Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 37
`Entered: November 20, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`BMW OF NORTH AMERICA, LLC AND BAYERISCHE MOTOREN
`WERKE AKTIENGESELLSCHAFT,
`Petitioner,
`
`v.
`
`THEODORE & ASSOCIATES, LLC,
`Patent Owner.
`
`Case IPR2017-01379
`Patent 9,045,163 B2
`
`
`
`
`
`
`
`
`
`Before MITCHELL G. WEATHERLY, FRANCES L. IPPOLITO, and
`SEAN P. O’HANLON, Administrative Patent Judges.
`
`WEATHERLY, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a), 37 C.F.R. § 42.73
`
`I.
`
`INTRODUCTION
`
`A. BACKGROUND
`
`BMW of North America, LLC and Bayerische Motoren Werke
`
`Aktiengesellschaft (collectively “Petitioner”) filed a petition (Paper 2,
`
`“Pet.”) to institute an inter partes review of claims 1–4, 6–14, 16–37, and
`
`43–49 of U.S. Patent No. 9,045,163 B2 (Ex. 1001, “the ’163 patent”).
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`Patent 9,045,163 B2
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`35 U.S.C. § 311. Petitioner supported the Petition with a Declaration from
`
`Donald D. Parker (Ex. 1003). Theodore & Associates, LLC (“Patent
`
`Owner”) timely filed a Preliminary Response. Paper 6 (“Prelim. Resp.”).
`
`On November 21, 2017, based on the record before us at the time, we
`
`instituted an inter partes review of claims 2–4, 6, 8–10, 19, 23, 24, 27–37,
`
`43–46, 48, and 49.1 Paper 9, 28 (“Institution Decision” or “Dec.”). We
`
`instituted the review on the following challenges to the claims:
`
`References
`
`Basis
`
`Claims
`
`U.S. Patent No. 5,833,269 (Ex. 1012, “Gastesi”)
`
`§ 103 6 and 9
`
`Gastesi and German Patent Publication No. DE
`42 43 455 A1 (Ex. 1013, “Berghauer”)
`
`Gastesi, EV1, 97–98, Body/Collision Service
`Manual (Ex. 1014, “Service Manual”), and
`Popular Mechanics, October 1986, pp. 82–84
`(Ex. 1015, “Popular Mechanics” and (collectively
`with Service Manual, “EV1”))
`
`§ 103 8, 10, 19, 23,
`24, 26, 32–34,
`36, 37, 43–46,
`48, and 49
`
`§ 103 2–4
`
`Gastesi, Berghauer, and EV1
`
`§ 103 27–31 and 35
`
`After we instituted this review, Patent Owner filed a Patent Owner
`
`Response in opposition to the Petition (Paper 13, “PO Resp.”) that was
`
`supported by a Declaration from Scott Kunselman (Ex. 2025). Petitioner
`
`
`1 Patent Owner filed a disclaimer of claims 1, 7, 11–14, 16–18, 20–22, 25,
`26 and 47 of the ’163 patent under 35 U.S.C. § 253(a) that was effective as
`of August 22, 2017. Dec. 2–4; Ex. 2002. Accordingly, we did not institute
`review of these claims, which were no longer part of the ’163 patent on the
`date of our Institution Decision, and we do not address the patentability of
`these claims in this Decision.
`
`2
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`filed a Reply in support of the Petition (Paper 20, “Reply”). Patent Owner
`
`did not move to amend any claim of the ’163 patent.
`
`Both parties have filed motions to exclude evidence in this proceeding
`
`and both motions have been fully briefed with oppositions and replies,
`
`respectively. See Papers 27, 30, 33 (briefing relating to Petitioner’s Motion
`
`to Exclude); Papers 29, 31, 32 (briefing relating to Patent Owner’s Motion to
`
`Exclude).
`
`We heard oral argument on August 15, 2018. A transcript of the
`
`argument has been entered in the record (Paper 36, “Tr.”).
`
`We have jurisdiction under 35 U.S.C. § 6(c). The evidentiary
`
`standard is a preponderance of the evidence. See 35 U.S.C. § 316(e);
`
`37 C.F.R. § 42.1(d). This Final Written Decision is issued pursuant to
`
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`
`For the reasons expressed below, we conclude that Petitioner has
`
`demonstrated by a preponderance of evidence that claims 2–4, 6, 8–10, 19,
`
`23, 24, 27–37, 43–46, 48, and 49 are unpatentable.
`
`B. RELATED PROCEEDINGS
`
`The parties have identified as a related proceeding the co-pending
`
`district court proceeding of Theodore & Associates, LLC v. BMW of North
`
`America, LLC and Bayerische Motoren Werke AG, Case No. 2:16-cv-14253-
`
`VAR-DRG (E.D. Mich.). Pet. 85; Paper 4, 2. Petitioner also filed a second
`
`petition challenging the same claims of the ’163 patent in IPR2017-01380.
`
`Pet. 85.
`
`C. THE ’163 PATENT
`
`The ’163 patent is directed to “a universal chassis apparatus for an
`
`automotive vehicle” that “includes a battery and/or fuel storage compartment
`
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`in a rigid backbone structure.” Ex. 1001, 1:42–45. A fuel tank can
`
`optionally be attached to the rear structure. Id. at 6:29–31. The backbone
`
`structure connects a front structure with a front suspension to a rear structure
`
`with a rear suspension. Id. at 6:46–51. The front and rear suspensions are:
`
`rigidly affixed to the front and rear structures (or backbone
`mounting structures) such that the suspension loads (in the
`preferred embodiment) stress the engine block and transaxle
`case, to create a complete, self-supporting chassis without the
`need for a separate frame, or the need to attach the front and rear
`suspension subassemblies to a rigid uni-body.
`
`Id. at 1:50–55. The universal chassis is purportedly lighter than a traditional
`
`automotive frame and “particularly well suited for Battery Electric Vehicles
`
`(BEVs) and Plug-in Hybrids (PHEVs), since the battery pack can be
`
`mounted inside the backbone—eliminating the need for a separate battery
`
`box—thus reducing cost and weight.” Id. at 2:21–47.
`
`Claims 27, 32, 43, and 44 are the independent claims among the
`
`challenged claims. Claim 27 is illustrative and recites:
`
`27. An automotive vehicle chassis apparatus comprising:
`
`a single central chassis structure spanning between a front set of
`wheels and a rear set of wheels, the central chassis structure
`further comprising a hollow longitudinally elongated segment
`and a hollow
`laterally crossing segment defining a
`substantially T-shape when viewed from above; and
`
`a set of batteries being removeably located within the segments
`of the central chassis structure.
`
`Id. at 15:16–24. This claimed arrangement is illustrated, for example, in
`
`Figure 36, which we reproduce below.
`
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`Figure 36 is a diagrammatic top view of a universal chassis with
`a T-shaped backbone 451.
`
`
`
`Id. at 11:63–65.
`
`II. ANALYSIS
`
`A. THE PARTIES’ POST-INSTITUTION ARGUMENTS
`
`In our Institution Decision, we concluded that the argument and
`
`evidence adduced by Petitioner demonstrated a reasonable likelihood that
`
`claims 2–4, 6, 8–10, 19, 23, 24, 27–37, 43–46, 48, and 49 were unpatentable
`
`as obvious based on the challenges identified in the table in Part I.A above.
`
`Dec. 28–29. We must now determine whether Petitioner has established by
`
`a preponderance of the evidence that the specified claims are unpatentable
`
`over the cited prior art. 35 U.S.C. § 316(e). We previously instructed Patent
`
`Owner that “any arguments for patentability not raised in the [Patent Owner
`
`Response] will be deemed waived.” Paper 10, 6; see also In re Nuvasive,
`
`Inc., 842 F.3d 1376, 1381 (Fed. Cir. 2016) (holding that patent owner’s
`
`failure to proffer argument at trial as instructed in scheduling order
`
`constitutes waiver). Additionally, the Board’s Trial Practice Guide states
`
`that the Patent Owner Response “should identify all the involved claims that
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`are believed to be patentable and state the basis for that belief.” Office
`
`Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012).
`
`B. CLAIM INTERPRETATION
`
`“A claim in an unexpired patent shall be given its broadest reasonable
`
`construction in light of the specification of the patent in which it appears.”
`
`37 C.F.R. § 42.100(b) (2016); see also Cuozzo Speed Techs., LLC v. Lee,
`
`136 S. Ct. 2131, 2142 (2016) (affirming that USPTO has statutory authority
`
`to construe claims according to Rule 42.100(b)). When applying that
`
`standard, we interpret the claim language as it would be understood by one
`
`of ordinary skill in the art in light of the specification, and absent any special
`
`definition, we give claim terms their ordinary and customary meaning. See
`
`In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010); In re
`
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (“The ordinary
`
`and customary meaning is the meaning that the term would have to a person
`
`of ordinary skill in the art in question.” (internal quotation marks omitted)).
`
`Only terms which are in controversy need to be construed, and then only to
`
`the extent necessary to resolve the controversy. See Vivid Techs., Inc. v. Am.
`
`Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`
`1. Chassis
`
`Patent Owner contends that “chassis” means “a self-supporting
`
`structure that includes front and rear suspensions, axles, hubs, a steering
`
`mechanism, an engine, and transmission and final drive differential axles.”
`
`PO Resp. 12. Patent Owner quotes at length, a passage from the ’163 patent
`
`without explaining how that passage supports its position. Id. at 12–13. The
`
`quoted passage states:
`
`a universal chassis apparatus for an automotive vehicle includes
`a battery and/or fuel storage compartment in a rigid backbone
`
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`structure. In another aspect of the universal chassis apparatus,
`the unique features of this invention include the combination of
`a rigid backbone structure connecting front and rear structures
`(in the preferred embodiment, the front engine and rear
`transaxle), in combination with the front and rear suspensions
`rigidly affixed to the front and rear structures (or backbone
`mounting surfaces) such that suspension loads (in the preferred
`embodiment) stress the engine block and transaxle case, to create
`a complete, self-supporting chassis without the need for a
`separate frame, or the need to attach the front and rear suspension
`subassemblies to a rigid uni-body.
`
`Ex. 1001, 1:43–55.
`
`Patent Owner also contends that the ’163 patent distinguishes a
`
`chassis from a “frame” but that a “frame” may be a component of a
`
`“chassis.” PO Resp. 13 (citing Ex. 2025 ¶ 26). The testimony from
`
`Mr. Kunselman upon which Patent Owner relies cites no objective evidence
`
`to support Mr. Kunselman’s opinion. See Ex. 2025 ¶ 26 (citing no objective
`
`evidence). Nevertheless, we do not discern Patent Owner to be proposing a
`
`complete definition of “chassis” but merely pointing out structures that may
`
`or may not be part of the chassis of a particular vehicle.
`
`Petitioner responds that the passage quoted at length above fails to
`
`lexicographically define “chassis” but merely describes “another aspect of
`
`the universal chassis apparatus.” Reply 3–4. We agree. To act as its own
`
`lexicographer, a patentee must “clearly set forth a definition of the disputed
`
`claim term” other than its plain and ordinary meaning. CCS Fitness, Inc. v.
`
`Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). It is not enough for
`
`a patentee to simply disclose a single embodiment or use a word in the same
`
`manner in all embodiments, the patentee must “clearly express an intent” to
`
`redefine the term. Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d
`
`1379, 1381 (Fed. Cir. 2008); see also Kara Tech. Inc. v. Stamps.com, 582
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`F.3d 1341, 1347–48 (Fed. Cir. 2009). At most, we understand the passage
`
`quoted by Patent Owner to be describing aspects of the “universal chassis
`
`apparatus” rather than providing a lexicographical definition of “chassis.”
`
`Petitioner also contends that an ordinarily skilled artisan would
`
`understand that “chassis” generally refers to the supporting structure or
`
`frame upon which the vehicle’s body, drive train, and suspension
`
`components are mounted. Reply 4 (citing Ex. 1003 ¶ 31). Petitioner notes
`
`that such an understanding is consistent with the definitions of “chassis”
`
`provided in two automotive industry dictionaries, one of which is provided
`
`by Patent Owner. Id. at 4–5 (citing Ex. 2024;2 Ex. 1063, 45:4–46:2, 46:20–
`
`47:14, 52:15–24; Ex. 1061, ¶ 25); see also Ex. 1052, 3 (defining “chassis” as
`
`the “[s]tructural lower part of a vehicle to which the running gear3 and body
`
`is attached.”). Mr. Kunselman testifies that “a variety of possible definitions
`
`for a chassis” exist. Ex. 1063, 74:12–14. Petitioner also points out that
`
`Patent Owner’s proffered definition for “chassis” conflicts with the Abstract
`
`of the ’163 patent, which indicates that “other components” including the
`
`
`2 Exhibit 2024 is an excerpt of a 1993 publication entitled “Auto Dictionary”
`in which “chassis” is defined as follows: “Lower structure of a vehicle to
`which the running gear and body are attached. On older cars, the chassis
`was a separate part of the vehicle with its own frame but, today, it is usually
`an integral part of the body structure.” Ex. 2024, 3.
`
`3 Exhibit 1052 is an excerpt of the Dictionary of Automotive Engineering,
`Second Edition, published in 1995 by the Society of Automotive Engineers.
`Ex. 1052, 1–23. The SAE Dictionary defines “running gear” as follows:
`“(1) The driving, steering and suspension mechanism of a vehicle. This
`term often implies the unsuspended undercarriage components such as
`wheels and axles, final drives and steering linkages. (2) The undercarriage
`of a vehicle.” Id. at 5.
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`suspension are attached to—and therefore separate from—a “vehicle
`
`chassis.” Reply 5 (citing Ex. 1001, Abstract, Ex. 1061 ¶ 26).
`
`Based on our review of the entire record, we conclude that “chassis”
`
`is neither precisely defined in the Specification nor understood by an
`
`ordinarily skilled artisan to have a precise universally agreed upon
`
`definition. Rather, “chassis” refers generally to the supporting structure or
`
`frame upon which the vehicle’s body, drive train, and suspension
`
`components are mounted.
`
`2. Service Plate
`
`Patent Owner proffers no comprehensive definition for “service plate”
`
`but argues that the claimed “service plate” must “be on the backbone.” PO
`
`Resp. 13 (citing Ex. 1001, 7:46–47, Dec. 9). Patent Owner argues that
`
`Gastesi does not render claims 6, 24, and 33 obvious because Gastesi fails to
`
`describe or suggest the claimed “service plate.” Id. at 32–34.
`
`Claim 6 recites “the backbone structure further comprising a
`
`removable service plate, the backbone structure and plate together defining a
`
`substantially polygonal cross-sectional shape.” Ex. 1001 13:56–57. Plainly,
`
`the “service plate” is a removable component of the backbone structure.
`
`Based upon the arguments presented by the parties on whether Gastesi
`
`suggests the claimed service plate, we discern no reason to comment upon
`
`whether the “service plate” must “be on the backbone.”
`
`C. LEGAL STANDARDS OF OBVIOUSNESS
`
`Petitioner challenges the patentability of the challenged claims on the
`
`grounds that the claims are obvious in light of one or more of the following
`
`references: Gastesi, Berghauer, and EV1. The Supreme Court in KSR
`
`International Co. v. Teleflex Inc., 550 U.S. 398 (2007), reaffirmed the
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`framework for determining obviousness as set forth in Graham v. John
`
`Deere Co., 383 U.S. 1 (1966). The KSR Court summarized the four factual
`
`inquiries set forth in Graham that we apply in determining whether a claim
`
`is reasonably likely to be unpatentable as obvious under 35 U.S.C. § 103(a)
`
`as follows: (1) determining the scope and content of the prior art,
`
`(2) ascertaining the differences between the prior art and the claims at issue,
`
`(3) resolving the level of ordinary skill in the pertinent art, and
`
`(4) considering objective evidence indicating obviousness or
`
`nonobviousness. KSR, 550 U.S. at 406. With these standards in mind, we
`
`address each challenge below.
`
`D. OVERVIEW OF THE PRIOR ART
`
`1. Gastesi
`
`Gastesi is directed to “a modular chassis useful for motor vehicles
`
`having a forward mounted engine, rear mounted transmission and rear wheel
`
`drive.” Ex. 1012, 1:6–8. Gastesi’s Figure 1, reproduced below, is a
`
`perspective view of modular chassis 10, which includes front structural
`
`member A and rear structural member C that are “rigidly and detachably
`
`connected” to opposing ends of tubular member B.
`
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`
`
`Gastesi’s Figure 1 is a schematic perspective view of modular
`chassis 10.
`
`Element A1 of member A may include an engine (not shown) and member C
`
`may include a transmission (not shown). Id. at 3:24–27. Element A2
`
`provides suspension attachment points. Id. at 3:21–22.
`
`Gastesi describes another embodiment of its base unit as modular
`
`chassis 11 with centrally located tubular structural member 3, which is
`
`shown in Figure 2, reproduced below.
`
`11
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`Gastesi’s Figure 2 is a schematic perspective view of modular
`chassis 11.
`
`Engine 2 and transmission 4 are structural members in chassis 11 that are
`
`rigidly connected to opposite ends of tubular member 3. Id. at 3:43–60.
`
`
`
`Fuel tank 22 is located inside tubular member
`
`3. Id. at 4:24–25, Figures 3, 4. Bottom plate
`
`36 at the bottom of body 32 is removable to
`
`permit easy removal and replacement of
`
`body 32 from tubular member 3 and access to
`
`tubular member 3 and fuel tank 22 within
`
`tubular member 3. Petitioner’s colorized
`
`version of Gastesi’s Figure 4, reproduced at
`
`right, illustrates the location of bottom plate 36 (colored blue) and tubular
`
`member 3 (colored red).
`
`2. Berghauer
`
`Berghauer is directed to “a base unit for a motor vehicle.” Ex. 1013,
`
`1:3. As shown in Berghauer’s Figure 1, Berghauer’s base unit consists of
`
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`support pipe 1, at least two drive motors 2 and 3 and their auxiliary devices,
`
`a manual transmission 7, and at least one differential 8 and its associated
`
`torque transmission devices. Id. at 1:3–9, 6:28–34. Berghauer’s Figure 1 is
`
`reproduced below.
`
`
`
`Berghauer’s Figure 1 is a diagrammatic view of a base unit of a
`vehicle.
`
`Drive motors 2 and 3 are connected to one side of support pipe 1 via a
`
`connecting housing. Id. at 6:34–36. At the other end, support pipe 1 is
`
`shown connected to a second structure that includes a rear axle and
`
`differential housing 47. Id. at 9:16–17. Berghauer’s support pipe 1 may be
`
`configured to contain batteries 25 that serve as an energy source for electric
`
`drive motor 3a as shown in Figure 16, reproduced below. Id. at 9:28–32.
`
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`Berghauer’s Figure 16 is a diagrammatic view of a base unit
`equipped only with an electric motor.
`
`Berghauer also describes a base unit having hybrid drive with engine 2 and
`
`electric motor 3a as shown in Figure 15, reproduced below. Id. at 8:25–34.
`
`
`
`Berghauer’s Figure 15 is a diagrammatic view of a base unit
`equipped with a hybrid drive power source.
`
`Berghauer’s base unit of Figure 15 also includes fuel tank 21 and battery 25
`
`within support pipe 1. Id. at 8:25–34.
`
`
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`3. The EV1 Documents
`
`a) Popular Mechanics
`
`Popular Mechanics purports to be the October 1996 issue of the well-
`
`known monthly magazine of the same name that features “’97 New Cars.”
`
`Ex. 1015, 1. The General Motors EV1 is among the 1997 cars that were
`
`highlighted including a description of a “first drive” and a “closer look” of
`
`the EV1. Id. at 2. Popular Mechanics describes the EV1 as General Motors’
`
`first production electric vehicle. Id. Popular Mechanics also describes the
`
`EV1 as an electric vehicle in which 26 batteries were arranged in a T-shaped
`
`tray located in the floor of the vehicle between and behind the two seats. Id.
`
`The illustration from Popular Mechanics reproduced below depicts the
`
`arrangement of the 26 batteries in the EV1.
`
`The illustration is a perspective view of the drivetrain of the EV1.
`
`
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`b) Service Manual
`
`The Service Manual describes the EV1 as including a lead-acid
`
`battery pack located “down center tunnel of vehicle (between driver’s and
`
`passenger’s seats) in a T-shaped compartment.” Ex. 1014, 3. The battery
`
`pack comprises 26 twelve volt batteries connected in series for a total of 312
`
`volts that are “securely attached to battery tray, which is bolted to vehicle’s
`
`aluminum structure.” Id.
`
`E. THE LEVEL OF ORDINARY SKILL IN THE ART
`
`Petitioner contends that an ordinarily skilled artisan would have a
`
`degree in mechanical engineering or an equivalent field and at least two
`
`years of industry experience with a working knowledge of vehicle chassis
`
`structural properties and propulsion system and drivetrain packaging and
`
`attributes for electric and hybrid electric technologies. Pet. 23–24 (citing
`
`Ex. 1003 ¶ 20).
`
`Patent Owner disagrees regarding the level of industry experience
`
`possessed by an ordinarily skilled artisan, which Patent Owner asserts to be
`
`“at least ten years,” because a “vehicle chassis is one of the most important
`
`components of a vehicle.” PO Resp. 11–12 (citing Ex. 2025 ¶¶ 15–21).
`
`Patent Owner relies on Mr. Kunselman, who opines that because “chassis
`
`architecture is selected in the advanced stages of the design process,” the
`
`selection is performed by a “team” with “both a broad and appropriately
`
`deep understanding of vehicle systems and their effect on performance.”
`
`Ex. 2025 ¶¶ 18–19. He also opines that members of such a team typically
`
`“include engineers who are the most seasoned and skilled veterans who also
`
`have a broad set of experiences.” Id. ¶ 19. Mr. Kunselman thus concludes
`
`that an ordinarily skilled artisan “would have a minimum of 10 years of
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`experience, having also a breadth that would include specific experience in
`
`Chassis and Vehicle Development” and “additional experience in Body and
`
`Powertrain.” Id. ¶ 21. Patent Owner further contends that an ordinarily
`
`skilled artisan “would also have experience in Body and Powertrain”
`
`without explaining precisely what is meant by “Body and Powertrain.” PO
`
`Resp. 11–12 (citing Ex. 2025 ¶¶ 15–21).
`
`Petitioner responds that Patent Owner’s alleged level of skill is
`
`“extraordinary” rather than “ordinary.” Reply 5–6. Petitioner contends that
`
`Mr. Kunselman incorrectly focuses on the skill level of a team of designers
`
`rather than a “person having ordinary skill.” Id. at 6. Mr. Parker opines that
`
`[e]xpertise in the selection of a chassis architecture and having
`ordinary skill in the art of chassis design are two different things.
`A chassis selection team would consider external influences such
`as market trends, customer preferences, competitor offerings and
`perhaps even the financial strength and position of an OEM. One
`of ordinary skill in the art of chassis design need not have that
`breadth of experience as most of it is beyond the actual nuts and
`bolts of designing a chassis.
`
`Ex. 1061 ¶ 12. Mr. Parker thus deemphasizes the wide-ranging
`
`consequences on manufacturing processes and tooling that designing a
`
`modular chassis that is adaptable across an entire automotive product line.
`
`Instead, he reduces the inquiry about the appropriate level of skill to the skill
`
`required to design the “nuts and bolts” of a chassis after a “chassis selection
`
`team” settles on a design concept.
`
`Both parties rely wholly upon testimony from either Mr. Parker or
`
`Mr. Kunselman, neither of whom supports his opinion with objective
`
`evidence. Pet. 23–24 (citing Ex. 1003 ¶ 20); PO Resp. 11–12 (citing
`
`Ex. 2025 ¶¶ 15–21); Reply 5–7 (citing Ex. 1003 ¶ 20; Ex. 1061 ¶¶ 11–13).
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`The level of skill is determined “in the art to which the claimed invention
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`pertains,” 35 U.S.C. § 103, and neither party identifies that art explicitly.
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`The Specification describes the field of invention as follows: “This
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`invention is related to the field of automotive chassis design and more
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`specifically to the area of interchangeable chassis for use with many models
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`of vehicles.” Ex. 1001, 1:17–19. The Specification repeatedly refers to the
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`chassis as having “universal” characteristics. Id. at Title, passim. The
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`Specification also describes an advantage of its chassis as having “an ability
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`to adapt to different bodies and body styles,” id. at 2:17–21, and criticizes
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`prior art chassis designs that “are not readily adaptable to a wide variety of
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`vehicles without forcing major and expensive redesign work for each
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`vehicle,” id. at 1:29–33. Claims 43 and 44 expressly require that the
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`claimed chassis be “universally adapted” for more than one type of vehicular
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`configuration. Id. at 16:40–17:19. Based on these descriptions of the
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`chassis and the express requirements in at least some of the claims at issue,
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`we determine that the art to which the claimed invention pertains is the
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`design of interchangeable chassis for use with many models of vehicles.
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`We consider Mr. Kunselman’s testimony on the level of ordinary skill
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`to be tied more closely to this relevant art of designing a chassis for use with
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`many models of vehicles. Accordingly, we adopt Patent Owner’s definition
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`of the level of ordinary skill for purposes of this Decision and evaluate
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`obviousness from that perspective. We note that both Mr. Parker and
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`Mr. Kunselman possess such a skill level. Ex. 1003 ¶¶ 6–13;
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`Ex. 2025 ¶¶ 4–9.
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`F. CLAIMS 6 AND 9:
`OBVIOUSNESS IN VIEW OF GASTESI
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`Petitioner contends that Gastesi renders claims 6 and 9 unpatentable
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`as obvious. Pet. 35–46. Petitioner specifically identifies the portions of
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`Gastesi that describe each element of claims 6 and 9. Id. (citing Ex. 1012,
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`1:66–2:4, 2:10–14, 2:42–45, 2:54–57, 3:20–34, 3:46–48, 4:3–4, 4:18–21,
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`4:24–25, 4:38–46, Figures 1–4). Petitioner also relies upon testimony from
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`Mr. Parker to support its contentions. Id. (citing Ex. 1003 ¶¶ 99–108, 110–
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`12, 116, 117).
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`Patent Owner argues that Petitioner has failed to prove that Gastesi
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`renders either claim 6 or claim 9 obvious. PO Resp. 32–34 (claim 6), 34
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`(claim 9). For the reasons expressed below, we conclude that Petitioner has
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`demonstrated by a preponderance of evidence that Gastesi renders claims 6
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`and 9 unpatentable as obvious.
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`1. Claim 6
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`Claim 6 depends from disclaimed independent claim 1 and further
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`recites “the central backbone structure includes a closed-wall section, the
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`backbone structure further comprising a removable service plate, the
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`backbone structure and plate together defining a substantially polygonal
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`cross-sectional shape.” Ex. 1001, 13:55–59. Petitioner argues that an
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`ordinarily skilled artisan would have considered it obvious to place a
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`removable plate in Gastesi’s tubular member 3 to permit access to fuel
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`tank 22 and transmission shaft 28 for three reasons. Pet. 43–44. First, the
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`use of service plates to provide access to internal components, for example,
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`the hood of an automobile, was well known in the automotive industry. Id.
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`at 43 (citing Ex. 1003 ¶ 110). Second, Gastesi already suggests the use of
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`such an access plate in the form of its removable bottom plate 36, which
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`permits access to tubular member 3. Id. at 44. Third, adding a service plate
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`to tubular member 3 would “provide a simple and inexpensive means by
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`which to provide maintenance access to the fuel tank 22 and the
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`transmission shaft 28” inside tubular member 3. Id. (citing Ex. 1003 ¶ 111).
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`Patent Owner counters that adding an access plate to Gastesi’s tubular
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`member 3 would not have been obvious because an ordinarily skilled artisan
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`would consider that adding such a plate would provide no advantages and
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`would render the vehicle less safe. PO Resp. 32–34. Patent Owner’s
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`argument rests wholly upon Mr. Kunselman’s testimony in which he opines
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`that adding a service plate to Gastesi’s tubular member 3 would “serve no
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`purpose.” For example, Mr. Kunselman also opines that an ordinarily
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`skilled artisan would access Gastesi’s fuel tank through the “lateral ends of
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`tubular member 3” to gain access to “fittings and connections.” Ex. 2025
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`¶ 65. He also testifies that adding a service plate to Gastesi’s tubular
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`member 3 would “introduce risk in the form of leak paths” for fuel in
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`Gastesi’s fuel tank. Id. Mr. Kunselman cites no objective evidence in
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`support of his testimony. Id.
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`Petitioner persuasively argues that we should discount Mr.
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`Kunselman’s testimony. First, we consider Mr. Kunselman’s testimony to
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`be weak because it is not supported by objective evidence. Second,
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`Mr. Kunselman bases his testimony on the faulty premise that Gastesi’s fuel
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`tank 22 is “immediately adjacent engine 2.” Reply 8; see also Ex. 2025 ¶ 65
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`(“Since the gas tank is immediately adjacent engine 2, a POSITA would
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`understand that the gas tank fittings would be also located at the lateral end.”
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`(emphasis added).) Third, on cross examination, Mr. Kunselman concedes
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`that Gastesi is not specific about whether its fuel tank is “immediately
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`adjacent” the engine, but instead merely indicates that fuel tank 22 is located
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`somewhere within the centrally located section “B” shown in Gastesi’s
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`Figure 1. Ex. 1063, 121:10–122:19; see also Ex. 1012, 3:1–14, 4:3–4
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`(describing fuel tank 22 inside tubular structure 3 of Figures 3 and 4).
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`Mr. Parker agrees. Ex. 1061 ¶¶ 30–31. Fourth, Mr. Kunselman also testifies
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`that the installation of service plates to enable access to components
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`positioned beneath the plate were known before 2007. Ex. 1063, 119:6–
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`120:7.
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`As for the alleged “leak path” introduced by using a service plate in
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`tubular member 3, Mr. Kunselman fails to explain why Gastesi’s fuel tank
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`22, which is a separate structure within tubular member 3,4 would leak
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`simply because a service plate is installed in tubular member 3. Mr. Parker
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`opines that an ordinarily skilled artisan would understand that the leak path
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`identified by Mr. Kunselman would be mitigated by Gastesi’s use of a
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`separate structure for fuel tank 22. Ex. 1061 ¶ 32. We consider Mr. Parker
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`to be more credible than Mr. Kunselman on this point because Mr. Parker
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`testifies about the structures that Gastesi actually describes rather than
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`simply positing risks without explanation.
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`To the extent that Patent Owner impliedly argues that Gastesi teaches
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`away from using service plates in its backbone structure (tubular member 3),
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`such an argument fails. Rather than disparaging the use of service plates to
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`gain access to underlying structures, Gastesi actually suggests using
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`removable plates to permit access by including its bottom plate 36 to ease
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`4 See Ex. 1012, Figure 3 (illustrating fuel tank 22) 4:3–4 (explaining that fuel
`tank 22 is shown in section inside tubular structure 3).
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`assembly and disassembly of body 32 from tubular structure 3. Ex. 1012,
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`4:18–21.
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`Based on a preponderance of evidence before us, Petitioner persuades
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`us that Gastesi renders claim 6 unpatentable as obvious.
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`2. Claim 9
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`Claim 9 depends from disclaimed claim 1 and further recites, among
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`other limitations: “at least one of: a wire and a fluid line, extending within a
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`longitudinal length of the backbone structure to the engine.” Ex. 1001,
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`14:2–4. Petitioner contends that an ordinarily skilled artisan would
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`understand that a fuel line of Gastesi must extend along “at least some
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`longitudinal length of the tubular structural member 3” because fuel tank 22
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`is located within tubular member 3 and the engine is mounted outside the
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`front end of tubular member 3. Pet. 45–46 (citing Ex. 1012, 3:20–25, 3:46–
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`48, Figure 2; Ex. 1003 ¶ 116–17). Petitioner also contends that an ordinarily
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`skilled artisan would have considered it obvious to longitudinally offset
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`Gastesi’s fuel tank 22 within tubular member 3 “to improve safety and
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`reduce risk of fire.” Id. at 46. Doing so would require a fuel line to traverse
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`the longitudinal distance between such a fuel tank and the engine. Id.
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`Patent Owner argues that Gastesi does not describe or suggest a fuel
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`line extending longitudinally within its tubular member 3 becaus