Trials@uspto.gov
`571-272-7822
`
` 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 IPR2017-01274
`Patent 9,365,292 B2
`____________
`
`Before JENNIFER S. BISK, MICHAEL J. FITZPATRICK, and
`SCOTT A. DANIELS, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. §§ 42.4, 42.108
`INTRODUCTION
`I.
`
`A. Background
`C&D Zodiac, Inc. (“Petitioner”), filed a petition (Paper 2, “Pet.”) to
`institute an inter partes review of claims 1–12 (the “challenged claims”) of
`U.S. Patent No. 9,365,292 B2 (Ex. 1001, “the ’292 patent”). 35 U.S.C.
`
`
`571-272-7822
`
` 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 IPR2017-01274
`Patent 9,365,292 B2
`____________
`
`Before JENNIFER S. BISK, MICHAEL J. FITZPATRICK, and
`SCOTT A. DANIELS, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. §§ 42.4, 42.108
`INTRODUCTION
`I.
`
`A. Background
`C&D Zodiac, Inc. (“Petitioner”), filed a petition (Paper 2, “Pet.”) to
`institute an inter partes review of claims 1–12 (the “challenged claims”) of
`U.S. Patent No. 9,365,292 B2 (Ex. 1001, “the ’292 patent”). 35 U.S.C.
`
`
`
`IPR2017-01274
`Patent 9,365,292 B2
`
`§ 311. B/E Aerospace, Inc. (“Patent Owner”), timely filed a Preliminary
`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. 11–80):
`
`References
`
`Claims
`challenged
`
`Admitted Prior Art3 and U.S. Patent No. 3,738,497
`(Ex. 1005, “Betts”)
`
`1–12
`
`
`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 ’292
`patent issued as a continuation 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 ’292
`patent. Pet. 11–14 (citing Ex. 1001, Fig. 1, 1:23–24, 3:65–67; Ex. 1004
`¶ 86).
`
`2
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`IPR2017-01274
`Patent 9,365,292 B2
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`
`References
`
`Claims
`challenged
`
`1–12
`
`Admitted Prior Art and KLM Overhead Crew Rest
`Document (Ex. 1009, “KLM Crew Rest”)4
`
`C. Related Proceeding
`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, 2; Pet. 2. Petitioner
`concurrently filed inter partes review proceedings IPR2017-01273,
`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 ’292 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].
`
`
`4 File history for U.S. Application serial No. 09/947,275, which issued as
`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.
`
`3
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`Patent 9,365,292 B2
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`
`D. The ’292 Patent
`The ’292 patent relates to space-saving aircraft enclosures, including
`lavatories, closets and galleys. Ex. 1001, 1:17–22, 2:16–21. Figure 2 of the
`’292 patent is reproduced below.
`
`
`Figure 2, reproduced above, illustrates enclosure 10, such as a
`lavatory, positioned aft of aircraft cabin 12. Ex. 1001, 4:8–11, 4:15–24.
`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 4:21–28. 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
`4:24–28. 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 4:31–36.
`
`4
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`IPR2017-01274
`Patent 9,365,292 B2
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`
`The ’292 patent contrasts the embodiment of Figure 2 with a prior art
`configuration shown in Figure 1, which is reproduced below.
`
`
`Figure 1, reproduced above, illustrates “a prior art installation of a lavatory
`immediately aft of an adjacent to an aircraft passenger seat.” Ex. 1001,
`3:65–67.
`E. The Challenged Claims
`Of the challenged claims, claims 1 and 6 are independent. Claim 1,
`which is illustrative, recites:
`1. An aircraft enclosure for a cabin of an aircraft, the cabin
`including a passenger seat located forward of and proximate to
`the aircraft enclosure, said 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 aircraft enclosure comprising:
`an enclosure unit having 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
`
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`IPR2017-01274
`Patent 9,365,292 B2
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`
`and configured to receive a portion of the exterior aft surface
`of said seat back when the seat back is in an unreclined seat
`position;
`wherein said forward wall is adapted to provide additional space
`forward of the enclosure unit for said seat support to be
`positioned further aft in the cabin when compared with a
`position of said seat support if said forward wall was instead
`substantially flat; and
`wherein said single enclosed space is taller than said passenger
`seat.
`Ex. 1001, 4:63–5:16.
`
`II. ANALYSIS
`A. Claim Interpretation
`“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).
`
`6
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`
`B. The Hypothetical Forward Wall Comparison 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 additional
`space forward of the enclosure unit for said seat support to be positioned
`further aft in the cabin when compared with a position of said seat support if
`said forward wall was instead substantially flat;” which we refer to as “the
`hypothetical forward wall comparison limitation.”5 Ex. 1001, 5:10–14
`(emphasis added).
`Having considered the entire record, we are unable to determine the
`metes and bounds of this limitation. A plain reading of the claim language
`requires the forward wall of the claimed enclosure unit to provide
`“additional space” such that the seat support can be positioned “further aft in
`the cabin” compared to another position of the seat support relative to a
`“substantially flat” forward wall configuration. The abject comparison,
`however, of the claimed “substantially not flat” forward wall, and a
`hypothetical “substantially flat” forward wall, juxtaposed as it is with
`moving the seat support between different positions, is at best unclear.
`The clause just prior to the hypothetical forward wall comparison
`limitation recites “said forward wall being substantially not flat,” as a
`negative limitation. Ex. 1001, 5:6–7. The use of negative limitations is
`acceptable in claim drafting. See MPEP 2173.05(i) (For example “[i]f
`
`
`5 Independent claim 6 includes a limitation with the same wording, “wherein
`said forward wall is adapted to provide additional space forward of the
`enclosure unit for said seat support to be positioned further aft in the cabin
`when compared with a position of said seat support if said forward wall was
`instead substantially flat;” Ex. 1001, 6:5–9 (emphasis added).
`
`7
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`IPR2017-01274
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`alternative elements are positively recited in the specification, they may be
`explicitly excluded in the claims.”) (citing In re Johnson, 558 F.2d 1008,
`1019, (CCPA 1977) (“[the] specification, having described the whole,
`necessarily described the part remaining.”), and Ex parte Grasselli, 231
`USPQ 393 (Bd. App. 1983), aff’d mem., 738 F.2d 453 (Fed. Cir. 1984).).
`Although it is an acceptable claim drafting technique, the exclusionary
`limitation of a substantially flat forward wall tells us nothing about the
`profile, contour, or shape of the claimed forward wall, except that it is
`essentially not a single planar surface. Further, that the “substantially not
`flat” forward wall is “configured to receive a portion of the exterior aft
`surface of said seat back when the seat back is in an unreclined seat
`position,” also tells us nothing about the structure of the claimed forward
`wall because the claim does not provide any structural details, e.g. profile,
`shape, or contour, of the claimed “seat back.” See Ex. 1001, 5:7–9.
`Were the claim to end here it could be comprehensible. Despite not
`reciting positively any structure, apart from being “not flat,” the claim
`language might be considered broad, as a claim is indefinite only when those
`skilled in the art would not understand what is claimed when the claim is
`read in light of the specification. See Orthokinetics, Inc. v. Safety Travel
`Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted). A
`reasonable understanding of the plain meaning of this claim requirement
`when viewed in the context of the specification, including Figure 2, is,
`therefore, that the forward wall is “substantially not flat.”
`It is the following clause, i.e. the hypothetical forward wall
`comparison limitation, however, that has indeterminable scope on the record
`presented.
`
`8
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`IPR2017-01274
`Patent 9,365,292 B2
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`
`wherein said forward wall is adapted to provide additional space
`forward of the enclosure unit for said seat support to be
`positioned further aft in the cabin when compared with a position
`of said seat support if said forward wall was instead substantially
`flat;
`Ex. 1001, 5:10–14. The limitation, “wherein said forward wall is adapted to
`provide additional space forward of the enclosure” is functional because it
`recites a feature “by what it does rather than by what it is.” In re Swinehart,
`439 F.2d 210, 212, (CCPA 1971). The recitation of “additional space,”
`therefore, adds no structural element or significance to the forward wall
`itself. To try and make any sense of this clause we must look to the
`subsequent hypothetical “substantially flat” forward wall comparison
`limitation and the “seat support” recitations as it relates to the claimed
`“additional space.”
`The “additional space” functionally allows for the “seat support to be
`positioned further aft in the cabin,” but provides no explanation of the spatial
`or structural relationship between the forward wall and the seat support. In
`an effort to delineate an intelligible meaning of “additional space” the claim
`provides that the recited “additional space” occurs “when compared with a
`position of said seat support if said forward wall was instead substantially
`flat.” Ex. 1001, 5:12–14 (emphasis added).
`Based on a reasonable reading of the claim language, it is entirely
`incomprehensible how the excluded shape of the wall provides any
`cognizable scope to “additional space.” For example, the claim language “if
`said forward wall was instead substantially flat,” by its plain language,
`requires an additional hypothetical “forward wall” that is “substantially
`flat.” Clearly, having two forward walls is likely to be physically
`
`9
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`IPR2017-01274
`Patent 9,365,292 B2
`
`impossible. This limitation, therefore, is an alternative hypothetical forward
`wall.
`
`Understanding the language, “if said forward wall was instead
`substantially flat,” to mean an alternative hypothetical forward wall, such a
`limitation does not recite positively any structural elements or characteristics
`of the claimed “not flat” forward wall, nor does it impart any understandable
`relative position of the seat support to the hypothetical “substantially flat”
`forward wall. As a whole, the claim language does not in any
`comprehensible way tie the relative position of the seat support to the shape
`of the wall, be it “substantially not flat” or, hypothetically speaking,
`“substantially flat.” In other words, a critical question left unanswered by
`this description is what would be the position of the “seat support” relative
`to a wall that “was instead substantially flat.” It is unclear, for example, how
`any such comparison of seat support position can be made based solely on
`the shape of a wall, without knowing where the hypothetical “substantially
`flat” wall itself resides relative to the seat support and in relation to the
`claimed “substantially not flat” wall.
`With great effect, the claim places few, if any, substantive limits on
`the forward wall and the physical and functional relationship of the forward
`wall relative to the seat support, apart from the wall being “substantially not
`flat.” Without clear fundamental structural and functional undergirding, a
`person of ordinary skill in the art is unable to determine further the
`boundaries, for example the size, shape, and location, of the “additional
`space” as recited in the claim that is reliant on these elemental relationships.
`See Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1253 (Fed.
`Cir. 2008) (Despite distinguishing over the prior art, the Federal Circuit
`
`10
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`IPR2017-01274
`Patent 9,365,292 B2
`
`found that the claim did not limit the invention, explaining that “[w]hile
`patentees are allowed to claim their inventions broadly, they must do so in a
`way that distinctly identifies the boundaries of their claims.”)
`With the failure to reasonably communicate to the reader what
`position the seat support is in, relative to any forward wall, flat or not, the
`claim becomes open to a myriad of plausible claim constructions and renders
`at least the term, “additional space,” functionally, and structurally, so
`incongruous as to fail to impart to one of ordinary skill in the art any
`reasonable scope of protection. See Datamize, LLC v. Plumtree Software,
`Inc., 417 F.3d 1342, 1350 (Fed. Cir. 2005). (“The scope of claim language
`cannot depend solely on the unrestrained, subjective opinion of a particular
`individual purportedly practicing the invention.”) (abrogated on other
`grounds by Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120
`(2014)).
`In its analysis, Petitioner does not shed light on the claim scope of the
`hypothetical forward wall. 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
`“allow[s] the last row of seats positioned in front of the contoured wall to sit
`further aft in the aircraft.” Pet. 35–36, 61–62 (citing Ex. 1004 ¶¶ 103–105,
`Ex. 1007, ¶ 13). 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 ’292 patent which reveals any definite frame
`of reference explaining the relationship between the claimed “substantially
`
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`IPR2017-01274
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`
`not flat” forward wall and the hypothetical “substantially flat” forward wall.
`Indeed, Petitioner appears to conflate the hypothetical forward wall
`limitation with the claim limitation where “said forward wall is adapted to
`provide additional space forward of the enclosure unit for said seat support
`to be positioned further aft in the cabin.” Id. at 36 (Petitioner, arguing in
`support of its obviousness challenges that “Betts specifically states that it
`‘provide[s] more room for passengers in an aircraft.’”).
`In summary, Petitioner has not provided sufficient information for a
`determination of the scope of certain limitations, such as the “additional
`space” 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 its challenges of claims 1–12.
`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
`Petitioner would prevail in showing unpatentability of claims 1–12 of the
`’292 patent. We, therefore, decline to institute inter partes review as to any
`of the challenged claims. 37 C.F.R. § 42.108.
`
`12
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`IPR2017-01274
`Patent 9,365,292 B2
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`
`IV. ORDER
` It is ordered that the Petition is denied as to all challenged claims,
`and no trial is instituted.
`
`
`13
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`IPR2017-01274
`Patent 9,365,292 B2
`
`For PETITIONER:
`
`
`John C. Alemanni
`Dean W. Russell
`David A. Reed
`Michael T. Morlock
`KILPATRICK TOWNSEND & STOCKTON LLP
`Andrew Rinehart
`jalemanni@kilpatricktownsend.com
`drussell@kilpatricktownsend.com
`dareed@kilpatricktownsend.com
`MMorlock@kilpatricktownsend.com
`arinehart@kilpatricktownsend.com
`
`
`
`For PATENT OWNER:
`
`Benjamin Haber
`Michael R. Fleming
`IRELL & MANELLA LLP
`bhaber@irell.com
`mfleming@irell.com
`
`14
`
`
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