Trials@uspto.gov
`571.272.7822
`
`
`Paper 36
`Entered: July 25, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GLOBAL SHADE CORPORATION,
`Petitioner,
`v.
`WITH-U E-COMMERCE (SHANGHAI) CO., LTD.,
`Patent Owner.
`
`IPR2021-00365
`Patent 10,273,710 B2
`
`
`
`
`
`
`
`
`
`Before BARRY L. GROSSMAN, GEORGE R. HOSKINS, and FRANCES
`L. IPPOLITO, Administrative Patent Judges.
`
`GROSSMAN, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`Denying Patent Owner’s Motion to Amend
`Granting Patent Owner’s Motion for Supplemental Information
`35 U.S.C. § 318(a)
`
`
`
`
`571.272.7822
`
`
`Paper 36
`Entered: July 25, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GLOBAL SHADE CORPORATION,
`Petitioner,
`v.
`WITH-U E-COMMERCE (SHANGHAI) CO., LTD.,
`Patent Owner.
`
`IPR2021-00365
`Patent 10,273,710 B2
`
`
`
`
`
`
`
`
`
`Before BARRY L. GROSSMAN, GEORGE R. HOSKINS, and FRANCES
`L. IPPOLITO, Administrative Patent Judges.
`
`GROSSMAN, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`Denying Patent Owner’s Motion to Amend
`Granting Patent Owner’s Motion for Supplemental Information
`35 U.S.C. § 318(a)
`
`
`
`
`
`IPR2021-00365
`Patent 10,273,710 B2
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`
`INTRODUCTION
`I.
`A. Background and Summary
`Global Shade Corporation (“Petitioner”) filed a Petition (Paper 1,
`“Pet.”) requesting inter partes review of claims 7–9 and 11 of U.S. Patent
`No. 10,273,710 B2 (Ex. 1001, “the ’710 patent”). With-U E-Commerce
`(Shanghai) Co., Ltd. (“Patent Owner”) filed a Preliminary Response (Paper
`7). With our authorization, Petitioner filed a Preliminary Reply to the
`Preliminary Response (Paper 8), and Patent Owner filed a Preliminary Sur-
`reply (Paper 9).
`We concluded that Petitioner satisfied the burden, under 35 U.S.C.
`§ 314(a), to show that there was a reasonable likelihood that Petitioner
`would prevail with respect to at least one of the challenged claims.
`Accordingly, on behalf of the Director (37 C.F.R. § 42.4(a)), and in
`accordance with SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1353 (2018), we
`instituted an inter partes review of all the challenged claims, on all the
`asserted grounds. Paper 10 (“Dec. Inst.”).
`Patent Owner filed a Response. Paper 14 (“PO Resp.”). Petitioner
`filed a Reply. Paper 19 (“Reply”). Patent Owner filed a Sur-reply.
`Paper 23 (“Sur-reply”).
`Petitioner submitted twenty-three exhibits. See Exs. 1001–1105 (not
`consecutive; exhibit numbers 1019–1100 not used); see also Paper 32
`(Petitioner’s Updated Exhibit List). Petitioner relies, in part, on the
`Declaration testimony of Jeffrey L. Stein, Ph.D. See Exs. 1002, 1102.
`Patent Owner submitted forty-six exhibits. See Exs. 2001–2046; see
`also Paper 33 (Patent Owner’s Updated Exhibit List). Patent Owner relies,
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`in part, on the Declaration testimony of Thomas Bewley. See Exs. 2033,
`2045.
`Patent Owner submitted a contingent motion to amend claims 8, 9,
`and 11 with substitute claims 12, 13, and 14, respectively. Paper 15 (“Mot.
`Amend.”). Petitioner opposed the motion. Paper 18 (“Mot. Amend. Opp.”).
`Patent Owner filed a reply (Paper 24 (“Mot. Amend. Reply”)); Petitioner
`filed a Sur-reply (Pape 29 (“Mot. Amend. Sur-reply”)).
`A hearing was held May 4, 2022. Paper 35 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. We enter this Final Written
`Decision pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`Petitioner has the burden of proving unpatentability of a claim by a
`preponderance of the evidence. 35 U.S.C. § 316(e).
`Based on the findings and conclusions below, we determine that
`Petitioner has proven that claims 8, 9, and 11 are unpatentable. Petitioner
`has not proven that claim 7 is unpatentable.
`We also deny the motion to amend.
`B. Real Parties-in-Interest
`Petitioner identifies itself as the real party-in-interest. Pet. 118.
`Patent Owner identifies itself as the real party-in-interest. Paper 3, 1.
`C. Related Matters
`The parties inform us that the ’710 patent is the subject of litigation in
`With-U E-Commerce (Shanghai) Co., Ltd. v. Global Shade Corp., No. 8:20-
`cv-00917-JVS-JDE (C.D. Cal.). Pet. 118; Paper 3, 1. This case has been
`stayed pending the outcome of this IPR proceeding. See Ex. 3001 (“All
`proceedings in this action are STAYED pending final resolution of Global
`Shade’s December 22, 2020, petition for inter partes review (IPR) of the
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`asserted claims of the ’710 patent (IPR2021-00365), including any appeals
`therefrom.”).
`
`D. The ’710 Patent
`We make the following findings of fact concerning the ’710 patent.
`The ’710 patent, titled “Central Lock and Canopy,” issued on April
`30, 2019, from a US national stage entry from PCT Application
`CN 2016/091675, filed on July 26, 2016. Ex. 1001, codes (22), (54), (45),
`(86), 1:6–7. The ’710 patent claims foreign priority to Japanese Patent
`Application 2015-004155 U, filed on August 18, 2015. Id. at code (30),
`1:7–8.
`The ’710 patent describes a canopy with a central lock that enables the
`canopy to be supported and uniformly stressed. Id. at 1:55–59.
`Annotated Figure 16 of the ’710 patent is reproduced below. Figure
`16 shows an example of a canopy in an unfolded state. Id. at 3:1–2. The red
`circle, added to Figure 16, identifies the location of central lock 2,
`unnumbered in Figure 16.
`
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`As shown in Figure 16, the disclosed canopy includes four supporting
`legs 6, “outer retractable units” 7 connected between every two adjacent
`supporting legs 6, and “inner retractable units” 8 connected to each
`supporting leg 6. Ex. 1001, 4:47–51. Outer retractable units 7 and inner
`retractable units 8 form a roof frame of the canopy (coverable by fabric), and
`the roof frame and supporting legs 6 may form a canopy frame. Id. at 4:51–
`55. In the Figure 16 embodiment, there are four supporting legs 6.
`Accordingly, there are four outer retractable units 7 and four inner
`retractable units 8 respectively. Id. at 4:57–59.
`Figure 1 from the ’710 patent is an exploded view of the disclosed
`central lock that connects inner ends of inner retractable units 8. Figure 1,
`annotated to include a text box with reference numeral labels of the parts
`shown in Figure 1, is reproduced below.
`
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`Figure 4 from the ’710 patent is a sectional view of the central lock
`shown in Figure 2. Ex. 1001, 2:52. Figure 4, annotated to include a text box
`with reference numeral labels of locking piece 4 shown in Figure 4, is
`reproduced below.
`
`
`As shown in Figure 4 and described in the written description, locking
`piece 4, in bottom cap 3, is “capable of moving back and forth along a radial
`direction of the center pole 2.” Ex. 1001, 4:21–23. A “compressible elastic
`element” (id. at 7:30–37) or “[p]referably . . . a spring 5” facilitates radial
`movement of locking piece 4 (id. at 7:48–50).
`A “first through hole 41,” through which center pole 2 can pass is
`provided in locking piece 4. Id. at 4: 23–27. Center pole 2 is provided with
`a “clamping groove 21” and a “clamp locking part [22] located at the lower
`end of the clamping groove 21.” Id.; see also id. at Fig. 6. As explained in
`the written description, “first through hole 41” has two components,
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`“clamping hole part 411” and “through hole part 412 arranged side by side.”
`Ex. 1001, 7:58–60; see also id. at Fig. 13.
`The locked position of the central lock is illustrated in Figure 6 of the
`’710 patent, reproduced below. Ex. 1001, 4:27–28. Figure 6 illustrates a
`schematic view of a connection between center pole 2 and center bottom cap
`3, unnumbered in Figure 6. Id. at 2:54–55.
`
`
`When the central lock is in a locked state, as illustrated in Figure 6,
`part of an inner wall of first through hole 41 of locking piece 4 is clamped
`with clamping groove 21 of center pole 2. Id. at 4:27–30. In the locked
`position, an upper end surface of “clamp locking part 22” abuts against a
`lower end surface of “locking piece 4.” Id. at 4:30–32. This prevents
`“clamp locking part 22” from moving through “first through hole 41,” and
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`thus connects and locks together center pole 2 and center bottom cap 3.
`Id. at 4:32–35.
`To put the central lock in its locking position, the user applies a force
`to move center bottom cap 3 upwards, so center pole 2 moves further into
`bottom cap 3 and clamp locking part 22 overcomes the pressure applied by
`spring 5 to locking piece 4 to move the locking piece inwards, “so that the
`clamping hole part 411 of the first through hole 41 is enabled to be clamped
`with the clamping groove 21 of the center pole 2.” Ex. 1001, 9:32–64.
`To unlock the central lock, the user presses “locking piece pressing
`part 44” inwards to overcome the elastic force of spring 5 and thus move the
`locking piece 4 inwards. Id. at 9:67–10. This allows the inner wall of
`“clamping hole part 411” to separate from “clamping groove 21” and allows
`center pole 2 to align with “through hole part 412” of “first through hole
`41,” and thereby allows center bottom cap 3 to move downwards.
`Id. at 9:67–10:4.
`
`The canopy frame shown in Figure 16 is also foldable. Id. at 4:67–
`5:16, Fig. 19. Figure 19 of the ’710 patent is reproduced below.
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`Figure 19 of the ’710 patent depicts an example of a canopy being
`folded or unfolded. Id. at 3:8–9. When the canopy is unfolding from a
`folded state, four supporting legs 6 may be centered about the central lock
`and unfolded outwards, with outer retractable units 7 and inner retractable
`units 8 gradually stretching outwards. Id. at 4:67–5:4. After the canopy is
`unfolded, center bottom cap 3 is pushed upwards into its locked position. Id.
`at 5:17–19. The canopy may be unlocked, as described above, to enable
`inner retractable units 8 to be folded towards the central lock. Id. at 5:40–
`49.
`
`A second embodiment of the disclosed central lock is shown in
`Figures 22–26. Figure 22, an exploded view of the second embodiment,
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`similar to the exploded view of the first embodiment in Figure 1, is
`reproduced below.
`
`
`In the second embodiment, locking piece 4 comprises elastic wire 45
`and unlocking push piece 46. Id. at 8:18–20.
`As shown in Figure 24, reproduced below, elastic wire 45 is U-shaped
`and comprises an elastic wire “body part 451” and “two elastic deforming
`parts 452.” Ex. 1001, 8:21–23. Elastic deforming parts 452 are curved
`inwardly, toward each other (the written description describes them as “X-
`shaped”), with “narrow opening 453” forming the “first through hole” in the
`area of the reduced opening between elastic deforming parts 452.
`Id. at 8:23–27.
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`In this second embodiment, to lock the structure, as shown in Figure
`24, center pole 2 is inserted into bottom cap 3, which causes “clamp locking
`part 22” to widen “narrow opening 453” until “clamping groove 21” in
`center pole 2 is aligned with the inner wall of opening 453. Id. at 8:33–37.
`In this aligned position, opening 453 is narrowed under the effect of the
`“elastic restoring force” of elastic wire 45. Id. at 8:38–39. This “elastic
`restoring force” enables the inner wall of opening 453 “to be clamped in”
`clamping groove 21 of center pole 2. Id. at 8:39–41.
`In this second embodiment, to unlock the structure, as shown in
`Figures 25 and 26, the user presses inwardly “unlocking push piece” 46,
`which widens socket 454 of elastic wire 45 until opening 453 is enlarged
`sufficiently so that clamp locking part 22 is capable of passing through
`opening 453. Ex. 1001, 8:44–49. This allows separation between top cap 1
`and bottom cap 3, and thereby allows the canopy to be folded. Id. at 8:50–
`53.
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`
`E. Illustrative Claims
`Petitioner challenges claims 7–9 and 11. Claims 7 and 8 are
`independent and are reproduced below (with subparagraph notations inserted
`as in the Petition):
`7. [pre] A central lock, comprising
`[A] a center pole (2),
`[B] a center top cap (1) fixedly arranged at one end of the
`center pole (2) and
`[C] a center bottom cap (3) detachably connected to the
`other end of the center pole (2), wherein,
`[D] a locking piece (4) capable of moving back and forth
`along a radial direction of the center pole (2) is received in the
`center bottom cap (3),
`[E] a first through hole (41) through which the center pole
`(2) can pass through is provided in the locking piece (4), and
`[F][1] a portion of the other end of the center pole (2) is
`provided with a clamping groove (21) and
`[F][2] a clamp locking part (22) located at the lower end
`of the clamping groove (21);
`[G] when the central lock is in a locked state, part of an
`inner wall of the first through hole (41) of the locking piece (4)
`is clamped with the clamping groove (21) of the center pole (2),
`and an upper end surface of the clamp locking part (22) abuts
`against a lower end surface of the locking piece (4); and
`[H] when the central lock is in an unlocked state, the inner
`wall of the first through hole (41) of the locking piece (4) is
`separated from the clamping groove (21) and the clamp locking
`part (22) can pass through the first through hole (41),
`[I] and wherein the first through hole (41) comprises a
`clamping hole part (411) and a through hole part (412) arranged
`side by side, the clamping hole part (411) has a diameter not
`smaller than that of the clamping groove (21), the through hole
`part (412) has a diameter greater than that of the clamp locking
`part (22).
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`Ex. 1001, 12:62–13:20.1
`8. [pre] A collapsible canopy with a center lock, said
`collapsible canopy comprising:
`[A] at least three supporting legs,
`[B] a plurality of outer retractable units connected between
`every two adjacent supporting legs, and
`[C] a plurality of inner retractable units connected to each
`supporting leg, wherein said outer retractable units and said inner
`retractable units form a roof frame for said collapsible canopy,
`and
`
`[D] a center lock, wherein said plurality of inner
`retractable units are connected through said center lock, said
`center lock comprising:
`[D][i] a center top cap,
`[D][ii] a center pole, comprising:
`[D][ii][1] a center pole top end rigidly
`connected to said center top cap,
`[D][ii][2] a center pole bottom end,
`[D][ii][3] a clamping groove, and
`[D][ii][4] a clamp locking part located at the
`lower end of said clamping groove, and
`[D][iii] a center bottom cap detachably connected to
`said center pole bottom end, said center bottom cap
`comprising:
`
`[D][iii][1] a spring loaded locking piece for
`engaging said clamping groove, and
`[D][iii][2] a clamp locking part receiving
`section for receiving said clamp locking part,
`[E] wherein when said center lock is in a locked state said
`spring loaded locking piece is engaged with said clamping
`groove and said clamp locking part is inserted into said clamp
`
`1 Bold font reference numerals are included in claim 7 of the ’710 patent.
`Reference numerals are not included in claim 8 of the patent.
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`locking part receiving section, wherein when said center lock is
`in an unlocked state said center pole is detached from said center
`bottom cap.
`Id. at 13:21–14:19.
`
`F. Asserted Grounds
`Petitioner contends that the challenged claims would have been
`unpatentable based on the following grounds:
`References/Basis
`Claim(s) Challenged 35 U.S.C. §2
`Rousselle,3 Tsai4
`8, 9,11
`103
`Chang,5 Tsai
`8, 9, 11
`103
`Tsai, Rousselle or Tsai, Chang
`8, 9, 11
`103
`Ohnishi6
`7
`102(a)(1)
`Ohnishi
`7
`103
`Pet. 7–8. In support of its proposed grounds, Petitioner relies on the
`Declaration testimony of Jeffrey L. Stein, Ph.D. See Exs. 1002, 1102.
`Patent Owner relies on the Declaration testimony of Thomas Bewley,
`Ph.D. See Exs. 2023, 2045.
`
`
`2 The relevant sections of the Leahy-Smith America Invents Act (“AIA”),
`Pub. L. No. 112–29, took effect on March 16, 2013. The application that
`issued as the ’710 patent was filed after March 16, 2013. See Ex. 1001,
`codes (22), (30). Thus, we apply the AIA version of these statutes. See
`35 U.S.C. § 100(i).
`3 US 6,345,639 B2, issued Feb. 12, 2002 (Ex. 1005). Petitioner contends
`that Rousselle is a printed publication qualifying as prior art to the
`’710 patent under § 102(a)(1). Pet. 8.
`4 GB 2321913 A, published Aug. 12, 1998 (Ex. 1007). Petitioner contends
`that Tsai qualifies as prior art to the ’710 patent under § 102(a)(1). Pet. 8.
`5 WO 00/23676, published Apr. 27, 2000 (Ex. 1006). Petitioner contends
`that Chang qualifies as prior art to the ’710 patent under § 102(a)(1). Pet. 8.
`6 US 8,066,300 B2, issued Nov. 29, 2011 (Ex. 1008). Petitioner contends
`that Ohnishi qualifies as prior art to the ’710 patent under § 102(a)(1). Pet.
`8.
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`II. UNPATENTABILITY ANALYSIS
`A. Legal Standards
`Anticipation
`1.
`“The hallmark of anticipation is prior invention.” Net MoneyIN, Inc.
`v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). As explained in Net
`MoneyIN,
`unless a reference discloses within the four corners of the
`document not only all of the limitations claimed but also all of
`the limitations arranged or combined in the same way as recited
`in the claim, it cannot be said to prove prior invention of the thing
`claimed and, thus, cannot anticipate under 35 U.S.C. § 102.
`Id. at 1371; see also Verdegaal Bros. v. Union Oil Co., 814 F.2d 628, 631
`(Fed. Cir. 1987) (“A claim is anticipated only if each and every element as
`set forth in the claim is found, either expressly or inherently described, in a
`single prior art reference.”). “The identical invention must be shown in as
`complete detail as is contained in the . . . claim.” Richardson v. Suzuki
`Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989).
`Obviousness
`2.
`Section 103(a) forbids issuance of a patent when “the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations, including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) when available, evidence
`such as commercial success, long felt but unsolved needs, and failure of
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`others. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966); see KSR, 550
`U.S. at 407 (“While the sequence of these questions might be reordered in
`any particular case, the [Graham] factors continue to define the inquiry that
`controls.”). The Court in Graham explained that these factual inquiries
`promote “uniformity and definiteness,” for “[w]hat is obvious is not a
`question upon which there is likely to be uniformity of thought in every
`given factual context.” 383 U.S. at 18.
`The Supreme Court made clear that we apply “an expansive and
`flexible approach” to the question of obviousness. KSR, 550 U.S. at 415.
`Whether a patent claiming the combination of prior art elements would have
`been obvious is determined by whether the improvement is more than the
`predictable use of prior art elements according to their established functions.
`Id. at 417.
`In determining whether there would have been a motivation to
`combine prior art elements to arrive at the claimed invention, it is
`insufficient to simply conclude the combination would have been obvious
`without identifying any reason why a person of ordinary skill in the art
`would have made the combination. Metalcraft of Mayville, Inc. v. The Toro
`Co., 848 F.3d 1358, 1366 (Fed. Cir. 2017).
`Moreover, in determining the differences between the prior art and the
`claims, the question under 35 U.S.C. § 103 is not whether the differences
`themselves would have been obvious, but whether the claimed invention as a
`whole would have been obvious. Litton Indus. Prods., Inc. v. Solid State
`Sys. Corp., 755 F.2d 158, 164 (Fed. Cir. 1985) (“It is elementary that the
`claimed invention must be considered as a whole in deciding the question of
`obviousness.”); see also Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530,
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`1537 (Fed. Cir. 1983) (“[T]he question under 35 U.S.C. § 103 is not whether
`the differences themselves would have been obvious. Consideration of
`differences, like each of the findings set forth in Graham, is but an aid in
`reaching the ultimate determination of whether the claimed invention as a
`whole would have been obvious.”).
`As a factfinder, we also must be aware “of the distortion caused by
`hindsight bias and must be cautious of arguments reliant upon ex post
`reasoning.” KSR, 550 U.S. at 421.
`Applying these general principles, we consider the evidence and
`arguments of the parties.
`B. Level of Ordinary Skill in the Art
`The level of skill in the art is “a prism or lens” through which we view
`the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d
`1350, 1355 (Fed. Cir. 2001). “This reference point prevents . . . factfinders
`from using their own insight or, worse yet, hindsight, to gauge obviousness.”
`Id.
`
`Factors pertinent to a determination of the level of ordinary skill in the
`art include: (1) educational level of the inventor; (2) type of problems
`encountered in the art; (3) prior art solutions to those problems; (4) rapidity
`with which innovations are made; (5) sophistication of the technology; and
`(6) educational level of workers active in the field. Env’t Designs, Ltd. v.
`Union Oil Co., 713 F.2d 693, 696–97 (Fed. Cir. 1983) (citing Orthopedic
`Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 1381–82 (Fed.
`Cir. 1983)). Not all such factors may be present in every case, and one or
`more of these or other factors may predominate in a particular case. Id.
`Moreover, these factors are not exhaustive but are merely a guide to
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`determining the level of ordinary skill in the art. Daiichi Sankyo Co. v.
`Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007).
`In determining a level of ordinary skill, we also may look to the prior
`art, which may reflect an appropriate skill level. Okajima, 261 F.3d at 1355.
`Additionally, the Supreme Court informs us that “[a] person of
`ordinary skill is also a person of ordinary creativity, not an automaton.”
`KSR, 550 U.S. at 421.
`“The Graham analysis includes a factual determination of the level of
`ordinary skill in the art. Without that information, a district court cannot
`properly assess obviousness because the critical question is whether a
`claimed invention would have been obvious at the time it was made to one
`with ordinary skill in the art.” Custom Accessories, Inc. v. Jeffrey-Allan
`Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986).
`Neither party provides any persuasive evidence or argument
`concerning the factors identified above or any other factors relevant to
`determining the level of ordinary skill.
`Petitioner contends that a person having ordinary skill in the art
`“would have had a degree in the mechanical arts, or a related discipline, and
`at least two years of experience in the design and/or analysis of mechanical
`devices, fabricated frames, and/or kinematic linkages.” Pet. 7 (emphasis
`added) (citing Ex. 1002 ¶¶ 26–29). Petitioner also contends that
`“[a]dditional work experience could serve as a substitute for a formal degree
`and vice versa.” Id.
`Dr. Stein testifies that “[t]he engineers and engineering Bachelor’s,
`Master’s, and Ph.D. students that I worked with during the 2000s and 2010s
`had the requisite knowledge to make and use systems as described in the
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`claims of the ’710 patent.” Ex. 1002 ¶ 28. Dr. Stein does not provide the
`underlying facts or data on which his opinion testimony is based.
`Accordingly, it is entitled to little or no weight.
`At the hearing, when asked to clarify what kind of “degree” was
`intended, counsel for Petitioner responded
`I don’t know that it matters to the outcome. I think that there is
`some flexibility. And this is not the highest tech sort of
`invention, technology, and so I think an associate’s degree, a
`bachelor’s degree, you know, anything in there would be
`sufficient to understand what’s going on here.
`Tr. 11:13–19.
`Patent Owner did not take a substantive position on the level of skill
`in its Response. See PO Resp. 25–26. Counsel for Patent Owner stated at
`the hearing that “I think you don’t need a Ph.D.” Tr. 44.
`
`We determine that a person of ordinary skill would have had a
`Bachelor’s degree in mechanical engineering and two years of relevant
`experience. A recipient of other academic degrees may qualify as a person
`of ordinary skill if they have taken coursework or have experience in a
`pertinent technology. Additional education could offset less work
`experience; additional work experience could offset less education or
`coursework. This definition is consistent with the prior art of record and the
`skill reflected in the Specification of the ’710 patent.
`C. Claim Construction
`“In an inter partes review proceeding, a claim of a patent . . . shall be
`construed using the same claim construction standard that would be used to
`construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R.
`§ 42.100(b). Under this standard, we construe the claim “in accordance with
`the ordinary and customary meaning of such claim as understood by one of
`
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`
`ordinary skill in the art and the prosecution history pertaining to the patent.”
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).
`Petitioner does not propose a specific construction for any claim term
`in this proceeding. Pet. 7. Rather, Petitioner asserts that “[n]o claim terms
`require construction to resolve the challenges in this Petition.” Id. In this
`IPR proceeding, “Petitioner: (a) assumes the claims are not invalid under
`§112; and (b) interprets the claims consistent with PO’s Infringement
`Contentions.” Id.
`Patent Owner argues that one phrase in claim 8 requires specific
`construction, which is the phrase “locking piece for engaging said clamping
`groove” in clause 8 (D) (iii)(1) and also appearing in clause 8 (E). PO Resp.
`24–40. According to Patent Owner, this phrase should be construed in
`accordance with 35 U.S.C. § 112(f).7 Limitations that invoke this statutory
`section “are generally known as ‘means-plus-function’ or ‘step-plus-
`function’ limitations.” Dyfan, LLC v. Target Corp., 28 F.4th 1360, 1365
`(Fed. Cir. 2022).
`
`
`7 35 U.S.C. § 112(f) states:
`(f) ELEMENT IN CLAIM FOR A COMBINATION. An
`element in a claim for a combination may be expressed as a
`means or step for performing a specified function without the
`recital of structure, material, or acts in support thereof, and such
`claim shall be construed to cover the corresponding structure,
`material, or acts described in the specification and equivalents
`thereof.
`
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`
`“spring loaded locking piece for engaging
`1.
`said clamping groove” (claim 8, clause D(iii)(1))
`“To determine whether § 112, para. 6[8] applies to a claim limitation,
`[Federal Circuit] precedent has long recognized the importance of the
`presence or absence of the word ‘means.’” Williamson v. Citrix Online,
`LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (Part II.C.1. of this opinion
`decided by the Court en banc). Under that precedent, “use of the word
`‘means’ in a claim element creates a rebuttable presumption that § 112, para.
`6 applies.” Id. (citing Personalized Media Commc’ns, LLC v. Int’l Trade
`Comm’n, 161 F.3d 696, 703–04 (Fed. Cir. 1998)). Applying the converse,
`“failure to use the word ‘means’ also creates a rebuttable presumption—this
`time that § 112, para. 6 does not apply.” Id. The Federal Circuit also noted,
`however, that in making the assessment of whether the limitation in question
`is a “means-plus-function” term subject to the strictures of § 112, para. 6,
`their cases have emphasized that “the essential inquiry is not merely the
`presence or absence of the word ‘means’ but whether the words of the claim
`are understood by persons of ordinary skill in the art to have a sufficiently
`definite meaning as the name for structure.” Id.; see also Dyfan, 28 F.4th
`at 1365 (citing Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580,
`1583 (Fed. Cir. 1996)) (“What is important is . . . that the term, as the name
`for structure, has a reasonably well understood meaning in the art.”).
`The phrase in question in this IPR proceeding, “spring loaded locking
`piece for engaging said clamping groove” clearly does not use the word
`
`
`8 35 U.S.C.§ 112, para. 6, applicable to any patent application filed before
`September 16, 2012, is the predecessor of the current statutory section,
`35 U.S.C. § 112(f), which is applicable to the proceeding before us. The
`former § 112, para. 6, is identical to the current statutory section, § 112(f).
`
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`“means.” As held in Williamson, however, this does not end our analysis.
`Generic terms such as “mechanism,” “element,” “device,” and other nonce
`words that reflect nothing more than verbal constructs may be used in a
`claim in a manner that is tantamount to using the word “means” because
`they typically do not connote sufficiently definite structure and therefore
`may invoke § 112(f). Williamson, 792 F.3d at 1350.
`Accordingly, because the phrase in question does not use the word
`“means,” we begin our claim construction analysis with “a rebuttable
`presumption that the term conveys sufficiently definite structure and is not
`subject to § 112[(f)].” MTD Prod. Inc. v. Iancu, 933 F.3d 1336, 1341 (Fed.
`Cir. 2019); see also Zeroclick, LLC v. Apple Inc., 891 F.3d 1003, 1007 (Fed.
`Cir. 2018) (“Neither of the limitations at issue uses the word ‘means.’
`Presumptively, therefore, § 112, ¶ 6 does not apply to the limitations.”).
`A challenger can rebut the presumption by demonstrating that the
`“claim term fails to recite sufficiently definite structure or else recites
`function without reciting sufficient structure for performing that function.
`Zeroclick, 891 F.3d at 1007 (citations omitted).
`“Intrinsic evidence, such as the claims themselves and the prosecution
`history, can be informative in determining whether the disputed claim
`language recites sufficiently definite structure or was intended to invoke
`§ 112 ¶ 6.” Dyfan, 28 F.th at 1365–66. “In addition, because this inquiry
`turns on the understanding of a person of ordinary skill in the art, we often
`look to extrinsic evidence when determining whether a disputed limitation
`would have connoted structure to a person of ordinary skill.” Id. at 1366
`(citing Linear Tech. Corp. v. Impala Linear Corp., 379 F.3d 1311, 1320
`(Fed. Cir. 2004) (noting expert witness testimony and technical dictionaries
`
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`“help determine whether a claim term” would have had an “understood
`meaning in the art”) (quoting CCS Fitness, Inc. v. Brunswick Corp., 288
`F.3d 1359, 1369 (Fed. Cir. 2002)). “In cases where it is clear that a claim
`term itself connotes some structure to a person of ordinary skill in the art,
`‘the presumption that § 112, ¶ 6 does not apply is determinative’ in the
`absence of ‘more compelling evidence of the understanding of one of
`ordinary skill in the art.’” Id. (quoting Apex Inc. v. Raritan Comput., Inc.,
`325 F.3d 1364, 1373 (Fed. Cir. 2003).
`Thus, we turn to the arguments and the evidence relied on by the
`parties. We start with the claims.
`a) The Claims
`We make the following findings of fact concerning the claims.
`As we have stated above, claim 8 does not use the word “means” in
`the phrase “spring loaded locking piece for engaging said clamping groove.”
`Thus, there is a presumption that § 112(f) does not apply. Williamson, 792
`F.3d at 1348.
`Petitioner asserts that the phrases “spring loaded” and “locking piece”
`in claim 8 each are structural terms and are so understood by a person of
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