Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 51
`Entered: July 23, 2014
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ATHENA AUTOMATION LTD.,
`Petitioner,
`
`v.
`
`HUSKY INJECTION MOLDING SYSTEMS LTD.,
`Patent Owner.
`
`Case IPR2013-00167
`Patent 5,620,723
`
`
`
`
`
`
`
`
`
`Before JENNIFER S. BISK, MICHAEL J. FITZPATRICK, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`BISK, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 51
`Entered: July 23, 2014
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ATHENA AUTOMATION LTD.,
`Petitioner,
`
`v.
`
`HUSKY INJECTION MOLDING SYSTEMS LTD.,
`Patent Owner.
`
`Case IPR2013-00167
`Patent 5,620,723
`
`
`
`
`
`
`
`
`
`Before JENNIFER S. BISK, MICHAEL J. FITZPATRICK, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`BISK, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
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`IPR2013-00167
`Patent 5,620,723
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`I. INTRODUCTION
`A. Background
`Petitioner Athena Automation Ltd. filed a Petition (Paper 1, “Pet.”) to
`institute an inter partes review of claims 21-37 (“the challenged claims”) of
`U.S. Patent No. 5,620,723 (Ex. 1001, “the’723 patent”). 35 U.S.C.
`§§ 311-319. Patent Owner Husky Injection Molding Systems Ltd. waived
`the filing of a Preliminary Response. Paper 8. On July 30, 2013, the Board
`instituted trial (Paper 9, “Decision to Institute”), concluding that Petitioner
`had shown a reasonable likelihood of showing that the challenged claims
`were unpatentable based on the following grounds:
`References 1
`Basis
`Queré and Putkowski
`§ 103
`Queré, Putkowski, and Kushibe
`§ 103
`Arend and Putkowski
`§ 103
`Arend, Putkowski, and Kushibe
`§ 103
`Arend, Putkowski, and Queré
`§ 103
`Arend, Putkowski, Queré, and Kushibe
`§ 103
`Stüdli and Putkowski
`§ 103
`
`Stüdli, Putkowski, and Queré
`
`§ 103
`
`Claims challenged
`21-34
`30 and 33
`21-31 and 34-37
`30
`32
`33
`21, 27-31, and 34-
`37
`32 and 33
`
`After institution of trial, Patent Owner filed a Response. Paper 22
`(“PO Resp.”). Patent Owner also filed a Motion to Amend claims by
`submitting proposed new claims 38-54 for claims 21-37. Paper 24 (“Mot. to
`
`1 U.S. Patent No. 2,976,569 (Ex. 1002) (“Queré”); U.S. Patent No. 5,417,913
`(Ex. 1003) (“Arend”); U.S. Patent No. 2,711,561 (Ex. 1004) (“Stüdli”); U.S.
`Patent No. 3,677,682 (Ex. 1005) (“Putkowski”); U.S. Patent No. 4,874,309
`(Ex. 1006) (“Kushibe”).
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`Amend”). Petitioner filed a Reply to the Response (Paper 33, “Reply”) and
`an Opposition to Patent Owner’s Motion to Amend (Paper 34,“Opp. Mot. to
`Amend”). Patent Owner then filed a Reply in support of its Motion to
`Amend (Paper 40, “Reply Mot. to Amend”). Oral hearing was held April
`28, 2014, a transcript of which appears in the record. Record of Oral
`Hearing, Paper 50 (“Tr.”).
`The Board has jurisdiction under 35 U.S.C. § 6(c). This final written
`decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`Petitioner has shown, by a preponderance of evidence, that claims
`21-37 are unpatentable.
`Patent Owner’s Motion to Amend claims is denied.
`
`B. Related Proceedings
`The parties simultaneously are involved in two other inter partes
`reviews of patents claiming similar subject matter. IPR2013-00169 involves
`U.S. Patent No. 5,624,695 (“the ’695 patent”), and IPR2013-00290 involves
`U.S. Patent No. 7,670,536. The ’695 patent shares much of the specification
`of the ’723 patent. In a separate decision, we conclude that claims 1-17 of
`the ’695 patent are unpatentable as obvious over combinations of some of
`the same references raised in this proceeding: Queré, Arend, and Stüdli.
`IPR2013-00169, Paper 51. The Petition in IPR2013-00290 was filed several
`months after the other two Petitions and is currently scheduled for oral
`hearing on July 22, 2014.
`
`C. The ’723 Patent
`The ’723 patent generally relates to injection molding machines in
`which at least one stationary platen includes a first mold half and at least one
`platen that is moveable toward the stationary platen includes a second mold
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`half. Ex. 1001, Abstract. In particular, the patent describes a securing and
`clamping assembly for use with the tie bars extending between and
`connecting the stationary platen and the movable platen. Id. at 1:5-8.
`The Background section of the patent describes prior art tie bar
`gripping and clamping assemblies for use with injection molding machines.
`Id. at 1:9-21. The objective of the invention is to provide an improved
`injection molding machine in which the securing/clamping assembly (1) can
`be engaged and disengaged from the tie bar at each molding cycle,
`(2) provides the dual purpose of “securing with tie bars and clamping mold
`halves closed for injection molding,” and (3) is actuated via rotational
`movement. Id. at 3:5-28.
`Figure 1 of the ’723 patent, reproduced below, is a simplified
`overhead view of an injection molding machine.
`
`Figure 1 illustrates the top view of an injection molding machine that
`includes stationary platen 12, movable platens 14 and 16, injection unit 18,
`
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`hot runners 32 and 34 for directing melt to the molds halves, and tie bars 20
`and 21, for guiding the movable platens and securing/clamping assemblies
`22 and 23. Ex. 1001 4:11-13, 34-59.
`
`D. Illustrative Claims
`Patent Owner’s Response addresses only claim 33, which indirectly
`depends from claim 21. Claims 21 and 33 are illustrative, and are
`reproduced below:
`21. An injection molding machine, comprising:
`a stationary platen including at least one stationary mold half;
`a movable platen movable relative said stationary platen and
`having a mold half adapted to engage said stationary mold
`half to form a first mold;
`said first mold having a hot runner leading thereto;
`an injection unit for delivering melt to said hot runner of said first
`mold; and
`tie bars extending between and connecting said stationary platen
`and said movable platen;
`wherein at least one of said movable platen and said stationary
`platen includes means for securing said platen to at least one
`of said tie bars, wherein said means for securing includes
`engagement means for placing said means for securing into
`and out of locking engagement with said at least one tie bar
`such that when said engagement means is out of locking
`engagement with said at least one tie bar, said means for
`securing and said at least one tie bar are relatively movable,
`wherein said engagement means is rotatable into and out of
`engagement with said at least one tie bar, and wherein said
`at least one tie bar includes an engagable surface having
`protrusions for engagement by said engagement means.
`
`33. The injection molding machine according to claim 32,
`wherein said movable platen is adapted to be forced in a direction
`for achieving clamping with said stationary platen,
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`and wherein said movable platen has bores for receiving said
`means for securing, said means for conveying having an
`outer surface being configured to form cavities between said
`outer surface and one of said bores and being configured to
`have surfaces extending substantially transversely to said
`directions,
`wherein said cavities are for the introduction of pressurized fluid
`and said surfaces are for the receipt of pressure from said
`pressurized fluid thereagainst for moving said movable
`platen in said direction and away from said direction.
`
`II. ANALYSIS
`A. Assignor Estoppel
`Patent Owner argues that Petitioner is barred from challenging the
`validity of the ’723 patent by assignor estoppel. PO Resp. 34-56. Patent
`Owner contends that Mr. Robert Schad, one of the named inventors of the
`’723 patent, is the founder, co-owner, President, Chief Executive Officer,
`and one of two directors on the Board of Directors of Petitioner and is,
`therefore, in privity with Petitioner. Id.at 34-35. Thus, according to Patent
`Owner, Petitioner is estopped from challenging the patentability of the ’723
`patent under the doctrine of assignor estoppel. Id.
`We determined previously, in the related proceeding, IPR2013-00290,
`that assignor estoppel is not a basis for denying a petition requesting an inter
`partes review:
`Under the AIA, “a person who is not the owner of a patent may
`file with the Office a petition to institute an inter partes review of the
`patent.” 35 U.S.C. § 311(a) (emphasis added). Consequently, under
`the statute, an assignor of a patent, who is no longer an owner of the
`patent at the time of filing, may file a petition requesting inter partes
`review. This statute presents a clear expression of Congress’s broad
`grant of the ability to challenge the patentability of patents through
`inter partes review.
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`Athena Automation Ltd. v. Husky Injection Molding Sys. Ltd., IPR2013-
`00290, slip op. at 12-13 (PTAB Oct. 25, 2013) (Paper 18); see also Palo
`Alto Networks, Inc. v. Juniper Networks, Inc., IPR2013-00369, slip op. at
`11-14 (PTAB Dec. 19, 2013) (Paper 16).
`Patent Owner does not persuade us otherwise in this proceeding.
`Specifically, we are not persuaded by Patent Owner’s argument that
`37 C.F.R. § 42.101(c), enacted pursuant to 35 U.S.C. §§ 312 and 316,
`modifies the broad statutory language of § 311. See PO Resp. 50-56. We
`are also not persuaded that § 311(b) limits the scope of § 311(a) to grounds
`not subject to assignor estoppel. See PO Resp. 46 n.4.
`Because we are not persuaded that assignor estoppel, an equitable
`doctrine, provides an exception to the statutory mandate that any person who
`is not the owner of a patent may file a petition for an inter partes review, we
`decline to dismiss this inter partes review based on the doctrine of assignor
`estoppel.
`
`B. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are
`interpreted according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 100(b); Office
`Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012).
`Pursuant to that standard, claim terms are given 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).
`In the Decision to Institute, we adopted Petitioner’s construction of
`several claim terms, concluding that they correspond to the plain and
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`ordinary meaning in the context of the Specification. Decision to Institute
`5-7. Although Petitioner did not propose constructions for “stationary
`platen” and “movable platen,” we also construed those terms for purposes of
`institution. Id. at 7-8. We construed “movable platen” as “a platen that, at
`certain times, is capable of being moved—i.e. not in a fixed position—
`relative to a stationary platen and connecting tie bars” and construed
`“stationary platen” as “a platen that, at certain times, is capable of being held
`in a fixed position.” Id. For all other claim terms not specifically addressed
`in the Petition, we applied the plain and ordinary meaning that the term
`would have had to a person of ordinary skill in the art without further
`elaboration. Id. at 6-7.
`Patent Owner argues “movable platen” should instead be construed as
`“a platen that is movable during an injection molding operation” and
`“stationary platen” should be construed as “a platen that does not move
`during an injection molding operation.” PO Resp. 21-24. Petitioner
`disagrees and asserts that the differences between Patent Owner’s proposed
`constructions and the constructions adopted in the Decision to Institute are
`irrelevant. Reply 1 n.1. Patent Owner agreed at oral argument that, for this
`proceeding, the analysis is the same whether or not we adopt Patent Owner’s
`proposed constructions. See Tr. 19:1-13.
`We agree with the parties that, on this record, either construction of
`the two terms would result in the same patentability analysis. Therefore, for
`purposes of this decision, we proceed under the constructions adopted in the
`Decision to Institute.
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`C. Claims 21-32 and 34-37
`Previously, we considered the Petition and determined it was
`reasonably likely that Petitioner would prevail in showing that claims 21-32
`and 34-37 are unpatentable. Decision to Institute 8-14. As previously noted,
`Patent Owner did not file a Preliminary Response, and its Response
`addresses only claim 33. See PO Resp. 6-33. Thus, Patent Owner has not
`directed us to any argument or evidence to rebut Petitioner’s demonstration
`that claims 21-32 and 34-37 are unpatentable.
`Moreover, during oral argument, Petitioner’s counsel stated that
`“[w]ith regard to . . . the ’723 patent, the 167 matter2, only Claim [33]
`remains on the table.” Tr. 5:1-3. In response, Patent Owner’s counsel stated
`that “I agree with Mr. Schmitt with regard to the original claims at issue, [for
`the] ’723 patent, we’re talking about Claim 33.” Id. at 17:23-18:1. Patent
`Owner’s counsel also conceded that “it turns out upon closer scrutiny, while
`there’s an individual preferred embodiment that’s represented by some of
`the dependent claims, including the ones we’re talking about here today,
`some of the broader features were shown . . . 40 years before the patent was
`actually filed.” Id. at 17:11-18.
`To the extent that any of Patent Owner’s arguments presented for the
`patentability of claim 33 are also applicable to claims 21-32 and 34-37, we
`are not persuaded for the reasons discussed below. Thus, the preponderance
`of the evidence, including the findings of fact and reasoning set forth in our
`Decision to Institute, indicate that these claims are unpatentable.
`
`
`2 Referring to case caption IPR2013-00167.
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`Accordingly, based on the record before us, we conclude that a
`preponderance of the evidence demonstrates that claims 21-32 and 34-37 are
`unpatentable based on the following grounds:
`(1) claims 21-32 and 34 are obvious over Queré and Putkowski;
`(2) claim 30 is obvious over Queré, Putkowski, and Kushibe;
`(3) claims 21-31 and 34-37 are obvious over Arend and Putkowski;
`(4) claim 30 is obvious over Arend, Putkowski, and Kushibe;
`(5) claim 32 is obvious over Arend, Putkowski, and Queré;
`(6) claims 21, 27-31, and 34-37 are obvious over Stüdli and
`Putkowski; and
`(8) claim 32 is obvious over Stüdli, Putkowski, and Queré.
`
`D. Claim 33
`Patent Owner’s Response explicitly addresses the patentability of only
`claim 33, which indirectly depends from independent claim 21. PO Resp.
`6-33. For the reasons discussed below, we conclude that a preponderance of
`the evidence demonstrates that claim 33 is unpatentable.
`1. Overview of Queré
`Queré describes an injection molding machine with a mold section
`that is “slidably displaced with respect to” another mold section. Ex. 1002,
`1:7-18. Figures 1-6 of Queré are reproduced below.
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`
`Figures 1-6 show the essential parts of Queré’s invention, in various
`positions occurring when the machine is in operation. Id. at 2:15-19. Mold
`section 11 is supported by slidable block 4 that moves toward mold section
`10 that is supported by fixed block 7. Id. at 2:21-47. Coupling rods 5,
`which include locking claws 6 on a free end, are secured to block 4. Id.
`During the injection process, block 4 is locked in place with high pressure.
`Id.
`
`Figure 7 of Queré is reproduced below.
`
`
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`Figure 7 shows hydraulic pressure cylinder 9 that is secured to the fixed
`block3. Id. at 2:18-47. Pressure cylinder 9 includes coupling sleeve 8,
`which receives coupling rods 5 when slidable block 4 is moved sufficiently
`close to stationary block 7. Id. at 2:37-47.
`2. Alleged Obviousness over Queré, Putkowski, and Kushibe
`Petitioner asserts that claim 33 is obvious over the combinations of
`Queré and Putkowski and Queré, Putkowski, and Kushibe. Pet. 43-50. In
`particular, Petitioner asserts that Queré explicitly discloses every limitation
`of claim 33 except (1) “bores for receiving said means of securing” (“the
`bore limitation”), and (2) “said first mold having a hot runner leading
`thereto.” Id. at 41-43, 48, 50. In addition, Petitioner argues that “a person of
`skill in the art would recognize that Queré’s block 7 could readily be
`rendered movable, and platen 4 made stationary by attaching cylinder 1 and
`piston 12 to platen 7.” Pet. 41 (citing Ex. 1007 ¶¶ 23, 24, 26). Petitioner
`alternatively relies on Kushibe, cited in the ’723 patent (Ex. 1001 1:13-17,
`26-30), to show that a person of ordinary skill in the art would find it an
`obvious design choice to make block 7 movable as recited in claim 33. Pet.
`41 (citing Ex. 1007 ¶¶ 23, 24, 26).
`Petitioner relies on Putkowski as teaching the hot runner. Pet. 43
`(citing Ex. 1005, 2:36-49; Fig. 1). Putkowski is indeed directed to a “hot
`runner system” for “plastic injection molds.” Ex. 1005, Abstract.
`Putkowski states that “[i]n the art of injection molding, molten plastic is
`usually supplied under high pressure by an injection molding machine to a
`
`
`3 In Figures 1-6, element 7 denotes fixed block 7. In Figure 7, however,
`element 7 denotes the locking claws associated with coupling sleeves 8.
`Ex. 1002, 2:42-45.
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`mold structure” and is “commonly conducted by conduits called runners”
`that “are often heated, in which case they are called hot runners.” Id. at
`1:5-11. Petitioner argues that hot runners were, thus, commonly known to
`be used with injection molding machines at the time of the invention, and it
`would have been obvious to combine the teaching of Putkowski with the
`machine disclosed in Queré to “achieve the well-known benefits of hot
`runners.” Pet. 32 (citing Ex. 1007 ¶¶ 27-28). Patent Owner does not dispute
`that Putkowski discloses hot runners or that it would have been obvious to a
`person of ordinary skill to combine the hot runner of Putkowski with the
`machine in Queré.
`Regarding the bore limitation, Petitioner asserts that Queré’s pressure
`cylinder 9 includes bore B for receiving coupling sleeve 8. See Pet. 19-20.
`Bore B is not labeled in Figure 7 of Queré. Instead, Petitioner creates a
`modified version of Figure 7 with annotations. Petitioner’s version of Queré
`Figure 7 with annotations is reproduced below.
`
`
`Annotated Figure 7, above, depicts pressure cylinder 9 with annotations,
`including the feature that Petitioner names “Bore B.” Pet. 19-20; Ex. 1007 ¶
`11. Petitioner concedes that Queré does not disclose explicitly how pressure
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`cylinder 9 is secured to the stationary platen—block 7. Pet. 41. Petitioner
`asserts, however, that the manner of connecting the pressure cylinder to
`block 7 is simply a design choice. Id. at 42. According to Petitioner, it
`would have been obvious to one of ordinary skill in the art at the time of the
`invention to have made part or all of pressure cylinder 9 integral with block
`7 to reduce part count. Id. (citing Ex. 1007 ¶ 11 (“A person of ordinary skill
`would recognize that the bore B that receives the sleeve could be within the
`platen itself.”)).
`
`As discussed above, we have already determined that the
`combinations of Queré and Putkowski and Queré, Putkowski, and Kushibe
`render obvious claims 21 and 32, from which claim 33 depends. And of the
`limitations added by claim 33, Patent Owner addresses only the bore
`limitation, arguing that Queré does not disclose this limitation because
`pressure cylinder 9 is located externally from block 7, not within block 7.
`PO Resp. 26. We note, however, that claim 33 does not use the language
`within the platen, but instead recites that “said moveable platen has bores for
`receiving said means for securing.” (emphasis added). Even assuming, as
`both parties appear to do, that claim 33 requires the bore to be within the
`platen, we agree with Petitioner that a person of ordinary skill in the art
`would have found it obvious, based on the disclosure of Queré, to locate the
`bore within block 7.
`Patent Owner argues that a person of ordinary skill would not have
`modified Queré to integrate pressure cylinder 9 and block 7, because block 7
`is formed of a single piece of metal. PO Resp. 31 (citing Ex. 2006 ¶ 11).
`According to Patent Owner, modifying block 7 to integrate pressure cylinder
`9 “would require a much larger block of metal in order to allow the
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`individual projections to be machined” and each projection would require
`individual machining thus increasing the overall cost of manufacturing. PO
`Resp. 31-32 (citing Ex. 2006 ¶¶ 11-13; Ex. 2007, 131:15-134:13).
`On this record, we are persuaded that a person of ordinary skill would
`have found the bore limitation obvious from the disclosure of Queré. First,
`nothing in claim 33 requires that block 7 (the movable platen) and pressure
`cylinder 9 be machined as one integral piece. Instead, claim 33 simply
`requires that block 7 “has” a bore for receiving coupling sleeve 8 (securing
`means). Figure 1 of Queré shows that block 7 and pressure cylinder 9,
`which includes coupling sleeve 8, must be connected in some way to apply
`tension to coupling rods 5. Ex. 1002, Fig. 1, 2:60-70.
`Second, even assuming that the bore limitation requires block 7 and
`pressure cylinder 9 to be integrated, we are persuaded that this integration
`would involve nothing more than ordinary mechanical skill. See KSR Int’l v.
`Teleflex Inc., 550 U.S. 398, 421 (2007) (where there “are a finite number of
`identified, predictable solutions, a person of ordinary skill has good reason
`to pursue known options within his or her grasp.”); In re Lockhart, 190 F.2d
`208, 210 (C.C.P.A. 1951) (stating the existence of a “general rule that there
`is no invention in making integral that which was before in several parts.”).
`Patent Owner has not directed us to persuasive evidence that such
`integration would require anything more than ordinary mechanical skill. See
`In re Fridolph, 309 F.2d 509, 512 (C.C.P.A. 1962) (reciting an exception to
`the general rule on integration when such modification shows “improved
`results” and “involved more than mere mechanical skill.”). In fact, Patent
`Owner’s declarant, Frederick G. Steil, stated that at the time of the invention
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`there were “appropriate people” who could accomplish this integration. Ex.
`1010, 134:7-24.
`We are not persuaded by Mr. Steil’s testimony that integration of
`block 7 and pressure cylinder 9 would have been non-obvious because it
`would increase complexity of the design and manufacturing cost. See Ex.
`2006 ¶¶ 10-15. “[A] given course of action often has simultaneous
`advantages and disadvantages, and this does not necessarily obviate
`motivation to combine.” Medichem S.A. v. Rolabo, S.L., 437 F.3d 1157,
`1165 (Fed. Cir. 2006). Moreover, Patent Owner does not point to persuasive
`evidence that a person of ordinary skill would have been discouraged from
`making the modification or found such modification nonobvious because of
`this increased expense. See, e.g., Tr. 25-26. Merely knowing that the
`integration would cause increased expense does not indicate whether such
`integration would have been nonobvious to persons of ordinary skill in the
`art. See Orthopedic Equip. v. United States, 702 F.2d 1005, 1013 (Fed. Cir.
`1983)( “[T]he fact that the two disclosed apparatus would not be combined
`by businessmen for economic reasons is not the same as saying that it could
`not be done because skilled persons in the art felt that there was some
`technological incompatibility that prevented their combination.”). In fact,
`Stüdli explicitly discloses this limitation, as described in more detail below,
`evidencing that at the time of the invention a person of ordinary skill in the
`art would have known to locate a bore in the platen. See Ex. 1004, Fig. 7.
`In light of Queré’s disclosure, we are not persuaded that a potential increase
`in cost of machining complexity changes the fact that a person of ordinary
`skill in the art would find obvious the minimal modification of integrating
`the two components.
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`Finally, to the extent that Patent Owner argues that (1) Queré does not
`show a cavity for pressurized fluid within the bore and improperly only
`accommodates mold sections that have the same shut height, or
`(2) modification of Queré to include the bore limitation would be inoperable
`because it would not include these features, we do not find these arguments
`persuasive.4 See Tr. 23-24; Ex. 2006 ¶¶ 16-22. Claim 33 does not recite a
`cavity for pressurized fluid within the bore or that it must accommodate
`mold sections with different shut heights. See, e.g., Tr. 37.
`We conclude that the preponderance of the evidence demonstrates that
`claim 33 is unpatentable based on the combination of Queré and Putkowski,
`and Queré, Putkowski, and Kushibe.
`3. Overview of Arend
`Arend describes an injection molding machine with multiple platens
`containing mold parts that are united during the molding process and
`separated to release the molded product. Ex. 1003, 1:7-12. The Summary of
`the Invention describes the invention as including “two platens mounted
`upon a frame [that] are relatively horizontally movable toward and away
`from each other.” Id. at 2:58-62. Figure 1, reproduced below, is an
`elevational side view of the injection molding machine. Id. at 4:16-21.
`
`
`4 Patent Owner’s Response does not mention these features in its argument
`pertaining to this proposed ground of unpatentability. See PO Resp. 24-29.
`We address these arguments solely because the declaration testimony and
`oral argument refer to these features, but do not clearly identify what,
`precisely, Patent Owner’s arguments are, or what specific grounds they
`apply to. See, e.g., Tr. 23-24; Ex. 2006 ¶¶ 16-22.
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`Figure 1 of Arend, above, illustrates the injection molding machine,
`including “platens 14 and 16 movably mounted upon the ways 12.” Id. at
`5:67-6:1. Platen 14 is moved along frame 10 by two hydraulic cylinders 28,
`and platen 16 is adjusted on the frame by frame-mounted cylinders 34. Id. at
`6:18-28.
`Figures 13, 14, and 15 of Arend, reproduced below, are all views of
`the platen lock cam nut structure used to lock the movable platen in place.
`
`
`Figure 13, above, shows platen bore 129, and tie rods 22 with tie rod locks
`126. Ex. 1003, 7:50-55. Each tie rod lock 126 includes annular sleeve 128,
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`which is bolted to platen 16 by bolts 130 and includes annular cam nut 134.
`Id. Figure 15, above, shows annular cam nut 134 with circular bore 136,
`thread segments 138, and notches 140. Id. at 7:55-60. Figure 14, above,
`shows end of tie rod 22 with threads 122. Id. at 7:44-49. The threads 138
`correspond to thread segments 122 defined on the ends of the tie rod. Id. at
`7:60-62.
`
`4. Alleged Obviousness over Arend, Putkowski, Queré, and
`Kushibe
`Petitioner asserts that Arend, combined with Putkowski, Queré, and
`Kushibe, renders obvious claim 33. Pet. 52-53. In particular, Petitioner
`asserts that Arend explicitly discloses every limitation of claim 33 except
`(1) “means for conveying a clamping force to said platens for clamping said
`platens during injection molding,” (2) the bore limitation, and (3) the hot
`runner, which are disclosed by the other references. Id. at 41-43, 48, 50-52.
`Patent Owner limits its argument to addressing the bore limitation. See PO
`Resp. 25-29.
`In addition, Petitioner argues that a person of skill in the art would
`have recognized that Arend’s platen 16 would meet claim 33’s limitation
`that the bores are located in the movable platen under a broad construction of
`movable platen. Pet. 50. Petitioner, alternatively, relies on Kushibe, cited in
`the ’723 patent (Ex. 1001, 1:13-17, 1:26-30), to show that a person of
`ordinary skill in the art would have found it an obvious design choice to
`make platen 16 movable as recited in claim 33. Pet. 50-51 (citing Ex. 1007
`¶ 24).
`
`Regarding the bore limitation, Petitioner concedes that Arend does not
`disclose that the bore is within platen 16, because Arend discloses modified
`cam nut 134 positioned within annular sleeve 128, which is secured to a rear
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`surface of platen 16 by fasteners 130. Id. at 52. According to Petitioner, it
`would have been obvious to integrate part or all of sleeve 128 with platen 16
`to reduce part count, without any effect on the function of platen 16. Id.
`Such integration would result in the bore limitation—platen 16 having the
`bore of sleeve 128. Id.
`As discussed above, we have already determined that the
`combinations of Arend and Putkowski and Arend, Putkowski, and Queré
`render obvious claims 21 and 32, from which claim 33 depends. And, of the
`limitations added by claim 33, Patent Owner addresses only the bore
`limitation, arguing that Arend does not disclose this limitation because tie
`rod locks 126 are attached to platen 16, but are not “within a platen.” PO
`Resp. 26-27. Claim 33 does not use the language within the platen, but
`instead recites that “said movable platen has bores for receiving said means
`for securing” (emphasis added). Even assuming, as both parties appear to
`do, that claim 33 requires the bore to be within the platen, we agree with
`Petitioner that a person of ordinary skill would have found it obvious, based
`on the disclosure in Arend and Queré, to locate the bore within platen 16.
`Patent Owner argues that modification of Arend to make sleeve 128
`of tie rod locks 126 integral with platen 16 as suggested in the Petition
`would prevent installation of cam nuts 134 within the sleeves 128. Id. at 27
`(citing Ex. 2006 ¶ 29). Thus, according to Patent Owner, the suggested
`modification would make the resulting machine inoperable. PO Resp.
`27-28 (citing Ex. 2006 ¶ 30). In support of this argument, Mr. Steil testifies
`that Arend, modified as suggested, would be inoperable due to the disparate
`relative diameters of the components. Ex. 2006 ¶¶ 30-33. Further, changing
`the size of the components to permit the modification would result in platen
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`16 that is difficult and costly to manufacture. Id. Petitioner replies that a
`person of ordinary skill would have found it an obvious design choice to size
`the components of Arend appropriately to produce an embodiment meeting
`the bore limitation. Reply 5-7.
`We agree with Petitioner. Patent Owner does not assert that there are
`more than two obvious locations for securing the bore—either within the
`platen or attached to the platen. Nor does Patent Owner point to persuasive
`evidence that the combination of the references fails to disclose any of the
`claimed limitations. Finally, Patent Owner does not point to persuasive
`evidence that the particular location of the bore would achieve any novel or
`unexpected results or point to any persuasive evidence that a person of
`ordinary skill would have been discouraged from making the modification
`because of the size issue. Moreover, Stüdli’s explicit disclosure of this
`limitation, as described in more detail below, evidences that at the time of
`the invention a person of ordinary skill in the art would have known to
`locate a bore in the platen. See Ex. 1004, Fig. 7. Thus, we are persuaded
`that the location of the bore using appropriately sized components would be
`an obvious design choice within the abilities of a person of ordinary skill.
`See KSR, 550 U.S. at 421 (“A person of ordinary skill is also a person of
`ordinary creativity, not an automaton.”); In re Sovish, 769 F.2d 738, 742
`(Fed. Cir. 1985) (affirming a rejection of obviousness when modifying one
`reference with a component of another reference required “no more change
`than to make it the right size”).
`In addition, as discussed above with respect to Queré, merely knowing
`that the integration would cause increased expense does not indicate whether
`such integration would have been nonobvious to persons of ordinary skill in
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`the art. On this record, we are not persuaded that a pote
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