Trials@uspto.gov Paper 44
`571-272-7822
` Entered: May 20, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
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`
`
`
`SATA GmbH & Co. KG
`Petitioner
`v.
`ANEST IWATA CORPORATION
`Patent Owner
`_______________
`
`Case IPR2013-00111
`Patent 6,494,387 B1
`_______________
`
`
`Before JOSIAH C. COCKS, DEBORAH KATZ, and JENNIFER S. BISK,
`Administrative Patent Judges.
`
`
`KATZ, Administrative Patent Judge.
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`
`
`FINAL WRITTEN DECISION
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`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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`

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`Case IPR2013-00111
`Patent 6,494,387
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`I. INTRODUCTION
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`A. Background
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`SATA GmbH & Co. KG (“SATA” or “Petitioner”) filed a Petition to
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`institute an inter partes review of all claims, claims 1-22, of U.S. Patent No.
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`6,464,387 B1 (“the ’387 patent”) (Ex. 1001) pursuant to 35 U.S.C. §§ 311-
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`319. Paper 3 (“Pet.”). Anest Iwata Corporation (“Iwata” or “Patent
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`Owner”) timely filed a Preliminary Response. Paper 11 (“Prelim. Resp.”).
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`We granted the petition as to a subset of the proposed grounds of
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`unpatentability, determining that there was a reasonable likelihood SATA
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`would prevail in showing claims 1-14 of the ’387 patent are unpatentable
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`under 35 U.S.C. § 102(b) over Japanese Published Patent Application No.
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`JP 08-196-950 (“JP ’950”) (Ex. 1002; English Translation Ex. 1020). Paper
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`13 (“Dec.”).
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`After institution, Iwata did not file a Patent Owner’s Response under
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`37 C.F.R. § 42.120, but instead filed a Motion to Amend under 37 C.F.R.
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`§ 42.121. Paper 21 (“Mot. to Amend”); see Paper 18. In its Motion to
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`Amend, Iwata requests cancellation of claims 1-14 and proposes new claims
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`23-32. (Mot. to Amend 1-4.) SATA filed an opposition to Iwata’s Motion
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`to Amend (Paper 23), which was followed by Iwata’s Reply (Paper 25,
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`“Reply”).
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`In addition to its Motion to Amend, Patent Owner Iwata filed a
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`Motion to Exclude Evidence (Paper 26, “Mot. to Exclude”). SATA opposed
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`the Motion to Exclude (Paper 31) and Iwata replied (Paper 35).
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`Oral hearing was held December 16, 2013. Paper 43 (“Transcript”).
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`The Board has jurisdiction under 35 U.S.C. § 6(c). This final written
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`decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
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`Case IPR2013-00111
`Patent 6,494,387
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`For the reasons that follow, SATA has shown by a preponderance of
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`the evidence that claims 1-14 are unpatentable. In addition, as discussed
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`below, we deny the portion of the Motion requesting entry of substitute
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`claims 23-32.
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`B. Related Proceedings
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`Iwata represents that there are no other judicial or administrative
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`matters that would affect, or be affected by, this proceeding. Mandatory
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`Notices, Paper 9.
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`C. The ’387 Patent
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`The ’387 patent provides for a low-pressure atomizing spray gun with
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`a particular arrangement of air grooves and slits in the paint nozzle that
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`reportedly allows for increased atomization of the paint. Ex. 1001 (’387
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`patent), Abstract. Specifically, the claims of the ’387 patent and Iwata’s
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`amended claims recite air grooves that begin, or extend from, upstream of
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`the end of an annular slit in the tip portion of the nozzle. Figure 4A of the
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`patent demonstrates this arrangement and is reproduced below.
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`Case IPR2013-00111
`Patent 6,494,387
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`Figure 4A depicts a sectional view of the front end of the paint nozzle tip
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`with an air groove (1a) that starts at a point (102) inside the inlet end (201)
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`of an annular slit (4). Id. at 6:40-54.
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`II. ANALYSIS
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`A. ’387 Patent Claims 1-14
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`Previously, we considered the arguments Iwata presented for the
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`patentability of claims 1-14 in its Preliminary Response Pursuant to 37
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`C.F.R. § 42.107(a). Paper 11. When we considered these arguments against
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`those SATA presented in the Petition for the unpatentability of claims 1-14
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`under 35 U.S.C. § 102(b) over JP ’950, we determined it was reasonably
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`likely that SATA would prevail. Dec. 5-13. Iwata has not directed us to
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`further argument or evidence to persuade us that SATA fails to demonstrate
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`that claims 1-14 are unpatentable.
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`To the extent that Iwata’s argument in its Motion to Amend that our
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`Decision to Institute review was made in error, see Mot. to Amend 5, is an
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`argument for the patentability of claims 1-14, we are not persuaded. Iwata
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`argues that our Decision fails to indicate that the prior art teaches air grooves
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`extending from at or upstream of the inlet end of the annular slit, as required
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`in the originally claimed spray gun. Id. Because the testimony of Iwata’s
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`own witness, Mr. Robert R. Lacovara, was not definitive that JP ’950 fails to
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`teach the claimed positioning of the air grooves, as discussed in detail
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`below, the preponderance of the evidence, including the findings of fact and
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`reasons we set forth in our Decision to Institute, indicate that the original
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`claims are unpatentable.
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`Accordingly, based on the record before us, we conclude that a
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`preponderance of the evidence demonstrates that the original claims of the
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`’387 patent are anticipated by JP ’950 and are unpatentable.1
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`B. Iwata’s Motion to Amend
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`Because we determine that claims 1-14 are unpatentable we turn to
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`Iwata’s contingent request to enter proposed, amended claims. As the
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`moving party, Iwata bears the burden of establishing that it is entitled to the
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`relief requested in its Motion to Amend. 37 C.F.R. § 42.20(c). A proposed
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`amendment is not entered automatically and is not subject to an examination
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`by the Office. Instead, the patent owner takes on the burden of presenting
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`evidence that the proposed claims comply with all sections of the patent
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`statutes. During an inter partes review, we enter proposed amended claims
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`only upon a showing that the amended claims are patentable. Idle Free Sys.
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`Inc. v. Bergstrom, Inc., IPR2012-00027, slip. op. at 33 (PTAB Jan. 7, 2014)
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`1 Iwata’s Motion to Amend indicates that it requests cancellation of
`claims 1-14. Mot. to Amend 1. We consider this request contingent on a
`determination that claims 1-14 are unpatentable. That consideration is
`consistent with a discussion at oral argument, when Iwata was questioned
`about whether it intended to cancel claims for which it had not proposed
`substitute, amended claims. Transcript 18. In response, counsel referred to
`the contingencies of patentability of original claims in light of a motion to
`amend. Transcript at 18. (“MR. KELBER: If you -- my understanding of
`the procedure is if you deny the motion to amend or if you do not grant it,
`those claims remain part of the 378 patent and are invalidated by your
`decision. . . . If you grant, then it’s just the Claims 23-32. And – and yes,
`the claims that were not advanced and – which have not counterpart would
`then cease to have continuing validity.”) Because Iwata appears to have
`included contingencies in their strategy, we consider Iwata’s request to
`cancel claims 1-14 to be contingent on a determination that they are
`unpatentable.
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`(Paper 66). This burden may not be met by merely showing that the
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`proposed claims are distinguished over the prior art references applied to the
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`original patent claims. Instead, because there is no examination of the
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`proposed claims, the patent owner must show that the subject matter recited
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`is not taught or suggested by the prior art in general for us to determine if
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`they comply with 35 U.S.C. §§ 102 and 103 and the rest of the patent
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`statutes. Id.
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`Iwata argues that the spray gun recited in the proposed claims is not
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`anticipated by JP ’950. Mot. to Amend 6-12. Although it is Iwata’s burden
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`to show patentability over the prior art in general, Iwata does not assert, or
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`direct us to evidence, that the claimed spray gun was novel over other spray
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`guns known in the art. Instead, Iwata focuses only on JP ’950 and only on
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`specific portions of JP ’950. Iwata does not represent to the Board or direct
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`us to evidence, such as the testimony of one of at least ordinary skill in the
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`art, that it does not know of any other anticipatory art. Iwata does not direct
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`us to evidence that the specification of JP ’950 as a whole fails to teach the
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`spray guns of the proposed claims. Accordingly, Iwata has not met the
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`burden it undertook by putting forth proposed amended claims. For that
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`reason, the Motion to Amend is denied to the extent it seeks entry of
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`substitute claims 23-32.
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`In any event, even if Iwata’s burden was to show patentability over
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`only JP ’950, we would not be persuaded that the proposed claims are
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`patentable because Iwata addresses only whether JP ’950 anticipates the
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`newly claimed spray guns, not whether ordinarily skilled artisans would
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`have considered JP ’950 to render the newly claimed spray guns obvious.
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`According to Iwata, there was no reason for it to address obviousness
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`because we “declined to consider issues of obviousness in this proceeding
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`due to the lack of any timely and credible assertion of obviousness (see
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`Paper 13, page 12).” Mot. to Amend 12. We disagree with Iwata’s
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`characterization of our decision to institute inter partes review. Rather than
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`declining to consider issues of obviousness in the entire proceeding, we
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`stated that “we decline to institute an inter partes review on the basis that the
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`challenged claims are obvious over JP ’950.” Dec. 12 (emphasis added).
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`Iwata now proposes new claims. Even if these claims are narrower than the
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`claims on which we declined to institute review, they are not automatically
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`patentable. Instead, Iwata must show that the proposed claims are patentable
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`if we are to grant its Motion to Amend.
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`When considering a motion to amend, we look for evidence in support
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`of patentability. This evidence must be significant. A panel of the Board
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`has determined previously, and we agree, that “[a] mere conclusory
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`statement by counsel, in the motion to amend, to the effect that one or more
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`added features are not described in any prior art, and would not have been
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`suggested or rendered obvious by prior art, is on its face inadequate.” Idle
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`Free, Paper 26, at 8. For example, to determine that a claim is patentable
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`under 35 U.S.C. § 103, we need evidence of what an ordinarily skilled
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`artisan would have understood the prior art to have or have not suggested.
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`Iwata proposes to add new claims 23-32 to the ’387 patent. Mot. to
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`Amend 1-4. Claim 23 is proposed as a substitute for claim 1 of the
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`’387 patent. Proposed claim 23, reproduced below with underlining to
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`indicate additions and strikethrough to indicate deletions from claim 1 of the
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`issued ’387 patent, recites:
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`A low-pressure atomizing spray gun comprising:
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`an air spray gun body;
`a paint nozzle attached to said spray gun body, said paint
`nozzle having a delivery port and a tip portion with a discharge
`end;
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`an air cap attached to said spray gun body to cover said
`paint nozzle, said air cap having an inner surface defining a
`central opening within which is positioned said tip portion of
`said paint nozzle such that an annular slit having an inlet end is
`defined between said inner surface of said air cap and said tip
`portion of said paint nozzle; and
`air grooves on said tip portion of said paint nozzle, said
`air grooves converging toward a center of said delivery port and
`extending from upstream at or upstream of said inlet end of said
`annular slit toward said discharge end of said tip portion of said
`nozzle, and said air grooves each having a cross-sectional area
`that progressively increases toward said delivery port of said
`paint nozzle, with a bottom of each of said air grooves
`extending from an outer periphery of said paint nozzle to an
`inner periphery of said paint nozzle,
`wherein an intersection of said bottom of said air grooves
`with said inner periphery of said paint nozzle approximately
`coincides with a front end of said central opening in said air
`cap,
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`such that said paint nozzle and air cap cooperate with
`each other to mix, in the atmosphere, compressed air and paint
`just delivered from said paint nozzle to atomize the paint.
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`Id. at 1-2. Claims 24-322 are proposed as substitutions for claims 2-6, 10,
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`and 12-14 of the ’387 patent, and differ from those claims only in that they
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`recite dependency from the newly proposed claims instead of the claims of
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`the ’387 patent as issued. Id. at 3-4.
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`Initially, Iwata argued that JP ’950 is “insufficiently specific” to teach
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`the added claim limitation regarding the intersection of the bottom of the air
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`2 Iwata does not propose substitutions for claims 7, 8, 9, and 11. Mot. to
`Amend 3. We note that proposed claim 23 includes some of the limitations
`present in claims 7 and 11.
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`grooves with the inner periphery of the paint nozzle. Mot. to Amend 11.
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`But on cross-examination, Iwata’s witness, Mr. Robert R. Lacovara, testified
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`that this feature can be identified in the figures of JP ’950. Ex. 2009
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`(Deposition of Robert R. Lacovara, Sept. 13, 2013), 49:10-50:6; see also Ex.
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`2008. At oral argument, counsel for Iwata acknowledged that the added
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`limitation regarding the intersection of the bottom of the air grooves and the
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`inner periphery of the paint nozzle does not distinguish the proposed
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`amended claims over the prior art. Transcript at 7 (“Mr. Kelber: So, there
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`are two amendments to this claim. One is to change at or upstream, to
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`simply upstream. . . . The only other amendment made, and we’re not
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`advancing this today as a basis independently for patentability, is to adopt
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`the language of original Claim 5.”). Accordingly, we do not consider
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`whether Iwata’s proposed amended claims are patentable due to the added
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`limitation regarding the intersection of the bottom of the air grooves with the
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`inner periphery of the paint nozzle.
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`To argue for patentability of the proposed claims in general, Iwata
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`states that “there is no basis in the common knowledge of those skilled in the
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`art, the JP ’950 reference, or the prior art generally to conclude that the
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`above-discussed distinguishing claim features are obvious.” Mot. to Amend
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`13. Iwata does not direct us to evidence in support of this statement. Iwata
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`states further that “the particular spatial arrangement established by the
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`above-discussed claim limitations does result in unobvious advantages in
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`operation,” but cites as support only the specification of the application that
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`became the ’387 patent. Id.
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`We are not persuaded by either of these statements that the spray guns
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`of the proposed claims are patentable under 35 U.S.C. § 103. The portions
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`of the specification that Iwata cites discuss air grooves depicted in the
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`figures, indicating that the air grooves allow for an increased area of gas-
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`liquid contact and “contribute to paint atomization.” See Ex. 1022, 30:10-
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`19, 32:15-18. Without more explanation and evidence to show how one of
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`ordinary skill in the art would have understood these effects, we are not
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`persuaded that these statements indicate unobvious advantages. We need
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`some evidence, such as testimonial evidence, of what one of ordinary skill in
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`the art would have known or understood in order to make a determination of
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`nonobviousness. Iwata’s unsupported statement that there is no basis in the
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`knowledge of those skilled in the art on which to conclude that the claimed
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`spray gun would have been obvious is merely attorney argument. Attorney
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`argument is not evidence of the knowledge or understanding of those in the
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`art. See Meitzner v. Mindick, 549 F.2d 775, 782 (CCPA 1977) (“Argument
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`of counsel cannot take the place of evidence lacking in the record.”).
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`Iwata argues that the limitation on the air groove extending from
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`upstream of the inlet end of the annular slit is a “significant advancement of
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`the art.” Reply 6. Iwata relies on the testimony of Mr. Ewald Schmon,
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`SATA’s witness, to argue that the performance of the spray gun is changed
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`significantly with this positioning. Id. (citing Ex. 2022, 59:9-22, 61:4-62:9).
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`Iwata also relies on the testimony of Dr. Nelson K. Akafuah, another SATA
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`witness, to argue that the positioning of the grooves upstream of the annular
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`slit is a “key” performance parameter that significantly improves transfer
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`efficiency of the paint spray gun and is worth “a lot of money.” Id. (citing
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`Ex. 2024, 45:15-46:19). This evidence does not indicate that the proposed
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`claims are unobvious under 35 U.S.C. § 103. Mr. Schmon’s and Dr.
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`Akafuah’s testimony does not provide any information about how the
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`ordinarily skilled artisan would have viewed the teachings of the prior art in
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`relation to the claimed positioning. Would it have been within the skill of
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`the ordinary artisan to optimize the spray gun taught in JP ’950 with this
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`positioning, given what else the artisan would have known? Merely
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`knowing that the changes were significant or were valuable does not indicate
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`to us whether they would have been nonobvious to others in the art.
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`Accordingly, the portions of Mr. Schmon’s and Dr. Akafuah’s testimony to
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`which Iwata directs us do not persuade us that the proposed claims are
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`patentable under 35 U.S.C. § 103.
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`Furthermore, we are not persuaded by Iwata’s arguments that the
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`proposed claims are not anticipated by JP ’950. Iwata argues that the
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`portions of JP ’950 that SATA cites do not expressly teach that the starting
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`point of the grooves is upstream of the inlet end of the annular slits, Mot. to
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`Amend 7-8 (citing Ex. 1020 ¶¶ 0014, 0015), and in his declaration,
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`Mr. Lacovara, Iwata’s witness, testifies that JP ’950 does not indicate
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`whether the air grooves extend upstream of the inlet end of the annular slit,
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`Ex. 2002 ¶¶ 7-8. But during his redirect examination, Mr. Lacovara seems
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`to contradict this testimony. After some confusion about which document
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`he was being asked to review, Mr. Lacovara clearly referred to Figure 2 of
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`Exhibit 1020 (the English translation of JP ’950) and stated: “It does appear
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`that the grooves can extend past the – past the annulus. The illustration is
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`very difficult to decipher.” Ex. 2009, 58:22-59:2. Mr. Lacovara continued:
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`“[u]pon close – closer examination, it does appear to be shown. The line on
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`the drawing, as difficult to decipher as it is, does appear to extend past the
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`line on the air cap.” Id. at 59:5-8. Although Iwata argues that Mr. Lacovara
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`testified repeatedly that Figure 2 is insufficiently clear to teach the upstream
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`limitation, Reply 3 (citing Ex. 2009, 27:12-22, 47:8-22), when viewed in its
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`entirety, Mr. Lacovara’s testimony is not persuasive to demonstrate that
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`Iwata’s proposed claims are novel over the spray gun taught in JP ’950.
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`Thus, in addition to Iwata’s failure to demonstrate patentability of the
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`proposed claims under 35 U.S.C. § 103, we are not persuaded that they are
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`patentable under § 102.
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`C. Iwata’s Motion to Exclude
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`Iwata argues that SATA exhibits 1034-1069 should be excluded.
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`Mot. to Exclude 1. We do not reach Iwata’s arguments because we do not
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`rely on these exhibits to reach our decision. Iwata’s Motion to Exclude
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`Evidence is moot because, even without the exhibits Iwata contests, we deny
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`the relevant portion of Iwata’s Motion to Amend.
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`III. CONCLUSION
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`SATA has shown, by a preponderance of the evidence, that the
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`challenged claims are unpatentable under 35 U.S.C. § 102(b) over JP ’950.
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`Iwata has not shown that its proposed substitute claims 23-32 are
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`patentable over the prior art.
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`IV. ORDER
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`It is ORDERED that claims 1-14 of the ’387 patent are held
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`unpatentable;
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`FURTHER ORDERED that the portion of the Motion requesting
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`entry of substitute claims 23-32 is denied.
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`FURTHER ORDERED that Iwata’s Motion to Exclude Evidence is
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`dismissed; and
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`FURTHER ORDERED that because this is a final written decision,
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`parties to the proceeding seeking judicial review of the decision must
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`comply with the notice and service requirements of 37 C.F.R. § 90.2.
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`PETITIONER:
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`Martin Fleit
`mfleit@fggbb.com
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`Paul Bianco
`pbianco@fggbb.com
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`PATENT OWNER:
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`Andrew St. Clair
`astclair@wenderoth.com
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`Jeffrey Filipek
`JFilipek@wenderoth.com
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`Steven Kelber
`skelber@bw-iplaw.com
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`
`
`rvb
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`13
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