Trials@uspto.gov
`571-272-7822
`
`Paper 41
`Date: April 29, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`INTEX RECREATION CORP.,
`Petitioner,
`v.
`TEAM WORLDWIDE CORP.,
`Patent Owner.
`
`PGR2019-00015
`Patent 9,989,979 B2
`
`
`
`Before GEORGE R. HOSKINS, JAMES J. MAYBERRY, and
`ERIC C. JESCHKE, Administrative Patent Judges.
`
`MAYBERRY, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 328(a)
`
`ORDER
`Denying Petitioner’s Motion to Exclude
`37 C.F.R. § 42.64
`
`
`
`
`

`

`PGR2019-00015
`Patent 9,989,979 B2
`
`INTRODUCTION
`I.
`A. Background and Summary
`Intex Recreation Corporation (“Intex” or “Petitioner”) filed a Petition
`to institute a post-grant review of claims 1–5 (the “Challenged Claims”) of
`U.S. Patent No. 9,989,979 B2 (Ex. 1004, “the ’979 patent”). Paper 1
`(“Pet.”). Team Worldwide Corporation (“Team Worldwide” or “Patent
`Owner”) filed a Patent Owner’s Preliminary Response. Paper 6. We
`instituted trial on all Challenged Claims and grounds. Paper 7 (“Dec. on
`Inst.”).
`After we instituted trial, Patent Owner filed a Patent Owner Response.
`Paper 21 (“PO Resp.”). Petitioner filed a Reply to the Patent Owner
`Response (Paper 28, “Reply”) and Patent Owner filed a Sur-reply to the
`Reply (Paper 30, “Sur-reply).
`Petitioner filed a Motion to Exclude Evidence (Paper 34, “Mot.”),
`Patent Owner filed an Opposition to the Motion (Paper 35, “Opp.”), and
`Petitioner filed a Reply to the Opposition (Paper 37, “Reply to Opp.”).
`We conducted an oral hearing on February 11, 2020 and the record
`includes a transcript of the hearing. Paper 40 (“Tr.”).
`The Board has jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision is issued pursuant to 35 U.S.C. § 328(a) and 37 C.F.R. § 42.73.
`For the reasons that follow, we conclude that Petitioner demonstrates, by a
`preponderance of the evidence, that all Challenged Claims are unpatentable.
`B. Real Parties in Interest
`The Petition indicates that, along with the Petitioner Intex, the
`following entities are real parties in interest: Intex Development Company
`Ltd.; Intex Industries (Xiamen) Co., Ltd.; Intex Marketing Ltd.; and Intex
`
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`PGR2019-00015
`Patent 9,989,979 B2
`Trading Ltd. Pet. 1. Patent Owner identifies itself as the sole real party in
`interest. Paper 5, 1.
`C. Related Matters
`According to Patent Owner, the ’979 patent is not currently asserted in
`litigation. PO Resp. 1. Neither party identifies any pending related matters.
`See, e.g., id. at n.1 (indicating that the Board did not institute trial for inter
`partes review proceedings involving the ’979 patent and U.S. Pat.
`No. 8,863,771 B2 (the “’771 patent”), to which the ’979 patent claims
`priority).
`D. The ’979 Patent and Related Applications
`The ’979 patent, titled “Inflating Module for Use with an Inflatable
`Object,” issued June 5, 2018 from an application filed August 29, 2014 (U.S.
`Appl. No. 14/474,073, the “’073 application”). Ex. 1004, codes (21), (22),
`(45), (54). The ’073 application purports to be a division of U.S. Appl.
`No. 13/112,847 (the “’847 application”), which issued as the ’771 patent,
`and claims priority to Chinese application CN 201010186302.4, filed on
`May 21, 2010 (the “CN ’302 application”). Id. at codes (30), (62), 1:7–11.
`1. The ’979 patent
`The ’979 patent relates to “an inflating module used . . . to inflate [an]
`inflatable object and provide supplemental air pressure to the inflatable
`object when the air pressure of the inflatable object is under a predetermined
`level.” Ex. 1004, 1:15–20. According to the ’979 patent, “[t]o avoid the
`inconvenience caused by [a] leak of the inflatable object, the best policy is
`that the air pressure of the inflatable object is maintained the entire time
`when the inflatable object is in use” and “the best option [for that purpose] is
`to use another air pump to provide additional air pressure to the inflatable
`
`3
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`PGR2019-00015
`Patent 9,989,979 B2
`object in time when the air pressure of the inflatable object is decreasing.”
`Id. at 1:42–49.
`We reproduce a version of Figure 2a from the ’979 patent, with
`annotations added by Petitioner, below.
`
`
`
`Pet. 5. Figure 2a depicts “a cross sectional view showing [a] valve
`controlling assembly in association with [a] pressure sensing assembly.”
`Ex. 1004, 2:38–40. In the annotated version of Figure 2a above, Petitioner
`added (among other annotations) (1) light green shading to housing 20,
`(2) yellow shading to inflatable object 7, (3) dark blue shading to air
`pump 6, (4) green shading to valve 16, spring-abutted shaft 17, and
`engagement shaft 15, and (5) blue shading to both knob 1 and air path 31.
`Pet. 4. Significant to our Decision here, Figure 2a includes lead lines 121
`and 122. See Ex. 1004, Fig. 2a. The Specification states that “[a]fter the
`supplemental air pressure providing device is in a standby mode, a pressure
`controlling assembly 121/122 as described starts monitoring air pressure in
`
`4
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`PGR2019-00015
`Patent 9,989,979 B2
`the inflatable object.” Id. at 4:48–51 (emphasis added). The Specification
`does not otherwise describe “pressure controlling assembly 121/122.”
`We reproduce a version of Figure 3a from the ’979 patent, with
`annotations added by Petitioner, below.
`
`
`Pet. 6. Figure 3a depicts “a cross sectional view showing the operation of
`the valve controlling assembly,” which opens “an inflow path to allow air
`outside the inflatable object to flow into the inflatable object.” Ex. 1004,
`2:44–47. As compared to annotated Figure 2a above, annotated Figure 3a
`adds, for example, orange arrows showing the flow path of air when pump 6
`is used to inflate object 7. See id. at 4:22–26 (discussing how “air pump 6
`can be activated to provide air flow into or out of the inflatable object, as can
`best be seen from F[igures] 3A and 3B”).
`
`5
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`PGR2019-00015
`Patent 9,989,979 B2
`We reproduce a version of Figure 3b, with annotations added by
`Petitioner, below.
`
`
`Pet. 7. Figure 3b depicts “a cross sectional view showing the operation of
`the valve controlling assembly,” which opens “an outflow path to allow air
`inside the inflatable object to flow out of the inflatable object.” Ex. 1004,
`2:48–51. As compared to annotated Figure 3a above, in annotated
`Figure 3b, the orange arrows showing the flow path of air have changed to
`indicate that pump 6 is deflating object 7. See id. at 4:10–21.
`
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`PGR2019-00015
`Patent 9,989,979 B2
`We reproduce a version of Figure 11, with annotations added by
`Petitioner, below.
`
`
`Pet. 8. Figure 11 depicts a “cross sectional view showing the internal
`structure of the supplemental air pressure providing device.” Ex. 1004,
`3:9–10. In the annotated version of Figure 11 above, Petitioner added blue
`shading to air blower 50 and pink shading to absorbent 28. Pet. 7–8. The
`’979 patent discloses:
`After the supplemental air pressure providing device is in a
`standby mode, a pressure controlling assembly 121/122 as
`described starts monitoring air pressure in the inflatable object.
`Once the air pressure inside the inflatable object is below a
`predetermined range, the supplemental air pressure providing
`device will then automatically provide air pressure to the
`inflatable object to always maintain the air pressure of the
`inflatable object within a predetermined range.
`Ex. 1004, 4:48–56.
`2. The ’847 application
`The ’711 patent issued from the ’847 application, which was filed
`May 20, 2011. Ex. 1001, codes (21), (22). The ’771 patent identifies the
`CN ’302 application as a priority document. Id. at code (30). The ’847
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`PGR2019-00015
`Patent 9,989,979 B2
`application has a nearly identical disclosure as the ’979 patent. Compare
`Ex. 1003, 4–26, with Ex. 1004. Relevant to this Decision, the ’847
`application did not include claims that recite a “pressure controlling
`assembly,” but did refer to the “pressure controlling assembly” in the
`Summary of the Invention and Detailed Description. Ex. 1003, 5, 9, 11–15.
`The applicant amended the claims of the ’847 application to recite the term
`“pressure controlling assembly” in an amendment filed July 26, 2013. Id. at
`100–115. The ’847 application, as filed, does not associate items 121 and
`122 with the “pressure controlling assembly.” Compare id. at 9, with
`Ex. 1004, 4:48–51. Also, certain item numbers and their associated lead
`lines were omitted from figures in the ’979 patent as compared to the ’847
`application. Compare, e.g., Ex. 1003, 17 (showing Figure 2a with item 12
`identified), with Ex. 1004, Fig. 2a (showing no reference number 12). The
`’847 application does not use the term “primary air pressure.” See Ex. 1003,
`4–16.
`3. The CN ’302 application
`The CN ’302 application is directed “to an inflation-deflation control
`apparatus with an automatic reinflation mechanism.” Ex. 1027, 6
`(“Technical field”)1. It includes a detailed description that differs from the
`disclosure in the ’847 and ’073 applications. Compare Ex. 1027, with
`Ex. 1003, 4–16, and Ex. 1004. One specific difference is that the CN ’302
`application includes, in the description of specific embodiments, a
`description of an “air pressure control mechanism.” See Ex. 1027, 18–19;
`see also id. at 2–5 (reciting “air pressure control mechanism” in certain
`
`
`1 Exhibit 1027 includes a certified copy of the CN ’302 application, in
`English. Exhibit 1026 includes the Chinese version of the application.
`
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`PGR2019-00015
`Patent 9,989,979 B2
`claims). The ’979 patent identifies the CN ’302 application under “Foreign
`Application Priority Data.” Ex. 1004, code (30); see also id. at 1:9–11
`(claiming benefit of the CN ’302 application). Neither the ’847 application
`nor the ’073 application incorporates by reference the disclosure of the CN
`’302 application. See Ex. 1001, code (30), 1:7 (identifying the CN ’302
`application under “Foreign Application Priority Data,” but not in a related
`application section); Ex. 1003, 1 (same); Ex. 1004, 1:7–11 (incorporating by
`reference the ’847 application but not the CN ’302 application).
`E. Illustrative Claim
`Petitioner challenges claims 1–5. Claim 1 is the sole independent
`Challenged Claim and is reproduced below:
`1. An inflating module adapted to an inflatable
`object comprising an inflatable body, the inflating
`module used in conjunction with a pump that
`provides primary air pressure and comprising:
`a pressure controlling assembly configured to
`monitor air pressure in the inflatable object after the
`inflatable body has been inflated by the pump; and
`a supplemental air pressure providing device,
`wherein the pressure controlling assembly is
`configured
`to
`automatically
`activate
`the
`supplemental air pressure providing device when
`the pressure controlling assembly detects that the air
`pressure inside the inflatable object decreases below
`a predetermined threshold after inflation by the
`pump, and to control the supplemental air pressure
`providing device to provide supplemental air
`pressure to the inflatable object so as to maintain the
`air pressure of the inflatable object within a
`predetermined range.
`Ex. 1004, 5:46–63.
`
`9
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`PGR2019-00015
`Patent 9,989,979 B2
`F. Evidence
`Petitioner includes in the record the challenged patent (Ex. 1004), the
`asserted prior art references (Exs. 1006–1009), and exhibits in support of its
`arguments (Exs. 1001, 1003, 1005, 1010–1027, 1029, 1031). Also,
`Petitioner relies on the declaration testimony of Mr. Bernhard Kuchel.
`Ex. 1002. Patent Owner includes in the record exhibits in support of its
`arguments (Exs. 2001, 2004–2013, 2020–2023). Patent Owner relies on the
`declaration testimony of Dr. Glen Stevick. Ex. 2020.
`G. Prior Art and Asserted Grounds
`Petitioner asserts that claims 1–5 are unpatentable on the following
`grounds:
`Claim(s) Challenged
`1–5
`1–5
`1–5
`1
`2–4
`3, 4
`5
`
`Reference(s)/Basis
`112(f) Indefiniteness
`Indefiniteness
`Written Description
`Price4
`Price, Lathrop5
`Price, Shan-Chieh6
`Price, Wilkinson7
`
`35 U.S.C. §2
`112(f)/112(b)
`112(b)
`112(a)
`102(a)3
`103
`103
`103
`
`
`
`
`2 We use the Leahy-Smith America Invents Act (“AIA”) section numbers, as
`the grounds of unpatentability are premised on the ’979 patent being eligible
`for post-grant review and, as such, governed by the AIA for a first-to-file
`application.
`3 The Petition identifies the basis for this ground as “§ 102(b).” Pet. 43.
`This designation appears to be a reference to the pre-AIA section. The
`proper AIA section is § 102(a).
`4 Price, US 6,721,980 B1, issued April 20, 2004 (Ex. 1006).
`5 Lathrop, US 7,789,194 B2, issued September 7, 2010 (Ex. 1007).
`6 Shan-Chieh, US 5,716,199, issued February 10, 1998 (Ex. 1008).
`7 Wilkinson, US 7,434,283 B2, issued October 14, 2008 (Ex. 1009).
`
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`PGR2019-00015
`Patent 9,989,979 B2
`II. ELIGIBILITY FOR POST-GRANT REVIEW
`A. Legal Standard
`As a threshold issue, we must determine if the ’979 patent is eligible
`for post-grant review. The post-grant review provisions of the AIA apply to
`a patent that contains a claim with an effective filing date on or after March
`16, 2013. See AIA, Pub. L. No. 112-29, 125 Stat. 284 (2011), §§ 3(n)(1),
`6(f)(2)(A). The statute defines the “effective filing date” as
`(A) if subparagraph (B) does not apply, the actual filing date of
`the patent or the application for the patent containing a claim to
`the invention; or
`(B) the filing date of the earliest application for which the
`patent is entitled, as to such invention, to a right of priority
`under section 119, 365(a), 365(b), 386(a), or 386(b) or to the
`benefit of an earlier filing date under section 120, 121, 365(c),
`or 386(c).
`35 U.S.C. § 100(i)(1).
`Determining whether a patent is subject to the first-inventor-to-file
`provisions of the AIA, and therefore eligible for post-grant review, is
`straightforward when the patentee filed the application from which the
`patent issued before March 16, 2013, or when the patentee filed the
`application on or after March 16, 2013 without any priority claim. The
`determination is more complex, however, for a patent that issues from a
`“transition application,” that is, an application filed on or after March 16,
`2013, that claims the benefit of an earlier filing date. See MPEP § 2159.04
`(9th ed. rev. 8.2017 Jan. 2018). Entitlement to the benefit of an earlier date
`under §§ 119, 120, 121, and 365 is premised on disclosure of the claimed
`invention “in the manner provided by § 112(a) (other than the requirement to
`disclose the best mode)” in the earlier application. See 35 U.S.C. §§ 119(e),
`120. Thus, a patent that issues from a transition application is not available
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`PGR2019-00015
`Patent 9,989,979 B2
`for post-grant review if the claimed subject matter complies with the written
`description and enablement requirements of § 112(a) for an ancestor
`application filed prior to March 16, 2013.
`We first consider whether the application that matured into the
`’979 patent is a transition application, as Petitioner asserts. See Pet. 11–12.
`The ’979 patent issued from the ’073 application, which was filed after
`March 16, 2013. Ex. 1004, codes (21), (22). The patent claims priority to
`the ’847 application and the CN ’302 application, both filed before March
`16, 2013. Id. at codes (30), (62), 1:7–11. So, the ’073 application is a
`transition application.
`B. Written description support for the ’979 patent’s claims
`Next, we must determine if all of the claims of the ’979 patent have
`written description support in the ’847 application.8 See, e.g., Pet. 20 (“[The
`term] ‘pressure controlling assembly’ lacks written description support
`under Section 112(a).”). The written description inquiry is a question of
`fact, is context-specific, and must be determined on a case-by-case basis.
`Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
`(en banc). The test for sufficiency of support is whether the disclosure of the
`application relied upon “reasonably conveys to the artisan that the inventor
`
`
`8 We need not address whether the claims have written description support
`in the CN ’302 application, which was filed before the ’847 application, as
`the ’847 application was filed prior to March 16, 2013. See Ex. 1004,
`code (62). If the ’847 application provides adequate written description
`support for all of the claims of the ’979 patent, then the ’979 patent is not
`eligible for a post-grant review. If the ’847 application does not provide
`adequate written description support for any claim of the ’979 patent, then
`the ’847 application has broken the priority chain with respect to that claim
`and any disclosure in the CN ’302 application cannot cure that break. See
`Pet. 12 n.6.
`
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`PGR2019-00015
`Patent 9,989,979 B2
`had possession at that time of the later claimed subject matter.” Vas-Cath
`Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991). “One shows that
`one is ‘in possession’ of the invention by describing the invention, with all
`its claimed limitations.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565,
`1572 (Fed. Cir. 1997). Of course, in some instances, a patentee can rely on
`information that is well known in the art to satisfy the written description
`requirement. Ariad Pharm., 598 F.3d at 1351 (“[T]he level of detail
`required to satisfy the written description requirement varies depending on
`the nature and scope of the claims and on the complexity and predictability
`of the relevant technology.”). Also, “drawings alone may be sufficient to
`provide the ‘written description of the invention’ required by § 112.” Vas-
`Cath Inc., 935 F.2d at 1564.
`To assess the priority claim of the ’979 patent, we must first construe
`the relevant claim terms. See X2Y Attenuators, LLC v. Int’l Trade Comm’n,
`757 F.3d 1358, 1365 (Fed. Cir. 2014) (“Where the claims have not been
`properly construed, the full scope of the claim is unknown, thereby
`rendering baseless any determination of written support in an earlier
`patent.”). Once we construe the relevant claim terms, we must next
`determine if the ’847 application disclosure “describ[es] the invention, with
`all its claimed limitations,” Lockwood, 107 F.3d at 1572, to show
`“possession of the claimed subject matter as of the filing date,” Ariad
`Pharm., 598 F.3d at 1351.
`1. Level of ordinary skill in the art
`In construing a claim term, we presume the term carries its “ordinary
`and customary meaning,” which is the meaning “the term would have to a
`person of ordinary skill in the art” at the time of the invention. In re
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (citation
`
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`PGR2019-00015
`Patent 9,989,979 B2
`omitted). So, we first determine the level of ordinary skill in the art before
`beginning our claim construction analysis. 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). In
`determining the level of ordinary skill in the art, we may consider factors,
`including the “type of problems encountered in the art; prior art solutions to
`those problems; rapidity with which innovations are made; sophistication of
`the technology; and educational level of active workers in the field.” In re
`GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (internal quotation marks
`and citation omitted).
`Petitioner contends that a person having ordinary skill in the art
`(“POSA”) would have had a “bachelor’s degree in mechanical engineering,
`or an equivalent field, and two years of practical experience in inflatable
`product pump design” or, alternatively, “[a]n associate’s degree in
`mechanical engineering, or an equivalent field, and four years of practical
`experience in inflatable product pump design.” Pet. 42 (citing Ex. 1002
`¶ 77).
`
`Patent Owner disagrees with Petitioner’s characterization of the level
`of ordinary skill in the art. PO Resp. 53. Patent Owner contends that a
`person having ordinary skill in the art:
`would have (1) a bachelor’s degree in mechanical engineering or
`an equivalent field, and two years of experience in working with
`pneumatic pumps, or an advanced degree mechanical
`engineering or an equivalent field and two years in teaching,
`research, or experience relating to pneumatic pumps; or (2) an
`associate’s degree in mechanical engineering, or an equivalent
`field, and four years of practical experience in inflatable product
`pump design.
`
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`PGR2019-00015
`Patent 9,989,979 B2
`Id. (emphasis added). Both definitions are similar. One difference is the
`area of experience—“inflatable product pump design” as compared to the
`broader “pneumatic pumps” for a person having a bachelor’s degree. The
`other difference is that Patent Owner contends that the level of ordinary skill
`in the art also encompasses an individual with an advanced engineering
`degree and experience in “teaching, research, or experience relating to
`pneumatic pumps.”
`We find that the level of ordinary skill in the art reflects aspects of
`each party’s definition. First, we agree with Petitioner’s characterization
`that the breadth of experience is in the field of inflatable product pump
`design. The field of “pneumatic pumps” is broad and encompasses pumps
`with operating parameters outside the needs identified in the ’979 patent and
`prior art of record. See e.g., Ex. 1004, 1:24–32 (identifying the types of
`inflatable objects as having applications “in hospitals for patients, outdoors
`for recreations and indoors for comfort”); Ex. 1006, 6:54–65 (identifying a
`low pressure blower and a low volume supplemental pump); Ex. 1007
`(involving a pump for supplying breathing air for a continuous positive
`airway pressure device); Ex. 1010, 1:19–22, 3:21–27 (disclosing a low
`output circulation pump for “mattresses, chairs, couches and other patient
`support devices”); Ex. 1013, 11:34–37 (“The blower provides an air flow of
`50 cubic feet per minute, without back pressure, and is capable of generating
`a maximum pressure of about 30 inches of water.”); Ex. 1014, 15:60–16:15
`(disclosing gauge air pressures in the range of 0.16 to 0.65 pounds per
`square inch for an air bed); Ex. 1017, 10:62–64 (“The blower preferably is a
`24 v.d.c. model producing 29.29 in Hg at 70 degrees F.”). Second, we agree
`with Patent Owner that the level of ordinary skill in the art encompasses a
`person with an advanced engineering degree and broader experience, with
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`PGR2019-00015
`Patent 9,989,979 B2
`the advanced degree compensating for the lack of specific experience with
`inflatable product pumps.
`Accordingly, we find that a person having of ordinary skill in the art
`at the time of the invention would have had:
`(1) a bachelor’s degree in mechanical engineering or an
`equivalent field, and two years of experience in inflatable
`product pump design, or an advanced degree in mechanical
`engineering or an equivalent field and two years in teaching,
`research, or experience relating to pneumatic pumps; or (2) an
`associate’s degree in mechanical engineering, or an equivalent
`field, and four years of practical experience in inflatable product
`pump design.
`Also, our claim construction and patentability analyses presented below
`would reach the same findings and determinations under either party’s
`definition of the level of ordinary skill in the art. Cf. Ex. 2020 ¶ 89 (“My
`opinions expressed in this declaration remain the same under either
`definition of a POSA.”).
`2. Claim construction of “pressure controlling assembly”—does the
`term invoke § 112(f)?
`The claim construction standard to be employed in a post-grant review
`changed to the standard set forth in Phillips v. AWH Corp., 415 F.3d 1303,
`1316 (Fed. Cir. 2005) (en banc). 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, 51,343 (Oct. 11, 2018) (amending
`37 C.F.R. § 42.200(b) effective November 13, 2018) (now codified at
`37 C.F.R. § 42.200(b) (2019)). That new standard, however, applies to
`proceedings in which the petition was filed on or after November 13, 2018.
`The Petition here was accorded a filing date of November 12, 2018.
`Paper 3, 1. Under the version of Rule 42.200(b) applicable based on the
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`Patent 9,989,979 B2
`filing date of the Petition, the Board interprets claim terms in an unexpired
`patent, such as the ’979 patent, using the broadest reasonable construction in
`light of the specification. 37 C.F.R. § 42.200(b) (2018). Under that
`standard, we generally give claim terms their ordinary and customary
`meaning, as would be understood by one of ordinary skill in the art at the
`time of the invention in the context of the entire disclosure. In re Translogic
`Tech., Inc., 504 F.3d at 1257.
`As will be evident from our analysis, we attempt to construe only the
`claim term “pressure controlling assembly” to determine if the ’979 patent is
`eligible for post-grant review. Independent claim 1 recites, in relevant part,
`“a pressure controlling assembly configured to monitor air pressure in the
`inflatable object after the inflatable body has been inflated by the pump.”
`Ex. 1004, 5:50–52. Claim 1 also recites:
`wherein the pressure controlling assembly is configured to
`automatically activate the supplemental air pressure providing
`device when the pressure controlling assembly detects that the
`air pressure inside the inflatable object decreases below a
`predetermined threshold after inflation by the pump, and to
`control the supplemental air pressure providing device to provide
`supplemental air pressure to the inflatable object so as to
`maintain the air pressure of the inflatable object within a
`predetermined range.
`Id. at 5:53–63. Petitioner contends that the term “pressure controlling
`assembly” invokes the requirements of 35 U.S.C. § 112(f) and we should
`construe the term as a means-plus-function term. Pet. 20–24, 45–51. In our
`Decision instituting trial, we preliminarily construed the term “pressure
`controlling assembly” as a means-plus-function claim term. Dec. on
`Inst. 18–27. We revisit this construction on the complete trial record.
`
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`PGR2019-00015
`Patent 9,989,979 B2
`We start our inquiry of whether the term “pressure controlling
`assembly” invokes § 112(f) by determining if the claim term uses the word
`“means.” “[T]he use of the word ‘means’ in a claim element creates a
`rebuttable presumption that § 112[(f)] applies. . . . Applying the converse,
`[the Federal Circuit has] stated that the failure to use the word ‘means’ also
`creates a rebuttable presumption—this time that § 112[(f)] does not apply.”
`Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en
`banc in relevant part). The term “pressure controlling assembly” does not
`use the word “means.” See Ex. 1004, 5:50–52; Pet. 46–47 (recognizing that
`the term does not recite “means”).
`The Federal Circuit emphasizes “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.” Williamson, 792
`F.3d at 1348. To overcome the presumption that § 112(f) does not apply, the
`burden is on Petitioner to “demonstrate[] that the claim term fails to ‘recite
`sufficiently definite structure’ or else recites ‘function without reciting
`sufficient structure for performing that function.” Id. at 1349; see Advanced
`Ground Info. Sys., Inc. v. Life360, Inc., 830 F.3d 1341, 1347 (Fed. Cir.
`2016) (“In determining whether this presumption has been rebutted, the
`challenger must establish by a preponderance of the evidence that the claims
`are to be governed by § 112[(f)].”); see also Diebold Nixdorf, Inc. v. Int’l
`Trade Comm’n, 899 F.3d 1291, 1299–1300 (Fed. Cir. 2018) (“[I]n
`appropriate cases, a party advocating that a claim limitation that does not
`recite the word ‘means’ is subject to § 112[(f)] can overcome the
`presumption against its application solely by reference to evidence intrinsic
`to the patent.”).
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`Accordingly, our first inquiry is whether Petitioner establishes, by a
`preponderance of the evidence, that “pressure controlling assembly” is a
`means-plus-function term.
`Patent Owner, citing Zeroclick, LLC v. Apple Inc., 891 F.3d 1003
`(Fed. Cir. 2018), argues that Petitioner has not rebutted the presumption that
`the term “pressure controlling assembly” does not invoke § 112(f) by
`showing that the term is a nonce word. Sur-reply 4–5. As we detail below,
`we do not agree.
`We determine that Petitioner has met its burden in demonstrating that
`the term “pressure controlling assembly” is a means-plus-function term,
`invoking the requirements of 35 U.S.C. § 112(f). We determine that the
`intrinsic evidence on which Petitioner relies is sufficient to overcome the
`presumption that the lack of the word “means” indicates that the term does
`not invoke § 112(f). See Diebold Nixdorf, Inc., 899 F.3d at 1299–1300.9 In
`our analysis below, we review the intrinsic evidence, extrinsic evidence
`(and, particularly whether the extrinsic evidence would support a finding
`that the term is used in common parlance or by persons of skill in the
`pertinent art to designate structure, including either a particular structure or a
`class of structures), and relevant case law.
`
`
`9 Patent Owner argues that Petitioner’s expert did not counter Dr. Stevick’s
`testimony and that “Petitioner’s attorney argument is insufficient to carry its
`burden.” Sur-reply 8. Specifically, Patent Owner argues that “Petitioner
`failed to provide testimony to support its allegations, and thus did not meet
`its burden of proof.” Id. As the Federal Circuit makes clear, Petitioner may
`overcome the presumption with reference to the intrinsic record only.
`Diebold Nixdorf, Inc., 899 F.3d at 1299–1300. Also, as we detail in our
`analysis below, Dr. Stevick’s testimony on this issue is entitled to little
`weight.
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`a) Intrinsic record
`We start with the words of claim 1. Petitioner contends that a person
`having ordinary skill in the art “would not have understood [the term]
`‘pressure controlling assembly’ to have a sufficiently definite meaning as the
`name for structure.” Pet. 47 (referencing Ex. 1002 ¶¶ 83–84). Petitioner
`argues that the claim 1 “simply recite[s] that the ‘pressure controlling
`assembly’ is configured to perform . . . functions, without reciting any
`structure for performing those functions.” Id. Petitioner adds that the
`Specification does not disclose what the “pressure controlling assembly” is
`or what performs the recited functions. Id. at 21–24.
`Mr. Kuchel explains that the language of claim 1 associated with the
`“pressure controlling assembly” recites functions that the “pressure
`controlling assembly” is configured to perform without providing any
`structure that performs those functions. Ex. 1002 ¶¶ 83–84. Petitioner
`contends that, “[b]ecause [claim 1] describe[s] ‘pressure controlling
`assembly’ solely in relation to its functions, the term is a means-plus-
`function term.” Pet. 47–48 (footnote omitted). These functions “are . . .[,]
`in short, monitoring air pressure, automatically activating the supplemental
`air pressure providing device, detecting that the air pressure inside the
`inflatable object has decreased below a predetermined threshold after
`inflation, and controlling the supplemental air pressure providing device to
`provide supplemental air pressure.” Id.at 48–49 (citing Ex. 1004, claim 1;
`Ex. 1002 ¶ 86).
`Patent Owner responds that “pressure control and pressure controlling
`assemblies were devices that were well-known to artisans prior to the
`effective filing date of the ’979 [p]atent and the ’847 [a]pplication.” PO
`Resp. 19–20. Patent Owner adds that “[t]he term itself is descriptive to” a
`
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`person having ordinary skill in the art. Id. at 20. That is, Patent Owner’s
`position is th