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 (H.K.) 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 high-clearance truck. The system uses a four-bar linkage mechanism to move a stepping platform between an extended, usable position and a retracted position stowed underneath the vehicle. Certain embodiments include a motor to automate the movement.

3. Grounds for Unpatentability

Ground 1: 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 the combination of these references taught all elements of the challenged claims. Falardi was presented as teaching the core invention: a retractable vehicle step using a four-bar linkage with non-parallel support arms. This was a critical teaching, as the claims of the ’017 patent were allowed during prosecution over Dean specifically by adding the "non-parallel" limitation, which Dean allegedly lacked. Mochida and Dean were asserted to teach other claimed features, such as motorizing the step (a "driving means" or "motor"), using a straddling segment with spaced flanges to connect the linkages, and defining specific arm dimensions (width greater than thickness).
  • Motivation to Combine: Petitioner contended a person of ordinary skill in the art (POSITA) would be motivated to combine these references because they all address the same technical problem of providing a retractable step for high-clearance vehicles using four-bar linkages. A POSITA would logically look to foundational, well-understood prior art like Falardi for the basic non-parallel linkage and combine it with the known, later-developed improvements for motorization and specific structural configurations disclosed in Mochida and Dean. The combination was argued to be a predictable integration of known elements to achieve a known result.
  • Expectation of Success: A POSITA would have a reasonable expectation of success in this combination because it involved applying a known motor (from Mochida/Dean) to a known mechanical linkage (from Falardi). The components were functionally compatible, and their integration was a matter of routine engineering design.

Ground 2: 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 built upon the combination in Ground 1, adding DePaula to specifically address the geometric limitations of claims 7, 9, and 16. These claims recite specific spatial relationships of the linkage's rotational axes (e.g., a line between the first and third axes intersecting a line between the second and fourth axes, or the third and fourth axes being located above the stepping surface). Petitioner argued that DePaula explicitly disclosed retractable step mechanisms with these precise rotational axis arrangements.
  • Motivation to Combine: The motivation to add DePaula's teachings to the base combination was to achieve a specific, desired orientation of the step in its retracted position (e.g., storing the step horizontally). Petitioner asserted that modifying the linkage geometry to control the final stowed position was a known design choice, and a POSITA would look to references like DePaula for established methods of arranging linkage axes to achieve this predictable result.

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

• Prior Art Relied Upon: Falardi, Mochida, Dean, and Norton (R.L. (1999), Design of Machinery).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground targeted the "self-energizing" limitation in claims 3 and 16. Petitioner asserted that while Falardi's use of tension springs taught a mechanism that could be considered "self-energizing," the addition of the Norton textbook provided fundamental, well-known teachings on the kinematics of such systems. Norton explicitly described "toggle positions" and "self-locking" features in four-bar linkages, where a linkage can be moved past a center point to a stable, locked position against a stop, which is the principle of the claimed "self-energizing" feature.
  • Motivation to Combine: A POSITA designing a retractable step would be motivated to incorporate the fundamental engineering principles taught in a standard textbook like Norton. Given the problem of ensuring the step remains stable in its extended and retracted positions, a POSITA would naturally apply Norton's teachings on toggle and self-locking mechanisms to the base linkage design from Falardi/Mochida/Dean.

4. Key Claim Construction Positions

• "flange" (claims 1, 10): Petitioner proposed the construction "a rib or rim for attachment to another object." This construction, based on a dictionary definition but narrowed to the context of the patent, was argued to be critical for mapping the term to the structures in Mochida and Dean.
• "cooperatively straddle" (claim 1): Petitioner proposed "connect on both sides to." As the term is not defined in the patent, this construction was derived from the function depicted in the figures, where flanges connect to both sides of a support arm, and was used to argue that Mochida's "step supporter" meets the limitation.
• "self-energizing" (claims 3, 13): Petitioner proposed "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." This construction was taken directly from the ’017 patent's "Summary of the Invention" and was used to argue that Falardi's spring-based system and Norton's toggle-locking mechanisms met the limitation.
• "urges the stepping platform away from the retracted position" (claims 1, 11): Petitioner proposed "tends to move the stepping platform further away from the retracted position but is prevented from doing so by virtue of a stop." This construction was based on the specification's description of the extended step's behavior under load and was key to arguing that Falardi's use of beveled ends as a stop met this limitation.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) would be inappropriate. The core argument was that the petition raised new and non-cumulative questions of patentability. Specifically, Petitioner emphasized that the primary reference, Falardi, which explicitly teaches the non-parallel linkages that were key to overcoming the rejection of Dean during prosecution, was never considered by the Examiner. Likewise, Mochida and Norton were never before the Patent Office. Therefore, the asserted combinations were substantially different from the art previously considered, justifying institution of an IPR trial.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-18 of the ’017 patent as unpatentable.