Paper No. 20
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`
`
`DAIFUKU CO., LTD. AND DAIFUKU AMERICA CORP.,
`
`Petitioners
`
`v.
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`
`
`MURATA MACHINERY, LTD.,
`
`Patent Owner
`
`______________
`
`Case IPR2015-10538
`Patent 6,113,341
`______________
`
`
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`PATENT OWNER’S RESPONSE
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`
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`

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`Case IPR2015-10538
`Patent 6,113,341
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`TABLE OF CONTENTS
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`2. 
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`2. 
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`2. 
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` PAGE
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`INTRODUCTION .......................................................................................... 1 
`I. 
`OVERVIEW OF THE ’341 PATENT ........................................................... 2 
`II. 
`III.  CLAIM CONSTRUCTION ........................................................................... 4 
`A. 
`The Claimed “Fork Elevation Section” Raises and Lowers the
`Claimed Fork. ....................................................................................... 5 
`The Claimed “Fork Elevation Section” Excludes Vertically-
`Movable Fork Elevation Sections. ....................................................... 7 
`1. 
`The specification characterizes loading means that lack
`vertically-movable fork elevation sections as the
`“invention.” ................................................................................ 7 
`The prosecution history includes the same disclaimer of
`vertically-movable fork elevation sections. ............................. 13 
`IV.  LEGAL PRINCIPLES .................................................................................. 16 
`V. 
`CLAIM 1 IS NOVEL OVER THE ’777 PATENT AND
`NONOBVIOUS OVER THE ’809 PUBLICATION IN VIEW OF
`THE ’777 PATENT ...................................................................................... 18 
`A.  Overview of the ’777 Patent and ’809 Publication ............................ 19 
`1. 
`The ’777 Patent is directed to a heavy warehouse system
`for storing and shipping pallets of box-shaped objects. .......... 19 
`The ’809 Publication discloses a lighter system and teaches
`away from crane F of the ’777 Patent. ..................................... 22 
`The ’777 Patent Does Not Anticipate Claim 1................................... 24 
`1. 
`The ’777 Patent’s alleged “fork elevation section” does not
`itself move the fork. ................................................................. 24 
`The ’777 Patent’s alleged “fork elevation section” is
`vertically-movable. .................................................................. 27 
`The ’809 Publication in View of the ’777 Patent Does Not Render
`Claim 1 Obvious ................................................................................. 29 
`1. 
`The ’809 Publication and the ’777 Patent do not disclose
`the “fork elevation section” of Claim 1. .................................. 30 
`
`B. 
`
`B. 
`
`C. 
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`Case IPR2015-10538
`Patent 6,113,341
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`2. 
`
`The ’809 Publication teaches away from the ’777 Patent. ...... 30
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`a. The inventors of the '809 Publication considered and decided
` against extending the travel of a prior art stacker crane…...31
`
`b. The inventors of the '809 Publication adopted a lighter,
` smaller ceiling motorized vehicle.…....................................32
`
`c. Crane F from the '777 Patent is a heavy stacker crane, just
` like the one disparaged in the '809 Publication…................33
`
`3. 
`
`Petitioners have otherwise failed to carry their burden of
`proving Claim 1 would have been obvious. ............................ 36
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`a. Petitioners have not been clear………………………..…...37
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`b. The elements of the '777 Patent and the '809 Publication are
` very different both structurally and functionally................. 41
`
`c. Petitioners have provided no rational basis for modifying the
` '809 Publication system with elements of the '777 Patent....45
`
`d. The proposed modification would render the system of the
` '809 Publication inoperable for its intended purpose............48
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`VI.  CONCLUSION ............................................................................................. 52 
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`TABLE OF AUTHORITIES
`
`Case IPR2015-10538
`Patent 6,113,341
`
` Page(s)
`
`Cases
`
`Allscripts Healthcare Solutions, Inc. v. Uniloc Luxembourg S.A.,
`IPR2015-01615, slip op. (P.T.A.B. February 17, 2016) .................................... 26
`
`Atlantic Thermoplastics Co. v. Faytex Corp.,
`970 F.2d 834 (Fed. Cir. 1992) .............................................................................. 4
`
`Connell v. Sears, Roebuck & Co.,
`722 F.2d 1542 (Fed. Cir. 1983) .......................................................................... 16
`
`Daifuku Co., Ltd. et al v. Murata Machinery, Ltd.,
`IPR2015-01541, slip op. (P.T.A.B. Jan. 20, 2016) ............................................. 51
`
`Depuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
`567 F.3d 1314 (Fed. Cir. 2009) .......................................................................... 18
`
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) ................................................................................................ 17
`
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) ...................................................................... 17, 18
`
`Kingston Tech. Co., Inc. v. Imation Corp.,
`IPR2015-00066, slip op. (P.T.A.B. Mar. 19, 2016) ..................................... 26, 40
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ...................................................................................... 17, 18
`
`In re Man Machine Interface Techs. LLC,
`-- F.3d --, No. 2015-01562, slip op. at 6 (Fed. Cir. April 19, 2016) .................. 16
`
`McGinley v. Franklin Sports, Inc.,
`262 F.3d 1339 (Fed. Cir. 2001) .......................................................................... 36
`
`Microsoft Corp. v. Proxyconn, Inc.,
`789 F.3d 1292 (Fed. Cir. 2015) ............................................................................ 7
`
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`Case IPR2015-10538
`Patent 6,113,341
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`Monosol RX, LLC v. Arius Two, Inc.,
`IPR2014-00376, slip op. (P.T.A.B. Aug. 5, 2015) ............................................. 12
`
`Net MoneyIN, Inc. v. VeriSign, Inc.,
`545 F.3d 1359 (Fed. Cir. 2008) .................................................................... 16, 17
`
`Norman Int’l, Inc. v. Andrew J. Testamentary Trust,
`IPR2014-00283, slip op. (P.T.A.B. June 18, 2015) ...................................... 39, 51
`
`Ricoh Co., Ltd. v. Quanta Computer Inc.,
`550 F.3d 1325 (Fed. Cir. 2008) .......................................................................... 18
`
`Scotts Co. v. Encap, LLC,
`IPR 2013-00110, slip op. (PTAB Jun. 24, 2014) ............................................... 15
`
`United States v. Adams,
`383 U.S. 39 (1966) .............................................................................................. 18
`
`Verdagaal Bros., Inc. v. Union Oil Co.,
`814 F.2d 628 (Fed. Cir. 1987) ............................................................................ 16
`
`Rules and Statutes
`
`35 U.S.C. § 102 ........................................................................................................ 16
`
`35 U.S.C. § 103(a) ................................................................................................... 17
`
`35 U.S.C. § 312(a)(3) ......................................................................................... 26, 40
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`37 C.F.R. § 42.22(a)(2) ...................................................................................... 26, 40
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`37 C.F.R. § 42.104(b) ........................................................................................ 26, 40
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`Case IPR2015-10538
`Patent 6,113,341
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`TABLE OF EXHIBITS
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`Description
`No.
`2011 Annual Report of Daifuku Company, Limited
`2001
`2015 Annual Report of Daifuku Company, Limited
`2002
`2003 August 7, 2014 Press Release of Daifuku North America Holding
`Company
`2014–15 Directory of Corporate Counsel (2014)
`2004
`2005 Daifuku’s Corporate Disclosure Statement in Murata Machinery USA,
`Inc. v. Daifuku Co. LTD., et al., Civ. No. 2:13-cv-00866 (D. Utah Mar. 6,
`2014).
`Screenshot of Company Profiles, Daifuku: Always an Edge,
`http://daifukuna.com/About-Us/Company-Profiles (last visited Sept. 30,
`2015).
`Screenshot of Corporate Information, Daifuku: Always an Edge,
`http://www.daifuku.com/company/group/americas.html (last visited Sept.
`30, 2015)
`Screenshot of Daifuku: Always an Edge, http://daifukuna.com/ (last
`visited Sept. 30, 2015)
`Screenshot and sample posts from Daifuku North America,
`Facebook.com, https://www.facebook.com/DaifukuNA (last visited Sept.
`30, 2015)
`Screenshot from Daifuku North America, Twitter.com,
`https://twitter.com/search?q=Daifuku%20North%20America&src=typd
`(last visited Sept. 30, 2015)
`2011 May 19, 2014 Press Release of Daifuku North America Holding
`Company
`February 12, 2015 Press Release of Daifuku North America Holding
`Company
`2013 April 10, 2015 Press Release of Daifuku North America Holding
`Company
`2014 Daifuku America Corporation’s 2015 Michigan Foreign Corporation
`Information Update filing
`
`2012
`
`36186795.1
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`Case IPR2015-10538
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`2018
`
`2019
`
`2015 Daifuku America Corporation’s 2015 Mississippi Corporate Annual
`Report filing
`2016 Daifuku North America Holding Company’s 2014 Michigan Foreign
`Corporation Information Update filing
`2017 Daifuku America Corporation’s 2014 Mississippi Corporate Annual
`Report filing
`Screenshot of Timothy Veeser, LinkedIn.com,
`https://www.linkedin.com/in/timveeser (last visited Sept. 30, 2015)
`Excerpts from Webster’s Comprehensive Dictionary of the English
`Language (1985)
`Screenshot from Daifuku North America Holding Company’s Resource
`Library, http://daifukuna.com/Resource-Library/Case-Studies (last visited
`Oct. 20, 2015)
`2021 April 28, 2011 Press Release of Daifuku North America Holding
`Company,
`http://archive.freep.com/article/20110428/BUSINESS06/104280433/Peop
`le-making-news (last visited Oct. 20, 2015)
`2022 Declaration of Dr. Wilmer R. Bottoms, Ph.D.
`2023
`Excerpts from WEBSTER’S THIRD NEW INTERNATIONAL DICTIONARY OF
`THE ENGLISH LANGUAGE UNABRIDGED (1986)
`Transcript of April 22, 2016 Deposition Testimony of Dr. Robert Sturges,
`Ph.D.
`2025 U.S. Patent No. 5,570,990
`2026 U.S. Patent No. 4,526,502 (the “’502 Patent”)
`2027
`’502 Patent Assignment record
`2028
`Corporate Profile of Murata Machinery, Ltd.
`2029 Declaration of Mark T. Garrett
`
`2020
`
`2024
`
`
`
`36186795.1
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`Case IPR2015-10538
`Patent 6,113,341
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`I.
`
`INTRODUCTION
`
`Petitioners have not carried their burden of proving unpatentability of Claim
`
`1 of U.S. Patent No. 6,113,341 (the “’341 Patent”) under either ground instituted
`
`by the Board. Petitioners’ first proposed ground—anticipation by U.S. Patent No.
`
`3,863,777 (the “’777 Patent”)—fails because (1) elevating frame 110 of the ’777
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`Patent (the alleged “fork elevation section”) cannot itself raise and lower fork 134
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`of the ’777 Patent (the alleged “fork”), as the claim requires, and (2) the broadest
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`reasonable interpretation of the claimed “fork elevation section” is one that
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`excludes vertically-movable fork elevation sections, such as elevating frame 110.
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`Petitioners’ second proposed ground—obviousness based on Japanese
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`Publication No. 63-242809 (the “’809 Publication”) in combination with the ’777
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`Patent—fails because (1) neither reference, even when considered together,
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`discloses the claimed fork elevation section, (2) the ’809 Publication teaches away
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`from the stacker crane of the ’777 Patent on which Petitioners rely, and (3) there is
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`otherwise no logical basis for combining the references, considering, for example,
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`that the proposed combination would not retain the functionality of the existing
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`system of the ’809 Publication. For each of these independent reasons and as
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`explained in greater detail below, the Board should find Claim 1 of the ’341 Patent
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`patentable over the instituted grounds.
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`1
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`II. OVERVIEW OF THE ’341 PATENT
`The ’341 Patent describes an automated material handling system (AMHS)
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`including an overhead rail and a fork-type vehicle that is suspended from and
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`travels along the rail. Ex. 1001 at 3:21–25; 3:35–40; FIG. 2. The fork-type vehicle
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`described in the ’341 Patent is referred to as a tracking cart. The tracking cart
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`includes a loading means for loading and unloading a workpiece. Id. at FIG. 2;
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`3:57–58; Claim 1. The loading means includes a fork elevating section 54 and a
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`fork 56 attached to the fork elevating section 54. Id. at 3:57–4:17; FIG. 2. The fork
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`elevating section 54 moves forward and backward in a direction nearly
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`perpendicular to the rail 8, and thus towards and away from workpiece 20. Id. at
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`3:58–62. For example, as shown in the annotated version of Figure 2 included
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`below, fork elevating section 54 moves between positions A and B.
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`2
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`In order to grip and load the workpiece 20, the fork 56 is lowered and raised
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`by the fork elevating section 54 so that the fork 56 grips a handle 62 of the
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`workpiece 20. Id. at 4:11–22; Claim 1. For example, in the embodiment
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`illustrated in annotated Figure 2 above, the fork elevating section 54 includes a ball
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`screw 58 and a servo motor 60 that are used to raise and lower the fork 56. Id. at
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`4:11–13; FIG. 2. One of the advantages of this configuration is that “only the
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`fork . . . is elevated and lowered instead of moving the entire loading means,
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`thereby enabling a small, light fork elevating section to be used and loading times
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`to be decreased.” Id. at 2:44-48.
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`III. CLAIM CONSTRUCTION1
`Petitioners correctly proposed construing the claimed loading means as not
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`being subject to Section 112, ¶ 6 because the claim recites sufficient structure to
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`accomplish the claimed functions. See also Institution Decision at 14. Petitioners
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`also correctly explained (and their expert confirmed at his deposition) that the
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`claimed fork elevation section—and not some other structure—is the structure
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`responsible for causing the raising and lowering of the claimed fork. However,
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`1 Given the differing claim construction standards in inter partes review
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`proceedings and district court proceedings, Murata does not suggest or concede
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`that the claim constructions applicable in this proceeding are the correct ones for
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`the ongoing litigation involving the ’184 Patent. See, e.g., Atlantic Thermoplastics
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`Co. v. Faytex Corp., 970 F.2d 834, 846 (Fed. Cir. 1992) (explaining that the
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`“broadest reasonable meaning” of a claim is different from the claim construction
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`applicable in litigation).
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`Petitioners failed to address the disclaimers in the specification and prosecution
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`history of the ’341 Patent that compel a broadest reasonable interpretation (“BRI”)
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`for the claimed fork elevation section that excludes vertically-movable fork
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`elevation sections. The term “fork elevation section” should therefore be
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`construed as a fork elevation section that (1) itself moves the fork, and (2) is not
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`vertically-movable.
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`A. The Claimed “Fork Elevation Section” Raises and Lowers the
`Claimed Fork.
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`The “wherein” clause of Claim 1 recites, “wherein said loading means
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`includes a fork elevation section which moves forward and backward nearly
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`perpendicularly to said traveling rail and a fork mounted on said fork elevation
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`section so as to be lowered and raised by said fork elevation section.” Ex. 1001 at
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`6:16-20 (emphasis added). The preposition “by” in this clause requires the fork
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`elevation section to itself be the structure that causes the lowering and raising of
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`the fork, as opposed to being a passive structure through which movement of the
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`fork is accomplished by another structure. See Ex. 2023 (defining “by” as “4a:
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`through the means or instrumentality of . . . d: through the work or operation
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`of . . . .”). Petitioners’ expert, Dr. Sturges, agrees, correctly explaining in his
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`declaration that the function of lowering and raising the fork “is performed,
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`according to the claim, by the ‘fork elevation section.’” Ex. 1006 at ¶ 32
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`(underlining in original); see Petition at 12. In his deposition, Dr. Sturges also
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`confirmed his understanding that the claim requires the fork elevation section to
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`itself be the structure that causes the lowering and raising of the fork. Ex. 2024 at
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`94:6-19 (agreeing that the claimed fork elevation section is the structure
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`responsible for raising and lowering the claimed fork, and that the “mechanisms
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`that actually raise and lower the fork” are “part of the fork elevation section”).
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`Moreover, if the fork elevation section were not the structure that actually moved
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`the fork, then the fork elevation section would be insufficient, in combination with
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`the fork, to accomplish the functions of the claimed loading means, and
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`Petitioners’ contention that the claimed loading means (of which the claimed fork
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`elevation and fork are the structural parts) is not subject to means-plus-function
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`treatment would lack support.
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`This BRI of the fork elevation section as the structure that causes the
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`lowering and raising of the fork is supported by the specification. The only
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`embodiments of the claimed fork elevation section—fork elevating sections 54
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`shown in FIGs. 1-3—cause the lowering and raising of fork 56 via the ball screw
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`58 (to which fork 56 is connected) and servo motor 60 of fork elevating sections
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`54. Ex. 1001 at 4:11-14, 4:33-36, FIG. 1-3; Institution Decision at 19; see also Ex.
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`2024 at 94:6-19.
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`Thus, according to the claim, the specification, and Petitioners, the term
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`“fork elevation section” should be construed to require that the fork elevation
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`section move the fork itself.
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`B.
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`The Claimed “Fork Elevation Section” Excludes Vertically-
`Movable Fork Elevation Sections.
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`While the Board applies the BRI of a claim during IPR proceedings, “the
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`Board may [not] construe claims during IPR so broadly that its constructions are
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`unreasonable under general claim construction principles.” See Microsoft Corp. v.
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`Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015). Here, both the
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`specification and the prosecution history contain statements of clear disavowal that
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`compel a BRI of the claimed fork elevation section that excludes coverage of
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`vertically-movable fork elevation sections.
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`1.
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`The specification characterizes loading means that lack
`vertically-movable
`fork
`elevation
`sections
`as
`the
`“invention.”
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`In SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., the Federal
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`Circuit explained that “[w]here the specification makes clear that the invention
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`does not include a particular feature, that feature is deemed to be outside the reach
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`of the claims of the patent, even though the language of the claims, read without
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`reference to the specification, might be considered broad enough to encompass the
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`feature in question.” 242 F.3d 1337, 1341 (Fed. Cir. 2001). In SciMed, the court
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`construed the claimed catheters as excluding those with a dual lumen configuration
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`(and, thus, as requiring a coaxial lumen configuration) based on statements
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`Patent 6,113,341
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`distinguishing such a dual lumen configuration in the
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`prior art and statements touting the advantages of the
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`coaxial lumen configuration as part of the “present
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`invention.”
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` 242 F.3d at 1342-45.
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` Here,
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`the
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`specification of the ’341 Patent includes both types of
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`statements, which compel a construction of the claimed
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`“fork elevation section”
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`that excludes vertically-
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`movable fork elevation sections.
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`First, the BACKGROUND OF THE INVENTION section discusses a prior
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`art tracking cart system shown in FIG. 6 (to the right) that includes a hoisting unit
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`12 suspended from an overhead traveling rail 8. Ex. 1001 at 1:10-29. Hoisting
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`unit 12 “elevates and lowers a hand 14 [rather than a fork] via a belt 16” to pick up
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`a load 20 from a loading station 18. Id. at 1:17-21. The BACKGROUND explains
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`that, when loading station 18 is located “at height,” the system “enables fast
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`loading.” Id. at 1:22-25. However, the BACKGROUND also explains that, when
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`loading station 18 is located, for example, as low as a person’s waist, “the hand 14
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`must travel some [vertical] distance from the ceiling area [to the loading station],
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`thereby increasing both loading times and the size of the hoisting unit 12.” Id. at
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`1:25-29 (emphasis added). In other words, this explanation expresses the
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`disadvantages of vertically-movable loading means: increased loading times and
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`increased size. See SciMed Life Sys., 241 F.3d at 1342.
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`Later in the same section, the specification explains that an “objective of the
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`present invention” is “to enable fast loading using a simple configuration.” Id. at
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`1:53-54; see SciMed Life Sys., 241 F.3d at 1343 (noting “present invention”
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`language associated with expression of advantages). In the SUMMARY OF THE
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`INVENTION section, the specification again uses “present invention” language to
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`tout an advantage of the inventive system over the prior art system that was earlier
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`disparaged due to its longer loading time:
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`Furthermore, according to the present invention, the loading means
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`moves within a near horizontal plane, so no time is required to elevate
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`or lower the loading means, thereby reducing loading times compared
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`to a loading means that must travel from an overhead traveling cart
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`body.
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`Id. at 2:27-31. Petitioners’ expert confirms that the travel that is being
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`distinguished is vertical travel, and that the lack of time required to elevate or
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`lower the referenced loading means could not be accomplished if the fork
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`elevating section thereof was vertically-movable. Ex. 2024 at 93:10-94:5.
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`The SUMMARY section further provides that “[a]ccording to another aspect
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`of the present invention,2 the fork elevating section moves forward and backward
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`nearly perpendicularly to the traveling rail” and that “[o]nly the fork . . . is
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`elevated and lowered, instead of the entire loading means, thereby enabling a
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`small, light fork elevating section to be used and loading times to be decreased.”
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`Id. at 2:36-48 (emphasis added). This explanation stresses the nature of the
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`invention—a loading means in which only the fork moves vertically (and, thus, the
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`fork elevating section does not move vertically)—and emphasizes the resulting
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`advantages (small, light fork elevating section and decreased loading times) that
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`directly overcome the disadvantages mentioned earlier in the BACKGROUND
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`(increased size of hoist unit 12 and increased loading times). See SciMed Life Sys.,
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`241 F.3d at 1344.
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`Consistent with the SUMMARY section, all of the embodiments of the fork
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`elevation section disclosed in the specification (which are those shown in FIGs. 1-
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`3) are depicted and described as raising and lowering their respective forks without
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`2 The ’341 Patent recites other “aspects of the present invention” directed to
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`different objectives. All aspects of the invention directed to the objective of “fast
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`loading using a simple configuration” require a fork elevation section that is not
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`vertically-movable, as described in this section.
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`vertical movement, in order to provide brief loading times. See id. at 4:11-22
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`(explaining that, in the FIG. 1 and 2 embodiment, “only the fork 56 must be moved
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`up or down slightly” and stressing that fork elevating section 54 enables “only a
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`very short time is required to elevate and lower the fork 56 relative to the time
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`required to raise and lower a[] loading means to and from the overhead traveling
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`cart”) and 4:50-52 (explaining that, in the FIG. 3 embodiment, “[l]oading
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`time . . . is brief”). Such loading times are brief due to the short vertical travel of
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`fork 56 and the inability of fork elevating section 54 to move vertically, as
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`Petitioners’ expert concedes. See Ex. 2024 at 92:22-93:4 (“I don’t believe there is
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`any other teaching in 341 about the mechanism that does the lifting to do any more
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`than move laterally.”). And, consistent with the objective of fast loading times, all
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`of the vertical movements of the fork—the only vertical movement mentioned in
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`the ’341 Patent—are described as “slight” or “short.” See id. at 2:41-44 (“[T]he
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`fork must be slightly lowered . . . and then slightly raised.”), 4:14-17 (“the fork
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`must be moved up and down slightly”), 4:17-22 (“[the fork’s] vertical stroke is
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`short and only a very short time is required to elevate and lower the fork 56”),
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`4:48-50 (“the fork 56 is lifted slightly”), 4:50-52 (“Loading time depends [in part]
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`on . . . the slight elevation of the fork 56, but is brief.”), 4:53-57 (“the fork 56 is
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`slightly elevated . . . and the fork 56 is slightly lowered”), and 6:2-7 (use of a loop
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`for the rail configuration “requires the fork 56 to be moved only slightly up and
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`down”).
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`If the fork elevating section were vertically-movable, it would not
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`accomplish the fast-loading-using-a-simple-configuration objective expressed in
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`the BACKGROUND. Nor would it accomplish the purpose alleged by Petitioners’
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`expert “to provide an alleged improvement over the prior art systems, relating to
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`height (vertical location) of traveling rail 8 relative to the ceiling 6 and floor 4.”
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`Ex. 1006 at ¶ 19. In particular, Petitioners’ expert states that the ’341 Patent
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`purports to accomplish this improvement, in part, by placing the traveling rail 8
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`“about 1.7 to 2 m from the floor surface” so that “the vertical stroke of a fork 56 is
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`‘short and only a very short time is required to elevate and lower [it].’” Id.
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`However, in Petitioners’ expert’s deposition, he admitted that such a short vertical
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`stroke would not necessarily occur if the fork elevating section 54 were vertically-
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`movable. Ex. 2024 at 97:2-13.
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`Based on the “present invention” statements in the specification of the ’341
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`Patent, the specification’s disclosure of only fork elevating sections that are not
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`vertically-movable, and the Petitioners’ expert’s concessions, the claimed fork
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`elevation sections should be construed to exclude vertically-movable fork elevation
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`sections. See Monosol RX, LLC v. Arius Two, Inc., IPR2014-00376, slip op. at 10-
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`12 (Paper 45) (P.T.A.B. Aug. 5, 2015).
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`2.
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`The prosecution history includes the same disclaimer of
`vertically-movable fork elevation sections.
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`The prosecution history also includes a disclaimer of vertically-movable fork
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`elevation sections. During prosecution, the claim that issued as Claim 1 was
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`rejected as unpatentable over U.S. Patent No. 5,570,990 (“Bonora” – Ex. 2025) in
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`combination with U.S. Patent No. 5,429,642 (“Ohkuma”). See Exhibit 1007 at 21
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`and 65-66. The examiner cited Bonora as disclosing the claimed “loading means.”
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`Id. at 67 (“Bonora et al, disclose . . . [a] lift fork #364.”).
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`In its response to this rejection, the applicant amended Claim 1 to include
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`the claimed “wherein” clause. Id. at 72. In explaining the amendment, the
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`applicant highlighted the language “fork mounted on said fork elevation section so
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`as to be lowered and raised by said fork elevation section” and stated that this
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`highlighted language was added “[i]n order to attain the object” of “provid[ing] a
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`tracking cart system which enables fast loading using a simple configuration.” Id.
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`at 74. In addition, the applicant stressed that this language meant that:
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`[I]n the present invention, only the fork is lowered and raised, and
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`there are no further movement of the fork after the completion of the
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`loading. This results in a small, light fork elevating section and a
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`decreased loading time.
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`Id. at 75. This “present invention” characterization of the claim language at issue
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`mirrors the “present invention” characterization at lines 44-48 of column 2,
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`discussed above.
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`The applicant then argued that Bonora, in particular, failed to disclose the
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`claimed “loading means” because, as shown in FIG. 15 below, “[a]lthough Bonora
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`may disclose . . . a lift fork 364 (Fig. 15), the lift fork 364 is lowered and raised
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`together with the first and second arms 358, 360 via the shaft 356 attached to
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`vertical travel assembly 368, [which] results in a large, heavy fork elevating
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`section and an increased loading time.” Id. at 75 (emphasis in original). As shown
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`in Figure 15, Bonora’s system includes a linear travel assembly 370 [blue], which
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`most closely corresponds to the claimed traveling rail, a vertical travel assembly
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`368 [red], which most closely corresponds to the claimed tracking cart suspended
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`from the traveling rail, a lift fork 364 [purple], which most closely corresponds to
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`the claimed fork, and arms 358, 360 and shaft 356 [green], which most closely
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`correspond to the claimed fork elevation section (Ex. 2025 at 11:5-26); vertical
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`travel assembly 368 includes a motor and associated components that allow shaft
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`356 (and the arms and fork connected to it) to move up and down (id. at 11:20-23
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`(explaining that vertical travel assembly 368 is similar to support tube 125 shown
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`in FIGs. 4-6 and described at 6:21-22 and 6:51-7:15)):
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`
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`Ex. 2025 at FIG. 15 (color emphasis added). The applicant concluded by stating
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`that Bonora did not “teach or suggest the aforementioned specific features of the
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`present invention.” Ex. 1007 at 75. The examiner then issued a Notice of
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`Allowance. Id. at 77-78.
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`Construing the claimed loading means to cover vertically-movable fork
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`elevation sections (like the one highlighted in green above) would improperly
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`eliminate the disclaimer of Bonora’s system that the applicant made during
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`prosecution. See Scotts Co. v. Encap, LLC, IPR 2013-00110, slip op. at 15-16
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`(Paper 79) (PTAB Jun. 24, 2014) (rejecting petitioner’s claim construction because
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`it contravened an amendment made during prosecution that distinguished prior art,
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`and noting: “The disavowal of claim scope is clear.”); In re Man Machine
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`Interface Techs. LLC, -- F.3d --, No. 2015-01562, slip op. at 6 (Fed. Cir. April 19,
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`2016) (“The broadest reasonable interpretation of a claim term cannot be so broad
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`as to include a configuration expressly disclaimed.”).
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`Taken together, the ’341 Patent specification and prosecution history
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`manifestly disclaim vertically-movable fork elevation sections. The fork elevation
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`section of Claim 1 should be construed accordingly.
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`IV. LEGAL PRINCIPLES
`“A claim is anticipated only if each and every element as set forth in the
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`claim is found, either expressly or inherently described, in a single prior art
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`reference.” Verdagaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir.
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`1987). “Because the hallmark of anticipation is prior invention, the prior art
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`reference—in order to anticipate under 35 U.S.C. § 102—must not only disclose
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`all elements of the claim within the four corners of the document, but must also
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`disclose those elements ‘arranged as in the claim.’” Net MoneyIN, Inc. v. VeriSign,
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`Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (quoting Connell v. Sears, Roebuck &
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`Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)). “[D]ifferences between the prior art
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`reference and a claimed invention, however slight, invoke the question of
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`obviousness, not anticipation.” Net MoneyIN, 545 F.3d at 1371.
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`Patented subject matter is obvious “if the differences between the subject
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`matter sought to be patented and the prior art are such that the subject matter as a
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`whole would have been obvious at the time the invention was made to a person
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`havi