Trials@uspto.gov Paper No. 21
`571-272-7822 Entered: March 13, 2019
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INTIMIDATOR, INC. and RF PRODUCTS, INC.,
`Petitioner,
`
`v.
`
`BAD BOY, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-01632
`Patent 9,730,386 B1
`____________
`
`
`Before FRANCES L. IPPOLITO, KEVIN W. CHERRY, and
`PAUL J. KORNICZKY, Administrative Patent Judges.
`
`KORNICZKY, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314
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`
`
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`
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`571-272-7822 Entered: March 13, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INTIMIDATOR, INC. and RF PRODUCTS, INC.,
`Petitioner,
`
`v.
`
`BAD BOY, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-01632
`Patent 9,730,386 B1
`____________
`
`
`Before FRANCES L. IPPOLITO, KEVIN W. CHERRY, and
`PAUL J. KORNICZKY, Administrative Patent Judges.
`
`KORNICZKY, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
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`
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`
`
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`IPR2018-01632
`Patent 9,730,386 B1
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`I.
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`INTRODUCTION
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`Intimidator, Inc. and RF Products, Inc. (collectively “Petitioner”) filed
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`a Petition (Paper 1, “Pet.”) requesting an inter partes review of claims 1–4,
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`8, and 9 of U.S. Patent No. 9,730,386 B1, issued August 15, 2017 (Ex. 1001,
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`“the ’386 patent”). Bad Boy Inc. (“Patent Owner”) filed a Preliminary
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`Response. Paper 9 (“Prelim. Resp.”). With Board permission (Paper 12),
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`Petitioner filed a Reply to the Preliminary Response (Paper 15, “Reply”),
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`and Patent Owner filed a Sur-Reply (Paper 20, “Sur-Reply”).
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`Under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a), an inter partes review
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`may be instituted if “the information presented in the petition . . . and any
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`response . . . shows that there is a reasonable likelihood that the petitioner
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`would prevail with respect to at least 1 of the claims challenged in the
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`petition.” 35 U.S.C. § 314(a). After considering the evidence and
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`arguments in the Petition, Preliminary Response, Reply, and Sur-Reply, we
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`conclude that the information presented shows there is a reasonable
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`likelihood that Petitioner would prevail in establishing the unpatentability of
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`at least one of the challenged claims of the ’386 patent. Accordingly, we
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`grant Petitioner’s request and institute an inter partes review of claims 1–4,
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`8, and 9 of the ’386 patent on all unpatentability grounds asserted in the
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`Petition.
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`IPR2018-01632
`Patent 9,730,386 B1
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`II. BACKGROUND
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`A. The ʼ386 Patent (Ex. 1001)
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`The ʼ386 patent is titled “Suspension System for Lawnmower.” Ex.
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`1001, at [54]. The ’386 patent is directed to riding mowers and an improved
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`suspension system for motive systems on riding mowers. Id. at 1:35–37.
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`Figure 1 of the ’386 patent is reproduced below.
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`Figure 1 of the ’386 patent illustrates a riding mower S having frame 16,
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`mower deck 25, forward wheels 18, and two rear driven wheels 72. Id. at
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`4:5–8.
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`3
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`IPR2018-01632
`Patent 9,730,386 B1
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`The riding mower has two hydraulic transaxles 65 mounted beneath
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`frame 16 to selectively rotate driven wheels 72. Id. at 4:10–14. Each
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`hydraulic transaxle 65 is supported by vibration pillow 81. Id. at 4:41–43.
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`Pillows 81 define a cushion between wheel 55 and frame 16 of the mower
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`11, thereby absorbing shock created by the wheel moving over the uneven
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`terrain, and limiting movement of the wheel assemblies 72 and dampening
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`vibration. Id. at 4:54–5:2.
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`Figure 8 of the ’386 patent is reproduced below.
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`Figure 8 is an elevational view of frame 15 and related components of the
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`mower. Id. at 3:55–57. Each transaxle 65 is pivotally secured to frame 16
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`by pivot pin 74. Id. at 4:32–40. According to the patent, the pivotal
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`movement of each transaxle 65 is shown by arrows 68 (in Fig. 8) with the
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`axes of rotation indicated by lines 70 (in Fig. 9), and transaxle 65 pivots
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`about pivot pin 74 in a plane transverse to the plane of the transaxle housing.
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`Id. at 4:32–36, 4:45–48.
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`B. Illustrative Claims
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`Independent claims 1 and 8, reproduced below, are illustrative of the
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`challenged claims.
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`IPR2018-01632
`Patent 9,730,386 B1
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`
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`1. A riding mower adapted to traverse the ground and having a
`frame with a mower deck supported beneath the frame and a
`chair supported on the frame and a source of motive power also
`supported on said frame, the mower further comprising:
`a pair of forward wheels spaced apart from a pair of rear
`driven wheels, all of the wheels adapted to support the frame;
`and,
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`two hydraulic transaxles mounted beneath the frame to
`each selectively rotate a driven wheel when supplied motive
`power,
`where each transaxle is supported beneath the frame by at
`least one vibration pillow and pivotally secured to the frame so
`that each transaxle may move upwardly or downwardly in
`response to movement by its driven wheel and
`wherein each of the driven wheels can pivot upwardly or
`downwardly as the mower traverses the ground and wherein
`upward wheel movement is dampened by the vibration pillows.
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`8. A riding mower adapted to traverse the ground and having a
`frame with a mower deck supported beneath the frame and a
`chair supported on the frame and a source of motive power also
`supported on said frame, the mower further comprising:
`a pair of forward wheels spaced apart from a pair of rear
`drive wheel assemblies, all of the wheels adapted to support the
`frame; and,
`two hydraulic transaxles mounted beneath the frame to
`each selectively rotate a drive wheel when supplied motive
`power;
`where each transaxle is supported beneath the frame and
`pivotally secured thereto by a flange captivating vibration
`pillows and proximate the driven wheel and an inner pivot rod
`secured to the frame by apertures in downwardly depending
`tabs mounted to the frame and
`wherein each of the driven wheels can pivot upwardly or
`downwardly as the mower traverses the ground and wherein
`upward wheel movement is dampened by the vibration pillows.
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`Id. at 5:24–41, 6:30–48.
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`IPR2018-01632
`Patent 9,730,386 B1
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`C. Related Proceedings
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`Petitioner and Patent Owner identify a related litigation in the Eastern
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`District of Arkansas involving the ʼ386 patent, captioned Bad Boy, Inc. v.
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`Intimidator, Inc., and RF Products, Inc., Case No.: 1:17-cv-00070-BSM
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`(E.D. Ark.). Pet. 2; Prelim. Resp. 9.
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`D. References
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`Petitioner relies on the following references:
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`References
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`Description
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`Date
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`Exhibit
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`Melone
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`Foster
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`US 9,161,490 B2
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`Oct. 20, 2015
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`1003
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`US 7,708,292 B2
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`May 4, 2010
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`1004
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`E. Grounds Asserted
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`
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`Petitioner challenges the patentability of the ʼ386 patent claims on the
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`following grounds:
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`Claim(s)
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`1 and 2
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`1 and 2
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`Reference(s)
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`Basis
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`Melone
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`Melone and Foster
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`35 U.S.C. § 102
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`35 U.S.C. § 103
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`3, 4, 8, and 9
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`Melone and Foster
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`35 U.S.C. § 103
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`Petitioner also relies on expert testimony from Roelof H. deVries
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`(Ex. 1002).
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`
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`III. ANALYSIS
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`A. Patent Owner’s Arguments under 35 U.S.C. § 311
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`Patent Owner requests that the Petition be denied because Mr. Robert
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`Foster, President of Intimidator and RF Products, is an alleged owner of the
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`Patent 9,730,386 B1
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`’386 patent and, thus, is barred from filing an inter partes petition under 35
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`U.S.C. § 311. Prelim. Resp. 10–13; see 35 U.S.C. § 311 (“a person who is
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`not the owner of a patent may file . . . a petition to institute an inter partes
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`review of the patent”).
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`First, Patent Owner argues that because the defendants in the
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`Arkansas litigation allege that Mr. Foster is a co-inventor and co-owner of
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`the ’386 patent, we should treat Mr. Foster as an owner of the ’386 patent for
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`purposes of this proceeding. Prelim. Resp. 10–13. At this point, however,
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`the defendants’ claim in the Arkansas litigation that Mr. Foster is an inventor
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`and owner of the ’386 patent is merely an unproven allegation. The district
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`court has not held that Mr. Foster is a co-inventor or co-owner of the ’386
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`patent. Moreover, the Federal Rules of Civil Procedure permit a party to
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`plead alternative legal arguments, even if they are inconsistent. Teledyne
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`Indus., Inc. v. N.L.R.B., 911 F.2d 1214, 1218 (6th Cir. 1990) (“The doctrine
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`of judicial estoppel does not clash with the right to plead inconsistent claims
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`under Fed. R. Civ. P. 8[(d)(3)]. Rule 8[(d)(3)] concerns the ability to plead
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`alternative legal arguments, even if they are inconsistent or based on
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`inconsistent facts.”). Thus, merely raising an ownership claim in district
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`court does not bar Petitioner here. In addition, § 311 deals with who may
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`file a petition, and Mr. Foster did not file the present Petition, and is not a
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`named party. Patent Owner’s argument is not persuasive.
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`Second, Patent Owner argues that we should find that Mr. Foster filed
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`the Petition because Mr. Foster, as President of the real parties in interest
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`(i.e., Intimidator, Inc., RF Products, Inc., and Spartan Mowers, LLC), is the
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`“personification of the entities behind the Petition” and “directs and controls
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`each of entities identified as real parties-in-interest.” Id. at 11–12. Patent
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`Owner also broadly alleges that the real parties in interest “are the corporate
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`identities of Mr. Foster and are controlled exclusively by Mr. Foster,” and
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`“are merely corporate personifications of Mr. Foster.” Id. at 12.
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`In response to Patent Owner’s arguments, Petitioner provides a
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`declaration from Mr. Foster (Ex. 1018). Reply 2 (citing Ex. 1018 ¶¶ 2–8).
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`Mr. Foster testifies that he does not control or direct the IPR proceeding on
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`behalf of Petitioner, and does not have a controlling ownership interest in
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`either Intimidator or RF Products. Id. ¶ 2, 8. Mr. Foster states that, although
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`he is the President of both companies, his primary focus is on product
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`design, engineering and manufacturing functions of the business. Id. ¶ 4.
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`He does not manage, and has very little involvement in, the financial and
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`legal-related functions of the companies. Id. Mr. Foster also states that Ms.
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`Becky Foster and several other decision makers are legal counsel’s primary
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`contacts for Petitioner. Id. ¶ 8, 6. Mr. Foster further states Petitioner pays
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`the legal expenses for this proceeding, and he has not personally funded fees
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`or expenses for the IPR. Id. ¶ 7.
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`Patent Owner does not identify any legal support to justify piercing
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`the corporate veil and treating the corporations as Mr. Foster’s alter ego, or
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`to permit the Board to disregard Petitioner’s corporate structure and treat the
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`corporation’s President as a named party. Based on the present record,
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`Patent Owner’s arguments are not persuasive and we decline to deny the
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`Petition under § 311.
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`B. Patent Owner’s Arguments under 35 U.S.C. § 312
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`Patent Owner requests that the Petition be denied because Petitioner
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`failed to name Mr. Foster as a real party in interest to this proceeding as
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`required by 35 U.S.C. § 312(a)(2). Prelim. Resp. 13.
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`IPR2018-01632
`Patent 9,730,386 B1
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`1. Principles of Law Regarding Real Parties in Interest
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`Under 35 U.S.C. § 312(a)(2), a petition for inter partes review may be
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`considered “only if” the petition identifies all real parties in interest. The
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`names of the real parties in interest should be provided to assist members of
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`the Board in identifying potential conflicts and to assure proper application
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`of statutory estoppel. Office Patent Trial Practice Guide, 77 Fed. Reg.
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`48,756, 48,759 (Aug. 14, 2012 (updated Aug. 13, 2018)) (“Trial Practice
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`Guide”).
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`The identification of the real parties in interest must be included in
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`petitioner’s mandatory notices, which are required to be filed with the
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`petition. 37 C.F.R. § 42.8(a)(1). The petitioner bears the overall burden of
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`persuasion to prove that all real parties in interest have been identified.
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`Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1242 (Fed. Cir. 2018). The
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`Board generally accepts the petitioner’s identification of the real parties in
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`interest unless the patent owner produces “some evidence that tends to show
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`that a particular third party should be named a real party in interest.”1 Id. at
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`1244 (“A mere assertion that a third party is an unnamed real party in
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`interest, without any support for that assertion, is insufficient to put the issue
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`into dispute.”).
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`“[A]t a general level, the ‘real party-in-interest’ is the party that
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`1 The Federal Circuit did not address the quantum of support required from
`a patent owner but stated that “[i]f it were not framed in terms of a
`presumption, the standard used in Atlantic Gas Light [Co. v. Bennett
`Regulator Guards, Inc., IPR2013-00453, Paper 88 (PTAB Jan. 6, 2015)]—
`evidence that ‘reasonably brings into question the accuracy of a petitioner’s
`identification of the real parties in interest’—may prove useful.” Worlds,
`903 F.3d at 5 n.8.
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`IPR2018-01632
`Patent 9,730,386 B1
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`desires review of the patent.” Trial Practice Guide, 77 Fed. Reg. at 48,759.
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`“Determining whether a non-party is a ‘real party in interest’ demands a
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`flexible approach that takes into account both equitable and practical
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`considerations, with an eye toward determining whether the non-party is a
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`clear beneficiary that has a preexisting, established relationship with the
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`petitioner.” Applications in Internet Time, LLC v. RPX Corp., 897 F.3d
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`1336, 1351 (Fed. Cir. 2018). In the context of an inter partes review, and as
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`explained in the Trial Practice Guide, there are multiple factors that relate to
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`whether a non-party should be identified as a real party in interest. Trial
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`Practice Guide, 77 Fed. Reg. at 48,759. Some of these factors may include,
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`for example, whether a non-party exercises control over a petitioner’s
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`participation in the proceeding, whether the non-party is directing the
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`proceeding, the party’s relationship with the petitioner, the party’s
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`relationship to the petition, and the nature of the entity filing the petition.
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`Trial Practice Guide, 77 Fed. Reg. at 48,760; see Applications, 897 F.3d at
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`1351.
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`“A party that funds and directs and controls an IPR or post-grant
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`review proceeding constitutes a real party-in-interest, even if that party is not
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`a privy of the petitioner.” Wi-Fi One, LLC v. Broadcom Corp., 887 F.3d
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`1329, 1336 (Fed. Cir. 2018) (citation and internal markings omitted). The
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`concept of control generally means that “the nonparty has the actual measure
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`of control or opportunity to control that might reasonably be expected
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`between two formal coparties.” Trial Practice Guide, 77 Fed. Reg. at 48,759
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`(quoting 18A Charles Alan Wright, Arthur R. Miller & Edward H. Cooper,
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`Federal Practice & Procedure §§ 4449, 4451 (2d ed. 2011) (“Wright &
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`Miller”)). However, “there is no ‘bright-line test’ for determining the
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`IPR2018-01632
`Patent 9,730,386 B1
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`necessary quantity or degree of participation to qualify as a ‘real party-in-
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`interest’ . . . based on the control concept.” Id. (quoting Gonzalez v. Banco
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`Cent. Corp., 27 F.3d 751, 759 (1st Cir. 1994)). Indeed, the “measure of
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`control by a nonparty that justifies preclusion cannot be defined rigidly.” Id.
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`(citing Wright & Miller § 4451). An unnamed party’s participation may be
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`overt or covert, and the evidence may be circumstantial, but the evidence, as
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`a whole, must show that the unnamed party possessed effective control from
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`a practical standpoint. Gonzalez, 27 F.3d at 759. This inquiry is not based
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`on isolated facts, but rather must consider the totality of the circumstances.
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`Id.
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`2. Application to Mr. Foster
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`Patent Owner argues that Mr. Foster is a real party in interest because,
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`as the President and/or Registered Agent of the named real parties in interest
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`(Intimidator, RF Products, and Spartan Mowers), he has the “opportunity to
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`control” the present proceeding. Prelim. Resp. 14–15; Sur-Reply 2–4.
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`Patent Owner asserts that Mr. Foster is “the personification of the entities
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`behind this [proceeding],” and “the puppet master that controls Petitioner[]
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`and their involvement in this proceeding.” Prelim. Resp. 15–16. Patent
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`Owner argues that “[g]iven the substantial amount of control exercised over
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`Petitioner[] by Robert Foster, Mr. Foster should have been identified as a
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`[real party in interest].” Id. at 16.
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`Patent Owner offers no substantiated evidence that Mr. Foster is the
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`“personification” or “puppet master” of Intimidator, RF Products, and
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`Spartan Mowers, or that he exercises any, much less “substantial,” control
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`over this proceeding. Contrary to Patent Owner’s speculative allegations,
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`Petitioner provides a declaration from Mr. Foster (Ex. 1018) addressing his
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`IPR2018-01632
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`role in this proceeding and at Intimidator, RF Products, and Spartan
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`Mowers. Reply 2 (citing Ex. 1013 ¶¶ 2–8). Mr. Foster testifies that he does
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`not control or direct the IPR proceeding on behalf of Petitioner, and does not
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`have a controlling ownership interest in either Intimidator or RF Products.
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`Ex. 1018 ¶¶ 2, 8. Mr. Foster states that, although he is the President of both
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`companies, his primary focus is on product design, engineering and
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`manufacturing functions of the business. Id. ¶ 4. He does not manage, and
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`has very little involvement in, the financial and legal related functions of the
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`companies. Id. Mr. Foster also states that Ms. Becky Foster and several
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`other decision makers are legal counsel’s primary contacts for Petitioner in
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`this proceeding. Id. ¶¶ 6, 8. Mr. Foster further states that Petitioner pays the
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`legal expenses for this proceeding, and he has not personally funded fees or
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`expenses for the IPR. Id. ¶ 7
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`In response to Petitioner’s arguments and Mr. Foster’s declaration,
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`Patent Owner speculates that, although “Mr. Foster is not currently
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`controlling this IPR proceeding,” he “could exercise control” and he
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`“‘wields a significant degree of effective control’ over the IPR proceeding—
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`whether exercised or not—he has ‘the power— . . . to call the shots.’” Sur-
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`Reply 3–4. Patent Owner does not identify any legal authority for its
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`argument that an officer or shareholder of a corporation should be named as
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`a real party in interest. “Conceptually and absent abuse of the corporate
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`form, a corporation is an entity distinct and separate from its officers.”
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`Collins v. Bentley Indus., LLC, No. 09-6090, 2010 WL 11627640, at *2
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`(W.D. Ark. Feb. 17, 2010). “After all, incorporation’s basic purpose is to
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`create a distinct legal entity, with legal rights, obligations, powers, and
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`privileges different from those of the natural individuals who created it, who
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`own it, or whom it employs.” Cedric Kushner Promotions, Ltd. v. King, 533
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`U.S. 158, 163 (2001). To be clear, the relationship between an officer or
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`shareholder and a corporation, by itself, is insufficient proof that the
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`officer/shareholder is a real party in interest to the corporation’s proceeding.
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`Trial Practice Guide, 77 Fed. Reg. at 48,759 (citing Taylor v, Sturgill, 553
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`U.S. 880, 893−95 (2008); Wright & Miller §§ 4449, 4451) (noting that
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`whether an unnamed party is a real party in interest “to that proceeding is a
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`highly fact-dependent question” with no “bright line test”). Prior Board
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`decisions make clear that the real party in interest inquiry focuses on “the
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`relationship between a [non-party] and a proceeding,” and that the
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`relationship between a non-party and the petitioner alone is not
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`determinative. Aruze Gaming Macau, Ltd. v. MGT Gaming, Inc., Case
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`IPR2014-01288, slip op. at 10−11 (Paper 13) (PTAB Feb. 20, 2015)
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`(reviewing prior Board decisions establishing a non-party as a real party in
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`interest and explaining that in each, “central to the Board’s determination
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`was that a party other than the named petitioner was controlling, or capable
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`of controlling, the proceeding before the Board”) (emphasis added). Aruze
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`Gaming is cited approvingly in Judge Reyna’s concurrence in Applications,
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`897 F.3d at 1365 n.7 (noting that the Board in Aruze correctly recognized
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`that “[t]he parties’ briefs comingle their analyses of the issues of RPI and
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`privity” and “[t]he two terms describe distinct concepts”); Trial Practice
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`Guide, 77 Fed. Reg. at 48,760 (identifying several “[r]elevant factors”).
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`Based on the present record, Patent Owner’s arguments are not persuasive.
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`Based on the present record, Petitioner’s evidence persuasively
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`demonstrates that Mr. Foster is not a real party in interest. We decline
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`Patent Owner’s request to deny the Petition under 35 U.S.C. § 312(a)(2).
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`C. Patent Owner’s Arguments under 35 U.S.C. § 314(d)
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`Under 35 U.S.C. § 314(d), institution of inter partes review is
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`discretionary. See Harmonic Inc. v. Avid Tech, Inc., 815 F.3d 1356, 1367
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`(Fed. Cir. 2016) (“[T]he [Patent Office] is permitted, but never compelled, to
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`institute an IPR proceeding.”).
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`Patent Owner contends that we should use our discretion under
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`§ 314(d) to deny the Petition because Petitioner is using the Petition to gain
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`an unfair tactical advantage in, and circumvent, the Arkansas litigation.
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`Prelim. Resp. 16–20. According to Patent Owner, Petitioner was served
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`with the complaint on September 6, 2017, but waited until September 4,
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`2018, to file the present Petition. Id. at 17. By waiting until near the one-
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`year statutory deadline under 35 U.S.C. § 315(b), Patent Owner argues that
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`Petitioner was able to obtain unfairly Patent Owner’s claim construction,
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`validity, and infringement contentions in the Arkansas litigation. Id. at 16–
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`20.
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`In response, Petitioner asserts that it was not permitted to file the
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`Petition until May 15, 2018, due to 35 U.S.C. § 311(c) which precludes
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`filing of a petition for at least nine months after the ’386 patent issued.
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`Reply 5–6. Petitioner argues that, as it learned of Patent Owner’s litigation
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`contentions, it decided to file a Petition for inter partes review. We do not
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`find that the filing of the Petition roughly four months after the starting date
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`of May 15 was unreasonable.
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`We do not find that Patent Owner was materially prejudiced by
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`Petitioner’s alleged delay. We understand, for example, that the parties in
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`the Arkansas litigation exchanged some of their litigation contentions before
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`May 15, 2018. Reply 5–6. Patent Owner does not persuasively explain how
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`Petitioner used these contentions in an unfair manner. Id.; Sur-Reply 5–6.
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`To the contrary, it is evident from the Petition and Preliminary Response that
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`both parties effectively used those claim construction and validity
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`contentions to narrow and sharpen the claim construction and validity issues
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`and arguments in this proceeding. And, during the briefing in this
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`proceeding, the parties would have been required to present their claim
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`construction and validity positions.
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`Patent Owner also argues that Petitioner’s gamesmanship is evidenced
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`by its failure to file a motion to stay the Arkansas litigation until another
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`round of claim construction briefing was completed. Sur-Reply 6. Because
`
`Petitioner had already filed its Petition, it could not have used Patent
`
`Owner’s contentions, so we fail to understand how the delay in filing the
`
`motion to stay amounted to “gamesmanship.” If the claim construction
`
`briefing posed any material prejudice to Patent Owner, Patent Owner also
`
`could have filed a motion to stay the litigation after the Petition was filed
`
`and before the claim construction briefs were filed. Patent Owner’s
`
`argument is not persuasive.
`
`Patent Owner further argues that the Petition should be denied
`
`because the Arkansas litigation is “mature” and at an advanced stage.
`
`Prelim. Resp. 16. Yet, contrary to Patent Owner’s argument, Petitioner
`
`states that the Arkansas litigation has been stayed, a claim construction
`
`hearing has not been held, and the parties have not produced documents,
`
`taken any depositions, or engaged in expert discovery. Reply 6. Given that
`
`
`
`15
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`IPR2018-01632
`Patent 9,730,386 B1
`
`some of the most burdensome and costly portions of the case remain ahead
`
`for the Arkansas litigation, Patent Owner’s argument is not persuasive.
`
`Finally, Patent Owner argues that Petitioner is using this proceeding
`
`to obtain claim constructions that are relevant to the infringement issues in
`
`the Arkansas litigation, but that are not relevant to the patentability issues in
`
`this proceeding. Sur-Reply 6. However, because the Board will only decide
`
`issues relevant to the patentability issues raised in the Petition, Patent
`
`Owner’s concern is unwarranted.
`
`For the reasons above, we decline to exercise our discretion under
`
`§ 314(a) to deny the Petition.
`
`D. Legal Principles of Unpatentability
`
`1. Anticipation
`
`A patent claim is anticipated if “the invention was known or used by
`
`others in this country, or patented or described in a printed publication in
`
`this or a foreign country, before the invention thereof by the applicant for a
`
`patent.” 35 U.S.C. § 102(a). “To anticipate a claim, a prior art reference
`
`must disclose every limitation of the claimed invention, either expressly or
`
`inherently.” Rapoport v. Dement, 254 F.3d 1053, 1057 (Fed. Cir. 2001).
`
`
`
`2. Obviousness
`
`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. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`
`
`
`16
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`IPR2018-01632
`Patent 9,730,386 B1
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`(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 ordinary skill in the art; and (4) when in the record, objective
`
`evidence of nonobviousness. See Graham v. John Deere Co., 383 U.S. 1,
`
`17–18 (1966).
`
`When a patent claims a structure already known in the prior art that is
`
`altered by the mere substitution of one element for another known in the
`
`field, and the combination yields a predictable result, the claim is obvious.
`
`KSR, 550 U.S. at 416. Similarly, where two known alternatives are
`
`interchangeable for a desired function, an express suggestion to substitute
`
`one for the other is not needed to render a substitution obvious. In re Fout,
`
`675 F.2d 297, 301 (CCPA 1982); In re Siebentritt, 372 F.2d 566, 568
`
`(CCPA 1967); In re Mayne, 104 F.3d 1339, 1340 (Fed. Cir. 1997) (noting
`
`the substitution of one known element for a known equivalent is prima facie
`
`obvious).
`
`E. Level of Ordinary Skill in the Art
`
`The level of skill in the art is a factual determination that provides a
`
`primary guarantee of objectivity in an obviousness analysis. Al-Site Corp. v.
`
`VSI Int’l Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999) (citing Graham v. John
`
`Deere Co. of Kansas, 383 U.S. 1, 17–18 (1966); Ryko Mfg. Co. v. Nu-Star,
`
`Inc., 950 F.2d 714, 718 (Fed. Cir. 1991)).
`
`Petitioner asserts that a person of ordinary skill in the art (“POSITA”)
`
`at the time of the invention would have had
`
`
`
`17
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`
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`IPR2018-01632
`Patent 9,730,386 B1
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`
`a Bachelor of Science degree in mechanical engineering or
`similar field, plus at least three years of experience in the
`mechanical design and implementation of off-road vehicles,
`including grounds maintenance equipment vehicles, or a non-
`degreed technician with five or more years of experience in
`the mechanical design and implementation of off-road
`vehicles, including grounds maintenance equipment vehicles.
`
`Pet. 25–26 (citing Ex. 1002, ¶ 19). Petitioner’s description of a POSITA is
`
`supported by the record. Patent Owner does not contest Petitioner’s
`
`description. Prelim. Resp. 44. For purposes of this Decision, therefore, we
`
`adopt Petitioner’s description.
`
`F. Claim Construction
`
`The claim construction standard to be applied during an inter partes
`
`review depends upon whether the patent at issue is expired or unexpired, and
`
`whether the petition is filed before November 13, 2018.2 For an unexpired
`
`patent and inter partes reviews filed before November 13, 2018, 37 C.F.R.
`
`§ 42.100(b) requires that claims be construed according to their broadest
`
`reasonable interpretation in light of the specification of the patent in which
`
`they appear. See 37 C.F.R. § 42.100(b) (2016); Cuozzo Speed Techs., LLC
`
`v. Lee, 136 S. Ct. 2131, 2144–45 (2016).
`
`Petitioner asserts that seven terms need to be construed: (1) vibration
`
`pillow, (2) hydraulic transaxle, (3) captivating, (4) frame, (5) rod, (6) inner
`
`pivot rod, and (7) drive wheel assembly. Pet. 26–37. Petitioner identifies its
`
`
`2 Petitioner filed for inter partes review on September 4, 2018 (Paper 1),
`prior to the effective date of November 13, 2018 of the Final Rule titled
`“Changes to the Claim Construction Standard for Interpreting Claims in
`Trial Proceedings Before the Patent Trial and Appeal Board,” which
`mandates the Board’s application of the same claim construction standard
`applied by federal courts. 83 Fed. Reg. 51,340.
`
`
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`18
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`
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`IPR2018-01632
`Patent 9,730,386 B1
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`proposed claim constructions and the claim constructions proposed by Patent
`
`Owner in the Arkansas litigation. Pet. 27–37. Patent Owner states that it
`
`does not dispute Petitioner’s proposed constructions at this stage of the
`
`proceeding because they “do not appear to be relevant to deciding the
`
`validity of the ’368 Patent.” Prelim. Resp. 44.
`
`Based on the present record, we construe the term “vibration pillow,”
`
`but determine that explicit construction of the other claim terms is not
`
`necessary at this stage of the proceeding. See Vivid Techs., Inc. v. Am. Sci.
`
`& Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those
`
`terms need be construed that are in controversy, and only to the extent
`
`necessary to resolve the controversy”).
`
`
`
`1. Construction of “Vibration Pillow”
`
`The term “vibration pillow” appears in independent claims 1 and 8.
`
`Claim 1, for example, recites that “each transaxle is supported beneath the
`
`frame by at least one vibration pillow” and “upward wheel movement is
`
`dampened by the vibration pillows.”
`
`Petitioner proposes that “vibration pillow” should be construed as:
`
`a resilient material that completely encloses a material other
`than air, which can include an elastic shell with liquid or other
`compressible material other than air within the shell, that
`dampens vibration primarily because of its elastic resistance
`but does not exert a force that pushes the driven wheel
`downwardly. An airbag, spring, or shock absorber is not a
`pillow.
`
`Pet. 32. Petitioner asserts that, in the Arkansas litigation, Patent Owner
`
`proposes that “vibration pillow” should be construed as a “compressible
`
`suspension component” and that pillow “includes airbags, springs, and shock
`
`
`
`19
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`
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`IPR2018-01632
`Patent 9,730,386 B1
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`absorbers, and other compressible suspension components.” Pet. 31 (citing
`
`Ex. 1008, 17). In this proceeding, however, Patent Owner has not proposed
`
`a construction of this term. Prelim. Resp. 43–44. Nonetheless, as discussed
`
`in greater detail below, Petitioner asserts that under Patent Owner’s
`
`proposed construction from the Arkansas litigation, claims 1 and 2 are
`
`anticipated by Melone, but under Petitioner’s proposed construction, claims
`
`1 and 2 are unpatentable as being obvious over Melone and Foster. See, e.g.,
`
`Pet. 38.
`
`The ’386 patent broadly states that a pillow is a “resilient material for
`
`absorbing shock and vibration resulting from a wheel contacting
`
`irregularities in the terrain.” Ex. 1001, 2:67–3:2. Thus, a “vibration pillow”
`
`does not generate or cause vibration but, instead, absorbs shock and
`
`vibration. The ’386 patent also broadly states that:
`
`Each pillow 81 is [1] resilient and may be of any one of several
`durometers of rubber hardness, or [2] may be of other suitable
`elastomeric materials, including elastic shells with a liquid or
`other compressible material there within, appropriate to the
`weight of the mower and the terrain to be traversed. The
`pillows define a cushion b
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