Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 38
`Entered: May 10, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`THE TORO COMPANY
`Petitioner,
`
`v.
`
`MTD PRODUCTS INC.,
`Patent Owner.
`_______________
`
`Case IPR2016-00219
`Patent 8,136,613
`_______________
`
`
`
`Before WILLIAM V. SAINDON, RICHARD E. RICE, and
`TIMOTHY J. GOODSON, Administrative Patent Judges.
`
`
`
`SAINDON, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`
`Finding the Sole Challenged Claim Unpatentable
`35 U.S.C. § 318(a); 37 C.F.R. § 42.73
`Denying Patent Owner’s Motion to Exclude Evidence
`37 C.F.R. § 42.64
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 38
`Entered: May 10, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`THE TORO COMPANY
`Petitioner,
`
`v.
`
`MTD PRODUCTS INC.,
`Patent Owner.
`_______________
`
`Case IPR2016-00219
`Patent 8,136,613
`_______________
`
`
`
`Before WILLIAM V. SAINDON, RICHARD E. RICE, and
`TIMOTHY J. GOODSON, Administrative Patent Judges.
`
`
`
`SAINDON, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`
`Finding the Sole Challenged Claim Unpatentable
`35 U.S.C. § 318(a); 37 C.F.R. § 42.73
`Denying Patent Owner’s Motion to Exclude Evidence
`37 C.F.R. § 42.64
`
`
`
`
`
`
`
`
`
`IPR2016-00219
`Patent 8,136,613
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`
`I. INTRODUCTION
`
`We have jurisdiction under 35 U.S.C. § 6. We enter this Final Written
`Decision pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`With respect to the grounds asserted in this trial, we have considered
`the papers submitted by the parties and the evidence cited therein. For the
`reasons discussed below, we determine that Petitioner has shown, by a
`preponderance of the evidence, that claim 28 of U.S. Patent No. 8,136,613
`(Ex. 1001, “the ’613 patent”) is unpatentable. We also deny Patent Owner’s
`Motion to Exclude Evidence.
`
`A. Procedural History
`Petitioner requested an inter partes review of claim 28 of the ’613
`patent. Paper 1 (“Pet.”). Patent Owner filed a Preliminary Response to the
`Petition. Paper 7 (“Prelim. Resp.”). Upon consideration of the Petition and
`Patent Owner’s Preliminary Response, we instituted a trial on the challenged
`claim on one of the two asserted grounds. Paper 10 (“Dec. on Inst.”).
`During the trial, Patent Owner filed its Response (Paper 14, “PO
`Resp.”), and Petitioner filed its Reply (Paper 18, “Pet. Reply”). We also
`permitted Patent Owner to file a Sur-Reply (Paper 22, “Sur-Reply”) and
`Petitioner to file a Sur-Sur-Reply (Paper 31, “Sur-Sur Reply”). An oral
`hearing was held. Paper 37 (“Tr.”).
`
`B. Related Matters
`The parties represent that the ’613 patent is asserted in MTD Products
`Inc. v. Toro Company et al., 1:15-cv-00766-PAG (N.D. Ohio). Pet. 1; Paper
`6, 2. Petitioner also has filed a petition challenging Patent Owner’s U.S.
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`Patent No. 8,011,458 (IPR2016-00194). Patent Owner identifies U.S. Patent
`No. 8,944,191 as a related patent and U.S. Patent App. No. 14/613,102 as a
`related application. Paper 6, 2.
`
`C. The ’613 Patent
`The ’613 patent is directed to a steering and driving system. Ex.
`
`1001, Abstract. In particular, the patent is directed to the steering systems of
`Zero Turn Radius (ZTR) lawn mowers. Id. at 1:6–14; 4:39–40. Figure 5 of
`the ’613 patent, reproduced below with color added and extraneous labeling
`removed by the Board, depicts this steering system:
`
`
`Figure 5 of the ’613 patent shows speed control device 28 (in orange), left
`and right speed input members 48 (in orange), left and right control
`members 36 (item numbers not shown, colored in green), left and right
`integration links 44 and control rods 104 (in blue), and left and right drive
`units 29 (in yellow). Control rods 104 are connected to drive units 29 in a
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`manner such that the distance of the rod fore or aft of a neutral position
`causes the output of the corresponding drive unit to spin the wheel forward
`or backward with increasing speed. See Ex. 1001, 9:32–44; Fig. 14.
`Integration links 44 serve to integrate both speed control as well as steering
`control. See, e.g., id. at 9:57–10:21 (explaining how the linkages work as
`the vehicle is operated from straight forward movement to left forward
`movement). Although the vehicle may include steerable wheels, turning can
`also be facilitated by spinning the outside wheel faster than the inside wheel
`(relative to the radius of the turn). See, e.g., id. at 10:8–21. To do this,
`integration links 44 are connected in a manner such as to respond to forward
`and reverse speed inputs from speed input members 48 as well as steering
`inputs from control members 36. See, e.g., id. at 10:22–35 (providing an
`example of how the various components interact to make a full forward left
`turn), Fig. 9 (cited in this example); see also Figs. 5–13 (showing how the
`various components interact to make each forward/reverse/neutral and
`left/right/straight permutation).
`
`D. Challenged Claim
`Petitioner challenges claim 28, which is reproduced below.
`28. A vehicle control system comprising:
`a pair of integration links, each integration link having
`a slot that is straight over substantially all of the
`length of the slot, and each integration link being
`movable in response to a speed input and configured
`to:
`
`lie in a plane parallel to any flat surface on which
`a vehicle that incorporates the steering control
`system is used; and
`
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`transmit a drive signal that is a product of any
`
`received steering input and any received speed
`input.
`
`
`
`
`
`E. Prior Art and Instituted Grounds
`We granted an inter partes review of the ’613 patent on the question
`of whether claim 28 is anticipated by Seaberg.1 Petitioner relies on the
`declaration of Fred P. Smith, a Professional Engineer with a background in
`mechanical engineering. Ex. 1004 ¶ 4.
`
`II. PATENT OWNER’S MOTION TO EXCLUDE
`
`Patent Owner moved to exclude Exhibits 1004 and 1025, the
`declarations of Petitioner’s expert, Mr. Fred Smith. Paper 25 (“Mot.”).
`Petitioner filed its Opposition (Paper 29), and Patent Owner filed its Reply
`(Paper 32).
`Patent Owner’s Motion argues that Mr. Smith is not qualified to
`testify as an expert in the relevant art. Patent Owner asserts that the
`“pertinent art” is “vehicle control systems.” Mot. 2. Patent Owner relies on
`the testimony of its expert, Dr. Steven A. Velinsky, in support of its
`assertion of the pertinent art. Dr. Velinsky testifies, however, that the person
`of ordinary skill in the art would have “specific knowledge and experience
`in vehicle design to allow understanding of the requirements of the
`mechanism for vehicle power and steering control.” Id. ¶ 24 (emphasis
`added). Accordingly, Patent Owner’s assertion of the pertinent art is
`undermined by its own expert. That is, Dr. Velinsky’s testimony indicates
`
`
`1 U.S. Patent No. 4,100,738, issued July 18, 1978 (Ex. 1002).
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`that knowledge allowing an understanding of vehicle control is sufficient.
`We are not convinced that experience specifically directed to vehicle control
`systems is necessary to qualify as a person of ordinary skill in the art. The
`remainder of this part of Patent Owner’s Motion focuses on measuring Mr.
`Smith to the wrong standard, and is unpersuasive.
`Instead, we find that Mr. Smith is sufficiently qualified by his
`experience and education to testify as an expert in this proceeding. In
`determining who is “qualified in the pertinent art” under Federal Rule of
`Evidence (“FRE”) 702, we need not find a complete overlap between the
`witness’s technical qualifications and the problem confronting the inventor
`or the field of endeavor for a witness to qualify as an expert. SEB S.A. v.
`Montgomery Ward & Co., 594 F.3d 1360, 1372–73 (Fed. Cir.
`2010) (upholding admission of the testimony of an expert who admittedly
`lacked expertise in the design of the patented invention, but had experience
`with materials selected for use in the invention); Mytee Prods., Inc. v. Harris
`Research, Inc., 439 F. App’x 882, 886–87 (Fed. Cir. 2011)
`(non-precedential) (upholding admission of the testimony of an expert who
`“had experience relevant to the field of the invention,” despite admission
`that he was not a person of ordinary skill in the art). Mr. Smith has
`experience in vehicle design, and has provided photographs of vehicles that
`he has helped design. See Ex. 1004, 62–63. Although Mr. Smith’s expertise
`is mostly focused on linkages not related to steering, the relevant field here
`is vehicle systems, as agreed by Patent Owner’s expert Dr. Velinsky and Mr.
`Smith. Ex. 2016 ¶ 24; Ex. 1004 ¶ 20. Once having demonstrated
`knowledge and experience in vehicle systems design, in combination with an
`engineering degree, we see little additional experience or knowledge
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`required for a person to have “specific knowledge and experience in vehicle
`design to allow understanding of the requirements of the mechanism for
`vehicle power and steering control.” Ex. 2016 ¶ 24 (emphasis added).
`Accordingly, we deny Patent Owner’s Motion to exclude Mr. Smith’s
`testimony on this basis.
`Patent Owner also moves to exclude Mr. Smith’s testimony on the
`theory that he offers “improper attorney argument.” Mot. 6–7. To the
`extent any expert testifies as to patent law, we do not consider it. 37 C.F.R.
`§ 42.65(a) (“Testimony on United States patent law or patent examination
`practice will not be admitted.”). Mr. Smith’s testimony is generally offered
`as an expert factual witness, not as a legal witness. As such, we see little
`reason to spend the resources to decide whether some of his testimony on
`particular claim language, for example, strays from factual opinion to legal
`opinion—issues of claim construction are a mixture of the two. See Teva
`Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 838 (2015) (“While we
`held in Markman that the ultimate issue of the proper construction of a claim
`should be treated as a question of law, we also recognized that in patent
`construction, subsidiary factfinding is sometimes necessary.”). Patent
`Owner’s Motion to exclude Mr. Smith’s testimony on this basis is denied.
`Patent Owner next argues that Petitioner submitted belated evidence
`in its Reply. Mot. 8–12. Patent Owner argues that “Petitioner cannot submit
`additional, belated evidence in its Reply that supports its Petition if it could
`have been presented in a prior filing.” Id. at 8 (citing 37 C.F.R. § 42.23).
`This statement of the law is wrong. Our Rule instead states that “[a] reply
`may only respond to arguments raised in the corresponding . . . patent owner
`response.” 37 C.F.R. § 42.23. The mere fact that a Reply presents evidence
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`that was not in the record previously does not make that evidence improper.
`See Genzyme Therapeutic Prods. Ltd. v. Biomarin Pharm. Inc., 825 F.3d
`1360, 1367 (Fed. Cir. 2016) (“The purpose of the trial in an inter partes
`review proceeding is to give the parties an opportunity to build a record by
`introducing evidence—not simply to weigh evidence of which the Board is
`already aware.”).2 Patent Owner blurs “belated evidence” with reply
`evidence; not all evidence first submitted in a reply is belated. Furthermore,
`we permitted Patent Owner to file a Sur-Reply to address arguments raised
`by Petitioner in its Reply.
`Patent Owner next moves to exclude Exhibits 1026, 1027, and 1030–
`1035 as not relevant. Mot. 12–14. We do not rely on any of Exhibits 1026,
`1027, or 1030 in our analysis below; we deny Patent Owner’s Motion as
`moot as it applies to these exhibits. As to Exhibits 1031–1035, these
`exhibits are patents that Patent Owner alleges Petitioner use “in support of
`its claim that Seaberg discloses integration links that lie in a plane parallel to
`any flat surface.” Mot. 14. Patent Owner argues that these references are
`“irrelevant” because they “actually disclose a vehicle on the ground plane in
`contrast to Seaberg.” Id. Petitioner argues that these references are used to
`support Mr. Smith’s testimony as to how a person of ordinary skill in the art
`would understand the term “horizontal.” Opp. 13–14. We agree with
`Petitioner that these references are relevant to demonstrate how a person of
`ordinary skill in the art use the term “horizontal,” and how a person of
`
`
`2 The issue of whether a given patent owner should be afforded an
`opportunity to respond to the new evidence is a separate issue.
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`ordinary skill in the art would understand the Seaberg disclosure. Patent
`Owner’s motion as it applies to these exhibits is denied.
`Patent Owner lastly moves to exclude portions of Exhibit 1025 (Mr.
`Smith’s supplemental declaration) on the basis that Petitioner improperly
`incorporates it by reference. Mot. 15. As Patent Owner acknowledges, “the
`Board indicated that a motion to exclude is not ordinarily the proper vehicle
`to address improper incorporation by reference.” Id. at 15; see also Paper
`24. Indeed, we will address issues of incorporation on an argument-by-
`argument basis, as they come up in our analysis, and if we determine it to be
`a critical issue. To do otherwise would invite a quagmire of form over
`substance.
`
`III. PATENTABILITY ANALYSIS
`A. Claim Construction
`We interpret the claims of an unexpired patent using the broadest
`reasonable interpretation in light of the specification of the patent. 37 C.F.R.
`§ 42.100(b). Claim 28 of the ’613 patent includes a pair of a single
`structure, “a pair of integration links.” The remainder of the claim describes
`these integration links. The parties dispute what structure claim 28 requires
`of the integration links.
`In the Petition, Petitioner proposed a construction of the term
`“movable” in which Petitioner asserted each integration link is movable in
`response to a speed input, and that the claim does not preclude any particular
`type of movement. Pet. 14–15. Thus, according to Petitioner, “movable”
`includes movement parallel to the ground (horizontal movement) as well as
`movement relative to the ground (vertical movement).
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`In its Preliminary Response, Patent Owner disputed Petitioner’s
`proposed construction, focusing on the “configured to” language. Prelim.
`Resp. 10–26. Patent Owner argued that the claim requires that both the “lie
`in a plane” and “transmit a drive signal” elements of the “configured to”
`clause must happen both “simultaneously” and “during use” according to the
`claim language itself. Id. at 12–15. In effect, Patent Owner argued that “lie
`in a plane” constrained the “movable” limitation such as to define the
`movement to be in the plane only.
`In our Decision on Institution, we determined that the critical term to
`construe was “lie in a plane,” and we determined that, although the parties
`were arguing about different portions of the claim, they were essentially
`arguing over the meaning of this term. Dec. on Inst. 6–7. For the purposes
`of our Decision on Institution, we agreed with Petitioner that “movable”
`means “movable in any direction” and that an integration link “configured to
`lie in a plane” must be configured to lie in that plane but need not reside in
`that plane at all times.
`During the trial, the parties offered their constructions of the
`“moveable” and “configured to lie in a plane” language that we construed in
`our Decision on Institution. Patent Owner proposes that “configured to lie in
`a plane” requires the integration links to move in a plane. PO Resp. 29
`(offering the heading “Claim 28 Requires that Each Integration Link Move
`in a Specified Plane”); see also id. at 27–44 (setting forth the entire
`argument). Petitioner proposes that the claim requires the integration links
`to be moveable and to lie in a plane at some point in their use. Pet. Reply 6
`(“[T]he claim still only describes the plane in which the integration links
`‘lie.’”); see also id. at 4–17.
`
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`
`Upon review of the parties’ arguments and the evidence of record, we
`determine Petitioner’s construction is commensurate with the broadest
`reasonable interpretation in light of the specification, and that the claim
`requires the integration links to be moveable and to be configured to lie in a
`plane. We first review the claim language itself, the claim language in view
`of other claims, the claim language in view of the specification, and then the
`claim language in view of the prosecution history.
`
`1. Claim Language Itself
`Patent Owner argues that the language of claim 28 itself provides
`clear meaning. PO Resp. 30–34. Patent Owner argues that the phrase
`“configured to” means that the structure is “made to” or “designed to” do
`something. Id. at 30–32. Patent Owner argues that that means “the claims
`do not encompass designs where the integration links are merely capable of
`existing, at some point in time, in a plane parallel to a flat surface upon
`which the vehicle is used.” Id. at 32. Patent Owner argues that such a
`construction “would appear to render the entire limitation superfluous.” Id.
`Patent Owner argues that “there would be no reason to claim a specific
`orientation (parallel to the ground) that applies only when the links are
`stationary and non-functioning.” Id. at 34. Patent Owner also argues that
`the “configured to” clause applies to a “vehicle that is transmitting a drive
`signal and is not idle.” Id. at 34 (emphasis omitted). According to Patent
`Owner, this means that the links must move in the plane parallel to the
`surface on which the vehicle is used. Id.
`Petitioner argues that nothing in the claim requires the integration
`links to move only, or to always stay, in a certain plane. Pet. Reply 4–8.
`
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`Petitioner argues that Patent Owner’s argument regarding “configured to”
`and “designed to” “fails to explain how this distinction makes a difference in
`the underlying analysis.” Id. at 5. Petitioner argues that regardless of the
`choice, “the claim still only describes the plane in which the integration links
`‘lie.’” Id. at 5–6. Petitioner argues that Patent Owner’s “use” argument
`“mistakenly equates ‘use’ with ‘[vehicle] movement.’” Id. at 6. Petitioner
`points out that the claim does not require the integration link to lie in a plane
`when a vehicle is moving, but rather when the vehicle is in use. Id.
`Petitioner asserts that a vehicle in use is not necessarily moving. Id. (citing
`Ex. 2016 ¶ 50); see also Dec. on Inst. 10 (finding that vehicles operating a
`scoop or arm are in use but not moving); Ex. 1004, 62–63 (showing vehicles
`that can be used when not moving); Ex. 1033, Fig. 1 (showing a tracked
`vehicle with a scoop). Petitioner also argues that Patent Owner is essentially
`arguing that both limitations following the colon must happen
`simultaneously, but that the claim imposes no such requirement, and that
`each limitation after the colon is separate because there is nothing that links
`them. Id. at 7–8.
`Petitioner has the stronger argument here. First, contrary to Patent
`Owner’s position, the claim does not require the integration links to move in
`a plane. The claim uses the broader term “lie.” Further, we do not see
`anything in the claim that requires the two elements following the colon
`after “configured to” to be performed at a certain time or simultaneously.
`The claim is not a method claim. Instead, the claim requires a certain
`structure for the integration links, and the two elements that follow the colon
`simply describe what those links are configured to do. Specifically, the
`elements after the colon require that the integration links are configured to
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`lie in a particular plane and to transmit a drive signal. While the claim is
`certainly broad enough to cover the configuration proposed by Patent
`Owner, where the integration link lies in a certain plane when it transmits a
`signal that causes the vehicle to move, we do not agree that there is language
`requiring all signals to be conveyed while the link is in that plane.
`Patent Owner is essentially rewriting the claim in one of two ways.
`The first is to rewrite “lie in a plane” to be “move in a plane,” but the claim
`uses the word lie not move. Patent Owner’s second rewrite of the claim is to
`say that the integration link is “movably configured to:” as opposed to
`“movable . . . and configured to:” (emphasis added). See Tr. 125:12–16
`(arguing the claim means “movabl[y] configured to lie in a plane”). This
`argument is also unpersuasive. Where the claim says that “each integration
`link being movable in response to a speed input and configured to:,” we read
`two separate limitations, separated by the conjunction “and.” The first
`limitation is that the link is “movable” in response to a speed input, and the
`second limitation is that the link is “configured to” meet certain additional
`requirements.
`As to Patent Owner’s argument that Petitioner’s interpretation of “lie
`in a plane” reads out the limitation, we disagree. The claim requires an
`integration link configured to lie in a certain plane. The claim precludes
`those integration links that are not configured to lie in the claimed plane.
`For example, as we discussed in our Decision to Institute, the integration
`link in Engel (Ex. 1003) is not configured to lie in the claimed plane because
`it is always vertically oriented, and in no instance is it parallel to any flat
`
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`surface on which the vehicle is used.3,4 Dec. on Inst. 10 (acknowledging
`Patent Owner’s argument in the Preliminary Response that Engel’s
`integration links are vertically-oriented and never lie in the claimed plane);
`id. at 15 (finding that “the orientation of [the integration link] in Engel [is]
`vertical”); id. at 16 (not instituting on the Engel ground). Accordingly,
`Petitioner’s interpretation does not render the “lie in a plane” phrase
`superfluous, and our Decision not to institute on the Engel ground
`demonstrates that Petitioner’s construction gives real meaning to the term in
`the context of this art. It precludes integration links that do not lie in the
`claimed plane, for example, any vertically-oriented integration link in the
`prior art like Engel.
`As to Patent Owner’s argument that Petitioner’s interpretation reads
`out the “is used” aspect of limitation, we disagree. See PO Resp. 34. Patent
`Owner presumes that in use means when the integration link is used in a
`certain way (e.g., when the vehicle is moving), but Patent Owner does not
`explain why such a narrow construction is proper. The claim limitation is
`more broadly directed to when the vehicle is used. This does not read out
`the “is used” aspect of the claim, because we agree with Petitioner that it is
`normal for vehicles to be used when they are not moving (e.g., when
`operating a scoop).
`
`
`3 Engle is U.S. Patent 3,927,527 (Ex. 1003). Engle was asserted by
`Petitioner in a single-reference obviousness ground in the Petition, which we
`denied.
`4 For example, the Engel vehicle tipped over on its side would have an
`integration link parallel to the ground, but then the vehicle would not satisfy
`the in use portion of the limitation.
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`Patent Owner’s argument that the phrase “configured to:” is narrower
`than the phrase “capable of” does not persuade us that Petitioner’s
`construction is improper. See PO Resp. 30–32. Even taking Patent Owner’s
`understanding that “configured to” means “designed or constructed,”
`Petitioner’s construction allows for this definition. See also Pet. Reply 5
`(arguing that “Patent Owner fails to explain how this distinction makes a
`difference in the underlying analysis”). Specifically, under Petitioner’s
`construction, an integration link that lies in the claimed plane is deliberately
`designed or constructed to do so, and is distinguished from an integration
`link that is not designed or constructed to lie in the claimed plane (such as
`Engle). Thus, the phrase “configured to” does not require the integration
`link to move in a plane, as Patent Owner argues.
`
`2. The claim in context with the other claims.
`Patent Owner argues that the other claims of the patent substantiate its
`position that the “configured to” clause of claim 28 should be construed to
`cover an integration link that moves parallel to any flat surface on which a
`vehicle is used. PO Resp. 34–36. Patent Owner points to independent claim
`30, which has an identical “configured to” clause, and additional limitations
`that describe control members having axes that are normal to any flat surface
`on which the vehicle is used. Id. at 35. As we understand it, Patent Owner’s
`argument is that this claimed configuration is the same as that shown in
`Figure 3 of the ’613 patent, in which the integration links depicted therein
`generally do move while captured in the claimed plane. But see, e.g., Pet.
`15–16 (asserting that the integration links would necessarily have some
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`degree of movement normal to the claimed plane). Patent Owner argues that
`Petitioner’s construction is “untenable in claim 30.” Id. at 36.
`Petitioner argues that nothing in claim 30 compels the “configured to”
`language of claims 28 and 30 to be construed to mean that the integration
`link only moves in a plane horizontal to the ground. Pet. Reply 15–16.
`We do not agree with Patent Owner that claim 30 constrains us to read
`claim 28 narrowly. In effect, Patent Owner is arguing that claim 30 recites
`additional features that mandate a particular interpretation of the integration
`links, and that we should retain that interpretation for claim 28, even though
`that claim does not have those features. In our view, this strengthens
`Petitioner’s position that the term is broader, because in order to claim the
`particular embodiment of Figure 3, Patent Owner needed to recite additional
`limitations. Petitioner’s interpretation is broad enough to include the Figure
`3 embodiment, such that there is no inconsistency in using Petitioner’s
`interpretation for both claims 28 and 30; the net result is that claim 28 is
`broader than claim 30, due to the additional limitations in claim 30.
`
`3. The claim in view of the specification.
`Patent Owner argues that the patent specification “consistently and
`pervasively discloses that each link moves in a plane parallel to any flat
`surface on which a vehicle is used.” PO Resp. 36–42. Patent Owner directs
`us to Figures 5–12, as well as a number of other pinpoint citations. Patent
`Owner also directs us to the testimony of its expert, Dr. Velinsky, who
`essentially repeats Patent Owner’s argument. Patent Owner’s argument and
`Dr. Velinsky’s testimony is that a person of ordinary skill in the art would
`consider the specification to disclose a “planar linkage.” Id. at 36–37; Ex.
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`
`2016 ¶¶ 31–34. Patent Owner argues that every embodiment in the
`specification supports its particular construction. Id. at 41–42.
`Petitioner argues that just because some portions of the specification
`describe lateral motion of the integration links, the specification does not
`foreclose the integration links moving in a vertical plane. Pet. Reply 14–15.
`Petitioner points out that the specification states “the present systems and
`devices are not intended to be limited to the particular forms disclosed.” Id.
`at 15 (citing Ex. 1001, 11:35–39). In addition, Petitioner argues that the
`specification teaches some amount of movement in a vertical plane. Pet.
`Reply 8–14. Petitioner’s argument is that, as shown in Figure 14, the
`connection of control mechanism 106 depicts an arcuate slot, which means
`that control mechanism 106 also moves around an arc, and then because the
`integration link is attached to the end point of control mechanism 106, it also
`moves around that arc. See id.
`Reviewing Patent Owner’s citations to the specification and figures,
`we do not find multiple embodiments, but rather a single embodiment. The
`specification tells us that the figures are all different views of the vehicle
`depicted in Figure 1. Ex. 1001, 3:36–4:5 (noting that each of Figures 2–14
`are a “view” “of the control and steering assemblies of the vehicle of FIG.
`1”). The corresponding discussion in the specification, therefore, is also
`discussing that single embodiment. The claim is broader than this
`embodiment, as there are no limitations that constrain the particular way the
`link moves and nothing inherent in the structure of the claimed link itself
`that requires it to move in a particular way. It is well settled that broad claim
`language should not be limited by embodiments in the specification, even if
`there is only a single embodiment. In re Bigio, 381 F.3d 1320, 1325 (Fed.
`
`17
`
`
`
`
`
`IPR2016-00219
`Patent 8,136,613
`
`Cir. 2004) (“[a]bsent claim language carrying a narrow meaning, the PTO
`should only limit the claim based on the specification or prosecution history
`when those sources expressly disclaim the broader definition.”); Liebel-
`Flarsheim Co. v. Medrad Inc., 358 F.3d 898, 906 (Fed. Cir. 2004)
`(discussing cases wherein the court expressly rejected the contention that if a
`patent describes only a single embodiment, the claims of the patent must be
`construed as being limited to that embodiment). Accordingly, we are not
`persuaded by Patent Owner’s argument that multiple embodiments describe
`the integration link in a manner that supports its proposed construction.
`In addition, we are persuaded by Petitioner’s argument that the
`specification instead discloses the integration link is not constrained to a
`particular plane. We credit the testimony of Petitioner’s expert, Mr. Smith,
`that a person of ordinary skill in the art would understand Figure 14 to show
`that the integration link in the single disclosed embodiment moves in the
`vertical plane. Ex. 1004 ¶¶ 43–45, 50; Ex. 1026 ¶¶ 29–42. We agree that a
`rigid body attached to the end point of the rotating control plate 106 would
`move in an arc; thus, the integration link would also move in an arc. Mr.
`Smith’s testimony is not speculative, but rather based on what is shown
`specifically in Figure 14. His testimony is also bolstered by what is shown
`in Figure 4, which shows control plate 106 attached to link 104. Ex. 1025
`¶¶ 39–41 (Mr. Smith, explaining how this arrangement bolsters his
`conclusion). We disagree with Patent Owner (PO Resp. 40–41) that Mr.
`Smith may only rely on what is written in the specification. See In re Mraz,
`455 F.2d 1069, 1072 (CCPA 1972) (holding that description via drawings
`and pictures can be relied upon alone).
`
`
`18
`
`
`
`
`
`IPR2016-00219
`Patent 8,136,613
`
`
`Patent Owner’s expert, Dr. Velinsky, argues that it is possible for the
`integration link to maintain horizontal movement without vertical movement
`if a small vertical slot was used at the end of control mechanism 106, where
`the integration link was attached, or, if loose connection tolerances were
`used between drive rods 104, and integration links 44. Ex. 2016 ¶¶ 36–38.
`But Dr. Velinsky does not explain why a person of ordinary skill in the art
`would not understand the more plain interpretation of Figure 14 offered by
`Mr. Smith. Even if a convoluted mechanism could be used in Figure 14, that
`does not tend to show that Mr. Smith is incorrect. Further, as Mr. Smith
`points out, the figures are drawn to scale in the ’613 patent, and Figure 4
`does not show a small vertical slot or loose tolerance. Ex. 1025 ¶¶ 39–41.
`We also find, based on the testimony of Mr. Smith, that vertical slots or
`loose tolerances would cause a loose connection, which would not be as
`responsive to inputs, rendering speed control and steering control less
`effective. Id. ¶ 42. Accordingly, we credit the testimony of Mr. Smith that
`the embodiment described in the ’613 patent does not always lie in a plane
`parallel to the ground.
`Based on our reading of the evidence and arguments before us, the
`plain meaning of an integration link that is movable and configured to lie in
`a plane parallel to the ground is satisfied by an integration link that is
`movable and is designed such that, during normal use of the vehicle, it will
`lie in a plane parallel to the ground. This is so even if sometimes it does not
`lie in a plane parallel to the ground, because even if it does not always lie in
`that plane, it will still actually lie in a plane parallel to the ground at some
`point du
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