without tools, as required by claim 10.

Ground 2: Anticipation/Obviousness over Pollack References - Claims 1, 2, and 6-14 are anticipated by Pollack II under §102, or are obvious over Pollack II in view of Pollack I under §103.

• Prior Art Relied Upon: Pollack II (Patent 2,689,598) and Pollack I (Patent 2,644,506).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Pollack II, a continuation-in-part of Pollack I, discloses a removable chair (superstructure) with rocker bars designed to be used with a base (understructure). Pollack II expressly teaches that its chair component is employable with the understructure from Pollack I, which includes a table that functions as the claimed "saddle." When detached, the Pollack II chair functions as a rocker. The combination of Pollack II’s chair and Pollack I’s base with a table was argued to meet all limitations of claim 1. For claims requiring a latch (e.g., claim 6), Petitioner identified a pin and aperture mechanism in Pollack II that locks the chair to the base.
  • Motivation to Combine: To the extent the Board might not consider Pollack I’s table incorporated by reference into Pollack II, Petitioner argued a person of ordinary skill in the art (POSITA) would combine them. The motivation was to achieve the known benefit of a convertible article of furniture, as Pollack II explicitly suggests using its chair with the base from Pollack I.
  • Expectation of Success: A POSITA would have a high expectation of success, as Pollack II directs the combination of its improved chair with the prior base from Pollack I to achieve a predictable, versatile result.

Ground 3: Anticipation via Inapplicability of Earlier Filing Date - Claims 1-3 and 6-14 are anticipated by Trey Instructions under §102.

• Prior Art Relied Upon: Trey Instructions (a 2006 Sauder product literature).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that the "Trey Instructions," which describe the commercial embodiment of the patented invention, were published in 2006 and anticipate the challenged claims. This argument hinges on the assertion that the claims are not entitled to the benefit of their parent application's 2007 filing date, but are instead limited to the ’136 patent's actual filing date of October 20, 2011, making the 2006 instructions prior art.
  • Key Aspects: The core of this ground was a legal argument under 35 U.S.C. §112. Petitioner contended that the parent application (the ’478 application) only disclosed and enabled a single embodiment of a rocker leg: a standard, uniformly curved rocker rail. The issued claims, however, were broadened during prosecution to recite the generic functional limitation "function as rockers." Petitioner argued this broad functional language covers a whole genus of chair leg structures (e.g., sled base, cantilever, bipod) that the parent application did not describe or enable. Because the parent application allegedly failed to provide adequate written description for the full scope of the issued claims, the claims were not entitled to the parent's filing date, rendering the 2006 Trey Instructions anticipatory prior art.

• Additional Grounds: Petitioner asserted numerous other anticipation grounds based on Mackey (Patent 794,461), Lutes (Patent 2,530,474), and Scharaga (Patent 2,435,290). Additional obviousness grounds were asserted over Wright in view of Kassai (Patent 4,723,813) or Kennedy (Patent 1,298,053) to add various known latching mechanisms to the Wright combination.

4. Key Claim Construction Positions

• “function as rockers” (claim 1): Petitioner argued this functional limitation, added during prosecution to gain allowance, should be construed broadly under the Broadest Reasonable Interpretation (BRI) standard to mean “enable rocking.” This construction would cover any leg structure capable of performing the function, not just the specific curved rockers shown in the patent’s figures. This broad construction was central to the argument that the claims lack written description support in the parent application.
• “assembly positioned below said sitting portion” (claim 1): Petitioner proposed construing "positioned below" to mean "positioned at least partially below." This was argued to be consistent with the patent owner’s litigation positions and the patent figures, where parts of the chair frame extend above the lowest point of the seat.
• “latch” (claim 6): Petitioner advocated for a broad construction of "latch" to include any device that holds something in place, including simple mechanisms like a peg-in-hole, and not be limited to a specific structure disclosed in the specification.

5. Relief Requested

• Petitioner requested that an inter partes review be instituted and that claims 1-14 of the ’136 patent be found unpatentable and cancelled.