Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 41
`Entered: October 23, 2018
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`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 IPR2017-01275
`Patent 9,073,641 B2
`
`
`
`Before JENNIFER S. BISK, SCOTT A. DANIELS, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`
`BISK, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 41
`Entered: October 23, 2018
`
`
`
`
`
`
`
`
`
`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 IPR2017-01275
`Patent 9,073,641 B2
`
`
`
`Before JENNIFER S. BISK, SCOTT A. DANIELS, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`
`BISK, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
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`IPR2017-01275
`Patent 9,073,641 B2
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`
`I. INTRODUCTION
`C&D Zodiac, Inc. (“Petitioner”), filed a petition to institute an inter
`partes review of claims 1, 3–10, and 12–17 of U.S. Patent No. 9,073,641 B2
`(Ex. 1001, “the ’641 patent”). Paper 2 (“Pet.”). 35 U.S.C. § 311. B/E
`Aerospace, Inc. (“Patent Owner”), filed a Preliminary Response. Papers 6, 7
`(“Prelim. Resp.”). 1 Upon consideration of the Petition and Preliminary
`Response, we instituted an inter partes review pursuant to 35 U.S.C. § 314,
`as to claims 1, 3–10, and 12–17. Paper 12 (“Inst. Dec.”).
`Subsequent to institution, Patent Owner filed a Patent Owner
`Response (Paper 20, 21, “PO Resp.”)2 and Petitioner filed a Reply to Patent
`Owner’s Response (Paper 28, “Reply”). Patent Owner filed a Motion to
`Exclude (Paper 34, “Mot. Exclude”), Petitioner filed an Opposition to Patent
`Owner’s Motion (Paper 37, “Opp.”), and Patent Owner filed a Reply (Paper
`38, “PO Reply to Mot. Exclude”). Patent Owner also filed two unopposed
`Motions to Seal. Papers 8, 22.
`On June 28, 2018, in response to the Board’s Orders instituting on
`Ground 2 based on the Supreme Court’s decision in SAS Institute Inc. v.
`Iancu, 138 S. Ct. 1348 (2018), Petitioner filed a Request for Partial Adverse
`Judgment against itself with respect to Ground 2, pursuant to 37 C.F.R.
`§ 42.73(b). See Paper 30 (modifying institution decision to institute on all
`challenged grounds presented in Petition); Paper 33 (Petitioner’s Request for
`
`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.
`2 Patent Owner filed two versions of the Patent Owner Response: Paper 20,
`to which access is restricted to the parties and the Board; and Paper 21, a
`publicly available, redacted version of Paper 20.
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`2
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`Partial Adverse Judgment as to Ground 2). We granted Petitioner’s Request
`for Partial Adverse Judgment on July 5, 2018. Paper 36 (granting adverse
`judgment as to Ground 2).
`On August 3, 2018, we held an oral hearing. Paper 40 (“Tr.”).3
`This Final Written Decision is entered pursuant to 35 U.S.C. § 318(a).
`For the reasons that follow, we determine that Petitioner has demonstrated
`by a preponderance of the evidence that claims 1, 3–10, and 12–17 of the
`’641 patent are unpatentable.
`
`A. Related Matters
`Patent Owner asserted the ’641 patent along with related patents, U.S.
`Patent Nos. 9,444,742, 9,365,292, 9,434,476, and D764,031, against
`Petitioner in B/E Aerospace, Inc. v. Zodiac Aerospace, Inc., No. 2:14-cv-
`01417 (E.D. Tex.) (the “district court litigation”), that is currently stayed.
`Pet. 2; Paper 5, 2. All five of these patents claim priority to a U.S.
`application that issued as U.S. Patent No. 8,590,838 (“the ’838 patent”),
`which patent was the subject of Case IPR2014-00727 between Petitioner and
`Patent Owner. In the final written decision in that case, the Board held that
`claims 1, 3–7, 9, 10, 12–14, 16–19, 21, 22, 24–29, 31, and 33–37 had been
`proven unpatentable, and claims 8, 20, 30, and 38 had not been proven
`unpatentable. IPR2014-00727, Paper 65. Both sides appealed, and the
`Court of Appeals affirmed. See B/E Aerospace, Inc. v. C&D Zodiac, Inc.,
`709 F. App’x 687, 2017 WL 4387223 (Fed. Cir. Oct. 3, 2017).
`
`
`3 The oral hearing included related proceedings, IPR2017-01276 and
`PGR2017-00019. Paper 40.
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`
`Each of the additional four related patents identified above is the
`subject of a petition for an inter partes or post-grant review filed by
`Petitioner. See Cases IPR2017-01273 (involving Patent 9,434,476);
`IPR2017-01274 (involving Patent 9,365,292); IPR2017-01276 (involving
`Patent 9,440,742); PGR2017-00019 (involving Patent D764,031).
`
`B. The ’641 Patent
`The ’641 patent relates to space-saving aircraft enclosures, including
`lavatories, closets, and galleys. Ex. 1001, 1:15–20, 2:14–19. Figure 2 of the
`’641 patent is reproduced below.
`
`
`Figure 2, reproduced above, illustrates enclosure 10, such as a
`lavatory, positioned aft of aircraft cabin 12. Ex. 1001, 4:1–3, 4:8–13. The
`lavatory has walls that define interior lavatory space 30. Id. at 4:15–24.
`Forward wall 28 of the lavatory is described as “substantially not flat in a
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`vertical plane” and “disposed immediately aft of and adjacent to or abutting
`the exterior aft surface of” passenger seat 16. Id. at 4:15–24. 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 second,
`lower recess 100, which accommodates “at least a portion of an aft-
`extending seat support 17.” Id. at 4:31–36.
`The ’641 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 an [aircraft]
`lavatory immediately aft of and adjacent to an aircraft passenger seat.” Ex.
`1001, 3:65–67. In the depiction of the prior art in Figure 1, a forward wall
`of the lavatory (double-lined structure immediately aft of seat) is flat and in
`a vertical plane.
`As can be seen by comparing FIG. 1 and FIG. 2, the recess 34
`and the lower recess 100 combine to permit the passenger seat
`16 to be positioned farther aft in the cabin than would be possible
`if the lavatory enclosure 10 included a conventional flat and
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`vertical forward wall without recesses like that shown in FIG. 1,
`or included a forward wall that did not include both recesses 34,
`100.
`Id. at 4:36–42. Notably, the passenger seat in the Figure 1 depiction of the
`prior art is identical to the passenger seat in the Figure 2 illustration of the
`invention.
`Petitioner challenges claims 1, 3–10, and 12–17. Claims 1 and 8 are
`independent. Claims 3–7 depend directly from claim 1 and claims 9, 10, and
`12–17 ultimately depend from claim 8. Claims 1 and 8 are reproduced
`below.
`
`1. An aircraft lavatory for a cabin of an aircraft of a type that
`includes a forward-facing passenger seat that includes an
`upwardly and aftwardly inclined seat back and an aft-extending
`seat support disposed below the seat back, the lavatory
`comprising:
`a lavatory unit including a forward wall portion and defining
`an enclosed interior lavatory space, said forward wall
`portion configured to be disposed proximate to and aft of
`the passenger seat and including an exterior surface having
`a shape that is substantially not flat in a vertical plane; and
`wherein the said forward wall portion is shaped to
`substantially conform to the shape of the upwardly and
`aftwardly inclined seat back of the passenger seat, and
`includes a first recess configured to receive at least a
`portion of the upwardly and aftwardly inclined seat back
`of the passenger seat therein, and further includes a second
`recess configured to receive at least a portion of the aft-
`extending seat support therein when at least a portion of
`the upwardly and aftwardly inclined seat back of the
`passenger seat is received within the first recess.
`Ex. 1001, 4:63–5:17.
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`
`8. An aircraft lavatory for an aircraft, the lavatory
`comprising:
`a forward partition;
`an aft partition; and
`a lavatory space disposed between the forward partition and
`the aft partition;
` wherein the forward partition comprises:
`
`a forward-extending upper portion;
`
`an aft-extending mid-portion; and
` wherein the forward-extending upper portion, the aft-
`extending mid-portion, and the forward-extending lower
`portion combine to define a first aft-extending recess
`disposed between the upper forward-extending portion
`and the forward-extending lower portion, and
`wherein the forward partition further defines a second aft-
`extending recess proximate to a lower end of the forward
`partition, the second aft-extending recess being configured
`to receive at least a portion of an aft-extending seat support
`of a forward-positioned passenger seat therein.
`Id. at 5:43–6:14.
`
`C. Instituted Grounds of Unpatentability
`We instituted trial based on all asserted grounds of unpatentability.
`Inst. Dec. 23; Paper 30. After granting Petitioner’s Request for Partial
`Adverse Judgment (Paper 36), the following ground remains for our
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`consideration: whether the Admitted Prior Art4 and Betts5 render claims 1,
`3–10, and 12–17 obvious under 35 U.S.C. § 103(a). 6
`
`II. ANALYSIS
`A. Principles of Law
`To prevail in its challenge to Patent Owner’s claims, Petitioner must
`demonstrate by a preponderance of the evidence that the claims are
`unpatentable. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d).
`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
`matter, as a whole, would have been obvious at the time of the invention to a
`person having ordinary skill in the art. KSR Int’l Co. v. Teleflex, Inc., 550
`U.S. 398, 406 (2007). The 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 ordinary skill in the art; and (4) objective evidence
`of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`B. Level of Ordinary Skill
`In determining the level of ordinary skill in the art, various factors
`may be considered, including the “type of problems encountered in the art;
`
`
`4 Petitioner defines “Admitted Prior Art” as certain portions of the ’641
`patent, including Figure 1. Pet. 11–12 (citing Ex. 1001, 1:21–22, Fig. 1; Ex.
`1004 ¶ 86).
`5 U.S. Patent No. 3,738,497, issued June 12, 1973 (Ex. 1005) (“Betts”).
`6 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, took
`effect on March 18, 2013. Because the application from which the ’641
`patent issued was filed before that date, any citations to 35 U.S.C. §§ 102
`and 103 are to their pre-AIA version.
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`prior art solutions to those problems; rapidity with which innovations are
`made; sophistication of the technology; and educational level of active
`workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`(citation omitted).
`Petitioner relies on the testimony of Alan Anderson, who testifies that
`a person with ordinary skill in the art “would have had a bachelor’s degree
`in mechanical engineering, industrial design, or a similar discipline, or the
`equivalent experience, with at least two years of experience in the field of
`aircraft interior design.” Pet. 29 (citing Ex. 1004 ¶¶ 27–29). Patent Owner
`does not address Petitioner’s proposal, or offer a competing proposal for a
`person of ordinary skill in the art. Based on our review of the record, we
`adopt Petitioner’s definition of the level of ordinary skill in the art.
`
`C. Claim Construction
`In an inter partes review, we construe claim terms in an unexpired
`patent according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 7 37 C.F.R. § 42.100(b).
`Consistent with the broadest reasonable construction, claim terms are
`presumed to have their ordinary and customary meaning as understood by a
`person of ordinary skill in the art in the context of the entire patent
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007). Only terms that 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).
`
`7 The outcome of this case would be the same using the claim construction
`approach articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir.
`2005) (en banc).
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`
`In the Institution Decision, we declined to construe two terms that
`Petitioner contended needed construction. Inst. Dec. 8–10. After institution,
`neither party has asked us to provide a construction of those terms or any
`other terms. Accordingly, we need not expressly construe any terms in this
`proceeding.
`
`D. Obviousness in View of Admitted Prior Art and Betts
`Petitioner asserts that the subject matter of claims 1, 3–10, and 12–17
`would have been obvious over the Admitted Prior Art and Betts. Pet. 31–57.
`For the reasons explained below, we determine Petitioner has established by
`a preponderance of the evidence that claims 1, 3–10, and 12–17 are
`unpatentable over the Admitted Prior Art and Betts.
`The Admitted Prior Art
`1.
`Petitioner asserts as Admitted Prior Art the illustration and related
`disclosure of Figure 1 in the ’641 patent, which is discussed above. See Pet.
`11–14 (citing Ex. 1001, 1:21–22, Fig. 1; Ex. 1004 ¶ 86). In the Institution
`Decision, we found that the asserted Admitted Prior Art constitutes prior art.
`Inst. Dec. 11 (citing Ex. 1001, 3:65–67 (“FIG. 1 is a schematic diagram of a
`prior art installation of a lavatory immediately aft of and adjacent to an
`aircraft passenger seat.”) (emphasis added)). Patent Owner does not contend
`that the Admitted Prior Art is not prior art, or that it cannot be used in this
`proceeding as a basis for finding limitations disclosed by the prior art.
`Of particular relevance here is that the Admitted Prior Art includes a
`flat forward-facing lavatory wall with the passenger seat shown in Figure 1
`of the ’641 patent immediately in front of that wall, with an aft-extending
`seat support.
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`
`Betts
`2.
`Betts notes a desire to “provide more room for passengers in an
`aircraft or other vehicle.” Ex. 1005, 1:6–7. Figure 1 of Betts is reproduced
`below.
`
`
`Figure 1 discloses airplane passenger seat 10 having tiltable backrest
`12. Ex. 1005, 2:8–9. Behind the seat is coat closet 14, which has luggage
`space 16 along the floor and overhead coat compartment 18. Id. at 2:9–14.
`“The lower portion 30 of the coat compartment 18 slants rearwardly to
`provide a space for seatback 12 to be tilted rearwardly as desired by the
`occupant. The top 32 of storage space 16 also slants rearwardly so as not to
`interfere with seatback 12 when tilted.” Id. at 2:19–24.
`
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`
`Obviousness of Independent Claims 1 and 8
`3.
`Petitioner relies on the Declarations of Alan Anderson (Ex. 1004,
`“Anderson Declaration”), Scott Savian (Ex. 1018), and Vince Huard (Ex.
`1019) in support of its assertions that the combination of Admitted Prior Art
`and Betts discloses or renders obvious all of the limitations of claims 1 and
`8. Pet. 21–26, 31–57; Reply 4–15. Patent Owner relies on the Declarations
`of Dr. Adam Dershowitz (Ex. 2104, “Dershowitz Declaration”), R. Kaus
`Brauer (Ex. 2046), and James Brunke (Ex. 2097) in its Response, and argues
`that Petitioner failed to establish that the proposed combination discloses the
`claimed “second recess” and “reducing a volume of unusable
`space”/“reducing or eliminating gaps” limitations, and failed to establish an
`adequate motivation to combine. PO Resp. 7–22. The parties also dispute
`the relevance and impact of Patent Owner’s alleged objective evidence of
`nonobviousness on the obviousness issues in this case. See Pet. 77–80; PO
`Resp. 22–37; Reply 15–27.
`Motivation to Combine
`i.
`Petitioner alleges that it would have been obvious to modify the prior
`art flat wall lavatory, as shown in the Admitted Prior Art, with a contoured
`forward wall as shown in Betts. Pet. 22 (citing Ex. 1004 ¶¶ 56–64). We first
`consider Petitioner’s argument that we are collaterally estopped from
`considering the merits of this issue, because the Board already found in the
`related inter partes review of the ’838 patent that “it would have been
`obvious to apply the recessed forward wall design of Betts to other
`enclosures, including single-spaced lavatories.” Reply 3 (quoting Case
`IPR2014-00727, 12 (Paper 65) (emphasis removed)). Petitioner relies on the
`Federal Circuit’s affirmance of that decision after the Petition was filed in
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`this case as the basis for its collateral estoppel argument. Id. (citing Ex.
`1026 (B/E Aerospace, Inc. v. C&D Zodiac, Inc., 709 F. App’x 687 (Fed. Cir.
`Oct. 3, 2017))). According to Petitioner, Patent Owner should be precluded
`from arguing that “it would not have been obvious to apply the recessed
`forward wall design of Betts to other enclosures, including single-spaced
`lavatories.” Id. at 3–4. Petitioner only devotes a few sentences of argument
`to collateral estoppel, does not assess the relevant factors when determining
`whether to apply collateral estoppel, and does not assess the differences in
`the claims at issue in the ’838 patent and claims 1 and 8 here. See Reply 3–
`4; Banner v. U.S., 238 F.3d 1348, 1354 (Fed. Cir. 2001) (“Collateral estoppel
`requires four factors: (1) the issues are identical to those in a prior
`proceeding, (2) the issues were actually litigated, (3) the determination of the
`issues was necessary to the resulting judgment, and (4) the party defending
`against preclusion had a full and fair opportunity to litigate the issues.”). In
`addition, Patent Owner has had no meaningful opportunity to address the
`issue in its own briefing because the collateral estoppel issue was raised for
`the first time in Petitioner’s Reply. Under these circumstances, where the
`issue has not been fully developed by Petitioner or addressed by Patent
`Owner, we decline to apply collateral estoppel. We do, however, view the
`findings in the prior case as informative when they closely resemble the
`issues we address here.
`In support of the proposed modification of the Admitted Prior Art with
`the contoured wall of Betts, Petitioner relies on the testimony in the
`Anderson Declaration, explaining that a primary goal of airplane interior
`design is efficient use of passenger cabin space so that more passengers can
`fit in the cabin or to make the passengers more comfortable. Pet. 22–23
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`(citing Ex. 1004 ¶ 57). According to Petitioner, because Betts uses the
`contoured forward wall to provide more passenger space in the cabin, one of
`ordinary skill in the art would have been motivated to replace the prior art
`flat forward lavatory wall with the contoured wall of Betts to provide that
`same additional space. Id. at 23 (citing Ex. 1004 ¶ 58). Petitioner points to
`the recess in the contoured wall Betts discloses as evidence of that approach,
`which allows the passenger chairs to be pushed back further aft,
`accommodating a portion of the seat back. Id. at 24–25 (citing Ex. 1004
`¶ 59).
`Patent Owner argues “that those of skill in the art had no reason to
`make the combination proposed” by Petitioner. PO Resp. 24. Patent Owner
`relies on the allegedly long co-existence of the Betts design within planes
`that included the prior art flat lavatory walls, suggesting that there was no
`motivation to make the modification. Id. at 16–18. Patent Owner also
`argues that the proposed combination would require “total destruction” of
`Betts, if the coat closet in Betts were turned into a lavatory. Id. at 18–21.
`Patent Owner also contends that Petitioner and Mr. Anderson fail to establish
`a reasonable expectation of success in light of this total deconstruction of
`Betts. Id. at 21–22.
`Based on our review of the evidence and arguments, we find that one
`of ordinary skill in the art would have been motivated to modify the
`Admitted Prior Art lavatory by replacing the flat forward wall with the
`contoured forward wall of Betts. Petitioner submits convincing argument
`based on the testimony of Mr. Anderson, that designers of airplane interiors
`were concerned about adding space to the cabin and that the Betts contoured
`wall increased interior space. Pet. 22–25 (citing Ex. 1004 ¶¶ 57–59). Betts
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`itself backs up this testimony by stating that one of the goals of its design is
`“to provide more passenger room.” Ex. 1005, Abstract. We also agree with
`Petitioner’s assertion that Figure 1 of Betts depicts a passenger seat further
`aft in the cabin than it could have been if the wall were flat with no recess,
`and merely extended up from the bottom portion of the wall. See Betts Fig.
`1; Pet. 23–24. Betts therefore depicts how the contoured wall and recess
`provide more passenger space when compared to a flat, vertical wall, and
`Betts discusses the ability of its design to save space. As such, Betts
`adequately supports the proposed modification of the prior art flat forward
`wall as shown in the Admitted Prior Art.
`Patent Owner’s argument that flat forward lavatory walls co-existed
`with the Betts design for years without modification, even if accurate, does
`not outweigh the more convincing evidence and argument supporting
`Petitioner’s position based on Betts and the Anderson Declaration. In
`addition, Patent Owner’s argument that one would need to “totally
`deconstruct” Betts in order to add a lavatory to Betts misapprehends
`Petitioner’s proposed modification. Petitioner proposes to replace a lavatory
`flat forward wall as shown in the Admitted Prior Art with the Betts
`contoured wall, not add a lavatory behind the Betts contoured wall. See Pet.
`22, 24; Reply 4–5. Although we do not apply collateral estoppel for the
`reasons provided above, we note that our findings regarding the proposed
`combination and modification are consistent with the Federal Circuit’s
`decision in the related case. See B/E Aerospace, 709 F. App’x at 694
`(rejecting Patent Owner’s argument that Petitioner’s combination required
`adding lavatory to Betts).
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`
` Based on the foregoing, we find that one of ordinary skill in the art at
`the time of the invention would have been motivated to modify the lavatory
`flat forward wall in the Admitted Prior Art by replacing it with the contoured
`forward wall of Betts.
`The “Forward wall” and “First Recess” limitations
`ii.
`Claims 1 and 8 contain several limitations that are indisputably8
`disclosed by the proposed combination of Betts and the Admitted Prior Art.
`For example, claim 1 recites “a lavatory unit including a forward wall
`portion and defining an enclosed interior lavatory space, said forward wall
`portion configured to be disposed proximate to and aft of the passenger seat
`and including an exterior surface having a shape that is substantially not flat
`in the vertical plane” and claim 8 recites “a forward partition; an aft
`partition; and a lavatory space disposed between the forward partition and
`aft partition; wherein the forward partition comprises: a forward-extending
`upper portion; an aft-extending mid-portion; and a forward-extending lower
`portion.” Petitioner argues that a person of ordinary skill in the art would
`know that the contoured forward wall of Betts could be used in place of a
`flat forward wall on an aircraft lavatory. Pet. 33–34 (citing Ex. 1004 ¶ 178),
`46 (citing Ex. 1004 ¶¶ 209–211). This arrangement follows from the
`proposed combination discussed above, where the flat forward lavatory wall
`of the Admitted Prior Art is replaced by the contoured wall of Betts. We find
`that a person of ordinary skill in the art would have known about flat
`forward walls such as that the Admitted Prior Art discloses, and contoured
`forward walls such as that Betts discloses, and that the latter could be used in
`
`
`8 Patent Owner does not argue that, once the proposed combination is made,
`the combination fails to disclose these limitations.
`
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`lieu of the former to save space in the cabin. See, e.g., Ex. 1001, Fig. 1; Ex.
`1005, Fig. 1; Ex. 1004 ¶ 246. Once the proposed modification is made, the
`resulting forward wall is “substantially not flat in a vertical plane,” as recited
`by claim 1 and comprises “a forward-extending upper portion; an aft-
`extending mid-portion; and a forward-extending lower portion” as recited by
`claim 8.
`Claim 1 recites that “said forward wall portion is shaped to
`substantially conform to the shape of the upwardly and aftwardly inclined
`seat back of the passenger seat, and includes a first recess configured to
`receive at least a portion of the upwardly and aftwardly inclined seat back of
`the passenger seat therein” and claim 8 recites that “the forward-extending
`upper portion, the aft-extending mid-portion, and the forward-extending
`lower portion combine to define a first aft-extending recess disposed
`between the upper forward-extending portion and the forward-extending
`lower portion.” Petitioner contends that Betts discloses these first recess
`limitations. See Pet. 34–35 (citing Ex. 1005, Fig. 1; Ex. 1004 ¶¶ 181–183),
`47 (citing Ex. 1004 ¶¶ 213–214). We agree. Figure 1 of Betts discloses
`slanted walls 30, 32 that form a recess configured to receive at least a
`portion of inclined seat back 12. See Ex. 1005, Fig. 1, 2:19–24 (“The lower
`portion 30 of the coat compartment 18 slants rearwardly to provide a space
`for seatback 12 to be tilted rearwardly as desired by the occupant. The top
`32 of storage space 16 also slants rearwardly so as not to interfere with
`seatback 12 when tilted.”); see also B/E Aerospace, 709 F. App’x at 693
`(“Walls 30 and 32 [in Figure 1 of Betts] slant rearwardly to allow the
`occupant to recline seatback 12 of passenger seat 10.” (citing Ex. 1005, 2:7–
`24)).
`
`17
`
`
`
`IPR2017-01275
`Patent 9,073,641 B2
`
`
` “Second Recess”
`iii.
`Claim 1 recites “said forward wall portion . . . further includes a
`second recess configured to receive at least a portion of the aft-extending
`seat support therein when at least a portion of the upwardly and aftwardly
`inclined seat back of the passenger seat is received within the first recess”
`and claim 8 recites “the forward partition further defines a second aft-
`extending recess proximate to a lower end of the forward partition, the
`second aft-extending recess being configured to receive at least a portion of
`an aft-extending seat support of a forward-positioned passenger seat
`therein.” Petitioner does not contend that the Admitted Prior Art or Betts
`alone discloses the second recess. Instead, Petitioner argues that one of
`ordinary skill in the art would have found it obvious and would have been
`motivated to add a second recess to a flat forward facing wall. Pet. 37. In
`support of its assertion, Petitioner first notes that the Admitted Prior Art
`includes “[a] seat with an aft extending seat support.” Pet. 37 (citing Ex.
`1001, Fig. 1). Petitioner argues that the logic of using a recess to receive the
`seat back applies equally to using another recess to receive the aft extending
`seat support. Pet. 37–38 (citing Ex. 1004 ¶¶ 188, 189, 191). According to
`Petitioner, as the seat is moved further aft the seat support may come into
`contact with the lower section of the wall, impeding movement, and the
`addition of the second recess to accommodate the seat support will allow the
`seat to move further back. Reply 6 (quoting Ex. 1004 ¶ 74). Petitioner
`further points out that adding a second recess is nothing more than the
`application of known technology (i.e., Betts) for its intended purpose, with a
`predictable result (i.e., to position the seat as far back as possible). Pet. 37.
`Petitioner relies on Mr. Anderson’s testimony that the second recess,
`
`18
`
`
`
`IPR2017-01275
`Patent 9,073,641 B2
`
`although not disclosed by either of the two references, would have been
`obvious to add to the combination. Id. at 38–39 (citing Ex. 1004 ¶¶ 186–
`192). Petitioner also relies on Mr. Anderson’s citation to three alleged
`examples of enclosures that include a lower recess to receive a seat support.
`Id. at 39 (citing Ex. 1004 ¶ 192); Reply 6–10 (citing Ex. 1004 ¶¶ 74–79; Ex.
`1018, 62; Ex. 1019 ¶¶ 8–11, 17–20). Petitioner contends that it does not
`matter that the three enclosures were not available as prior art in these
`proceedings, or prior art at all, as long as they are evidence of what was
`known in the art. Reply 9–10. According to Petitioner, these designs
`support Petitioner’s position that “it was a common sense solution to include
`a recess in a wall to enable a seat support to be positioned further aft.”
`Reply 10 (citing Ex. 1004 ¶ 75).
`Patent Owner argues that Petitioner’s contention that the second
`recess would have been obvious “is supported by nothing more than Mr.
`Anderson’s opinion.” PO Resp. 9. Patent Owner asserts that the claimed
`second recess is “‘more than a peripheral issue’ and ‘therefore require[s] a
`core factual finding.’” Id. at 10 (quoting K/S HIMPP v. Hear-Wear Techs.,
`LLC, 751 F.3d 1362, 1365 (Fed. Cir. 2014)). Relying on the Dershowitz
`Declaration, Patent Owner argues that such recesses were not common
`knowledge and that one could not move seats further aft as Mr. Anderson
`suggests, if using the prior art flat wall. Id. at 11–12 (citing Ex. 2104
`¶¶ 164–165). Patent Owner also argues that adding a second recess is not
`supported by the intended purpose of Betts, which is limited to providing a
`first recess for seat recline, and adding a second recess would not be
`predictable due to unpredictable impacts on the lavatory. Id. at 12–13 (citing
`hearing and deposition testimony; Ex. 2104 ¶¶ 154, 165; Ex. 2046 ¶ 36; Ex.
`
`19
`
`
`
`IPR2017-01275
`Patent 9,073,641 B2
`
`2097 ¶¶ 86, 88). Patent Owner also contends that the three recess examples
`used by Petitioner were not publicly available because the drawings in
`question were confidential and not for public use, and cannot be used to
`show what was known in the art. Id. at 13–14. 9
`We agree with Patent Owner that use of common sense to supply a
`missing limitation must be carefully circumscribed and requires supporting
`evidence in the situation presented here, but disagree that Petitioner has
`failed to support its obviousness argument with proper reasoning and
`evidence. Patent Owner correctly notes that in K/S HIMPP, the court held
`that when a limitation “presents more than a peripheral issue,” determination
`of patentability requires a “core factual finding” that in turn requires
`“point[ing] to some concrete evidence in the record in support of these
`findings.” K/S HIMPP, 751 F.3d at 1365 (quoting In re Zurko, 258 F.3d
`1379, 1386 (Fed. Cir. 2001)). Similarly, in Arendi S.A.R.L. v. Apple Inc., 832
`F.3d 1355, 1361–62 (Fed. Cir. 2016), the Federal Circuit held that common
`sense, common wisdom, and common knowledge may be properly
`considered in an obviousness analysis, but “cannot be used as a wholesale
`substitute for reasoned analysis and evidentiary support, especially when
`dealing with a limitation missing from the prior art references specified.”
`Arendi distinguished the situation involving a “central” limitation, at issue in
`Arendi, from the situation in Perfect Web, where common sense was used to
`supply a missing limitation. See Perfect Web Techs., Ins. v. InfoUSA, Inc.,
`587 F.3d 1324 (Fed. Cir. 2009). In Perfect Web, the court affirmed a
`summary judgment decision finding claims invalid as obvious, where the
`
`9 Patent Owner moves to exclude the three references and related testimony,
`which we deny for the reasons outlined below
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