T Max Hangzhou Technology Co Ltd v. Lund Motion Products Inc

1. Case Identification

• Case #: IPR2018-01638
• Patent #: 8,157,277
• Filed: September 14, 2018
• Petitioner(s): T-MAX (HANGZHOU) TECHNOLOGY CO., LTD. and T-Max Industrial (HK.) Co. Ltd.
• Patent Owner(s): Lund Motion Products, Inc.
• Challenged Claims: 1-33

2. Patent Overview

• Title: Retractable Vehicle Step
• Brief Description: The ’277 patent discloses a retractable step for vehicles utilizing a four-bar linkage mechanism. The system comprises a stepping member and two support arms that pivotally connect a vehicle's underside to the stepping member, enabling movement between a deployed (extended) position for use and a retracted (stowed) position.

3. Grounds for Unpatentability

Ground 1: Obviousness over Falardi - Claims 1-2, 4-15, and 22-33 are obvious over Falardi.

• Prior Art Relied Upon: Falardi (France Patent No. 1,350,593).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Falardi, a 1963 patent for a retractable "footboard," taught all key limitations of the challenged claims, including independent claims 1, 22, 27, and 31. Falardi’s device was asserted to be a retractable vehicle step employing a "deformable quadrilateral system" (a four-bar linkage) with "connecting rods 3 and 4" (support arms) pivotally attached to a "platform 6" (step member) and a vehicle frame. Petitioner contended Falardi explicitly showed the claimed geometric relationships, such as non-parallel support arms that define intersecting lines outboard of the linkage when retracted. Falardi was also alleged to teach the initial downward movement of the arms when retracting from the deployed position, a key limitation added during prosecution of the ’277 patent. For various dependent claims, Petitioner asserted that Falardi taught features like unequal arm lengths, a static stop mechanism, and a step that is inclined in the retracted position.
  • Motivation to Combine (for §103 grounds): As a single-reference obviousness ground, the argument centered on Falardi being so analogous that any minor differences would represent obvious design choices to a Person of Ordinary Skill in the Art (POSITA). For instance, Petitioner argued that selecting unequal lengths for the support arms (as claimed) to achieve a desired orientation of the step in the retracted position was a well-known and predictable engineering choice to ensure a compact fit beneath a vehicle.
  • Expectation of Success: Petitioner asserted that because Falardi's mechanism is mechanically analogous and functionally identical to the one claimed, a POSITA would have had a high expectation of success in making any minor modifications to arrive at the claimed subject matter.

Ground 2: Obviousness over Falardi and DePaula - Claims 3 and 16-21 are obvious over Falardi in view of DePaula.

• Prior Art Relied Upon: Falardi (France Patent No. 1,350,593) and DePaula (Patent 3,494,634).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon Falardi by adding DePaula to teach specific positional limitations for achieving a more compact retracted state. Independent claim 16 and dependent claim 3 require that while the stepping surface is entirely outboard of the outer pivot axis when deployed, at least a portion of that surface is located inboard of the inner pivot axis when retracted. Petitioner argued that while Falardi taught the deployed configuration, DePaula explicitly disclosed this inboard retracted position for its "tread portion 40." DePaula was cited as teaching a linkage design that retracts the step farther underneath the vehicle to improve compactness.
  • Motivation to Combine (for §103 grounds): Petitioner argued a POSITA would combine Falardi and DePaula because both references address the identical problem of creating a compact, retractable vehicle step using a four-bar linkage. DePaula's design, which retracts the step further inboard, represents a known technique for improving stowage and ground clearance. A POSITA seeking to optimize the design of a step like Falardi's would naturally look to analogous art like DePaula and be motivated to incorporate its more efficient inboard retraction feature. The goal would be to achieve a step that is both inclined for a slim profile (like Falardi) and further retracted under the vehicle (like DePaula), thereby maximizing compactness.
  • Expectation of Success: The proposed combination involved applying well-understood mechanical principles from one four-bar linkage step design to another highly similar design. Petitioner asserted that a POSITA would have a reasonable expectation of success in integrating DePaula’s inboard retraction feature into Falardi’s system, as the result—a more compactly stowed step—would be entirely predictable.

4. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under 35 U.S.C. §325(d) by emphasizing that the primary reference, Falardi, was never before the Patent Office during the original examination. It was contended that Falardi is not cumulative to the art considered by the Examiner and provides specific disclosures on key claim limitations that the Examiner previously believed were absent from the prior art, thus presenting new, substantive questions of patentability.

5. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-33 of Patent 8,157,277 as unpatentable.