`571-272-7822
`
`
`Paper No. 22
`Entered: March 22, 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 IPR2016-01794
`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
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`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 (“the challenged claims”) of U.S. Patent
`No. 9,043,093 B2 (Ex. 1001, “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 6 (“Prelim. Resp.”)), relying
`on a Declaration of Michael Nranian P.E. (Ex. 2008) in support of its
`positions.
`
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`1 Petitioner identifies Toyoda Gosei North America Corp.; Autoliv, Inc.; and
`Mobis America, Inc. as additional real parties-in-interest. Pet. 1.
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`Pursuant to 35 U.S.C. § 314(a), on March 23, 2017, we instituted inter
`partes review on the following grounds:
`whether claims 1, 10, 17–20, 26, 27, and 36–40 would have
`been obvious under 35 U.S.C. § 103(a) in view of HÅland2 and
`Stütz3;
`whether claims 2 and 3 would have been obvious under
`35 U.S.C. § 103(a) in view of HÅland, Stütz, and Faigle4;
`whether claims 5 and 7 would have been obvious under
`35 U.S.C. § 103(a) in view of HÅland, Stütz, and Kaji5;
`whether claim 9 would have been obvious under 35 U.S.C.
`§ 103(a) in view of HÅland, Stütz, and Steffens6;
`whether claims 11, 28–32, and 41 would have been obvious
`under 35 U.S.C. § 103(a) in view of HÅland, Stütz, and Davis7;
`whether claim 16 would have been obvious under 35 U.S.C.
`§ 103(a) in view of HÅland, Stütz, and Swann8;
`whether claims 22, 24, and 25 would have been obvious under
`35 U.S.C. § 103(a) in view of HÅland, Stütz, and Suzuki9;
`
`2 U.S. Patent No. 5,788,270, issued Aug. 4, 1998, filed Feb. 20, 1996
`(Ex. 1008).
`3 U.S. Patent No. 5,957,487, issued Sept. 28, 1999, filed Mar. 19, 1997
`(Ex. 1009).
`4 U.S. Patent No. 6,176,518, issued Jan. 23, 2001, filed July 26, 1999
`(Ex. 1010).
`5 U.S. Patent No. 5,222,761, issued June 29, 1993 (Ex. 1012).
`6 U.S. Patent No. 5,524,924, issued June 11, 1996, filed Nov. 15, 1993
`(Ex. 1013).
`7 U.S. Patent No. 5,269,561, issued Dec. 14, 1993 (Ex. 1014).
`8 U.S. Patent No. 5,507,890, issued Apr. 16, 1996, filed May 17, 1994
`(Ex. 1016).
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`whether claim 23 would have been obvious under 35 U.S.C.
`§ 103(a) in view of HÅland, Stütz, Suzuki, and Marlow10;
`whether claim 21 would have been obvious under 35 U.S.C.
`§ 103(a) in view of HÅland, Stütz, and Enders11;
`whether claims 1, 4, 6, 8, 10, 17–20, 26, 27, and 36–40 would
`have been obvious under 35 U.S.C. § 103(a) in view of HÅland and
`Daniel12;
`whether claims 1, 10, 12–15, 17–20, 26, 27, 33, and 36–40
`would have been obvious under 35 U.S.C. § 103(a) in view of HÅland
`and Tanase13;
`whether claims 34 and 35 would have been obvious under
`35 U.S.C. § 103(a) in view of HÅland, Tanase, and Kaji; and
`whether claims 42–44 would have been obvious under
`35 U.S.C. § 103(a) in view of HÅland.
`See Paper 7 (“Inst. Dec.”). Subsequent to institution, Patent Owner filed a
`Patent Owner Response (Paper 10, “PO Resp.”), along with a second
`declaration of Michael Nranian P.E. (Ex. 2018) to support its positions.
`Petitioner filed a Reply (Paper 13, “Reply”) to the Patent Owner Response.
`An oral hearing was held on December 6, 2017. A transcript of the
`hearing is included in the record. Paper 21 (“Tr.”).
`
`9 U.S. Patent No. 4,021,058, issued May 3, 1977 (Ex. 1017).
`10 U.S. Patent No. 3,966,225, issued June 29, 1976 (Ex. 1015).
`11 U.S. Patent No. 5,845,935, issued Dec. 8, 1998, filed Mar. 7, 1997
`(Ex. 1019).
`12 U.S. Patent No. 5,540,459, issued July 30, 1996, filed Oct. 5, 1994
`(Ex. 1011).
`13 U.S. Appl. Pub. 2002/0180192, published Dec. 5, 2002, filed May 23,
`2002 (Ex. 1018).
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`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 5, 2; Pet. 1–2.
`Claims 1–44 of the ’093 patent also are subject to review in
`IPR2016-01790. See Autoliv ASP, Inc. v. Am. Vehicular Scis.,
`Case IPR2016-01790 (PTAB Mar. 28, 2017) (Paper 16). 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) (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 5, 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 (“the ’330 application”) on
`October 31, 2007. Ex. 1001, at [21], [22], [54]. The ’093 patent claims
`priority, via a chain of continuation-in-part and divisional applications, to
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`U.S. application No. 08/571,247 (“the ’247 application”), filed on December
`12, 1995.14 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
`
`14 As discussed in more detail infra (see Section II.D), the parties dispute the
`priority date to which the claims of the ’093 patent are entitled.
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`airbag arranged to deploy into the passenger compartment along
`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.15
`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,
`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
`
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`15 Neither party directs our attention to specific objective evidence of
`nonobviousness.
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`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
`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
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`obvious in view of the asserted prior art. We analyze the asserted grounds of
`unpatentability in accordance with those principles.
`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. 21 (citing Ex. 1003
`¶ 37). 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. 2018 ¶ 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
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`protection systems in automotive vehicles, or equivalent knowledge obtained
`through work experience in the relevant field. See Inst. Dec. 15–16.
`The level of ordinary skill in the art in this case further is reflected by the
`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. 16; Ex. 1001, at [60];
`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,
`46 (Fed. Cir. 2012); see also Black & Decker, Inc. v. Positec USA, Inc., RW,
`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)”).16 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,
`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 “all claim terms should be given their plain and
`ordinary meaning in light of the specification.” Pet. 22. Patent Owner
`proposes constructions for three claim terms: (1) “single airbag”;
`
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`16 The parties agree that the Phillips standard of claim construction should be
`applied to the claims in this proceeding. Pet. 11; PO Resp. 16.
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`(2) “a single airbag extending across at least two seating positions of a
`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. 16–20.
`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)).
`D. Effective Filing Date of the ’093 Patent Claims; Status of Asserted
`References as Prior Art
`Patent Owner argues that the asserted references HÅland, Stütz,
`Faigle, Tanase, and Enders are not available as prior art to the claims of the
`’093 patent. PO Resp. 20–28. This argument is premised on Patent
`Owner’s contention that the claims of the ’093 patent are entitled to the
`earliest filing date to which the ’093 patent claims priority—namely, the
`December 12, 1995 filing date of the ’247 application. See id.; see also id.
`at 28–66 (Patent Owner arguing the claims of the ’093 patent are entitled to
`a priority date of December 12, 1995). Petitioner, on the other hand, asserts
`that the claims of the ’093 patent are entitled to a priority date no earlier than
`October 27, 2004, the filing date of U.S. application No. 10/974,919
`(“the ’919 application”). Pet. 10–21. If the claims of the ’093 patent are not
`entitled to the December 12, 1995 filing date of the ’247 application, then
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`HÅland, Stütz, and Enders are available as prior art thereto, because they
`were each filed prior to the filing date of the next application in the priority
`chain (i.e., May 6, 1998). See Ex. 1001, at [60]; Ex. 1008, at [22]; Ex. 1009,
`at [22]; Ex. 1019, at [22]. Further, if the claims of the ’093 patent are
`entitled only to the October 27, 2004 filing date of the ’919 application, as
`asserted by Petitioner, then Faigle and Tanase also are available as prior art
`thereto, because they were filed and published prior to October 27, 2004.
`See Ex. 1010, at [22], [45]; Ex. 1018, at [22], [43]. Accordingly, we address
`the parties’ arguments regarding the priority date of the challenged claims,
`before addressing Petitioner’s substantive challenges to the claims.
`On its face, the ’093 patent claims priority, via a chain of
`continuation-in-part and divisional applications, back to December 12, 1995.
`Ex. 1001, at [60]. A graphical representation of the priority chain of
`the ’093 patent, prepared by Petitioner (Pet. 10), is reproduced below for
`convenience.
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`The above chart provides a graphical representation of the priority chain of
`the ’093 patent.
`For a claim to be entitled to the priority date of an earlier application
`under 35 U.S.C. § 120, each application in the chain leading back to the
`earliest application must provide adequate written description support for
`that claim, as required by 35 U.S.C. § 112. Zenon Envt’l, Inc. v. U.S. Filter
`Corp., 506 F.3d 1370, 1378 (Fed. Cir. 2007); see also In re Hogan, 559 F.2d
`595, 609 (CCPA 1977) (“[T]here has to be a continuous chain of copending
`applications each of which satisfies the requirements of § 112 with respect to
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`the subject matter presently claimed.”). In order to satisfy the written
`description requirement, the disclosure of the earlier filed application must
`describe the later claimed invention “in sufficient detail that one skilled in
`the art can clearly conclude that the inventor invented the claimed invention
`as of the filing date sought.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565,
`1572 (Fed. Cir. 1997); see also Ariad Pharm., Inc. v. Eli Lilly & Co.,
`598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (based on “an objective
`inquiry into the four corners of the specification from the perspective of a
`person of ordinary skill in the art . . . , the specification must describe an
`invention understandable to that skilled artisan and show that the inventor
`actually invented the invention claimed.”). “In other words, the test for
`sufficiency is whether the disclosure of the [earlier] application relied upon
`reasonably conveys to those skilled in the art that the inventor had
`possession of the claimed subject matter” as of the earlier filing date. Ariad,
`598 F.3d at 1351; see also Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d
`1316, 1331–32 (Fed. Cir. 2008) (“While the earlier application need not
`describe the claimed subject matter in precisely the same terms as found in
`the claims at issue, the prior application must ‘convey with reasonable
`clarity to those skilled in the art that, as of the filing date sought, [the
`inventor] was in possession of the invention.’” (internal citations omitted,
`emphasis removed)).
`However, “[e]ntitlement to a filing date does not extend to subject
`matter which is not disclosed, but would be obvious over what is expressly
`disclosed.” In re Huston, 308 F.3d 1267, 1277 (Fed. Cir. 2002) (quoting
`Lockwood, 107 F.3d at 1571–72). “[I]t is the specification itself that must
`demonstrate possession. And while the description requirement does not
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`demand any particular form of disclosure, . . . or that the specification recite
`the claimed invention in haec verba, a description that merely renders the
`invention obvious does not satisfy the requirement.” Ariad, 598 F.3d at
`1352 (citing Carnegie Mellon Univ. v. Hoffmann–La Roche Inc., 541 F.3d
`1115, 1122 (Fed. Cir. 2008); Lockwood, 107 F.3d at 1571–72); see also
`Tronzo v. Biomet, Inc., 156 F.3d 1154, 1158 (Fed. Cir. 1998) (“For a claim
`in a later-filed application to be entitled to the filing date of an earlier
`application under 35 U.S.C. § 120 (1994), the earlier application must
`comply with the written description requirement of 35 U.S.C. § 112, ¶ 1
`(1994). . . . A disclosure in a parent application that merely renders the
`later-claimed invention obvious is not sufficient to meet the written
`description requirement; the disclosure must describe the claimed invention
`with all its limitations.” (internal citations omitted)).
`According to Petitioner, the earliest disclosure of certain limitations of
`the claims of the ’093 patent is in the ’919 application, which was filed on
`October 27, 2004. Pet. 12–15, 18–21. In particular, Petitioner contends that
`the earlier applications (i.e., those highlighted in yellow in Petitioner’s
`graphical representation of the priority chain, reproduced above) do not
`contain written description support for the following limitations:
`(a) either “a single airbag extending across at least two seating
`positions of a passenger compartment of a vehicle” or
`“arranging the single airbag to extend across at least two seating
`positions of a passenger compartment of
`the vehicle,”
`(b) “wherein the single airbag has a plurality of compartments
`for receiving the gas,” and (c) “wherein the plurality of
`compartments are in flow communication with each other.”
`Id. at 12.
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`Patent Owner argues that each of these features is, in fact, supported
`in the ’247 application and the other applications in the priority chain. See
`PO Resp. 28–66. For the reasons discussed below, we determine that the
`’247 application does not provide sufficient written description support for
`at least the limitation “wherein the plurality of compartments are in flow
`communication with each other” (“the flow communication limitation”).17
`Regarding the flow communication limitation, Patent Owner asserts,
`relying on testimony from Mr. Nranian, that “there are numerous other
`embodiments that are described in the ‘238 patent [corresponding to the ‘247
`application] . . . that do disclose compartments that receive (or are receiving
`gas) indirectly from an inflator, via other compartments.” Id. at 41–42
`(quoting Ex. 2018 ¶ 93) (alterations by Patent Owner). In support of this,
`Patent Owner notes that “the ‘247 application (as well as the other
`applications in the priority chain) explicitly defines the term ‘airbag’ to
`encompass an airbag having a plurality of compartments: ‘[t]he term
`“airbag” as used herein means either the case where the airbag module 100
`contains a single airbag, as in most conventional designs, or where the
`airbag module 100 contains a plurality of airbags, or where the airbag
`module 100 contains a single airbag having a plurality of compartments
`
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`17 In view of this determination, we need not address whether the ’247
`application includes written description support for the other limitations
`identified by Petitioner—namely, “a single airbag extending across at least
`two seating positions of a passenger compartment of a vehicle”/“arranging
`the single airbag to extend across at least two seating positions of a
`passenger compartment of the vehicle” and “wherein the single airbag has a
`plurality of compartments for receiving the gas.”
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`which deploy in concert to protect an occupant.’” Id. at 40 (quoting
`Ex. 202018, 131 (lines 4–7)19) (emphasis Patent Owner’s).
`According to Patent Owner, because the ’247 application “explicitly
`define[s] the term ‘airbag’ to include ‘a single airbag having a plurality of
`compartments which deploy in concert to protect an occupant’” (id. at 42
`(citing Ex. 2020, 131:4–7)), and because “none of [the original] claims [of
`the ’247 application] requires each of the compartments in the airbag to be
`directly filled by the inflator” (id. (citing Ex. 2020, 51–56)), these claims,
`therefore, “describe an airbag having a plurality of compartments in which
`some of the compartments are necessarily filled with gas from being in flow
`communication with neighboring compartments” (id. at 42–43). We
`disagree. Although Patent Owner is correct that “none of [the original]
`claims [of the ’247 application] requires each of the compartments in the
`airbag to be directly filled by the inflator” (id. at 42), Patent Owner’s
`conclusion (i.e., that the claims “describe an airbag having a plurality of
`compartments in which some of the compartments are necessarily filled with
`gas from being in flow communication with neighboring compartments” (id.
`at 42–43)) does not necessarily follow. Instead, the claims are silent as to
`
`18 Citations to Exhibit 2020, which is the file history of the ’247 application,
`are to the page numbers added by Patent Owner in the bottom right-hand
`corner of the page.
`19 Patent Owner provides citations to the ’247 application, as well as parallel
`citations to corresponding portions of the intervening applications. For
`efficiency, we include only the citations to the ’247 application. We note
`that Patent Owner’s citations to the Specification of the ’247 application are
`to a substitute specification, which was filed to provide sufficient top
`margins (see Ex. 2020, 101 (Office Action, requiring substitute
`specification), 176–77 (indicating the substitute specification contains no
`new matter)).
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`specifically how the claimed airbag (with or without compartments) is
`inflated. The generic description in the Specification that the term “airbag”
`includes, among other distinct possibilities, “a single airbag having a
`plurality of compartments which deploy in concert to protect an occupant,”
`coupled with silence in the claims as to the specifics of how the claimed
`airbags are inflated is insufficient to support a conclusion that the original
`claims of the ’247 application actually disclose the claimed flow
`communication limitation. See Huston, 308 F.3d at 1277 (“Entitlement to a
`filing date does not extend to subject matter which is not disclosed, but
`would be obvious over what is expressly disclosed.”); see also Ex. 1027,
`31:5–11 (Mr. Nranian admitting during cross-examination that an airbag
`with a plurality of compartments, “could have plurality of compartments in
`flow communication with each other or could have a plurality of
`compartments that are not in flow communication with each other.”
`(emphasis added)); Reply 8.
`Patent Owner’s argument during oral hearing that the recitation in
`original dependent claim 3 of the ’247 application, that the “inflator
`means . . . [has] a length which is more than half the length of said airbag”
`(Ex. 2020, 51), indicates that the “inflator means” of claim 1 may have a
`length of only half the length of the airbag, and thus other compartments of
`the airbag must necessarily be in flow communication in order to be inflated
`(see Tr. 21:24–24:6) is similarly unpersuasive.20 First, this argument
`presupposes multiple compartments in the airbag of claim 1, but as Patent
`
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`20 Because Patent Owner’s argument is not persuasive, we do not address
`Petitioner’s contention that this argument was made only at the oral hearing,
`and was not included in the Patent Owner Response. See Tr. 29:7–11.
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`Owner admits, “airbag” also includes a single, non-compartmented airbag,
`which would not require any flow communication between compartments in
`order to be inflated, even if the inflator means is only half the length of the
`airbag. See, e.g., PO Resp. 40. Second, Patent Owner does not direct us to
`any description of an “inflator means” in the Specification of the ’247
`application having a length of half or less than half the length of the airbag,
`and we do not discern any. Instead, in discussing the preferred
`embodiments, the ’238 patent discloses that nozzle 115 delivering gas from
`tube 121 to airba