Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 9
`Entered: September 28, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WENDT CORPORATION,
`Petitioner,
`
`v.
`
`IQASR, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01080
`Patent No. 9,132,432 B2
`____________
`
`Before BEVERLY M. BUNTING, KEVIN W. CHERRY, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`
`MARSCHALL, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`Paper 9
`Entered: September 28, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WENDT CORPORATION,
`Petitioner,
`
`v.
`
`IQASR, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01080
`Patent No. 9,132,432 B2
`____________
`
`Before BEVERLY M. BUNTING, KEVIN W. CHERRY, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`
`MARSCHALL, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`
`IPR2017-01080
`Patent 9,132,432 B2
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`I. INTRODUCTION
`Wendt Corporation (“Petitioner”) filed a Petition requesting an inter
`partes review of claims 1–15, 18–20, and 22 (“the challenged claims”) of
`U.S. Patent 9,132,432 B2 (Ex. 1001, “the ’432 patent”). Paper 1 (“Pet.”).
`IQASR, LLC (“Patent Owner”) filed a Preliminary Response. Paper 6
`(“Prelim. Resp.”).
`We review the Petition under 35 U.S.C. § 314(a), which provides that
`an inter partes review may not be instituted “unless . . . there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.” Upon consideration of the Petition and
`the Preliminary Response, we determine that Petitioner has failed to
`demonstrate a reasonable likelihood that it would prevail in showing the
`unpatentability of any of the challenged claims. Accordingly, we decline to
`institute an inter partes review.
`
`A.
`
`Related Proceedings
`The parties identified the following proceeding involving the ’432
`patent: IQASR, LLC v. Wendt, Corp., No. 1:16-cv-01782-MSK-KMT (D.
`Colo.). Pet. 54; Paper 5.
`
`B.
`
`The ’432 Patent (Ex. 1001)
`The ’432 patent discloses a method used to increase recyclable
`material recovery from automobile shredder residue. Ex. 1001, Abstract.
`When recycling cars, the cars are first stripped of reusable parts and then
`crushed into smaller pieces by an automobile shredder. Id. at 1:33–36.
`Metal chunks are then removed by a powerful magnet, leaving behind
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`“automobile shredder residue.” Id. at 1:37–38, 42–45, 4:24–29. According
`to the ’432 patent, automobile shredder residue includes recyclable metal
`and plastic as well as trash and “magnetic fuzz.” Id. at 1:48–50. The ’432
`patent describes magnetic fuzz as “difficult to substantially identify” and
`may be “[d]isassociated magnetically active microparticles.” Id. at 6:27–29.
`According to the ’432 patent, “[o]ne of the biggest problems in automobile
`shredder residue sorting systems may be the magnetic fuzz.” Id. at 6:52–53.
`The ’432 patent discloses methods of removing the magnetic fuzz in a “non-
`ferrous recovery system” that employs wind tunnels and cyclones. Id. at
`6:53–65, 7:28–33.
`
`Figure 1 of the ’432 patent is reproduced below.
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`Figure 1 depicts sorting system 5 having air locks 27, wind tunnel 28, and
`cyclone 29. Id. at 15:52–60, 16:2–10. Horizontally flowing air 7 flows left
`to right in wind tunnel 28, depositing lighter materials 32, such as magnetic
`fuzz, in containers below the wind tunnel. Id. at 5:1–4, 14:5–9, 14:30–32,
`Fig. 1.
`C.
`Illustrative Claim
`Petitioner challenges claims 1–15, 18–20, and 22 of the ’432 patent.
`Claim 1 is the only independent claim and is reproduced below.
`1.
`A method of separation of automobile shredder residue
`comprising the steps of:
`providing automobile shredder residue as a result from a ferrous
`sorting recovery system;
`introducing said automobile shredder residue into an automobile
`shredder residue sorting, non-ferrous recovery system;
`non-magnetically sorting magnetic fuzz from said automobile
`shredder residue with said automobile shredder residue
`sorting, non-ferrous recovery system;
`wherein said sorted magnetic fuzz is substantially free of
`recyclable materials.
`Ex. 1001, 23:7–18.
`
`D. The Asserted Grounds of Unpatentability
`Petitioner challenges the patentability of claims 1–15, 18–20, and 22
`of the ’432 patent on the following grounds. Pet. 12.
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`References
`Jody1
`Jody and 1998 Handbook2
`
`Basis
`§ 102
`§ 103
`
`Claim(s) Challenged
`1–8, 10–14, 18, 19, and 22
`1–15, 18–20, and 22
`
`Petitioner also relies on the Declaration of Fred Smith (Ex. 1004).
`
`II. ANALYSIS
`
`A.
`
`Claim Construction
`In an inter partes review, claim terms in an unexpired patent are
`interpreted according to their broadest reasonable constructions 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) (upholding the use of the broadest reasonable interpretation
`standard). Under the broadest reasonable construction standard, claim terms
`are presumed to have their ordinary and customary meaning, as would be
`understood by one of ordinary skill in the art3 in the context of the entire
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007).
`
`
`1 U.S. Patent No. 6,329,436 B1, filed Nov. 5, 1992, issued Dec. 11, 2001
`(Ex. 1002) (“Jody”).
`2 Alfred A. Nijkerk and Wijnand L. Dalmijn, Handbook of Recycling
`Techniques (4th printing, March 1998) (Ex. 1003, Ex. A) (“1998
`Handbook”).
`3 Petitioner proposes that a person ordinary skill in the art “would have a
`bachelor’s degree in mechanical engineering or similar training and would
`have at least five years of familiarity with the methods, processes, and
`machines used to recover recyclable material from a heterogeneous material
`stream.” Pet. 46. For purposes of this Decision, we adopt Petitioner’s
`proposed level of ordinary skill in the art.
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`Petitioner asserts that the terms “ferrous sorting recovery system,”
`“automobile shredder residue,” “sorting, non-ferrous recovery system,”
`“magnetic fuzz,” “selected magnetic fuzz,” “substantially free,” “recyclable
`materials,” and “air-locked automobile shredder residue sorting, non-ferrous
`recovery system” require construction. Pet. 12–35. In turn, Patent Owner
`proposes its own construction for those same terms. Prelim. Resp. 3–24.
`Having considered the evidence presented, we determine that we need only
`address the meaning of “magnetic fuzz” for purposes of this Decision. See
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999) (“[O]nly those terms need be construed that are in controversy, and
`only to the extent necessary to resolve the controversy.”).
`Petitioner argues that “magnetic fuzz” is indefinite because it is a
`coined term, and as used in the ’432 patent, “has no plain and ordinary
`meaning to a POSITA as of October 15, 2011.” Pet. 16. According to
`Petitioner, the specification uses the term often but inconsistently, and the
`prosecution history fails to define the term. Id. at 17–28. In the alternative,
`Petitioner suggests that “magnetic fuzz” be construed to mean “at least some
`ferrous metal entangled with fine, light fibers or particles.” Id. at 31. Patent
`Owner counters that based on the specification of the ’432 patent, one of
`skill in the art would understand “magnetic fuzz,” to be defined as “a set of
`magnetically active disassociated microparticles” (id. at 6 (citing Ex. 2001
`¶ 25)) and “the fact that these kinds of particles may be difficult to
`substantially identify does not render the term ‘magnetic fuzz’ indefinite or
`suggest that POSITAs do not understand what this term means” (id. at 7
`(citing Ex. 2001 ¶ 27)).
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`Based on the present record, and for purposes of this Decision, we
`adopt Petitioner’s proposed construction of the term “magnetic fuzz.”
`Namely, “at least some ferrous metal entangled with fine, light fibers or
`particles.”
`As to Petitioner’s ancillary argument that the term “magnetic fuzz” is
`indefinite, the parties acknowledge that we cannot institute on grounds of
`indefiniteness under 35 U.S.C. § 112. Nonetheless, Petitioner suggests that
`we “issue an order” finding “all claims indefinite,” and deny institution on
`that basis (Pet. 31), whereas Patent Owner suggests that if we “consider one
`or more of the claims arguably indefinite,” we should still institute so that
`Patent owner can file a motion to amend to address the issue (Prelim. Resp.
`4–5). Neither approach, however, is found in the statute. See 35 U.S.C.
`§ 311 (limiting grounds in petition to 35 U.S.C. §§ 102, 103); 35 U.S.C.
`§ 314 (authorizing institution based on “information presented in the
`petition”). In some situations, we may not need to address or attempt to
`construe a disputed limitation that is alleged to be indefinite. For example,
`when the record lacks support for institution regardless of the definiteness of
`the disputed limitation, using Petitioner’s proposed construction, we can
`deny institution without further addressing the limitation alleged to be
`indefinite. This is such a case.4
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`4 We express no opinion as to the definiteness of the claim term “magnetic
`fuzz” and our decision should not be interpreted as any determination
`regarding definiteness.
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`B.
`
`Anticipation by Jody
`Petitioner contends that claims 1–8, 10–14, 18, 19, and 22 are
`anticipated by Jody. Pet. 35–44. Patent Owner contends that Jody fails to
`disclose several limitations, and therefore cannot anticipate any of the
`challenged claims. Prelim. Resp. 26–45. We have reviewed the provided
`arguments and supporting evidence, and are not persuaded that Petitioner
`has demonstrated a reasonable likelihood of prevailing on its assertion that
`claims 1–8, 10–14, 18, 19, and 22 are anticipated by Jody. We begin our
`analysis with a brief summary of Jody, and then address the parties’
`contentions in turn.
`1. Overview of Jody
`Jody discloses a process for recycling shredder residue. Ex. 1002,
`Abstract. First, Jody discloses processing the shredder residue through
`mechanical and physical separator 15. Id. at 3:30–33. Separator 15
`produces three “streams”—polyurethane foam (“PUF”) stream 40, fines
`stream 45, and plastics-rich stream 35. Id. at 3:33–36. Next, Jody discloses
`feeding plastics-rich stream 35 from separator 15 to a plastic extraction
`system 50. Id. at 3:35–36, 4:42–43, Fig. 3. Jody discloses sequentially
`treating plastics-rich stream 35 in plastic extraction system 50 with a series
`of solvents to extract three separate streams of recyclable plastics—ABS,
`PVC, and a combination of polypropylene and polyethylene. Id. at 3:37–40,
`4:41–42, 6:11–17. The material remaining after treatment with the solvents
`“can be formulated into a pelletizable fuel,” and then burned. Id. at 3:40–43.
`
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`2. Discussion
`To establish anticipation under 35 U.S.C. § 102, “all of the elements
`and limitations of the claim must be shown in a single prior reference,
`arranged as in the claim.” Karsten Mfg. Corp. v. Cleveland Golf Co., 242
`F.3d 1376, 1383 (Fed. Cir. 2001). “A claim is anticipated only if each and
`every element as set forth in the claim is found, either expressly or
`inherently described, in a single prior art reference.” Verdegaal Bros. v.
`Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). Moreover, the
`reference must “enable one of ordinary skill in the art to make the invention
`without undue experimentation.” Impax Labs., Inc. v. Aventis Pharms. Inc.,
`545 F.3d 1312, 1314 (Fed. Cir. 2008); see In re LeGrice, 301 F.2d 929,
`940–44 (CCPA 1962).
`Petitioner argues that each of the limitations of 1–8, 10–14, 18, 19,
`and 22 are disclosed by Jody. Pet. 39–45. To support its arguments,
`Petitioner identifies the relevant passages in the cited references that
`purportedly meet the corresponding claim limitation, and explains the
`significance of each passage with respect to the corresponding claim
`limitation. Id. For example, Petitioner argues that the description in Jody
`regarding the removal of “ferrous scrap” from the material stream exiting an
`auto shredder discloses the method of separating automobile shredder
`residue resulting from a ferrous sorting recovery system recited in claim 1.
`Id. at 39–40 (citing Ex. 1002 1:10–21)).
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`a. “sorting magnetic fuzz from said automobile shredder
`residue”
`Claim 1 also recites “non-magnetically sorting magnetic fuzz from
`said automobile shredder residue with said automobile shredder residue
`sorting, non-ferrous recovery system.” Ex. 1001, 23:14–16. Petitioner
`contends that Jody discloses “sorting input ASR . . . into PUF, fines and a
`plastic-rich stream, and then sorting the plastic-rich stream into pellets, ABS,
`PVC, and PP.” Id. at 40 (citing Ex. 1002, 3:30–7:49, Fig. 1). Relying on the
`testimony of Mr. Smith and its proposed definition of “magnetic fuzz,”
`Petitioner argues that the “magnetic fuzz” “would be part of the plastic-rich
`stream and initially would be sorted from the PUF, fines, etc. by Jody’s air-
`classifier, first column (16).” Id. at 40–41 (citing Ex. 1004 ¶ 69). Petitioner
`also contends that the material would be passed to reactor 51 for recovery of
`plastics, and that both Jody’s air classifier and plastic recovery system are
`non-ferrous recovery systems because they do not use magnetic sorting. Id.
`at 41 (citing Ex. 1002, 4:1–7:23; Ex. 1004 ¶ 69).
`Patent Owner argues that Jody does not disclose sorting magnetic fuzz
`because it never mentions magnetic fuzz and Petitioner fails to identify any
`specific material in Jody that corresponds to magnetic fuzz, even using
`Petitioner’s construction of the limitation. Prelim. Resp. 30–31. Patent
`Owner also contends that Petitioner fails to establish that Jody inherently
`discloses sorting magnetic fuzz because Petitioner fails to establish that
`magnetic fuzz would necessarily be found entirely within one of the
`materials that Jody sorts. Id. at 31–33 (citing Ex. 2001 ¶¶ 60–62).
`According to Patent Owner, even if magnetic fuzz were present in Jody’s
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`shredder residue, it is not necessary to Jody’s process that the magnetic fuzz
`be sorted, and it is nothing more than a possibility that it is sorted as
`incidental to Jody’s processes. Id. at 32–33 (citing Ex. 2001 ¶ 62).
`The Petition includes several sentences of analysis in its claim chart
`setting forth its argument with respect to this limitation. See Pet. 40–41.
`The Petition cites to Jody twice, with both citations including several
`columns of text. See id. (citing Ex. 1002, Fig. 1, 3:30–7:49, 4:1–7:23).
`Petitioner does not assert, nor can we find in the cited passages, that Jody
`expressly discloses magnetic fuzz or any other material that could fall within
`Petitioner’s proposed construction. See id. Petitioner offers no alternative
`analysis based on other possible constructions, and we decline to pick
`through this large portion of the Jody reference to attempt to find anything
`that could resemble “magnetic fuzz” under some alternative construction.
`The Petition also lacks an explicit inherency analysis. As Petitioner
`acknowledges in its legal background, inherent disclosure “necessarily
`describes” the unstated limitation. Pet. 35 (citing Transclean Corp. v.
`Bridgewood Servs., Inc., 290 F.3d 1364, 1373 (Fed. Cir. 2002)). Even if
`Petitioner established that magnetic fuzz is likely present and sorted using
`Jody’s process, that does not establish inherency. See Bettcher Indus., Inc.
`v. Bunzl USA, Inc., 661 F.3d 629, 639 (Fed. Cir. 2011) (“The mere fact that a
`certain thing may result from a given set of circumstances is not sufficient.”
`(citation omitted)). To the extent that Petitioner’s argument that magnetic
`fuzz “would be part of the plastic-rich stream and initially would be sorted
`from the PUF, fines, etc.,” amounts to an inherency argument, it lacks
`adequate support. Pet. 40–41 (citing Ex. 1004 ¶ 69) (emphasis added).
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`Petitioner’s assertion fails to address why magnetic fuzz would be present in
`Jody’s automobile shredder residue in the first place, much less that Jody’s
`process necessarily must sort that magnetic fuzz. Given Jody’s failure to
`disclose magnetic fuzz expressly, Petitioner needed to do more than merely
`assume that magnetic fuzz is present and assert that magnetic fuzz “would
`be” sorted, without explaining why this must be the case.
`The Petition also cites Petitioner’s expert declaration for support. See
`Pet. 40–41 (citing Ex. 1004 ¶ 69). That paragraph contains additional
`assertions that Jody’s screen sizes would produce sorted material that
`“normally” includes more than 10% magnetic fuzz. Ex. 1004 ¶ 69 (citing
`’432 patent, 12:9–13). This additional theory fails to persuade us that Jody
`discloses the limitation because (1) the Petition does not include this theory,
`(2) the analysis fails to establish that Jody inherently discloses the presence
`of magnetic fuzz, and (3) whether magnetic fuzz is “normally” present in
`certain circumstances does not establish that magnetic fuzz is necessarily
`present and sorted in Jody.
`Based on the arguments and evidence of record, Petitioner does not
`demonstrate that Jody discloses the “non-magnetically sorting magnetic fuzz
`from said automobile shredder residue with said automobile shredder residue
`sorting, non-ferrous recovery system” limitation.
`b. “sorted magnetic fuzz . . . substantially free of recyclable
`materials”
`With respect to the limitation requiring “sorted magnetic fuzz . . .
`substantially free of recyclable materials” (“the substantially free
`limitation”), Ex. 1001, 23:17–18, Petitioner argues that if “substantially
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`free” means that the sorted magnetic fuzz contains “less than 10% recyclable
`materials, by volume, it is literally disclosed by Jody.” Pet. at 41 (citing Ex.
`1004 ¶ 70). Petitioner contends that Jody discloses that any magnetic fuzz
`included within automatic shredder residue “is initially included in the
`plastic-rich stream (35), from which Jody says ‘over’ 90% of the recyclable
`plastics are recovered.” Id. (citing Ex. 1002, 6:1–16). Again relying on the
`testimony of Mr. Smith, Petitioner concludes that Jody’s sorted magnetic
`fuzz “would be comprised of less than 10% recyclable material.” Id. (citing
`Ex. 1004 ¶ 71).
`Patent Owner argues that the passage from Jody that Petitioner cites
`for support does not establish that any sorted magnetic fuzz contains less
`than 10% recyclable material. Id. at 34–35 (quoting Ex. 1002, 6:11–17).
`According to Patent Owner, Jody fails to provide enough information to
`perform the required volume calculation. Id. at 35–36.
`
`We agree with Patent Owner that Petitioner’s arguments and evidence
`do not demonstrate sufficiently that Jody discloses “sorted magnetic fuzz . . .
`substantially free of recyclable materials.” Here, Petitioner does not rely on
`inherency and instead argues that Jody “literally” discloses the limitation.
`Pet. 41. Even assuming that Jody inherently discloses the presence of
`magnetic fuzz as well as sorting that fuzz from the shredder residue,
`Petition’s arguments and evidence do not establish that Jody discloses the
`“substantially free” limitation. Petitioner’s only citation to Jody relies on the
`statement that Jody’s process “recover[s] separate streams which are over
`90% ABS, PVC and a combination of polypropylene and polyethylene.”
`Ex. 1002, 6:11–13; Pet. 41 (citing Ex. 1002, 6:11–16). Petitioner alleges
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`that this passage indicates that Jody discloses sorted magnetic fuzz
`comprised of less than 10% recyclable material by volume. Pet. 41 (citing
`Ex. 1004 ¶ 71). Our review of this passage reveals that it only addresses the
`content of the “streams” of recyclable plastics, not the remaining material
`formed into fuel pellets that allegedly contains magnetic fuzz. See Ex. 1002,
`6:11–16. As Patent Owner correctly points out, in order to determine
`whether Jody discloses the required volume of 10% or less of recyclable
`materials, one would need to know the volume of magnetic fuzz and
`recyclable materials remaining after the plastics are extracted by Jody’s
`process. See Prelim. Resp. 35–39 (citing Ex. 2001 ¶¶ 67–72). The Petition
`and cited portion of Jody do not provide this information, and the expert
`analysis relies on the same flawed interpretation of Jody. See Pet. 41; Ex.
`1002, 6:11–16; Ex. 1004 ¶ 70.
`
`Based on the arguments and evidence of record, Petitioner does not
`demonstrate that Jody discloses the “substantially free” limitation.
`Based on the foregoing, we are not persuaded by Petitioner’s
`arguments and evidence that Jody discloses all of the limitations of claim 1.
`We therefore decline to institute as to claim 1 because Petitioner has not
`established a reasonable likelihood of prevailing based on its assertion that
`Jody anticipates claim 1. Claims 2–8, 10–14, 18, 19, and 22 all depend
`directly or indirectly from claim 1 and recite additional limitations. By
`virtue of their dependency from claim 1, Petitioner likewise has not
`demonstrated a reasonable likelihood that it will prevail on its assertion that
`claims 2–8, 10–14, 18, 19, and 22 are anticipated by Jody, and we therefore
`do not institute as to claims 2–8, 10–14, 18, 19, and 22 for the same reasons.
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`C. Obviousness Based on Jody and 1998 Handbook
`Petitioner contends that claims 1–15, 18–20, and 22 are unpatentable
`under 35 U.S.C. § 103 based on a combination of Jody and the 1998
`Handbook. Pet. 45–53. Patent Owner contends that the proposed
`combination fails to disclose several limitations in the challenged claims.
`Prelim. Resp. 47–62.
`We have reviewed the provided arguments and supporting evidence,
`and are not persuaded that Petitioner has demonstrated a reasonable
`likelihood of prevailing on its assertion that claims 1–15, 18–20, and 22 are
`obvious based on Jody and the 1998 Handbook. We begin our analysis with
`a brief summary of the 1998 Handbook, and then address the parties’
`contentions in turn.
`1. Overview of the 1998 Handbook (Ex. 1003, Ex. A)
`The 1998 Handbook discloses a number of recycling techniques
`applicable to a wide variety of industries, including recycling from
`automobile shredders. Ex. 1003, Ex. A, 10, 95.5 The 1998 Handbook
`includes a description of the automobile shredder process, including the
`processing of “shredder fluff.” Id. at 99–108. The 1998 Handbook
`describes a number of “dry separation systems,” including the use of
`cyclones and air classifiers. Id. at 182–184.
`2. Discussion
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the claimed subject matter and the prior art are such that the subject
`
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`5 The 1998 Handbook is attached to the Declaration of William Close as
`Exhibit A. Page citations refer to the pagination used in the 1998 Handbook.
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`matter as a whole would have been obvious at the time the invention was
`made to a person of ordinary skill in the art. KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398, 406 (2007). The legal 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 skill in the art; and (4) objective
`evidence of nonobviousness, i.e., secondary considerations. See Graham v.
`John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`Petitioner contends that even if Jody does not disclose the limitations
`requiring sorting magnetic fuzz and rendering it substantially free of
`recyclable materials, “Jody in view of the 1998 Handbook” would still
`render claim 1 obvious. Pet. 48–49. Petitioner argues that one of skill in the
`art “has many ‘tools’ at her disposal to non-magnetically separate into
`various fractions all materials typically found in ASR” and “could easily
`assemble these known sorting devices into a system that separates from ASR
`whatever ‘magnetic fuzz’ is ultimately construed to mean.” Id. at 48 (citing
`Ex. 1004 ¶ 95). Petitioner then argues that one of ordinary skill in the art
`would expect success in efforts to remove magnetic fuzz because the 1998
`Handbook “specifically identifie[s] how available equipment operates,
`which equipment is best at sorting what materials, and even how to ‘tune’
`the various equipment to enhance purity of the to-be-separated fractions.”
`Id. (citing Ex. 1003, Ex. A, 79–131, 161–209). With regard to the
`“substantially free” limitation, Petitioner similarly contends that one of
`ordinary skill in the art “could construct a . . . system to efficiently separate
`virtually any material fractions into desired components and could increase
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`IPR2017-01080
`Patent 9,132,432 B2
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`the purity of the to-be-separated fractions by adjusting known parameters.”
`Id. at 49 (citing Ex. 1004 ¶ 96).
`
`Patent Owner argues that Petitioner’s general allegations coupled with
`non-specific citations to the 1998 Handbook fail to establish that the
`magnetic fuzz limitations would have been obvious. Prelim. Resp. 50–51.
`Patent Owner further contends that the cited expert declaration fails to
`remedy these deficiencies by pointing to portions of the 1998 Handbook that
`disclose the relevant limitations. Id. at 51–52. According to Patent Owner,
`the Petition also fails to explain how teachings from the 1998 Handbook
`would be combined with Jody, and argues that Petitioner’s approach
`amounts to “a quintessential case of impermissible hindsight reasoning.” Id.
`at 52–53; see also id. at 53 (arguing that Petitioner’s analysis of the
`“substantially free” limitation suffers from the same defects).
`As noted above, Petitioner has not established that Jody discloses
`magnetic fuzz or the specific limitations in claim 1 requiring sorting
`magnetic fuzz, where the fuzz “is substantially free of recyclable materials.”
`Petitioner begins its obviousness analysis of these limitations with the
`premise that Jody may not disclose these limitations, but Petitioner does not
`then argue that the 1998 Handbook discloses, expressly or inherently,
`magnetic fuzz or the specific requirements of these limitations. Pet. 48–49.
`Instead, Petitioner, without citing Jody or the 1998 Handbook, argues that
`one “could” sort magnetic fuzz and “could increase purity” of the separated
`material to meet the “substantially free” limitation. Id. Petitioner’s only
`reference to the 1998 Handbook is a citation to 100 pages of the reference,
`without any more specific citations in support of the argument that the 1998
`
`17
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`IPR2017-01080
`Patent 9,132,432 B2
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`Handbook identifies how best to sort shredder residue and tune equipment to
`enhance purity. Id. at 48 (citing Ex. 1003, Ex. A, 79–131, 161–209).
`Petitioner cites to its expert’s declaration, which provides more specific
`allegations by pointing to the “horizontal separator” the 1998 Handbook
`discloses. See Ex. 1004 ¶ 95. By not articulating sufficiently the relevance
`of the quoted passages to each of the claim limitations in each of the
`challenged claims, Petitioner is inviting us to assume the role of archeologist
`of the record, which we decline.
`Importantly, neither the Petition nor the cited expert declaration
`addresses how the general teachings of the 1998 Handbook are combined
`with Jody to disclose a process that sorts magnetic fuzz. See Pet. 48–49
`(citing Ex. 1004 ¶¶ 95–96). This omission fatally undermines Petitioner’s
`obviousness argument when the argument presumes that Jody does not
`disclose the magnetic fuzz limitations and Petitioner does not argue
`explicitly that the limitations are expressly or inherently disclosed by the
`1998 Handbook.
`Moreover, neither the Petition nor the cited expert declaration
`explains why one of ordinary skill in the art would have been motivated to
`modify Jody, based on the general teachings of the 1998 Handbook, to sort
`magnetic fuzz, rendering it substantially free of recyclable materials, when
`neither reference mentions the substance or any problems with its presence
`in the system. Based on the arguments and evidence presented, it appears,
`as Patent Owner contends, that Petitioner’s obviousness analysis rests on
`classic hindsight.
`
`18
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`IPR2017-01080
`Patent 9,132,432 B2
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`To the extent that the 1998 Handbook contains relevant teachings,
`Petitioner’s broad citation to 100 pages of text does not reasonably apprise
`us of those teachings. See Pet. 48. We are not obligated to comb the record
`in search of support for Petitioner’s arguments. 37 C.F.R. § 42.104(b)
`(requiring petitions to identify “the relevance of the evidence to the
`challenge raised, including identifying specific portions of the evidence that
`support the challenge”). Petitioner bears that burden, and we may give no
`weight to inadequately cited evidence. See id. (“The Board may exclude or
`give no weight to the evidence where a party has failed to state its relevance
`or to identify specific portions of the evidence that support the challenge.”).
`Based on the foregoing, we are not persuaded by Petitioner’s
`argument and evidence that claim 1 would have been obvious based on Jody
`and the 1998 Handbook. Accordingly, we therefore decline to institute as to
`claim 1. By virtue of their dependency from claim 1, Petitioner likewise has
`not demonstrated a reasonable likelihood that it will prevail on its assertion
`that claims 2–15, 18–20, and 22 are obvious based on Jody and the 1998
`Handbook, and we therefore do not institute as to claims 2–15, 18–20, and
`22.
`
`III. CONCLUSION
`For the foregoing reasons, we determine that the information
`presented in the Petition does not establish that there is a reasonable
`likelihood that Petitioner would prevail in any of its challenges to claims
`1–15, 18–20, and 22 of the ’432 patent.
`
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`IPR2017-01080
`Patent 9,132,432 B2
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`IV. ORDER
`In consideration of the foregoing, it is hereby:
`Ordered that the Petition is denied and no trial is instituted.
`
`
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`
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`For PETITIONER:
`
`Robert Brunelli
`Kendria Pearson
`SHERIDAN ROSS P.C.
`rbrunelli@sheridanross.com
`kpearson@sheridanross.com
`
`For PATENT OWNER:
`
`Luke Santangelo
`Travis Whitsitt
`Misha Macaw
`SANTANGELO LAW OFFICES, P.C.
`lukes@idea-asset.com
`twhitsitt@idea-asset.com
`misham@idea-asset.com
`
`
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`20
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