PTAB

IPR2018-00707

Donner Technology, LLC v. Pro Stage Gear, LLC

Title: Mounting Board for Guitar Effects
Brief Description: The ’023 patent is directed to an improved pedal effects board for mounting and organizing guitar effects. The invention aims to provide a confined and secure area for routing and placing cables by using a frame with openings that allow cables to pass from beneath the mounting surface to connect to effects positioned on top.

Prior Art Relied Upon: SCC-700 Manual (BOSS SCC-700 Sound Control Center Manual, 1982).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that the SCC-700 manual, a publicly accessible document from the early 1980s, discloses every limitation of independent claims 14 and 15. The manual illustrates an "Effects Board" (an effect support board) comprising a top mounting surface, a bottom side, and an underlying frame structure made of cross members. It explicitly shows guitar effects with both "end" and "side" adapters being mounted, with cables passing through openings from beneath the board to connect to these adapters. Petitioner contended this directly teaches the "end connection opening" (claim 14) and "side connection opening" (claim 15) limitations.

Prior Art Relied Upon: SCC-700 Manual, 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 independent claims except for the requirement that the frame supports the effect mounting surface "at an inclined angle." To supply this limitation, Petitioner pointed to Arseneault, which relates to an electronic foot-operated instrument. Arseneault expressly teaches a housing with a "sloping upper surface" for the ergonomic purpose of helping a user "facilitate his feet reaching the various pedals."
- Motivation to Combine: A POSITA would combine the SCC-700 board with Arseneault's inclined surface teaching to improve the ergonomics and accessibility of the mounted effects pedals. This combination addressed the known objective of making pedals easier for a musician to operate.
- Expectation of Success: The combination involved applying a well-known ergonomic principle (an inclined surface) to a known device (a pedal board), making the successful outcome of an easier-to-use board entirely predictable.

Prior Art Relied Upon: SCC-700 Manual, Saravis (Patent 6,215,055).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued the SCC-700 manual teaches the claimed board structure but uses "Fixing Plugs" (a screw-based system) to mount effects. This system does not meet the claim limitation of a "friction surface" or "a side of a hook and loop fastening system." Saravis, which discloses a pedal board, explicitly teaches using a "fiber fastening strip" (e.g., Velcro) on its upper surface to releasably hold effect generators in desired locations.
- Motivation to Combine: A POSITA would be motivated to replace the SCC-700's inflexible "Fixing Plug" system with Saravis's versatile hook-and-loop fastener system. This modification would allow the board to accommodate a wider variety of effect pedals with different sizes, shapes, and mounting configurations, which the fixed-position plugs of the SCC-700 could not.
- Expectation of Success: Using hook-and-loop fasteners was a common, simple, and predictable method for mounting objects, including guitar effects, to a surface, ensuring a high expectation of success.

Prior Art Relied Upon: Carter (Design Patent D339,612), 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 a board with "at least two end members and at least two cross members." The upper surfaces of Carter's cross members form a mounting surface and define a cable connection opening between them. However, Carter uses screws or bolts, not a friction surface. Saravis supplies this missing limitation by teaching the use of a hook-and-loop fastening system for mounting guitar effects.
- Motivation to Combine: A POSITA would be motivated to apply the well-known and versatile hook-and-loop mounting method from Saravis to the frame structure of Carter to create a robust yet reconfigurable pedal board.
- Expectation of Success: Combining a known frame structure with a known fastening system to achieve their respective, predictable functions would have had a high expectation of success.
Additional Grounds: Petitioner asserted additional obviousness challenges, including for claims 3-6 over SCC-700, Arseneault, and Saravis, and for claims 8 and 21 over Carter, Saravis, and Arseneault. These grounds relied on similar rationales and combinations of the core prior art to meet further dependent claim limitations.

Petitioner argued that the terms "end connection opening" and "side connection opening" should be interpreted functionally, based on the location of the adapter on the guitar effect (i.e., end or side) to which a cable connects. This construction was central to its anticipation argument that the SCC-700 manual discloses these features.
Petitioner also asserted that the term "frame" should not be construed to require "end members," arguing this limitation was present in a cancelled original claim. Under this construction, the cross members shown in the SCC-700 manual are sufficient to meet the "frame" limitation.

A central contention was that the SCC-700 manual qualifies as a "printed publication" under pre-AIA 35 U.S.C. § 102(b). Petitioner supported this position with declarations and exhibits to show the manual was widely disseminated with the sold product in the U.S. in the early 1980s, advertised in industry periodicals, and made available upon request, thereby establishing the requisite public accessibility.

Petitioner requested the institution of an inter partes review and the cancellation of claims 1-8 and 14-21 of Patent 6,459,023 as unpatentable.