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`Trials@uspto.gov
`Tel: 571-272-7822
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`Paper 12
`Entered: October 31, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`C&D ZODIAC, INC.,
`Petitioner,
`
`v.
`
`B/E AEROSPACE, INC.,
`Patent Owner.
`
`Case IPR2017-01273
`Patent 9,434,476 B2
`
`Before JENNIFER S. BISK, MICHAEL J. FITZPATRICK, and
`SCOTT A. DANIELS, Administrative Patent Judges.
`
`BISK, Administrative Patent Judge.
`
`DECISION
`Denying Institution Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. §§ 42.4, 42.108
`
`I.
`
`INTRODUCTION
`
`A. BACKGROUND
`C&D Zodiac, Inc. (“Petitioner”), filed a Petition (Paper 2, “Pet.”) to
`institute an inter partes review of claims 1–6 (the “challenged claims”) of
`U.S. Patent No. 9,434,476 B2 (Ex. 1001, “the ’476 patent”). 35 U.S.C.
`§ 311. B/E Aerospace, Inc. (“Patent Owner”), timely filed a Preliminary
`
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`IPR2017-008581273
`Patent 9,434,476 B2
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`Response. Paper 7 (“Prelim. Resp.”).1 Institution of an inter partes review
`is authorized by statute when “the information presented in the petition filed
`under section 311 and any response filed under section 313 shows that there
`is a reasonable likelihood that the petitioner would prevail with respect to at
`least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a);
`37 C.F.R. § 42.108.
`For the reasons that follow, we decline to institute an inter partes
`review.
`B. ASSERTED GROUNDS OF UNPATENTABILITY
`Petitioner contends that the challenged claims are unpatentable under
`35 U.S.C. § 103(a)2 based on the following grounds (Pet. 10–79):
`
`References
`
`Claims
`challenged
`
`Admitted Prior Art3 and U.S. Patent No. 3,738,497
`(Ex. 1005, “Betts”)
`
`Admitted Prior Art and KLM Overhead Crew Rest
`Document (Ex. 1009, “KLM Crew Rest”)4
`
`1–6
`
`1–6
`
`
`1 Patent Owner filed two versions of the Preliminary Response: Paper 6, to
`which access is restricted to the parties and the Board; and Paper 7, a
`publicly available, redacted version of Paper 6. For purposes of this
`Decision, we refer only to Paper 7, the redacted version of the Preliminary
`Response.
`2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, took
`effect on March 18, 2013. Because the application from which the ’476
`patent issued was filed before that date, our citations to Title 35 are to its
`pre-AIA version.
`3 Petitioner defines “Admitted Prior Art” as certain portions of the ’476
`patent. Pet. 11–14 (citing Ex. 1001, Fig. 1, 1:24–26, 4:6–8).
`4 File history for U.S. Application serial No. 09/947,275, which issued as
`
`2
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`IPR2017-008581273
`Patent 9,434,476 B2
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`C. RELATED PROCEEDINGS
`The parties have identified, as a related proceeding, the co-pending
`district court litigation of B/E Aerospace, Inc. v. Zodiac Aerospace, Inc.,
`Case No. 2:14-cv-01417 (E.D. Tex). Paper 5, 3; Pet. 2. Petitioner
`concurrently filed inter partes review proceedings IPR2017-01274,
`IPR2017-01275, and IPR2017-01276 challenging three related utility patents
`and PGR2017-00019 challenging a related design patent. Pet. 2.
`In addition, Petitioner previously filed a Petition challenging Patent
`No. 8,590,838 (“the ’838 patent”) in IPR2014-00727, which resulted in a
`final written decision finding unpatentable claims 1, 3–7, 9, 10, 12–14, 16–
`19, 21, 22, 24–29, 31, and 33–37 of the ’838 patent. IPR2014-00727, Paper
`65 (Oct. 26, 2015). On October 3, 2017, the Federal Circuit affirmed that
`decision. B/E Aerospace, Inc. v. C&D Zodiac, Inc., 2017 WL 4387223 (Fed.
`Cir. Oct. 3, 2017). The ’476 is a continuation of application No. 14/043,500,
`which in turn is a continuation of application No. 13/089,063 that matured
`into the ’838 patent. Ex. 1001, [63]. The disclosure of the ’476 patent,
`therefore, is identical to that of the ’838 patent.
`D. THE ’476 PATENT
`The ’476 patent relates to space-saving aircraft enclosures, including
`lavatories, closets and galleys. Ex. 1001, 1:17–23, 2:17–22. Figure 2 of the
`’476 patent is reproduced below.
`
`
`U.S. Patent No. 6,520,451 to Moore and which file history contains a
`drawing and related description of a KLM Crew Rest. See, e.g., Ex. 1009,
`70. Petitioner terms the file history “the KLM Crew Rest Document.” Pet.
`16. We employ the same nomenclature.
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`
`Figure 2, reproduced above, illustrates enclosure 10, such as a
`lavatory, positioned aft of aircraft cabin 12. Ex. 1001, 4:9–12, 4:17–24.
`Forward wall 28 of the lavatory is described as “substantially not flat in a
`vertical plane” and “disposed immediately aft of and adjacent to or abutting
`the exterior aft surface of” passenger seat 16. Id. at 4:24–34. In particular,
`the forward wall is shaped to provide recess 34, which accommodates the
`partially-reclined backrest of the passenger seat, as shown in Figure 2. Id. at
`4:34–38. In addition, the forward wall is shaped to also provide lower recess
`100, which accommodates “at least a portion of an aft-extending seat
`support 17.” Id. at 4:41–46.
`The ’476 patent contrasts the embodiment of Figure 2 with a prior art
`configuration shown in Figure 1, which is reproduced below.
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`Figure 1, reproduced above, illustrates “a prior art installation of a
`lavatory immediately aft of and adjacent to an aircraft passenger seat.” Ex.
`1001, 4:6–8.
`E. THE CHALLENGED CLAIMS
`Of the challenged claims, claims 1 and 2 are independent. Claim 1,
`which is illustrative, recites:
`1. A method of retrofitting an aircraft to provide additional
`passenger seating in the cabin of said aircraft, the cabin including
`a passenger seat having a seat back with an exterior aft surface
`that is substantially not flat, a seat bottom, and a seat support that
`interfaces with the floor of the aircraft cabin and holds the seat
`bottom in an elevated position above the floor of the aircraft
`cabin, the method comprising the steps of:
`installing an aircraft enclosure unit comprising
`a forward wall, said forward wall being part of an outer boundary
`defining a single enclosed space that includes a toilet, said
`forward wall being substantially not flat and configured to
`receive a portion of the exterior aft surface of the seat back
`when the seat back is in an unreclined seat position;
`wherein said forward wall is adapted to provide more space
`forward of the enclosure unit such that the seat support can be
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`positioned further aft in the cabin than if the cabin included
`another enclosure unit having a substantially flat front wall
`located in substantially the same position in the cabin as the
`forward wall, and
`wherein said enclosed space is taller than the passenger seat; and
`positioning said seat support further aft in said aircraft cabin than
`said seat support could have been positioned prior to
`retrofitting said aircraft, whereby a portion of the exterior aft
`surface of said passenger seat back in the unreclined seat
`position is received by said forward wall.
`Id. at 5:6–35.
`
`II. ANALYSIS
`A. CLAIM INTERPRETATION GENERALLY
`“A claim in an unexpired patent that will not expire before a final
`written decision is issued shall be given its broadest reasonable construction
`in light of the specification of the patent in which it appears.” 37 C.F.R.
`§ 42.100(b). When applying that standard, we interpret the claim language
`as it would be understood by one of ordinary skill in the art in light of the
`specification. In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir.
`2010). Thus, we give claim terms their ordinary and customary meaning.
`See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (“The
`ordinary and customary meaning ‘is the meaning that the term would have to
`a person of ordinary skill in the art in question.’”). Only terms which are in
`controversy need to be construed, and then only to the extent necessary to
`resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
`F.3d 795, 803 (Fed. Cir. 1999).
`
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`B. THE HYPOTHETICAL ENCLOSURE UNIT LIMITATION
`Although neither party proposes an express construction for this
`limitation (see Pet. 30–31; Prelim. Resp. 25–27), we nevertheless address
`the meaning of “wherein said forward wall is adapted to provide more space
`forward of the enclosure unit such that the seat support can be positioned
`further aft in the cabin than if the cabin included another enclosure unit
`having a substantially flat front wall located in substantially the same
`position in the cabin as the forward wall,” which we refer to as “the
`hypothetical enclosure unit limitation.”5 Ex. 1001, 5:21–27 (emphasis
`added).
`Having considered the entire record, we are unable to determine the
`metes and bounds of this limitation. It is clear that this limitation requires
`the forward wall of the claimed enclosure unit to provide more space such
`that the seat support can be positioned “further aft in the cabin” compared to
`some other configuration (the “frame of reference configuration”). This
`frame of reference configuration, however, is unclear. For example, the
`language “if the cabin included another enclosure unit,” by its plain
`language, requires the second configuration in the claimed comparison to
`include an additional hypothetical enclosure unit, with its own “front wall”
`that is “located in substantially the same position in the cabin as the forward
`wall.” Clearly, having two enclosures with front walls in substantially the
`
`
`5 Independent claim 2 includes a limitation with very similar wording,
`“wherein said forward wall is adapted to provide more space forward of the
`enclosure unit such that the seat support can be positioned further aft in the
`cabin than if the cabin included another enclosure unit having a front wall
`that is substantially flat and is located in substantially the same position in
`the cabin as the forward wall.” Ex. 1001, 6:5–13 (emphasis added).
`
`7
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`IPR2017-008581273
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`same position is likely to be physically impossible. This limitation,
`therefore, would only make sense were the second configuration to instead
`include an alternative hypothetical enclosure unit.
`However, even if we were to overlook its plain meaning and read the
`language “if the cabin included another enclosure unit” to mean an
`alternative hypothetical enclosure unit, the limitation does not recite any of
`the other characteristics of such alternative enclosure unit. This leaves us to
`compare the claimed enclosure unit with a configuration that we know
`nothing about, except that it has an alternative hypothetical enclosure unit
`with “a substantially flat front wall located in the substantially the same
`position in the cabin as the forward wall.” Among the questions unanswered
`is what it means for a substantially flat wall to be “in substantially the same
`position” as a wall that is explicitly “substantially not flat.” It is unclear, for
`example, whether such comparison is made between the forward-most
`section of the claimed “substantially not flat” wall or the aft-most section.
`In its analysis, Petitioner does not shed light on the claim scope of the
`hypothetical enclosure unit. Instead, Petitioner explains that “[a] person of
`ordinary skill in the art would realize that [Betts’] contoured forward wall
`provides additional space forward of the enclosure unit for the seat to be
`placed further aft in an aircraft cabin than would be possible if the forward
`wall was instead substantially flat” and that the KLM Crew Rest design
`“allows for passenger seats to be placed further aft than they could be placed
`with a flat wall.” Pet. 36, 59 (citing Ex. 1004 ¶¶ 103–105, 146). There is no
`explanation, however, of how the required comparison was made. We
`cannot find, and Petitioner does not point to, any part of the specification of
`the ’476 patent which reveals any definite frame of reference explaining the
`
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`IPR2017-008581273
`Patent 9,434,476 B2
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`relationship between the claimed “substantially not flat” forward wall and
`the hypothetical “substantially flat front wall.” Indeed, Petitioner appears to
`conflate the hypothetical enclosure unit limitation with the subsequent claim
`limitation of “positioning said seat support further aft in said aircraft than
`said seat support could have been positioned prior to retrofitting said
`aircraft.” Id. at 36–37 (Petitioner, arguing in support of its obviousness
`challenge that “Betts specifically states that it ‘provide[s] more room for
`passengers in an aircraft.’”), 59 (“This allows for additional seating in the
`cabin of an aircraft when installed.”).
`In summary, Petitioner has not provided sufficient information for a
`determination of the scope of the hypothetical enclosure unit limitation and,
`therefore, we cannot conduct the necessary factual inquiry for determining
`whether the prior art meets this limitation. See In re Aoyama, 656 F.3d
`1293, 1298 (Fed. Cir. 2011) (quoting Enzo Biochem, Inc. v. Applera Corp.,
`599 F.3d 1325, 1332 (Fed. Cir. 2010)) (“[A] claim cannot be both indefinite
`and anticipated.”); In re Steele, 305 F.2d 859, 862–63 (CCPA 1962)
`(reversing the Board’s decision of obviousness because it relied on “what at
`best are speculative assumptions as to the meaning of the claims”); 37 C.F.R.
`§ 42.104(b)(3)–(4) (A petition must show “[h]ow the challenged claim is to
`be construed” and “[h]ow the construed claim is unpatentable.”).
`We are unable to conclude, therefore, that there is a reasonable
`likelihood that Petitioner would prevail in either of its challenges of claims
`1–6.
`
`III. CONCLUSION
`For the foregoing reasons, based on the information presented in the
`Petition, we are not persuaded that there is a reasonable likelihood that
`
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`IPR2017-008581273
`Patent 9,434,476 B2
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`Petitioner would prevail in showing unpatentability of claims 1–5 of the
`’476 patent. We, therefore, decline to institute inter partes review as to any
`of the challenged claims. 37 C.F.R. § 42.108.
`IV. ORDER
`It is ordered that the Petition is denied as to all challenged claims, and
`no trial is instituted.
`
`10
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`IPR2017-008581273
`Patent 9,434,476 B2
`
`PETITIONER:
`
`KILPATRICK TOWNSEND & STOCKTON LLP
`John C. Alemanni
`Dean W. Russell
`David A. Reed
`Michael T. Morlock
`Andrew Rinehart
`jalemanni@kilpatricktownsend.com
`drussell@kilpatricktownsend.com
`dareed@kilpatricktownsend.com
`MMorlock@kilpatricktownsend.com
`arinehart@kilpatricktownsend.com
`
`PATENT OWNER:
`
`IRELL & MANELLA LLP
`Michael R. Fleming
`Benjamin Haber
`mfleming@irell.com
`bhaber@irell.com
`
`
`11
`
`
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