Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 31
`Entered: March 23, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AUTOLIV ASP, INC.; NIHON PLAST CO., LTD.;
`NEATON AUTO PRODUCTS MANUFACTURING INC.;
`TAKATA CORPORATION; TK HOLDINGS, INC.;
`TOYODA GOSEI CO., LTD.; HYUNDAI MOBIS CO., LTD.;
`MOBIS ALABAMA, LLC; and MOBIS PARTS AMERICA LLC,
`Petitioner,
`
`v.
`
`AMERICAN VEHICULAR SCIENCES, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01790
`Patent 9,043,093 B2
`____________
`
`
`Before TREVOR M. JEFFERSON, JENNIFER MEYER CHAGNON, and
`SCOTT C. MOORE, Administrative Patent Judges.
`
`CHAGNON, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`571-272-7822
`
`
`Paper No. 31
`Entered: March 23, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AUTOLIV ASP, INC.; NIHON PLAST CO., LTD.;
`NEATON AUTO PRODUCTS MANUFACTURING INC.;
`TAKATA CORPORATION; TK HOLDINGS, INC.;
`TOYODA GOSEI CO., LTD.; HYUNDAI MOBIS CO., LTD.;
`MOBIS ALABAMA, LLC; and MOBIS PARTS AMERICA LLC,
`Petitioner,
`
`v.
`
`AMERICAN VEHICULAR SCIENCES, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01790
`Patent 9,043,093 B2
`____________
`
`
`Before TREVOR M. JEFFERSON, JENNIFER MEYER CHAGNON, and
`SCOTT C. MOORE, Administrative Patent Judges.
`
`CHAGNON, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`IPR2016-01790
`Patent 9,043,093 B2
`
`
`I.
`
`INTRODUCTION
`
`We have jurisdiction to hear this inter partes review under 35 U.S.C.
`
`§ 6. This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a)
`
`and 37 C.F.R. § 42.73. For the reasons discussed herein, we determine that
`
`Petitioner has shown, by a preponderance of the evidence, that claims 1–44
`
`(“the challenged claims”) of U.S. Patent No. 9,043,093 B2 (Ex. 1001,
`
`“the ’093 patent”) are unpatentable.
`
`A. Procedural History
`
`Toyoda Gosei Co., Ltd.; Autoliv ASP, Inc.; Nihon Plast Co., Ltd.;
`
`Neaton Auto Products Manufacturing, Inc.; Takata Corporation;
`
`TK Holdings, Inc.; Hyundai Mobis Co., Ltd.; Mobis Alabama, LLC; and
`
`Mobis Parts America LLC (collectively, “Petitioner”)1 filed a Petition for
`
`inter partes review of claims 1–44 of the ’093 patent. Paper 1 (“Pet.”).
`
`Petitioner provided a Declaration of Stephen W. Rouhana, Ph.D. (Ex. 1003)
`
`in support of its positions. American Vehicular Sciences, LLC (“Patent
`
`Owner”) filed a Preliminary Response to the Petition (Paper 14 (“Prelim.
`
`Resp.”)), relying on a Declaration of Michael Nranian P.E. (Ex. 2005) in
`
`support of its positions.
`
`
`1 Petitioner identifies Toyoda Gosei North America Corp.; Autoliv, Inc.; and
`Mobis America, Inc. as additional real parties-in-interest. Pet. 1.
`
`
`
`2
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`Pursuant to 35 U.S.C. § 314(a), on March 28, 2017, we instituted inter
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`partes review on the following grounds:
`
`whether claims 1, 6, 8, 10, 12, 17–21, 26, 27, 33, 39, 43, and 44
`
`are unpatentable under 35 U.S.C. § 103(a) as obvious in view of
`
`Leising2 and Lau3;
`
`whether claims 2, 3, 11, 28–32, and 41 would have been
`
`obvious under 35 U.S.C. § 103(a) in view of Leising, Lau, and Davis4;
`
`whether claims 4 and 13–15 would have been obvious under
`
`35 U.S.C. § 103(a) in view of Leising, Lau, and Daniel5;
`
`whether claims 5, 7, 34, and 35 would have been obvious under
`
`35 U.S.C. § 103(a) in view of Leising, Lau, and Kaji6;
`
`whether claims 9, 38, 40, 42, and 44 would have been obvious
`
`under 35 U.S.C. § 103(a) in view of Leising, Lau, and Steffens7;
`
`whether claims 22, 24, and 25 would have been obvious under
`
`35 U.S.C. § 103(a) in view of Leising, Lau, and Suzuki8;
`
`whether claim 16 would have been obvious under 35 U.S.C.
`
`§ 103(a) in view of Leising, Lau, and Paxton9;
`
`
`2 U.S. Patent No. 3,897,961, issued Aug. 5, 1975 (Ex. 1005).
`3 U.S. Patent No. 5,273,309, issued Dec. 28, 1993 (Ex. 1006).
`4 U.S. Patent No. 5,269,561, issued Dec. 14, 1993 (Ex. 1007).
`5 U.S. Patent No. 5,540,459, issued July 30, 1996, filed Oct. 5, 1994
`(Ex. 1008).
`6 U.S. Patent No. 5,222,761, issued June 29, 1993 (Ex. 1009).
`7 U.S. Patent No. 5,524,924, issued June 11, 1996, filed Nov. 15, 1993
`(Ex. 1010).
`8 U.S. Patent No. 4,021,058, issued May 3, 1977 (Ex. 1011).
`9 U.S. Patent No. 4,998,751, issued Mar. 12, 1991 (Ex. 1012).
`
`
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`3
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`whether claim 23 would have been obvious under 35 U.S.C.
`
`§ 103(a) in view of Leising, Lau, Suzuki, and Marlow10;
`
`whether claims 1, 10, 17–21, 26, 27, 33, 36, 37, 39, and 43
`
`would have been obvious under 35 U.S.C. § 103(a) in view of
`
`Karlow11 and Lau;
`
`whether claims 2, 3, 11, 28–32, and 41 would have been
`
`obvious under 35 U.S.C. § 103(a) in view of Karlow, Lau, and Davis;
`
`whether claims 4, 6, 8, and 12–15 would have been obvious
`
`under 35 U.S.C. § 103(a) in view of Karlow, Lau, and Daniel;
`
`whether claims 5, 7, 34, and 35 would have been obvious under
`
`35 U.S.C. § 103(a) in view of Karlow, Lau, and Kaji;
`
`whether claims 9, 38, 40, 42, and 44 would have been obvious
`
`under 35 U.S.C. § 103(a) in view of Karlow, Lau, and Steffens;
`
`whether claims 22, 24, and 25 would have been obvious under
`
`35 U.S.C. § 103(a) in view of Karlow, Lau, and Suzuki;
`
`whether claim 16 would have been obvious under 35 U.S.C.
`
`§ 103(a) in view of Karlow, Lau, and Paxton; and
`
`whether claim 23 would have been obvious under 35 U.S.C.
`
`§ 103(a) in view of Karlow, Lau, Suzuki, and Marlow;
`
`See Paper 16 (“Inst. Dec.”). Subsequent to institution, Patent Owner filed a
`
`Patent Owner Response (Paper 19, “PO Resp.”), along with a second
`
`Michael Nranian P.E. (Ex. 2013) to support its positions. Petitioner filed a
`
`Reply (Paper 22, “Reply”) to the Patent Owner Response.
`
`
`10 U.S. Patent No. 3,966,225, issued June 29, 1976 (Ex. 1013).
`11 U.S. Patent No. 5,588,672, issued Dec. 31, 1996, filed Oct. 20, 1995
`(Ex. 1014).
`
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`An oral hearing was held on December 6, 2017. A transcript of the
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`hearing is included in the record. Paper 30 (“Tr.”).
`
`B. Related Proceedings
`
`The parties indicate that the ’093 patent is the subject of the following
`
`district court proceedings: Am. Vehicular Scis. LLC v. Hyundai Motor Co.,
`
`No. 5:16-cv-11529-JEL-APP (E.D. Mich.); Am. Vehicular Scis. LLC v.
`
`Nissan Motor Co., No. 5:16-cv-11530-JEL-APP (E.D. Mich.); Am.
`
`Vehicular Scis., LLC v. Toyota Motor Corp., No. 5:16-cv-11531-JEL-APP
`
`(E.D. Mich.); and Am. Vehicular Scis., LLC v. Am. Honda Motor Co.,
`
`No. 5:16-cv-11532-JEL-APP (E.D. Mich.). Paper 13, 1–2; Pet. 1–2.
`
`Claims 1–44 of the ’093 patent also are subject to review in
`
`IPR2016-01794. See Autoliv ASP, Inc. v. Am. Vehicular Scis.,
`
`Case IPR2016-01794 (PTAB Mar. 23, 2017) (Paper 7). Claims 1, 8, 10, 12,
`
`17–19, 26, 27, and 36 of the ’093 patent previously were determined to be
`
`unpatentable. See Unified Patents Inc. v. Am. Vehicular Scis.,
`
`Case IPR2016-00364 (PTAB May 19, 2017) (Paper 35) (“the 364 Final
`
`Written Decision,” “364 FWD”) (appeal currently pending, Fed. Cir. Case
`
`No. 17-2307).
`
`Patent Owner also identifies pending application No. 14/721,136,
`
`which claims priority to the ’093 patent (Paper 13, 2); according to USPTO
`
`records, this application has been abandoned.
`
`C. The ’093 Patent
`
`The ’093 patent is titled “Single Side Curtain Airbag for Vehicles,”
`
`and was filed as U.S. application No. 11/930,330 on October 31, 2007.
`
`Ex. 1001, at [21], [22], [54]. The ’093 patent claims priority, via a chain of
`
`
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`continuation-in-part and divisional applications, to U.S. application
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`No. 08/571,247, filed on December 12, 1995. Id. at [60].
`
`The ’093 patent relates to an airbag system for a vehicle, in which
`
`“the airbag for the front and rear seats are combined, i.e., the airbag deploys
`
`along substantially the entire side of the vehicle alongside both the front seat
`
`and the rear seat.” Id. at 65:29–32. According to the ’093 patent, this
`
`arrangement “results in significantly greater protection in side impacts when
`
`the windows are broken.” Id. at 65:32–34. Further, the airbag system of
`
`the ’093 patent utilizes a single gas-providing system with only one inflator
`
`to inflate the airbag. Id. at 187:3–6. The airbag also includes a plurality of
`
`compartments in flow communication with each other. See, e.g., id. at
`
`169:27–33. As described in the ’093 patent, the compartments allow the
`
`airbag to be formed of the desired shape, while minimizing stress
`
`concentrations, as well as the weight of the airbag. Id. at 81:14–19.
`
`D. Illustrative Claim
`
`Of the challenged claims, claims 1, 22, 26, 29, 36–39, and 41–43 are
`
`independent. Claims 2–21 and 33–35 depend, directly or indirectly, from
`
`claim 1; claims 23–25 depend from claim 22; claims 27 and 28 depend from
`
`claim 26; claims 30–32 depend from claim 29; claim 40 depends from
`
`claim 39; and claim 44 depends from claim 43. Claim 1 of the ’093 patent,
`
`reproduced below, is illustrative of the challenged claims.
`
`1. An airbag system of a vehicle, the airbag system
`comprising:
`
`a single airbag extending across at least two seating
`positions of a passenger compartment of a vehicle, the single
`airbag arranged to deploy into the passenger compartment along
`
`
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`a lateral side of the vehicle and adjacent each of the at least two
`seating positions;
`
`a cover interposed between the single airbag and the
`passenger compartment to cover the single airbag prior to
`deployment;
`
`a single gas-providing system that has only one inflator
`that provides gas to inflate the single airbag and which is
`arranged apart from the single airbag; and
`
`a conduit leading from the single gas-providing system to
`provide gas to inflate the single airbag, the conduit being
`arranged to deliver the gas from the single gas-providing system
`into the single airbag;
`
`the at least two seating positions comprising a first seating
`position in a first seat row of seats of the vehicle and a second
`seating position in a second seat row of seats of the vehicle
`longitudinally displaced from the first seat row of seats, along
`the lateral side of the vehicle;
`
`wherein the single airbag has a plurality of compartments
`for receiving the gas, and wherein the plurality of compartments
`are in flow communication with each other.
`
`Ex. 1001, 186:61–187:18.
`
`II. ANALYSIS
`
`A. Principles of Law
`
`To prevail in its challenges to the patentability of the claims,
`
`Petitioner must demonstrate by a preponderance of the evidence that the
`
`challenged claims are unpatentable. 35 U.S.C. § 316(e); 37 C.F.R.
`
`§ 42.1(d). “In an [inter partes review], the petitioner has the burden from
`
`the onset to show with particularity why the patent it challenges is
`
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
`
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`petitions to identify “with particularity . . . the evidence that supports the
`
`grounds for the challenge to each claim”)). This burden of persuasion never
`
`shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics,
`
`Inc., 800 F.3d 1375, 1378–79 (Fed. Cir. 2015) (citing Tech. Licensing Corp.
`
`v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the
`
`burdens of persuasion and production in inter partes review).
`
`A claim is unpatentable for obviousness if, to one of ordinary skill in
`
`the pertinent art, “the differences between the subject matter sought to be
`
`patented and the prior art are such that the subject matter as a whole would
`
`have been obvious at the time the invention was made.” KSR Int’l Co. v.
`
`Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting 35 U.S.C. § 103(a)). 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 between the claimed subject matter and the prior art; (3) the level
`
`of ordinary skill in the art; and (4) objective evidence of nonobviousness.
`
`See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`A patent claim “is not proved obvious merely by demonstrating that
`
`each of its elements was, independently, known in the prior art.” KSR,
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`550 U.S. at 418. An obviousness determination requires finding “both ‘that
`
`a skilled artisan would have been motivated to combine the teachings of the
`
`prior art references to achieve the claimed invention, and that the skilled
`
`artisan would have had a reasonable expectation of success in doing so.’”
`
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367–
`
`68 (Fed. Cir. 2016) (citation omitted); see KSR, 550 U.S. at 418 (for an
`
`obviousness analysis, “it can be important to identify a reason that would
`
`have prompted a person of ordinary skill in the relevant field to combine the
`
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`elements in the way the claimed new invention does”). A motivation to
`
`combine the teachings of two references can be “found explicitly or
`
`implicitly in market forces; design incentives; the ‘interrelated teachings of
`
`multiple patents’; ‘any need or problem known in the field of endeavor at the
`
`time of invention and addressed by the patent’; and the background
`
`knowledge, creativity, and common sense of the person of ordinary skill.”
`
`Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1354 (Fed. Cir. 2013)
`
`(citation omitted).
`
`In an inter partes review, Petitioner cannot satisfy its burden of
`
`proving obviousness by employing “mere conclusory statements,” but “must
`
`instead articulate specific reasoning, based on evidence of record” to support
`
`an obviousness determination. In re Magnum Oil Tools Int’l, Ltd., 829 F.3d
`
`1364, 1380–81 (Fed. Cir. 2016). The “factual inquiry” into the reasons for
`
`“combin[ing] references must be thorough and searching, and the need for
`
`specificity pervades.” In re NuVasive, Inc., 842 F.3d 1376, 1381–82 (Fed.
`
`Cir. 2016) (internal quotations and citations omitted). A determination of
`
`obviousness cannot be reached where the record lacks “explanation as to
`
`how or why the references would be combined to produce the claimed
`
`invention.” TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir.
`
`2016); see NuVasive, 842 F.3d at 1382–85; Magnum Oil, 829 F.3d at 1380–
`
`81. Thus, to prevail Petitioner must explain how the prior art would have
`
`rendered the challenged claim unpatentable.
`
`At this final stage, we determine whether a preponderance of the
`
`evidence of the record shows that the challenged claims would have been
`
`obvious in view of the asserted prior art. We analyze the asserted grounds of
`
`unpatentability in accordance with those principles.
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`B. Level of Ordinary Skill in the Art
`
`Petitioner asserts that a person of ordinary skill in the art “would have
`
`a degree in a related field of science including physics, mechanical or
`
`electrical engineering, or equivalent coursework, and at least two years of
`
`experience in the area of automotive safety systems with the equivalent of a
`
`post-graduate education, such as a master’s degree or equivalent knowledge
`
`obtained through work experience, and several years of experience in the
`
`design of vehicle occupant protection systems.” Pet. 12; Ex. 1003 ¶ 39.
`
`Patent Owner does not address the level of ordinary skill in its Patent Owner
`
`Response, but Mr. Nranian testifies that such a person “would have at least a
`
`Bachelor’s degree in electrical, electronic, mechanical, or automotive
`
`engineering, and at least three years of experience in the integration of
`
`airbag, safety, and vehicle occupant protection devices in automotive
`
`vehicles, or equivalent knowledge obtained through work experience in the
`
`relevant field.” Ex. 2013 ¶ 36. We do not discern a difference between
`
`these formulations as applied to the issues in dispute in this proceeding and
`
`the parties do not identify any issue in dispute that allegedly turns on such a
`
`difference.
`
`For purposes of this Final Written Decision, and based on the parties’
`
`proposed definitions and the complete record now before us, we maintain
`
`our previously adopted definition of one of ordinary skill in the art: a person
`
`having at least a Bachelor’s degree in physics, or electrical, electronic,
`
`mechanical, or automotive engineering, or equivalent coursework, and
`
`having several years of experience in the design of vehicle occupant
`
`protection systems in automotive vehicles, or equivalent knowledge obtained
`
`through work experience in the relevant field. See Inst. Dec. 9–10.
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`The level of ordinary skill in the art in this case further is reflected by the
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`prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed.
`
`Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re
`
`Oelrich, 579 F.2d 86, 91 (CCPA 1978).
`
`C. Claim Construction
`
`The ’093 patent has expired. See PO Resp. 11; Ex. 1001, at [60];
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`35 U.S.C. § 154(a)(2). When interpreting claims of an expired patent, our
`
`analysis is similar to that of a district court. In re Rambus, Inc., 694 F.3d 42,
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`46 (Fed. Cir. 2012); see also Black & Decker, Inc. v. Positec USA, Inc., RW,
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`646 Fed. App. 1019, 1024 (Fed. Cir. 2016) (holding that in an inter partes
`
`review, “[c]laims of an expired patent are given their ordinary and
`
`customary meaning in accordance with our opinion in Phillips v. AWH
`
`Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc)”).12 Specifically, claim
`
`terms are given their ordinary and customary meaning, as would be
`
`understood by a person of ordinary skill in the art at the time of the
`
`invention, in light of the language of the claims, the specification, and the
`
`prosecution history of record. Phillips, 415 F.3d at 1313–17. However,
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`there is no presumption of validity, and we do not apply a rule of
`
`construction with an aim to preserve the validity of claims.
`
`Petitioner asserts that “[a]ll claim terms should be given their plain
`
`and ordinary meaning in light of the specification.” Pet. 11. Patent Owner
`
`proposes constructions for three claim terms: (1) “single airbag”;
`
`(2) “a single airbag extending across at least two seating positions of a
`
`
`12 The parties agree that the Phillips standard of claim construction should be
`applied to the claims in this proceeding. Pet. 11; PO Resp. 11.
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`passenger compartment of a vehicle . . . the at least two seating positions
`
`comprising a first seating position in a first seat row of seats of the vehicle
`
`and a second seating position in a second seat row of seats of the vehicle
`
`longitudinally displaced from the first seat row of seats”; and (3) “a plurality
`
`of compartments.” PO Resp. 12–14.
`
`The parties’ dispute does not require express construction of any
`
`claim term. See, e.g., See Nidec Motor Corp. v. Zhongshan Broad Ocean
`
`Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe
`
`terms ‘that are in controversy, and only to the extent necessary to resolve the
`
`controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`
`200 F.3d 795, 803 (Fed. Cir. 1999)). We address certain aspects of Patent
`
`Owner’s proposed constructions in our substantive discussion below.
`
`D. Obviousness in View of, At Least in Part, Leising and Lau
`
`Petitioner asserts that claims 1, 6, 8, 10, 12, 17–21, 26, 27, 33, 39, 43,
`
`and 44 are unpatentable under 35 U.S.C. § 103(a) as obvious in view of
`
`Leising and Lau. Pet. 23–44. Petitioner further asserts that claims 2, 3, 11,
`
`28–32, and 41 are unpatentable under 35 U.S.C. § 103(a) as obvious in view
`
`of Leising, Lau, and Davis; that claims 4 and 13–15 are unpatentable under
`
`35 U.S.C. § 103(a) as obvious in view of Leising, Lau, and Daniel; that
`
`claims 5, 7, 34, and 35 are unpatentable under 35 U.S.C. § 103(a) as obvious
`
`in view of Leising, Lau, and Kaji; that claims 9, 38, 40, 42, and 44 are
`
`unpatentable under 35 U.S.C. § 103(a) as obvious in view of Leising, Lau,
`
`and Steffens; that claims 22, 24, and 25 are unpatentable under 35 U.S.C.
`
`§ 103(a) as obvious in view of Leising, Lau, and Suzuki; that claim 16 is
`
`unpatentable under 35 U.S.C. § 103(a) as obvious in view of Leising, Lau,
`
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`and Paxton; and that claim 23 is unpatentable under 35 U.S.C. § 103(a) as
`
`obvious in view of Leising, Lau, Suzuki, and Marlow. Id. at 44–66.
`
`Patent Owner argues that the cited combination of Leising and Lau
`
`does not disclose all elements of the independent claims, and that Petitioner
`
`has not provided a sufficient reason to combine these references with a
`
`reasonable expectation of success. PO Resp. 25–63. Patent Owner also
`
`presents evidence of secondary considerations. Id. at 63–81.
`
`For the reasons explained below, we determine that Petitioner has
`
`demonstrated, by a preponderance of the evidence, that claims 1–35 and 38–
`
`44 would have been obvious.
`
`1. Summary of Leising
`
`Leising relates to an “[i]nflatable restraint apparatus for automotive
`
`vehicle occupants including an inflatable torso bag structure” and
`
`“[i]nflatable side curtains . . . deployed from the roof.” Ex. 1005, at [57].
`
`Figure 2 of Leising is reproduced below.
`
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`13
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`Figure 2, reproduced above, illustrates a plan view of a vehicle including a
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`restraint system. Id. at 2:46–50. The inflatable restraint apparatus of
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`Leising includes torso restraining bag 43 and side curtain 41. Id. at 1:33–38,
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`3:32–33. Gas source 33 supplies gas to the inflatable restraints. Id. at 3:24–
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`25. Gas reservoir 35 is connected to conduit 37, which extends along the
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`roof to housing area 39, which is located in the roof over the front seat area.
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`Id. at 3:27–31. Conduit 37 is connected to side curtain 41 and torso bag 43.
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`Id. at 3:32–33.
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`“The side curtains and inflated torso restraining bag may be
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`interconnected to facilitate positioning or filling of the inflated structures.”
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`Id. at [57]; see id. at 4:19–23. When deployed, the side curtains extend
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`downwardly between the passenger and the door. Id. at 4:40–41, 5:34–35.
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`Prior to deployment, the restraint apparatus is “adapted to be conveniently
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`and aesthetically stowed in the vehicular roof structure.” Id. at 5:36–39.
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`Figure 8 of Leising is reproduced below.
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`Figure 8, reproduced above, is an enlarged side elevation of a side curtain
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`forming part of the restraint apparatus of Leising. Id. at 2:62–63.
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`A plurality of restraining webs 53 maintain side curtain 41 in a generally flat
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`condition upon inflation. Id. at 3:43–46. Each web 53 includes a notch or
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`recess 55 at upper and lower ends thereof. Id. at 3:50–51.
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`2. Summary of Lau
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`Lau relates to airbag assembly 30, which includes inflator 38, front
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`seat air bag 40 and rear seat air bag 42. Ex. 1006, 2:12–15. Figure 1 of Lau
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`is reproduced below.
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`Figure 1, reproduced above, is a side view of a vehicle showing front and
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`rear seat air bags 40, 42 in the deployed condition. Id. at 1:39–42. In the
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`deployed positions, the “air bags extend between the seated occupants and
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`the adjacent vehicle door.” Id. at 2:32–34. Prior to deployment, “air
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`bags 40 and 42 are rolled to a stored condition and respectively concealed
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`behind break away doors 43 and 45 . . . which conceals the air bag from
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`view.” Id. at 2:15–18.
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`3. Claim 1: Obviousness in view of Leising and Lau
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`Whether the Leising/Lau Combination Teaches all Limitations of
`Claim 1; Whether a Person of Ordinary Skill in the Art Would Have
`Had Reason to Combine Leising and Lau and Would Have Had a
`Reasonable Expectation of Success in Doing So
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`Petitioner’s Arguments and Evidence
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`Claim 1 recites an “airbag system of a vehicle.” As discussed above,
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`Leising and Lau each disclose such an airbag system. See Pet. 12–16.
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`Claim 1 further recites that the airbag system includes “a single airbag
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`extending across at least two seating positions of a passenger compartment
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`of a vehicle, the single airbag arranged to deploy into the passenger
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`compartment along a lateral side of the vehicle and adjacent each of the at
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`least two seating positions.” Further, the claimed “at least two seating
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`positions” include “a first seating position in a first seat row of seats of the
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`vehicle and a second seating position in a second seat row of seats of the
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`vehicle longitudinally displaced from the first seat row of seats, along the
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`lateral side of the vehicle.” In other words, “the airbag for the front and rear
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`seats are combined, i.e., the airbag deploys along substantially the entire side
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`of the vehicle alongside both the front seat and the rear seat.” Ex. 1001,
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`65:29–32.
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`Petitioner relies on the combination of Leising and Lau as teaching
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`these claim features. See Pet. 23–29, 31. Petitioner asserts that “Leising
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`relates to an inflatable side curtain airbag deployed from the roof of a
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`vehicle.” Id. at 12 (citing Ex. 1005, at [57]). In particular, side curtain 41 of
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`Leising is “arranged to deploy from the roof into the passenger compartment
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`along a lateral side of the vehicle.” Id. at 23 (citing Ex. 1005, at [57], 3:38–
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`48, 6:66–5:11, 5:36–39, Figs. 1–3). According to Petitioner, while
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`“Leising’s airbag does not explicitly extend across two longitudinally
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`displaced seating positions along a lateral side of the vehicle,” Leising does
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`include “explicit disclosure of integrating multiple airbag portions that
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`extend across multiple occupants to form a single airbag.” Id. at 24, 26
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`(citing Ex. 1005, 4:19–23; Ex. 1003 ¶ 100). Leising teaches a second row of
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`seats (i.e., the back seats) that are longitudinally displaced from the first row
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`of seats (i.e., the front seats). Id. at 31 (citing Ex. 1005, 3:19–21, Figs. 2, 3).
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`Petitioner argues that “it would have been obvious to extend side
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`curtain 41 [of] Leising to protect rear seat occupants” and that “[a] side
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`airbag curtain extending from the front seat to the rear seat was known as
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`early as 1965.” Id. at 24 (citing Ex. 1003 ¶ 87; Ex. 1017). Thus, according
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`to Petitioner, “[e]xtending a single airbag across the passenger
`
`compartment . . . would have been a viable alternative design which
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`[a person of ordinary skill in the art] would have found obvious to try,” and
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`“such a design would have simply combined prior art elements according to
`
`known methods to yield predictable results.” Id. at 25 (citing Ex. 1003
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`¶ 105).
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`Petitioner additionally points to the regulatory environment, which by
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`1995 included new side impact regulations, as evidence that “it would have
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`been obvious to extend Leising’s side curtain 41 to the rear seat for back seat
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`occupant safety” and that the “extension could be made by elongating and
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`enlarging Leising’s side curtain 41, its housing, and roof storage area along
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`the entire length of the roof.” Id. at 26; Ex. 1003 ¶ 100.
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`Petitioner further relies on Lau, for its express teaching of an airbag
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`assembly that provides side airbag protection for both front and rear
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`occupants. Pet. 27 (citing Ex. 1003 ¶ 103); see Ex. 1006, Fig. 1. According
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`to Petitioner, Leising and Lau are “[i]n the same field (i.e., airbags in
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`vehicles)” and “address the same problem (i.e., how to effectively provide
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`side airbag protection during an accident).” Pet. 27; Ex. 1003 ¶ 106.
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`Petitioner, thus, asserts that “[i]t would have been obvious to [a person of
`
`skill in the art] to extend Leising’s side curtain 41 to protect occupants in the
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`rear seat based on Lau.” Pet. 27; Ex. 1003 ¶ 106.
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`The airbag system of claim 1 further includes “a cover interposed
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`between the single airbag and the passenger compartment to cover the single
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`airbag prior to deployment.” Petitioner notes that “Leising discloses side
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`curtain 41 is stowed in the vehicular roof structure but does not expressly
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`disclose a ‘cover.’” Pet. 29. Petitioner asserts, however, that it would have
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`been obvious to use break away doors as taught in Lau (see Ex. 1006, 2:14–
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`17, Fig. 1), to store the airbag of Leising in an aesthetic manner. Pet. 29;
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`Ex. 1003 ¶ 111. According to Petitioner, “the break away doors would be
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`placed in the roof area and would provide the expected result of allowing the
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`side curtain of Leising to deploy when needed, while keeping the side
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`curtain concealed from view before use.” Pet. 29; Ex. 1003 ¶ 111.
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`Claim 1 further recites “a single gas-providing system that has only
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`one inflator that provides gas to inflate the single airbag and which is
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`arranged apart from the single airbag.” Petitioner points to Leising’s “single
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`gas source 33, having one inflator 35 . . . for supplying gas to side
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`curtain 41,” as teaching this claim feature. Pet. 29–30 (citing Ex. 1005,
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`3:23–25, Figs. 2, 3); Ex. 1003 ¶ 112. According to Petitioner, “it was known
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`to use a single energy source for two airbags and would have been desirable
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`to achieve low-cost, small, and efficient cars.” Pet. 25 (citing Ex. 1003
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`¶ 105; Ex. 1005, 3:23–31). Thus, according to Petitioner, “[e]xtending a
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`single airbag across the passenger compartment with a single inflator would
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`have been a viable alternative design which [a person of ordinary skill in the
`
`art] would have found obvious to try,” and “such a design would have
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`simply combined prior art elements according to known methods to yield
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`predictable results.” Id. (citing Ex. 1003 ¶ 105). Petitioner further notes that
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`Lau discloses inflator 38 to generate inflation gas for both front occupant
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`bag 40 and rear occupant bag 42. Id. at 30 (citing Ex. 1006, 2:28–34).
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`According to Petitioner, a person of ordinary skill in the art “would realize a
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`separate airbag with its own inflator is not needed for the rear seat because
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`Leising and Lau both disclose using a single inflator for multiple airbag
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`portions.” Id.; Ex. 1003 ¶ 114.
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`Regarding the claimed “conduit leading from the single gas-providing
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`system to provide gas to inflate the single airbag, the conduit being arranged
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`to deliver the gas from the single gas-providing system into the single
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`airbag,” Petitioner points to tube 37 of Leising that extends from single gas
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`reservoir 35 to side curtain 41, and delivers gas thereto, as disclosing this
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`claim feature. Pet. 30 (citing Ex. 1005, 3:28–33, Figs. 2, 3).
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`Finally, claim 1 recites that “the single airbag has a plurality of
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`compartments for receiving the gas, and wherein the plurality of
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`compartments are in flow communication with each other.” Petitioner
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`points to disclosure in Leising of the use of “restraining webs 53 to form a
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`plurality of compartments, in a vertical direction,” as teaching this claim
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`feature. Id. at 31–32 (citing Ex. 1005, 2:62–63, 3:1–2, 3:43–49, Figs. 8, 10,
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`11); Ex. 1003 ¶ 118. Petitioner further asserts that “restraining webs 53 do
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`not extend the entire length of side curtain 41,” and, thus, “the compartments
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`in side curtain 41 are in flow communication.” Pet. 32–33 (citing Ex. 1005,
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`3:37–42, Figs. 8, 10, 11; Ex. 1003 ¶ 119).
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`Patent Owner’s Arguments and Evidence and Our Analysis
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`In its Patent Owner Response, Patent Owner argues that several
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`limitations of the independent claims are missing from Petitioner’s proposed
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`combination. See PO Resp. 25–28, 61–63. Specifically, Patent Owner
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`asserts that the cited combination does not teach or suggest “a single airbag
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`extending across . . . a lateral side of the vehicle” across two passenger
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`compartments; or “a plurality of compartments [with] flow communication.”
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`Id. Patent Owner also argues that Petitioner fails to show that it would have
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`been obvious to modify Leising in view of Lau with any reasonable
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`expectation of success. Id. at 28–61. We address each of Patent Owner’s
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`arguments in turn.
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`“single airbag extending across . . . a lateral side of the vehicle”
`across two passenger compartments
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`Patent Owner argues that the “combination of Leising and Lau would
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`not have taught or suggested ‘a single airbag extending across a lateral side
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`of the vehicle’ across two passenger compartments, as required by each of
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`the challenged independent claims.” PO Resp. 25. In this regard, Patent
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`Owner argues that Petit
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