Trials@uspto.gov
`571.272.7822
`
`
`
`
`
` Paper No. 75
`Entered: May 2, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`CAMPBELL SOUP COMPANY,
`CAMPBELL SALES COMPANY, and
`TRINITY MANUFACTURING, LLC,
`Petitioner,
`v.
`GAMON PLUS, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00087
`Patent 8,827,111 B2
`____________
`
`
`Before GRACE KARAFFA OBERMANN, BART A. GERSTENBLITH,
`and ROBERT L. KINDER, Administrative Patent Judges.
`
`GERSTENBLITH, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a); 37 C.F.R. § 42.73
`
`
`
`
`
`
`

`

`IPR2017-00087
`Patent 8,827,111 B2
`
`
`INTRODUCTION
`I.
`Campbell Soup Company, Campbell Sales Company, and Trinity
`Manufacturing, LLC (collectively, “Petitioner”) filed a Petition (Paper 2,
`“Pet.”) requesting institution of inter partes review of claims 1–35 of
`U.S. Patent No. 8,827,111 B2 (Ex. 1001, “the ’111 patent”). Gamon Plus,
`Inc. (“Patent Owner”) filed a Preliminary Response (Paper 9) to the Petition.
`Pursuant to 35 U.S.C. § 314, we instituted this trial (“Institution Decision”)
`as to claims 1–16, 27, 28, and 32–35 of the ’111 patent. Paper 12 (“Inst.
`Dec.”). In particular, inter partes review was instituted to address three
`grounds of unpatentability, pursuant to 35 U.S.C. § 103(a), challenging the
`following groups of claims: (1) claims 1–16; (2) claims 27, 28, 33, and 34;
`and (3) claims 32 and 35. Inst. Dec. 52.
`After the Institution Decision, Patent Owner filed a Patent Owner
`Response (Paper 15, “PO Resp.”), Petitioner filed a Reply to the Patent
`Owner Response (Paper 31, “Pet. Reply”), and Patent Owner filed a
`Sur-Reply (Paper 60, “PO Sur-Reply”). Patent Owner states in its Response
`that it “moves to cancel and formally disclaims claims 1 to 16 of the
`‘111 patent” and does not address the patentability challenge to those claims
`in its Response. PO Resp. 2. Petitioner acknowledges Patent Owner’s
`request to cancel claims 1–16 and does not address the patentability
`challenge to those claims in its Reply. Pet. Reply 1.
`In addition to the papers noted above, Petitioner filed a Motion to
`Exclude Evidence (Paper 44, “Pet. Mot.”), Patent Owner filed an Opposition
`to Petitioner’s Motion to Exclude Evidence (Paper 52, “PO Opp.”), and
`Petitioner filed a Reply in support of its Motion (Paper 59, “Pet. Reply”).
`Patent Owner filed a Motion for Observations on Cross-Examination of
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`IPR2017-00087
`Patent 8,827,111 B2
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`Steven C. Visser (Paper 45) and Petitioner filed a Response to Patent
`Owner’s Observations (Paper 51). An oral argument was held January 23,
`2018, the transcript of which is entered into the record (Paper 72, “Tr.”).
`We have jurisdiction under 35 U.S.C. § 6(c). This Decision is a final
`written decision under 35 U.S.C. § 318(a) as to the patentability of the
`challenged claims. Based on the record before us, we (1) grant Patent
`Owner’s request to cancel claims 1–16, and (2) determine that Petitioner has
`not demonstrated, by a preponderance of the evidence, that claims 27, 28,
`and 32–35 of the ’111 patent are unpatentable.
`
`Related Proceedings
`
`The parties indicate that the ’111 patent is asserted in Gamon Plus,
`Inc., et al. v. Campbell Soup Co., et al., No. 15-cv-8940-CRN-YBK
`(N.D. Ill.). Pet. 1–2; Paper 7, 1. Petitioner indicates that U.S. Patent
`Application No. 14/861,017, which is still pending before the Office, claims
`priority to the application that issued as the ’111 patent, and may be affected
`by a decision in this proceeding. Pet. 2.
`
`Real Parties in Interest
`
`The Petition identifies “Campbell Soup Company,” “Campbell Sales
`Company,” and “Trinity Manufacturing, L.L.C.” as real parties in interest.
`Pet. 1. Patent Owner identifies “Gamon Plus, Inc.” and “Gamon
`International, Inc.” as real parties in interest (collectively, “Gamon”).
`Paper 7, 1.
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`IPR2017-00087
`Patent 8,827,111 B2
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`
`The References
`
`Petitioner relies on the following references:
`European Patent Application Publication No. 0490693 A2, published
`June 17, 1992 (Ex. 1020, “Nesso”)1;
`U.S. Patent No. 3,395,809, issued August 6, 1968 (Ex. 1021,
`“Mellion”); and
`U.S. Patent No. 2,382,191, issued August 14, 1945 (Ex. 1023,
`“Weichselbaum”).
`
`Instituted Grounds of Unpatentability
`
`We instituted trial based on the following grounds of unpatentability:
`
`References
`’751 publication and Deffner
`Weichselbaum and Nesso
`Weichselbaum, Nesso, and Mellion
`
`Basis
`§ 103(a)
`§ 103(a)
`§ 103(a)
`
`Claims
`Challenged
`1–16
`27, 28, 33, and 34
`32 and 35
`
`Petitioner relies upon two declarations by Mr. Steven Visser, one filed
`with the Petition and dated October 14, 2016 (Ex. 1002, the “Visser
`Declaration”), and another filed with Petitioner’s Reply dated October 13,
`2017 (Ex. 1065, the “Visser Reply Declaration”). Patent Owner relies upon
`two declarations by Mr. Terry Johnson, a first declaration dated July 12,
`
`
`1 This reference identifies James Roderick Oattes as the named inventor and
`“NESSO (ENGINEERS) LIMITED” as the applicant. Ex. 1020, 1. The
`parties refer to this reference as “Nesso,” and we do the same for
`consistency.
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`IPR2017-00087
`Patent 8,827,111 B2
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`2017 (Paper 16, the “Johnson Declaration”), and a supplemental declaration,
`dated August 2, 2017 (Paper 53, “the “Johnson Supplemental Declaration”).2
`
`The ’111 Patent
`
`The ’111 patent is directed to “dispenser racks and displays” and “to a
`compact, easy to assemble, easy to load and unload multiple chute dispenser
`with an integrated display.” Ex. 1001, 1:15–18. The dispenser includes “[a]
`set of panels having chutes therebetween. The chutes being defined by
`curvilinear rails on such panels. The curvilinear rails having stops thereon
`for stopping the products for viewing.” Id. at 1:58–61.
`Figures 1 and 2 of the ’111 patent are shown below:
`
`
`Figure 1 of the ’111 patent “is a side view of a panel” (id. at 1:66–67), and
`Figure 2 is “an edge on view of a panel” (id. at 2:1–2). As shown, panel 10
`is the “main element of the multi-chute gravity feed dispenser display” and
`
`
`2 Paper 16 is erroneously identified in our filing system as “EXHIBIT 2001
`Declaration of Terry Johnson.” Patent Owner, however, did not file an
`exhibit 2001 in this case. Paper 53 is Bates stamped erroneously with the
`phrase “Gamon Exhibit no. 2027.” Paper 53, 1. Exhibit 2027 appears to be
`a copy of Exhibit 1065 marked during Mr. Visser’s deposition as “Exhibit
`2.” See Ex. 2027, 1. Therefore, we cite to each of Mr. Johnson’s
`declarations by the paper number under which it was filed.
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`Patent 8,827,111 B2
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`“is generally formed as a vertical upright panel.” Id. at 4:8–10. Panel 10 is
`“preferably configured to be used in connection with conventional store
`shelving in place at a retailer.” Id. at 4:9–10.
`The ’111 patent explains:
`
`The panel 10 includes at least one set of rails 20 which are
`formed as ribs extending normal to a side 12 of the panel 10 to
`cooperatively define a plurality of chutes 22, 24 for product
`which have a boustrophedonic or C-shaped configuration. A first
`rail 26 is disposed in the generally medial portion of the side 12
`inclined to the horizontal, angled generally downwardly, and
`having a linear configuration. The second rail 28 is disposed
`about the first rail 26 and has a curvilinear configuration which
`is substantially C-shaped. The first and second rails 26 and 28
`each having a minimum incline to the horizontal such that
`product is capable of continuous movement along such rails in
`response to a normal gravitational force, and where as shown in
`FIG. 1, can be a substantially slight angle. A first product travel
`stop or stop 30 is formed at a lowest extent of the second rail 28
`as an enlarged portion thereof. The first stop 30 engages the
`product to prevent unwanted further movement down chute 22
`and positions the product for viewing and selection by a
`customer. A third rail 32 has a curvilinear configuration which
`is substantially L-shaped and has a second stop 34, formed as an
`enlarged portion thereof at a lower end adjacent first stop 30, and
`prevents further downward motion down chute 24.
`Ex. 1001, 4:19–41.
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`Patent 8,827,111 B2
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`
`Figure 3A of the ’111 patent is shown below:
`
`
`Figure 3A of the ’111 patent “is a side perspective view of a display
`module.” Id. at 2:3–4. The ’111 patent explains:
`
`FIG. 3A shows a pair of panels, a display module 16 . . .
`connected by a pair of
`retention pins
`to define a
`dispenser module 16, one or more such dispenser modules 16
`making up a multi-chute gravity feed dispenser display. The
`chutes 22, 24 are defined between adjacent pairs of panels 10 and
`are of a width slightly greater than the width of products 90
`and which allow the products to be stored and dispensed
`therefrom.
`Id. at 5:9–17.
`Figure 6A of the ’111 patent is shown below:
`
`
`
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`IPR2017-00087
`Patent 8,827,111 B2
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`Figure 6A of the ’111 patent “is a side view of both a display module with a
`loading magazine in a loading position.” Id. at 2:26–27. The ’111 patent
`explains that “[w]hen loaded, the new product 92 simply rolls into the
`chute 22 or 24 whichever is empty and available.” Id. at 7:43–44.
`The ’111 patent describes, as an advantage of the invention, “the
`return area or replace stall 110 which is defined between the first and second
`stops 30 and 34 and a cradle member or ear 112 formed on the panel 10.”
`Id. at 7:49–52. In particular, “[t]he replace stall 110 is further defined as an
`area in which a product 90 may be replaced if the consumer decides not to
`purchase.” Id. at 7:52–54. Figure 6A shows the location of product 90, in
`replace stall 110, after being replaced by a consumer. Id. at 7:55–56.
`
`Illustrative Claim
`
`Claims 1, 8, and 27 are the independent claims challenged in this
`proceeding. Claims 2–7 depend from claim 1, claims 9–16 depend from
`claim 8, and claims 28 and 32–35 depend from claim 27. Claim 27 is
`illustrative of the claimed subject matter and is reproduced below:
`27. A display rack comprising:
`a plurality of generally cylindrical products all having
`substantially equal diameters and heights;
`a pair of laterally spaced vertical panels;
`first and second product support structures supported
`between said panels and defining respectively first and second
`chutes configured for the products to pass therethrough, each
`chute having a respective forward-facing product loading
`opening in a generally vertically disposed forward side of the
`display rack and configured to receive the products loaded into
`the chutes through the forward side, and a respective dispensing
`end below the product loading opening such that the cylindrical
`products when placed in the product loading opening proceed by
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`IPR2017-00087
`Patent 8,827,111 B2
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`
`force of gravity through the associated chute to the dispensing
`end;
`
`the loading opening and dispensing end of the second
`chute being situated between the loading opening and dispensing
`end of the first chute;
`wherein the chutes each have a stop structure supported
`adjacent the respective dispensing end and blocking movement
`of the products in the chute beyond said stop structure such that
`the products must be elevated above the stop structure to be
`removed from the chute; and
`wherein the stop structure of the first chute is located at a
`horizontal distance forward of, and at a vertical distance lower
`than, the stop structure of the second chute such that when a user
`removes one of the products against said stop structure of the first
`chute, the product must be lifted vertically out of the first chute
`to a withdrawal height wherein the product is at least partly
`horizontally in front of the stop structure of the second chute;
`wherein the horizontal distance that the stop structure of
`the second chute is offset rearwardly from the stop structure of
`the first chute is sufficient that one of the products removed by a
`user from the rack can be replaced on the rack and supported by
`resting directly on a rearward portion of a forwardmost product
`in the first chute; and
`said panels having a forward edge portion extending
`vertically adjacent the loading openings of the chutes, the
`forward edge portion defining a rearward recess therein adjacent
`the dispensing ends extending a rearward distance toward the
`stop structure of the second chute at least a diameter of the
`products and exposing at least a portion of a generally circular
`end surface of the forwardmost product in the first chute, and at
`least a portion of a generally circular end portion of the replaced
`product when resting thereon.
`Ex. 1001, 19:36–20:16.
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`IPR2017-00087
`Patent 8,827,111 B2
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`
`Background
`
`Mr. Johnson3 came up with the initial design idea underlying the
`patent after visiting a store and having a difficult time finding the home-style
`chicken noodle soup. Ex. 1066, 27:13–28:24. Unable to find the type of
`soup he was looking for, he ended up buying a plain noodle soup that did not
`go over well at home. Id. Mr. Johnson recognized that if he was having a
`problem finding a particular type of soup, others were likely having the same
`problem, and so he came up with a display rack that would visually help
`purchasers of canned soup. Id. at 28:10–16.
`After coming up with an initial concept, Mr. Johnson, on behalf of
`Gamon,4 reached out to Campbell Soup Company’s CEO, David Johnson
`(no relation to Terry), to pitch the idea of putting Campbell’s soup cans on
`their side and then having them roll down an inclined plane, and also having
`“a big convex sign on the front of it to talk to the consumer.” Id. at 27:13–
`16, 29:11–30:10. Mr. Johnson testified that David Johnson quickly hung up
`because “[n]o one wanted me to turn the can on its side” at that time. Id.
`In later discussions with Campbell around 2002, Mr. Johnson pitched
`his concept to an executive board at Campbell, including Carl Johnson (no
`relation to Terry). Id. at 30:11–32:18. During this time, Campbell
`
`
`3 There are several individuals with the last name Johnson mentioned in this
`Decision. For clarity, we refer to Terry Johnson as “Mr. Johnson” and refer
`to each of the other Johnsons by using their first and last names.
`4 Mr. Johnson is the “CEO of Patent Owner Gamon Plus, Inc.” and also a
`named inventor on the challenged patent. Paper 16 ¶ 1. Mr. Johnson states
`that Gamon International is a corporate affiliate of Patent Owner Gamon
`Plus, Inc., and Gamon International is the entity responsible for delivering
`display racks to Campbell. Id. ¶ 8; see also Ex. 2032, 12. We refer to the
`Gamon entities collectively as “Gamon,” unless otherwise noted.
`
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`Patent 8,827,111 B2
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`sponsored a project by a research company called Cannondale. See, e.g.,
`Ex. 2032. According to statements attributed to Campbell’s Mr. Finnel, the
`consumer research indicated that the soup category was one of the most
`difficult to shop in supermarkets. Ex. 2013, 1 (POP TIMES article from
`February 2004 discussing an interview with Jacques Finnel, Campbell’s
`marketing manager for retail development). The initial Cannondale survey,
`as conveyed to Mr. Johnson, suggested that sales may be lost if Campbell
`put its soup cans on their sides at the point of sale. Ex. 1066, 32:19–33:10.
`Campbell agreed, however, to run a test of Gamon’s display rack in a small
`number of stores. Id. at 32:3–33:20; see also Ex. 2031, 5, 6, 10–12, 14–17,
`26–29 (Cannodale report in 2002 noting that the Gamon display shelving
`would be tested). Soon after, Campbell allowed Gamon’s gravity feed
`display rack to be tested in 25 stores selling Campbell’s condensed soup.
`Ex. 1066, 32:3–33:20. Mr. Johnson testified that the tested embodiment of
`the gravity feed display rack meets the limitations of at least claim 27 of the
`’111 patent.5 Paper 16 ¶ 14; see Ex. 2032, 4–10 (displaying Gamon’s
`gravity feed display rack at various test stores); see also Paper 16
`(discussing Exs. 2009–2012, which show photographs of different views of
`the display rack).
`Gamon’s commercial embodiment of the patented design was tested
`in a select number of stores and referred to as the iQ-Shelf Maximizer or
`iQ Maximizer. Ex. 1066, 32:3–33:20, 35:13–15; Ex. 2013, 1. Considering
`the outcome of the test market using the Gamon gravity feed display rack to
`
`
`5 Petitioner does not contend otherwise. Tr. 46:20–47:1 (Petitioner
`acknowledging that it provided no evidence to contest that the IQ Maximizer
`is a commercial embodiment of claim 27).
`
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`IPR2017-00087
`Patent 8,827,111 B2
`
`sell Campbell soup products, Campbell concluded that the display rack6
`increased its soup sales volume by 5.5–13.6% depending on the type of soup
`and brand. Ex. 2032, 4.7 Mr. Johnson similarly testified based on his
`involvement in the project that “use of the Gamon display rack produced
`increased soup sales by 9 to 14% according to [a] market study conducted by
`Cannondale Consulting Inc.” Paper 53 ¶ 20; see Paper 16 ¶ 10. Campbell’s
`internal presentation discussing the results of this study was titled: “iQ
`SHELF MAXIMIZER The Power to Transform the Soup Section.”
`Ex. 2032, 1. The Gamon gravity feed display rack was described as
`“Breakthrough Gravity Feed Shelving,” that “Encourages purchase of
`additional varieties,” and resulted in positive consumer responses in every
`test market. Id. at 4–10.
`From 2002 until 2009, Campbell purchased from Gamon
`approximately $31 million-worth of gravity feed display racks8 and installed
`them in about 30,000 stores. PO Resp. 32; Paper 16 ¶ 17; Tr. 43:14–25.
`The display racks sold by Gamon to Campbell fall within the scope of at
`least claim 27 of the ’111 patent when Campbell soup cans are added to the
`
`
`6 As suggested in the Cannondale report (Ex. 2031) other variables were
`controlled so that a determination could be made on the impact of Gamon’s
`iQ Maximizer – single variable testing. Ex. 2031, 26–27.
`7 Exhibits 2031 and 2032 are each considered by Campbell to be “internal
`Campbell presentations.” Paper 64, 1. Campbell describes these documents
`as representing “a broad range of consumer research that Campbell had
`undertaken to better understand consumer shopping experiences in the soup
`aisle and develop strategies to improve that experience.” Id. These
`documents were produced based on our Order (Paper 37) directing Campbell
`to produce the 2002 study referenced by Mr. Johnson.
`8 Petitioner does not contest that Campbell purchased approximately
`$31 million in display racks from Gamon. Tr. 51:8–13.
`
`12
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`

`IPR2017-00087
`Patent 8,827,111 B2
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`display – claim 27 requires a plurality of generally cylindrical products.9
`See PO Resp. 30; Ex. 2032, 4–10; Paper 16 ¶¶ 11, 12, 19, 20; see also
`Tr. 46:20–47:1.
`In February 2004, after placing the display racks in 2800 stores,
`Campbell’s Mr. Finnel noted in a news publication “three key benefits” of
`the iQ Maximizer: (1) a positive sales lift in Campbell’s condensed-soup
`brand, versus the category in general being down in the same period (2) that
`the program enhances the shopping experience for the consumer and also
`“makes it easier for consumers to find desired products while giving
`visibility to others”; and (3) retailers gaining more sales and a labor benefit.
`Ex. 2013, 1. The news article explains that the system “keeps the products
`neatly faced at all times, eliminating the need to have the facing crew work
`on them each night” and ensures the products stay in their location rather
`than spread out or get lost at the back of a shelf. Id. As an additional benefit
`to retailers, Mr. Finnel explains that the system maintains the same level of
`product variety, but reduces inventory by 15%. Id. Further, Mr. Finnel
`comments that “[r]etailers are seeing the benefits to this system, and it’s
`really selling itself because they see the sales lift and ease of stocking.” Id.
` In 2005, Campbell issued its Annual Report to investors stating that
`the Gamon iQ Maximizer was available in 14,000 stores. Ex. 2024, 10.10
`Campbell described the impact of the Gamon iQ Maximizer, noting “[t]he
`
`9 Petitioner has not contested that the display racks sold to Campbell fall
`within the scope of at least claim 27 of the ’111 patent when cans are added.
`10 Patent Owner filed two documents identified as “Exhibit 2024,” two
`documents identified as “Exhibit 2025,” and two documents identified as
`“Exhibit 2026.” The Exhibits 2024–2026 that we rely on here were filed on
`December 13, 2017, and are second exhibits filed with each of these
`numbers.
`
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`strong performance of Campbell’s condensed soup business demonstrates
`the value of the iQ Maximizer, an innovative gravity-feed shelf system for
`merchandising soup.” Id. The 2005 Annual Report described the iQ
`Maximizer as “making the soup aisle dramatically easier for consumers to
`shop.” Id. The 2005 Annual Report also shows a graphic example of the
`use of the iQ Maximizer gravity feed shelf and on the same page states
`“[o]ur breakthroughs in soup merchandising continue to make it simpler for
`retailers to stock and maintain their soup shelves and easier and faster for
`consumers to shop.” Id. at 17. Campbell reported that condensed soup sales
`increased 8% and that those sales “also benefited from gravity-feed shelving
`systems installed in retail stores.” Id. at 31.
`Campbell’s 2006 and 2007 Annual Reports indicate that Campbell
`continued to add Gamon’s iQ Maximizer to stores and praised the iQ
`Maximizer as a powerful tool and breakthrough in soup merchandizing.
`Campbell’s 2006 Annual Report describes Gamon’s iQ Maximizer as
`“available in 16,000 stores,” and similarly states that it “continues to be a
`powerful tool to merchandise Campbell’s condensed soups.” Ex. 2025, 8.
`Campbell described the iQ Maximizer as a “tool to deliver impactful
`consumer messages at the point of purchase” (id.), and as “Making Shopping
`Even Simpler” (id. at 22). Campbell again stated that the iQ Maximizer was
`a “breakthrough in soup merchandising.” Id. Campbell reported that
`condensed soup sales increased 5%, primarily driven by higher prices, but
`“also benefited from the additional installation of gravity-feed shelving
`systems and increased advertising.” Id. at 39. Campbell’s 2007 Annual
`Report describes Gamon’s iQ Maximizer as available in nearly 17,400 stores
`
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`in the U.S. and similarly states that it is “a powerful tool for merchandising
`Campbell’s condensed soups.” Ex. 2026, 14.
`In late 2008, Campbell began purchasing gravity feed display racks
`from Petitioner Trinity. PO Resp. 35. Trinity’s display racks include the
`limitations of at least claim 27 of the ’111 patent.11 Id. at 36–39 (Patent
`Owner’s claim chart mapping claim 27 to Trinity’s display rack).
`
`CLAIM CONSTRUCTION
`II.
`In an inter partes review, claim terms in an unexpired patent are
`construed according to their broadest reasonable interpretation in light of the
`specification of the patent in which they appear. See 37 C.F.R. § 42.100(b);
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Only
`terms that are in controversy need to be construed, and these need be
`construed only to the extent necessary to resolve the controversy. See Vivid
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`In our Institution Decision, we construed several claim terms recited
`in claims 1–17. Inst. Dec. 13–20. Patent Owner requests cancellation of
`claims 1–16 and we did not institute inter partes review of claim 17. Thus,
`none of the claim terms we construed previously are at issue in the trial.
`Additionally, Patent Owner’s Response and Sur-Reply and Petitioner’s
`Reply do not request that we construe any additional claim terms.
`Accordingly, we need not construe expressly any claim terms to resolve the
`controversy before us. See Vivid Techs., 200 F.3d at 803.
`
`
`11 Petitioner does not contest that Trinity’s display racks include the
`limitations of claim 27 of the ’111 patent.
`
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`
`III. ANALYSIS
`Patentability Challenges
`
`We instituted inter partes review on three grounds of unpatentability
`based on 35 U.S.C. § 103(a):
`1. Claims 1–16 as obvious over the ’751 publication and
`Deffner;
`2. Claims 27, 28, 33, and 34 as obvious over Weichselbaum and
`Nesso; and
`3. Claims 32 and 35 as obvious over Weichselbaum, Nesso, and
`Mellion.
`Inst. Dec. 52. As noted above, Patent Owner states in its Response that it
`“moves to cancel and formally disclaims claims 1 to 16 of the ‘111 patent”
`and does not address the patentability challenge to those claims in its
`Response. PO Resp. 2; see id. at 4–5 (reiterating that claims 1–16 “are here
`disclaimed or requested canceled”). Petitioner acknowledges Patent
`Owner’s request to cancel claims 1–16 and does not address the patentability
`challenge to those claims in its Reply. Pet. Reply 1. Patent Owner’s request
`to cancel claims 1–16 is granted and those claims shall be cancelled.
`Accordingly, we need not address the merits of Petitioner’s challenge to
`claims 1–16 based on the ’751 publication and Deffner.12 Therefore, our
`analysis below pertains to the latter two grounds of unpatentability that
`remain in contention.
`
`
`12 Patent Owner also has waived any arguments for the patentability of those
`claims. See Paper 13, 3 (“The patent owner is cautioned that any arguments
`for patentability not raised in the response will be deemed waived.”).
`
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`
` Obviousness
`The U.S. Supreme Court set forth the framework for applying the
`statutory language of 35 U.S.C. § 103 in Graham v. John Deere Co. of
`Kansas City, 383 U.S. 1, 17–18 (1966):
`Under § 103, the scope and content of the prior art are to be
`determined; differences between the prior art and the claims at
`issue are to be ascertained; and the level of ordinary skill in the
`pertinent art resolved. Against this background, the obviousness
`or nonobviousness of the subject matter is determined. Such
`secondary considerations as commercial success, long felt but
`unsolved needs, failure of others, etc., might be utilized to give
`light to the circumstances surrounding the origin of the subject
`matter sought to be patented.
`As explained by the Supreme Court in KSR Int’l Co. v. Teleflex Inc.:
`Often, it will be necessary for a court to look to interrelated
`teachings of multiple patents; the effects of demands known to
`the design community or present in the marketplace; and the
`background knowledge possessed by a person having ordinary
`skill in the art, all in order to determine whether there was an
`apparent reason to combine the known elements in the fashion
`claimed by the patent at issue. To facilitate review, this analysis
`should be made explicit.
`550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
`2006) (“[R]ejections on obviousness grounds cannot be sustained by mere
`conclusory statements; instead, there must be some articulated reasoning
`with rational underpinning to support the legal conclusion of
`obviousness.”)).
`“Whether an ordinarily skilled artisan would have been motivated to
`modify the teachings of a reference is a question of fact.” WBIP, LLC v.
`Kohler Co., 829 F.3d 1317, 1327 (Fed. Cir. 2016) (citations omitted). We
`must consider a reference in its entirety. Arctic Cat Inc. v. Bombardier
`Recreational Prods. Inc., 876 F.3d 1350, 1360 (Fed. Cir. 2017) (citation
`
`17
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`IPR2017-00087
`Patent 8,827,111 B2
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`omitted). As the U.S. Court of Appeals for the Federal Circuit explained,
`“the Supreme Court has long held that ‘known disadvantages in old devices
`which would naturally discourage the search for new inventions may be
`taken into account in determining obviousness.” Id. (quoting United States
`v. Adams, 383 U.S. 39, 52 (1966)). Further, a single reference can include
`statements suggesting a combination as well as statements discouraging the
`same. Id. “[W]here a party argues a skilled artisan would have been
`motivated to combine references, it must show the artisan ‘would have had a
`reasonable expectation of success from doing so.’” Id. at 10 (quoting In re
`Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig.,
`676 F.3d 1063, 1068–69 (Fed. Cir. 2012)).
`
`Level of Ordinary Skill in the Art
`
`Petitioner contends that a person of ordinary skill in the art, as of the
`earliest priority date of the claims, would have had either: “(1) a Bachelor’s
`Degree in Industrial Design and at least 1-2 years of experience in designing
`gravity feed display dispensers, or (2) 5-10 years of experience in designing
`gravity feed display dispensers.” Pet. 7 (citing Ex. 1002 ¶ 36). Patent
`Owner does not propose an explicit level of ordinary skill in the art in its
`Response. Consistent with the level of ordinary skill in the art 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), we adopt Petitioner’s unopposed
`position as to the level of ordinary skill in the art.
`
`Scope and Content of the Prior Art
`
`Petitioner contends that the combination of Weichselbaum and Nesso
`would have rendered the subject matter of claims 27, 28, 33, and 34 obvious
`
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`Patent 8,827,111 B2
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`to one of ordinary skill in the art at the time of the invention. Pet. 54–63.
`Petitioner also contends that the combination of Weichselbaum, Nesso, and
`Mellion would have rendered the subject matter of claims 32 and 35 obvious
`to one of ordinary skill in the art at the time of the invention. Id. at 69–70.
`
`a) Weichselbaum
`Weichselbaum is directed to “a dispensing device and more
`particularly to a device for dispensing cylindrical objects such, for example,
`as canned goods.” Ex. 1023, 1:1–4.13 Weichselbaum teaches that the
`dispenser is “so dimensioned as to fit normally between shelves of
`customary height in a grocery store or the like.” Id. at 1:15–18.
`Weichselbaum’s Figure 3 is shown below:
`
`
`Weichselbaum’s Figure 3 “is a sectional view taken along the line 3—3 of
`Figure 2 as viewed in the direction of the arrows.” Id. at 2:5–7.
`Weichselbaum explains:
`
`
`13 Weichselbaum contains three pages of text, each page containing two
`columns. Ex. 1023. Citations are to the column and line numbers of the
`reference.
`
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`
`The dispensing device . . . is comprised of a pair of side
`
`walls 11 and rear wall 12, a shelf 13, inclined forwardly
`downwardly from rear wall 12, serving as a base therefor. . . . A
`second shelf 15 is secured between side walls 11 in parallel
`relation to base shelf 13 but terminates at a point 16 spaced from
`rear wall 12 by a distance slightly in excess of the diameter of an
`individual can. . . . A third shelf 18 is also positioned between
`side walls 11 but is inclined downwardly toward rear wall 12
`thereof in a direction opposite to the angle of inclination of
`shelves 13 and 15, and terminates at a point 19 spaced from rear
`wall 12 . . . .
`
`Side walls 11 are provided with aligned notches 25
`adjacent but positioned above shelf 15, a stop member 26 being
`positioned between the side walls at the end of the shelf and
`extending upwardly to the bottoms of notches 25, thus providing
`a recessed aperture through which the can at the end of shelf 15
`adjacent stop member 26 may be
`readily grasped for
`removal. . . .
`
`A stop 28 of a height substantially equal to the height of
`portions 27 is positioned adjacent the end of shelf 13 to prevent
`the cans from rolling out of the receptacle.
`Id. at 2:13–3:1.
`
`Nesso
`b)
`Nesso is directed to “a compact refrigerated dispenser for dispensing
`cooled articles, such as soft drink cans.” Ex. 1020, 1:1–3. Figure 4 of Nesso