Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 15
`Entered: March 22, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ROBERT BOSCH TOOL CORPORATION,
`Petitioner,
`
`v.
`
`SD3, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01753
`Patent 7,895,927 B2
`____________
`
`
`
`Before HYUN J. JUNG, SCOTT A. DANIELS, and ROBERT L. KINDER,
`Administrative Patent Judges.
`
`
`KINDER, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`Paper 15
`Entered: March 22, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ROBERT BOSCH TOOL CORPORATION,
`Petitioner,
`
`v.
`
`SD3, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01753
`Patent 7,895,927 B2
`____________
`
`
`
`Before HYUN J. JUNG, SCOTT A. DANIELS, and ROBERT L. KINDER,
`Administrative Patent Judges.
`
`
`KINDER, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`IPR2016-01753
`Patent 7,895,927 B2
`
`
`Robert Bosch Tool Corporation (“Petitioner”) filed a Petition pursuant
`to 35 U.S.C. §§ 311–319 to institute an inter partes review of claims 1–12 of
`U.S. Patent No. 7,895,927 B2, issued on March 1, 2011 (Ex. 1001, “the ’927
`patent”). Paper 2 (“Pet.”). SD3, LLC (“Patent Owner”) filed a Preliminary
`Response. Paper 9 (“Prelim. Resp.”). On January 9, 2017, we issued an
`Order requesting reply briefing by the Petitioner on the issue of “whether the
`time bar of 35 U.S.C. § 315(b) applies to a complaint filed with the ITC.”
`Paper 11. Petitioner filed a Reply to the Preliminary Response on January
`27, 2017. Paper 12 (“Reply”). We have authority under 35 U.S.C. § 314
`and 37 C.F.R. § 42.4(a).
`To institute an inter partes review, we must determine that the
`information presented in the Petition shows “a reasonable likelihood that the
`petitioner would prevail with respect to at least 1 of the claims challenged in
`the petition.” 35 U.S.C. § 314(a). Having considered both the Petition and
`the Preliminary Response, we are not persuaded that Petitioner has
`demonstrated a reasonable likelihood that it would prevail in showing the
`unpatentability of claims 1–12 of the ’927 patent. Accordingly, we do not
`institute an inter partes review.
`
`
`
`
`I. BACKGROUND
`A. The ʼ927 Patent (Ex. 1001)
`The ʼ927 patent is titled “Power Equipment with Detection and
`Reaction Systems.” Ex. 1001, (54). The Specification of the ’927 patent
`describes woodworking machines, which “include a detection system
`adapted to detect one or more dangerous conditions and a reaction system
`associated with the detection system.” Id. at Abstract. The ’927 patent
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`describes that “[t]he reaction system can include an explosive to trigger the
`system, and also can be configured to retract a cutting tool at least partially
`away from a cutting region upon detection of a dangerous condition by the
`detection system.” Id.
`Referring to Figure 1 of the ’927 patent, depicted below,
`woodworking machine 10 is equipped with safety system 18 that includes
`detection subsystem 22, reaction subsystem 24, and control subsystem 26.
`Id. at 8:3–27; Fig. 1.
`
`
`Figure 1 of the ’927 patent represents “a schematic block diagram of a
`machine with a fast-acting safety system.” Id. at 6:41–42. The detection
`subsystem is configured to detect dangerous, or triggering, conditions such
`as when a hand is dangerously close to, or in contact with, a portion of
`cutting tool 14. Id. at 8:14–27. In one embodiment, detection subsystem 22
`is adapted to detect the dangerous condition of the user contacting a blade.
`Id. at 8:14–27, 9:19–40. In such an embodiment, detection subsystem 22
`may use a capacitive sensor arrangement. Id. at 9:19–40. The sensor
`includes contact detection plates 44 and 46 that are capacitively coupled
`onto blade 40. Id., Fig. 2. Detection subsystem 22 transmits a signal to
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`control subsystem 26 when contact between the user and the blade is
`detected. Id.
`In response to the detection subsystem determining that a dangerous
`condition exists, the reaction subsystem performs one or more
`predetermined actions to mitigate injury. Id. at 8:23–45. In one
`embodiment, the reaction subsystem includes a brake mechanism that stops
`rotation of the saw blade. Id. at 9:65–10:32. In other embodiments, the
`reaction subsystem retracts the saw blade in addition to or instead of braking
`the blade’s rotation. Id. at 12:6–16:24; Figs. 3, 4, 10–12. In these
`embodiments, shown in Figures 3 and 4 reproduced below, saw blade 300 is
`mounted on arbor block 311 that pivots relative to the woodworking
`machines support frame. Id.
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`Figures 3 (top) and 4 (bottom) of the ’927 patent depict a first and second
`side view of a table saw with a retraction system. Id. at 6:45–46. In one
`embodiment, when brake pawl 314 is urged into the teeth of the saw blade,
`the angular momentum of the blade transfers to arbor block 311, causing it
`to retract downward and away from the user. Id. at 12:6–13:49; Figs. 3, 4.
`The Specification explains that in this embodiment:
`the angular momentum of the blade causes the blade, arbor block
`and cartridge to all pivot down away from the cutting region
`when the pawl strikes the blade. Thus, the angular momentum
`of the blade causes the retraction. Blade 300 is permitted to move
`downward a sufficient distance so that the blade is completely
`retracted. In independent experiments, the safety system
`depicted in FIGS. 3 and 4 and described above has been shown
`to retract the blade completely below table 303 within
`approximately 14 milliseconds after contact is detected. Indeed
`the downward motion of the blade during retraction is too fast to
`detect with the human eye, i.e., the blade disappears below table
`303 with no discernable transition or downward motion. The
`ability of the blade to retract minimizes any injury from
`accidental contact with the blade.
`
`Id. at 13:35–49.
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`B. Illustrative Claim
`Claims 1 and 7, reproduced below, are illustrative of the claims at
`
`issue:
`
`1. A method of operating a woodworking machine, where the
`woodworking machine has a work surface defining a cutting
`region and a cutting tool that extends at least partially into the
`cutting region, the method comprising:
`
`moving the cutting tool;
`
`detecting a dangerous condition between a person and the
`cutting tool; and
`
`retracting the cutting tool below the work surface within
`approximately 14 milliseconds after the dangerous condition is
`detected by the detection system.
`
`7. A woodworking machine comprising:
`a work surface defining a cutting region;
`a cutting tool positioned to extend at least partially into the
`cutting region;
`
`a detection system adapted to detect a dangerous condition
`between a person and the cutting tool; and
`
`a reaction system associated with the detection system and the
`cutting tool, where the reaction system is configured to retract
`the cutting tool below the work surface within approximately
`14 milliseconds after the dangerous condition is detected by the
`detection system.
`
`Ex. 1001, 24:14–23, 24:34–44.
`
`C. Related Proceedings
`According to the parties, the ’927 patent has been asserted by Patent
`Owner against Petitioner in Certain Table Saws Incorporating Active Injury
`Mitigation Technology and Components Thereof, Inv. No. 337-TA-965,
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`pending before the U.S. International Trade Commission (“ITC
`Investigation”) and SawStop, LLC v. Robert Bosch Tool Corp., Case No.
`3:15-cv-01320 (D. Or.). Pet. 7–8; Paper 8, 2.
`Petitioner has also filed the following petitions challenging the
`patentability of certain claims of related patents:
`1. IPR2016-01750 (U.S. Patent No. 7,225,712);
`2. IPR2016-01751 (U.S. Patent No. 7,600,455);
`3. IPR2016-01754 (U.S. Patent No. 8,011,279); and
`4. IPR2016-01755 (U.S. Patent No. 8,191,450).
`
`D. References
`Petitioner relies on the following references:1
`U.S. Patent No. 3,547,232, filed July 10, 1968, issued Dec. 15, 1970
`(Ex. 1018, “Fergle”); U.S. Patent No. 3,858,095, filed Aug 28, 1973, issued
`Dec. 31, 1974 (Ex. 1009, “Friemann”); U.S. Patent No. 5,205,069, filed Oct.
`2, 1991, issued Apr. 27, 1993 (Ex. 1016, “Shapiro”); and, DE 196 09 771,
`filed Mar. 13, 1996, published Apr. 6, 1998 (Exs. 1007 and 1008,2
`“Nieberle”). Pet. 3–4.
`
`
`
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`
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`1 Petitioner cites numerous references for background information but does
`not affirmatively rely on any of these references as a ground for invalidity.
`See Pet. 7–21. Accordingly, we treat these exhibits as documenting the
`knowledge that skilled artisans would employ in reviewing the prior art. See
`Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1365 (Fed. Cir.
`2015).
`2 Exhibit 1007 is the original German reference. Exhibit 1008 is the
`certified translation, which is cited hereafter.
`
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`Nieberle
`
`E. Grounds Asserted
`Petitioner challenges the ʼ927 patent on the following grounds. Pet. 4.
`Claims
`Challenged
`§ 102(b)3 7, 9, 10
`
`References
`
`Basis
`
`Nieberle in view of the ordinary knowledge
`of one of skill in the art
`
`Nieberle and Friemann in view of the
`ordinary knowledge of one of skill in the art
`
`Nieberle, Fergle, and Shapiro in view of the
`ordinary knowledge of one of skill in the art
`
`Nieberle and Shapiro in view of the ordinary
`knowledge of one of skill in the art
`
`§ 103(a)
`
`1, 3, 7, and 9
`
`§ 103(a)
`
`2 and 8
`
`§ 103(a)
`
`4 and 12
`
`§ 103(a)
`
`5, 6, 10, and 11
`
`F. Claim Construction
`The parties do not propose any claim construction and we determine
`that no claim terms require express construction for purposes of this
`Decision. In our analysis below, we do address Petitioner’s contention about
`whether the claim 7 limitation, “the reaction system is configured to retract
`the cutting tool below the work surface within approximately 14
`milliseconds,” is a statement of function and intended purpose or a structural
`limitation.
`
`
`3 The relevant sections of the Leahy-Smith America Invents Act (“AIA” or
`“America Invents Act”), Pub. L. No. 112–29, 125 Stat. 284 (Sept. 16, 2011),
`took effect on March 16, 2013. Because the application from which the ’927
`patent issued was filed before that date, our citations to Title 35 are to its
`pre-AIA version.
`
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`II. ANALYSIS
`A petition must show how the challenged claims are unpatentable
`under the statutory grounds it identifies. 37 C.F.R. § 42.104(b)(4).
`Petitioner bears the burden of demonstrating a reasonable likelihood that
`Petitioner would prevail with respect to at least one challenged claim for a
`petition to be granted. 35 U.S.C. § 314(a).
`
`A. Time Bar Under 35 U.S.C. § 315(b) for ITC Complaint
`Patent Owner contends the Petition is time barred under the plain
`meaning of 35 U.S.C. § 315(b), because Petitioner was served with an ITC
`complaint more than one year before the date this Petition was filed. Prelim.
`Resp. 1–2, 19–30. “Patent Owner recognizes there are three non-
`precedential Board decisions finding § 315(b) does not apply to ITC
`complaints, but respectfully submits that those decisions are in error.” Id. at
`2, 24–25. Patent Owner presents an argument not considered in our prior
`decisions related to the language found in 35 U.S.C. § 257(c). Id. at 23–25.
`Patent Owner contends that construing “Patent Owner’s Action” to refer
`only to a “civil action” in district court “contradicts language in other
`portions of the America Invents Act, notably § 257(c), which defines ‘patent
`enforcement actions’ as including ‘an action brought under section 337(a) of
`the Tariff Act of 1930.’” Id. at 2. Accordingly, Patent Owner argues that
`the phrase “Patent Owner’s Action” in the heading of § 315(b) should be
`interpreted to include both a “civil action” in a federal district court and a
`“Patent Enforcement Action[]” at the ITC, defined in § 257(c) as “an action
`brought under section 337(a) of the Tariff Act of 1930.” Id. at 2, 22–25.
`Patent Owner also relies on Texas Instruments., Inc. v. Tessera, Inc.,
`231 F.3d 1325, 1330 (Fed. Cir. 2000), which states, “this court has
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`consistently treated section 337 patent infringement proceedings as
`litigation.” Prelim. Resp. 27–28. Thus, according to Patent Owner, the
`logic from our Amkor decision that the drafters intended the triggering event
`of § 315(b) to be “tied to a pleading in litigation” should not preclude ITC
`actions from falling within § 315(b). Id. (internal citation omitted).
`Petitioner replies that our non-precedential decisions have consistently
`determined that ITC complaints do not trigger the bar of § 315(b):
`The Board has several
`times previously correctly
`construed the “complaint” phrase in 35 U.S.C. § 315(b), finding
`that the complaint served by the I.T.C. on the named respondents
`in a Section 337 investigation is not a “complaint alleging
`infringement of the patent” for the purposes of the time bar set
`forth in § 315(b). Amkor Tech., Inc. v. Tessera, Inc., IPR2013-
`00242, Paper 98, at 6–19 (P.T.A.B. Jan. 31, 2014) (“What
`matters is that the complaint pleads a cause of action for patent
`infringement and is served lawfully on the accused infringer in a
`civil action.”); Brinkmann Corp. v. A&J Mfg., LLC, IPR2015-
`00056, Paper 10, at 7–8 (P.T.A.B. Mar. 23, 2015) (applying
`Amkor specifically to I.T.C. complaint); LG Elecs., Inc. v.
`Straight Path IP Group, Inc., IPR2015-00196, Paper 20, at 7–9
`(P.T.A.B. May 15, 2015) (same).
`
`Reply 1. Petitioner notes that the only difference in these prior decisions is
`that the Patent Owner in this proceeding relies upon the language found in
`§ 257(c)(2)(B) to argue that § 315(b) should include ITC complaints.
`Petitioner notes that § 257(c)(2)(B) specifically and separately lists both ITC
`investigations and 35 U.S.C. § 281 civil actions under the heading, “Patent
`Enforcement Actions.” Petitioner argues “[i]f Congress had understood the
`plain language of the words ‘Patent Enforcement Actions’ (or the word
`“actions” by itself) to refer naturally to both I.T.C. investigations and civil
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`actions for infringement, there would have been no reason for Congress to
`recite both explicitly in § 257(c)(2)(B).” Id. at 3.
`We decline to interpret § 315(b) as including ITC complaints. The
`title of § 315 is, “Relation to Other Proceedings or Actions.” This title
`distinguishes “proceedings” from “actions.” Section 315(b) refers only to an
`“action.” Paragraph (e)(2) of § 315 specifically identifies an ITC
`investigation as a “proceeding,” and separately refers to a “civil action.”
`Moreover, § 315(b) refers to “infringement,” not to “patent enforcement.”
`There is nothing in the interplay of this section and § 257 of Title 35 to
`suggest that either “proceedings” and “actions,” or “infringement” and
`“patent enforcement,” are interchangeable in the context of the title of
`§ 315(b) (“Patent Owner’s Action”). Further, when Congress intended a
`specific provision of the Leahy–Smith America Invents Act to apply to ITC
`proceedings, it took care to recite “section 337” in the body of the statute.
`For example, in 35 U.S.C. §§ 257(c)(2)(B) and 325(e)(2), “section 337” is
`written into the body of those subsections. Congress excluded the words
`“section 337” and “proceeding” from § 315(b). We decline to supply words
`or phrases into the statute that Congress did not include, particularly where
`the statute can be readily interpreted and applied, as it is to civil actions,
`without the excluded language.
`Importantly, Section 257 relates specifically to supplemental
`examination of patents before the Patent Office, not inter partes review, and
`in particular, § 257(c)(2)(A)-(B), promulgates “a civil action” and “an action
`brought under section 337(a)” as separate express “Exceptions” to
`§ 257(c)(1). We are unaware of, nor has Patent Owner apprised us of any
`statutory language or precedent that ties “an action brought under section
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`337(a)” set forth in § 257 (of Chapter 25) to § 315(b) (of Chapter 31) and
`inter partes review. For these reasons and for the reasoning set forth in our
`prior decisions cited supra, we decline to extend § 315(b) to cover ITC
`complaints.
`
`B. Anticipation Based on Nieberle
`
`Petitioner contends that claims 7, 9, and 10 are anticipated by
`Nieberle under 35 U.S.C. § 102(b). Pet. 10. Claims 9 and 10 depend from
`claim 7. Having considered the arguments and evidence before us, we
`determine that Petitioner has not established a reasonable likelihood of
`prevailing on its asserted ground for the reasons explained below.
`1.
` Nieberle
`Nieberle is titled “[a]ctive safety system on circular saw benches or
`similar devices.” Ex. 1008, (54). Nieberle discloses that table saws “are
`among the most dangerous machine tools used both in the craft industry as
`well as the home setting,” and “existing safety devices” such as protective
`guards surrounding the blade “do not offer reliable protection against
`injuries,” among other drawbacks. Id. at Abstract, (57). Nieberle describes
`a “hand recognition sensor combined with a saw blade pivoting device.” Id.
`at col. 1, Fig. 1b.
`In one embodiment, Nieberle describes “an electronic device capable
`of recognizing whether a body part approaches the saw blade, and, if this is
`the case, is capable of moving the saw blade underneath the work area by
`means of a pneumatic or hydraulic device, such that the body part is no
`longer exposed to any harm.” Id. Nieberle adopts a “hand recognition
`sensor” “that is capable of detecting whether the user is advancing a finger
`or hand toward the saw blade.” Id. at col. 2. Upon the detection of a user’s
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`hand or finger approaching the saw blade, Nieberle next discloses use of an
`“emergency lowering device” in order “to eliminate the danger posed by the
`saw blade.” Id. at col. 3. According to Nieberle:
`We developed an emergency stop function, which does not
`slow down the saw blade, but moves it out of the hand’s working
`range. Once the sensor electronics recognize a hand in front of
`the saw blade, they activate a valve, whereby a pneumatic
`cylinder abruptly pulls down the motor with the saw blade; in so
`doing, the saw blade completely disappears underneath the
`workbench. Said method has the advantages that it is extremely
`fast, while its operation is completely non-wearing.
`
`Id.
`2. Anticipation of Claims 7, 9, and 10
`To establish anticipation, each and every element in a claim, arranged
`as recited in the claim, must be found in a single prior art reference. Net
`MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). “To
`anticipate a claim, a prior art reference must disclose every limitation of the
`claimed invention, either explicitly or inherently.” In re Schreiber, 128 F.3d
`1473, 1477 (Fed. Cir. 1997).
`Claim 7 requires in pertinent part:
`a detection system adapted to detect a dangerous
`condition between a person and the cutting tool; and
`
`a reaction system associated with the detection system
`and the cutting tool, where the reaction system is configured to
`retract the cutting tool below the work surface within
`approximately 14 milliseconds after the dangerous condition is
`detected by the detection system.
`
`Ex. 1001, 24:38–44. At issue is whether Nieberle discloses these
`limitations, and more specifically, whether Nieberle discloses “the reaction
`system is configured to retract the cutting tool below the work surface within
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`approximately 14 milliseconds after the dangerous condition is detected”
`(hereafter, “retraction limitations”). See Pet. 23, 24; Prelim. Resp. 31–33.
`Petitioner recognizes that “Nieberle does not state in haec verba that
`the machine it describes retracts the saw blade ‘within approximately 14
`milliseconds.’” Pet. 24. Petitioner contends, however, that the retraction
`limitations are a statement of function and intended purpose for the claimed
`machine, and not structural limitations. Pet. 24. Petitioner also relies on
`Nieberle’s description that “the saw blade completely disappears beneath the
`workbench,” and does so “‘extremely fast’” as disclosing this limitation. Id.
`at 23.
`Patent Owner responds that the limitation is not a necessary or
`intended result of the other claim limitations, but instead, “[t]he ‘configured
`to’ limitation imposes an additional requirement on the claimed ‘reaction
`system’ that is not inherent in the other limitations.” Prelim. Resp. 33. As
`argued by Patent Owner, “a ‘woodworking machine’ that includes all of the
`other limitations will not necessarily or inherently retract the cutting tool
`below the work surface within approximately 14 milliseconds after a
`dangerous condition is detected.” Id. Further, Patent Owner contends that
`“Nieberle does not expressly or inherently disclose a reaction system that
`retracts a cutting tool below the work surface within approximately 14
`milliseconds after a dangerous condition is detected. Ex. 1008, 4. In fact,
`Nieberle does not disclose any specific retraction time associated with its
`system.” Id. at 31.
`Although claims directed to an apparatus must be distinguished from
`the prior art in terms of structure rather than function, In re Schreiber, 128
`F.3d 1473, 1477–78 (Fed. Cir. 1997), use of the language “configured to”
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`may require a structure made to, or designed to, perform a specific function.
`Notably, claim 7 recites both the language “adapted to” and “configured to.”
`These claim terms have recognized meanings. See In re Giannelli, 739 F.3d
`1375, 1379 (Fed. Cir. 2014) (“here the written description makes clear that
`‘adapted to,’ . . . has a narrower meaning, viz., that the claimed machine is
`designed or constructed to be used as a rowing machine”). In the context
`before us, “configured to” requires a structure that is more than just capable
`of performing a function, but instead a structure that is actually designed to,
`or made to, perform the function. See Aspex Eyewear, Inc. v. Marchon
`Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir. 2012). See also Ex. 1001,
`13:35–49 (specification describing a reaction system designed to retract a
`blade within 14 milliseconds, which results in minimizing injury). We
`determine the language “configured to retract the cutting tool . . . within
`approximately 14 milliseconds” means that the detection and reaction
`system are designed to accomplish the specified objective, not simply that
`they can be made to serve that purpose. We, therefore, agree with Patent
`Owner that the “configured to” limitation imposes a requirement on the
`claimed “reaction system” that is not inherent in the other claim limitations.
`We are not persuaded that Petitioner has demonstrated sufficiently
`that Nieberle discloses, either explicitly or inherently, the retraction
`limitations. Nieberle describes a saw blade disappearing underneath the
`workbench “extremely fast” but this general statement does not establish
`whether Nieberle is designed to, or made to, retract the cutting tool below
`the work surface within approximately 14 milliseconds after the dangerous
`condition is detected. Ex. 1008, col. 3. For these reasons, Petitioner has
`failed to show a reasonable likelihood that it would prevail in showing that
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`Nieberle anticipates claims 7, 9, and 10. Accordingly, we decline to institute
`a review of claims 7, 9, and 10 under 35 U.S.C. § 102(b) as anticipated by
`Nieberle.
`
`C. Obviousness Based on Nieberle in View of the Ordinary Knowledge of
`One of Ordinary Skill in the Art
`
`Petitioner challenges the patentability of claims 1, 3, 7, and 9 of the
`’927 patent under 35 U.S.C. § 103(a) as obvious based on Nieberle in view
`of the ordinary knowledge of one of ordinary skill in the art. Pet. 26–33.
`Petitioner relies on the testimony of its declarant, Mr. Bruce W. Main for
`ascertaining the knowledge of one of ordinary skill in the art. Ex. 1003. Id.
`We have reviewed Petitioner’s contentions and supporting evidence as well
`as the Patent Owner’s contentions and supporting evidence related to
`secondary considerations of nonobviousness. Given the evidence of record,
`we are not persuaded that Petitioner has demonstrated a reasonable
`likelihood of prevailing on its assertion that claims 1, 3, 7, and 9 of the ’927
`patent would have been obvious. We begin our analysis with the principles
`of law that apply generally to a ground based on obviousness, followed by
`the reasons for our determination.
`1. Principles of Law
`A claim is unpatentable under § 103(a) if the differences between the
`claimed subject matter and the prior art are such that the subject matter, as a
`whole, would have been obvious at the time the invention was made to a
`person having ordinary skill in the art to which said subject matter pertains.
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
`obviousness is resolved on the basis of underlying factual determinations,
`including: (1) the scope and content of the prior art; (2) any differences
`
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`16
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`between the claimed subject matter and the prior art; (3) the level of skill in
`the art; and (4) where in evidence, so-called secondary considerations.
`Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966).
`“A determination of whether a patent claim is invalid as obvious
`under § 103 requires consideration of all four Graham factors, and it is error
`to reach a conclusion of obviousness until all those factors are considered.”
`Apple v. Samsung Elecs. Co., 839 F.3d 1034, 1048 (Fed. Cir. 2016) (en
`banc) (citations omitted). “This requirement is in recognition of the fact that
`each of the Graham factors helps inform the ultimate obviousness
`determination.” Id. The Federal Circuit has recognized that:
`Indeed, evidence of secondary considerations may often be the
`most probative and cogent evidence in the record. It may often
`establish that an invention appearing to have been obvious in
`light of the prior art was not. It is to be considered as part of all
`the evidence, not just when the decision maker remains in doubt
`after reviewing the art.
`
`Id. at 1052–53 (quoting Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530,
`1538–39 (Fed. Cir. 1983)).
`2. Discussion
`Petitioner contends that the Nieberle in view of the ordinary
`knowledge of the person of ordinary skill in the art teaches or suggests each
`limitation of claims 1, 3, 7, and 9. Pet. 26–33. Petitioner supports its
`contentions with citations to the references and with the testimony of Bruce
`Main. Ex. 1003. We have discussed Nieberle and below we consider each
`remaining Graham factor.
`a. The Level of Skill in the Art
`Petitioner contends:
`A person of ordinary skill in the art in that field as of July 1999
`
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`17
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`IPR2016-01753
`Patent 7,895,927 B2
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`(hereinafter, a “POSITA”) would have had an education and/or
`work experience sufficient such that the POSITA would have
`understood the electro-mechanical workings of power tools of
`that era (and previous eras), specifically power saws, as well as
`the level of need and concern at that time for safety mechanisms
`to protect both professional and amateur users of those tools. Id.
`The POSITA would also have had knowledge of then-existing
`power tools, and safety systems therefor. Id.
`
`Pet. 6. Patent Owner does not object to the above portion of Petitioner’s
`analysis. Prelim. Resp. 18–19. Petitioner continues, however, by alleging:
`The POSITA would further have had an understanding and
`knowledge of then-existing safety systems to protect users of
`other dangerous equipment (i.e., non-power tool equipment, such
`as vehicles and other factory machines). Id.
`
`Pet. 6. This second portion of Petitioner’s description is overly broad for the
`reasons set forth by Patent Owner. See Prelim. Resp. 18–19. Namely,
`Petitioner does not provide adequate support for the assertion that the person
`of ordinary skill in the art would have had an understanding and knowledge
`of then-existing safety systems to protect users of other dangerous
`equipment (i.e., non-power tool equipment, such as vehicles and other
`factory machines). Id. at 19. Although we agree with the first portion of
`Petitioner’s assessment, we limit the relevant background of the person of
`ordinary skill in the art to a person with knowledge of power tools and
`related safety systems.
`
`b. Scope and Content of the Prior Art and Differences Between
`the Claimed Subject Matter and the Prior Art
`
`The only discernible differences between Nieberle and independent
`claims 1 and 7 is that Nieberle does not disclose “the reaction system is
`configured to retract the cutting tool below the work surface within
`
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`approximately 14 milliseconds after the dangerous condition is detected by
`the detection system” of claim 7 and similar requirement of method claim 1.
`Ex. 1001, 24:40–44, 24:21–23 (“retracting the cutting tool below the work
`surface within approximately 14 milliseconds after the dangerous condition
`is detected by the detection system”) (hereafter “retraction limitations”).
`Petitioner first contends that the retraction limitations do not “make
`the claimed invention nonobvious . . . because there are neither unexpected
`results nor is there any technical significance to the 14 ms endpoint of the
`claimed range.” Pet. 29. Further, Petitioner also argues that even if the
`safety system of “Nieberle did not satisfy this limitation, one of skill in the
`art would have found it obvious to modify [i.e., to optimize the speed of the
`machine] so that it did so, and would have been motivated to do so because
`the faster the retraction, the less likely or severe an injury.” Id. at 29–30
`(citing Ex. 1003 ¶¶ 231–235, 77–85).
`According to Petitioner, a person of ordinary skill in the art “would
`have understood that the likelihood and potential severity of an injury would
`depend, in part, on the time required for the reaction system to function.” Id.
`at 30. Petitioner continues by arguing that the retraction limitations do not
`produce any unexpected results and there is no technical significance to the
`limitations. Id. at 31. Thus, according to Petitioner, “the limitation cannot
`render the claimed invention nonobvious, as a matter of law.” Id. at 30.
`Next, Petitioner contends that reaction times of less than
`approximately 14 milliseconds were considered desirable in the art. Id. at 31
`According to Petitioner, “[p]rior-art documents specifically disclosed times
`within the claimed range, providing additional motivation to use a retraction
`time of less than approximately 14 ms.” Id. Petitioner cites Friemann,
`
`
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`19
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`which allegedly teaches braking a blade within 5–10 milliseconds. Id.
`Petitioner also cites to Høgsholm,4 which allegedly “teaches reacting—by
`blocking or cutting the blade—within one millisecond (which it also
`describes as ‘substantially instantaneously’).” Id. According to Petitioner,
`based on the teachings of Friemann and Høgsholm, a person of skill in the
`art would have been motivated “to optimize the retraction system of
`Nieberle to meet the known injury mitigating range of 1–10 ms” because
`“the danger in Nieberle . . . is not alleviated until the blade is fully retracted
`below the table.” Id. at 31, 32 (citing Ex. 1003 ¶¶ 231–235).
`
`Patent Owner contends that Petitioner has failed to establish that it
`would have been obvious to modify Nieberle to include a “reaction system”
`with the retraction limitations as required by claims 1, 3, 7, and 9. Prelim.
`Resp. 34. Patent Owner first argues that Petitioner improperly substitutes
`the knowledge of a person of ordinary skill in the art instead of a specific
`prior art reference to supply the missing claim limitation in violations of
`§ 311(b). Id. at 34.
`Second, Patent Owner argues Petitioner “has not identified a single
`prior art reference that discloses the ‘within approximately 14 milliseconds’
`limitation.” Id. at 35. Patent Owner disagrees that the limitation is
`“‘arbitrary’” and has no “‘technical significa
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