Trials@uspto.gov
`Tel: 571-272-7822
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`Paper 46
`Entered: March 29, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`C&D ZODIAC, INC.,
`Petitioner,
`
`v.
`
`B/E AEROSPACE, INC.,
`Patent Owner.
`
`Case IPR2017-01275
`Patent 9,073,641 B2
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`
`
`
`
`
`
`
`
`Before JENNIFER S. BISK, SCOTT A. DANIELS, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`
`BISK, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71
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`
`
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`

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`IPR2017-01275
`Patent 9,073,641 B2
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`INTRODUCTION
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`Patent Owner, listed above, filed a Request for Rehearing (Paper 42,
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`“Reh’g Req.”) of our Final Decision (Paper 41, “Final Dec.”) finding claims
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`1, 3–10, and 12–17 of US Patent 9,073,641 B2 (“the ’641 patent”)
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`unpatentable. The Request contends that we “misapprehended and/or
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`overlooked the statute defining the scope of IPRs, 35 U.S.C. § 311(b)” and
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`“relevant Federal Circuit precedent and the arguments from Patent Owner’s
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`responses that the Petitioner failed to carry its burden of proving the claims
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`obvious.” Reh’g Req. 2–3. In addition, Patent Owner argues that the 2018
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`Trial Practice Guide Update “expressly prohibits making an obviousness
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`finding by using expert testimony to replace the disclosures from patent and
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`printed publications that are required by statute.” Id. at 3.
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` “The burden of showing a decision should be modified lies with the
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`party challenging the decision[,]” and that party “must specifically identify
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`all matters the party believes the Board misapprehended or overlooked, and
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`the place where each matter was previously addressed in a motion, an
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`opposition, or a reply.” 37 C.F.R. § 42.71(d). For the reasons discussed
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`below, Patent Owner’s Request for Rehearing is denied.
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`35 U.S.C. § 311(b) and Arendi
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`ANALYSIS
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`Patent Owner’s Request is based on a disagreement with our
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`determinations that two references that contain confidential drawings may be
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`considered in the obviousness analysis even though we did not consider
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`them to be prior art under § 311(b), and that Petitioner’s “common sense”
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`argument passes the standard set by Arendi S.A.R.L. v. Apple Inc., 832 F.3d
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`1355 (Fed. Cir. 2016). In its Request, Patent Owner presents arguments that
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`2
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`IPR2017-01275
`Patent 9,073,641 B2
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`“[t]he evidence that the PTAB relies on for the ‘second recess’ limitation—
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`confidential drawings and fact witness declarations about the alleged prior
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`sale and use—is neither a patent nor a printed publication” and, therefore,
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`under 35 U.S.C. § 311(b), may not be used to support a determination of
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`obviousness in an IPR. Reh’g Req. 5 (citing Paper 6 (“Prelim. Resp.”) 34–
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`36; Paper 20 (“PO Resp.”) 10–15). Patent Owner describes Petitioner’s
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`expert testimony as “conclusory” despite reliance on the prior use and sale.
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`Id. at 5–7. According to Patent Owner, the Final Decision “contradicts the
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`policy underlying” § 311(b) and “invites Petitioners to circumvent the
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`statute by requesting IPRs based on prior use or on sale evidence . . . by
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`merely having an expert rely on this evidence to conclude that a limitation
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`was well-known and therefore obvious.” Id. at 10. Finally, Patent Owner
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`argues that by improperly crediting Petitioner’s evidence, our decision is at
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`odds with Federal Circuit law prohibiting using common sense to supply a
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`missing claim limitation to support a finding of obviousness. Id. at 11
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`(citing Arendi).
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`As Patent Owner acknowledges, all of these arguments were made
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`during the trial and we addressed each of them in the Final Written Decision.
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`Final Dec. 18–26. Nothing in Patent Owner’s request for rehearing
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`persuades us to change our analysis on this issue.
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`First, Patent Owner mischaracterizes our obviousness analysis by
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`describing it as adding a second recess to the “Admitted Prior Art/Betts
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`combination” merely “because the second recess was in public use or on
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`sale.” Reh’g Req. 5. We did not combine Admitted Prior Art/Betts with the
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`public use/on sale references. Instead, we specifically rejected Patent
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`Owner’s attempt to frame Petitioner’s challenge in that manner. Final Dec.
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`3
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`IPR2017-01275
`Patent 9,073,641 B2
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`23–24. Our analysis focused on whether Petitioner established adequately
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`that the second recess would have been obvious as a matter of common
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`sense under the high standard set forth in Arendi and K/S HIMPP v. Hear-
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`Wear Technologies, LLC, 751 F.3d 1362, 1365 (Fed. Cir. 2014). Id. at 20–
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`22. We concluded that Petitioner met that standard based not only on the
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`citation to second recesses in the public use/on sale references, but also on
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`the rationale and related analysis provided by Petitioner’s expert that we
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`credited and found convincing before addressing the public use/on sale
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`references. See id. at 20–21 (citing Ex. 1004 ¶¶ 74, 191). We also credited
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`the testimony of Petitioner’s expert that the proposed modification would
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`have been predictable. Id. at 23 (citing Ex. 1004 ¶ 191). Accordingly,
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`because our analysis relied on the analysis and reasoning from Petitioner’s
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`expert regarding why it would have been obvious1 and a matter of common
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`1 We find Petitioner’s obviousness argument and evidence persuasive even if
`not deemed a “common sense” approach. The common sense moniker was
`not used in the Petition or supporting expert declaration, and was instead
`introduced by Patent Owner and then addressed in Petitioner’s Reply. See
`PO Resp. 10–11; Pet. Reply 5, 10, 12. While we found Petitioner’s common
`sense rationale persuasive, Petitioner’s argument and evidence, including the
`testimony of Petitioner’s expert, support the conclusion that the challenged
`claims are obvious under a traditional obviousness approach that does not
`rely on the “common sense” rationale supported by public use/on sale
`references. See Pet. 36–39 (citing Ex. 1004 ¶¶ 74, 186–192); Reply 5–6,
`10–11 (citing Ex. 1004 ¶ 58); Ex. 1004 ¶¶ 58 (Betts teaches that addition of
`recesses allows for more room to move seats further aft in an aircraft), 74
`(when seat supports moved further aft and the seat support impacts the closet
`or lavatory wall, creating a second recess in wall to accommodate the seat
`support “is the obvious solution to this known problem”), 191 (“[The]
`modification is nothing more than the application of known technology for
`its intended purpose” and “[t]he result of such a modification is predictable,
`allowing the seat to be position further aft in an aircraft.”); see also Final
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`4
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`IPR2017-01275
`Patent 9,073,641 B2
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`sense to add a second recess, we did not merely combine the prior art with
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`the public use/on sale references to arrive at the claimed invention. The
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`public use/on sale references were instead used as further evidence in
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`support of the common sense argument.
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`Our analysis also comports with Arendi and K/S HIMPP. Arendi
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`acknowledges that, even in the context of inter partes reviews and 35 U.S.C.
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`§ 311(b), petitioners can rely on evidence other than that contained within
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`the four corners of a patent or printed publication, when asserting
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`obviousness. Arendi, 832 F.3d at 1363 (“[W]hile common sense can be
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`invoked, even potentially to supply a limitation missing from the prior art, it
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`must still be supported by evidence and a reasoned explanation.”). In fact,
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`when a patent challenger relies on common sense, Arendi and K/S HIMPP
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`require resort to some evidence outside the strict contours of the prior art
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`that forms the basis for the obviousness ground. See id.; K/S HIMPP, 751
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`F.3d at 1365 (referring to the need for more than conclusory statements as
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`well as the need for evidence in the record supporting common sense
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`approach to supply a missing limitation). The proper use of common sense
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`to supply a missing limitation presumes that something else in the evidence
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`of record beyond the patents and printed publications at issue supports that
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`common sense approach—if the “missing” limitation were already disclosed
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`in prior art patents or printed publications there would be little need to resort
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`to common sense. Neither Arendi nor K/S HIMPP limits the form the
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`evidence in support of the common sense approach must take, or suggests
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`that it must come from patent and printed publication art.
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`Dec. 21–23 (citing Ex. 1004 ¶¶ 74, 191, finding the testimony credible, and
`rejecting lack of predictability argument).
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`5
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`IPR2017-01275
`Patent 9,073,641 B2
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`
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`The Federal Circuit’s recent decision in Yeda Research v. Mylan
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`Pharmaceuticals Inc., 906 F.3d 1031 (2018), supports our approach. In
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`Yeda, the Patent Owner asserted that the Board improperly relied on a
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`reference that did “not qualify as statutory prior art” under 35 U.S.C.
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`§ 311(b) and was improperly relied upon “to supplement gaps in the prior art
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`in violation of 35 U.S.C. § 311(b).” Id. at 1040–41. The Federal Circuit
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`rejected the argument, concluding that § 311(b) “is unrelated to the question
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`of whether the Board’s reliance on [the non-prior art reference] was proper”
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`because Ҥ 311(b) only addresses prior art and is silent on the question of
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`other evidence.” Id. at 1041. The court noted that the relevant statute and
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`rules allow petitioners to rely on “evidence beyond the prior art” and
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`contemplate declarations based on supporting evidence and opinions. Id.
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`(citing 35 U.S.C. § 312(a)(3) and 37 C.F.R. § 42.104(b)). The Federal
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`Circuit therefore allowed reliance on a reference that was not prior art as part
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`of the “other evidence” that petitioners can rely upon to support an
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`obviousness ground. See id. That result supports our approach here, where
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`we relied on Petitioner’s use of references that did not qualify as prior art
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`under § 311(b) as part of the “other evidence” that supports Petitioner’s
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`“common sense” obviousness argument. We are, therefore, not persuaded
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`that our analysis runs afoul of § 311(b), Arendi, or other controlling
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`precedent.
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`Trial Practice Guide
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`Patent Owner also argues that the Final Decision “contradicts the
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`USPTO’s Revised Trial Practice Guide that went into effect on August 10,
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`2018,” before the date the Final Decision was issued. Reh’g Req. 8.
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`Specifically, Patent Owner points to pages 4 and 5 of the Trial Practice
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`6
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`IPR2017-01275
`Patent 9,073,641 B2
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`Guide Update that states “[e]xpert testimony, however, cannot take the place
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`of a disclosure in a prior art reference when that disclosure is required as
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`part of the unpatentability analysis.” Id. (quoting Office Patent Trial
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`Practice Guide August 2018 Update, 83 Fed. Reg. 39,989 at 4 (August 13,
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`2018) (“Trial Practice Guide Update”) (https://go.usa.gov/xU7GP)). The
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`portion of the Trial Practice Guide Update Patent Owner relies upon also
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`states that “in an obviousness analysis, conclusory assertions from a third
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`party about general knowledge in the art cannot, without supporting
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`evidence of record, supply a limitation that is not evidently and indisputably
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`within the common knowledge of those skilled in the art.” Trial Practice
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`Guide Update, 5 (citing K/S HIMPP, 751 F.3d at 1365).
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`We are not persuaded that the Trial Practice Guide Update supports
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`Patent Owner’s position here. When read in context, the statements from the
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`Trial Practice Guide Update merely warn against the use of “conclusory
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`assertions” in expert testimony to supply a missing limitation. Id. In that
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`sense, the Trial Practice Guide Update reminds practitioners of the high bar
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`imposed by K/S HIMPP when using expert testimony as part of an effort to
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`supply a limitation missing from the art of record, a standard we have
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`applied here. We do not read this portion of the Trial Practice Guide Update
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`as going further than K/S HIMPP and Arendi, limiting the type of evidence
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`the expert can rely upon in an effort to show that a missing limitation would
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`have been added as a matter of common sense.
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`Patent Owner also cites to IPR2015-01222, in which the PTAB did
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`not credit expert testimony because it did not “explain the unpatentability of
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`certain claims over the cited prior art references.” Reh’g Req. 9 (quoting
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`Global Tel*Link Corp. v. Securus Techs., Inc., IPR2015-01222, Paper 43, 51
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`7
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`IPR2017-01275
`Patent 9,073,641 B2
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`(PTAB July 12, 2017) (emphasis omitted)). However, that case also
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`involved a situation in which the testimony was not supported by any cited
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`evidence and, therefore, is inapplicable to the situation here. See IPR2017-
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`01222, Paper 43, 3. Moreover, the testimony at issue in IPR2017-01222
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`related to “general knowledge” not “tied to the disclosures” of the asserted
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`prior art and not “used to explain the unpatentability of certain claims over
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`the cited prior art references.” Id. at 4–5. Here, Petitioner and its expert Mr.
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`Anderson indeed tie his testimony to the claims and prior art at issue. See,
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`e.g., Pet. 39 (citing Ex. 1004 ¶ 92); Reply 6–10 (citing Ex. 1004 ¶¶ 74–79);
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`Ex. 1004 ¶¶ 74, 191.
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`Accordingly, Patent Owner’s Request does not apprise us of sufficient
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`reason to modify our Final Decision.
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`Accordingly, it is:
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`ORDER
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`ORDERED that Patent Owner’s Request is denied.
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`8
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`IPR2017-01275
`Patent 9,073,641 B2
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`PETITIONER:
`
`John Alemanni
`Dean Russell
`David Reed
`Andrew Rinehart
`Michael Morlock
`KILPATRICK TOWNSEND & STOCKTON LLP
`jalemanni@kilpatricktownsend.com
`drussell@kilpatricktownsend.com
`dreed@kilpatricktownsend.com
`arinehart@kilpatricktownsend.com
`mmorlock@kilpatricktownsend.com
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`PATENT OWNER:
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`Michael R. Fleming
`Talin Gordnia
`IRELL & MANELLA LLP
`mfleming@irell.com
`tgordnia@irell.com
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`9
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