Trials@uspto.gov
`571.272.7822
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` Paper No. 34
`January 22, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`UNITED INDUSTRIES CORPORATION,
`Petitioner,
`v.
`SUSAN McKNIGHT, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01686
`Patent 9,253,973 B2
`____________
`
`
`Before JAMES A. TARTAL, TIMOTHY J. GOODSON, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION AND
`ORDER DENYING MOTION TO AMEND
`Inter Partes Review
`35 U.S.C. §§ 316(d), 318(a) and 37 C.F.R. §§ 42.73, 42.121
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`571.272.7822
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` Paper No. 34
`January 22, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`UNITED INDUSTRIES CORPORATION,
`Petitioner,
`v.
`SUSAN McKNIGHT, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01686
`Patent 9,253,973 B2
`____________
`
`
`Before JAMES A. TARTAL, TIMOTHY J. GOODSON, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION AND
`ORDER DENYING MOTION TO AMEND
`Inter Partes Review
`35 U.S.C. §§ 316(d), 318(a) and 37 C.F.R. §§ 42.73, 42.121
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`IPR2017-01686
`Patent 9,253,973 B2
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`
`INTRODUCTION
`I.
`United Industries Corporation (“Petitioner”) filed a Petition (Paper 2,
`“Pet.”) requesting institution of inter partes review of claims 1–17 of
`U.S. Patent No. 9,253,973 B2 (Ex. 1001, “the ’973 patent”) owned by Susan
`McKnight, Inc. (“Patent Owner”). We have jurisdiction under 35 U.S.C.
`§ 6(c) to hear this inter partes review instituted pursuant to 35 U.S.C. § 314.
`In this Final Written Decision, issued pursuant to 35 U.S.C. § 318(a) and
`37 C.F.R. § 42.73, we find on the record before us that Petitioner has shown
`by a preponderance of the evidence that claims 1–17 of the ’973 patent are
`unpatentable. See 35 U.S.C. § 316(e). Further, Patent Owner’s Motion to
`Amend, which it filed “in an abundance of caution,” is denied as
`unnecessary and nonresponsive because we adopt the proposed claim
`construction for existing claims 1 and 16 that Patent Owner sought to make
`explicit through proposed amended claims.
`PROCEDURAL HISTORY
`A.
`Petitioner filed a Petition requesting institution of inter partes review
`of claims 1–17 of the ’973 patent on six grounds of alleged unpatentability.
`Pet. 3–4. Patent Owner filed a Preliminary Response (Paper 6, “Prelim.
`Resp.”). We initially instituted review of all challenged claims because we
`determined the Petition showed a reasonable likelihood that Petitioner would
`prevail as to the challenged claims on the following four grounds:
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`Claims Challenged
`1–17
`1–3, 7, 10, 14, 16, and 17
`4–6, 10, 11, 14, and 15
`8, 9, 12, and 13
`
`Basis
`References
`§ 103
`Jennerich,1 Lyng,2 and Jennings3
`§ 103
`Anderson,4 Dempster,5 and Lang6
`Anderson, Dempster, Lang, and Lyng § 103
`Anderson, Dempster, Lang, and
`§ 103
`Metcalfe7
`Paper 7 (“Inst. Dec.”); see also 35 U.S.C. § 314.
`After institution of inter partes review, Patent Owner filed a Response
`to the four grounds instituted. Paper 15 (“PO Resp.”). Patent Owner also
`filed a Motion to Amend contingent on a finding of unpatentability as to
`either claim 1 or claim 16. Paper 16 (“Mot. Amend”).
`Subsequent to the Patent Owner Response, the Supreme Court held in
`SAS Institute Inc. v. Iancu that a decision to institute under 35 U.S.C. § 314
`may not institute on fewer than all claims challenged in the petition. 138 S.
`Ct. 1348, 1359–60 (2018). In light of the Guidance on the Impact of SAS on
`
`
`1 U.S. Patent No. 2,167,978, issued August 1, 1939 (Ex. 1002, “Jennerich”)
`(citations to Jennerich are to the first or second page of text, then the first or
`second column of text on that page, followed by the line numbers).
`2 U.S. Patent App. No. 2005/0138858 A1, published June 30, 2005
`(Ex. 1007, “Lyng”).
`3 U.S. Patent No. 400,460, issued April 2, 1889 (Ex. 1006, “Jennings”)
`(citations to Jennings are to the page number and line number).
`4 U.S. Patent No. 5,996,531, issued December 7, 1999 (Ex. 1003,
`“Anderson”).
`5 U.S. Patent No. 1,024,767, issued April 30, 1912 (Ex. 1024, “Dempster”)
`(citations to Dempster are to the page number and line number).
`6 U.S. Patent App. No. 2007/0044372 A1, published March 1, 2007
`(Ex. 1008, “Lang”).
`7 U.S. Patent No. 7,299,587 B1, issued Nov. 27, 2007 (Ex. 1012,
`“Metcalfe”).
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`AIA Trial Proceedings8 issued by the Office, which states that “if the PTAB
`institutes a trial, the PTAB will institute on all challenges raised in the
`petition,” we modified the Institution Decision to include review of all
`challenged claims on all grounds asserted in the Petition. Paper 17, 2. In
`particular, we further instituted review on the following claims and bases
`asserted in the Petition:
`References
`Denton,9 Jennerich, and
`McKnight ’81210
`1–7, 10, 11, and 14–17
`§ 103
`McGrath11 and Lyng
`Id. at 3–4. We also authorized Patent Owner to file supplemental briefing in
`response to the additional instituted grounds. Paper 18, 2–3.
`Patent Owner filed a Supplemental Patent Owner Response to address
`grounds not addressed in the Patent Owner Response. Paper 19 (“PO Supp.
`Resp.”). Petitioner filed an Opposition to the Motion to Amend (Paper 22,
`“Opp. Mot. Amend) and a Reply addressing all six grounds instituted
`(Paper 23 (“Pet. Reply”)). Patent Owner filed a Surreply. Paper 25 (“PO
`Surreply”). Oral argument was held before the Board on October 18, 2018.
`Paper 33 (“Tr.”).
`
`Claims Challenged
`1–17
`
`Basis
`§ 103
`
`
`8 Available at https://www.uspto.gov/patents-application-process/patent-
`trial-and-appeal-board/trials/guidance-impact-sas-aia-trial.
`9 U.S. Patent No. 223,321, issued January 6, 1880 (Ex. 1004, “Denton”)
`(citations to Denton are to the page number and line number).
`10 U.S. Patent No. 8,966,812 B2, issued March 3, 2015 (Ex. 1013,
`“McKnight ’812”).
`11 U.S. Design Patent No. 335,940, issued May 25, 1993) (Ex. 1005,
`“McGrath”).
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`RELATED MATTERS
`B.
`The parties indicate that the ’973 patent was asserted in a case
`captioned Susan McKnight, Inc. v. United Industries Corp., No. 2:16-cv-
`02534-JPM-tmp (W.D. Tenn.). Pet. 1; Paper 4, 2. According to Petitioner,
`that proceeding was transferred to the Eastern District of Missouri, captioned
`Susan McKnight, Inc. v. United Industries Corp., No. 4:18-cv-00338-RLW
`(E.D. Mo.), and stayed pending resolution of this inter partes review and the
`inter partes review of related U.S. Patent No. 9,066,511 B2 challenged by
`Petitioner in IPR2017-01687. Paper 14, 3.
`REAL PARTIES IN INTEREST
`C.
`Petitioner identifies United Industries Corporation and Spectrum
`Brands, Inc. as real parties in interest. Pet. 1. Patent Owner identifies itself
`and Purdue Research Foundation as real parties in interest. Paper 4, 2;
`Paper 14, 2–3.
`
`BACKGROUND
`II.
`The ’973 patent, titled “Crawling Arthropod Intercepting Device and
`Method,” issued February 9, 2016, from U.S. Application No. 12/387,645,
`filed May 5, 2009. Ex. 1001. As background information for the ’973
`patent, below we provide a summary of the patent, discuss the prosecution
`history, and provide an illustrative claim. We also identify the proffered
`witness testimony.
`
`SUMMARY OF THE ’973 PATENT
`A.
`The ’973 patent generally relates to a device to intercept crawling
`arthropods and other crawling pests that includes “pitfall trap surfaces that
`form multiple pitfall traps.” Id. at Abstract. In one embodiment, “an
`intercepting device comprising an exterior, upstanding climbable surface
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`that crawling arthropods . . . can climb and first and second pitfall traps
`disposed inwardly of the climbable exterior surface for trapping crawling
`arthropods.” Id. at 3:43–47. “[T]he first pitfall trap comprises an inner
`receptacle that receives a leg of furniture or other object and the second
`pitfall trap comprises an outer receptacle.” Id. at 3:47–50. “[C]rawling
`arthropods are trapped in the inner receptacle and/or outer receptacle as a
`result of being unable to climb out, preventing crawling arthropods from
`moving between the furniture (or other object) and the floor.” Id. at 3:50–
`53.
`
`Figure 1a of the ’973 patent is reproduced below:
`
`
`Figure 1a illustrates a perspective view of one-piece intercepting device D
`with first pitfall trap P1 and second pitfall trap P2. Id. at 4:12–14, 4:48–55.
`Patent Owner explains that “[t]he exterior climbable surface 14a has a
`surface texture rough enough to be readily climbable by crawling
`arthropods” (Prelim. Resp. 2–3 (citing Ex. 1001, 5:23–26)), and “surfaces
`12a, 12b, 14b are slippery so that crawling arthropods cannot climb or have
`difficulty climbing the surfaces thereby trapping the arthropods in either
`receptacle.” Id. (citing Ex. 1001, 5:34–48). “Humans are effectively acting
`as bait for a trap.” Ex. 1001, 4:3–4. According to Patent Owner, a novel
`feature of the device is that it discriminates between bed bugs approaching
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`and departing the bed, sofa, or other object and serves “to monitor the
`efficacy of extermination efforts.” Prelim. Resp. 2 (quoting Ex. 1001, 4:1);
`see also Tr. 31:15–23.
`B.
`PROSECUTION HISTORY OF THE ’973 PATENT
`As explained by Petitioner, during prosecution of the ’973 patent the
`Examiner issued a Final Office Action rejecting all pending claims over
`applied prior art that included Jennerich, a reference asserted in this case.
`Pet. 10 (citing Ex 1017). The Applicant appealed the rejection and in an
`ex parte proceeding the Board affirmed the rejection as to all claims,
`including the rejections based on anticipation by and obviousness over
`Jennerich. Id. at 11–13; see also Ex. 1018, 11. The Applicant filed a
`request for continued examination and amended the claims “by adding that:
`(a) the first and second pitfall traps were ‘bait-free’; and (b) the interior
`surfaces of the first and second pitfall traps were ‘slippery to prevent bed
`bugs from climbing out.’” Id. at 14 (quoting Ex. 1019, 2).
`Subsequently, the Examiner found that the newly added limitations
`were taught by Jennerich and proposed an amendment, stating in an
`Examiner-Initiated Interview Summary:
`Examiner proposed amending claims 1 and 32 to recite that the
`inner receptacle upstanding peripheral surface and the outer
`receptacle inner and outer peripheral surfaces as each having a
`surface roughness which is slippery to prevent bed bugs from
`climbing out to define over Jennerich where the presence of
`powder (h) provides the slippery surfaces rather than the surface
`roughness of the present invention which is achieved through a
`hard surface
`finish of high density polypropylene or
`polypropylene with a roughness average (Ra) of 100 microinch
`(2.54 micron) or less, smooth glass or polished metal as disclosed
`in paragraphs 0028 and 0042 of the present specification.
`Applicant agreed with the proposed amendments.
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`Pet. 14 (quoting Ex. 1020, 2). With the Applicant’s authorization, the
`Examiner issued an Examiner’s Amendment of the claims and, without
`further explanation, a Notice of Allowance. Pet. 14–15 (citing Ex. 1021).
`
`Petitioner contends that:
`[i]n allowing the claims, the Examiner abandoned without
`explanation his earlier reasoning in the 2012 Final Office
`Action—which the Board affirmed—that it would have been
`obvious for a person of ordinary skill to ‘design the surface
`roughness of the slippery surfaces of the inner and outer
`peripheral surfaces so as to prevent the targeted insects from
`escaping the confines of the trap.’
`Pet. 14–15 (citing Ex. 017, 9; Ex. 1018, 9).
`C.
`ILLUSTRATIVE CLAIM OF THE ’973 PATENT
`Claims 1 and 16 of the ’973 patent are independent and claims 2–15
`and 17 depend from claim 1. Claim 1 is illustrative of the claimed subject
`matter and is reproduced below, with emphasis provided on the language
`added over the prior version of the claim that was rejected:
`1. A bed bug intercepting device for placement under a
`support leg of furniture or other object toward or from which bed
`bugs travel, comprising
`an upstanding, exterior climbable surface that bed bugs can
`climb and first and second pitfall traps disposed inwardly of the
`climbable exterior surface for trapping bed bugs,
`wherein the first pitfall trap comprises a bait-free inner,
`support-leg receiving receptacle for receiving the support leg of
`furniture or other object
`wherein the inner receptacle is bounded by an upstanding
`peripheral surface that has a surface roughness which is slippery
`to prevent bed bugs from climbing out and
`the second pitfall trap comprises a bait-free outer receptacle
`wherein the outer receptacle includes upstanding inner and
`outer peripheral surfaces that form the outer receptacle
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`therebetween and that each have a surface roughness which is
`slippery to prevent bed bugs from climbing out,
`wherein bed bugs are trapped in the inner receptacle or outer
`receptacle as a result of being unable to climb out and
`wherein the inner receptacle includes a bottom surface on
`which the support leg is received such that bed bugs traveling
`from the furniture or other object are trapped in the inner
`receptacle and bed bugs traveling toward the furniture or other
`object are trapped in the outer receptacle.
`Ex. 1001, 11:18–39 (additional indentations and emphasis added);
`Ex. 1018, 2.
`
`PROFFERED WITNESS DECLARATIONS
`D.
`Petitioner supports its Petition with the Declaration of George
`Rotramel, PhD., dated June 27, 2017. Ex. 1022. Dr. Rotramel states that he
`received a Doctorate in Entomology in 1971 and has been “an independent
`consultant in matters relating to pests and pesticides since 1988.” Id.
`¶¶ 3–4.
`Patent Owner supports its Response with the Declaration of Louis N.
`Sorkin, B.C.E., dated October 25, 2017. Ex. 2001. Mr. Sorkin indicates that
`he received a Masters of Science in Entomology in 1978 and is a Senior
`Scientific Assistant in the Department of Entomology at the American
`Museum of Natural History. Id. at 17, 43. Patent Owner also supports its
`Response with the Declaration of Susan McKnight, dated October 25, 2017.
`Ex. 2003. Ms. McKnight states that she is the sole owner of Patent Owner.
`Id. ¶ 3.
`
`III. ANALYSIS
`In our analysis of Petitioner’s unpatentability contentions with respect
`to claims 1–17 of the ’973 patent, we next address the applicable principles
`of law; the level of ordinary skill in the art; the construction of the claim
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`terms “slippery” and “climbing out”; the scope and content of the asserted
`prior art; and then further analyze each alleged ground of unpatentability.
`PRINCIPLES OF LAW
`A.
`To prevail in its challenge to the patentability of claims 1–17 of the
`’973 patent, Petitioner must prove unpatentability by a preponderance of the
`evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). “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 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) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316,
`1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes
`review).
`In an inter partes review, “[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)12; Cuozzo Speed
`Techs., LLC v. Lee, 136 S. Ct. 2131, 2142 (2016) (upholding the use of the
`broadest reasonable interpretation standard). In determining the broadest
`
`12 Although the claim construction standard applied in inter partes review
`was recently changed to the federal court claim construction standard used in
`a civil action under 35 U.S.C. § 282(b), that change does not apply to this
`proceeding because the Petition was filed before November 13, 2018, the
`effective date of the change. See Changes to the Claim Construction
`Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial
`and Appeal Board, 83 Fed. Reg. 51,340, 51,344 (Oct. 11, 2018).
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`reasonable construction, we presume that claim terms carry their ordinary
`and customary meaning. See In re Translogic Tech., Inc., 504 F.3d 1249,
`1257 (Fed. Cir. 2007). A patentee may define a claim term in a manner that
`differs from its ordinary meaning; however, any special definitions must be
`set forth in the specification with reasonable clarity, deliberateness, and
`precision. See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`A patent claim is unpatentable as obvious if “the differences between”
`the claimed subject matter “and the prior art are such that the subject matter
`as a whole would have been obvious at the time the invention was made to a
`person having ordinary skill in the art to which said subject matter pertains.”
`35 U.S.C. § 103(a). An invention “composed of several elements is not
`proved obvious merely by demonstrating that each of its elements was,
`independently, known in the prior art.” KSR Int’l Co. v. Teleflex Inc., 550
`U.S. 398, 418 (2007). Rather, “it can be important to identify a reason that
`would have prompted a person of ordinary skill in the relevant field to
`combine the elements in the way the claimed new invention does.” Id.
`An obviousness determination “cannot be sustained by mere
`conclusory statements; instead, there must be some articulated reasoning
`with some rational underpinning to support the legal conclusion of
`obviousness.” Id. (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006));
`see In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir.
`2016). 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.
`Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966).
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`LEVEL OF ORDINARY SKILL IN THE ART
`B.
`In determining whether an invention would have been obvious at the
`time it was made, 35 U.S.C. § 103 requires us to resolve the level of
`ordinary skill in the pertinent art at the time of the invention. Graham,
`383 U.S. at 17. “The importance of resolving the level of ordinary skill in
`the art lies in the necessity of maintaining objectivity in the obviousness
`inquiry.” Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991).
`The person of ordinary skill in the art is a hypothetical person who is
`presumed to have known the relevant art at the time of the invention. In re
`GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Factors that may be
`considered in determining the level of ordinary skill in the art include, but
`are not limited to, the types of problems encountered in the art, the
`sophistication of the technology, and educational level of active workers in
`the field. Id. In a given case, one or more factors may predominate. Id.
`Generally, it is easier to establish obviousness under a higher level of
`ordinary skill in the art. Innovention Toys, LLC v. MGA Entm’t, Inc., 637
`F.3d 1314, 1323 (Fed. Cir. 2011) (“A less sophisticated level of skill
`generally favors a determination of nonobviousness . . . while a higher level
`of skill favors the reverse.”).
`Petitioner contends that a person of ordinary skill in the art at the time
`of the claimed invention would have had “knowledge of the history and
`literature concerning insect control devices, particularly as used for bed bug
`monitoring and trapping” and would have possessed either:
`(i) a bachelor’s or higher level degree in entomology or similar
`field and three or more years of experience working with bed
`bugs in a laboratory setting or working with bed bugs and bed
`bug traps in the field; or (ii) without a bachelor’s level degree in
`entomology or similar field, seven years of experience in a
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`laboratory setting or in the field working with bed bugs and bed
`bug traps.
`Pet. 18 (citing Ex. 1022 ¶ 15). Patent Owner does not contest Petitioner’s
`asserted level of ordinary skill in the art. PO Resp. 11.
`Based on the evidence provided, including the prior art of record, we
`agree with Petitioner’s proposed level of ordinary skill and also find that the
`prior art of record further reflects the level of ordinary skill in the art. See
`also Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (noting
`that the prior art of record may reflect the level of ordinary skill in the art).
`CLAIM CONSTRUCTION
`C.
`
`1. “slippery”
`Claims 1 and 16 each recite receptacles with surfaces that have “a
`surface roughness which is slippery to prevent bed bugs from climbing out.”
`Ex. 1001, 11:25–32, 12:33–42. Petitioner contends that “slippery” is
`indefinite, but argues that because the issue of indefiniteness cannot be
`raised in this case, it should be construed to mean “smooth.”13 Pet. 16–17
`(citing Ex. 1001, 5:41–45).
`With respect to the meaning of “slippery,” the ’973 patent states:
`The slippery surfaces can have the appropriate low friction as
`result of being made of a slippery material, such as polymer,
`glass, or polished metallic material having a relatively low
`coefficient of friction and/or by providing a friction-reducing
`
`13 Indefiniteness is not among the types of challenges on which an inter
`partes review can be instituted, therefore, we do not resolve the issue of
`whether “slippery” is indefinite. See 35 U.S.C. § 311(b) (providing that
`inter partes review is available “only on a ground that could be raised under
`section 102 or 103 and only on the basis of prior art consisting of patents or
`printed publications”). Nevertheless, we consider whether the claims have
`been shown to be obvious over the asserted references based on our
`interpretation of what “slippery” encompasses at a minimum.
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`(lubricating) substance thereon to this end. For purposes of
`illustration, the surfaces 12a, l2b and 14b have a molded or
`polished surface roughness Ra of about 100 microinches or less
`to this end.
`
`. . .
`The surface of the capture moat is to be smooth enough that no
`traction is provided for the bed bugs to engage their hooked tarsal
`claws on surface irregularities. A hard surface finish of high
`density polypropylene or polypropylene with a roughness
`average (Ra) of 100 microinch (2.54 micron) or less, smooth
`glass or polished metal does not provide traction for the bed bugs.
`Ex. 1001, 5:41–48, 7:63–8:2. Additionally, in discussing the Background of
`the Invention, the ’973 patent makes clear that it was known in the art how
`to create the slippery interior surface of a pitfall trap, stating:
`
`Smooth, hard surface of pitfall interior surface can be
`created from glass, ceramics, metals, finish treatments on
`polished wood, finish treatments on paper, and plastics. The
`surface roughness (Ra) of an optical grade mirror finish is 0 to
`0.5 microinch (0.0127 micron), of a satin finish is 50 to 60
`microinch (1.27 to 1.524 micron), and of an embossed or
`coarsely textured product is up to 300 microinch (7.62 micron).
`Id. at 2:34–41 (citation omitted).
`
`Patent Owner contends that “slippery” is not indefinite and that
`Petitioner’s proposed construction of “smooth” is incomplete, over-
`inclusive, overly broad, and not in conformance with the patent
`specification. PO Resp. 12–13. According to Patent Owner, “slippery”
`means either “low friction so that crawling arthropods cannot climb or have
`difficulty climbing the surface,” or “smooth enough that no traction is
`provided for the bed bugs to engage their hooked tarsal claws on surface
`irregularities.” Id. at 12.
`
`We explained in the Institution Decision that Petitioner may establish
`obviousness under its proposed analysis based on prior art that teaches low
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`friction surfaces that crawling arthropods cannot climb or have difficulty
`climbing because such a surface is encompassed by the claimed “surface that
`has a surface roughness which is slippery to prevent bed bugs from climbing
`out.” Patent Owner concedes our interpretation is appropriate for this case,
`and we adopt it unchanged for purposes of this Decision. See Inst. Dec. 10;
`PO Resp. 13–14.
`2. “climbing out”
`Claim 1 recites an “outer receptacle” with surfaces that are “slippery
`to prevent bed bugs from climbing out.” Ex. 1001, 11:29–33; see also id. at
`12:37–43 (claim 16 recites an outer receptacle with surfaces that are
`“slippery to prevent bed bugs in the outer receptacle from climbing out”).
`Patent Owner contends that “climbing out” means “climbing out of the outer
`receptacle,” as opposed to being prevented from climbing out of the
`intercepting device generally. PO Resp. 15. According to Patent Owner,
`this construction is consistent with the specification, which describes
`multiple pitfall traps. Id. at 16 (citing Ex. 1001, 4:42–47, Abstract).
`In Reply, Petitioner states that Patent Owner’s proposed construction
`is unnecessary because claim 1 expressly recites “wherein bed bugs are
`trapped in the inner receptacle or outer receptacle as a result of being unable
`to climb out.” Pet. Reply 2–3 (quoting Ex. 1001, 11:33–35). Thus,
`Petitioner agrees with Patent Owner that “the references to ‘climbing out’ in
`the preceding limitations refer to ‘climbing out’ of the “inner receptacle” and
`“outer receptacle.” Id. at 3; see also Tr. 14:5–24 (Petitioner indicating it
`agrees with Patent Owner’s construction of “climbing out” as referring to
`climbing out of the receptacle). Accordingly, we adopt Patent Owner’s
`undisputed contention that “slippery to prevent bed bugs in the outer
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`Patent 9,253,973 B2
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`receptacle from climbing out” means “slippery to prevent bed bugs in the
`outer receptacle from climbing out of the outer receptacle.”
`SCOPE AND CONTENT OF THE PRIOR ART
`D.
`To demonstrate the unpatentability of the challenged claims of the
`’973 patent, Petitioner relies on Jennerich, Lyng, Jennings, Anderson,
`Dempster, Lang, Metcalfe, Denton, McKnight ’812, and McGrath, each of
`which is briefly summarized below.
`1. Summary of Jennerich
`Jennerich, titled “Insect Trap,” generally relates to “traps for house
`
`and kitchen vermin, more particularly of insects such as cockroaches,
`blackbeetles and other beetles, the legs of which are provided with cupules
`or cleaving balls.” Ex.1002, p. 1, 1:1–5. The trap described by Jennerich “is
`intended for use in connection with certain powdery preparations, which
`may be styled paralyzing powders, which render the cupules and cleaving
`balls of insect legs ineffective.” Id. at p. 1, 1:43–47.
`Figure 1 of Jennerich is reproduced below.
`
`
`Figure 1 illustrates a cross-sectional view of an embodiment of the trap
`described by Jennerich. Ex. 1002, p.1, 2:6–8.
`The trap shown in Figure 1 “consists of a basin made for instance of
`earthenware with slanting and, if desired, roughened outer walls a, from
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`which a smoothly inclined surface a’ and a rounded glazed portion b leads
`into a catching space k.” Id. at p.1, 2:28–33. Paralyzing powder h is strewn
`over the “nearly horizontal trough” formed by inclined surface a’ and the
`upper part of the rounded portion b. Id. at p. 1, 2:33–37. Insects reaching
`the portion a’ get their legs into powder h and “cannot help gliding down
`into catching space k,” which is also strewn with paralyzing powder h. Id. at
`p.1, 2:35–41. “In the middle of the trap, bordered by the projecting rim c,
`there is arranged a perforated receptacle g, containing the bait, which
`supports a plate i filled with water and serving as a spittoon.” Id. at p.1,
`2:41–45. Spittoon plate I may be replaced if not wanted by a suitable cap.
`Id. at p.3, 1:5–7.
`Figure 5 of Jennerich is reproduced below.
`
`
`
`Figure 5 of Jennerich illustrates a cross-sectional view of a second
`embodiment of a trap with similar features to the trap shown in Figure 1,
`including:
`an inclined wall a, a smoothly inclined surface a’ connecting the
`top of said inclined wall with a slightly depressed area b’ which
`is practically horizontal and capable of receiving and retaining
`paralyzing powder h, a deeply depressed catching space k which
`may also contain paralyzing powder h and a central space g
`which receives the bait f.
`Ex. 1002, p. 2, 1:24–32.
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`2. Summary of Lyng
`Lyng, titled “Trap for Crawling Insects,” describes “an insect trap
`
`constructed in the form of a box having an open front end and a removable
`top.” Ex. 1007, Abstract. “The box, removable top and ramp elements are
`fabricated from a material which provides a smooth and slippery surface.”
`Id. “A preferred material due to its cost and workability is polyethylene,
`which readily may be cast-molded or blow-molded to form the elements of
`the trap.” Id. at ¶ 23. According to Petitioner, “Lyng discloses the use of an
`interior trap surface with a surface roughness that is slippery to prevent bed
`bugs from climbing out, and teaches the use of the same materials identified
`in the ’973 [patent] Specification.” Pet. 25.
`3. Summary of Jennings
`Jennings, titled “Insect-Trap,” describes a trap in which “the insect
`
`passes down through an opening in the top of a receptacle and drops into a
`recess from which it is unable to escape.” Ex. 1006, 1:8–12. The trap
`includes polished zones from which the weight of the insect body carries it
`into the trap. Id. at 1:43–49.
`4. Summary of Anderson
`Anderson, titled “Protective Pet Dish,” is directed to a device for
`preventing crawling insects from climbing into a pet dish. Ex. 1003,
`Abstract.
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`Figures 3 and 4 of Anderson are reproduced below.
`
`
`
`Figure 3 illustrates a cross-sectional view of support leg 22 and moat cup 23
`of protective pet dish 10 shown in exploded view in Figure 4. Ex. 1003,
`3:49–52, 3:62–63, 4:55. Each moat cup 23 has base 24, inner ring 25, and
`outer ring 26. Id. at 4:55–57. Moat space 28 between inner ring 25 and
`outer ring 26 holds fluid 29 “for preventing crawling insects from reaching
`the support legs 22. Id. 4:66–5:2. The lower end of each support leg 22 is
`inserted into the center space 27 of the associated moat cup 23. Id. at 5:2–3.
`5. Summary of Dempster
`Dempster, titled “Roach-Trap,” describes a trap “adapted to cause
`such insects to walk designedly into it, and capable of effectually preventing
`such insects from escaping from it.” Ex. 1024, p. 2, ll. 16–19.
`Figure 2 of Dempster is reproduced below.
`
`
`Figure 2 illustrates a central vertical sectional view of a roach trap.
`Ex. 1024, p. 2, ll. 38–41. According to Petitioner, “Dempster discloses an
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`insect trap specifically adapted to catch insects by providing an exterior wall
`3 that slopes upwardly at an angle to vertical and is made climbable by
`virtue of roughened outer faces 4.” Pet. 39–40 (citing Ex. 1024, p. 2, ll. 16–
`17, 48–56, Figs. 1, 2). Dempster also teaches that the trap has “smooth inner
`faces to prevent insects from crawling up the walls and escaping from the
`trap.” Id. at p. 2, ll. 60–63.
`6. Summary of Lang
`Lang, titled “Bed Bug Monitor,” describes an “insect monitoring and
`trapping device,” including a base and a lid, a heating device within the trap
`to attract insects, and an adhesive surface for trapping insects. Ex. 1008,
`Abstract. According to Petitioner, “Lang teaches that it may be preferable to
`have inclined and textured exterior surfaces on bed bug traps to facilitate the
`bugs’ ability to crawl into the trap.” Pet. 40 (citing Ex. 1008 ¶ 73, Figs 10,
`11).
`
`7. Summary of Metcalfe
`Petitioner contends that Metcalfe, titled “Method and Apparatus for
`Controlling Pests,” teaches using powders to inhibit the ability of bugs to
`escape the trap. Pet. 51 (citing
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