Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`
`Paper 7
`Entered: March 7, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`EMI PORTA OPCO, LLC,
`Petitioner,
`
`v.
`
`WOODFOLD MANUFACTURING, INC.,
`Patent Owner.
`____________
`
`PGR2018-00096
`Patent 9,879,471 B2
`____________
`
`
`
`Before LAURA A. PETER, Deputy Under Secretary of Commerce for
`Intellectual Property and Deputy Director of the United States Patent and
`Trademark Office,
`MICHAEL W. KIM and SUSAN L. C. MITCHELL, Administrative Patent
`Judges.
`
`MITCHELL, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Post-Grant Review
`35 U.S.C. § 324
`
`
`
`
`571.272.7822
`
`
`
`
`
`
`Paper 7
`Entered: March 7, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`EMI PORTA OPCO, LLC,
`Petitioner,
`
`v.
`
`WOODFOLD MANUFACTURING, INC.,
`Patent Owner.
`____________
`
`PGR2018-00096
`Patent 9,879,471 B2
`____________
`
`
`
`Before LAURA A. PETER, Deputy Under Secretary of Commerce for
`Intellectual Property and Deputy Director of the United States Patent and
`Trademark Office,
`MICHAEL W. KIM and SUSAN L. C. MITCHELL, Administrative Patent
`Judges.
`
`MITCHELL, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Post-Grant Review
`35 U.S.C. § 324
`
`
`
`
`
`PGR2018-00096
`Patent 9,879,471 B2
`
`
`I. INTRODUCTION
`A. Overview
`EMI Porta OPCO, LLC, (“Petitioner”) filed a Petition (Paper 1,
`“Pet.”) requesting a post-grant review of claims 1–7 of U.S. Patent
`No. 9,879,471 B2 (Ex. 1001, “the ’471 patent”). Pet. 1. Woodfold
`Manufacturing, Inc. (“Patent Owner”) did not file a Preliminary Response.
`We have authority, acting under the designation of the Director, to
`determine whether to institute a post-grant review. 35 U.S.C. § 324;
`37 C.F.R. § 42.4(a). We may not authorize a post-grant review to be
`instituted “unless . . . the information presented in the petition filed under
`section 321, if such information is not rebutted, would demonstrate that it is
`more likely than not that at least 1 of the claims challenged in the petition is
`unpatentable.” 35 U.S.C. § 324(a). On April 24, 2018, the Supreme Court
`held that a decision to institute under 35 U.S.C. § 314(b) may not institute
`review on fewer than all claims challenged in the petition. SAS Inst., Inc. v.
`Iancu, 138 S. Ct. 1348, 1355–56 (2018). Also, in accordance with USPTO
`Guidance, “if the PTAB institutes a trial, the PTAB will institute on all
`challenges raised in the petition.” See Guidance on the Impact of SAS on
`AIA Trial Proceedings (April 26, 2018) (available at
`https://www.uspto.gov/patents-application-process/patent-trial-and-
`appealboard/trials/guidance-impact-sas-aia-trial).
`Applying that standard, and upon consideration of the information
`presented in the Petition, we determine Petitioner has not demonstrated it is
`more likely than not that any of the challenged claims is unpatentable.
`Accordingly, we deny institution of a post-grant review of the challenged
`claims of the ’471 patent.
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`B. Related Matters
`Petitioner asserts that the ’471 patent is being asserted in Woodfold
`Manufacturing, Inc. v. EMI Porta OPCO, LLC, Case No. 1:18-cv-03984
`(N.D. Ill.). Pet. 4; Paper 4, 1.
`
`C. The ’471 Patent
`The ’471 patent relates to an accordion type folding door system with
`a plurality of elongated panels hinged by a hinge assembly on their
`longitudinal side edges creating a zig zag arrangement. Ex. 1001, Abst.,
`2:31–34. The hinge assembly is described in the Specification of the ’471
`patent as follows.
`The hinge assembly is disposed between and interconnects a
`pair of adjacent panels, each of the pair of interconnected
`adjacent panels including a side edge having longitudinal
`groove and an extension flange, wherein the hinge assembly
`includes a hinge pin and a plurality of hinge knuckles disposed
`vertically end-to-end in alternating arrangement on the hinge
`pin, the hinge knuckle having a tubular central opening for
`accepting the hinge pin, an outwardly extending tongue for
`connecting to a corresponding longitudinal groove in an
`adjacent panel in a tongue and groove connection, and an
`outwardly flared wedge that extends beyond the extension
`flanges of the panels, whereby the wedge cooperates with the
`extension flanges to limit angular folding extension to a
`maximum desired angle.
`Id. at Abst.
`Figure 3, shown below, depicts such a described hinge assembly that
`hinges two elongated panels 10 and 10a. Id. at 1:39–41, 4:63–67. The hinge
`assembly includes top hinges (not shown in Fig. 3) that provide structural
`support for the folding door assembly, and a central hinge system that
`extends the full length of the elongated panels 10 and 10a, a partial cross
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`section of which is shown in Figure 3 below. Id. at 3:25–30. The central
`hinging system can also serve a barrier function to seal off the space
`between adjacent panels to prevent access to the area behind the door. Id. at
`3:31–34.
`
`
`
`
`
`Figure 3 depicted above shows elongated panels 10 and 10a each with
`longitudinal side framing members 20a and 20c, respectively. Id. at 2:63–
`3:3. Each longitudinal side framing member 20a and 20c along its outer
`margin has longitudinally extending grooves 22a and 22c, respectively. Id.
`at 3:8–10. The outer side margins of elongated panels 10 and 10a may be
`dimensioned to fit into longitudinally extending grooves 22a and 22c,
`respectively, and glued to secure the elongated panels into these grooves. Id.
`at 3:10–13.
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`Figure 3 also depicts each side framing member 20a and 20c having
`along its outer margin a longitudinally extending groove 24a and 24c,
`respectively. Id. at 3:14–16. Each side framing member 20a and 20c also
`has along its side a pair of longitudinally extending flanges 26a, 28a, and
`26c, 28c, respectively. Id. at 3:16–22. “These flanges serve to shield the
`mechanism of the central hinge system by means of which two adjacent
`panels are coupled together in hinging relation.” Id. at 3:22–24.
`The central hinge system itself includes a plurality of hinge knuckles
`such as 30a and 30b depicted in Figure 3. Id. at 3:34–39.
`The hinge knuckle 30a is provided with a cylindrical central
`section 37a forming a central opening 32a and a longitudinally
`extending tongue 34a terminating in a bead 36a that nests
`within the longitudinally extending groove 24a. The hinge
`knuckle 30a also has an outwardly flared wedge section 35a
`that extends beyond the flanges 26a, 26c.
`
`The tongue 34a of the hinge knuckle 30a with the
`
`associated bead 36a cooperates with the longitudinally
`extending groove 24a on the framing member 20a and tongue
`34b of the hinge knuckle 30b with an associated bead 36b
`cooperates with the longitudinal extending groove 34c, thereby
`collectively forming tongue and groove connections by means
`of which the hinge knuckles 30a, 30b, etc. are coupled to
`framing member 20a, 20c, in alternating positions/orientations.
`. . .
`
`Though any number of hinge knuckle units [may be
`
`used], two or more may serve the central hinge assembly
`function, multiple hinge knuckle units may provide advantages
`of strength and visibility blockage. . . .
`
`As previously mentioned, the hinge knuckle 30a may
`include an outwardly flared wedge section 35a that extends
`beyond the flanges 26a, 26c. The wedge section 35a cooperates
`with the flanges 26a, 26c (the flanges 26a, 26c contacting
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`respective outer surfaces of the wedge section 35a) thereby
`limiting the minimum size of gap G1 and limiting the
`maximum angle B1 (see FIG. 3) that the folding door sections
`may extend to an angle B1 of about 110º.
`Id. at 4:3–54.
`
`Figure 5, depicted below, shows a perspective view of a hinge
`knuckle unit alone as described above.
`
`
`Figure 5 shows previously described tongue 34a with associated bead
`
`36a for tongue-in-groove attachment to the elongated panels, central opening
`32a formed from cylindrical central section 37a for receiving the hinge pin,
`and wedge section 35a. See id. at 3:64–4:9.
`
`The ’471 patent also incorporates by reference U.S. Patent 4,922,987
`that describes an “old hinge” that does not include the outwardly extending
`wedge 35a of the hinge knuckle 30a. See id. at 1:19–31, 6:14–30. The “old
`hinge” is depicted below in Figure 14.
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`As can be seen in Figure 14, the “old hinge” permits elongated panels 10 and
`10b to open to a larger angle B2 and a smaller gap G2 between adjacent
`extending flanges 26b, 26d, which contact each other to limit opening of the
`panels. See id. at 6:22–30.
`
`The ’471 patent teaches that a combination of the old hinges and the
`described new hinges with a wedge section may be used for a door
`assembly. Id. at 6:31–34.
`The new hinge knuckle design 30a of FIG. 5 with the wedge
`35a provides for stronger force resistance but permits a smaller
`extension angle B1 (see FIG. 3) than the extension angle B2
`permitted by the old hinge knuckle design 131A (see FIG. 14).
`It has been determined that only smaller number of hinge
`assemblies are needed to be constructed with the new hinge
`knuckle design to achieve superior resistance performance, and
`thus most of the hinge assemblies may be constructed with the
`old hinge knuckle design to permit larger extension angles.
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`Id. at 6:35–45. Thus, different combinations of old and new style hinge
`knuckles may be used to provide a desired strength property from the new
`design or a larger extension angle provided by the old design. Id. at 8:20–
`25.
`
`D. Challenged Claims
`Petitioner challenges claims 1–7 of the ’471 patent. Pet. 1. Claims 1,
`5, and 6 are independent. Ex. 1001, 8:32–54, 9:1–10:30. Independent
`claim 1, reproduced below, is illustrative.
`1.
`An accordion type folding door system comprising
`a plurality of adjacent panels arranged vertically and side-by-
`side, each panel including a top end having an upper
`margin, and a bottom end having a lower margin;
`a hinge assembly disposed between and interconnecting a pair of
`adjacent panels, each of the pair of adjacent panels
`including a side edge having a longitudinal groove and an
`extension flange,
`wherein the hinge assembly comprises
`a hinge pin,
`a plurality of hinge knuckles disposed vertically end-to-
`end in an alternating arrangement on the hinge pin,
`at least one of the hinge knuckles comprising a
`tubular central opening for accepting the hinge pin,
`an outwardly extending tongue for connecting to a
`corresponding longitudinal groove in an adjacent
`panel in a tongue and groove connection, and an
`outwardly flared wedge that extends between and
`beyond the extension flanges to limit angular un-
`folding extension of the pair of adjacent panels to a
`maximum desired angle.
`
`Id. at 8:32–54.
`
`E. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability (Pet. 3).
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`Reference(s)
`
`Lamarre1
`
`Basis
`35 U.S.C. § 102(a)(1)
`
`Lamarre and Marontate2
`
`35 U.S.C. § 103
`
`Claims
`1, 3, 5
`
`2, 4, 6, 7
`
`Prudhomme3
`
`Prudhomme and Marontate
`
`Marontate and Ceron5
`
`35 U.S.C. § 102(a)(1) 1, 5
`
`35 U.S.C. § 103
`
`35 U.S.C. § 103
`
`3, 4, 64
`
`1, 3, 4
`
`Petitioner does not submit any declarant testimony in support of the Petition.
`See generally Pet.
`
`F. Overview of the References
`1. Lamarre (Ex. 1006)
`Lamarre teaches a hinge member for use in folding panel closures to
`
`avoid gaps at the areas where the hinges join the panels together when the
`
`
`1 Cerge Rudolf Maxime Lamarre, U.S. Patent No. 4,081,881, issued Apr. 4,
`1978 (“Lamarre”). Ex. 1006.
`2 John D. Marontate et al., U.S. Patent 4,922,987, issued May 8, 1990
`(“Marontate”). Ex. 1008. As set forth above, see supra Section I.C.,
`Marontate is incorporated by reference in the ’471 patent and describes the
`“old hinge” that does not include an outwardly extending wedge. See
`Ex. 1001, 6:14–30.
`3 Dominique Prudhomme, French Pub. No. 2 638 778, published May 11,
`1990 (“Prudhomme”). Exs. 1009, 1010 (certified English translation). For
`purposes of this Decision, we will refer to the English translation of
`Prudhomme at Exhibit 1010.
`4 Petitioner lists claim 7 as part of this ground in its summary of the grounds,
`see Pet. 3, but only discusses claims 3, 4, and 6 in relation to this ground, see
`Pet. 56–67. Therefore, we will address only claims 3, 4, and 6 that are
`substantively discussed in this ground.
`5 Sergio Ceron, U.S. No. 4,284,118, issued Aug. 18, 1981 (“Ceron”).
`Ex. 1007.
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`folding closure is extended. Ex. 1006, Abst., 1:26–32. Lamarre’s hinge
`member is depicted in Figure 6 set forth below.
`
`
`With reference to Figure 6, Lamarre describes hinge member 41 as
`
`follows.
`The hinge member 41 has a facing wall 61 spaced from
`
`tubular body 51 and preferably generally concentric thereto.
`The width of the wall 61 is somewhat less tha[n] the outer
`diameter of cylindrical body 51 and its length is equal to the
`length of the tubular body 51.
`
`A web 63 connects wall 61 to cylindrical body 51. The
`web 63 extends radially from the cylindrical body 51, and
`connects to the wall 61 at its center. The web 63 preferably is
`tapered when viewing the hinge member 41 from its ends with
`the web 63 being wider, where it joins the wall 61, than where
`it joins the cylindrical body 51. Preferably, the web 63 is
`tapered to have an included angle α, between its side walls 65,
`of 20º.
`
`Means 67 are provided on one sidewall 65 of web 63 for
`use in connecting one edge 23 of a panel 21 to the hinge
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`members 41 in hinge means 25. These connecting means 67
`preferably comprise a T-shaped rib member 69 projecting
`laterally out from the center of the one sidewall 65.
`Ex. 1006, 3:21–39.
`
`Figure 5, as shown below, is an end view of a closure panel that
`shows the connecting means of a panel to hinge member 41.
`
`
`
`
`
`Figure 5 shows the following.
`Each panel 21 has connecting means 81 at each edge 23
`cooperating with the connecting means 67 on each hinge 25.
`The connecting means 81 comprises a T-shaped slot 83 opening
`inwardly from edge 23. The slot 83 is complementary to, and
`receives, rib 69 on member 41 [as shown in Figure 6 above].
`An enlarged rib 85 is provided at each edge 23 of panel 21 in
`which slot 83 is formed. The rib 85 has a width nearly equal to
`the length of web sides 65.
`Id. at 3:50–58.
`Hinge member 41 as engaged with closure panel as depicted in
`Figure 5 is shown in Figure 2 set forth below.
`
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`To permit proper operation of the folding closure, as depicted in
`
`Figure 2 set forth above, “without resorting to other means, the panels 21
`must be retained in a zig-zag line when the closure is extended, or folded. It
`is for this reason that the web 63 of each member 41 is tapered slightly.
`With the closure fully extended, adjacent panels 21 still cannot become
`aligned because broken rows 41, 41A of connecting means 67, 67A do not
`become aligned as shown in FIG. 2.” Id. at 3:63–4:2.
`
`Further, to achieve the proper operation of the folding closure in a zig-
`zag shape,
`it is also necessary to reverse every second hinge 25A so its
`hinge pin 43A is on the opposite side of the closure to the one
`side on which hinge pin 43 of every one hinge 25 appears.
`
`It will be noted that the facing walls 61 of each hinge 25
`are aligned and form a smooth, unbroken facing 87 on one side
`of the closure when the closure is fully extended as shown in
`FIG. 1.
`
`. . . .
`
`It will also be noted that facing walls 61 extend laterally
`past webs 63 and overlap ribs 85 in panels 21 thus eliminating
`gaps in the hinge when the closure is extended.
`Id. at 4:3–18.
`
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`2. Marontate (Ex. 1008)
`Marontate relates to an accordion type folding door, where
`
`supplemental hinges connecting the panels of the folding door extend the
`full length of the panels from top to bottom and completely shield the space
`behind the folding door from vandalism and forcible entry, while
`simultaneously rigidifying and stiffening the door structure. Ex. 1008,
`Abst., 1:7–8, 24–35, 2:68–3:2. These supplemental hinges are shown in
`Figure 2 of Marontate depicted below.
`
`
`Figure 2 of Marontate depicts hinge knuckle 30, a plurality of which
`
`are used in the supplemental hinge assemblies. Id. at 3:13–15. Hinge
`knuckles 30 have longitudinally extending tongues 34 (not labeled in Figure
`2) terminating in beads 36, and longitudinally extending flanges 38. Id. at
`3:19–22. Marontate further states that “[t]ongues 34 with associated beads
`36 cooperate with grooves 24 on framing member 20 to form tongue and
`groove connections by means of which the knuckles are coupled to framing
`members 20, in alternating positions.” Id. at 3:23–26. When the door is in
`an extended position as shown in Figure 2 above, “the joints on one side are
`protected by means of flanges 26 on panel side frames 20. On the other side
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`of the door, the space between the panels is protected by the continuous
`barrier presented by knuckles 30 mounted on steel hinge pins 32.” Id. at
`3:44–48.
`
`3. Prudhomme (Ex. 1010)
`Prudhomme relates to a joint for at least two door leaf elements that
`
`can fold against one another. Ex. 1010, 1:1–3. To avoid pinching fingers in
`the door, Prudhomme teaches filling a gap formed between two adjacent
`hinge elements when the door is unfolded with a device forming a joint
`connected to one or the other of the hinge elements. Id. at 2:25–26.
`Figure 3 shown below is a cross-sectional view of a joint with the hinge
`elements represented in the unfolded impacting position. Id. at 3:10–11.
`
`
`
`
`
`
`Figure 3 shows the following:
`[T]he gap formed between the two adjacent hinge elements 3a
`and 3b in the unfolded position of the leaf 2 is filled by a joint
`19 of a synthetic material, such as rubber, which is solidly
`connected, such as by clamping, for example, with one or other
`of the hinge elements 3a and 3b. Thus (see Figure 3), the joint
`19 has two grooves adapted in such a way so as to mold the
`contours of the projections 14 of one rounded end of each
`element of the hinge 3a and 3b in such a way that, in the
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`unfolded position of the leaf 2, there is no clearance between
`the adjacent ends of the hinge elements 3a or 3b. The security
`against the risk of pinching users of the door, such as of an
`elevator cab, for example, the leaf or leaves of which comprise
`a joint 1 in accordance with the invention, is therefore
`reinforced.
`Id. at 4:34–5:6.
`
`4. Ceron (Ex. 1007)
`Ceron relates to a folding door with wooden slats and simple wooden
`
`hinged joints, which are efficient and maintain the aesthetic appearance of
`the door. Ex. 1007, 1:6–25. Ceron describes these wooden hinged joints as
`strips having a cross-sectional shape substantially in the shape
`of a double mushroom profile with opposite headers of different
`widths separated by intermediate side grooves and said slat
`ends having a cross-sectional shape substantially in the shape of
`a U with a longer overhanging web intended to be received in a
`corresponding one of said side grooves of the adjoining strip
`when the door is outstretched and for being positioned
`alongside the narrower header of the same strip substantially to
`conceal the groove when the door is folded and a shorter
`overhanging web intended for providing the visual continuity
`between said slat and said narrower header of the strip when the
`door is outstretched, the side edges of said narrower strip
`header acting like rotational rotulae for adjoining slats in
`cooperation with the central recesses of said U-shaped ends of
`said slats.
`Id. at 1:36–52.
`Figure 2, shown below, is a top plan view of one of such hinged joints
`between adjoining slats. Id. at 2:22–23.
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`Ceron describes the hinge in Figure 2 depicted in an outstretched door
`
`as follows.
`[T]he longer webs 20 of the nearside ends of the two adjoining
`slats 1 are inserted in the side recesses 19 of the interposed
`strip 2, and thus are concealed by the wider header 17 of the
`strip, whereas the shorter webs 21 cooperate with the narrower
`header 18 of the strip so as to provide, on the opposite side, a
`visual continuity which conceals the hollowed-out portions of
`the strip 2 and of the ends of the slates 1 (FIGS. 2 and 4).
`Id. at 3:19–27.
`
`II. ANALYSIS
`A. Eligibility for Post-Grant Review
`The post-grant review provisions set forth in Section 6(d) of the AIA6
`apply only to patents subject to the first-inventor-to-file provisions of the
`AIA. See AIA § 6(f)(2)(A) (“The amendments made by subsection (d) . . .
`shall apply only to patents described in section 3(n)(1).”). Patents subject to
`the first-inventor-to-file provisions are those that issue from applications
`“that contain[] or contained at any time . . . a claim to a claimed invention
`that has an effective filing date as defined in section 100(i) of title 35, United
`
`
`6 Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”).
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`States Code, that is on or after” March 16, 2013. AIA § 3(n)(1). Our rules
`require that each petitioner for post-grant review certify that the challenged
`patent has an effective filing date that renders the patent available for post-
`grant review. 37 C.F.R. § 42.204(a) (“The petitioner must certify that the
`patent for which review is sought is available for post-grant review . . . .”).
`In addition, “[a] petition for a post-grant review may only be filed not later
`than the date that is 9 months after the date of the grant of the patent or of
`the issuance of a reissue patent (as the case may be).” 35 U.S.C. § 321(c);
`see also 37 C.F.R. § 42.202(a) (accord).
`Petitioner states that the ’471 patent is eligible for post-grant review
`because the challenged claims have an effective filing date of no earlier than
`September 30, 2015, and this Petition is being filed within nine months of
`the date the patent issued. Pet. 1, 3. Patent Owner does not dispute post-
`grant review eligibility.
`On this record, we determine that the ’471 patent is eligible for post-
`grant review. Specifically, the application leading to the ’471 patent was
`filed on June 2, 2016, and claims priority to a provisional application filed
`on September 30, 2015. Ex. 1001, (22), (60). All these dates fall after
`March 16, 2013. Also, this Petition was filed on September 7, 2018, which
`is within nine months after the January 30, 2018, issue date of the ’471
`patent. Id. at (45); Pet. 1.
`
`B. Level of Ordinary Skill in the Art
`Petitioner asserts a person of ordinary skill in the art would have
`general knowledge of folding door and hinge design, and specifically, at
`least one of the following: (1) a bachelor’s degree in mechanical
`engineering or a similar field and at least three years of experience in the
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`design or construction of folding doors; or (2) at least five years of
`experience in the design or construction of folding doors. Pet. 11. Patent
`Owner has not presented its view of the level of ordinary skill in the art at
`this stage of the proceeding.
`We find that Petitioner’s definition of the level of ordinary skill in the
`art is commensurate with the level of skill, as evidenced by the prior art. See
`Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that
`specific findings regarding ordinary skill level are not required “where the
`prior art itself reflects an appropriate level and a need for testimony is not
`shown”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755
`F.2d 158, 163 (Fed. Cir. 1985)).
`
`C. Claim Construction
`In a post grant review, the Board interprets claim terms in an
`unexpired patent according to the broadest reasonable construction in light
`of the specification of the patent in which they appear. 37 C.F.R.
`§ 42.200(b) (2016);7 Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131,
`2142 (2016) (affirming applicability of broadest reasonable construction
`standard). “Under a broadest reasonable interpretation, words of the claim
`must be given their plain meaning, unless such meaning is inconsistent with
`the specification and prosecution history.” TriVascular, Inc. v. Samuels, 812
`
`
`7 The Final Rule changing the claim construction standard to the federal
`court claim construction standard that is used to construe a claim in a civil
`action under 35 U.S.C. § 282(b) does not apply here, as the Petition was
`filed before the effective date of the Final Rule, November 13, 2018. See
`Changes to the Claim Construction Standard for Interpreting Claims in Trial
`Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340,
`51,340, 51,344 (Oct. 11, 2018).
`
`18
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`PGR2018-00096
`Patent 9,879,471 B2
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`F.3d 1056, 1062 (Fed. Cir. 2016). Any special definitions for claim terms
`must be set forth with reasonable clarity, deliberateness, and precision. See
`In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Only terms in
`controversy must be construed and only to the extent necessary to resolve
`the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`803 (Fed. Cir. 1999).
`Here, Petitioner does not propose any express construction of any
`claim term. Pet. 11. At this stage of the proceeding, Patent Owner has not
`offered any construction of any claim term. On this record, we determine
`that no claim term requires an express construction for the purpose of
`determining whether to institute post-grant review.
`
`D. Principles of Law
`As set forth above, Petitioner challenges the claims of the ’471 patent
`on anticipation and obviousness grounds. Pet. 3. The following principles
`of law guide our analysis of the asserted grounds.
`
`Burden of Proof
`1.
`In a post grant review, the Board considers the arguments and
`information as presented by petitioner in its petition, and makes a
`determination under the applicable asserted grounds whether it is more
`likely than not that petitioner has stated that one or more claims are
`unpatentable. We may not authorize a post grant review to be instituted
`“unless . . . the information presented in the petition filed under section 321,
`if such information is not rebutted, would demonstrate that it is more likely
`than not that at least 1 of the claims challenged in the petition is
`unpatentable.” 35 U.S.C. § 324(a). Accordingly, the Board considers the
`
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`applicable asserted grounds and whether petitioner has met its burden of
`proof.
`
`Anticipation
`2.
`To establish anticipation, each and every element in a claim, arranged
`as recited in the claim, must be found in a single prior art reference. Net
`MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008);
`Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir.
`2001). “A reference anticipates a claim if it discloses the claimed invention
`‘such that a skilled artisan could take its teachings in combination with his
`own knowledge of the particular art and be in possession of the invention.’”
`In re Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1995) (internal citation and
`emphasis omitted). Moreover, “it is proper to take into account not only
`specific teachings of the reference but also the inferences which one skilled
`in the art would reasonably be expected to draw therefrom.” In re Preda,
`401 F.2d 825, 826 (CCPA 1968); see Eli Lilly v. Los Angeles Biomedical
`Res. Inst., 849 F.3d 1073, 1074–75 (Fed. Cir. 2017).
`
`3. Obviousness
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter 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) objective evidence of
`
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`
`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`“Both the suggestion and the expectation of success must be founded in the
`prior art, not in the applicant’s disclosure.” In re Dow Chemical Co., 837
`F.2d 469, 473 (Fed. Cir. 1988).
`In that regard, an obviousness analysis “need not seek out precise
`teachings directed to the specific subject matter of the challenged claim, for
`a court can take account of the inferences and creative steps that a person of
`ordinary skill in the art would employ.” KSR, 550 U.S. at 418; see
`Translogic, 504 F.3d at 1259. In KSR, the Supreme Court also stated that an
`invention may be found obvious if trying a course of conduct would have
`been obvious to a person having ordinary skill:
`When there is a design need or market pressure to solve a
`problem and there are a finite number of identified, predictable
`solutions, a person of ordinary skill has good reason to pursue
`the known options within his or her technical grasp. If this leads
`to the anticipated success, it is likely the product not of
`innovation but of ordinary skill and common sense. In that
`instance the fact that a combination was obvious to try might
`show that it was obvious under § 103.
`550 U.S. at 421. “KSR affirmed the logical inverse of this statement by
`stating that § 103 bars patentability unless ‘the improvement is more than
`the predictable use of prior art elements according to their established
`functions.’” In re Kubin, 561 F.3d 1351, 135960 (Fed. Cir. 2009) (citing
`KSR, 550 U.S. at 417).
`We analyze the asserted grounds of unpatentability in accordance with
`the above-stated principles.
`
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`
`E. Grounds Based on Lamarre Alone or in Combination with Marontate
`Petitioner asserts that claims 1, 3, and 5 are anticipated by Lamarre,
`that claim 2 would have been obvious over Lamarre alone, and that claims 4,
`6, and 7 would have been obvious over Lamarre and Marontate. See Pet.
`22–47. The focus of our analysis will be on a limitation common to all of
`the challenged claims of the ’471 patent involving, as recited in independent
`claim 1, “an outwardly flared wedge that extends between and beyond the
`extension flanges of the panels.” Ex. 1001, 1:48–50 (independent claim 1);
`9:18–19 (independent claim 5); 10:10–11 (independent claim 6). We find
`that neither Lamarre nor Marontate teaches or suggests such a limitation.
`1. Anticipation by Lamarre
`Petitioner provides a claim chart setting forth where Lamarre
`allegedly teaches each limitation of claims 1, 3, and 5. Pet. 22–34.
`Particularly with reference to the limitation of “an outwardly flared wedge
`that extends between and beyond the extension flanges of the panels,”
`Petitioner points to the following annotated Figure 2 of Lamarre.
`
`
`
`22
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`PGR2018-00096
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`
`Pet. 26–27. In annotated Figure 2, Petitioner identifies what it deems to be
`the outwardly flared wedge and the wedge’s interaction with identified
`extension flanges. Id.
`We are unpersuaded that Petitioner has shown sufficiently that the
`wedge as described in Lamarre extends beyond extension flanges of each
`panel. As we previously described above in discussing the teachings of
`Lamarre, see supra Section I.F.1., the outwardly flared wedge, web 63, on
`which Petitioner relies, is described in Lamarre as connecting facing wall 61
`to tubular body 51. It is facing wall 61 as shown in Figure 2 above that
`appears to extend beyond extension flanges that Petitioner identifies as
`enlarged rib 85 (not labeled in Figure 2 above) that is at each edge 23 of
`panel 21. See Pet. 23 (identifying rib 85 in Figure 5 as the extension
`flanges). Facing wall 61 is described by Lamarre as “preferably generally
`concentric” to tubular body 51, see Ex. 1006, 3:21–23, and does not appear
`to be wedge shaped or a part of wedge-shaped web 63. Petitioner offers no
`testimony from a declarant who is qualified to opine on how one of skill in
`the art would view the teachings of Lamarre to convince us otherwise on the
`record before us.
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