Trials@uspto.gov
`571-272-7822
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` Paper 66
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`Entered: June 30, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`REDLINE DETECTION, LLC
`Petitioner,
`
`v.
`
`STAR ENVIROTECH, INC.
`Patent Owner.
`_______________
`
`Case IPR2013-00106
`Patent 6,526,808 B1
`_______________
`
`
`Before JENNIFER S. BISK, JAMES B. ARPIN, and BRIAN P. MURPHY,
`Administrative Patent Judges.
`
`ARPIN, Administrative Patent Judge.
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`

`

`Case IPR2013-00106
`Patent 6,526,808 B1
`
`
`A.
`
`Introduction
`
`I. BACKGROUND
`
`Redline Detection, LLC (“Petitioner”) filed a corrected petition to institute
`
`an inter partes review of claims 9 and 10 of Patent No. US 6,526,808 B1 (Ex.
`
`1001; “the ’808 patent”) pursuant to 35 U.S.C. §§ 311-319 (Paper 8; “Pet.”). Star
`
`Envirotech, Inc. (“Patent Owner”) timely filed a patent owner preliminary response
`
`(Paper 13; “Prelim. Resp.”), in which it argued that the petition should be denied,
`
`among other reasons, on the equitable grounds of assignor estoppel. On July 1,
`
`2013, we instituted a trial for claims 9 and 10 of the ’808 patent, on two grounds of
`
`unpatentability. Paper 17 (“Dec.”).
`
`On October 1, 2013, Patent Owner filed a patent owner response (Paper 41;
`
`“PO Resp.”), and, subsequently, Petitioner filed a reply to the patent owner
`
`response (Paper 54; “Pet. Reply”). Finally, Petitioner filed a motion to exclude
`
`evidence (Paper 56), to which Patent Owner filed an opposition (Paper 60; “PO
`
`Opp. Pet. Mot. Excl.”). Petitioner then filed a reply (Paper 61) to Patent Owner’s
`
`opposition to the motion to exclude evidence.
`
`Pursuant to requests from both parties (Papers 55 and 58), an oral hearing
`
`was held on April 1, 2014. A transcript of that oral hearing is included in the
`
`record as Paper 65 (“Tr.”).
`
`We have jurisdiction under 35 U.S.C. § 6(c). We issue this final written
`
`decision pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. We determine that
`
`Petitioner fails to show by a preponderance of the evidence that claims 9 and 10
`
`are unpatentable. Petitioner’s motion to exclude is denied-in-part and otherwise
`
`dismissed as moot.
`
` 2
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`
`
`

`

`Case IPR2013-00106
`Patent 6,526,808 B1
`
`
`
`The ’808 Patent
`
`B.
`
`The ’808 patent relates to methods for generating smoke for use in a volatile,
`
`potentially explosive environment. Ex. 1001, col. 6, ll. 44-67. In particular, the
`
`’808 patent describes methods for generating smoke, in which a flammable fluid is
`
`vaporized into smoke in an inert environment created within a closed smoke
`
`producing chamber. Id. at col. 2, ll. 8-13; col. 6, ll. 54-57.
`
`A system, suitable for use in performing such methods, is illustrated in
`
`Figure 1, reproduced below:
`
`
`
` 3
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`
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`

`

`Case IPR2013-00106
`Patent 6,526,808 B1
`
`
`Figure 1 depicts a schematic of smoke and clean air generating apparatus 1
`
`for verifying the presence and detecting the location of leaks in a fluid system
`
`under test. Id. at col. 2, ll. 62-65. Apparatus 1 comprises sealed chamber 6
`
`containing a non-toxic oil supply 8. Id. at col. 3, ll. 25-27. Air inlet tube 10
`
`projects upwardly from the bottom of chamber 6 and extends above the level of oil
`
`supply 8. Id. at col. 3, ll. 27-28. Chamber 6 further comprises resistor heating grid
`
`(e.g., coil) 14, as well as fluid baffle 18, having smoke outlet orifice 20. Id. at col.
`
`3, ll. 32-33, 35-36. Both heating grid 14 and baffle 18 extend laterally across
`
`chamber 6, and baffle 18 is disposed above heating grid 14. Id. at col. 3, ll. 32-40.
`
`In an embodiment, air from air compressor 25 may be delivered via air inlet
`
`tube 10 at a sufficient rate to cause some of the oil from oil supply 8 to be drawn
`
`through oil inlet orifice 12 into inlet tube 10. Id. at col. 3, ll. 41-46. The mixture
`
`of compressed air and oil then is blown upwardly and outwardly from inlet tube 10
`
`towards and into contact with heated grid 14. Id. at col. 3, ll. 46-50. Upon
`
`contacting heated grid 14, the oil is vaporized instantaneously into smoke, and the
`
`rising smoke passes through orifice 20 in baffle 18 and is taken up by smoke outlet
`
`line 2. Id. at col. 3, ll. 50-52. Smoke from outlet line 2 may be conveyed via
`
`smoke supply line 4 to a system undergoing testing. Id. at col. 3, ll. 52-56.
`
`In another embodiment,
`
`gases other than air may be supplied to the air inlet tube 10 of
`apparatus 1 to cause a mixture of such gas and oil to be blown towards
`the heating grid 14. . . . As an alternative to pressurized air, carbon
`dioxide or nitrogen gas from a pressure and flow regulated tank or
`bottle 60 can be used because of their non-flammable and inert
`characteristics. . . . Moreover, producing smoke with nitrogen gas
`rather than air would enable a variety of high pressure systems . . . to
`
` 4
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`

`

`Case IPR2013-00106
`Patent 6,526,808 B1
`
`
`be tested at high operating temperatures but without the inherent risks
`of explosion.
`
`
`
`Id. at col. 6, ll. 46-67 (emphases added). Thus, the ’808 patent describes at least
`
`two embodiments: one in which smoke is produced using pressurized air and
`
`another in which smoke is produced using another gas, such as carbon dioxide or
`
`nitrogen, instead of air.
`
`C. Prior Art Relied Upon
`
`Petitioner relies upon the following prior art references:
`
`Gilliam
`
`US 5,107,698
`
`Apr. 28, 1992
`
`(Ex. 1005)
`
`Pauley1
`Stoyle 2
`
`
`GB 640,266
`GB 1,240,867
`
`July 19, 1950
`July 28, 1971
`
`(Ex. 1010)
`(Ex. 1008)
`
`APPLICATIONS FOR THE SMOKE GENERATOR (Jan. 28, 1999),
`http://www.smokemachines.com (“the 1999 Website”) (Ex. 1013)
`
`
`
`1 Petitioner refers to this reference as “GB ‘266” in the petition (Pet. 4), and Patent
`Owner refers to this reference as “the Pauley Patent” in the patent owner
`preliminary response (Prelim. Resp. 15). In this decision, we refer to this reference
`as “Pauley” or Ex. 1010.
`2 Petitioner refers to this reference as “GB ‘867” in the petition (Pet. 4), and Patent
`Owner refers to this reference as “the Stoyle Patent” in the patent owner
`preliminary response (Prelim. Resp. 15). In this decision, we refer to this reference
`as “Stoyle” or Ex. 1008.
`
` 5
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`
`

`

`Case IPR2013-00106
`Patent 6,526,808 B1
`
`
`We instituted trial on the following grounds of unpatentability:
`
`
`
`References
`
`Gilliam and Stoyle
`Gilliam, Pauley, and the 1999
`Website
`
`Basis
`
`§ 103(a)
`§ 103(a)
`
`Claims
`Challenged
`9 and 10
`9 and 10
`
`
`II. CLAIM ANALYSIS
`
`A.
`
`Challenged Claims
`
`Of the challenged claims, claim 9 is independent, and claim 10 depends
`
`directly from independent claim 9. During a first reexamination of the ’808 patent,
`
`claim 9 was amended, and claim 10 was added. Ex. 1001 (Ex Parte Reexamination
`
`Certificate No. US 6,526,808 C1). The patentability of these claims later was
`
`confirmed during a second reexamination of the ’808 patent. Ex. 1001 (Ex Parte
`
`Reexamination Certificate No. US 6,526,808 C2). Because only these two claims
`
`are presented for inter partes review in the petition, both claims 9 and 10 are
`
`reproduced below to demonstrate the claimed subject matter (emphases showing
`
`material added during reexamination in italics and material deleted during
`
`reexamination in brackets):
`
`A method for generating smoke for use at a volatile, potentially
`9.
`explosive environment, said method comprising the steps of:
`
`
`locating a heating element within a closed smoke producing
`chamber, said smoke producing chamber having a gas inlet and a
`smoke outlet;
`
`delivering a flammable fluid to said heating element within the
`closed smoke producing chamber;
`
` 6
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`

`

`Case IPR2013-00106
`Patent 6,526,808 B1
`
`
`
`energizing said heating element for vaporizing into smoke [and]
`within the closed smoke producing chamber the flammable fluid that
`is delivered thereto;
`
`
`blowing a supply of non-combustible gas under pressure into
`the closed smoke producing chamber by way of said gas inlet thereof
`for (1) creating an inert environment within said chamber so as to
`prevent ignition and thereby avoid the possibility of an explosion
`when said flammable fluid is vaporized into smoke by said heating
`element and (2) for carrying the smoke to the volatile potentially
`[hazardous] explosive environment by way of the smoke outlet of the
`closed smoke producing chamber, said volatile potentially explosive
`environment being a closed system undergoing testing for leaks; and
`
`connecting the smoke outlet of said closed smoke producing
`chamber to the closed system undergoing testing, said supply of non-
`combustible gas for creating an inert environment within the closed
`system to which the smoke is carried, said inert environment with the
`closed system preventing ignition within the closed system during the
`testing thereof;
`
`wherein the closed system to be tested for leaks at the volatile,
`potentially explosive environment is the evaporative system of a motor
`vehicle including a fuel tank, further comprising delivering smoke
`from the smoke outlet of said smoke producing chamber to the fuel
`tank.
`
`10. The method for generating smoke recited by Claim 9,
`comprising the additional step of regulating the pressure at which the
`smoke is carried by said non-combustible gas from said closed smoke
`producing chamber to the closed system undergoing testing.
`
`
`
` 7
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`

`

`Case IPR2013-00106
`Patent 6,526,808 B1
`
`B.
`
`Claim Construction
`
`
`
`1.
`
`Principles of Law
`
` Consistent with the statute and legislative history of the Leahy-Smith
`
`America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), the Board
`
`interprets claims using the broadest reasonable construction in light of the
`
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see also
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012).
`
`Under the broadest reasonable construction standard, claim terms are presumed to
`
`have their ordinary and customary meaning as would be understood by one of
`
`ordinary skill in the art in the context of the entire disclosure. In re Translogic
`
`Tech. Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). An inventor may rebut that
`
`presumption by providing a definition of the term in the specification with
`
`reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475,
`
`1480 (Fed. Cir. 1994). In the absence of such a definition, limitations are not to be
`
`read from the specification into the claims. In re Van Geuns, 988 F.2d 1181, 1184
`
`(Fed. Cir. 1993).
`
`
`
`2.
`
`Claim Terms
`
`For purposes of our decision to institute inter partes review, we set forth
`
`initial claim constructions for several disputed claim terms. We now construe
`
`those terms under the broadest reasonable interpretation standard for this final
`
`written decision. Nevertheless, to the extent that the parties do not dispute our
`
`constructions of claim terms or have indicated that the terms need not be construed
`
`expressly to support their arguments, we adopt the constructions set forth in the
`
`decision to institute.
`
` 8
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`

`

`Case IPR2013-00106
`Patent 6,526,808 B1
`
`
`a. Flammable Fluid
`
`Independent claim 9 recites the step of “delivering a flammable fluid to said
`
`heating element within the closed smoke producing chamber” (emphasis added).
`
`The Specification does not define, or even recite, the term “flammable fluid.”
`
`Instead, the ’808 patent generally describes vaporizing an oil, such as a non-toxic
`
`oil, in a closed smoke producing chamber to produce smoke. Ex. 1001, col. 3, ll.
`
`25-27. A pertinent definition of the word “flammable” is “easily set on fire;
`
`combustible.” RANDOM HOUSE WEBSTER’S COLLEGE DICTIONARY 497 (2nd
`
`Random House ed. 1999) (Ex. 3001); see also MCGRAW-HILL DICTIONARY OF
`
`SCIENTIFIC AND TECHNICAL TERMS 727 (4th ed. 1988) (Ex. 3002) (“[o]f material,
`
`capable of supporting combustion”). Further, a pertinent definition of the word
`
`“combustible” is “capable of catching fire and burning.” RANDOM HOUSE
`
`WEBSTER’S COLLEGE DICTIONARY at 263 (emphasis added) (Ex. 3001). Similarly,
`
`a pertinent definition of the word “fluid” is “a substance, as a liquid or gas, that is
`
`capable of flowing and that changes shape at a steady shape when acted upon by a
`
`force.” Id. at 504.
`
`For purposes of this decision, we again conclude that the broadest
`
`reasonable interpretation of the term “flammable fluid” is a fluid, including a liquid
`
`or gas (e.g., an oil), capable of catching fire and burning. Both parties accept this
`
`construction. See Tr. 11:19-12:12 (Counsel for Patent Owner discussing the
`
`difference between flammable and nonflammable fluids); 49:7-11 (“Yeah. I think
`
`[Petitioner] was right there. Everything’s flammable.”).
`
` 9
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`

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`Case IPR2013-00106
`Patent 6,526,808 B1
`
`
`b. Locating
`
`Independent claim 9 recites the step of “locating a heating element within a
`
`closed smoke producing chamber.” (emphasis added). For purposes of this
`
`decision, we again conclude that the broadest reasonable interpretation of the term
`
`“locating” is to establish an element in a position, situation, or locality. Dec. 11-12
`
`(construing “locating”). Neither party challenges this construction. See Tr. 33:22-
`
`34:2 (Petitioner stating that “[l]ocating is to establish an element in a position
`
`situation or locality.”)
`
`c. Closed
`
`Independent claim 9 recites the step of “delivering a flammable fluid to said
`
`heating element within the closed smoke producing chamber” and “connecting the
`
`smoke outlet of said closed smoke producing chamber to the closed system
`
`undergoing testing.” (emphases added). For purposes of this decision and
`
`consistent with the Specification, we again conclude that the broadest reasonable
`
`interpretation of the term “closed” is an adjective describing a chamber or other
`
`container the entrances, apertures, or gaps of which have been stopped or
`
`obstructed, e.g., sealed. Again, neither party challenges this construction. See Tr.
`
`35:10-24 (Petitioner arguing that, “[w]hen you take the gas cap off, it is not a
`
`closed system.”); cf. Ex. 2018 ¶ 98 (describing tubular member d of Pauley as open
`
`on both ends).
`
`d. Smoke
`
`Independent claim 9 recites the step of “energizing said heating element for
`
`vaporizing into smoke within the closed smoke producing chamber the flammable
`
`fluid that is delivered thereto” (emphases added). Petitioner agrees with the
`
`
`
`10
`
`

`

`Case IPR2013-00106
`Patent 6,526,808 B1
`
`interpretation of the term “smoke,” as set forth in our decision to institute — “a
`
`vapor or mist produced by blowing a flammable liquid against a heating
`
`element”— and argues that it is consistent with the use of that term in the
`
`challenged and the unchallenged claims (claims 1-8), as well as in the
`
`Specification. Tr. 6:17-25. Patent Owner argues that a broader interpretation of
`
`“smoke” is appropriate, and, in particular, an interpretation that is not limited to the
`
`manner in which the smoke is produced. Id. at 58:2-9.
`
`For purposes of the decision, we agree with Patent Owner. See RANDOM
`
`HOUSE WEBSTER’S COLLEGE DICTIONARY at 1237 (Ex. 3001) (defining “smoke” as
`
`the visible vapor and gases given off by a burning substance, esp. the mixture of
`
`gases and suspended carbon particles resulting from the combustion of wood or
`
`other organic matter . . . something resembling this, as a vapor or mist.”); cf. Ex.
`
`1011, 21 (defining “Fog” and “Mist”). But see Ex. 1011, 22 (“Smoke: small, solid
`
`particles dispersed in air that reduce visibility and reflect light.”). We interpret the
`
`term “smoke” broadly as visible vapor or mist, e.g, particles or droplets suspended
`
`in the atmosphere, or gases. Nevertheless, we note that, within the context of
`
`challenged claims 9 and 10, “smoke” is produced by “delivering a flammable fluid
`
`to said heating element,” i.e., blowing a flammable liquid against a heating
`
`element. Ex. 1001, col. 2, ll. 8-13, col. 4, ll. 40-45.
`
`e. Inert Environment
`
`Independent claim 9 recites the steps of “creating an inert environment
`
`within said chamber so as to prevent ignition and thereby avoid the possibility of
`
`an explosion when said flammable fluid is vaporized into smoke by said heating
`
`element” and “creating an inert environment within the closed system to which the
`
`
`
`11
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`

`

`Case IPR2013-00106
`Patent 6,526,808 B1
`
`smoke is carried, said inert environment with the closed system preventing ignition
`
`within the closed system during the testing thereof” (emphases added). The parties
`
`do not dispute the construction of the term “inert environment” adopted in the
`
`decision to institute. See Dec. 13-14. Therefore, we again interpret the term “inert
`
`environment” as an environment formed within the closed smoke producing
`
`chamber and comprising a non-combustible gas, such as carbon dioxide or
`
`nitrogen, in which a vapor or mist of flammable fluid is suspended, in such a
`
`manner that the flammable fluid cannot ignite or explode.
`
`
`
`III. ANALYSIS
`
`For the reasons described below, we determine that Petitioner fails to
`
`demonstrate by a preponderance of the evidence that each of claims 9 and 10 is
`
`unpatentable as rendered obvious over Gilliam and Stoyle or over Gilliam, Pauley,
`
`and the 1999 Website. Moreover, we are not persuaded by Patent Owner that
`
`Petitioner is barred from pursuing this case under the equitable doctrine of assignor
`
`estoppel.
`
`A. Assignor Estoppel
`
`Patent Owner contends that Kenneth Alan Pieroni, a named inventor and
`
`assignor of the ’808 patent, is the founder and a current officer of Petitioner. PO
`
`Resp. 52; Prelim. Resp. 3-4. Patent Owner further contends that Mr. Pieroni is in
`
`privity with Petitioner. PO Resp. 53; Prelim. Resp. 2-4. Therefore, Patent Owner
`
`contends that Petitioner should be barred from pursuing an inter partes review of
`
`the ’808 patent under the equitable doctrine of assignor estoppel. PO Resp. 53-54;
`
`Prelim Resp. 4-6.
`
`
`
`12
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`

`

`Case IPR2013-00106
`Patent 6,526,808 B1
`
`
`In response to Patent Owner’s motion for additional discovery on the issue
`
`of assignor estoppel, and after consideration of our statutory mandate, the guidance
`
`provided by the U.S. Supreme Court and the U.S. Court of Appeals for the Federal
`
`Circuit, relevant decisions by U.S. district courts, and the Board’s rules, we
`
`concluded that the equitable defense of assignor estoppel is not available in an
`
`inter partes review. Dec. Mot. Add. Disc. 4. Patent Owner argued against this
`
`conclusion and our denial of the motion for additional discovery, in a request for
`
`rehearing on our denial of its motion. PO Req. Reh’g (Paper 32). We were
`
`unpersuaded by Patent Owner’s arguments. See Dec. on Req. Reh’g (Paper 40) 5.
`
`After consideration of Patent Owner’s arguments and supporting evidence
`
`presented in its response to the petition (PO Resp. 51-60), we remain unpersuaded.
`
`See Order Trial Hearing 2.
`
`B. Obviousness Analysis
`
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`
`between the claimed subject matter and the prior art are such that the subject
`
`matter as a whole would have been obvious at the time the invention was made to a
`
`person having ordinary skill in the art to which the subject matter pertains. KSR
`
`Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is
`
`resolved on the basis of underlying factual determinations, including: (1) the scope
`
`and content of the prior art; (2) any differences between the claimed subject matter
`
`and the prior art; (3) the level of skill in the art; and (4) where in evidence, so-
`
`called secondary considerations. Graham v. John Deere Co. of Kansas City, 383
`
`U.S. 1, 17-18 (1966).
`
`
`
`13
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`

`Case IPR2013-00106
`Patent 6,526,808 B1
`
`
`1.
`
`The Level of Ordinary Skill in the Art
`
`Because the determination of the level of ordinary skill in the art is an
`
`applicable Graham factor to both combinations of the prior art here under review,
`
`we begin our analysis with that determination. Patent Owner opposes the proposed
`
`combinations of the applied references and argues that Petitioner fails to establish
`
`the level of ordinary skill in the art in support of the combination of the teachings
`
`of the applied references. PO Resp. 3-5.
`
`Patent Owner argues that Petitioner fails to offer testimony or other evidence
`
`to establish the level of ordinary skill in the relevant art. Id. at 4. Nevertheless,
`
`Petitioner asserts, and Patent Owner acknowledges, that “the level of skill [in the
`
`art might] be gleaned from the prior art itself.” Id. (citing Litton Indust. Prods.,
`
`Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163-164 (Fed. Cir. 1985)); Tr. 14; see
`
`also Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (finding that the
`
`Board was not required to set forth express findings as to level of skill in art and
`
`quoting Litton Industrial Products, Inc., 755 F.2d at 163). Patent Owner had its
`
`first opportunity to submit testimony regarding the skill level of a person of
`
`ordinary skill in the relevant art, namely Dr. Checkel’s declaration (Ex. 2018), in
`
`its response to the petition. See 37 C.F.R. § 42.107(c) (“The preliminary response
`
`shall not present new testimony evidence beyond that already of record, except as
`
`authorized by the Board.”).
`
`Patent Owner asserts that “[t]he educational experience of the ordinary
`
`artisan in this field at the time would range from a high school diploma to one or
`
`more years of vocational, technical, or college training in industrial arts,
`
`mechanical engineering, automotive technology, or a related field.” PO Resp. 29.
`
`
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`14
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`Case IPR2013-00106
`Patent 6,526,808 B1
`
`Regarding professional experience, Dr. Checkel contends that, at the time of the
`
`filing of the ’808 patent, because not many technicians
`
`focused solely on evaluating and developing diagnostic systems for
`the EVAP systems, the person of ordinary skill would have had
`experience developing diagnostic and repair tools for engine systems
`in general. . . . The professional experience possessed by the ordinary
`artisan would thus have included experience in engine diagnosis and
`repair, including at least some experience with EVAP systems and
`other emission systems. . . . The ordinary artisan would also have had
`a limited understanding of the chemistry of combustion and the
`characteristics of hydrocarbon based fuel.
`According to Dr. Checkel, for the person of ordinary skill who
`held a high school diploma, the amount of relevant professional
`experience would be seven to ten years, while those with more
`educational experience would require correspondingly less years of
`professional experience.
`
`Id. (citations omitted).
`
`
`
`Petitioner challenges Dr. Checkel’s definition of a person of ordinary skill in
`
`the relevant art. Petitioner argues that Dr. Checkel is not a person of ordinary skill
`
`in the relevant art (Pet. Reply, 7-8), and that Dr. Checkel’s definition of a person of
`
`ordinary skill in the art should be excluded as evidence due to Dr. Checkel’s lack
`
`of qualifications as an expert witness on this topic. Pet. Mot. Excl. 4.3 In
`
`particular, Petitioner argues that Dr. Checkel was educated and has lived and
`
`worked in Canada for most of his life, and does not know what a person of
`
`ordinary skill in the relevant art in the United States would know of smoke
`
`
`
`3 Although we address Petitioner’s motion to exclude in its entirety below, because
`Petitioner’s arguments regarding Dr. Checkel’s testimony concerning the definition
`of a person of ordinary skill in the art are relevant to our application of the Graham
`factors, we discuss those arguments here.
`
`
`15
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`Case IPR2013-00106
`Patent 6,526,808 B1
`
`machines, such as those described in Gilliam, or of U.S. activities with respect to
`
`evaporative emission control (“EVAP”) systems or testing. Id. at 4-6; see Pet.
`
`Reply Mot. Excl. 1. Thus, Petitioner contends that a person of ordinary skill in the
`
`relevant art must have experience, education, and knowledge specific to the United
`
`States. See Tr. 28:4-13.
`
`Petitioner, however, does not cite precedent to support its position, and,
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`during the oral hearing, Petitioner acknowledged that it was unaware of any
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`supporting case law. Id. at 28:14-17. Moreover, we note that Dr. Checkel has
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`“worked on automotive research projects with all of the ‘Big Three’ North
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`American manufacturers as well as various suppliers to the industry.” Ex. 2018
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`¶ 3. We are not persuaded on this record and with respect to this art that Petitioner
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`has shown that a relevant distinction may be drawn between persons of ordinary
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`skill in the United States and in Canada.
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`
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`Although Petitioner argues against Patent Owner’s expert’s definition of a
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`person of ordinary skill in the art, Petitioner provides no persuasive alternative.
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`During the oral hearing, Petitioner was asked to identify where in the record there
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`was support for a person of ordinary skill in the art combining the applied prior art
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`in the manner proposed in the petition, to which Petitioner responded:
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`MR. NEWBOLES: In the record? Two, the prior art itself, as this
`Board held and the Board instituting the IPR, is that if the prior art
`reflects a level of skill in the art, then that art can be -- the level of
`skill can be readily ascertained.
`
`Tr. 14; see Dec. 17-18. Nevertheless, we find Petitioner’s argument, that the
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`definition of a person of ordinary skill in the art must be specific to the United
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`States, inconsistent with Petitioner’s argument that the level of ordinary skill in the
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`art can be ascertained from prior art from the United States, Great Britain, and
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`Canada.4
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`Hence, we adopt Dr. Checkel’s definition of a person of ordinary skill in the
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`relevant art for purposes of evaluating the teachings of the prior art references
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`relied upon by Petitioner. Based on Dr. Checkel’s unrebutted testimony, a person
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`of ordinary skill in the art relevant to motor vehicle engine diagnosis and repair,
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`including EVAP system leak detection methods, at the time of the filing of the
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`’808 patent, possessed a range of educational and professional experience, with
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`more education demanding less professional experience. PO Resp. 28-29 (citing
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`Ex. 2018 ¶¶ 111–113).
`
`
`
`2.
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`
`
`The Scope and Content of the Prior Art and Any Differences Between
`the Claimed Subject Matter and the Prior Art
`a.
`Gilliam and Stoyle
`
`
`Petitioner argues that independent claim 9 and dependent claim 10 are
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`unpatentable under 35 U.S.C. § 103(a) over Gilliam and Stoyle. Pet. 34-46.
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`Specifically, Petitioner argues that Gilliam teaches all of the limitations of claims 9
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`and 10 of the ’808 patent, “except [that Gilliam uses] air instead of inert gas to
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`generate smoke and carry that smoke to the systems being tested.” Pet. 21. In
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`particular, Petitioner argues that Gilliam teaches the use of such smoke to test for
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`leaks in various vacuum systems of an internal combustion engine, including an
`
`
`4 Gilliam is a patent issued by the U.S. Patent and Trademark Office to a U.S.
`resident, and Pauley and Stoyle are patents issued by the British Patent Office to
`British companies. We further note that Corona Integrated Technologies, Inc., the
`company that offered the smoke generators described in the 1999 Website
`reference, is located in Canada. Ex. 1013, 1 (identifying link to
`www.smokemachines.com).
`
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`EVAP system. Ex. 1005, Abstract (“By visibly observing smoke exiting from any
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`of the hoses, flanges and gaskets contained within the vacuum system [in an
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`internal combustion engine], leaks therein may be readily located.”); see also Tr.
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`25:19-27:3 (citing Ex. 2016, 36). Thus, Petitioner argues that, “but for the use of
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`an inert gas, the Gilliam Patent discloses the claimed invention.” Pet. 24.
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`Petitioner then relies on Stoyle as disclosing the use of an inert gas to generate
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`smoke as a substitute for the air used in Gilliam’s smoke-producing chamber. Id.
`
`at 28.
`
`
`
`i.
`
`Teachings of Gilliam
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`Figure 3 of Gilliam is reproduced below.
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`
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` Figure 3 depicts a front, cut-away view of a smoke generating apparatus for
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`use in detecting leaks. Ex. 1005, col. 4, l. 67-col. 5, l. 4. Referring to Figure 3,
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`Gilliam describes smoke generating assembly 35 that comprises air pump 15,
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`which introduces pressurized air into chamber 30. Id. at col. 6, ll. 20-41. A
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`smoke-producing fluid is introduced into chamber 30 via filler port 6, and air
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`generated by pump 15 circulates the smoke-producing fluid within chamber 30.
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`Id. at col. 6, ll. 22-23, 58-60. Preferably, the smoke-producing fluid is non-
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`flammable and non-toxic. Id. at col. 5, ll. 67-68. When the smoke-producing fluid
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`comes in contact with ceramic heating element 11, the smoke-producing fluid
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`vaporizes within chamber 30. Id. at col. 6, ll. 34-36. Smoke generated within
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`chamber 30 then is conveyed via conduit 22 to a particular automotive system for
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`leak testing. Id. at col. 8, ll. 8-13.
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`Smoke from assembly 35 may be “sealably communicated” to a vacuum
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`system in an internal combustion engine to visibly identify “leaks of any and all
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`sizes, regardless of their location” in an internal combustion engine and “in
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`virtually any closed vacuum system in the automobile.” Id. at col. 3, ll. 7-11, 15-
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`19, 48-52 (emphasis added). Referring to Figure 5 (not reproduced here),
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`assembly 35 further may comprise “spark-arrestor 3 which is disposed at the
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`remote end of conduit 22 as an interface with the vehicles engine.” Id. at col. 7,
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`ll. 51-53. “[S]park-arrestor 3 prevents sparks or even flames from entering a
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`vehicle’s engine, thereby causing an explosion. Flames could be generated, for
`
`example, if a flammable fluid mixture was inadvertently created in chamber [30].”
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`Id. at col. 7, ll. 55-59 (emphasis added). Further, although Gilliam teaches that it is
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`preferred to use a non-flammable, non-toxic fluid, Gilliam teaches that a hydraulic
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`fluid with a flash point of 425°F may be used as the smoke-producing fluid. Id. at
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`col. 5, l. 68-col. 6, l. 2.
`
`Referring again to Figure 1, Gilliam further teaches that bimetallic strip 10
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`may interrupt the heating step when the temperature in chamber 30 reaches
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`approximately 250ºF and preferably maintains the temperature of the smoke-
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`producing fluid in a range of 240°F to 250ºF. Id. at col. 7, ll. 14-20; see also id. at
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`col. 7, ll. 1-10 (thermistor 8 indicates when the temperature in chamber 30 exceeds
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`220°F).
`
`Petitioner argues that Gilliam cautions against the potential risk of explosion
`
`if flammable smoke, generated within chamber 30 of assembly 35, is introduced
`
`into vacuum systems of an automobile for leak-testing, such as in an EVAP system
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`including a fuel tank. See Pet. 24, 45. Petitioner acknowledges, however, that
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`Gilliam does not disclose the use of inert gas that will create an “inert
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`environment” and “prevent ignition” within the “closed smoke-producing
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`chamber” and within the closed EVAP system “during the testing thereof,” as
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`claimed in claim 9 of the ’808 patent. Pet. 24-25; see also Ex. 1001 (Reexam.
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`Cert. No. US 6,526,808 C2), col. 1, l. 32, col. 2, ll. 1-7, col. 2, ll. 15-19 (emphasis
`
`added). These limitations were added by amendment during the first
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`reexamination of the ’808 patent to overcome the Examiner’s rejection of the
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`claims over cited prior art that included Gilliam. Id.; Ex. 1003, 15 (May 26, 2011,
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`Statement of Reasons for Patentability), 32-33 and 46-47 (May 10, 2011, Response
`
`to Final Office Action), 94-95 (Mar. 10, 2011, Final Office Action).
`
`We note that Gilliam includes at least three ways to prevent combustion of a
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`flammable, smoke producing fluid: the substantial temperature differential between
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`the heated fluid and its flash point, a bimetallic temperature regulation strip, and a