Trials@uspto.gov
`571-272-7822
`
`
`
`Paper No. 10
`Entered: March 23, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`THE BRINKMANN CORPORATION,
`Petitioner,
`
`v.
`
`A&J MANUFACTURING, LLC,
`Patent Owner.
`____________
`
`IPR2015-00056
`Patent 8,381,712 B1
`____________
`
`
`
`Before RICHARD E. RICE, SCOTT E. KAMHOLZ, and
`CARL M. DEFRANCO, Administrative Patent Judges.
`
`
`
`KAMHOLZ, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`MICROSOFT CORP. EX. 1004
`Page 1 of 17
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`571-272-7822
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`
`Paper No. 10
`Entered: March 23, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`THE BRINKMANN CORPORATION,
`Petitioner,
`
`v.
`
`A&J MANUFACTURING, LLC,
`Patent Owner.
`____________
`
`IPR2015-00056
`Patent 8,381,712 B1
`____________
`
`
`
`Before RICHARD E. RICE, SCOTT E. KAMHOLZ, and
`CARL M. DEFRANCO, Administrative Patent Judges.
`
`
`
`KAMHOLZ, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`MICROSOFT CORP. EX. 1004
`Page 1 of 17
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`IPR2015-00056
`Patent 8,381,712 B1
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`INTRODUCTION
`
`
`
`I.
`
`The Brinkmann Corporation filed a Petition (Paper 1, “Pet.”) on Oct.
`
`13, 2014 requesting institution of an inter partes review of claims 1–20 of
`
`U.S. Patent No. 8,381,712 B1 (Ex. 1001, “the ’712 patent”). Patent Owner
`
`A&J Manufacturing, LLC filed a Preliminary Response (Paper 6,
`
`“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314.
`
`We institute inter partes review because we determine that the
`
`information presented in the Petition and in the Preliminary Response shows
`
`that there is a reasonable likelihood that Petitioner would prevail with
`
`respect to at least one of the claims challenged in the Petition. See
`
`35 U.S.C. § 314(a). In particular, we institute inter partes review with
`
`respect to claims 1–20.
`
`II. DISCUSSION
`
`A. The ’712 Patent
`
`The ’712 patent is directed to a barbecue grill that allows, for
`
`example, simultaneous gas grilling and charcoal-fueled grilling. Ex. 1001,
`
`2:25–36.
`
`Claim 1 is illustrative of the claimed subject matter and is reproduced
`
`below.
`
`1. A barbecue grill having multiple cooking
`units, comprising:
`a support structure configured to support a
`plurality of cooking units;
`a first cooking unit configured to cook food
`using gas cooking fuel, the first cooking unit
`attached
`to
`the support structure and
`including at least one first grill, the first
`
`2
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`cooking unit further including an openable
`first cover attached to the first cooking unit
`that selectively covers the first grill, wherein
`the first cover includes at least one exhaust;
`and
`a second cooking unit configured to cook food
`using solid cooking fuel, the second cooking
`unit attached to the support structure and
`including at least one second grill, the
`second cooking unit further including an
`openable second cover attached
`to
`the
`second cooking unit that selectively covers
`the second grill,
`wherein the second cover includes at least one
`exhaust, wherein the first cooking unit and
`the second cooking unit are simultaneously
`operable to cook food and the first grill and
`second
`grill
`are
`selectively
`and
`independently coverable.
`
`
`
`B. Challenges
`
`Petitioner challenges the claims as follows.
`
`Reference(s)
`
`Koziol1 and Holland2
`
`Basis
`
`§ 103
`
`Koziol, Holland, and Ducate3 § 103
`
`Claims
`Challenged
`1, 4–10, and 13–
`16
`2 and 11
`
`Koziol, Holland, and Milloy4 § 103
`
`3 and 12
`
`
`1 U.S. Pat. No. 5,632,265, iss. May 27, 1997 (Ex. 1003).
`2 U.S. Pat. App. Pub. No. 2002/0179081 A1, pub. Dec. 2, 2002 (Ex. 1004).
`3 U.S. Pat. No. 4,886,045, iss. Dec. 12, 1989 (Ex. 1006).
`4 U.S. Pat. No. 4,664,026, iss. May 12, 1987 (Ex. 1007).
`
`3
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`Reference(s)
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`Basis
`
`Koziol, Holland, and Oliver5 § 103
`
`Oliver and Holland
`
`§ 103
`
`Oliver, Holland, and Ducate
`
`§ 103
`
`Claims
`Challenged
`17–20
`
`1, 4, 5, 7–9, 10,
`and 13–20
`2, 6, and 11
`
`Oliver, Holland, and Milloy
`
`§ 103
`
`3 and 12
`
`BGE Manual I, 6 Holland,
`and BGE Manual II7
`BGE Manual I, Holland,
`Milloy, and Beller8
`BGE Manual I, Holland,
`BGE Manual II, and Ducate
`BGE Manual I, Holland,
`BGE Manual II, and Oliver
`
`§ 103
`
`§ 103
`
`1, 2, 4, 5, 7–11,
`and 13–16
`3 and 12
`
`§ 103
`
`6
`
`§ 103
`
`17–20
`
`Petitioner also relies on expert testimony of Glen Stevick, Ph.D., P.E.
`
`in support of its challenges. Dr. Stevick’s testimony is provided as Exhibit
`
`1010.
`
`C. Claim Construction
`
`In an inter partes review, claim terms in an unexpired patent are
`
`interpreted according to their broadest reasonable construction in light of the
`
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48766 (Aug. 14,
`
`2012); accord In re Cuozzo Speed Techs., LLC, 113 USPQ2d 1613, 1621
`
`
`5 U.S. Pat. No. 6,189,528 B1, iss. Feb. 20, 2001 (Ex. 1005).
`6 “Big Green Egg Cooking Center Use and Care Manual” (Ex. 1008).
`7 “Big Green Egg Cookbook and Manual” (Ex. 1009).
`8 U.S. Pat. No. 5,195,423, iss. Mar. 23, 1993 (Ex. 1013).
`
`4
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`(Fed. Cir. 2015) (“Even if the broadest reasonable interpretation standard
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`were not incorporated into the IPR provisions of the statute, the standard was
`
`properly adopted by PTO regulation.”). Claim terms are given their ordinary
`
`and customary meaning, as would be understood by one of ordinary skill in
`
`the art in the context of the entire disclosure. In re Translogic Tech., Inc.,
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`504 F.3d 1249, 1257 (Fed. Cir. 2007).
`
`We determine that no claim terms require express construction for
`
`purposes of this decision.
`
`D. Related Proceedings
`
`The salient facts concerning certain other proceedings involving the
`
`’712 patent, as related by Patent Owner, are presented here.
`
`Patent Owner sued Petitioner for infringement of the ’712 patent on
`
`August 21, 2013 in a case captioned A&J Manufacturing v. The Brinkmann
`
`Corp., No. 2:13-cv-00114 (S.D. Ga) (“the Georgia ’114 civil action”). Paper
`
`5, 2; Prelim. Resp. 5–6. Patent Owner simultaneously sued several other
`
`defendants for infringement of the ’712 patent in a series of cases filed in the
`
`same court on the same day. Paper 5, 2; Prelim. Resp. 6. Patent Owner sent
`
`Petitioner a copy of the complaint in the Georgia ’114 civil action and a
`
`request for waiver of service on October 7, 2013. Prelim. Resp. 7; Ex. 2010,
`
`1. Petitioner executed the waiver on October 14, 2013. Ex. 2010, 2. Patent
`
`Owner filed Petitioner’s waiver of service with the United States District
`
`Court for the Southern District of Georgia on October 21, 2013. Prelim.
`
`Resp. 7; Ex. 2010, 1 (header stamp).
`
`Also on August 21, 2013, Patent Owner filed a complaint with the
`
`U.S. International Trade Commission (“ITC”) naming 21 respondents,
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`including Petitioner, Char-Broil, LLC, Academy, Ltd., and Outdoor Leisure
`
`Products, Inc. Prelim. Resp. 5. The ITC instituted an investigation,
`
`captioned In the Matter of Certain Multiple Mode Outdoor Grills, No. 337-
`
`TA-895, and served Petitioner with Patent Owner’s complaint, on September
`
`23, 2013. Prelim. Resp. 6–7; Ex. 2008, 1.
`
`On September 23, 2013, Char-Broil, LLC sued Patent Owner in a
`
`declaratory judgment action challenging the validity of the ’712 patent,
`
`captioned Char-Broil, LLC v. A&J Mfg., LLC, No. 2:13-cv-00140 (S.D. Ga).
`
`Paper 5, 2; Prelim. Resp. 7.
`
`On July 17, 2014, Academy, Ltd. sued Patent Owner in a declaratory
`
`judgment action challenging the validity of the ’712 patent, captioned
`
`Academy, Ltd. v. A&J Mfg., LLC, No. 4:14-cv-02043 (S.D. Tex.). Paper 5,
`
`2; Prelim. Resp. 9.
`
`E. Standing Challenges
`
`Patent Owner challenges Petitioner’s standing to present the Petition
`
`and asserts that institution of inter partes review is barred.
`
`Prelim. Resp. 12–37.
`
`1. 35 U.S.C. § 315(b) Bar Based on Service of Civil Action
`Complaint
`
`Patent Owner argues that Petitioner was served with the complaint in
`
`the Georgia ’114 civil action more than one year before the Petition was
`
`filed, because Petitioner was sent a copy of the complaint on October 7,
`
`2013. Prelim. Resp. 28–37.
`
`This argument is not persuasive. Petitioner waived service of the
`
`complaint, and Patent Owner filed Petitioner’s waiver of service with the
`
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`district court on Oct. 21, 2013. This is the date that Petitioner is deemed to
`
`have been served. See FED. R. CIV. P. 4(d)(4) (“these rules apply as if a
`
`summons and complaint had been served at the time of filing the waiver”);
`
`accord Macauto U.S.A. v. Bos GmbH & KG, IPR2012-00004, Paper 18, 16
`
`(PTAB Jan. 24, 2013); Motorola Mobility LLC v. Arnouse, IPR2013-00010,
`
`Paper 20, 6 (PTAB Jan. 30, 2013); The Scotts Co. LLC v. Encap, LLC,
`
`IPR2013-00110, Paper 12, 3 (PTAB July 3, 2013).
`
`2. 35 U.S.C. § 315(b) Bar Based on Service of ITC Complaint
`
`Patent Owner argues that inter partes review is barred under
`
`35 U.S.C. § 315(b) because Petitioner was served with the complaint in ITC
`
`Investigation No. 337-TA-895 more than one year before the Petition was
`
`filed. Prelim. Resp. 28–37. In particular, Patent Owner argues that the ITC
`
`served the complaint, as part of its Notice of Investigation, on Petitioner on
`
`September 23, 2013. Prelim. Resp. 2; Ex. 2007 (institution notice);
`
`Ex. 2008 (certificate of service for institution notice).
`
`This argument is not persuasive. The phrase “served with a complaint
`
`alleging infringement of the patent” means a complaint in a civil action for
`
`patent infringement, not in an arbitral or administrative proceeding. Amkor
`
`Tech., Inc. v. Tessera, Inc., IPR2013-00242, slip op. at 6–18 (PTAB, Jan. 31,
`
`2014) (Paper 98). As explained in Amkor, we construe the § 315(b) bar as
`
`triggered only by civil actions, because the term “action” in the caption to
`
`§ 315(b), as well as the phrase “served with a complaint,” connote a civil
`
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`action, and because Congress used different language to identify or
`
`encompass proceedings before the ITC. Amkor, Paper 98 at 7, 9–11.9
`
`3. Bars Premised on Failure to Identify Real-Parties-in-
`Interest or Actions of Those Supposed Parties
`
`Patent Owner argues that the defendants named in the other Georgia
`
`civil actions, as well as Petitioner’s co-respondents in the ITC proceeding,
`
`are real-parties-in-interest to this proceeding because they entered into a
`
`joint defense agreement, because many of the unpatentability challenges in
`
`the Petition are similar to the invalidity contentions in the ITC proceeding,
`
`and because Petitioner’s expert witness in this proceeding, Dr. Stevick, was
`
`also the respondents’ expert in the ITC proceeding and was hired jointly by
`
`the respondents. Prelim. Resp. 12–27.
`
`This argument is not persuasive, because it is not supported by
`
`credible evidence that any of the other defendants or respondents played an
`
`actual role in preparing or filing the Petition or has a continuing interest in
`
`this proceeding beyond the common interest in any effect of this review on
`
`other disputes concerning the ’712 patent. On the present record, we
`
`determine, therefore, that institution of inter partes review is not barred
`
`under § 315(a) or (b) due to the actions of the asserted real-parties-in-interest
`
`or privies, nor is the Petition dismissible under § 312(a)(2) for failure to
`
`
`9 Patent Owner argues that Amkor is dicta to the extent it deals with the
`preclusive effect of a “complaint” in an administrative proceeding such as an
`ITC investigation, because Amkor concerned the preclusive effect of a
`“complaint” in an arbitration proceeding. Prelim. Resp. 30. Regardless of
`whether that part of the holding is dicta, we agree with the reasoning.
`
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`identify all real-parties-in-interest. Patent Owner may pursue this matter
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`during its discovery period, in accordance with our rules.
`
`F. Obviousness of Claims 1, 4–10, and 13–16 over Koziol and
`Holland
`
`Petitioner argues that Koziol discloses, or a person of ordinary skill
`
`would have understood from consideration of Koziol, all limitations of claim
`
`1 except the inclusion of an exhaust by each of the first and second covers.
`
`Pet. 9–20 (citing Ex. 1003 passim; Ex. 1010 ¶¶ 74–76, 82, 83, 85, 88, 90, 91,
`
`94, 101–13). According to Petitioner, Koziol discloses inclusion of “cut
`
`outs” to provide combustion air, but these cutouts are not in the covers.
`
`Id. at 15 (citing Ex. 1003, 3:52–56). Petitioner argues that Holland discloses
`
`a grill assembly having exhaust vent 30 on the grill cover. Id. at 15 (citing
`
`Ex. 1004 ¶ 23, Figs. 1–8). Petitioner argues that it would have been obvious
`
`to add Holland’s cover exhausts to Koziol’s covers in view of Holland’s
`
`teaching that it is common to provide grills with exhaust vents to eliminate
`
`smoke. Id. (citing Ex. 1004 ¶ 4; Ex. 1010 ¶¶ 95–97). Petitioner makes
`
`analogous arguments concerning claim 10.10
`
`Patent Owner argues that Koziol and Holland do not invalidate the
`
`claims of the ’712 patent for the reasons given in the Final Initial
`
`
`10 Petitioner argues that claim 10 recites several limitations in means-plus-
`function format, including a “second means for cooking food” which
`includes an “openable second cover means,” which in turn includes “at least
`one exhaust” means. Pet. 20–21. Whatever else the “at least one exhaust”
`means may encompass, we determine for purposes of this decision that it
`encompasses exhaust structures 112, 212, and 312 disclosed in the ’712
`patent.
`
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`Determination issued in the ITC proceeding. Prelim. Resp. 37 (citing
`
`Ex. 2001, 63–77). This argument is unpersuasive, because Patent Owner
`
`does not identify what those reasons are in the body of the Preliminary
`
`Response (see 37 C.F.R. § 42.6(a)(3)) and because the issue under
`
`consideration before us—unpatentability—is not the same as the issue that
`
`was before the ITC—invalidity of claims in the face of a presumption of
`
`validity. See 35 U.S.C. §§ 316(e), 318(a); Changes to Implement Inter
`
`Partes Review Proceedings, Post-Grant Review Proceedings, and
`
`Transitional Program for Covered Business Method Patents; Final Rule,
`
`77 Fed. Reg. 48756, 48697 (Aug. 14, 2012); cf. 35 U.S.C. § 282(a).11
`
`Upon consideration of the arguments and evidence presented in the
`
`Petition and in the Preliminary Response, we determine that Petitioner has
`
`demonstrated a reasonable likelihood that claims 1 and 10 are unpatentable
`
`under 35 U.S.C. § 103(a) for obviousness over Koziol and Holland. We
`
`have considered Petitioner’s arguments and evidence directed to dependent
`
`claims 4–9 and 13–16 and are persuaded of a reasonable likelihood that
`
`these claims are unpatentable as well.
`
`G. Obviousness of Claims 2 and 11 over Koziol, Holland, and Ducate
`
`Claim 2 depends from claim 1 and further requires a side burner for
`
`preparing food using radiant heat or flames simultaneously with the other
`
`cooking units. Claim 11 resembles claim 2 but uses “means” language.
`
`
`11 Petitioner repeatedly mischaracterizes its arguments before us as being
`directed to “invalidity.” See, e.g., Pet. 6, 21.
`
`10
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`Petitioner argues that Ducate discloses a grill having a side gas burner
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`for simultaneous use with a grilling operation. Pet. 24–25 (citing Ex. 1006,
`
`1:43–47, 1:56–58, 3:43–54, Figs. 1–4; Ex. 1010 ¶¶ 125, 126). Petitioner
`
`argues that it would have been obvious to add a side gas burner to Koziol’s
`
`grill, in view of Ducate’s suggestion of simultaneous operation and Koziol’s
`
`disclosure of an auxiliary burner. Id. at 25–26 (citing Ex. 1003, 4:17–41,
`
`Fig. 6; Ex. 1006, 1:43–47; Ex. 1010 ¶ 127). Patent Owner does not direct
`
`any arguments to this challenge specifically.
`
`Upon consideration of the arguments and evidence presented in the
`
`Petition, we determine that Petitioner has demonstrated a reasonable
`
`likelihood that claims 2 and 11 are unpatentable under 35 U.S.C. § 103(a)
`
`for obviousness over Koziol, Holland, and Ducate.
`
`H. Obviousness of Claims 3 and 12 over Koziol, Holland, and Milloy
`
`Claim 3 depends from claim 2 and further requires a firebox that is
`
`configured to provide heat or smoke to the second cooking unit and is
`
`simultaneously operable with the cooking units and the side burner. Claim
`
`12 resembles claim 3 but uses “means” language.
`
`Because claim 3 depends from claim 2, it incorporates the limitations
`
`of claim 2, in particular the requirement for a side burner. Claim 12
`
`similarly incorporates the side burner means limitation of claim 11.
`
`Petitioner’s unpatentability argument for claim 3 does not address whether
`
`or how Koziol, Holland, or Milloy discloses a side burner. See Pet. 26–29.
`
`Accordingly, we determine that Petitioner has not demonstrated a reasonable
`
`likelihood that claims 3 and 12 are unpatentable under 35 U.S.C. § 103(a)
`
`for obviousness over Koziol, Holland, and Milloy.
`
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`I. Obviousness of Claims 17–20 over Koziol, Holland, and Oliver
`
`Independent claim 17 resembles claim 1 but specifies that the first and
`
`second cooking units each have a substantially cylindrical shape and are
`
`supported by the support structure.
`
`Petitioner argues that it would have been obvious to fashion Koziol’s
`
`cooking units with substantially cylindrical shapes in view of Oliver’s
`
`disclosure that such a shape was used in multiple-mode grill assemblies.
`
`Pet. 29–33 (citing e.g., Ex. 1005, Fig. 20; Ex. 1010 ¶¶ 114–17, 120).
`
`Upon consideration of the arguments and evidence presented in the
`
`Petition, we determine that Petitioner has demonstrated a reasonable
`
`likelihood that claim 17 is unpatentable under 35 U.S.C. § 103(a) for
`
`obviousness over Koziol, Holland, and Oliver. We have considered
`
`Petitioner’s arguments and evidence directed to dependent claims 18–20 and
`
`are persuaded of a reasonable likelihood that these claims are unpatentable
`
`as well.
`
`J. Obviousness of Claims 1, 4, 5, 7–9, 10, and 13–20 over Oliver and
`Holland; Obviousness of Claims 2, 6, and 11 over Oliver, Holland,
`and Ducate; Obviousness of Claims 3 and 12 over Oliver, Holland,
`and Milloy
`
`We exercise our discretion not to institute a trial with respect to
`
`Petitioner’s challenge to claims 1, 4, 5, 7–9, 10, and 13–20 for obviousness
`
`over Oliver and Holland, or the challenge to claims 2, 6, and 11 for
`
`obviousness over Oliver, Holland, and Ducate, because Petitioner has not
`
`persuaded us that those challenges are necessary in addition to the
`
`challenges of those claims based on Koziol in various combinations.
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`Regarding the challenge to claims 3 and 12 for obviousness over
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`Oliver, Holland, and Milloy, Petitioner again fails to account for the
`
`limitations of intervening claims 2 and 11 in its obviousness analysis. See
`
`Pet. 45–46. Accordingly, we determine that Petitioner has not demonstrated
`
`a reasonable likelihood that claims 3 and 12 are unpatentable under
`
`35 U.S.C. § 103(a) for obviousness over Oliver, Holland, and Milloy.
`
`K. Obviousness of Claims 1, 2, 4, 5, 7–11, and 13–16 over BGE
`Manual I, Holland, and BGE Manual II
`
`Petitioner argues that BGE Manual I describes a cooking center
`
`having a gas grill and a receptacle for a “Big Green Egg” charcoal grill and
`
`smoker, which is described in greater detail in BGE Manual II. Pet. 46–50.
`
`According to Petitioner, BGE Manual I and BGE Manual II disclose, or a
`
`person of ordinary skill would have understood from consideration of BGE
`
`Manual I and BGE Manual II, all limitations of claim 1 except the inclusion
`
`of an exhaust by the first cover. Id. at 46–52 (citing Ex. 1008 passim;
`
`Ex. 1009 passim, Ex. 1010 ¶¶ 208–210, 215, 217–219). According to
`
`Petitioner, it was well known that covered grills require vents and that it
`
`would have been obvious to add Holland’s cover exhausts to the gas grill
`
`cover in BGE Manual I in view of Holland’s teaching that it is common to
`
`provide grills with exhaust vents to eliminate smoke. Id. at 49–50.
`
`Petitioner makes analogous arguments concerning claim 10. Patent Owner
`
`directs no specific arguments to this challenge.
`
`Upon consideration of the arguments and evidence presented in the
`
`Petition, we determine that Petitioner has demonstrated a reasonable
`
`likelihood that claims 1 and 10 are unpatentable under 35 U.S.C. § 103(a)
`
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`for obviousness over BGE Manual I, Holland, and BGE Manual II. We
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`have considered Petitioner’s arguments and evidence directed to dependent
`
`claims 2, 4, 5, 7–9, 11, and 13–16 and are persuaded of a reasonable
`
`likelihood that these claims are unpatentable as well.
`
`L. Obviousness of Claims 3 and 12 over BGE Manual I, Holland,
`Milloy, and Beller
`
`Petitioner argues that Milloy discloses adding a firebox to a barbecue
`
`grill and that Beller recommends separating the smoking and heating
`
`functions from one another due to the advantages of intense smoking at
`
`cooler temperatures. Pet. 56–57 (citing Ex. 1007, 1:33–36, 8:7–11;
`
`Ex. 1013, 1:45–49; Ex. 1010 ¶¶ 130, 229). Petitioner argues that it would
`
`have been obvious to modify BGE Manual I to have a separate firebox from
`
`the “Big Green Egg” charcoal grill in order to avoid the disadvantages of
`
`cooking and smoking in the Big Green Egg’s single chamber. Id. at 57
`
`(citing Ex. 1010 ¶ 230).
`
`Upon consideration of the arguments and evidence presented in the
`
`Petition, we determine that Petitioner has demonstrated a reasonable
`
`likelihood that claims 3 and 12 are unpatentable under 35 U.S.C. § 103(a)
`
`for obviousness over BGE Manual I, Holland, Milloy, and Beller.
`
`M. Obviousness of Claim 6 over BGE Manual I, Holland, BGE
`Manual II, and Ducate
`
`Claim 6 further limits claim 1 to require that the support structure
`
`have at least two wheels. Petitioner argues that although BGE Manual I
`
`does not disclose clearly whether it has wheels, such a feature was well
`
`known, as evidenced by Ducate, and would have been obvious to add to
`
`14
`
`MICROSOFT CORP. EX. 1004
`Page 14 of 17
`
`
`
`IPR2015-00056
`Patent 8,381,712 B1
`
`
`
`BGE Manual I. Pet. 57–58 (citing Ex. 1006, Figs. 1–3; Ex. 1010 ¶¶ 236–
`
`37).
`
`Upon consideration of the arguments and evidence presented in the
`
`Petition, we determine that Petitioner has demonstrated a reasonable
`
`likelihood that claim 6 is unpatentable under 35 U.S.C. § 103(a) for
`
`obviousness over BGE Manual I, Holland, BGE Manual II, and Ducate.
`
`N. Obviousness of Claims 17–20 over BGE Manual I, Holland, BGE
`Manual II, and Oliver
`
`Petitioner argues it would have been obvious to provide the gas and
`
`charcoal grills of BGE Manual I and BGE Manual II with substantially
`
`cylindrical shapes as an obvious design choice in view of Oliver. Pet. 58–59
`
`(citing Ex. 1005, Figs. 19–21, 23; Ex. 1010 ¶ 223).
`
`Upon consideration of the arguments and evidence presented in the
`
`Petition, we determine that Petitioner has demonstrated a reasonable
`
`likelihood that claim 17 is unpatentable under 35 U.S.C. § 103(a) for
`
`obviousness over BGE Manual I, Holland, BGE Manual II, and Oliver. We
`
`have considered Petitioner’s arguments and evidence directed to dependent
`
`claims 18–20 and are persuaded of a reasonable likelihood that these claims
`
`are unpatentable as well.
`
`III. CONCLUSION
`
`For the foregoing reasons, we determine that Petitioner has
`
`demonstrated that there is a reasonable likelihood of its proving
`
`unpatentability of claims 1–20 of the ’712 patent.
`
`The Board has not made a final determination on the patentability of
`
`the challenged claims.
`
`15
`
`MICROSOFT CORP. EX. 1004
`Page 15 of 17
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`
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`IPR2015-00056
`Patent 8,381,712 B1
`
`
`
`IV. ORDER
`
`Accordingly, it is
`
`ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes
`
`review is hereby instituted as to claims 1–20 of U.S. Patent No.
`
`8,381,712 B1 on the following grounds of unpatentability:
`
`A. Obviousness of Claims 1, 4–10, and 13–16 over Koziol and
`
`Holland;
`
`B. Obviousness of Claims 2 and 11 over Koziol, Holland, and
`
`Ducate;
`
`C. Obviousness of Claims 17–20 over Koziol, Holland, and
`
`Oliver;
`
`D. Obviousness of Claims 1, 2, 4, 5, 7–11, and 13–16 over BGE
`
`Manual I, Holland, and BGE Manual II;
`
`E. Obviousness of Claims 3 and 12 over BGE Manual I, Holland,
`
`Milloy, and Beller;
`
`F. Obviousness of Claim 6 over BGE Manual I, Holland, BGE
`
`Manual II, and Ducate; and
`
`G. Obviousness of Claims 17–20 over BGE Manual I, Holland,
`
`BGE Manual II, and Oliver;
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial, the trial
`
`commencing on the entry date of this decision; and
`
`FURTHER ORDERED that the trial is limited to the grounds
`
`identified above, and no other grounds are authorized.
`
`
`
`16
`
`MICROSOFT CORP. EX. 1004
`Page 16 of 17
`
`
`
`IPR2015-00056
`Patent 8,381,712 B1
`
`
`
`For PETITIONER:
`
`Gary A. Clark
`Bridgette A. Agness
`SHEPPARD, MULLIN, RICHTER & HAMPTON LLP
`gclark@sheppardmullin.com
`bagness@sheppardmullin.com
`
`
`For PATENT OWNER:
`
`Lance D. Reich
`MILLER NASH GRAHAM & DUNN LLP
`patent@millernash.com
`
`17
`
`MICROSOFT CORP. EX. 1004
`Page 17 of 17
`
`
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