`Tel: 571-272-7822
`
`Paper 41
`Entered: September 28, 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 IPR2017-01276
`Patent 9,440,742 B2
`
`
`
`
`
`
`
`
`
`
`
`
`Before JENNIFER S. BISK, SCOTT A. DANIELS, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`
`MARSCHALL, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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`
`
`
`
`
`
`
`
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`IPR2017-01276
`Patent 9,440,742 B2
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`I. INTRODUCTION
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`C&D Zodiac, Inc. (“Petitioner”), filed a petition to institute an inter
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`partes review of claims 8 and 10–16 of U.S. Patent No. 9,440,742 B2
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`(Ex. 1001, “the ’742 patent”). Paper 2 (“Pet.”). 35 U.S.C. § 311. B/E
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`Aerospace, Inc. (“Patent Owner”), filed a Preliminary Response. Papers 6, 7
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`(“Prelim. Resp.”).1 Upon consideration of the Petition and Preliminary
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`Response, we instituted an inter partes review pursuant to 35 U.S.C. § 314,
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`as to claims 8 and 10–16. Paper 12 (“Inst. Dec.”).
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`Subsequent to institution, Patent Owner filed a Patent Owner
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`Response (Paper 21, 22, “PO Resp.”)2 and Petitioner filed a Reply to Patent
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`Owner’s Response (Paper 28, “Reply”). Patent Owner filed a Motion to
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`Exclude (Paper 34, “Mot. Exclude”), Petitioner filed an Opposition to Patent
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`Owner’s Motion (Paper 37, “Opp.”), and Patent Owner filed a Reply (Paper
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`38, “PO Reply to Mot. Exclude”). Patent Owner also filed two unopposed
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`Motions to Seal. Papers 8, 20.
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`On June 28, 2018, in response to the Board’s Orders instituting on
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`Ground 2 based on the Supreme Court’s decision in SAS Institute Inc. v.
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`Iancu, 138 S. Ct. 1348 (2018), Petitioner filed a Request for Partial Adverse
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`Judgment against itself with respect to Ground 2, pursuant to 37 C.F.R.
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`§ 42.73(b). See Paper 30 (modifying institution decision to institute on all
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`challenged grounds presented in Petition); Paper 33 (Petitioner’s Request for
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`
`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 21,
`to which access is restricted to the parties and the Board; and Paper 22, a
`publicly available, redacted version of Paper 21.
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`2
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`IPR2017-01276
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`Partial Adverse Judgment as to Ground 2). We granted Petitioner’s Request
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`for Partial Adverse Judgment on July 5, 2018. Paper 36 (granting adverse
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`judgment as to Ground 2).
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`On August 3, 2018, we held an oral hearing. Paper 40 (“Tr.”).3
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`This Final Written Decision is entered pursuant to 35 U.S.C. § 318(a).
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`For the reasons that follow, we determine that Petitioner has demonstrated
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`by a preponderance of the evidence that claims 8 and 10–16 of the ’742
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`patent are unpatentable.
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`A. Related Matters
`
`Patent Owner asserted the ’742 patent along with related patents, U.S.
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`Patent Nos. 9,073,641, 9,365,292, 9,434,476, and D764,031, against
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`Petitioner in B/E Aerospace, Inc. v. Zodiac Aerospace, Inc., No. 2:14-cv-
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`01417 (E.D. Tex.) (the “district court litigation”), that is currently stayed.
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`Pet. 2; Paper 5, 2. All five of these patents claim priority to a U.S.
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`application that issued as U.S. Patent No. 8,590,838 (“the ’838 patent”),
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`which patent was the subject of Case IPR2014-00727 between Petitioner and
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`Patent Owner. In the final written decision in that case, the Board held that
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`claims 1, 3–7, 9, 10, 12–14, 16–19, 21, 22, 24–29, 31, and 33–37 had been
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`proven unpatentable, and claims 8, 20, 30, and 38 had not been proven
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`unpatentable. IPR2014-00727, Paper 65. Both sides appealed, and the
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`Court of Appeals affirmed. See B/E Aerospace, Inc. v. C&D Zodiac, Inc.,
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`709 F. App’x 687, 2017 WL 4387223 (Fed. Cir. Oct. 3, 2017).
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`
`3 The oral hearing included related proceedings, IPR2017-01275 and
`PGR2017-00019. Paper 40.
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`3
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`IPR2017-01276
`Patent 9,440,742 B2
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`Each of the additional four related patents identified above is the
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`subject of a petition for an inter partes or post-grant review filed by
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`Petitioner. See Cases IPR2017-01273 (involving Patent 9,434,476);
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`IPR2017-01274 (involving Patent 9,365,292); IPR2017-01275 (involving
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`Patent 9,073,641); PGR2017-00019 (involving Patent D764,031).
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`B. The ’742 Patent
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`The ’742 patent relates to space-saving aircraft enclosures, including
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`lavatories, closets, and galleys. Ex. 1001, 1:20–6, 2:26–31. Figure 2 of the
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`’742 patent is reproduced below.
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`Figure 2, reproduced above, illustrates enclosure 10, such as a
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`lavatory, positioned aft of aircraft cabin 12. Ex. 1001, 4:22–27. The
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`lavatory has walls that define interior lavatory space 30. Id. at 4:33–36.
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`Forward wall 28 of the lavatory is described as “substantially not flat in a
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`4
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`vertical plane” and “disposed immediately aft of and adjacent to or abutting
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`the exterior aft surface of” passenger seat 16. Id. at 4:36–43. In particular,
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`the forward wall is shaped to provide recess 34, which accommodates the
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`partially-reclined backrest of the passenger seat, as shown in Figure 2. Id. at
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`4:39–43. In addition, the forward wall is shaped to also provide second,
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`lower recess 100, which accommodates “at least a portion of an aft-
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`extending seat support 17.” Id. at 4:46–51. The ’742 patent contrasts the
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`embodiment of Figure 2 with a prior art configuration shown in Figure 1,
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`which is reproduced below.
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`
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`Figure 1, reproduced above, illustrates “a prior art installation of an
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`aircraft lavatory immediately aft of and adjacent to an aircraft passenger
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`seat.” Ex. 1001, 4:11–13. In the depiction of the prior art in Figure 1, a
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`forward wall of the lavatory (double-lined structure immediately aft of seat)
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`is flat and in a vertical plane.
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`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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`5
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`Patent 9,440,742 B2
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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.
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`Id. at 4:51–57. Notably, the passenger seat in the Figure 1 depiction of the
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`prior art is identical to the passenger seat in the Figure 2 illustration of the
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`invention.
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`Petitioner challenges claims 8 and 10–16. Claim 8 is independent,
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`and claims 10–16 ultimately depend from claim 8. Claim 8 is reproduced
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`below.
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`8. A method for reducing a volume of unusable space in a
`cabin area of a passenger aircraft, comprising:
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`replacing at least a previously-installed forward partition of
`a pre-existing aircraft lavatory in the cabin area of the
`passenger aircraft with a contoured forward partition,
`wherein
`
`an outward facing vertical surface of the previously-
`installed forward partition is substantially flat, and
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`the contoured forward partition comprises
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`at least one first recess configured to receive at least a
`portion of an upwardly and aftwardly inclined seat
`back of a passenger seat therein, and
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`at least one second recess configured to receive at
`least a portion of an aft-extending seat support of
`the passenger seat therein; and
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`installing the passenger seat in front of the contoured
`forward partition;
`
`wherein, upon installation,
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`the at least one first recess receives at least a portion of
`the upwardly and aftwardly inclined seat back, and
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`the second recess receives at least a portion of the aft-
`extending seat support,
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`6
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`IPR2017-01276
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`thereby reducing the volume of unusable space in the
`cabin area by reducing or eliminating gaps that
`existed between the previously-installed forward wall
`and the passenger seat.
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`Ex. 1001, 6:4–29.
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`C. Instituted Grounds of Unpatentability
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`We instituted trial based on all asserted grounds of unpatentability.
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`Inst. Dec. 27; Paper 30. After granting Petitioner’s Request for Partial
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`Adverse Judgment (Paper 36), the following ground remains for our
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`consideration: whether the Admitted Prior Art4 and Betts5 render claims 8
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`and 10–16 obvious under 35 U.S.C. § 103(a).6
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`II. ANALYSIS
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`A. Principles of Law
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`To prevail in its challenge to Patent Owner’s claims, Petitioner must
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`demonstrate by a preponderance of the evidence that the claims are
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`unpatentable. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d).
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`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
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`between the claimed subject matter and the prior art are such that the subject
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`matter, as a whole, would have been obvious at the time of the invention to a
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`person having ordinary skill in the art. KSR Int’l Co. v. Teleflex, Inc., 550
`
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`4 Petitioner defines “Admitted Prior Art” as certain portions of the ’742
`patent, including Figure 1. Pet. 11–12 (citing Ex. 1001, 1:27–29, Fig. 1; Ex.
`1004 ¶ 86).
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`5 U.S. Patent No. 3,738,497, issued June 12, 1973 (Ex. 1005) (“Betts”).
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`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 ’742
`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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`7
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`Patent 9,440,742 B2
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`U.S. 398, 406 (2007). The question of obviousness is resolved on the basis
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`of underlying factual determinations including: (1) the scope and content of
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`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
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`of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
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`B. Level of Ordinary Skill
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`In determining the level of ordinary skill in the art, various factors
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`may be considered, including the “type of problems encountered in the art;
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`prior art solutions to those problems; rapidity with which innovations are
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`made; sophistication of the technology; and educational level of active
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`workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
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`(citation omitted).
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`Petitioner relies on the testimony of Alan Anderson, who testifies that
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`a person with ordinary skill in the art “would have had a bachelor’s degree
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`in mechanical engineering, industrial design, or a similar discipline, or the
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`equivalent experience, with at least two years of experience in the field of
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`aircraft interior design.” Pet. 29 (citing Ex. 1004 ¶¶ 27–29). Patent Owner
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`does not address Petitioner’s proposal, or offer a competing proposal for a
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`person of ordinary skill in the art. Based on our review of the record, we
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`adopt Petitioner’s definition of the level of ordinary skill in the art.
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`C. Claim Construction
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`In an inter partes review, we construe claim terms in an unexpired
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`patent according to their broadest reasonable construction in light of the
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`8
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`specification of the patent in which they appear.7 37 C.F.R. § 42.100(b).
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`Consistent with the broadest reasonable construction, claim terms are
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`presumed to have their ordinary and customary meaning as understood by a
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`person of ordinary skill in the art in the context of the entire patent
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`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
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`2007). Only terms that are in controversy need to be construed, and then
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`only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v.
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`Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
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`In the Institution Decision, we declined to construe two terms that
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`Petitioner contended needed construction. Inst. Dec. 10–12. After
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`institution, neither party has asked us to provide a construction of those
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`terms or any other terms. Accordingly, we need not expressly construe any
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`terms in this proceeding.
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`D. Obviousness in View of Admitted Prior Art and Betts
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`Petitioner asserts that the subject matter of claims 8 and 10–16 would
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`have been obvious over the Admitted Prior Art and Betts. Pet. 32–47. For
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`the reasons explained below, we determine Petitioner has established by a
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`preponderance of the evidence that claims 8 and 10–16 are unpatentable
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`over the Admitted Prior Art and Betts.
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`1.
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`The Admitted Prior Art
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`Petitioner asserts as Admitted Prior Art the illustration and related
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`disclosure of Figure 1 in the ’742 patent, which is discussed above. See Pet.
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`11–14 (citing Ex. 1001, 1:27–29, Fig. 1; Ex. 1004 ¶ 86). In the Institution
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`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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`9
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`Decision, we found that the asserted Admitted Prior Art constitutes prior art.
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`Inst. Dec. (citing Ex. 1001, 4:11–14 (“FIG. 1 is a schematic diagram of a
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`prior art installation of a lavatory immediately aft of and adjacent to an
`
`aircraft passenger seat.”) (emphasis added)). Patent Owner does not contend
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`that the Admitted Prior Art is not prior art, or that it cannot be used in this
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`proceeding as a basis for finding limitations disclosed by the prior art.
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`Of particular relevance here is that the Admitted Prior Art includes a
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`flat forward-facing lavatory wall with the passenger seat shown in Figure 1
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`of the ’742 patent immediately in front of that wall, with an aft-extending
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`seat support.
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`2.
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`Betts
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`Betts notes a desire to “provide more room for passengers in an
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`aircraft or other vehicle.” Ex. 1005, 1:6–7. Figure 1 of Betts is reproduced
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`below.
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`
`
`10
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`Figure 1 discloses airplane passenger seat 10 having tiltable backrest
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`12. Ex. 1005, 2:8–9. Behind the seat is coat closet 14, which has luggage
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`space 16 along the floor and overhead coat compartment 18. Id. at 2:9–14.
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`“The lower portion 30 of the coat compartment 18 slants rearwardly to
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`provide a space for seatback 12 to be tilted rearwardly as desired by the
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`occupant. The top 32 of storage space 16 also slants rearwardly so as not to
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`interfere with seatback 12 when tilted.” Id. at 2:19–24.
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`3.
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`Obviousness of Claim 8
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`Petitioner relies on the Declarations of Alan Anderson (Ex. 1004,
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`“Anderson Declaration”), Scott Savian (Ex. 1018), and Vince Huard (Ex.
`
`1019) in support of its assertions that the combination of the Admitted Prior
`
`Art and Betts discloses or renders obvious all of the limitations of claim 8.
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`Pet. 21–26, 32–40; Reply 4–15. Patent Owner relies on the Declarations of
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`Dr. Adam Dershowitz (Ex. 2104, “Dershowitz Declaration”), R. Kaus
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`Brauer (Ex. 2046), and James Brunke (Ex. 2097) in its Response, and argues
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`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
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`adequate motivation to combine. PO Resp. 8–30. The parties also dispute
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`the relevance and impact of Patent Owner’s alleged objective evidence of
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`nonobviousness on the obviousness issues in this case. See Pet. 61–64; PO
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`Resp. 31–45; Reply 15–27.
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`i.
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`Motivation to Combine
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`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
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`11
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`consider Petitioner’s argument that we are collaterally estopped from
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`considering the merits of this issue, because the Board already found in the
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`related inter partes review of the ’838 patent that “it would have been
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`obvious to apply the recessed forward wall design of Betts to other
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`enclosures, including single-spaced lavatories.” Reply 3 (quoting Case
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`IPR2014-00727, 12 (Paper 65) (emphasis removed)). Petitioner relies on the
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`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.
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`1026 (B/E Aerospace, Inc. v. C&D Zodiac, Inc., 709 F. App’x 687 (Fed. Cir.
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`Oct. 3, 2017))). According to Petitioner, Patent Owner should be precluded
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`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
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`to collateral estoppel, does not assess the relevant factors when determining
`
`whether to apply collateral estoppel, and does not assess the differences in
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`the claims at issue in the ’838 patent and claim 8 here. See Reply 3–4;
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`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
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`against preclusion had a full and fair opportunity to litigate the issues.”). In
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`addition, Patent Owner has had no meaningful opportunity to address the
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`issue in its own briefing because the collateral estoppel issue was raised for
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`the first time in Petitioner’s Reply. Under these circumstances, where the
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`issue has not been fully developed by Petitioner or addressed by Patent
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`Owner, we decline to apply collateral estoppel. We do, however, view the
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`12
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`findings in the prior case as informative when they closely resemble the
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`issues we address here.
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`In support of the proposed modification of the Admitted Prior Art with
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`the contoured wall of Betts, Petitioner relies on the testimony in the
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`Anderson Declaration, explaining that a primary goal of airplane interior
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`design is efficient use of passenger cabin space so that more passengers can
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`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
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`same additional space. Id. at 23 (citing Ex. 1004 ¶ 58). Petitioner points to
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`the recess in the contoured wall Betts discloses as evidence of that approach,
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`which allows the passenger chairs to be pushed back further aft,
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`accommodating a portion of the seat back. Id. at 24–25 (citing Ex. 1004
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`¶ 59).
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`Patent Owner argues “that those of skill in the art had no reason to
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`make the combination proposed” by Petitioner. PO Resp. 24. Patent Owner
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`relies on the allegedly long co-existence of the Betts design within planes
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`that included the prior art flat lavatory walls, suggesting that there was no
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`motivation to make the modification. Id. at 24–26. Patent Owner also
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`argues that the proposed combination would require “total destruction” of
`
`Betts, if the coat closet in Betts were turned into a lavatory. Id. at 27–29.
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`Patent Owner also contends that Petitioner and Mr. Anderson fail to establish
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`a reasonable expectation of success in light of this total deconstruction of
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`Betts. Id. at 29–30.
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`Based on our review of the evidence and arguments, we find that one
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`of ordinary skill in the art would have been motivated to modify the
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`Admitted Prior Art lavatory by replacing the flat forward wall with the
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`contoured forward wall of Betts. Petitioner submits convincing argument,
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`based on the testimony of Mr. Anderson, that designers of airplane interiors
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`were concerned about adding space to the cabin and that the Betts contoured
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`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
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`“to provide more passenger room.” Ex. 1005, Abstract. We also agree with
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`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,
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`and merely extended up from the bottom portion of the wall. See Betts Fig.
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`1; Pet. 23–24. Betts therefore depicts how the contoured wall and recess
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`provide more passenger space when compared to a flat, vertical wall, and
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`Betts discusses the ability of its design to save space. As such, Betts
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`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
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`not outweigh the more convincing evidence and argument supporting
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`Petitioner’s position based on Betts and the Anderson Declaration. In
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`addition, Patent Owner’s argument that one would need to “totally
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`deconstruct” Betts in order to add a lavatory to Betts misapprehends
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`Petitioner’s proposed modification. Petitioner proposes to replace a lavatory
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`flat forward wall as shown in the Admitted Prior Art with the Betts
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`contoured wall, not add a lavatory behind the Betts contoured wall. See Pet.
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`14
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`22, 24; Reply 4–5. Although we do not apply collateral estoppel for the
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`reasons provided above, we note that our findings regarding the proposed
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`combination and modification are consistent with the Federal Circuit’s
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`decision in the related case. See B/E Aerospace, 709 F. App’x at 694
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`(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
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`forward wall of Betts.
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`ii.
`
`The “Replacing,” “Installing,” and “First Recess”
`Limitations
`
`Claim 8 contains several limitations that are indisputably8 disclosed
`
`by the proposed combination of Betts and the Admitted Prior Art. For
`
`example, claim 8 recites “replacing at least a previously-installed forward
`
`partition of a pre-existing aircraft lavatory in the cabin area of the passenger
`
`aircraft with a contoured forward partition, wherein an outward facing
`
`vertical surface of the previously-installed forward partition is substantially
`
`flat.” 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
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`forward wall to allow the seat to be placed further aft in an aircraft cabin.
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`Pet. 34 (citing Ex. 1004 ¶ 246). This replacing step logically follows from
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`the proposed combination discussed above, where the flat forward lavatory
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`wall of the Admitted Prior Art is replaced by the contoured wall of Betts.
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`8 Patent Owner does not argue that, once the proposed combination is made,
`the combination fails to disclose these limitations.
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`15
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`We find that a person of ordinary skill in the art would have known about
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`flat forward walls such as that the Admitted Prior Art discloses, and
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`contoured forward walls such as that Betts discloses, and in light of the
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`teachings in Betts that such a contoured wall provides more passenger room,
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`a person of ordinary skill in the art would have been motivated to use a
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`contoured wall to save space in the cabin. See, e.g., Ex. 1001, Fig. 1; Ex.
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`1005, Fig. 1; Ex. 1004 ¶ 246. Once the proposed modification is made, at
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`least the contoured forward partition portion of the “replacing” step is
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`performed.
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`Claim 8 recites that “the contoured forward partition comprises at
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`least one first recess configured to receive at least a portion of an upwardly
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`and aftwardly inclined seat back of a passenger seat therein.” Petitioner
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`contends that Betts discloses this portion of the replacing limitation. See
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`Pet. 34–35 (citing Ex. 1005, Fig. 1; Ex. 1004 ¶¶ 247–48). We agree. Figure
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`1 of Betts discloses slanted walls 30, 32 that form a recess configured to
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`receive at least a portion of inclined seat back 12. See Ex. 1005, Fig. 1,
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`2:19–24 (“The lower portion 30 of the coat compartment 18 slants
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`rearwardly to provide a space for seatback 12 to be tilted rearwardly as
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`desired by the occupant. The top 32 of storage space 16 also slants
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`rearwardly so as not to interfere with seatback 12 when tilted.”); see also
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`B/E Aerospace, 709 F. App’x at 693 (“Walls 30 and 32 [in Figure 1 of Betts]
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`slant rearwardly to allow the occupant to recline seatback 12 of passenger
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`seat 10.” (citing Ex. 1005, 2:7–24)).
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`Claim 8 recites “installing the passenger seat in front of the contoured
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`forward partition; wherein, upon installation, the at least one first recess
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`receives at least a portion of the upwardly and aftwardly inclined seat back.”
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`16
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`Petitioner argues that the Admitted Prior Art discloses a seat with an aft
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`extending seat support and that Betts discloses a passenger seat in front of a
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`contoured forward partition, with the seat positioned at least partially within
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`the contour. Pet. 38 (citing Ex. 1004 ¶¶ 118, 175, 188, 216, 247–248, 251–
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`252). We agree with Petitioner’s position. Betts discloses this limitation.
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`See Ex. 1005, Fig. 1, 2:19–24; see also B/E Aerospace, 709 F. App’x at 693.
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`iii.
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`“Second Recess”
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`Claim 8 recites two limitations related to a “second recess”: “the
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`contoured forward partition comprises . . . at least one second recess
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`configured to receive at least a portion of an aft-extending seat support of the
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`passenger seat therein” and “wherein, upon installation [of the passenger
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`seat], . . . the second recess receives at least a portion of the aft-extending
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`seat support.” Petitioner does not contend that the Admitted Prior Art or
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`Betts alone discloses the second recess. Instead, Petitioner argues that one
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`of ordinary skill in the art would have found it obvious and would have been
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`motivated to add a second recess to a flat forward facing wall. Pet. 35. In
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`support of its assertion, Petitioner first notes that the Admitted Prior Art
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`includes “[a] seat with an aft extending seat support.” Pet. 36 (citing Ex.
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`1001, Fig. 1). Petitioner argues that the logic of using a recess to receive the
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`seat back applies equally to using another recess to receive the aft extending
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`seat support. Pet. 36 (citing Ex. 1004 ¶¶ 189, 191, 250). According to
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`Petitioner, as the seat is moved further aft, the seat support may come into
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`contact with the lower section of the wall, impeding movement, and the
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`addition of the second recess to accommodate the seat support will allow the
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`seat to move further back. Reply 6 (quoting Ex. 1004 ¶ 74). Petitioner
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`further points out that adding a second recess is nothing more than the
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`17
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`application of known technology (i.e., Betts) for its intended purpose, with a
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`predictable result (i.e., to position the seat as far back as possible). Pet. 36.
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`Petitioner relies on Mr. Anderson’s testimony that the second recess,
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`although not disclosed by either of the two references, would have been
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`obvious to add to the combination. Id. at 37 (citing Ex. 1004 ¶¶ 186–192,
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`250). Petitioner also relies on Mr. Anderson’s citation to three alleged
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`examples of additional enclosures that include a lower recess to receive a
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`seat support. Id. at 37–38 (citing Ex. 1004 ¶¶ 192, 250); Reply 6–10 (citing
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`Ex. 1004 ¶¶ 74–79; Ex. 1018, 62; Ex. 1019 ¶¶ 8–11, 17–20). Petitioner
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`contends that it does not matter that the three enclosures were not available
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`as prior art in these proceedings, or prior art at all, as long as they are
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`evidence of what was known in the art. Reply 9–10. According to
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`Petitioner, these designs support Petitioner’s position that “it was a common
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`sense solution to include a recess in a wall to enable a seat support to be
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`positioned further aft.” Reply 10 (citing Ex. 1004 ¶ 75).
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`Patent Owner argues that Petitioner’s contention that the second
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`recess would have been obvious “is supported by nothing more than Mr.
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`Anderson’s opinion.” PO Resp. 15. Patent Owner asserts that “actual
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`evidence is required because the claimed second recess is ‘more than a
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`peripheral issue’ and ‘therefore requires a core factual finding.’” Id.
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`(quoting K/S HIMPP v. Hear-Wear Techs., LLC, 751 F.3d 1362, 1365 (Fed.
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`Cir. 2014)). Relying on the Dershowitz Declaration, Patent Owner argues
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`that such recesses were not common knowledge and that one could not move
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`seats further aft as Mr. Anderson suggests, if using the prior art flat wall. Id.
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`at 15–17 (citing Ex. 2104 ¶¶ 146–147). Patent Owner also argues that
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`adding a second recess is not supported by the intended purpose of Betts,
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`18
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`which is limited to providing a first recess for seat recline, and adding a
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`second recess would not be predictable due to unpredictable impacts on the
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`lavatory. Id. at 17–18 (citing hearing and deposition testimony; Ex. 2104
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`¶¶ 147, 154, 165; Ex. 2046 ¶ 36; Ex. 2097 ¶¶ 86, 88). Patent Owner also
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`contends that the three recess examples used by Petitioner were not publicly
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`available because the drawings in question were confidential and not for
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`public use, and cannot be used to show what was known in the art. Id. at
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`18–19.9
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`We agree with Patent Owner that use of common sense to supply a
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`missing limitation must be carefully circumscribed and requires supporting
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`evidence in the situation presented here, but disagree that Petitioner has
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`failed to support its obviousness argument with proper reasoning and
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`evidence. Patent Owner correctly notes that in K/S HIMPP, the court held
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`that when a limitation “presents more than a peripheral issue,” determination
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`of patentability requires a “core factual finding” that in turn requires
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`“point[ing] to some concrete evidence in the record in support of these
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`findings.” K/S HIMPP, 751 F.3d at 1365 (quoting In re Zurko, 258 F.3d
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`1379, 1386 (Fed. Cir. 2001)). Similarly, in Arendi S.A.R.L. v. Apple Inc., 832
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`F.3d 1355, 1361–62 (Fed. Cir. 2016), the Federal Circuit held that common
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`sense, common wisdom, and common knowledge may be properly
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`considered in an obviousness analysis, but “cannot be used as a wholesale
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`substitute for reasoned analysis and evidentiary support, especially when
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`dealing with a limitation missing from the prior art references specified.”
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`Arendi distinguished the situation involving a “central” limitation, at issue in
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`9 Patent Owner moves to exclude the three references and related testimony,
`which we deny for the reasons discussed below. See infra II.D.
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`19
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`Arendi, from the situation in Perfect Web, where common sense was used to
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`supply a missing limitation. See Perfect Web Techs., Ins. v. InfoUSA, Inc.,
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`587 F.3d 1324 (Fed. Cir. 2009). In Perfect Web, the court affirmed a
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`summary judgment decision finding claims invalid as obvious, where the
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`lower court determined that a missing limitation would have been obvious
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`based on common sense, even without reliance on record evidence such as
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`expert testimony. See id. at 1329 (“[U]se of common sense does not require
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`a ‘specific hint or suggestion in a particular reference,’ only a reasoned
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`explanation that avoids conclusory generalizations.”), id. at 1330 (“No
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`expert opinion is required to appreciate the potential value to persons of such
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`skill in this art of [the missing limitation].”).
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`We need not reach the issue of whether the “second recess” is so
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`peripheral that Petitioner need not have pointed to evidence or expert
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`opinions to support it