PTAB

IPR2018-00708

Donner Technology LLC v. Pro Stage Gear LLC

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1. Case Identification

2. Patent Overview

  • Title: Mounting Board for Guitar Effects
  • Brief Description: The ’023 patent is directed to a board for mounting guitar effects pedals. The patent’s background acknowledges prior art wooden boards but identifies a need for an improved system that allows for easy repositioning of effects while providing a "confined and secure area for cable routing and placement." The invention purports to solve this by using a support structure with multiple "top surface elements" and dependent "leg extensions" which define the edges of cable connection openings, allowing cables to pass from beneath the mounting surface for a cleaner setup.

3. Grounds for Unpatentability

Ground I: Obviousness over SCC-700 and Mullen - Claims 9-11, 22-25, and 28-30 are obvious over the SCC-700 Manual in view of Mullen.

  • Prior Art Relied Upon: SCC-700 Manual (a 1982 user manual for the BOSS SCC-700 Sound Control Center) and Mullen (Patent 3,504,311).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the SCC-700 Manual discloses the basic concept of a guitar effects board with a support structure (cross members) and an effect mounting surface. However, it features a continuous top surface with limited, fixed-position cable openings. Petitioner asserted that Mullen, analogous art teaching support structures for electronic relay panels, supplies the missing claim elements. Specifically, Mullen’s support members feature "shelf parts 25" (argued to be analogous to the claimed "top surface elements") and "leg parts 23" (analogous to the "leg extensions") that are raised to create defined "wiring channels" (analogous to the "cable connection openings") for organized wire management.
    • Motivation to Combine: Petitioner argued a POSITA would combine Mullen's teachings with the SCC-700 board to solve the known problem of organized and flexible cable routing for various pedal types. Mullen provided a known, effective method for creating elevated surfaces with dedicated channels for wiring, and applying this to a pedal board was a predictable design variation to improve functionality and accommodate different effects beyond the limitations of the SCC-700 design.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success in this combination. Both references address the common problem of routing cables in an organized fashion, making the application of Mullen's structural design to the SCC-700 board a straightforward modification to achieve a well-understood and desired goal.

Ground II: Obviousness over SCC-700, Mullen, and Saravis - Claims 12 and 26 are obvious over the SCC-700 Manual in view of Mullen, further in view of Saravis.

  • Prior Art Relied Upon: SCC-700 Manual, Mullen (Patent 3,504,311), and Saravis (Patent 6,215,055).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the SCC-700/Mullen combination by adding the teaching of a "friction surface" to satisfy a limitation of claims 12 and 26. Petitioner noted the SCC-700 Manual teaches mounting effects with proprietary "Fixing Plugs," a method unsuitable for many pedals. Saravis explicitly teaches a pedal board with a "fiber fastening strip" (e.g., Velcro) covering its upper surface to releasably and securely hold a plurality of sound effect generators.
    • Motivation to Combine: A POSITA would be motivated to incorporate Saravis's friction surface to overcome the clear deficiencies of the SCC-700's rigid "Fixing Plugs." This would create a more universal, flexible, and secure mounting system compatible with a wider range of guitar effects, addressing a known need in the art for improved versatility.
    • Expectation of Success: The use of hook-and-loop fasteners on pedal boards was a common and simple solution at the time of the invention. Therefore, Petitioner argued a POSITA would have had a high and reasonable expectation of success in applying this well-known feature to the combined SCC-700/Mullen board.

Ground III: Obviousness over SCC-700, Mullen, and Carter - Claims 13 and 27 are obvious over the SCC-700 Manual in view of Mullen, further in view of Carter.

  • Prior Art Relied Upon: SCC-700 Manual, Mullen (Patent 3,504,311), and Carter (Design Patent D339,612).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground added the teaching of a "frame base" to the SCC-700/Mullen combination to address a limitation in claims 13 and 27. This frame base is claimed as supporting the primary structure above a surface to allow cables to pass beneath. Petitioner pointed to Carter, which discloses a foot pedal controller for video games that includes a distinct frame base specifically designed to elevate the pedal structure for this exact purpose.
    • Motivation to Combine: Petitioner contended a POSITA would combine Carter's frame base design to further improve the cable management of the proposed board. Elevating the entire structure would create a dedicated, protected space for routing cables underneath, achieving the "clean, organized presentation" sought by pedal board users and identified as a goal in the art.
    • Expectation of Success: Since Carter's frame base provides a known solution for elevating a similar foot-operated device to manage cables, its integration into the SCC-700/Mullen design would have been a predictable and logical design choice with a high expectation of success.

4. Key Claim Construction Positions

  • Petitioner argued for broad constructions of key claim terms under the Broadest Reasonable Interpretation (BRI) standard, asserting these interpretations were supported by the patent's own specification and were necessary to encompass the prior art.
  • "Top surface elements": Petitioner proposed construing this term to include elements that are either integrally formed as part of the support structure or are separately connected to it. This broad construction is critical for allowing Mullen’s integrally formed "shelf parts" to meet the claim limitation.
  • "Leg extensions": Petitioner proposed construing this term to mean projections from a support structure that are arranged to form an effect mounting surface. This interpretation is key to allowing the combination of Mullen's vertical "leg parts" and horizontal "shelf parts" to be read as the claimed structures.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and cancellation of claims 9-13 and 22-30 of the ’023 patent as unpatentable under 35 U.S.C. §103.