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`Tel: 571-272-7822
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`Paper No. 61
`Entered: February 14, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`HENDRICKSON USA L.L.C., GREAT DANE L.L.C., and
`QUEST GLOBAL, INC.,
`Petitioners,
`v.
`TRANS TECHNOLOGIES COMPANY,
`Patent Owner.
`_______________
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`Case IPR2017-01510
`Patent 7,669,465 B2
`_______________
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`
`Before KEN B. BARRETT, JEFFREY A. STEPHENS, and
`GARTH D. BAER, Administrative Patent Judges.
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`STEPHENS, Administrative Patent Judge.
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`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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`Paper No. 61
`Entered: February 14, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`HENDRICKSON USA L.L.C., GREAT DANE L.L.C., and
`QUEST GLOBAL, INC.,
`Petitioners,
`v.
`TRANS TECHNOLOGIES COMPANY,
`Patent Owner.
`_______________
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`Case IPR2017-01510
`Patent 7,669,465 B2
`_______________
`
`
`Before KEN B. BARRETT, JEFFREY A. STEPHENS, and
`GARTH D. BAER, Administrative Patent Judges.
`
`STEPHENS, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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`I.
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`INTRODUCTION
`
`Background
`A.
`Hendrickson USA L.L.C., Great Dane L.L.C., and Quest Global, Inc.
`(“Petitioners”) filed a Petition requesting inter partes review of claims 1,
`8–10, and 12–17 (“challenged claims”) of U.S. Patent No. 7,669,465 B2
`(Ex. 1001, “’465 patent”). Paper 2 (“Pet.”). Trans Technologies Company
`(“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”).
`On December 4, 2017, the Board instituted trial to review patentability of
`the challenged claims on one of the three grounds presented in the Petition.
`Paper 7 (“Inst. Dec.”). After the decision in SAS Institute Inc. v. Iancu, 138
`S. Ct. 1348 (2018), the Board also instituted trial on the remaining two
`grounds presented in the Petition. Paper 35.
`Subsequent to institution, Patent Owner filed a Patent Owner
`Response (Papers 41, 42, “PO Resp.”),1 Petitioners filed a Reply (Paper 46,
`“Pet. Reply”), Patent Owner filed a Sur Reply (Papers 50, 51, “PO Sur
`Reply”),2 and Petitioners filed a Response to Patent Owner’s Sur Reply
`
`
`1 Patent Owner filed two versions of the Patent Owner Response: Paper 42,
`to which access is restricted to the parties and the Board; and Paper 41, a
`publicly available, redacted version of Paper 42. Patent Owner’s Response,
`which is labeled “Revised” as filed, superseded previous versions of the
`Patent Owner Response.
`2 Patent Owner filed two versions of the Patent Owner Sur Reply: Paper 51,
`to which access is restricted to the parties and the Board; and Paper 50, a
`publicly available, redacted version of Paper 51.
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`(Paper 52, “Pet. Resp. to Sur Reply”). Patent Owner filed a Motion to
`Exclude (Paper 53, “Mot. Exclude”), Petitioners filed an Opposition to
`Patent Owner’s Motion (Paper 54, “Opp.”), and Patent Owner filed a Reply
`(Paper 56, “PO Reply to Mot. Exclude”).3 The parties also filed joint
`Motions to Seal in connection with Patent Owner’s Response and Patent
`Owner’s Sur Reply. Paper 40; Paper 49. At the request of the parties, the
`Board entered its Standing Protective Order in this proceeding. Paper 33;
`Ex. 3001.
`On September 5, 2018, we held an oral hearing. Paper 57.
`We have jurisdiction under 35 U.S.C. § 6, and we issue this Final
`Written Decision under 35 U.S.C. § 318(a). For the reasons that follow, we
`determine that Petitioners have demonstrated that claims 1, 8–10, and 12–17
`of the ’465 patent are unpatentable under 35 U.S.C. § 103(a) by a
`preponderance of the evidence.
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`Related Matters
`B.
`The parties indicate that Patent Owner asserted the ’465 patent against
`Petitioners in Trans Technologies Company v. Hendrickson USA L.L.C. et
`al., No. 1:16-cv-01778-AT (N.D. Ga). Pet. 3; Paper 4, 1.
`
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`3 Petitioners filed objections under 37 C.F.R. § 42.64(b)(1) (Paper 45), but
`did not preserve the objections with the filing of a motion to exclude under
`§ 42.64(c).
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`The ’465 Patent
`C.
`The ’465 patent relates to maintaining correct air pressure in tractor-
`trailer tires. Ex. 1001, col. 1, ll. 21–22. The background explains that tires
`in most trailers normally operate at approximately 100 pounds per square
`inch (“psi”), but that “traveling through hot climates such as the Arizona
`desert can cause the pressure in the tires to increase to dangerous levels
`increasing likelihood of a blow-out or other catastrophic failure.” Id., col. 1,
`ll. 33–37. Tires for long haul trailers will also experience a gradual pressure
`loss, which can accelerate tire wear. See id., col. 1, ll. 42–44. The ’465
`patent describes maintaining correct air pressure by keeping it within
`adjustable predetermined values, such as 100 and 110 psi. Id., col. 2,
`ll. 56–59.
`Figure 3 of the ’465 patent is reproduced below.
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`Figure 3 is a cut-away view of the tire inflation system described in the ’465
`patent, showing the system in relation to axle 20 and hub cap 24.
`Air pressure flows to the tires from pressurized air tank 12, with
`shutoff valve 14 and regulator 16 between the tank and the tires. Id., col. 3,
`ll. 18–21. The air flows from the tank through air line 18, which extends
`through axle 20 of the trailer. Id., col. 3, ll. 29–30. Air line 18 extends to air
`shaft 40, which extends through hub cap 24 and into rotary air chamber 28
`attached to hub cap 24. Id., col. 3, ll. 30–32. Rotary air chamber 28 is
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`attached to air hoses 44 that allow air from the air shaft 40 to pass through
`the chamber and into the hose connected to a specific tire. Id., col. 4,
`ll. 29–33.
`Check valves 41 are used to allow air to flow into the tires when the
`tire air pressure drops below the desired pressure set by the regulator. Id.,
`col. 4, ll. 2–5. Each check valve is designed to close off air leaving the tire
`if the check valve detects an increased flow rate, and in this way can prevent
`air from flowing from a good tire to one that has catastrophically failed. Id.,
`col. 4, ll. 2–10. Pressure relief valves 30 release air pressure from their
`corresponding tires when the tire air pressure exceeds a preset upper limit.
`Id., col. 3, ll. 11–14.
`
`Illustrative Claims
`D.
`Challenged claims 1 and 12 of the ’465 patent are independent.
`Claims 1 and 12 are illustrative of the claimed subject matter and are
`reproduced below with bracketed numbering added to identify claim
`limitations that follow:
`1. A system for continuously maintaining air pressure in tires,
`comprising:
`[1.1a] a rotary air chamber secured to a hub cap [1.1b]
`wherein the rotary air chamber includes a plurality of check
`valves, [1.1c] each check valve configured to inject air into a
`corresponding tire when tire air pressure drops below a first
`adjustable preset value, and [1.1d] a plurality of relief valves,
`each relief valve configured to release air from a corresponding
`tire when tire air pressure rises above a second adjustable preset
`value;
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`[1.2] an air shaft extending through the hub cap and into
`the rotary air chamber;
`[1.3] an air line attached to the air shaft, so that the air
`line passes through an axle and injects air into the air shaft; and
`[1.4] ball bearings affixed between the air shaft and the
`hub cap, so that the rotary air chamber rotates with the wheel.
`
`12. A system for air injection into a tire, comprising:
`[12.1] means for causing air to flow through an air line
`within an axle;
`[12.2] means for injecting the air into the tire when tire
`pressure drops below a first preset value; and
`[12.3] means for releasing air from the tire when tire
`pressure rises above a second preset value.
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`Ex. 1001, col. 5, ll. 23–38, col. 6, ll. 29–35.
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`Asserted Grounds of Unpatentability
`E.
`Petitioners assert the following grounds of unpatentability:
`References
`Basis4
`Claims challenged
`Bland5 and Parker6
`§ 103(a)
`1, 8–10, and 12–17
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`Stech7 and Loewe et al.8
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`White et al.9 and Schultz10
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`§ 103(a)
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`§ 103(a)
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`1, 8–10, and 12–17
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`1, 8–10, and 12–17
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`II. DISCUSSION
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`Principles of Law
`A.
`“In an [inter partes review], the petitioner has the burden from the
`onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
`
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`4 Because the claims at issue have a filing date prior to March 16, 2013, the
`effective date of the Leahy-Smith America Invents Act, Pub. L. No. 112-29,
`125 Stat. 284 (2011) (“AIA”), we apply the pre-AIA version of 35 U.S.C.
`§ 103.
`5 US 4,387,931, issued June 14, 1983. Ex. 1003.
`6 US 2,317,636, issued Apr. 27, 1943. Ex. 1006.
`7 US 5,287,906, issued Feb. 22, 1994. Ex. 1004.
`8 US 5,325,902, issued July 5, 1994 (“Loewe”). Ex. 1007.
`9 US 7,273,082 B2, issued Sept. 25, 2007 (filed Apr. 19, 2004) (“White”).
`Ex. 1005.
`10 US 4,678,017, issued July 7, 1987. Ex. 1008.
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`petitions to identify “with particularity . . . the evidence that supports the
`grounds for the challenge to each claim”)). This burden never shifts to
`Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800
`F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter
`partes reviews).
`A claim is unpatentable under 35 U.S.C. § 103(a) if “the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains.” 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 skill in the art; and (4) objective evidence of nonobviousness,
`i.e., secondary considerations. See Graham v. John Deere Co. of Kansas
`City, 383 U.S. 1, 17–18 (1966). In an inter partes review, obviousness must
`be proven by a preponderance of the evidence. See 35 U.S.C. § 316(e).
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`Level of Ordinary Skill in the Art
`B.
`Patent Owner’s Declarant, Gerry McCann, adopts the same level of
`ordinary skill in the art as Petitioners’ Declarant, Lee A. Swanger, Ph.D.,
`P.E., namely “someone who has a bachelor’s degree in mechanical
`technology, mechanical engineering, or equivalent experience, and who had
`working knowledge of the incorporation of pressure regulators, check
`valves, and pressure relief valves to accomplish desired features of
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`pneumatic systems.” Ex. 2008 ¶ 16 (Declaration of Gerry McCann,
`“McCann Declaration”); Ex. 1002 ¶ 13 (Declaration of Lee A. Swanger,
`Ph.D., P.E., “Swanger Declaration”). We adopt the description of the level
`of ordinary skill in the art agreed upon by the parties’ declarants.
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`Claim Construction
`C.
`We interpret claims of an unexpired patent using the broadest
`reasonable construction in light of the specification of the patent in which
`they appear. See 37 C.F.R. § 42.100(b) (2016). In applying the broadest
`reasonable construction, claim terms generally are given their ordinary and
`customary meaning, as would be understood by one of ordinary skill in the
`art in the context of the entire disclosure. See In re Translogic Tech., Inc.,
`504 F.3d 1249, 1257 (Fed. Cir. 2007).
`The parties offer proposed constructions for some terms recited in
`claims 1 and 12. Pet. 18–21; PO Resp. 13–18. We need not reach these
`issues because express construction of these terms is not necessary to resolve
`the dispute between the parties in this case.
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`Asserted Obviousness over Bland and Parker
`D.
`Petitioners contend claims 1, 8–10, and 12–17 of the ’465 patent are
`unpatentable under 35 U.S.C. § 103(a) over Bland and Parker. Pet. 27–39.
`1. Claim 1
`Petitioners provide explanations to account for all of the claim
`limitations required by claim 1, and reasons one of ordinary skill in the art
`would have combined teachings of Bland and Parker with a reasonable
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`expectation of success, citing Dr. Swanger’s Declaration in support. Pet.
`27–38; Ex. 1002.
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`a. Teachings of Bland and Parker
`Petitioners assert that Bland teaches all limitations of claim 1 except
`for element 1.1d, i.e., a “plurality of relief valves, each relief valve
`configured to release air from a corresponding tire when tire air pressure
`rises above a second adjustable preset value.” Pet. 27. As to the preamble
`of claim 1, Petitioners rely on “Bland’s disclosure of ‘an improved tire
`inflation system for maintaining a plurality of tires on a vehicle at
`predetermined uniform pressures.’” Pet. 27 (quoting Ex. 1003, col. 1, ll. 42–
`44). Petitioners contend that Bland’s adapter 14 is a “rotary air chamber” as
`claimed because it is secured to the hub cap 74, rotates with the wheel, and
`includes an air chamber that accepts compressed air from the regulator and
`distributes it to the tires via additional air lines. Id. (citing Ex. 1003, col. 4,
`ll. 27–34, col. 4, ll. 51–60, col. 5, ll. 6–12, col. 5, ll. 33–65, Figs. 6–7; Ex.
`1002 ¶ 43). Petitioners contend Bland’s adapter 14 includes the claimed
`check valves (element 1.1b), and that the check valves have a preset
`adjustable value from the regulator, as recited in claim element 1.1c. Id. at
`28 (citing Ex. 1003, col. 3, ll. 35–43, col. 5, ll. 39–65, col. 6, ll. 31–32, Figs.
`6–9; Ex. 1002 ¶¶ 46, 48). Petitioners argue Bland includes an air shaft
`(claim element 1.2) in the form of sleeve 81 and air lines (claim element 1.3)
`that pass through the axles and connect to the air shaft. Id. (citing Ex. 1003,
`col. 4, ll. 16–50, ll. 67–68, col. 5, ll. 55–65, Figs. 2–3). Petitioners also
`contend that one of ordinary skill in the art would have recognized the use of
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`ball bearings at Bland’s seal 76, 85 between the air shaft and the hub cap to
`form a rotatable seal. Id. at 29–30 (citing Ex. 1003, col. 4, ll. 32–43, Fig. 6;
`Ex. 1002 ¶¶ 53–54; Ex. 1006 (Parker), col. 2, ll. 8–24, Fig. 2).
`Having reviewed Bland’s teachings, we determine Petitioners have
`shown by a preponderance of evidence that Bland teaches or suggests all
`elements except the relief valves recited in claim 1.
`Petitioners’ assertion that Parker teaches relief valves also has support
`in the evidence. Pet. 31. In particular, Parker teaches the use of relief valves
`that “may be of any well known construction.” Ex. 1006 at 2, col. a, l. 48.
`“The relief valves . . . are adapted to relieve the tires of air in case of over-
`inflation, and may be adjusted so as to function as relief valves in
`accordance with a predetermined air pressure existing in the tires.” Id. at 2,
`col. a, ll. 52–56. Petitioners have shown by a preponderance of evidence
`that Parker teaches or suggests relief valves for relieving tires of air in case
`of over-inflation.
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`b. Reasons for Combining Bland and Parker
`Petitioners contend one of ordinary skill in the art would have wanted
`to use a relief valve such as that taught in Parker with Bland’s inflation
`system in order to take advantage of well-known benefits of properly
`inflated tires, including improvements in economy and safety, mileage, tire
`wear, traction, and riding comfort. Pet. 31 (citing Section IV.A of Petition;
`Ex. 1002 ¶¶ 15, 56–59). Petitioners cite background art, including
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`Webster,11 to establish that one of ordinary skill in the art would have
`understood that tires may become over- or under-inflated while in use:
`[V]ery wide pressure fluctuations can occur in the tires,
`depending upon
`the speed of
`the vehicle, atmospheric
`temperature, and so forth so that the air pressure may increase or
`decrease to undesirable levels which causes excessive wear on
`the tire or even danger of blow out.
`Ex. 1009, col. 1, ll. 28–33 (cited at Pet. 5). Petitioners contend that Parker
`“reveals that the conventional manner to achieve tire deflation and prevent
`over-inflation was to use a relief valve to release air.” Pet. 31. Petitioners
`contend the use of Parker’s relief valve in Bland is, therefore, a highly
`predictable application of well-known technologies with well-known
`benefits. Id. at 30. Petitioners argue one of skill in the art would have had a
`high expectation of success in combining the tire inflation system of Bland
`with the relief valve structure of Parker because relief valve structures were
`well known and standard components were readily available. Pet. 32–33.
`Petitioners contend Parker’s relief valves could be directly inserted into
`Bland’s tire inflation system by unscrewing the service valves 88 and 90
`from the rotary air chamber and screwing in relief valves. Pet. 32–33 (citing
`Ex. 1002 ¶ 58).
`Patent Owner argues that “even if one were to modify Bland to add
`the relief valve of Parker, such system would only have one preset-target
`value, not the two values required by the 465 patent.” PO Resp. 43. It is,
`however, evident from the Petition and supporting Swanger Declaration that
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`11 US 2,693,841, issued Nov. 9, 1954. Ex. 1009.
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`Petitioners contend one of ordinary skill in the art would have used the relief
`valve to set a maximum pressure in Bland’s system above the minimum set
`by Bland’s regulator. The Petition’s reliance on Parker’s teaching to
`“relieve the tires of air in case of over-inflation” indicates the purpose is to
`set a maximum, not merely to provide the ability to lower tire pressure when
`travelling, for example, over certain terrain. See Pet. 31. Moreover, Dr.
`Swanger’s Declaration expressly states that the combination of teachings
`from Bland and Parker results in:
`(7) adjustable relief valves in the rotary air chamber to allow
`excess pressure that may build up in a tire to be relieved; and
`(8) the preset value of the relief valves will be adjusted to be
`above the setting of the pressure regulator to provide an
`acceptable range of pressure within the tires.
`Ex. 1002 ¶ 55. Use of Parker’s relief valve in this way is also consistent
`with the apparent reasons discussed above for using the pressure relief valve
`in Bland, including to avoid over-inflation caused by something other than
`the regulator, such as a change in temperature. We also agree with
`Petitioners that “[Patent Owner’s] experts further confirmed that a POSITA
`would have recognized the benefit of setting different setpoints for inflation
`and deflation to avoid problems, such as continuous cycling.” Pet. Reply 6
`(citing Ex. 1096, 135:18–139:14; Ex. 1098, 97:9–98:24, 103:9–104:23).
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`Patent Owner argues one of ordinary skill in the art would not have
`had reason to modify an inflation-only system with a relief valve. PO Resp.
`26–42. Patent Owner presents these arguments under nine headings it
`asserts are applicable to all of the challenged grounds presented by the
`Petition. Id. Patent Owner then presents additional reasons specific to each
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`of the challenged grounds of unpatentability. Id. at 42–46. We address in
`turn each argument applicable to the combination of Bland and Parker.
`(1) Hendrickson’s Conduct
`First, Patent Owner argues Petitioner Hendrickson’s own conduct
`belies Petitioners’ contention that one of ordinary skill in the art would have
`been motivated to combine the references. PO Resp. 26–27. Patent Owner
`questions why Hendrickson did not teach deflation capability in a patent
`application it filed in 2004 or add deflation capability to its tire inflation
`system first sold in 2008 if it was obvious to do so. Id.
`Petitioners argue Hendrickson’s independent development supports
`obviousness. Pet. Reply 15–17.
`Hendrickson’s conduct does not control whether the claimed
`invention would have been obvious to the hypothetical person of ordinary
`skill in the art. See KSR, 550 U.S. at 406 (stating the obviousness analysis
`set forth in Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966),
`“is objective”); Norgren Inc. v. Int’l Trade Comm’n, 699 F.3d 1317, 1327
`(Fed. Cir. 2012) (“The correct analysis is whether it would have been
`obvious to the hypothetical person of ordinary skill in the art, not whether it
`was obvious to Wolfe personally.”).
`(2) White and Stech File Histories
`Second, Patent Owner argues the file histories of White and Stech
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`undercut Petitioners’ alleged motivation to combine the relief valves of the
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`secondary references (i.e., Parker, Loewe, or Schultz) with the primary
`inflation-only references (i.e., Bland, Stech, or White). PO Resp. 27–30.12
`The White patent belongs to Petitioner Hendrickson, and during
`prosecution the applicants argued that an inflate/deflate system taught in a
`prior art reference to Le Chatelier was not material to the inflation-only
`system recited in the claims in Hendrickson’s application. Ex. 2053, 93–94;
`see PO Resp. 27–28. Patent Owner contends “Petitioners should be
`estopped to take a contrary position when trying to invalidate the 465
`Patent,” and cites a Board decision in a reexamination appeal that discusses
`the Federal Circuit’s application of judicial estoppel in Minnesota Mining &
`Manufacturing Co. v. Chemque, Inc., 303 F.3d 1294 (Fed. Cir. 2002). PO
`Resp. 29.
`Stech is not alleged to be assigned to any of the Petitioners, but Patent
`Owner contends the applicant in Stech argued against examiner rejections
`based on a combination of inflation-only systems and military systems that
`could inflate or deflate the tires for different terrain. PO Resp. 29. Stech’s
`claims were rejected based on Bland and Webster, and based on Bland and
`Schultz. Ex. 2055, 46, 65; see PO Resp. 29. The applicant argued Schultz
`related to varying pressure for on-road or off-road conditions, and that
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`12 Petitioners contend Patent Owner’s argument goes beyond the agreed
`scope of Patent Owner’s Response, which was revised after the Board
`instituted on the two additional grounds not included in the Institution
`Decision. Pet. Reply 17 n.5. Because Patent Owner’s argument is not
`specific to the ground based on Bland and Parker, and in the interest of
`fairness, we consider the argument’s effect on all grounds.
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`“[b]ecause of the different operation and desired results between Applicant’s
`system, Bland and Schultz, it is respectfully submitted that there is no
`teaching nor could Bland be modified to include the valve of Schultz.” Ex.
`2055, 75. Patent Owner argues “the logic and analysis of the applicants in
`White and Stech are equally applicable here and negate Petitioners’
`hindsight effort to manufacture a case of obviousness.” PO Resp. 30.
`Petitioners argue “White’s file history statements are inapposite
`because they concerned a markedly different claimed invention and
`combination of prior art,” and that the examiner rejected White’s argument,
`finding it “not persuasive.” Pet. Reply 17 (citing Ex. 2053, 46, 61–62,
`93–94). As to Stech, Petitioners argue the Petition proposes to add a relief
`valve at the location of Stech’s service valves 88 and 89, and the discussion
`during prosecution related to other elements. Id. at 19. “These statements
`from unrelated file histories about different claims cannot support [Patent
`Owner],” Petitioners contend. Id.
`Patent Owner’s arguments about White and Stech show that
`arguments similar to those being made by Patent Owner here have been
`made, but are not evidence that one of ordinary skill in the art would not
`have wanted to use a relief valve as taught in Parker to avoid over-inflation
`in Bland’s system. There are also several reasons why Patent Owner’s
`arguments about judicial estoppel fail to undermine Petitioners’ reasoning as
`to why one of ordinary skill in the art would have combined Bland and
`Parker in the manner claimed. First, Patent Owner ’s estoppel argument at
`most would affect Petitioner Hendrickson, and, as noted by Petitioners, Pet.
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`Reply 18–19, Patent Owner has not provided a theory under which the
`remaining Petitioners would be estopped from arguing that a system with a
`relief valve (e.g., Parker) would be deemed irrelevant to an inflation-only
`system (e.g., Bland). In addition, Patent Owner does not cite authority
`indicating that judicial estoppel applies in an inter partes review. Even if
`judicial estoppel could apply, we agree with Petitioners that the examiner
`did not accept the relevant arguments presented during prosecution of White.
`See Pet. Reply 18.13
`
`(3) Hendrickson’s Patents
`Third, Patent Owner argues “Hendrickson’s own patents covering
`inflation/deflation systems (e.g., TMP) confirm that Hendrickson believed in
`
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`13 Hendrickson presented its arguments in response to the rejection of claims
`1 and 22 of the White application as anticipated by Le Chatelier. See Ex.
`2053, 92–94. The Examiner rejected the arguments in the next office action
`and maintained the anticipation rejection. Id. at 57–58 (maintaining
`rejection despite claim amendments), 61–62 (explaining that Le Chatelier
`meets the limitations of the claims even if it has the additional feature of
`allowing deflation). The applicant canceled claim 22 and amended claim 1
`to recite that “whereby over-inflation of the tire generally is prevented by
`said method steps.” See id. at 33, 47–48. The examiner allowed claim 1
`based on the determination that Le Chatelier (1) did not disclose a step-up
`procedure of air bursts and (2) allowed over-inflation by including a pressure
`relief valve to release excess air pressure. Id. at 24. The examiner,
`therefore, accepted the applicant’s argument that Le Chatelier did not
`disclose air bursts and did not disclose use of the inflation mechanism to
`prevent over-inflation of the tire, as recited in claim 1, and did not indicate
`any acceptance of the argument that Le Chatelier was not material to the
`claims.
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`2010, after the filing of the 465 Patent, that adding deflation capability to an
`inflation-only system for a commercial trailer was inventive.” PO Resp.
`30.14 Hendrickson’s ’633 patent,15 for example, states that “there is a need
`in the art for a tire inflation system that overcomes the disadvantages of the
`prior art by providing control of the conditions under which deflation
`occurs,” and does this by providing, among other things, “a constant
`pressure system that is capable of deflation.” Ex. 2030, col. 4, l. 60 – col. 5,
`l. 1. The ’704 patent16 states that one objective “is to provide a tire inflation
`system that is a constant-pressure tire inflation system that is capable of
`deflation.” Ex. 2031, col. 4, ll. 41–43.
`Although we consider the statements cited by Patent Owner from
`Hendrickson’s patents, they are not dispositive. Hendrickson’s patents
`contain statements about other objectives and advantages, and the statements
`do not definitively establish Hendrickson’s subjective belief that adding
`deflation to an inflation-only system was novel or non-obviousness at the
`time the applications were filed. In addition, as noted above, the subjective
`belief expressed in Hendrickson’s patent applications does not control
`whether the hypothetical person of ordinary skill in the art would have had
`reason to combine Bland and Parker. See KSR, 550 U.S. at 406 (“The
`analysis is objective . . . .”); Norgren, 699 F.3d at 1327 (“The correct
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`14 “TMP” refers to Hendrickson’s “TIREMAAX PRO” system with inflation
`and deflation capabilities.
`15 US 8,973,633 B2, filed July 29, 2011.
`16 US 9,132,704 B2, filed July 29, 2011.
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`analysis is whether it would have been obvious to the hypothetical person of
`ordinary skill in the art, not whether it was obvious to Wolfe personally.”).
`We consider the objective reasoning and evidence offered by Petitioners on
`this question, considering that Petitioner Hendrickson apparently believed
`that adding deflation capability to an inflation system was noteworthy even
`after the filing of the ’465 patent.
`(4) Webster
`Fourth, Patent Owner argues “Webster does not provide sufficient
`reasons to modify the primary prior art references in this proceeding.” PO
`Resp. 32. Patent Owner contends that Webster, like other military tire
`inflation systems, is responsive to user input, does not automatically respond
`to changes in tire pressure, and teaches user input “based on perceived
`changes in the terrain, not environmental factors that cause pressure
`fluctuations.” Id. “To the extent that Webster encourages a POSITA to
`address overinflation (which should be limited to the context of multi-terrain
`vehicles),” argues Patent Owner, “it does so using manual control, not preset
`values.” Id. Patent Owner asserts that, for these reasons, Webster teaches
`away from the claims of the ’465 patent. Id.
`Because “Webster does not criticize, discredit, or discourage
`automatic deflation,” and Patent Owner has not explained how it does, we
`agree with Petitioners that Webster does not teach away from claim 1 of the
`’465 patent. Pet. Reply 11. We also disagree with Patent Owner that
`Webster’s teachings are limited to the context of multi-terrain vehicles. As
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`pointed out in the Board’s Institution Decision, Inst. Dec. 13, Webster shows
`that it was known that tires may become over- or under-inflated while in use:
`[V]ery wide pressure fluctuations can occur in the tires,
`depending upon
`the speed of
`the vehicle, atmospheric
`temperature, and so forth so that the air pressure may increase or
`decrease to undesirable levels which causes excessive wear on
`the tire or even danger of blow out.
`Ex. 1009, col. 1, ll. 28–33 (cited at Pet. 5). This statement follows a
`sentence referring to “intercity buses and the like,” along with military
`vehicles. Id., col. 1, ll. 23–24; see also id., col. 1, ll. 16–17 (referring to
`“tires of vehicles, such as automobiles, trucks, buses and the like”).
`Following the statement about natural pressure fluctuations while in use,
`Webster also mentions the necessity of quickly reducing pressure of tires on
`military vehicles to accommodate terrain such as soft mud or snow and
`increasing the pressure when driving onto a harder surface. Id., col. 1,
`ll. 33–38. Webster explains that “[u]nder any of these conditions, it would
`be very desirable to be able either to supply air to a partially deflated tire or
`to partially deflate the over-inflated tire, as required, without stopping the
`vehicle.” Id., col. 1, ll. 38–42 (emphasis added). Given that Webster
`specifically references multi-terrain military vehicles along with other more
`general considerations applicable to all vehicles, one of ordinary skill in the
`art would not interpret Webster as applying only to multi-terrain vehicles.
`We find that Webster supports that one of ordinary skill in the art would
`have been motivated to add components to an inflate-only system that would
`allow a user to, without stopping the vehicle, partially deflate a tire that has
`become over-inflated due to environmental conditions.
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`(5) Impact of Operating Conditions
`Fifth, Patent Owner argues that, despite Webster’s teachings, “the
`interplay of temperature, operating conditions, and tire pressure is far more
`complex and less understood than Petitioners suggest.” PO Resp. 33.
`“Webster oversimplifies the problem,” Patent Owner contends, “and does
`not demonstrate how a POSITA would have understood overinflation at the
`time of invention.” Id. Patent Owner acknowledges that “[a]t least as early
`as [the] 1950s, it was co
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