Trials@uspto.gov
`571.272.7822
`
`
`
`
`
` Paper 35
`Date: October 30, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`POWER-PACKER NORTH AMERICA, INC.
`d/b/a GITS MANUFACTURING CO.,
`Petitioner,
`v.
`G.W. LISK CO., INC.,
`Patent Owner.
`____________
`
`IPR2017-02034
`Patent 6,601,821 B2
`____________
`
`
`Before BART A. GERSTENBLITH, GEORGE R. HOSKINS, and
`TIMOTHY J. GOODSON, Administrative Patent Judges.
`
`GERSTENBLITH, Administrative Patent Judge.
`
`
`DECISION
`Denying Patent Owner’s Request on Rehearing of Final Written Decision
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`

`

`IPR2017-02034
`Patent 6,601,821 B2
`
`
`INTRODUCTION
`I.
`Power-Packer North America, Inc. d/b/a GITS Manufacturing Co.
`(“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting institution of inter
`partes review of claims 1–11 of U.S. Patent No. 6,601,821 B2 (Ex. 1001,
`“the ’821 patent”). G.W. Lisk Company, Inc. (“Patent Owner”) filed a
`Preliminary Response (Paper 6). The Petition asserts the following grounds:
`Claim(s)
`Challenged Ground
`1
`1–10
`11
`2
`1–5
`3
`1–10
`4
`11
`5
`
`35 U.S.C. §
`102
`103(a)
`102
`103(a)
`103(a)
`
`Reference(s)
`Martin1
`Martin and Oleksiewicz2
`Eggers3
`Eggers and Martin
`Eggers, Martin, and Oleksiewicz
`
`Pet. 3.
`In accordance with the Board’s practice at that time, we instituted
`review only on the challenges for which Petitioner showed a reasonable
`likelihood of prevailing—Grounds 1, 2, and 3. See Paper 8, 41 (“Dec. on
`Inst.”). Specifically, we determined based on the preliminary record that
`Petitioner had demonstrated a reasonable likelihood of prevailing in all of its
`challenges, except for the challenges to claims 1–10 in Ground 4, and
`claim 11 in Ground 5. Id. at 28, 31, 36, 40–41. Subsequently, pursuant to
`
`
`1 U.S. Patent No. 4,201,116, issued May 6, 1980 (Ex. 1002, “Martin”).
`2 U.S. Patent No. 6,006,732, issued Dec. 28, 1999 (Ex. 1007,
`“Oleksiewicz”).
`3 German Published Examined Application No. 1268494, published May 16,
`1968 (Ex. 1003). Exhibit 1004 (“Eggers”) is the English-language
`translation, and also includes a certificate of translation.
`
`2
`
`

`

`IPR2017-02034
`Patent 6,601,821 B2
`
`SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348, 1355–57 (2018),4 we modified
`the Decision on Institution to institute review of all grounds and claims
`presented in the Petition. Paper 10.
`After institution of trial, Patent Owner filed a Patent Owner Response
`(Paper 17, “PO Resp.”), and Petitioner filed a Reply (Paper 24,
`“Pet. Reply”). Petitioner supported its arguments with a declaration by
`Mr. Thomas J. Labus, dated August 30, 2017 (Ex. 1005). Patent Owner
`supported its Response with a second declaration by Dr. Kevin C. Craig,
`dated June 22, 2018 (Ex. 2003).5 Patent Owner submitted a Motion for
`Observations on Cross-Examination of Kevin C. Craig, Ph.D. (Paper 26),
`and Petitioner submitted a Response to Patent Owner’s Motion for
`Observations (Paper 27). Oral argument was held on December 12, 2018, a
`transcript of which is included in the record.6 Paper 30 (“Tr.”). We issued a
`Final Written Decision (Paper 31 (“Final Dec.”)) in which we determined
`that Petitioner had shown by a preponderance of the evidence that claims 1–
`5 of the ’821 patent are unpatentable (Ground 3), but had not shown by a
`preponderance of the evidence that claims 6–11 are unpatentable
`(Grounds 1, 2, 4, and 5). Final Dec. 68.
`
`
`4 See also “Guidance on the Impact of SAS on AIA Trial Proceedings”
`(Apr. 26, 2018), available at https://www.uspto.gov/patents-application-
`process/patent-trial-and-appeal-board/trials/guidance-impact-sas-aia-trial
`(explaining that a decision granting institution will institute on all challenged
`claims and on all grounds presented in a petition).
`5 Patent Owner previously submitted a declaration by Dr. Craig (Ex. 2001,
`“First Craig Declaration”) with its Preliminary Response and continues to
`rely on the First Craig Declaration in support of its Response. See, e.g., PO
`Resp. 16 (citing Ex. 2001, 12).
`6 We held oral argument in this case contemporaneously with oral argument
`in related case IPR2017-02035, creating a single transcript for both cases.
`
`3
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`

`

`IPR2017-02034
`Patent 6,601,821 B2
`
`
`On April 17, 2019, Patent Owner filed a Request for Rehearing.
`Paper 32 (“Req. Reh’g” or “Request”). On May 20, 2019, before a decision
`on Patent Owner’s Request, Petitioner filed a Notice of Appeal. Paper 33.
`Patent Owner then filed a Protective Notice of Cross Appeal. Paper 34. The
`U.S. Court of Appeals for the Federal Circuit determined that the parties’
`appeals were premature (Ex. 3001), dismissed the appeals (Ex. 3002), and
`issued a Mandate (Ex. 3003), returning the case to the Board. Accordingly,
`we now address Patent Owner’s Request.
`
`II. ANALYSIS
`The burden of showing that the outcome of the Final Written Decision
`should be modified is on Patent Owner, the party challenging the Final
`Written Decision. See 37 C.F.R. § 42.71(d). In addition, “[t]he request must
`specifically identify all matters the party believes the Board misapprehended
`or overlooked, and the place where each matter was previously addressed in
`a motion, an opposition, or a reply.” Id.
`Patent Owner’s Request is focused on our consideration of Ground 3,
`whether Eggers anticipates claims 1–5 of the ’821 patent. Req. Reh’g 1. In
`particular, Patent Owner asserts
`the Board overlooked and/or misapprehended the fact that there
`is no evidence of record to support the holding that Eggers
`discloses a proportional control valve assembly wherein an
`“aggregate force” is being applied on the directional valve
`which can be calculated by “summing of the force provided
`with each pulse” (Final Decision at 59-60) so as to anticipate
`claim 1 of the ‘821 Patent.
`Id. Additionally, Patent Owner contends we “overlooked and/or
`misapprehended evidence and argument of record showing that Eggers
`
`4
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`

`IPR2017-02034
`Patent 6,601,821 B2
`
`instead fails to disclose the claimed proportional valve assembly as
`construed in the Final Decision.” Id.
`Patent Owner’s argument turns on the construction of the term
`“proportional,” as recited in claim 1, and the application of Eggers to the
`claim as properly construed. Claim 1 is reproduced below.
`1.
`A two-stage proportional control valve assembly
`comprising:
`a flow-regulating valve that regulates a flow of a first
`
`fluid;
`
`a double-acting actuator powered by a second fluid for
`moving the flow-regulating valve in different open and closed
`directions for correspondingly opening and closing the flow-
`regulating valve;
`a directional valve that controls a flow of the second fluid
`to the double-acting actuator;
`an electrical actuator that converts a control signal into a
`force acting on the directional valve for adjusting a position of
`the double-acting actuator in accordance with the control signal;
`the double-acting actuator having
`(a) a first surface arranged for exposure to fluid
`pressure of the second fluid for moving the flow-
`regulating valve in the open direction and
`(b) a second surface arranged for exposure to fluid
`pressure of the second fluid for moving the flow-
`regulating valve in the closed direction; and
`the directional valve being movable under influence of
`the electrical actuator between
`(a) a first position that directs a flow of the second
`fluid to the first surface of the double-acting actuator and
`(b) a second position that directs a flow of the
`second fluid to the second surface of the double-acting
`actuator.
`Ex. 1001, 7:13–41 (emphasis added).
`In the Final Written Decision, we noted that “the parties now agree
`the term ‘proportional,’ recited in the preamble of claim 1, is limiting” (Final
`
`5
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`

`

`IPR2017-02034
`Patent 6,601,821 B2
`
`Dec. 10), and we construed “proportional” in accordance with its plain and
`ordinary meaning—“corresponding to”—such that “the force acting on the
`directional valve and consequently the movement of the double-acting
`actuator is proportional to (i.e., corresponds to) the control signal” (Final
`Dec. 16; see Dec. on Inst. 12 (same)). We also clarified that “the force
`acting on the directional valve and the movement of the double-acting
`actuator correspond in size, degree, or intensity to the control signal.” Final
`Dec. 16. Whether Eggers discloses a proportional control valve assembly
`was at issue from the preliminary phase of the proceeding and throughout
`trial. See, e.g., Dec. on Inst. 35–36 (discussing Patent Owner’s argument in
`its Preliminary Response that Eggers fails to disclose a two-stage
`proportional control valve assembly).
`In applying Eggers to claim 1, Patent Owner contended that Eggers
`fails to disclose a proportional control valve assembly because “the
`magnitude or strength of the input pulse to the Eggers stepper motor does
`not matter. So long as the pulse exceeds a certain threshold, the stepper
`motor moves the actuating drive a single distance unit.” PO Resp. 46–47
`(citing Ex. 1004, 4:4–5). Patent Owner challenged Petitioner’s evidence,
`including the testimony of Petitioner’s expert, Mr. Labus, asserting that his
`analysis focused on the number of pulses as opposed to the magnitude of the
`pulses. Id. at 47–49. As borne out during the oral hearing, Patent Owner
`explained that because the amount of force per pulse does not change, the
`force exerted on the actuating drive is not proportional to the magnitude or
`strength of the input pulse. See, e.g., Tr. 43:14–45:26.
`Petitioner noted that Dr. Craig, Patent Owner’s expert, admitted
`during his deposition that Eggers discloses a proportional valve. Reply 20
`
`6
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`IPR2017-02034
`Patent 6,601,821 B2
`
`(citing Ex. 1015, 37:6–9). Additionally, Petitioner contended that Patent
`Owner’s argument was based on an overly narrow construction of
`proportional that focused solely on the strength of a control signal. Id. at 21.
`In considering the parties’ arguments and evidence of record, we
`determined that Eggers should be considered during the entire time period
`discussed therein, i.e., t0–t1. Final Dec. 59. During that time period, Eggers
`discloses that a force is applied at each of four steps. Id. at 58–60 (citing
`Ex. 1004, 4:15–16, 5:7–8, 5:25–6:3). We agreed with Patent Owner that the
`force applied from each pulse (i.e., at each step) was the same. In our
`analysis, however, we focused solely on the magnitude of the force, which
`led to considering the aggregate force from each pulse as a sum, as opposed
`to the broader meaning of “corresponding to” (discussed further below),
`which is not limited to only magnitude. We explained that because Eggers
`moves its actuating drive further with each pulse, the magnitude of Eggers’
`aggregate force increases in proportion to the number of pulses (and thus as
`the number of pulses increase, Eggers’ double-acting actuator moves
`further). Id. at 59–60.
`Nonetheless, we did not need to focus solely on the magnitude of the
`force, whether aggregated or not, because “proportional” encompasses more
`than simply magnitude. In particular, to be “proportional” means to
`correspond in size, degree, or intensity. Final Dec. 16. Eggers’ device
`receives one pulse and a force is applied, resulting in movement of a
`corresponding distance. Eggers’ device receives a second pulse and a force
`is again applied, resulting in additional movement of the same corresponding
`distance. Eggers discloses receiving four pulses, transmitting force four
`times, and moving its double-acting actuator a distance corresponding to
`
`7
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`

`

`IPR2017-02034
`Patent 6,601,821 B2
`
`those four pulses. See id. at 58–60 (discussing Eggers’ Figure 2). Thus,
`Eggers discloses a proportional control valve assembly because (a) the force
`applied has a one-to-one correspondence (in size, degree, or intensity) to the
`control signal (i.e., each pulse from the control signal produces a force) and
`(b) the movement of the double-acting actuator has correspondence (in size,
`degree, or intensity) to the control signal (i.e., each pulse results in a
`corresponding movement of the double-acting actuator). Our conclusion is
`based on the arguments and evidence presented by the parties, including the
`testimony from each party’s expert. See, e.g., Ex. 1005 (Labus Declaration)
`¶ 45 (testifying that “[t]he actuating drive is adjusted in proportion to an
`input of the electromechanical component, a stepper motor, by one distance
`unit for each pulse”); Ex. 1015 (Deposition Transcript of Dr. Craig), 37:6–9
`(“Q. And would you consider that a proportional valve? . . . The Witness: I
`would.”).7 Thus, although we clarify our Final Written Decision as
`discussed above, the result remains the same—Petitioner has established by
`a preponderance of the evidence that Eggers anticipates claims 1–5 of the
`’821 patent.
`
`
`7 Additionally, claim 1 expressly ties adjusting the position of the double-
`acting actuator to the control signal. Ex. 1001, 7:24–27 (“an electrical
`actuator that converts a control signal into a force acting on the directional
`valve for adjusting a position of the double-acting actuator in accordance
`with the control signal”). Thus, the position of the double-acting actuator is
`adjusted in accordance with the control signal.
`
`8
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`

`

`IPR2017-02034
`Patent 6,601,821 B2
`
`
`III. CONCLUSION
`For the foregoing reasons, on this record, we modify our Final Written
`Decision as discussed above. Nonetheless, we maintain our determination
`that Petitioner established by a preponderance of the evidence that Eggers
`anticipates claims 1–5 of the ’821 patent.
`Outcome of Decision on Rehearing:
`
`Claims
`
`35 U.S.C. §
`
`Basis
`
`Denied
`
`Granted
`
`102
`
`Eggers
`
`1–5
`
`
`
`1–5
`
`Final Outcome of Final Written Decision after Rehearing:
`Claims
`Claim(s) Not
`Shown
`Shown
`Unpatentable
`Unpatentable
`
`1–10
`
`Claim(s) 35 U.S.C. §
`
`Basis
`
`1–10
`
`102
`
`11
`
`1–5
`
`1–10
`
`11
`
`Overall
`Outcome
`
`
`
`103
`
`102
`
`103
`
`103
`
`
`
`Martin
`Martin and
`Oleksiewicz
`Eggers
`Eggers and
`Martin
`Eggers,
`Martin, and
`Oleksiewicz
`
`
`
`
`1–5
`
`
`
`
`
`1–5
`
`11
`
`
`
`1–10
`
`11
`
`6–11
`
`IV. ORDER
`It is ORDERED that Patent Owner’s Request for Rehearing
`(Paper 32) is denied.
`
`
`
`
`9
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`

`

`IPR2017-02034
`Patent 6,601,821 B2
`
`For PETITIONER:
`
`Edward R. Lawson Jr.
`Kevin P. Moran
`Jonathan H. Margolies
`Katherine W. Schill
`MICHAEL BEST & FRIEDRICH LLP
`erlawson@michaelbest.com
`kpmoran@michaelbest.com
`jhmargolies@michaelbest.com
`kwschill@michaelbest.com
`
`
`For PATENT OWNER:
`
`Brian B. Shaw
`Michael J. Berchou
`Alfred Y. Chu
`Andrew J. Anderson
`HARTER SECREST & EMERY LLP
`patents@hselaw.com
`bshaw@hselaw.com
`mberchou@hselaw.com
`achu@hselaw.com
`aanderson@hselaw.com
`
`
`
`
`10
`
`