PTAB

IPR2018-00707

Donner Technology LLC v. Pro Stage Gear LLC

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Mounting Board for Guitar Effects
  • Brief Description: The ’023 patent discloses an effect support board for mounting guitar effects pedals. The invention features an effect mounting surface coupled to a frame, with cable connection openings that allow cables to pass from beneath the mounting surface to connect to effects positioned on top.

3. Grounds for Unpatentability

Ground I: Anticipation of Claims 14 and 15 by the SCC-700 Manual

  • Prior Art Relied Upon: BOSS SCC-700 Sound Control Center Manual ("SCC-700 manual"), a printed publication from at least as early as July 1982.
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the SCC-700 manual discloses every limitation of claims 14 and 15. The manual illustrates an "Effects Board" with a "Units Board" serving as the effect mounting surface. This surface has a top side for mounting effects and an opposite bottom side under which cables are routed. The manual shows cable connection openings that allow cables to pass through the mounting surface to connect to adapters on the "end" (for claim 14) and "side" (for claim 15) of a guitar effect. The SCC-700 product also includes an underlying frame of cross-members that supports the effect mounting surface.

Ground II: Claims 1, 18, and 19 are obvious over the SCC-700 Manual in view of Arseneault

  • Prior Art Relied Upon: SCC-700 manual and Arseneault (Patent 3,585,893).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that the SCC-700 manual teaches all elements of the base claims except for supporting the effect mounting surface "at an inclined angle." Arseneault, which discloses an electronic foot-operated instrument, explicitly teaches a housing with a sloping upper surface to make the foot pedals more easily accessible to a user.
    • Motivation to Combine: A POSITA would combine the teachings of the SCC-700 manual with Arseneault to improve the ergonomics of the SCC-700 board. Providing an incline, as taught by Arseneault, was a well-known solution to the problem of improving a user's ability to reach and operate foot pedals.
    • Expectation of Success: A POSITA would have a reasonable expectation of success in modifying the SCC-700 frame to create an inclined surface, as it involved applying a known design principle for an established benefit using predictable mechanical components.

Ground III: Claims 2, 16, and 17 are obvious over the SCC-700 Manual in view of Saravis

  • Prior Art Relied Upon: SCC-700 manual and Saravis (Patent 6,215,055).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued the SCC-700 manual discloses the core effect support board but uses "Fixing Plugs" to mount effects, which may be unsuitable for effects of different sizes or from other manufacturers. Saravis teaches a pedal board that uses a "fiber fastening strip" (e.g., Velcro) on its upper surface to releasably hold a plurality of effects. This represents the claimed "friction surface" and "hook and loop fastening system."
    • Motivation to Combine: The SCC-700 manual itself envisions using effects units from manufacturers other than BOSS. A POSITA would be motivated to incorporate the hook-and-loop fastening system of Saravis onto the SCC-700 mounting surface to provide a more versatile and universal mounting solution than the proprietary Fixing Plugs, thereby accommodating a wider variety of guitar effects.
    • Expectation of Success: Applying a hook-and-loop fastener to a surface to mount objects was a simple, common, and highly predictable technique, ensuring a high expectation of success.

Ground IV: Claims 7 and 20 are obvious over Carter in view of Saravis

  • Prior Art Relied Upon: Carter (U.S. Design Patent No. D339,612) and Saravis (Patent 6,215,055).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner contended that Carter, which discloses a video game foot pedal controller, teaches the claimed method of constructing an effect support board. Carter shows providing at least two end members and two cross members and rigidly connecting them. The upper surfaces of Carter's cross members form an effects mounting surface and define a cable connection opening between them. Saravis teaches the claimed step of "fixably positioning a friction increasing element," such as a hook-and-loop fastening system, on a mounting surface.
    • Motivation to Combine: A POSITA would have been motivated to add the hook-and-loop fastening system from Saravis to the frame structure of Carter. Carter's design provides a robust frame but relies on screws or bolts for mounting, whereas Saravis teaches a more flexible and releasable mounting method suitable for various effects pedals. Combining them would yield a support board with both a strong frame and versatile mounting capabilities.
    • Expectation of Success: The combination involved applying a standard fastening system (Saravis) to a known mechanical frame structure (Carter) to achieve the predictable benefit of secure, yet releasable, mounting.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including that claims 3-6 are obvious over the SCC-700 manual, Arseneault, and Saravis, and that claims 8 and 21 are obvious over Carter and Saravis further in view of Arseneault.

4. Key Technical Contentions (Beyond Claim Construction)

  • SCC-700 Manual as a "Printed Publication": A central contention of the petition is that the SCC-700 manual qualifies as a "printed publication" under pre-AIA 35 U.S.C. §102(b). Petitioner argued that the manual was widely disseminated with the SCC-700 product sold in the U.S. in the early 1980s, advertised in industry periodicals, and made available to interested persons upon request. This public accessibility and dissemination, occurring more than one year before the patent's priority date, allegedly makes it available as prior art for all asserted grounds relying upon it.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-8 and 14-21 of the ’023 patent as unpatentable.