Trials@uspto.gov Paper No. 8
`571-272-7822
`
` Entered: June 20, 2018
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`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`OLYMPIA TOOLS INTERNATIONAL, INC.,
`Petitioner,
`v.
`JPW INDUSTRIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-00388
`Patent 9,079,464 B2
`____________
`
`
`
`Before JOSIAH C. COCKS, ULRIKE W. JENKS, and
`MICHAEL L. WOODS, Administrative Patent Judges.
`
`JENKS, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`571-272-7822
`
` Entered: June 20, 2018
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`OLYMPIA TOOLS INTERNATIONAL, INC.,
`Petitioner,
`v.
`JPW INDUSTRIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-00388
`Patent 9,079,464 B2
`____________
`
`
`
`Before JOSIAH C. COCKS, ULRIKE W. JENKS, and
`MICHAEL L. WOODS, Administrative Patent Judges.
`
`JENKS, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`Case IPR2018-00388
`Patent 9,079,464 B2
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`I. INTRODUCTION
`Olympia Tools International, Inc. (“Petitioner”), filed a Petition
`requesting an inter partes review of claims 1, 3, 5–8, 12, and 21–25 of U.S.
`Patent No. 9,079,464 (Ex. 1001, “the ’464 patent”). Paper 1 (“Pet.”). JPW
`Industries, Inc. (“Patent Owner”) filed a Preliminary Response to the
`Petition. Paper 7 (“Prelim. Resp.”).
`We have authority under 35 U.S.C. § 314, which provides that an
`inter partes review may not be instituted “unless . . . there is a reasonable
`likelihood that the Petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration
`of the arguments and evidence presented in the Petition and the Preliminary
`Response, we are not persuaded that Petitioner has established a reasonable
`likelihood that it would prevail in any of its challenges with respect to any of
`claims 1, 3, 5–8, 12, and 21–25 of the ’464 patent. Accordingly, we deny
`institution of an inter partes review of claims 1, 3, 5–8, 12, and 21–25.
`
`
`Related Proceedings
`A.
`Petitioner identifies district litigation involving claims 1, 3, 5–8, 12,
`and 21–25 of the ’464 patent in JPW Industries, Inc., v. Olympia Tools
`International, Inc., United States District Court, Central District of
`California, No. 2:17-cv-07415. Pet. 2. Petitioner identifies no other related
`matters for inter partes review of the ’464 patent.
`
`
`The ’464 Patent (Ex. 1001)
`B.
`The ’464 patent issued from Application No. 13/301,359 (“the ’359
`application”), filed on Nov. 21, 2011.
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`The ’464 patent, entitled “Portable Work Holding Device and
`Assembly,” relates to a vise that is portable and can be mounted onto a
`vehicle hitch or onto a work surface with device support. Figure 7,
`reproduced below, shows a portable vise attached to a vehicle hitch.
`
`
`“FIG. 7 is a perspective view of an exemplary work holding device coupled
`to a vehicle receiver hitch.” Ex 1001, 2:33–34. First connection member 16
`is inserted into vehicle receiver hitch 110, and secured by a pin. Id. at 5: 50–
`53. Holding device 10, includes stationary first jaw piece 12 (not identified
`in figure 7 above) having casting 14 and elongated first connection member
`16 extending from a first end of the casting, and the device also includes
`second movable jaw piece 30. Id. at 3:15–39. First connection member 16
`is a square tube extending from casting 14. Id. at 5: 55–56. First jaw piece
`12 has casting 14 and an anvil surface 108. Id. at 5: 45–46. Holding device
`10 includes handle 80 operatively coupled to spindle 52 (not shown in figure
`7 above). Id. at 4:49–50. “Handle 80 is configured to be fixed in a locked
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`position to facilitate transporting work holding device 10, such as when
`work holding device 10 is coupled to a vehicle receiver hitch.” Id. at 4:55–
`58.
`
`Figure 2, reproduced below, shows a cross section of the portable vise
`assembly.
`
`
`“FIG. 2 is a cross-section view of the work holding device.” Id. at 2:23–24.
`Anvil surface 108 is raised above first jaw piece 12 and second jaw piece 30
`to provide a work surface while mounted to the support. Id. at 5:45–48.
`Movable second jaw piece 30 includes elongated second connection member
`32 (element not identified in figure 2 above but visible in figure 1) extending
`from a first end of second jaw piece 30. Id. at 3:37–39. Handle 80 is
`operatively coupled to spindle 52 and moves jaw piece 30 in and out from
`the assembly. See id. at 4:48 to 5:2.
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`Some of the other elements, shown in Figure 2 above, are identified as
`follows:
`Elements 16, 20, 22, and 24: First connection member 16 is a two-
`inch square tube extending from casting 14. Id. at 5:55–56. First connection
`member 16 defines first passage 20 that extends between second end 22 and
`opposing first end 24. Id. at 3:19–21.
`Elements 34, 36, and 38: Second passage 34 that extends between
`second end 36 and opposing first end 38. Id. at 3:42–44.
`Element 40, 42, and 52: Spindle assembly 40 also includes spindle 52
`operatively coupled to spindle nut 42. Id. at 3:6–7.
`Elements 44, 48, and 50: Spindle nut 42 has first end 48 and opposing
`second end 50. Id. at 4:4–5. Helical thread 44 is formed on at least a
`portion of inner surface 46 of spindle nut 42. Id. at 4:2–3. Spindle nut 42
`extends through first passage 20 and into second passage 34. Id. at 4:1–2.
`Elements 54, 56, 58, and 60: Helical thread 54 is formed on at least a
`portion of outer surface 56 of spindle 52 along a length of spindle 52
`between first end 58 and opposing second end 60 of spindle 52. See id. at
`4:6–19.
`
`
`Illustrative Claims
`C.
`Claims 1, 3, 5–8, 12, and 22–25 of the ’464 patent are challenged.
`Claims 1, 8, 23, and 24 are independent. Claims 1 and 23 of the ’464 patent
`are illustrative and reproduced below:
`1. A work holding device, comprising:
`a first jaw piece having an elongated first connection member for
`connecting the work holding device to a support, the first
`connection member defining a first passage, the first
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`connection member being configured as a generally square
`elongated tube shaped for mounting in a receiver hitch of a
`vehicle, the first connection member having a first end at the
`first jaw piece and a second end;
`a second jaw piece having an elongated second connection
`member positionable within the first passage and defining a
`second passage in communication with the first passage, the
`second connection member having a first end at the second
`jaw piece and a second end opposite the first end, the second
`passage being in communication with the first passage at the
`second end of the second connection member; and
`a spindle assembly movably connecting the second jaw piece to
`the first jaw piece, the spindle assembly configured to move
`the second jaw piece with respect to the first jaw piece to
`create a clamping pressure when an object is placed between
`the first jaw piece and the second jaw piece, the second end
`of the second connection member being enclosed within the
`first connection member regardless of the position of the
`second jaw relative to the first jaw.
`Ex. 1001, 7:2–27.
`23. A portable work holding device assembly, comprising:
`a work holding device, comprising:
`a first jaw piece having an elongated connection member for
`connecting the work holding device to a support, the
`elongated connection member including a generally
`square elongated tube that is shaped and configured to fit
`into a receiver hitch of a vehicle;
`a second jaw piece; and
`a spindle assembly movably connecting the second jaw piece
`to the first jaw piece, the spindle assembly comprising a
`threaded spindle rotatable to move the second jaw piece
`with respect to the first jaw piece; and
`a plate assembly comprising:
`a member including a plurality of walls defining a passage
`having a complementary cross-section to receive the
`elongated connection member; and
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`one or more brackets coupled to a corresponding wall of the
`plurality of walls of the member, the one or more bracket
`each defining one or more apertures to facilitate coupling
`the work holding device to a support surface.
`Ex. 1001, 9:8–29.
`The Prior Art
`D.
`Petitioner relies upon the following prior art references:
`Cornes
`Cornes, US 2010/0072240 A1, published
`Ex. 1006
`March 25, 2010
`Long, US 742,096, issued Oct. 20, 1903
`Simpson, US 2,841,035, issued
`May 13, 1955
`Murray et al., US 2005/0082730 A1,
`published Apr. 21, 2005
`
`Long
`Simpson
`
`Murray
`
`Ex. 1007
`Ex. 1008
`
`Ex. 1009
`
`
`Petitioner also relies upon the Declaration of Michael O’Banion.
`Ex. 1003.
`
`
`The Asserted Grounds of Unpatentability
`E.
`Petitioner challenges the patentability of claims 1, 3, 5–8, 12, and
`21-25 of the ’464 patent on the following grounds. Pet. 7:
`Claims Challenged Basis
`References
`
`1, 3, 5–8, and 22–25 § 102(b)
`
`Cornes
`
`Cornes
`
`Cornes in view of Long or Murray
`
`§ 103(a)
`
`§ 103(a)
`
`23
`
`23
`1, 3, 5–8, 22, 24, and
`25
`12
`
`§ 103(a)
`
`Cornes in view of Long
`
`§ 103(a)
`
`Cornes, Long, and Simpson
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`Claims Challenged Basis
`21
`§ 103(a)
`
`References
`Cornes, Long, and Murray
`
`
`
`II. ANALYSIS
`A. Claim Construction
`In an inter partes review, the Board interprets claim terms in an
`unexpired patent according to the broadest reasonable construction in light
`of the specification of the patent in which they appear. 37 C.F.R.
`§ 42.100(b); see In re Cuozzo Speed Techs., LLC, 136 S. Ct. 2131, 2142
`(2016) (upholding the use of the broadest reasonable interpretation
`standard). Under that standard, and absent any special definitions, we give
`claim terms their ordinary and customary meaning, as would be understood
`by one of ordinary skill in the art at the time of the invention. In re
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`
`We consider the meaning of the claim term “passage.” The ’464
`patent does not specifically define the term “passage.” The ’464 patent
`describes:
`[A] stationary first jaw piece 12 having a casting 14 and an
`elongated first connection member 16 extending from a first end
`of casting. . . . First connection member 16 defines a first passage
`20, . . . that extends between a second end 22 and an opposing
`first end 24 of first connection member 16.
`Ex. 1001, 3:15–22, see Fig. 2. This description makes clear that the passage
`runs from one end of the connection member to the opposing other end of
`the connection member. It also is apparent from the ’464 patent that by
`extending between the first and second ends (elements 24 and 22,
`respectively) of connection member 16, the passage is a continuous space
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`between those ends, that receives a spindle assembly that movably couples
`jaw pieces therein. See, e.g., id. at 3:9–13, 3:37–39, 4:1–2. The spindle
`assembly requires two pieces, a spindle nut 42 and a spindle 52, which are
`operatively coupled only after they are inserted from opposite ends though
`connection member 16. See, e.g., id. at 3:9–13, 3: 36–33, 4:1–2, 4:6–7,
`5:53-54, Fig. 2.
`The ordinary and customary meaning of the term “passage”1 is “a way
`of exit or entrance: a road, path, channel, or course by which something
`passes” or “a corridor or lobby giving access to the different rooms or parts
`of the building.” When considering the ordinary and customary use of the
`term “passage” as read in light of the specification of the ’464 patent, we
`construe a “passage” to describe a tube having an opening on both ends so
`that it defines the path between the two opposing openings. In other words,
`we construe a “passage,” in the context of a “connection member defining a
`. . . passage,” to be, “a continuous open space extending from the first
`opening on one end of the connection member to a second opening at the
`opposing second end of the connection member.”
`For purposes of this decision and on this record, no other claim terms
`require express construction. We note, however, that there is disagreement
`with respect to several claim terms between the two parties (compare Pet.
`10–11, with Prelim. Resp. 4–6), but we do not address these disputed terms
`because we do not rely any of them in reaching our decision. See Wellman,
`Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim
`
`
`1 “passage.” Merriam-Webster Online Dictionary. https://www.merriam-
`webster.com/dictionary/passage (last visited May 7, 2018).
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`terms need only be construed ‘to the extent necessary to resolve the
`controversy’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
`F.3d 795, 803 (Fed. Cir. 1999)).
`
`
`B. Ground 1: Anticipation by Cornes
`Petitioner asserts that claims 1, 3, 5–8, and 22–25 of the ’464 patent
`are anticipated by Cornes. Pet. 27. Patent Owner counter argues that
`“Cornes does not disclose an ‘elongated first connection member.’” Prelim.
`Resp. 8. Specifically, Patent Owner asserts that Cornes’ “tube 36 is not
`connected to the first jaw piece” as required by the claims, “the first jaw
`piece instead is connected to receiving sleeve 33.” Id. Patent Owner
`contends that the combination of parts in Cornes does not provide a
`connection member having a first passage because plate 52 is welded
`between parts 33 and 36 and Cornes. Id. at 9.
`For the reasons set forth below, we agree with Patent Owner that
`Petitioner does not identified sufficient evidence to support the positon that
`Cornes anticipates the claims.
`1. Cornes (Ex. 1006)
`Cornes discloses a vise that can be attached to the trailer hitch.
`Ex. 1006, Abstract. Figure 1 of Cornes is reproduced below:
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`FIG. 1 is a perspective view of a vehicle-mounted vise showing the movable
`vise jaw attached to the stationary vise jaw which attaches to a vehicle trailer
`hitch receiver. Id. ¶ 24. Stationary vise jaw 30 further comprises stationary
`jaw 32 facing outwardly away from an outer end of the vise insertion tube
`36. Id. ¶ 34. Stationary vise jaw 30 and movable vise jaw 20 have close
`tolerance fits between moving parts and are each sealed to prevent particles
`and moisture from penetrating into interior spaces preventing malfunction
`and prolonging the life of the device. Id. ¶ 40.
`Fig. 3 is a perspective view of the individual parts of the stationary
`jaw of the vise.
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`FIG. 3 shows the parts of the stationary vise jaw aligned for assembly.
`Id. ¶ 26. Receiving sleeve 33 has an outer receiving opening in the outer
`face of the stationary jaw. Id. ¶ 35. Stationary jaw 32 is welded on top of
`receiving sleeve 33. Id. ¶ 34. Outer threaded stationary shaft 51 is inside
`receiving sleeve 33. Id. ¶ 35. Outer threaded stationary shaft 51 is welded
`to shaft receiving plate 52 and welded to vise insertion tube 36. Id. ¶ 35.
`
`
`2. Discussion—Anticipation by Cornes
`
`Claim 1
`Petitioner asserts that Cornes discloses an elongated connection
`member for connecting the work holding device to the support. Pet. 27; Id.
`at 24 (citing Ex. 1003 ¶¶ 83–194). Petitioner relies on Cornes for disclosing
`receiving sleeve 33 and insertion tube 36 with the vise jaw 30 as meeting the
`limitation of the elongated first connection member. Pet. 27. Specifically,
`Petitioner relies on “[t]he receiving sleeve 33 is a squared tubular member
`and therefore defines a first passage therein.” Id.
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`Claim 1 requires a “first connection member defining a first passage.”
`Claim 1 also recites, “the first connection member having a first end at the
`first jaw piece and a second end.” Patent Owner contends that claim 1, thus,
`requires that the first connection member defines a first passage and that the
`connection member must include a connected first jaw piece. Prelim.
`Resp. 8.
`Patent Owner argues that Cornes’ “insertion tube 36 is not connected
`to the first jaw piece. . . . Instead, the first jaw piece is connected to
`receiving sleeve 33.” Id. Thus, it is Patent Owner’s view that insertion tube
`36 and receiving sleeve 33 must be taken together to account for the claimed
`first connection member. According to Patent Owner, components 36 and
`33 of Cornes are physically separated by a solid receiving plate, part number
`52, which is welded between parts 33 and 36. Id. at 9 (citing Ex. 1006, [34],
`Fig. 3). Patent Owner, thus, asserts that the combination of Cornes’
`components 33 and 36 does not define a connection member having a “first
`passage” as required in claim 1. Prelim. Resp. 9.
`We agree with Patent Owner that Cornes does not satisfy the claimed
`“first connection member defining a first passage.” Id. As discussed above
`in the Claim Construction section (see II.A), a “passage” is “a continuous
`open space extending from the first opening on one end of the connection
`member to a second opening at the opposing second end of the connection
`member.” This is shown, for instance, in figure 2 of the ’464 patent, where
`passage 20 spans the length of member 16 between opening 24 of the
`stationary vise jaw and second end 22. See Ex. 1001, Fig. 2, see 3:19–20.
`Cornes discloses a vise that can be inserted into a trailer hitch. See
`Ex. 1006, Figs. 1 and 2. Cornes discloses two components 33 and 36 that
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`are brought together to make up the shaft that is inserted into the trailer
`hitch. See Ex. 1006, Fig. 2. We agree with Patent Owner that Cornes
`further discloses that plate 52 is welded between components 33 and 36. See
`Ex. 1006 ¶ 35 (“a receiving sleeve 33 having an outer receiving opening in
`the outer face of the stationary jaw and an outer threaded stationary shaft 51
`inside the receiving sleeve 33, which threaded stationary shaft 51 is welded
`to a shaft receiving plate 52 welded to the vise insertion tube 36”); see also
`id. at Fig. 2 (depicting the same). Sleeve 33 is not a passage because there is
`only one opening that serves as both the entrance and exit. Because Cornes
`does not disclose a passage spanning from the stationary jaw all the way to
`the end of insertion tube 36, we agree with Patent Owner that Cornes does
`not anticipate claim 1.
`Thus, we agree with Patent Owner that the combination of
`components 33 and 36 of Cornes does not disclose the first passage element
`of the claim discussed in detail on pages 8–10 of Patent Owner’s
`Preliminary Response. Accordingly, we conclude that Petitioner has not
`established a reasonable likelihood it would prevail in showing claims 1, 3,
`and 5–7 of the ’464 patent are anticipated under 35 U.S.C. §102(b).
`Claims 8 and 24
`Independent claims 8 and 24 similarly recite a “first connection
`member defining a first passage.” See Ex. 1001, claims 8 and 24. For the
`same reasons discussed above for claim 1, we are not persuaded that that
`components 33 and 36 of Cornes meets the first passage limitation of these
`claims. Accordingly, we conclude that Petitioner has not established a
`reasonable likelihood it would prevail in showing claims 8, 22, 24, and 25 of
`the ’464 patent are anticipated under 35 U.S.C. §102(b) by Cornes.
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`Claim 23
`Petitioner contends that independent claim 23 is anticipated by
`Cornes. Pet. 39–42, see id. at 24 (citing Ex. 1003 ¶¶ 83–194). Claim 23
`recites a “spindle assembly comprising a threaded spindle rotatable to move
`the second jaw piece with respect to the first jaw piece.” Petitioner explains
`that the spindle assembly of Cornes is made up of tubular member 40 and
`threaded stationary shaft 51. Id. at 40. Petitioner explains that as universal
`nut driver 41 rotates threaded tubular member 40 relative to threaded
`stationary shaft 51, the movable vise jaw 20 adjusts relative to stationary
`vise jaw 30, and based on this movement, Cornes meets the claim limitation
`of “movably connecting the second jaw piece to the first jaw piece.” Id.
`Petitioner urges that under the broadest reasonable interpretation of “a
`threaded spindle rotatable” to move the second jaw piece with respect to the
`first jaw piece requires that the combined spindle assembly is rotatable and
`moves the second jaw piece relative to the first, which is met by Cornes
`threaded tubular member 40. Id. at 41.
`The phrase at issue is “the spindle assembly comprising a threaded
`spindle rotatable to move the second jaw piece with respect to the first jaw
`piece.” Ex. 1001, claim 23. The question is whether the term “rotatable”
`modifies the spindle or the spindle assembly. Generally, a modifier should
`be placed next to the word it describes.2 Here, the term rotatable is placed
`
`
`2 “Chicago Manual of Style: 5.78 Basic rules: An adjective that modifies a
`noun, noun phrase, or pronoun usually precedes it {perfect storm}
`{spectacular view} {a good bowl of soup}. An adjective may follow the
`noun if (1) special emphasis is needed {reasons innumerable} {captains
`courageous}; (2) it occurs in this position in standard usage {court-martial}
`{notary public}; (3) it is a predicate adjective following a linking verb {I am
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`next to the word spindle, therefore, we agree with Patent Owner that this
`logically would indicate that rotatable modifies the term “spindle” rather
`than “spindle assembly” as argued by Petitioner. Petitioner has also not
`directed us to any portions of the specification that would warrant an
`interpretation that rotatable modifies the spindle assembly rather than the
`spindle itself. The ’464 specification describes that “work holding device 10
`includes a handle 80 operatively coupled to spindle 52.” Ex. 1001 4:49–51.
`It is this handle that rotates the spindle. Patent Owner responds that Cornes
`utilizes a stationary spindle, i.e., “threaded stationary shaft 51” that is
`welded in place and therefore Cornes’ spindle does not rotate. Prelim. Resp.
`21; see id. 22 (citing Ex. 1003 ¶ 153 (“universal nut driver 41 rotates the
`threaded tubular member 40 relative to the threaded stationary shaft 51 for
`adjusting the movable vise jaw 20 relative to the stationary vise jaw 30”)).
`Patent Owner further responds that interpreting “rotatable” to modify the
`spindle assembly rather than the spindle itself is unreasonable. Id. at 21 (“It
`is standard English usage to read a modifier—such as ‘rotatable’—as
`modifying the adjacent noun—the spindle—as opposed to the ‘spindle
`assembly’ which is not adjacent to ‘rotatable.’”)
`
`
`ready}; or (4) the pronoun is of a type usually followed by the adjective
`{anything good} {everything yellow} {nothing important} {something
`wicked}. Some adjectives are always in the predicate and never appear
`before what they modify {the city is asleep} {the door was ajar}. Others
`appear uniformly before the nouns they modify {utter nonsense} {a mere
`child}.” Phrasal adjectives may precede or follow what they modify.
`http://www.chicagomanualofstyle.org/16/ch05/ch05_sec078.html, last
`accessed May 29, 2018.
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`Cornes describes its spindle as stationary. Ex. 1006 ¶ 35. Cornes
`describes the stationary jaw as containing “an outer threaded stationary shaft
`51 inside the receiving sleeve 33, which threaded stationary shaft 51 is
`welded to a shaft receiving plate 52 welded to the vise insertion tube 36.”
`Id. Thus, Cornes clearly describes the threaded stationary shaft as welded to
`the plate indicating that the threaded shaft itself is not rotatable. Based on
`this disclosure in Cornes, Petitioner’s contention that Cornes’ threaded
`stationary sleeve meets the rotatable spindle limitation of claim 23 is not
`supported by the evidence.
`We agree with Patent Owner that Petitioner has not demonstrated a
`reasonable likelihood of prevailing at trial in showing anticipation of claim
`23 of the ’464 patent by Cornes for the reasons discussed in detail on pages
`20–21 of Patent Owner’s Preliminary Response.
`
`
`C. Ground 2: Obviousness over Cornes
`Petitioner also contends that claim 23 would have been obvious based
`on Cornes. Pet. 48. Petitioner acknowledges that Cornes’ tubular member
`40 rotates while the threaded stationary shaft 51 does not rotate. Id. at 49,
`see id. at 26 (citing Ex. 1003 ¶¶ 189–194). Petitioner urges that a person of
`ordinary skill in the art would understand that the relative positions of the
`threaded spindle and a receiving threaded shaft can be reversed while the
`operability would be the same. Id. at 49.
`Patent Owner responds that Cornes does not disclose a rotatable
`spindle, and altering the spindle from a stationary spindle to a rotatable
`spindle as suggested by Petitioner would result in a device that is inoperable.
`Prelim. Resp. 23. Patent Owner urges that there is no evidence set forth by
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`Petitioner that simply changing the spindle’s rotatability, as proposed by
`Petitioner, would result in a vise that opens and closes. Id. at 24. More
`importantly, Patent Owner responds that “obviousness requires a motivation
`to combine or modify the prior art which is conspicuously absent from the
`Petition.” Id. at 26. Patent Owner contends that the possibility of modifying
`Cornes to arrive at the claimed invention does not explain why an ordinary
`artisan would have selected the particular elements and modified them in the
`in the way suggested by Petitioner. Id. at 26–27 (citing InTouch Techs., Inc.
`v. VGO Commc’ns, Inc., 751 F.3d 1327, 1352, 1354 (Fed. Cir. 2014)).
`We agree with Patent Owner that Petitioner has not demonstrated a
`reasonable likelihood that it would prevail at trial in showing that claim 23
`would have been obvious in view of Cornes. A showing of obviousness
`“requires a suggestion of all limitations in a claim,” CFMT, Inc. v. Yieldup
`Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003) and “an apparent reason to
`combine the known elements in the fashion claimed by the patent at issue.”
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn,
`441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds
`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”)).
`Petitioner contends that the combination of a threaded spindle that
`rotates relative to a receiving thread is a basic structure common to work-
`holding devices such as a vise. Pet. 49. Upon reviewing the record,
`however, including Mr. O’Banion’s testimony (Ex. 1003 ¶¶ 189–194), we
`are not persuaded that Petitioner’s evidentiary support for its obviousness
`position is sufficient. Even if a rotatable spindle might be present in many
`
`18
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`Case IPR2018-00388
`Patent 9,079,464 B2
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`vise-like work-holding devices, neither Petitioner nor Mr. O’Banion provide
`a reason why a person of ordinary skill in the art would have modified
`Cornes’ spindle from being stationary to being rotatable, which would
`require reversing Cornes’ spindle and tubular shaft and nut. In other words,
`the mere fact that a person having ordinary skill in the art could make such a
`change is insufficient evidence of a motivation to combine. InTouch, 751
`F.3d at1352 (rejecting expert’s obviousness analysis that “primarily
`consisted of conclusory references to her belief that one of ordinary skill in
`the art could combine these references, not that they would have been
`motivated to do so.”). Because the Petition has not sufficiently provided an
`articulated reason with a rational underpinning as to why reversing the
`spindle and mating threaded tubular member and nut in Cornes would have
`been obvious to a person of ordinary skill in the art, we agree with Patent
`Owner that Petitioner has not met its burden of showing a reasonable
`likelihood of success of the obviousness of claim 23 based on Cornes.
`
`D. Ground 3: Obviousness over Cornes in view of Long or Murray
`Petitioner additionally contends that claim 23 would have been
`obvious over Cornes taken with Long or Murray. Pet. 49. As noted above,
`Petitioner recognizes that Cornes teaches that its threaded stationary shaft is
`welded in place inside the receiving sleeve. Id. at 50. Petitioner relies on
`Long to teach a “threaded spindle” that is “rotatable.” Id. Alternatively,
`Petitioner relies on Murray to teach a “threaded spindle” that is “rotatable.”
`Id.
`
`19
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`Case IPR2018-00388
`Patent 9,079,464 B2
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`Patent Owner responds that Petitioner has not provided any reason
`why a person of ordinary skill in the art would have combined or modified
`the prior art as suggested. Prelim. Resp. 29.
`For the reasons set forth below, we agree with Patent Owner that
`Petitioner does not identify sufficient evidence and reasoning to support the
`positon that Cornes combined with either Long or Murray renders claim 23
`obvious.
`
`
`1. Long (Ex. 1007)
`Long teaches a bench vise. Figure 2 of Long is reproduced below:
`
`
`
`
`Figure 2 shows a longitudinal cross-section showing parts of the bench vise.
`Ex. 1007, 1:21–23. Jaw member D has threads H in the inner portion. Id. at
`2:64–65. Screw G engages with threads of nut or sleeve H, and this nut or
`sleeve H has a head which bears against the outside of E and extends there
`through into jaw member D. Id. at 1:57–64.
`2. Murray (Ex. 1009)
`Murray teaches an “F” style clamp. Ex. 1009, Abstract. Murray’s
`clamp is reproduced below:
`
`20
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`Case IPR2018-00388
`Patent 9,079,464 B2
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`
`Figure 2 of Murray, shown above, has a handle that may be attached to
`threaded member 220 used for making fine adjustments to the pressure
`applied to the work piece. Ex. 1009 ¶ 19.
`
`
`3. Discussion—Obviousness over Cornes and Long or Murray
`Petitioner contends that claim 23 would have been obvious over
`Cornes and either Long or Murray. Petitioner asserts that when Cornes’
`universal nut driver having threads is turned relative to the stationary shaft,
`this moves the vise jaws either towards or away from each other. Pet. 50,
`see id. at 26 (citing Ex. 1003 ¶¶ 195–200). Petitioner acknowledges that
`“the tubular member 40 in Cornes rotates while the threaded stationary shaft
`51 does not.” Id. at 50. The petition further states that Long and Murray
`both teach a rotatable spindle element. Id. Petitioner posits that it would
`have been obvious to a person of ordinary skill in the art to modify Cornes to
`have a rotatable shaft “because the substitution of one known element for
`
`21
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`Case IPR2018-00388
`Patent 9,079,464 B2
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`another to obtain a predictable result is obvious.” Id. at 22 (citing Ex. 1003
`¶ 240).
`We agree with Patent Owner that Petitioner has not met its burden of
`showing a reasonable likelihood of success in prevailing with respect to the
`patentability of claim 23 based on Cornes and either Long or Murray. We
`agree with Patent Owner that Petitioner does not provide adequate reason
`why a person of ordinary skill in the art would have combined and modified
`the references as suggested. See Prelim. Resp. 29. Patent Owner points out,
`and we agree, that “Petitioner’s expert does not add any actual reasons for
`why a person of skill would have been motivated to change the static thread
`screw in Cornes to the rotatable screw in the claim.” Id. at 30; see KSR, 550
`U.S. at 418. We observe that the Cornes’ vise operates based on the
`particular configuration of its static and rotatable screw components. In that
`respect, there is no suggestion in Cornes that its particular vise structure
`remains operable if static and rotatable components are swapped. Neither
`Petitioner nor its declarant, Mr. O’Banion, explains adequately why a skilled
`artisan would have had reason to redesign Cornes’ vise under the general
`theory of simple “substitution” of one known element for another. The mere
`possibility of such substitution does not provide a reason why a person of
`ordinary skill in the art would have done so. In other words, there needs to
`be reason why an ordinary artisan would reverse the spindle in the first
`place. Because the Petition has not provided an articulated reason with
`rationale underpinning as to why a skilled art
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