throbber
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 IPR2013-00169
`Patent 5,624,695
`
`
`
`
`
`
`
`
`
`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
`
`
`
`
`

`
`IPR2013-00169
`Patent 5,624,695
`
`I. INTRODUCTION
`A. Background
`Petitioner Athena Automation Ltd. filed a Petition (Paper 1, “Pet.”) to
`institute an inter partes review of claims 1-17 (“the challenged claims”) of
`U.S. Patent No. 5,624,695 (Ex. 1001, “the ’695 patent”). 35 U.S.C.
`§§ 311-319. Patent Owner Husky Injection Molding Systems Ltd. waived
`the filing of a Preliminary Response. Paper 7. On July 30, 2013, the Board
`instituted trial (Paper 8, “Decision to Institute”), concluding that Petitioner
`had shown a reasonable likelihood of showing that the challenged claims
`were unpatentable based on the following grounds:
`Reference[s] 1
`Basis
`Claims challenged
`Queré
`§ 102
`1-11 and 14
`Arend
`§ 102
`1-4 and 14-17
`Arend and Queré
`§ 103
`5-13
`Arend, Queré, and Kushibe
`§ 103
`13
`Stüdli
`§ 102
`1, 2, and 14-17
`Stüdli and Queré
`§ 103
`9-13
`
`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 18-34 for claims 1-17. Paper 24 (“Mot. to
`Amend”). Petitioner filed a Reply to the patent owner 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
`
`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”); and
`U.S. Patent No. 4,874,309 (Ex. 1006) (“Kushibe”).
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`IPR2013-00169
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`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
`1-17 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 based on patents claiming similar subject matter. IPR2013-00167
`involves U.S. Patent No. 5,620,723 (“the ’723 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 21-37 of the ’723 patent are unpatentable as obvious over
`combinations of some of the same references raised in this proceeding:
`Queré, Arend, and Stüdli. IPR2013-00167, Paper 51 (“the 2013-00167
`Decision”). 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 ’695 Patent
`The technology of the ’695 patent is the same as that of the ’723
`patent and is described in the 2013-00167 Decision at pages 3-5. For the
`purposes of this decision, we adopt that description.
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`Patent 5,624,695
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`D. Illustrative Claims
`Claim 1 is the only independent claim of the ’695 patent. Claims 1,
`12, and 13, reproduced below, are illustrative of the claimed subject matter:
`1. A securing assembly for use with a first platen of an injection
`molding machine, comprising:
`means for connecting said first platen to another platen;
`and
`means for securing said first platen to said means for connecting
`and adapted to be attached to said first platen, wherein said
`means for securing includes engagement means for placing
`said means for securing into and out of locking engagement
`with said means for connecting upon rotation of said means
`for securing, such that when said engagement means is out
`of locking engagement with said means for connecting, said
`means for securing and said means for connecting are
`relatively movable.
`
`12. The securing assembly according to claim 11,
`wherein said first platen is adapted to be forced in a direction for
`achieving clamping with said another platen
`and wherein said first platen has a bore for receiving said means for
`securing,
`wherein said means for conveying has an outer surface configured to
`form cavities between said outer surface and said bore and has
`surfaces extending substantially transversely to said direction,
`said cavities for the introduction of pressurized fluid and said
`surfaces for the receipt of pressure from said pressurized fluid
`thereagainst.
`
`13. The securing assembly according to claim 12, wherein said first
`platen is a moveable platen.
`
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`IPR2013-00169
`Patent 5,624,695
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`II. ANALYSIS
`A. Assignor Estoppel
`Patent Owner argues that Petitioner is barred from challenging the
`validity of the ’695 patent by assignor estoppel. PO Resp. 37-59. Patent
`Owner contends that Mr. Robert Schad, one of the named inventors of the
`’695 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 37-39. Thus, according to Patent
`Owner, Petitioner is estopped from challenging the patentability of the ’695
`patent under the doctrine of assignor estoppel. Id.
`We have determined previously, in the related proceeding, IPR2013-
`00290, that assignor estoppel is not a basis for denying a petition requesting
`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.
`
`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. 45-50. We
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`IPR2013-00169
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`are also not persuaded that § 311(b) limits the scope of § 311(a) to grounds
`not subject to assignor estoppel. See PO Resp. 49-50 n.6.
`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
`ordinary meaning in the context of the Specification. Decision to Institute
`4-5. Although Petitioner did not propose a construction for “movable
`platen,” we expressly construed that term as well. Id. at 5. In particular, 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.” Id. For all other claim terms not specifically addressed
`in the Petition, we applied the plain and ordinary meaning that the term
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`IPR2013-00169
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`would have had to a person of ordinary skill in the art, without further
`elaboration. Id.
`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. 21-23. Petitioner
`disagrees and asserts that the differences between Patent Owner’s proposed
`construction and the construction adopted in the Decision to Institute are
`irrelevant. Reply 2 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 construction. See Tr. 19:1-13.
`We agree with the parties that, on this record, either construction of
`the term “movable platen” would result in the same patentability analysis.
`Therefore, for purposes of this decision, we proceed under the construction
`adopted in the Decision to Institute.
`
`C. Claims 5-10
`Previously, we considered the Petition and determined it was
`reasonably likely that Petitioner would prevail in showing that claims 5-10
`are unpatentable as anticipated by Queré and obvious over the combination
`of Arend and Queré. Decision to Institute 6-8. We also determined that it
`was reasonably likely that Petitioner would prevail in showing that claims 9
`and 10 are unpatentable for the additional reason that they are obvious over
`the combination of Stüdli and Queré. Id. at 9-10.
`Patent Owner argues in its response that claims 5-8 are not obvious
`over Arend and Queré and that claims 9 and 10 are not obvious over either
`the combination of Arend and Queré or Stüdli and Queré. PO Resp. 33-37.
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`Patent Owner, however, does not address whether these claims are
`anticipated by Queré. Thus, Patent Owner has not directed us to any
`argument or evidence to rebut Petitioner’s demonstration that claims 5-10
`are unpatentable.
`Moreover, during oral argument, Petitioner’s counsel stated that
`“[w]ith regard to the ’695 patent, the 169 matter2, Claims 12 and 13 remain
`on the table . . . Mr. Robinson noted in the . . . conference call on Friday that
`the other claims have all been waived.” Tr. 5:4-7. In response, Patent
`Owner’s counsel stated that “I agree with Mr. Schmitt with regard to the
`original claims at issue, [for the] ’695 patent, we’re talking about Claims 12
`and 13.” Id. at 17:23-24. 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 claims 12 and 13 are also applicable to the patentability of
`claims 5-10, 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 as anticipated by Queré. We do not address the proposed
`grounds of obviousness for claims 5-10. Accordingly, based on the record
`before us, we conclude that a preponderance of the evidence demonstrates
`that claims 5-10 are unpatentable as anticipated by Queré.
`
`
`2 Referring to case caption IPR2013-00169.
`
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`D. Claims 1-4, 11, and 14-17
`Previously, we considered the Petition and determined it was
`reasonably likely that Petitioner would prevail in showing that claims 1-4,
`11, and 14-17 are unpatentable based on multiple grounds. Decision to
`Institute 6-10. As noted above, Patent Owner did not file a Preliminary
`Response in this proceeding and its Response addresses only claims 5-10,
`12, and 13. See PO Resp. 23-37. Thus, Patent Owner has not directed us to
`any argument or evidence to persuade us that Petitioner fails to demonstrate
`that claims 1-4, 11, and 14-17 are unpatentable. Moreover, as described in
`more detail above, during oral argument, Patent Owner’s counsel clarified
`that Patent Owner is arguing patentability of only claims 12 and 13.
`To the extent that any of Patent Owner’s arguments presented for the
`patentability of claims 12 and 13 are also applicable to claims 1-4, 11, and
`14-17, 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.
`Accordingly, based on the record before us, we conclude that a
`preponderance of the evidence demonstrates that claims 1-4, 11, and 14-17
`are unpatentable based on the following grounds:
`(1) claims 1-4, 11, and 14 are anticipated by Queré;
`(2) claims 1-4 and 14-17 are anticipated by Arend;
`(3) claim 11 is obvious over Arend and Queré;
`(4) claims 1, 2, and 14-17 are anticipated by Stüdli; and
`(5) claim 11 is obvious over Stüdli and Queré.
`
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`E. Claims 12 and 13
`Claims 12 and 13 indirectly depend from independent claim 1. PO
`Resp. 23-37. For the reasons discussed below, we conclude that a
`preponderance of the evidence demonstrates that these claims are
`unpatentable.
`1. Overview of Arend
`Arend is described in the 2013-00167 Decision at pages 17-19. For
`the purposes of this decision, we adopt that description.
`2. Overview of Queré
`Queré is described in the 2013-00167 Decision at pages 10-12. For
`the purposes of this decision, we adopt that description.
`3. Alleged Obviousness over Arend, Queré, and Kushibe
`Petitioner asserts that claims 12 and 13 are obvious over the
`combination of Arend and Queré, and claim 13 is also obvious over the
`combination of Arend, Queré, and Kushibe. Pet. 35-44. In particular,
`Petitioner asserts that Arend discloses every limitation of claims 12 and 13
`except (1) means for securing “comprises a piston positioned coaxially
`relative to said means for connecting,” (2) “means for securing further
`comprises means for conveying a clamping force to said first platen,” and
`(3) “wherein said first platen has a bore for receiving said means for
`securing” (“the bore limitation”). Id. at 36-37. Petitioner relies on Queré as
`disclosing these limitations. Id.
`In addition, for claim 13, Petitioner argues that, depending on the
`construction of “movable platen,” Arend’s platen 16 would meet claim 13’s
`limitation that “said first platen is a movable platen.” Pet. 42-43. Petitioner
`alternatively relies on Kushibe, cited in the ’695 patent (Ex. 1001, 1:13-17,
`26-30), to show that a person of ordinary skill in the art would find it an
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`IPR2013-00169
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`obvious design choice to make platen 16 movable as recited in claim 13.
`Pet. 42-43.
`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
`surface of platen 16 by fasteners 130. Id. at 37-38. According to Petitioner,
`it would have been obvious to integrate part or all of sleeve 128 with platen
`16, as opposed to being attached externally, 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 both Queré and
`Arend each disclose every limitation of claim 1, from which claims 12 and
`13 depend. Regarding the limitations added by claims 12 and 13, 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. 25. We note that claim 12, which
`recites the bore limitation, 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 claims 12 and 13 require 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 26-
`
`11
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`IPR2013-00169
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`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, Patent Owner’s
`declarant, Frederick G. 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 to permit the
`modification would result in a platen 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. Pet.
`38; Reply 2-3.
`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 particular location of the bore would achieve any novel or
`unexpected results. Finally, Patent Owner does not point to persuasive
`evidence that a person of ordinary skill would have been discouraged from
`making the modification because of the size issue. Moreover, 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.
`Thus, we are persuaded that the location of the bore using appropriately
`sized components would have been an obvious design choice within the
`abilities of a person of ordinary skill. See KSR Int’l Co. v. Teleflex Inc., 550
`U.S. 398, 421 (2007) (“A person of ordinary skill is also a person of
`ordinary creativity, not an automaton.”); In re Sovish, 769 F.2d 738, 742
`
`12
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`(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”).
`We are not persuaded by Mr. Steil’s testimony that integration of
`elements would increase the complexity of the design and the cost of
`manufacturing. See Ex. 2006 ¶¶ 31-33; Medichem S.A. v. Rolabo, S.L., 437
`F.3d 1157, 1165 (Fed. Cir. 2006) (“[A] given course of action often has
`simultaneous advantages and disadvantages, and this does not necessarily
`obviate motivation to combine.”). 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 not
`obvious 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 not have been obvious to persons of
`ordinary skill in the art. 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 light of the disclosures of Arend and Queré, 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 have found obvious
`the minimal modification of integrating the two components.
`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
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`(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.3 See Tr. 23-24; Ex. 2006 ¶¶ 16-22. Claims 12 and 13 do not
`recite a cavity for pressurized fluid within the bore or that the claimed
`machine must accommodate mold sections with different shut heights. See,
`e.g., Tr. 37.
`We conclude that a preponderance of the evidence demonstrates that
`claims 12 and 13 are unpatentable based on the combination of Arend and
`Queré and claim 13 is unpatentable based on the combination of Arend,
`Queré, and Kushibe.
`4. Overview of Stüdli
`Stüdli is described in the 2013-00167 Decision at pages 22-24. For
`the purposes of this decision we adopt that description.
`5. Alleged Obviousness over Stüdli and Queré
`Petitioner asserts that Queré discloses all the limitations of claims 12
`and 13 except the bore limitation and that a person of ordinary skill in the art
`would find it obvious to modify Queré in light of Stüdli’s disclosure of a
`bore located within a platen in order to reduce part count.4 Pet. 57-60.
`
`
`3 Patent Owner’s Response does not present these arguments. See PO Resp.
`25-30. We address them solely because Patent Owner’s declaration
`testimony and oral argument, which referred to these features, do not clearly
`identify what, precisely, Patent Owner’s arguments are or to what specific
`grounds they apply. See, e.g., Tr. 23-24; Ex. 2006 ¶¶ 16-22.
`4 Petitioner alternatively argues that Stüdli discloses every limitation of
`claims 12 and 13 except “the means conveying a clamping force to said
`platens for clamping said platens during injection molding” and relies on
`Queré for disclosing this limitation. Pet. 52-57. Because we find that claims
`12 and 13 are obvious based on the argument addressed here, we do not
`reach Petitioner’s alternative argument.
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`Specifically, Petitioner asserts that a person of ordinary skill would have
`found it an obvious design choice to have made part or all of pressure
`cylinder 9, which includes bore B, integral with block 7. Id. at 57-58 (citing
`Ex. 1006 ¶ 11). As discussed above, we have already determined that Queré
`discloses every limitation of claims 1 and 11, from which claims 12 and 13
`depend. Also discussed above, we agree (1) that Stüdli discloses a bore
`within a platen, and (2) that the location of the bore is an obvious design
`choice within the abilities of a person of ordinary skill. See KSR, 550 U.S. at
`421.
`
`Patent Owner argues that this particular combination would not have
`been obvious, because it would increase the complexity and manufacturing
`cost of the resulting machine. PO Resp. 30-33 (citing Ex. 2006 ¶¶ 10-15).
`We are not persuaded by this argument for the reasons discussed above with
`respect to the combination of Arend and Queré. More specifically, merely
`knowing that the integration would cause increased expense or machining
`complexity does not indicate whether such integration would have been
`nonobvious to persons of ordinary skill in the art. On this record, we are
`persuaded that, despite a potential increase in cost and machining
`complexity, a person of ordinary skill in the art would have found obvious
`the modification of Queré by relocating pressure cylinder 9, including bore
`B, within block 7.
`
`We conclude that a preponderance of the evidence demonstrates that
`claims 12 and 13 are unpatentable based on the combination of Stüdli and
`Queré.
`
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`F. Patent Owner’s Motion to Amend Claims
`Because we determine that claims 1-17 are unpatentable we turn to
`Patent Owner’s contingent request to enter proposed, amended claims 18-34.
`In its Motion to Amend, Patent Owner proposes replacements for each of the
`challenged claims. At oral argument, however, Patent Owner stated that it is
`only interested in pursuing proposed claims 29 and 30, the proposed
`substitutes for claims 12 and 13. Tr. 18:1-6, 49:14-16. Thus, we explicitly
`address only proposed claims 29 and 30.
`Proposed claims 29 and 30, reproduced below5 with underlining to
`indicate additions and strikethrough to indicate deletions from claims 12 and
`13 of the issued ’695 patent, recites:
`29. (Proposed Conditional Substitute for Challenged Claim 12)
`A securing assembly for use with a first platen of an injection molding
`machine, comprising:
`a securing assembly for use with a first platen of an injection molding
`machine, comprising;
`means for connecting said first platen to said means for connecting
`and adapted to be attached to said first platen,
`wherein said means for securing includes engagement means for
`placing said means for securing into and out of locking engagement
`with said means for connecting upon rotation of said for securing,
`such that when said engagement means is out of locking engagement
`with said means for connecting, said means for securing and said
`means for connecting are relatively movable;
`wherein said means for securing includes a first cylindrical portion, a
`second cylindrical portion, and a tapered portion extending between
`and connecting said first cylindrical portion and said second
`cylindrical portion, said first cylindrical portion including a larger
`
`5 For purposes of our analysis, we have rewritten proposed claim 29 in
`independent form such that it includes the content of proposed claims 28 and
`18 from which claim 29 depends.
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`diameter than said second cylindrical portion and being disposed
`farther from the other of said movable platen and said stationary
`platen than said second cylindrical portion;
`wherein said means for securing further comprises means for
`conveying a clamping force to said first platen for clamping said first
`platen to said another platen during injection molding;
`wherein said first platen is adapted to be forced in a direction for
`achieving clamping with said another platen
`and wherein said first platen has a bore for receiving said means for
`securing, wherein said means for conveying has an outer surface
`including said tapered surface and surfaces extending substantially
`transversely to said direction configured to form cavities between said
`outer surface and said bore and has surfaces extending substantially
`transversely to said direction, said cavities for the introduction of
`pressurized fluid and said surfaces for the receipt of pressure from
`said pressurized fluid thereagainst.
`
`30. (Proposed Conditional Substitute for Challenged Claim 13) The
`securing assembly according to claim 1229, wherein said first platen
`is a movable platen.
`
`During an inter partes review, we enter proposed amended claims
`only upon a showing that the amended claims are patentable. Idle Free Sys.
`v. Bergstrom, Inc., IPR2012-00027, slip op. at 33 (PTAB Jan. 7, 2014)
`(Paper 66). This burden may not be met merely by showing that the
`proposed claims are distinguished over the prior art references applied to the
`original patent claims. Instead, because there is no examination of the
`proposed claims, the patent owner must show that the subject matter recited
`is not taught or suggested by the prior art in general for us to determine that
`they comply with 35 U.S.C. §§ 102 and 103. Id.
`Patent Owner argues that the securing assemblies recited in the
`proposed claims 29 and 30 are patentable over Queré, because Queré fails to
`disclose a coupling sleeve that includes a tapered portion that extends
`
`17
`
`

`
`IPR2013-00169
`Patent 5,624,695
`
`between and connects first and second cylindrical portions (“the tapering
`limitation”). Mot. to Amend 3 (citing Ex. 2013 ¶ 8). Although it is Patent
`Owner’s burden to show patentability over the prior art in general, Patent
`Owner does not assert, or direct us to evidence, that the claimed securing
`assemblies were novel over other securing assemblies known in the art.
`Instead, Patent Owner focuses only on the disclosure of Queré. Patent
`Owner does not direct us to evidence, such as the testimony of one of at least
`ordinary skill in the art, that it is unaware of any other anticipatory art. See
`Tr. 50:22-51:12. Nor does Patent Owner direct us to evidence that the
`proposed claim would not have been obvious over Queré either alone or in
`combination with another prior art reference. Id. at 51:17-22. Accordingly,
`Patent Owner has not met the burden it undertook by putting forth proposed
`amended claims.
`In any event, even if Patent Owner’s burden was to show patentability
`over only the prior art of record, we would not be persuaded that the
`proposed claims are patentable, because Patent Owner addresses only
`whether Queré anticipates the newly claimed injection molding machine, not
`whether ordinarily skilled artisans would have considered Queré to render
`the newly claimed securing assemblies obvious.
`To argue for patentability of the proposed claim, Patent Owner’s
`Motion argues that Queré fails to disclose a coupling sleeve that includes a
`tapered portion that extends between and connects first and second
`cylindrical portions. Mot. to Amend 2-3 (citing Ex. 2013 ¶ 8). Petitioner, in
`response, argues that claims 29 and 30 are obvious over a combination of
`Queré and one of U.S. Patent No. 2,916,768 (Ex. 1014; “Queré II”), U.S.
`
`18
`
`

`
`IPR2013-00169
`Patent 5,624,695
`
`Patent No. 4,285,384 (Ex. 1015; “Wunder”), and U.S. Patent No. 5,061,175
`(Ex. 1016, “Iwamoto”). Opp. Mot. to Amend 2-5.
`Petitioner points to Figure 2 of Queré II as disclosing sleeve 8 having
`a first cylindrical portion and a tapered portion extending from that portion
`to a smaller diameter end portion. Id. In support of this assertion,
`Petitioner’s declarant, Mr. Link, testifies that “Queré II discloses an injection
`molding machine very similar to that disclosed in Queré and includes” (Ex.
`1019 ¶ 6) the tapering limitation, pointing to an annotated version of Figure
`2 of Queré II, reproduced below.
`
`
`Annotated Figure 2, above, points to a portion of sleeve 8 as meeting the
`tapering limitation. Ex. 1019 ¶¶ 5-6. Mr. Link also testifies that a tapered
`transition portion on the outer surface of a sleeve is disclosed in Figure 7 of
`Wunder and Figure 1 of Iwamoto, both reproduced below.
`
`19
`
`

`
`IPR2013-00169
`Patent 5,624,695
`
`
`
`
`Annotated Figures 7 and 1, above, each point to a portion of a sleeve as
`including the tapering limitation. Id. at ¶¶ 7-8. In addition, Mr. Link
`testifies that “a person of ordinary skill in the art reading the ’695 patent
`would understand that the ’695 patent teaches that the tapered shape of the
`transitional portion 59a is not critical to the claimed device and [is] merely a
`
`20
`
`

`
`IPR2013-00169
`Patent 5,624,695
`
`matter of design choice.” Id. at ¶ 9. Mr. Link adds that “the shape chosen
`for the corresponding transitional portion 59a of piston 44a also is not
`critical and could be any number of different shapes without affecting the
`piston’s fu

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