Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`Paper 11
`Entered: January 19, 2016
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`DAIFUKU CO., LTD. AND DAIFUKU AMERICA CORP.,
`Petitioner,
`
`v.
`
`MURATA MACHINERY, LTD.,
`Patent Owner.
`_____________
`
`Case IPR2015-01538
`Patent 6,113,341
`_______________
`
`Before KEN B. BARRETT, BARRY L. GROSSMAN, and
`BRIAN P. MURPHY, Administrative Patent Judges.
`
`MURPHY, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`
`Paper 11
`Entered: January 19, 2016
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`DAIFUKU CO., LTD. AND DAIFUKU AMERICA CORP.,
`Petitioner,
`
`v.
`
`MURATA MACHINERY, LTD.,
`Patent Owner.
`_____________
`
`Case IPR2015-01538
`Patent 6,113,341
`_______________
`
`Before KEN B. BARRETT, BARRY L. GROSSMAN, and
`BRIAN P. MURPHY, Administrative Patent Judges.
`
`MURPHY, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`IPR2015-01538
`Patent 6,113,341
`
`
`I.
`
`INTRODUCTION
`
`Daifuku Co., Ltd. and Daifuku America Corp. (together, “Petitioner”)
`filed a Petition requesting inter partes review of claim 1 of U.S. Patent No.
`6,113,341 (“the ’341 patent”). Paper 1 (“Pet.”). Murata Machinery, Ltd.
`(“Patent Owner”) filed a Preliminary Response to the Petition. Paper 6
`(“Prelim. Resp.”). We have statutory authority under 35 U.S.C. § 314(a),
`which provides that an inter partes review may not be instituted “unless . . .
`there is a reasonable likelihood that the petitioner would prevail with respect
`to at least 1 of the claims challenged in the petition.”
`Petitioner challenges claim 1 of the ’341 patent as unpatentable under
`35 U.S.C. §§ 102 and 103 on multiple grounds. Pet. 2–3. Based on the
`information presented in the Petition and Preliminary Response, we are
`persuaded there is a reasonable likelihood Petitioner would prevail with
`respect to the claim challenged in the Petition. Therefore, we institute inter
`partes review of claim 1 of the ’341 patent.
`A. Related Proceedings
`The parties identify the following as a related proceeding regarding
`the ’341 patent:
`U.S. district court action titled Murata Machinery USA, Inc. v.
`Daifuku Co., Ltd., No. 2:13-cv-00866 (D. Utah 2013), in which the ’341
`patent is at issue. Pet. 1; Paper 4, 1.
`B. The ’341 Patent
`The ’341 patent, titled “Tracking Cart System,” issued September 5,
`2000, from an application filed October 22, 1998. Ex. 1001. The tracking
`cart system described in the ’341 patent includes an overhead traveling rail
`and tracking cart that travels along the rail to load a workpiece. Id. at
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`Abstract, 1:62–67. Annotated Figure 2 of the ’341 patent is reproduced
`below.
`
`
`Annotated Figure 2, above, depicts a tracking cart system that
`includes traveling rail 8 and cart body 36. Id. at 3:33–38, 57–58. Fork
`elevating section 54 and fork 56 move horizontally back and forth during
`loading and unloading of workpiece 20. Id. at 3:57–4:6. “[A]n arm motor
`42 turns arms 44 and 46, which are positioned atop of one another, in the
`opposite directions to cause a fork elevating section 54 mounted at the tip of
`the lower arm 46 to move forward and backward perpendicularly to the
`traveling rail.” Id. at 3:57–62. The horizontal back-and-forth movement of
`elevating section 54 and fork 56 positions fork 56 to engage and disengage
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`handle 62 of workpiece 20, as depicted by the phantom lines for fork 56 in
`Figure 2.
`Vertical movement of fork 56 is accomplished by attaching fork 56
`“to the fork elevating section 54 via a ball screw 58 that is moved up and
`down by a servo motor 60, and a forked portion of the fork located at its tip
`grips a handle 62 of the work[piece] 20.” Id. at 4:11–14. “Accordingly,
`only the fork 56 must be moved up and down slightly, while a small fork
`elevating section 54 enables the fast elevating and lowering motions
`required to grip and load the work[piece] 20.” Id. at 4:14–17. The depicted
`traveling cart arrangement “eliminates any need to lower the entire loading
`means from the ceiling area to the loading station.” Id. at 6:4–6.
`Claim 1 of the ’341 patent is illustrative and reproduced below.
`1.
`A tracking cart system, comprising
`
`a traveling rail provided at a level higher than that of a
`loading station;
`
`a tracking cart suspended from said traveling rail; and
`
`loading means for loading a workpiece by moving within
`a horizontal plane, said loading means being provided under
`said tracking cart,
`wherein said loading means includes a fork elevation
`
`section which moves
`forward
`and backward nearly
`perpendicularly to said traveling rail and a fork mounted on
`said fork elevation section so as to be lowered and raised by
`said fork elevation section.
`Id. at 6:9–20 (emphases added).
`
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`C. Asserted Grounds of Unpatentability
`Petitioner asserts that claim 1 of the ’341 patent is unpatentable as
`anticipated by either the ’913 Publication1 or the ’777 Patent.2 Pet. 2.
`Petitioner further asserts that claim 1 is unpatentable as obvious over the
`’913 Publication and the ’777 Patent. Id. Petitioner further asserts that
`claim 1 is unpatentable as obvious over the ’809 Publication3 alone or as
`obvious over the ’809 Publication and the ’777 Patent. Id. at 3. Petitioner
`relies on the Declaration of Dr. Robert H. Sturges (Ex. 1006) in support of
`its arguments. We address the parties’ arguments below.
`
`
`II. ANALYSIS
`
`A. Real Party in Interest
`
`In accordance with 35 U.S.C. § 312(a)(2) and 37 C.F.R. § 42.8(b)(1),
`Petitioner identifies “Daifuku Co., Ltd. and Daifuku America Corp.” as the
`real parties-in-interest. Pet. 1.
`Patent Owner asserts that Petitioner should have listed Daifuku North
`America Holding Company (“Daifuku Holdings”) as a real party in interest.
`Prelim. Resp. 1, 5. According to Patent Owner, Daifuku Holdings possesses
`effective control over Petitioner in relation to this proceeding, and has a
`“blurred” parent-subsidiary relationship with Petitioner Daifuku America
`Corp. Id.
`
`
`1 Japanese Utility Model Application No. 1993-82913, published November
`9, 1993. Ex. 1003 (“the ’913 Publication”) (certified English translation).
`2 U.S. Patent No. 3,863,777 issued February 4, 1975 to Murata on an
`application filed July 18, 1973. Ex. 1004 (“the ’777 Patent”).
`3 Japanese Patent Application Publication No. 1988-242809, published
`October 7, 1988. Ex. 1005 (“the ’809 Publication”) (English translation).
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`A patent owner challenging a petitioner’s real party-in-interest
`disclosure must provide sufficient evidence to show the disclosure is
`inadequate. Intellectual Ventures Mgmt., LLC v. Xilinx, Inc., Case IPR2012-
`00018, Paper 12 at 3 (PTAB Jan. 24, 2013). When a patent owner provides
`sufficient evidence prior to institution that reasonably brings into question
`the accuracy of a petitioner’s identification of real parties-in-interest, the
`overall burden remains with the petitioner to establish that it has complied
`with the statutory requirement to identify all real parties-in-interest. Zerto,
`Inc. v. EMC Corp., IPR2014-01254, Paper 32 at 6–7 (PTAB Feb 12, 2015).
`We authorized additional briefing on the real party in interest issue.
`Petitioner was authorized to file, and filed, a Reply limited to discussing the
`issue of whether Petitioner identified all real parties in interest. Paper 7
`(“Reply”). Patent Owner was authorized to file, and filed, a Sur-Reply
`addressing the real party in interest issue. Paper 8 (“Sur-Reply”).
`Patent Owner cites evidence establishing that Mr. Michael Farley
`serves as Daifuku Holdings’ general counsel, and in this role “lead[s] all
`corporate legal functions, [and] provide[s] strategic counsel to all Daifuku
`[Holdings] companies, including . . . Daifuku America Corporation . . . .”
`Prelim. Resp., 7 (citing Ex. 2003). Exhibit 2003 is a News Release dated
`August 7, 2014, announcing “the promotion of Michael Farley to Senior
`Vice President, General Counsel and Secretary” of an entity named
`“Daifuku Webb Holding Company.” Ex. 2003, 1. The News Release states
`that in his new position Mr. Farley will “provide strategic counsel to all
`Daifuku Webb companies, including . . . Daifuku America Corporation.” Id.
`Based on this News Release, Patent Owner concludes that “[b]ecause
`Daifuku Holdings, through its counsel Mr. Farley, had ‘the actual measure
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`of control or opportunity to control’ the filing of the Petition, Daifuku
`Holdings should have been named as a real party in interest. Prelim. Resp.
`7.
`
`Patent Owner acknowledges that Daifuku Holdings and its
`subsidiaries “were assigned different functions.” Id. at 8. Nonetheless,
`Patent Owner also asserts that Petitioner and Daifuku Holdings are “so
`intertwined” through a common address and telephone number, an
`“umbrella designation” under the name Daifuku North America, a Facebook
`account, a Twitter account, substantial overlap of officers, and a reference in
`Petitioner’s Corporate Disclosure in related litigation, that we should infer
`that Daifuku Holdings is a real party in interest. Id. at 8–10 (citing Ex.
`2005–2018, 2021, and 2022). Patent Owner also focuses on the alleged
`availability of control, whether exercised or not, suggested by the evidence.
`Sur-Reply 1.
`Patent Owner’s arguments and evidence fail to recognize the general
`principle of corporate law “deeply ‘ingrained in our economic and legal
`systems’ that a parent corporation (so-called because of control through
`ownership of another corporation's stock) is not liable for the acts of its
`subsidiaries.” U.S. v. Bestfoods, 524 U.S. 51, 61 (1998) (citations omitted).
`The real party in interest identification requirement exists to ensure
`that a non-party is not “litigating through a proxy.” See Aruze Gaming
`Macau, Ltd. v. MGT Gaming, Inc., Case IPR2014-01288, Paper 13 at 12
`(PTAB Feb. 20, 2015). The RPI analysis, moreover, is an inquiry into the
`“relationship between a party and a proceeding;” not “the relationship
`between parties.” Id. at 11. Thus, our focus “is on the degree of control the
`nonparty could exert over the inter partes review, not the petitioner.” Id.;
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`see also Par Pharm., Inc. & Amneal Pharm., LLC v. Jazz Pharm. Inc., Case
`IPR2015-00551, Paper 19 at 15–19 (PTAB July 28, 2015) (discussing
`distinguishing facts from other cases where the Board found that Petitioner’s
`actions blurred sufficiently the lines of corporate separation with its parent
`such that the parent could have controlled the filing and participation of the
`IPR).
`
`Petitioner provides testimonial evidence from Mr. Farley, Senior Vice
`President, General Counsel & Secretary of Daifuku North America Holding
`Company and General Counsel & Secretary of Daifuku America Corp.,
`about the relationship of Daifuku Holdings to Petitioner and the lack of any
`relationship between Daifuku Holdings and this inter partes review
`proceeding. Ex. 1008. Regarding the relationship of Daifuku Holdings to
`Petitioner, Mr. Farley testified that Petitioner Daifuku America Co. is a
`wholly-owned subsidiary of Daifuku Holdings, and Daifuku Holdings is a
`wholly-owned subsidiary of Petitioner Daifuku Co., Ltd. Id. ¶ 2. Mr. Farley
`further testified that Daifuku Holdings and Daifuku America Co. “are
`separate companies with separate budgets . . . maintain separate business
`records, pay separate taxes, and have different business objectives.” Id. ¶ 3.
`He further testified that he “separately represent[s]” each of the companies
`he serves. Id. Mr. Farley also testified that Daifuku Holding is a “holding
`company that merely holds ownership of its subsidiaries and conducts no
`independent operations.” Id. ¶ 12.
`Regarding the instant Petition, Mr. Farley testified that he “executed
`the Power of Attorney in this proceeding solely on behalf of [Petitioner
`Daifuku America Corp.] and solely as Secretary of [Daifuku America
`Corp.]. Id. ¶ 7. Mr. Farley testified that Petitioner Daifuku Co., Ltd. “was
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`solely responsible for directing, controlling, and funding the preparation” of
`this IPR petition. Id. ¶ 8. Mr. Farley also testified that Daifuku Holdings
`“did not direct, control, or fund – directly or indirectly – the preparation or
`filing of the IPR petition in this proceeding . . . did not directly or indirectly
`pay any filing or legal fees associated with this proceeding . . . did not
`participate in the decision to file a petition in this proceeding . . . [and] did
`not exercise any control over the filing or content of the petitions
`challenging the asserted patents.” Id. ¶ 9
`The exercise or availability of general “control” that stock ownership
`vests in stockholders, such as in the parent-subsidiary relationships among
`Daifuku America Co., Daifuku Holdings, and Daifuku Co., Ltd., which
`includes the election of directors, the making of by-laws, and other acts
`incident to the legal status of stockholders, will not make one company a
`real party in interest of the other. U.S. v. Bestfoods, 524 U.S. at 61–62. It is
`entirely appropriate for directors of a parent corporation to serve as directors
`of its subsidiary, and that fact alone may not serve to expose the parent
`corporation to liability for its subsidiary's acts. Id. at 69 (citations omitted).
`Directors and officers holding positions with a parent and its subsidiary can
`and do “change hats” to represent the two corporations separately, despite
`their common ownership. Id. (citations omitted).
`Whether a party who is not a named participant in a given proceeding
`is a real party in interest to that proceeding “is a highly fact-dependent
`question.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,759
`(Aug. 14, 2012). There is no “bright line test.” Id. Courts invoke the term
`“real party in interest” to describe relationships and considerations sufficient
`to justify applying conventional principles of estoppel and preclusion. Id.
`
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`The non-party’s participation with a petitioner may be overt or covert,
`and the evidence may be direct or circumstantial, but the evidence as a
`whole must show that the non-party possessed effective control over the
`petitioner relating to the inter partes review. Zoll Lifecor Corp. v. Philips
`Elecs. N. Am. Corp., Case IPR2013-00609, Paper 15 at 10 (PTAB Mar. 20,
`2014). Accordingly, we look to the evidence as a whole to determine the
`fact dependent issue of whether Daifuku Holdings is a real party in interest
`in this proceeding. Here, the evidence on which Patent Owner relies does
`not establish actual or potential effective control over the Petition or any trial
`proceeding that may result from the filing of the Petition.
`Unlike the facts in Zoll, the evidence before us does not establish that
`Petitioner’s actions “have blurred sufficiently the lines of corporate
`separation with its parent,” such that the parent corporation “has had control,
`or could have controlled Petitioner, in all aspects of its business,” which
`would include the aspects of its business relating to the inter partes review.
`Patent Owner has not directed us to any persuasive evidence that Petitioner
`and Daifuku Holding conducted negotiations with Patent Owner or others on
`behalf of both Petitioner and its parent or subsidiary corporations, as found
`in Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc., Case IPR2013-
`00453, Paper 88 at 2–6, 11 (PTAB Jan. 6, 2015); see also, Galderma S.A. v.
`Allergan Industrie, SAS, Case IPR2014-01422, Paper 14 at 12 (PTAB Mar.
`5, 2015) (same person serving as President and CEO of both parent and
`subsidiary determined to have “a significant degree of effective control over
`the present matter”).
`Patent Owner’s evidence establishes only a parent-subsidiary
`relationship among Daifuku Holdings and Petitioner. Moreover, evidence of
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`a common address and telephone number, substantial overlap of officers,
`and the other evidence on which Patent Owner relies, establishes a
`relationship between parties; it does not establish a relationship between
`Daifuku Holdings and this proceeding.
`Petitioner relies on Galderma S.A. v. Allergan Industrie, SAS, Case
`IPR2014-01422, (PTAB Mar. 5, 2015) (Paper 14) (quoting Gonzalez v.
`Banco Cent. Corp., 27 F.3d 751, 759 (1st Cir. 1994)) for the general
`proposition that “a non-party may be an RPI where it has ‘the power—
`whether exercised or not—to call the shots.’” Sur-Reply 1. This selective
`quote, while accurate, does not state the complete legal principle analyzed in
`Gonzalez and applied in Galderma. As stated in Gonzalez, the evidence as a
`whole must establish that “the nonparty possessed effective control over a
`party’s conduct . . . as measured from a practical, as opposed to a purely
`theoretical, standpoint.” 27 F.3d 759 (emphasis added). Theoretical,
`hypothetical, or speculative assertions about effective control, unsupported
`by evidence, are neither probative nor persuasive. Every corporate parent
`has the theoretical power to control its subsidiaries. See U.S. v. Bestfoods,
`524 U.S. at 61–62. If theoretical power, whether exercised or not, were the
`controlling test for determining a real party in interest, the test would be
`eviscerated of substance.
`In discussing the issue of whether a party is a real party in interest for
`purposes of an inter partes review, the Office Patent Trial Practice Guide
`cites Gonzalez. 77 Fed. Reg. 48,759. As explained in Gonzalez, “the
`concept of substantial control can be illustrated better by examples than by
`linguistic constructs.” Gonzalez, 27 F.3d at 759. For instance, substantial
`control has been found where a liability insurer assumes the insured's
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`IPR2015-01538
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`defense; where an indemnitor participates in defending an action brought
`against the indemnitee; and where the owner of a close corporation assumes
`control of litigation brought against the firm. Id. (citations omitted).
`Conversely, courts have refused to find substantial control merely because a
`nonparty retained the attorney who represented a party to the earlier action;
`the nonparty assisted in financing the earlier action; the nonparty testified as
`a witness in the earlier action; the nonparty procured witnesses or evidence;
`or the nonparty furnished its attorney's assistance. Id. (citations omitted).
`The facts herein are substantively distinguishable from those in
`Galderma. In Galderma, unlike here, the same person was President and
`CEO of both parent and subsidiary, and it was found that he “wields a
`significant degree of effective control over the present matter.” Galderma,
`Paper 14 at 12 (emphasis added). Such effective control over the proceeding
`is consistent with the “practical, as opposed to a purely theoretical” control
`discussed in Gonzales (27 F.3d 759 (emphasis added)). Galderma also
`found:
`
`historical evidence for a pattern of control by Nestlé over
`Galderma; substantial overlap in the Board of Directors
`for Nestlé S.A. and Nestlé Skin Health S.A., Nestlé’s
`assertions that Galderma would ‘form the foundation’
`and ‘operate as the pharmaceutical arm’ of its parent,
`Nestlé Skin Health S.A.; and Mr. Antunes’s de facto
`control over both Nestlé Skin Health S.A. and Galderma.
`Galderma, Paper 14 at 12–13.
`Patent Owner’s evidence here does not demonstrate similar effective, de
`facto control by Daifuku Holdings over Petitioner.
`We must consider the totality of the circumstances to determine
`whether they justify a finding of a nonparty's potential or actual involvement
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`as a decision-maker in the proceeding from a practical, as opposed to a
`purely theoretical, standpoint. On this record, there is no persuasive
`evidence that Daifuku Holdings, as a practical matter, is “calling the shots”
`in the preparation, funding, or strategy of this proceeding.
`Accordingly, for purposes of this Decision, based on the evidence
`before us, we determine that the evidence does not establish that Daifuku
`Holdings should have been identified in the Petition as a real party in
`interest. 4
`B. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable interpretation in light of the patent specification.
`37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC, 793 F.3d 1268,
`1278–79 (Fed. Cir. 2015). 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). Any special definition for a claim
`term must be set forth in the specification with reasonable clarity,
`deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
`1994).
`
`
`4 In considering jurisdiction over a corporate parent based on activities
`of its subsidiary, the United States Court of Appeals for the Federal Circuit
`has held that “a corporate subsidiary’s contacts in the forum state cannot be
`imputed to the parent corporation absent clear and convincing evidence that
`the parent controls the subsidiary’s activities.” Avocent Huntsville Corp. v.
`Aten Intern. Co., 552 F.3d 1324, 1337–38 (Fed. Cir. 2008) (citing Negron-
`Torres v. Verizon Commc’ns, Inc., 478 F.3d 19, 27 (1st Cir. 2007) (declining
`to assert jurisdiction over Verizon based on the actions of its subsidiary
`without strong evidence of control by the parent corporation)).
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`“loading means for loading a workpiece by moving within a
`horizontal plane”
`
`Petitioner argues that the “loading means” limitation should not be
`subject to 35 U.S.C. § 112, sixth paragraph, because the wherein clause of
`claim 1 sufficiently defines the structure for loading a workpiece. Pet. 9–13.
`Patent Owner does not concede the point, but argues that, even under
`Petitioner’s proposed construction, the prior art references do not render
`claim 1 unpatentable. Prelim. Resp. 13. We agree with Petitioner.
`The Federal Circuit recently clarified that use of the word “means” in
`a claim limitation “does not automatically make that element a ‘means-plus-
`function’ element.” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348
`(Fed. Cir. 2015) (en banc) (quoting Cole v. Kimberly–Clark Corp., 102 F.3d
`524, 531 (Fed. Cir. 1996)). Here, the wherein clause of claim 1 recites
`structure – “a fork elevation section” and a “fork mounted on said fork
`elevation section,” which are “provided under said tracking cart” – that is
`sufficient to accomplish the recited function of “loading a workpiece by
`moving within a horizontal plane.” Pet. 10–12 (citing Ex. 1006 ¶¶ 30–32);
`Ex. 1001, 6:14–19. Like the claim in Cole, the recited structural limitations
`in claim 1 of the ’341 patent are sufficient to accomplish the recited function
`of the “loading means.” Therefore, we need not construe the “loading
`means” limitation under 35 U.S.C. § 112, sixth paragraph.
`
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`C. Asserted Anticipation of Claim 1 by the ’913 Publication
`
`Petitioner asserts that claim 1 is anticipated by the ’913 Publication.5
`Pet. 15–24. Petitioner provides a certified English language translation of
`the Japanese language original document. Ex. 1003, 1. Patent Owner
`opposes. Prelim. Resp. 17–22. We address the parties’ arguments below.
`The ’913 Publication discloses a system for conveying an object W.
`Ex. 1003 ¶¶ 7, 8. The system includes a carrier that travels on a rail, a
`climbing frame, and a transfer device onto which object W is loaded. Id. ¶¶
`6, 7. Figures 5 and 6, annotated by Patent Owner, are reproduced below.
`
`
`
`
`5 Petitioner states that the ’913 Publication was not considered by the
`Examiner during prosecution of the application leading to issuance of the
`’341 patent. Pet. 16.
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`As best seen in Figure 5, above, loading base 53 extends horizontally
`on movable arm 52 for loading object W. Id. ¶ 11. Petitioner asserts that
`the structural components on which object W sits, identified as “A” in
`annotated Figures 5 and 6, satisfy the “fork” limitation of claim 1. Pet. 23
`(citing Ex. 1006 ¶ 53). Petitioner argues that, because the structural support
`components are separated from each other and are longer than they are wide,
`they form the prongs of a fork. Id.
`We agree with Patent Owner that the ’341 patent describes the fork as
`an element that engages with the workpiece in order to perform the claimed
`“loading” of the workpiece. For example, the ’341 patent states that the fork
`“grip[s] the work” and “lift[s] the work from the loading station.” Ex. 1001
`at 2:41–44. Similarly, the ’341 patent states that during the “loading
`operation” for the workpiece, the fork “move[s] forward to the lower part of
`the handle 62 of the work 20 and grip[s] it.” Id. at 4:38–48. “Then, the fork
`56 is lifted slightly [to] complete the loading operation.” Id. at 4:49–51.
`Petitioner does not provide persuasive evidence that the ’913 Publication
`discloses anything other than structural supports, rather than a loading fork
`as described and claimed in the ’341 patent. The description in the ’341
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`patent, moreover, is consistent with the plain and ordinary meaning of the
`term “fork,” which is “a tool having a handle and two or more prongs or
`tines for holding, lifting, or piercing.” Ex. 2019 at 3.
`Therefore, for the reasons given above, we are not persuaded
`Petitioner has shown a reasonable likelihood of prevailing in its challenge
`that claim 1 of the ’341 patent is anticipated by the ’913 Publication.
`D. Asserted Anticipation of Claim 1 by the ’777 Patent
`Petitioner asserts that claim 1 is anticipated by the ’777 Patent. Pet.
`28–31 (citing Ex. 1006 ¶¶ 63–71). Patent Owner opposes, arguing the ’777
`Patent does not disclose “a fork mounted on said fork elevation section so as
`to be lowered and raised by said fork elevation section.” Prelim. Resp. 22–
`25. We address the parties’ arguments below.
`1. The ’777 Patent
`Figure 12 of the ’777 patent, reproduced below, discloses crane F for
`loading pallet groups G1 and G2 onto truck platform 25. Ex. 1004, 7:34–37,
`Fig. 12.
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`In Figure 12 of the ’777 patent, above, the crane includes traversing
`frame 90 that is suspended from and travels along two rails 26 in a direction
`into and out of the page, and running frame 100 that is coupled to and moves
`horizontally along traversing frame 90. Id. at 7:38–57. The running frame
`100 incudes a pair of vertical frames 102 that support elevating frame 110,
`which is moved vertically by extending and retracting cables 116 such that
`rollers 114, attached to elevating frame 110, roll along the surface of vertical
`frames 102. Id. at 7:48–8:13. The crane also includes fork 134 coupled to
`elevating frame 110 via several structural components, including fork frame
`130, tilting frame 120, and support frame 113. Id. 8:14–19.
`In operation, fork 134 is advanced into the openings in pallets G1 and
`G2 by moving running frame 100 horizontally along traversing frame 90. Id.
`at 8:58–63. Then “[t]he tilting frame 120 is slightly tilted backward to raise
`the tip of the fork,” and, “[a]t the same time, the elevating frame 110 is
`raised by cable drum 118” to lift the pallets G1 and G2. Id. at 8:64–66.
`Running frame 100 is then advanced horizontally along traversing frame 90
`until pallets G1 and G2 reach loading platform 25, at which point elevating
`frame 110 is lowered to place G1 and G2 onto loading platform 25. Id. at
`8:65–9:9.
`
`2. Analysis
`Petitioner asserts that fork 134 satisfies the “fork” limitation, and
`elevating frame 110 (113, 120, 130) satisfies the “fork elevation section”
`limitation, as recited in claim 1 of the ’341 patent. Petition at 30–31 (citing
`Ex. 1006 ¶¶ 69–71). In particular, Petitioner argues that fork 134 is
`“mounted on the elevating frame 110 (113, 120, 130) so as to be raised and
`lowered by the elevating frame 110.” Pet. 30–31 (citing Ex. 1004, 8:66–9:9;
`
`18
`
`
`
`IPR2015-01538
`Patent 6,113,341
`
`Ex. 1006 ¶ 71). Patent Owner argues that because fork 134 and elevating
`frame 110 are “moved together” using cables 116 and cable drum 118
`(shown in Figure 13), the fork is not “lowered and raised by said fork
`elevation section,” as recited in claim 1. Prelim. Resp. 24–25. Patent
`Owner argues, in particular, that the fork must be moved by the fork
`elevation section “without also moving the fork elevation section.” Id. at 24
`((emphasis omitted) citing Ex. 1001, 4:11–17 (when the fork is moved by
`the fork elevation section, “only the fork [is] moved”)).
`Patent Owner’s argument effectively reads a limitation from the
`preferred embodiment disclosed in the ’341 patent into claim 1, namely that
`when the fork is raised and lowered only the fork moves, not the fork
`elevation section. The preferred embodiment in the ’341 patent discloses the
`cooperative action of a ball screw (58) and servo motor (60) to raise and
`lower the fork without moving the fork elevation section itself. Ex. 1001,
`4:11–17. Nonetheless, even where a patent describes only a single
`embodiment, “claims must ‘not be read restrictively unless the patentee has
`demonstrated a clear intention to limit the claim scope using words or
`expressions of manifest exclusion or restriction.’” Williamson, 792 F.3d at
`1347 (quoting Innova/Pure Water, Inc., v. Safari Water Filtration Sys., Inc.,
`381 F.3d 1111, 1117–18 (Fed.Cir.2004) (district court erred by construing
`“operatively connected” to require a “tenacious means of physical
`engagement that results in a unitary structure,” based on examples in the
`patent specification). Language of such restriction regarding the vertical
`movement of the fork without moving the fork elevation section is not
`recited in claim 1. Likewise, the difference between the preferred
`embodiment described in the ’341 patent and the disclosure of the’777
`
`19
`
`
`
`IPR2015-01538
`Patent 6,113,341
`
`Patent regarding the raising and lowering of the fork is not reflected in the
`language of claim 1. Patent Owner has not identified any language of
`manifest exclusion or restriction in the claim, the ’341 patent, or the
`prosecution history that would lead to a different conclusion.
`Based on the present record, we are persuaded Petitioner has shown a
`reasonable likelihood of prevailing in its assertion that claim 1 is
`unpatentable for anticipation by the ’777 Patent pursuant to 35 U.S.C.
`§ 102(b).
`
`E. Asserted Obviousness of Claim 1 over the ’913 Publication and
`the ’777 Patent
`Petitioner argues that claim 1 would have been obvious to a person of
`ordinary skill in the art over the ’913 Publication and the ’777 Patent, at the
`time of the ’341 patent application filing date. Pet. 25–28 (citing Ex. 1006
`¶¶ 56–62).6 Petitioner argues, inter alia, that even if the structural support
`elements of the ’913 Publication are not the “fork” recited in claim 1, it
`would have been obvious for one of skill in the art to modify the structural
`support elements in the ’913 Publication to “provide the supporting elements
`with the long-pronged configuration taught by the ’777 Patent.” Id. at 27–28
`(citing Ex. 1006 ¶¶ 60–62). Patent Owner opposes. Prelim. Resp. 25–29.
`We are persuaded by Patent Owner’s argument that Petitioner and Dr.
`Sturges have not provided a persuasive analysis of why a person skilled in
`
`
`6 Petitioner provides evidence to support its position that a person of
`ordinary skill in the art would have had at least a Bachelor of Science degree
`in Mechanical, Industrial and/or Systems Engineering and 3-5 years of
`experience designing systems and processes using automated material
`handling systems or substantially more practical experience designing such
`systems and processes. Pet. 8 (citing Ex. 1006 ¶¶ 15–27).
`
`20
`
`
`
`IPR2015-01538
`Patent 6,113,341
`
`the art would modify the structural supports in the ’913 Publication with a
`loading fork, or how the modified loading system would work in practice.
`Prelim. Resp. 26–28. As Patent Owner points out, the ’913 Publication
`teaches lock
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