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

1. Case Identification

• Case #: IPR2019-00503
• Patent #: 10,053,017
• Filed: December 27, 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: 1-18

2. Patent Overview

• Title: Retractable vehicle step
• Brief Description: The ’017 patent discloses a retractable step for a vehicle, such as a truck or SUV. The invention uses a four-bar linkage assembly to move a stepping platform between an extended (deployed) position for use and a retracted position underneath the vehicle for storage.

3. Grounds for Unpatentability

Ground 1: Obviousness over Falardi, Mochida, and Dean - Claims 1-6, 8, 10-15, and 17-18 are obvious over Falardi, Mochida, and Dean

• Prior Art Relied Upon: Falardi (French Patent No. 1,350,593), Mochida (Japan Patent Application Publication No. H08132967), and Dean (Patent 6,375,207).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Falardi, a 1964 publication, taught the core four-bar linkage for a retractable vehicle step, crucially disclosing the use of non-parallel support linkages. This feature was the specific basis upon which the patent owner overcame an anticipation rejection over Dean during the original prosecution. Petitioner asserted that Dean and Mochida taught the remaining key features, including motorizing the step assembly. For example, Mochida disclosed a "step supporter" with "spaced apart flanges" that straddle the support arms, and Dean taught using multiple sets of linkages for added support on a running board.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine these references because they all address the same technical problem of providing convenient access to high-clearance vehicles using a four-bar linkage step. Petitioner contended it would have been a simple and obvious step to automate the well-understood manual mechanism of Falardi with the later, but still conventional, motor technology taught by Mochida and Dean to improve user convenience.
  • Expectation of Success: A POSITA would have had a high expectation of success, as adding a motor to a known mechanical linkage was a routine and predictable design modification. The underlying mechanical principles of the four-bar linkage would remain unchanged.

Ground 2: Obviousness over Falardi, Mochida, Dean, and DePaula - Claims 7, 9, and 16 are obvious over Falardi, Mochida, Dean, and DePaula

• Prior Art Relied Upon: Falardi, Mochida, Dean, and DePaula (Patent 3,494,634).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground added DePaula to the primary combination to address limitations in dependent claims 7, 9, and 16, which recite specific geometric relationships between the linkage's axes of rotation. Petitioner argued that DePaula taught a retractable step with a four-bar linkage arranged such that lines drawn between the pivot axes would intersect downwards of the support linkages in the extended position, as claimed.
  • Motivation to Combine: A POSITA designing a retractable step would have considered various known linkage geometries to achieve desired deployment and retraction paths. DePaula presented a well-documented geometric configuration to solve the same general problem. Petitioner argued that incorporating the specific axis arrangement from DePaula into the base Falardi/Mochida/Dean system was merely the application of a known design choice to achieve a predictable result.
  • Expectation of Success: The combination was expected to succeed because it involved substituting or modifying known linkage geometries, a common practice in mechanical engineering with predictable outcomes.

Ground 3: Obviousness over Falardi, Mochida, Dean, and Norton - Claims 3 and 16 are obvious over Falardi, Mochida, Dean, and Norton

• Prior Art Relied Upon: Falardi, Mochida, Dean, and Norton (a 1999 textbook, Design of Machinery).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground added the Norton textbook to further support the unpatentability of claims reciting a "self-energizing" feature. Petitioner asserted that Falardi’s use of tension springs to hold the step in its extended and retracted positions met the patent’s definition of "self-energizing." Norton was introduced to show that the underlying principle—using a linkage's "toggle position" to create a stable, self-locking state—was a fundamental and well-known concept in mechanical engineering taught in standard textbooks.
  • Motivation to Combine: A POSITA would have been motivated to consult fundamental engineering principles, such as those in Norton, when designing a linkage intended to be stable in its endpoint positions. Norton’s explanation of toggle linkages provided the foundational knowledge for implementing the "self-energizing" feature taught functionally by Falardi’s springs.
  • Expectation of Success: A POSITA would have expected success in applying the basic toggle principle from Norton to a four-bar linkage like Falardi's, as it is a direct application of textbook engineering theory to a standard mechanism.

4. Key Claim Construction Positions

• "flange" (claims 1, 10): Petitioner proposed the construction “a rib or rim for attachment to another object,” arguing that the patent figures consistently show this structure used for attachment rather than for strength or guiding.
• "cooperatively straddle" (claim 1): Petitioner proposed the construction “connect on both sides to.” This term was not used in the specification, and Petitioner argued the figures show the claimed flanges connecting to both sides of the support arms.
• "self-energizing" (claims 3, 13): Petitioner proposed the construction “continuing its downward rotational movement somewhat when a load is placed on the step, so that the load is not carried by any motor driving the step,” directly quoting the patent’s Summary of the Invention.
• "urges the stepping platform away from the retracted position" (claims 1, 11): Petitioner proposed the construction “tends to move the stepping platform further away from the retracted position but is prevented from doing so by virtue of a stop,” based on explicit descriptions in the specification for the extended position.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) would be inappropriate. The petition relied heavily on Falardi and Mochida, prior art references that were never considered by the examiner during prosecution. Petitioner asserted that Falardi, in particular, was fatal to patentability because it taught the "non-parallel" linkage feature the applicant relied upon to overcome the primary prior art (Dean) cited by the examiner. Therefore, the petition raised new, substantive questions of patentability not previously before the Patent Office.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-18 of Patent 10,053,017 as unpatentable.