Trials@uspto.gov
`571.272.7822
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` Paper No. 8
` Date: March 9, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SHIELDMARK, INC.
`Petitioner,
`
`v.
`
`CLIFFORD A. LOWE
`Patent Owner.
`____________
`
`PGR2019-00058
`Patent 10,214,664 B2
`____________
`
`
`Before CHRISTOPHER L. CRUMBLEY, JO-ANNE M. KOKOSKI, and
`SHELDON M. MCGEE, Administrative Patent Judges.
`
`MCGEE, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Post-Grant Review
`35 U.S.C. § 324(a)
`
`
`
`
`
`
`
`
`
`
`571.272.7822
`
`
`
`
`
`
`
` Paper No. 8
` Date: March 9, 2020
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SHIELDMARK, INC.
`Petitioner,
`
`v.
`
`CLIFFORD A. LOWE
`Patent Owner.
`____________
`
`PGR2019-00058
`Patent 10,214,664 B2
`____________
`
`
`Before CHRISTOPHER L. CRUMBLEY, JO-ANNE M. KOKOSKI, and
`SHELDON M. MCGEE, Administrative Patent Judges.
`
`MCGEE, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Post-Grant Review
`35 U.S.C. § 324(a)
`
`
`
`
`
`
`
`
`
`
`
`PGR2019-00058
`Patent 10,214,664 B2
`
`
`I.
`
`INTRODUCTION
`
`ShieldMark, Inc. (“Petitioner”) filed a Petition for post-grant review
`
`of claims 1–6, 10–16, and 20–22 of U.S. Patent No. 10,214,664 B2 (Ex.
`
`1001, “the ’664 patent”). Paper 2 (“Pet.”). Clifford A. Lowe (“Patent
`
`Owner”) filed a Preliminary Response to the Petition. Paper 7 (“Prelim.
`
`Resp.”).
`
`Pursuant to 35 U.S.C. § 324(a), a post-grant review may be instituted
`
`only if “the information presented in the petition . . . demonstrate[s] that it is
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`more likely than not that at least 1 of the claims challenged in the petition is
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`unpatentable.”
`
`Petitioner challenges the patentability of claims 1–6, 10–16, and 20–
`
`22 under 35 U.S.C. § 112 as lacking written description support and
`
`enablement, and under 35 U.S.C. § 102 as anticipated by prior sales of
`
`certain tape products. Pet. 5.
`
`Upon considering the Petition and the Preliminary Response, we
`
`determine that the Petition fails to demonstrate that it is more likely than not
`
`that the ʼ664 patent is eligible for post-grant review. Accordingly, we deny
`
`institution of trial.
`
`
`
`II. BACKGROUND
`
`A.
`
`Related Proceedings
`
`Both parties identify the following district court proceeding as related
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`to the ’664 patent: Lowe et al. v. ShieldMark, Inc., 1:19-cv-00748, in the
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`United States District Court for the Northern District of Ohio (N.D. Ohio).
`
`Pet. 2; Paper 5, 2.
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`2
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`PGR2019-00058
`Patent 10,214,664 B2
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`B.
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`The ’664 Patent (Ex. 1001)
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`
`
`The ’664 patent issued on February 26, 2019 from application number
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`14/747,905 (“the ʼ905 application”), with Clifford A. Lowe as the listed
`
`inventor. Ex. 1001, codes (21), (71). The ’664 patent relates to “[a] floor
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`marking tape [that] has a structure that retains the adhesive under the tape to
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`prevent the adhesive from being squeezed out from under the tape when the
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`tape is in use on a floor.” Id. at code (57).
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`
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`Figures 1–3 of the ʼ664 patent are illustrative:
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`
`
`
`
`In the ʼ664 patent, Figure 1 depicts “a cross section of the tape of the
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`invention,” Figure 2 depicts “an enlarged view of the encircled portion of
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`[Figure] 1,” and Figure 3 “is a cross section of the edge of the tape applied to
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`a floor surface.” Ex. 1001, 2:8–12.
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`
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`“Tape 10 is used to mark areas of a floor 12 such as the areas around
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`machines or aisles from forklifts.” Id. at 2:21–23. Figure 1 illustrates tape
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`10 that includes body 20 having upper surface 22 and lower surface 24,
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`3
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`PGR2019-00058
`Patent 10,214,664 B2
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`where “[a]t least the lateral edges of upper surface 22 are smoothly beveled
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`as shown in [Figure] 2,” which “helps to prevent tape 10 from being
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`unintentionally lifted,” e.g., by a forklift. Id. at 2:23–27. “Lower surface 24
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`defines [] recess 30 bounded by a pair of shoulders 32. Recess 30 may be
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`centered with respect to body 20,” and “is designed to receive the adhesive
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`34 that holds tape 10 to floor 12.” Id. at 2:28–31. The “[s]houlders 32
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`prevent adhesive 34 from flowing out past the lateral edges of tape 10 where
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`it collects dirt.” Id. at 2:31–33.
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`C.
`
`Illustrative Claim
`
`Independent claims 1 and 11 are illustrative, and are reproduced
`
`below:
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`1. A floor marking tape adhered to a floor wherein the floor
`marking
`tape establishes a boundary on the floor; the
`combination comprising:
`
`a floor having an uppermost surface; the uppermost
`surface of the floor configured to support personnel and
`equipment thereupon;
`
`a floor marking tape having a body that has an upper
`surface and a lower surface; the lower surface facing the
`uppermost surface of the floor to which the floor marking tape is
`adhered such that the body of the floor marking tape is disposed
`above the uppermost surface of the floor;
`
`the body of the floor marking tape having a longitudinal
`direction;
`
`the body of the floor marking tape having first and second
`lateral edge portions disposed in the longitudinal direction; each
`of the first and second lateral edge portions having an upper
`surface and a lower surface;
`
`each of the first and second lateral edge portions having a
`width defined in a direction perpendicular to the longitudinal
`direction;
`
`4
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`PGR2019-00058
`Patent 10,214,664 B2
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`the upper surface of each lateral edge portion comprising
`an extension of the upper surface of the body;
`
`the lower surface of each lateral edge portion being a flat
`coplanar extension of the lower surface of the body;
`
`the entire body of each lateral edge portion being tapered
`with the upper surface of the first lateral edge portion extending
`to the lower surface of the first lateral edge portion and the upper
`surface of the second lateral edge portion extending to the lower
`surface of the second lateral edge portion;
`
`each of the first and second lateral edge portions having a
`maximum height that is less than its width; and
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`an adhesive securing the lower surface of the body to the
`uppermost surface of the floor to establish a boundary.
`
`
`11. A floor marking tape adhered to a floor wherein the floor
`marking
`tape establishes a boundary on the floor; the
`combination comprising:
`
`a floor having an uppermost surface; the uppermost
`surface of the floor configured to support personnel and
`equipment thereupon;
`
`a floor marking tape having a body that has an upper
`surface and a lower surface; the lower surface facing the
`uppermost surface of the floor to which the floor marking tape is
`adhered such that the body of the floor marking tape is disposed
`above the uppermost surface of the floor;
`
`the body of the floor marking tape having a longitudinal
`direction;
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`the body of the floor marking tape having first and second
`
`lateral edge portions disposed in the longitudinal direction; each
`of the first and second lateral edge portions having an upper
`surface and a lower surface;
`
`each of the first and second lateral edge portions having a
`width defined in a direction perpendicular to the longitudinal
`direction;
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`5
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`PGR2019-00058
`Patent 10,214,664 B2
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`the entire body of each lateral edge portion being tapered
`with the upper surface of the first lateral edge portion extending
`to the lower surface of the first lateral edge portion to meet at a
`first junction and the upper surface of the second lateral edge
`portion extending to the lower surface of the second lateral edge
`portion to meet at a second junction;
`
`the first and second junctions disposed on the uppermost
`surface of the floor such that the floor marking tape limits
`unintentional lifting of the floor marking tape from the floor;
`
`each of the first and second lateral edge portions having
`a maximum height that is less than its width; and
`an adhesive securing the lower surface of the body to the
`uppermost surface of the floor to establish a boundary.
`
`Ex. 1001, 5:2–36; 6:1–36
`
`D. The Asserted Challenges
`
`35 U.S.C. § Basis
`
`Claims Challenged
`
`112(a)
`
`102
`
`102
`
`
`
`Lack of Written Description
`Support & Enablement
`Sales of “Superior Mark Tape” 1–6, 10–16, 20–22
`
`1–6, 10–16, 20–22
`
`Sales of “Durastripe Tape”
`
`1–6, 10–16, 20–22
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`III. ANALYSIS
`
`A. Eligibility of Patent for Post-Grant Review
`
`The post-grant review provisions of the Leahy-Smith America Invents
`
`Act (“AIA”)1 apply only to patents subject to the first inventor to file
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`provisions of the AIA. AIA § 6(f)(2)(A). Specifically, the first inventor to
`
`file provisions apply to any patent application, and to any patent issuing
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`
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`1 Pub. L. No. 112-29, 125 Stat. 284 (2011).
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`Patent 10,214,664 B2
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`thereon, that contains or contained at any time a claim that has an effective
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`filing date on or after March 16, 2013. AIA § 3(n)(1). Furthermore, “[a]
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`petition for a post-grant review may only be filed not later than the date that
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`is 9 months after the date of the grant of the patent.” 35 U.S.C. § 321(c); see
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`also 37 C.F.R. § 42.202(a) (setting forth the same).2
`
`To establish that the ʼ664 patent is eligible for post-grant review,
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`Petitioner has the burden of demonstrating that it is more likely than not that
`
`the ʼ664 patent has at least one claim with an effective filing date on or after
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`March 16, 2013. See Mylan Pharms. Inc. v. Yeda Res. & Dev. Co.,
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`PGR2016-00010, Paper 9 at 10 (PTAB Aug. 15, 2016). In particular,
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`Petitioner must prove that at least one of the challenged claims of the ʼ664
`
`patent was “not disclosed in compliance with the written description and
`
`enablement requirements of [35 U.S.C.] § 112(a) in the earlier applications
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`for which the benefit of an earlier filing date prior to March 16, 2013 was
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`sought.” Inguran, LLC v. Premium Genetics (UK) Ltd., PGR2015-00017,
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`Paper 8 at 11 (PTAB Dec. 22, 2015).
`
`Petitioner asserts that, while the ʼ664 patent claims priority to three
`
`applications that each pre-date March 16, 2013, the ʼ664 patent is not
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`entitled to claim the benefit of those applications because the claims recite
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`subject matter “that is unsupported by the chain of priority applications.”
`
`Pet. 21–22; Ex. 1001, codes (60) and (63). Petitioner outlines specific
`
`reasons supporting its view that claims 1–6, 10–16, and 20–22 have an
`
`effective filing date after March 16, 2013. Pet. 28–43. Specifically,
`
`
`
`2 Petitioner asserts, and Patent Owner does not dispute, that the instant
`Petition was filed within nine months of the ʼ664 patent’s issue date of
`February 26, 2019. Pet. 4; Prelim. Resp., generally.
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`7
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`PGR2019-00058
`Patent 10,214,664 B2
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`Petitioner points to certain claim limitations recited in independent claims 1
`
`and/or 11 that allegedly have insufficient written description and/or
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`enablement support in the three priority applications having an effective
`
`filing date prior to March 16, 2013 (“the pre-AIA applications”). Id.
`
`Patent Owner contends that support exists in the pre-AIA applications
`
`for the limitations identified by Petitioner. Prelim. Resp. 2–24. As such,
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`Patent Owner asserts that the ʼ664 patent is entitled to an effective filing date
`
`pre-dating the AIA, rendering the ʼ664 patent ineligible for post-grant
`
`review. Id. at 6.
`
`To determine whether the ʼ664 patent is eligible for post-grant review,
`
`then, we must first decide whether Petitioner has shown that one or more of
`
`the challenged claims lack written description and/or enablement support in
`
`at least one of the pre-AIA applications.
`
`In its eligibility discussion (Pet. 28–43), Petitioner argues the
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`following limitations lack written description and/or enablement support
`
`under 35 U.S.C. § 112(a):
`
`Claim language
`
`Claim(s)
`
`Limitation
`Number3
`1a)
`
`1b)
`
`“each of the first and second
`lateral edge portions having a
`width defined in a direction
`perpendicular to the longitudinal
`direction”
`“each of the first and second
`lateral edge portions having a
`maximum height that is less than
`its width”
`“coplanar extension”
`2)
`
`
`Petition
`pages
`
`
`
`32–36
`
`
`
`
`32–36
`
`
`
`
`1, 11
`
`
`
`1, 11
`
`1
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`36–38
`
`3 We identify and discuss the claim limitations at issue in this manner to
`reflect how the parties group them. Pet. 33–43; Prelim. Resp. 9–24.
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`8
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`PGR2019-00058
`Patent 10,214,664 B2
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`3)
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`4)
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`“the entire body of each lateral
`edge portion being tapered”
`“first junction” and “second
`junction”
`
`1, 11
`
`38–42
`
`11
`
`42–43
`
`
`
`We consider whether Petitioner has shown sufficiently that these
`
`claim limitations lack written description and/or enablement support under
`
`35 U.S.C. § 112 in accordance with the following legal principles.
`
`Written Description
`
`
`
`To satisfy the written description requirement, the specification must
`
`“reasonably convey[] to those skilled in the art that the inventor had
`
`possession” of the claimed invention as of the filing date. Ariad Pharms.,
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`Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc).
`
`“[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.” Id. (citing Capon
`
`v. Eshhar, 418 F.3d 1349, 1357–58 (Fed. Cir. 2005)). In haec verba support
`
`in the specification is not required to satisfy the written description
`
`requirement. See Ariad, 598 F.3d at 1352.
`
`Enablement
`
`
`
`The enablement inquiry is separate and distinct from written
`
`description under 35 U.S.C. § 112. Ariad, 598 F.3d at 1344. The relevant
`
`test for enablement “is whether one reasonably skilled in the art could make
`
`or use the invention from the disclosures in the patent coupled with
`
`information known in the art without undue experimentation.” United States
`
`v. Teletronics, Inc., 857 F.2d 778, 785 (Fed. Cir. 1988). “[A] patent
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`specification complies with the statute even if a ‘reasonable’ amount of
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`PGR2019-00058
`Patent 10,214,664 B2
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`routine experimentation is required in order to practice a claimed invention.”
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`Enzo Biochem, Inc. v. Celgene, Inc., 188 F.3d 1362, 1371 (Fed. Cir. 1999).
`
`Whether undue experimentation is needed is not a single factual
`
`determination, but is rather a conclusion reached only after weighing several
`
`factual considerations. See In re Wands, 858 F.2d 731, 797 (Fed. Cir. 1988).
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`Such factors include:
`
`(1) the quantity of experimentation necessary, (2) the amount of
`direction or guidance presented, (3) the presence or absence of
`working examples, (4) the nature of the invention, (5) the state
`of the prior art, (6) the relative skill of those in the art, (7) the
`predictability or unpredictability of the art, and (8) the breadth
`of the claims.
`
`Id.
`
`Limitations 1a) and 1b)4
`
`Petitioner alleges that, during prosecution of the ʼ905 application,
`
`Patent Owner submitted an amendment including limitations 1a) and 1b),
`
`but the Examiner indicated “during a telephone interview conducted on
`
`August 17, 2018” that the amendment introduced new matter. Pet. 33 (citing
`
`Ex. 1002, 31). Following the Examiner’s purported “rejection” of
`
`limitations 1a) and 1b), Petitioner alleges that “Patent Owner filed
`
`‘Amendment F and Interview Summary’ on August 23, 2018 in an attempt
`
`to cancel” limitations 1a) and 1b).5 Id. Petitioner also notes that while
`
`
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`4 Petitioner also refers to these limitations collectively as “the Two New
`Matter Claim Elements.” See Pet. 33–36.
`
`5 Although Patent Owner’s “Amendment F” is undated, the “Electronic
`Acknowledgement Receipt” indicates that Patent Owner’s “Amendment F”
`was submitted on August 23, 2018. Ex. 1002, 33–40. Despite the
`Examiner’s indication (id. at 31) that Amendment F dated August 23, 2018
`“will be entered,” the ʼ664 patent claims issued with limitations 1a) and 1b),
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`10
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`PGR2019-00058
`Patent 10,214,664 B2
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`the ʼ664 patent “specification purports to identify overall widths and
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`thicknesses of the body,” those “dimensions do not indicate that each of the
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`first and second lateral edge portions have a maximum height that is less
`
`than its width” as set forth in limitation 1b). Id. at 34–35. Based on these
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`assertions, Petitioner contends that the ʼ664 patent specification “fails to
`
`provide a written description and enabling disclosure of” limitations 1a) and
`
`1b). Id. at 35.
`
`In response, Patent Owner avers that the Examiner did not “reject”
`
`these limitations under 35 U.S.C. § 112, but rather “discussed in an
`
`interview with counsel that the language raises § 112 concerns.” Prelim.
`
`Resp. 21–22. Patent Owner noted how “[c]ounsel disagreed in that
`
`interview” with such concerns, “and noted his disagreement in his summary
`
`of the interview, offering Amendment F while reserving ‘the right to present
`
`limitations in the future.” Id. at 22. Patent Owner also points to how the
`
`Examiner discusses these limitations in the Notice of Allowability, which
`
`makes it “clear that after further consideration, the Examiner determined
`
`that there was no § 112 issue with the claim limitations.” Id. Patent Owner
`
`argues that we should give weight to the Examiner’s final determination of
`
`patentability. Id.
`
`Patent Owner furthermore contends that Figure 2 of the provisional
`
`application filed April 22, 2005 (“the first provisional application”) supports
`
`limitations 1a) and 1b) by expressly reciting the width and height
`
`dimensions of the tape body that are set forth in the ʼ664 patent
`
`
`
`consistent with Patent Owner’s “Amendment E” filed with a Request for
`Continued Examination on May 24, 2018. Id. at 55–69.
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`PGR2019-00058
`Patent 10,214,664 B2
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`specification. Prelim. Resp. 23. Figures 1 and 2 of the first provisional
`
`application are set forth below:
`
`
`
`Figure 1 of the first provisional application depicts “a cross section of
`
`the tape of the invention” while Figure 2 of the first provisional application
`
`depicts “an enlarged view of the encircled portion of Fig. 1.” Ex. 1006,
`
`
`
`3:10–11.
`
`Based on these drawings, Patent Owner argues:
`
`With the width defined in a direction perpendicular to the
`longitudinal direction, it can readily be seen that the tape body
`has a maximum height just outwardly of the shoulders of
`0.78mm (0.6mm + 0.18mm) as shown in Fig. 2 of the first
`provisional application and described at page 3, lines 4–8 of the
`PCT application, and column 2, lines 37–42 of the ʼ664 patent.
`Further shown in Fig. 2 of the first provisional application is a
`body width of 1.9mm from the shoulder outwardly. Notably,
`0.78mm is less than 1.9mm.
`
`Prelim. Resp. 23.
`
`Upon consideration of the parties’ respective arguments, and the
`
`evidence of record, we determine Petitioner has not established that
`
`limitations 1a) and 1b) lack written description or enabling support in the
`
`pre-AIA applications.
`
`Regarding limitation 1a), Petitioner does not advance sufficient
`
`explanation why each of the lateral edge portions do not have a width
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`Patent 10,214,664 B2
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`defined in a direction that is perpendicular to the longitudinal direction,
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`instead focusing on the Examiner’s purported “rejection” of this language.
`
`Pet. 33–36. This is insufficient to satisfy Petitioner’s burden. As Patent
`
`Owner observes, the Examiner did not make a formal new matter rejection
`
`of this claim language, but rather allowed the claims to issue with this
`
`limitation. Prelim. Resp. 21–22; Ex. 1002, 8–17. Furthermore, Petitioner
`
`has not established that the Examiner raised any potential new matter
`
`concerns regarding limitation 1a). Here, the Examiner’s Interview Summary
`
`indicates that “portions of the proposed amendments raised issues under 35
`
`USC 112(a) (new matter)” (Ex. 1002, 31 (emphasis added)), while the
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`applicant’s Interview Summary suggests that limitation 1b) was of concern.
`
`Id. at 39 (“The Examiner indicated the limitations added . . . relating the
`
`maximum height of the lateral edge portions to the width of the lateral edge
`
`portions raise section 112 issues.”).
`
`Moreover, we agree with Patent Owner that the first provisional
`
`application evinces possession of limitation 1a). Prelim. Resp. 21–24;
`
`Ex. 1006, 10. Specifically, the first provisional application indicates that
`
`Figure 1 is a cross sectional view of the inventive tape. Ex. 1006, 3:10.
`
`Thus, the tape depicted in Figure 1 of the first provisional application
`
`appears to be oriented perpendicular to the longitudinal direction. Id. at 10.
`
`Figure 2 of the first provisional application––an enlarged view of the
`
`encircled portion of Figure 1––depicts a width of a lateral edge portion, i.e.,
`
`1.9mm, that is “defined in a direction perpendicular to the longitudinal
`
`direction” as recited in claim 1. Id.
`
`Regarding limitation 1b), Figure 2 of the first provisional application
`
`also expressly provides the identical measurements recited in the ʼ664
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`Patent 10,214,664 B2
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`patent. See Ex. 1001, 2:37–42. As explained by Patent Owner, those
`
`measurements satisfy the claim requirement that the tape’s lateral edge
`
`portion has a maximum height, i.e., 0.78mm, that is less than the lateral edge
`
`portion’s width, i.e., 1.9mm. Prelim. Resp. 23. Petitioner does not explain
`
`how the expressly disclosed measurements contained in Figure 2 of the first
`
`provisional application fail to evince possession of limitation 1b). Rather,
`
`Petitioner makes a simple assertion that these measurements are only
`
`sufficient to support one embodiment. Pet. 34–35. Such unexplained
`
`assertions fail to satisfy Petitioner’s burden of demonstrating lack of written
`
`description support.
`
`We also observe that Petitioner’s contention that these limitations are
`
`not enabled amounts to little more than a bare assertion. See Pet. 34, 35.
`
`Petitioner provides neither a Wands factors analysis, nor persuasive
`
`argument detailing how the skilled artisan would have needed to undertake
`
`undue experimentation to make or use the claimed subject matter. See id. at
`
`32–36. Such assertions do not satisfy Petitioner’s burden of showing one or
`
`more of the pre-AIA applications fail to enable limitations 1a) and 1b).
`
`Limitation 2)
`
`The “coplanar extension” language appears in independent claim 1 as
`
`part of the limitation reciting “the lower surface of each lateral edge portion
`
`being a flat coplanar extension of the lower surface of the body.” Ex. 1001,
`
`5:25–26. Petitioner contends that the limitation “coplanar extension” has no
`
`written description or enablement support in any of the pre-AIA
`
`applications. Pet. 36–38. Specifically, Petitioner asserts that the ʼ664 patent
`
`specification “defines the lower surface of the body as including the
`
`shoulder portion of the recess,” and that “[t]he shoulder portion includes a
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`vertical portion that is not coplanar with the horizontal lower surface of the
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`lateral edge portions.” Id. at 37. Thus, according to Petitioner, the ʼ664
`
`patent “and the applications to which it attempts to claim priority . . . fail[] to
`
`sufficiently describe the lower surface of the lateral edge portions being
`
`coplanar with the lower surface of the body.” Id.
`
`Patent Owner sets forth how it believes the term “coplanar extension”
`
`has support in each of the three pre-AIA applications. Prelim. Resp. 9–13.
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`In particular, Patent Owner argues that it is “[r]eadily apparent from each of
`
`the figures . . . submitted with the first provisional and with each related
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`patent application thereafter . . . that the lower surfaces of the lateral edge
`
`portions are flat, coplanar extensions of the lower surface of the body.” Id.
`
`at 10. Patent Owner states the inventive tape is disclosed to be applied to a
`
`floor, and “[b]y definition and common experience, a floor is ‘a level,
`
`supporting surface in any structure.’” Id. (citing Ex. 2001). Patent Owner
`
`states that the skilled artisan “would expect the lower surface of the lateral
`
`edge portions to be flat and coplanar as shown in the drawing figures of each
`
`application,” and that Figures 2 and 3 “depict enlarged views of the flat
`
`lower surfaces at the edges of the tape” while Figure 1 “shows that they are
`
`coplanar.” Id. Patent Owner agrees with Petitioner “that the lower surface
`
`of the body is not planar” because of the recess defined by two shoulders
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`“with coplanar lower surfaces of lateral edge portions.” Id. at 11.
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`Upon consideration of the parties’ respective arguments, and the
`
`evidence of record, we determine Petitioner has not established that
`
`limitation 2) lacks written description or enablement support in the pre-AIA
`
`applications.
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`15
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`PGR2019-00058
`Patent 10,214,664 B2
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`Petitioner’s argument regarding the written description requirement is
`
`premised on requiring the lower surface of the lateral edge portions to be
`
`coplanar with the lower surface of the tape body defined by recess 30––a
`
`construction that Petitioner has not persuaded us is the correct one.6 See
`
`Pet. 37 (arguing how the Specification does not “sufficiently describe the
`
`lower surface of the lateral edge portions being coplanar with the lower
`
`surface of the body.” (emphasis added)). Petitioner’s construction, however,
`
`appears to be inconsistent with a plain reading of the claim. In particular,
`
`the claim does not require the lateral edges to be coplanar “with the lower
`
`surface of the body” as implied by Petitioner’s argument. Rather, the claim
`
`requires “the lower surface of each lateral edge portion [to be] a flat coplanar
`
`extension of the lower surface of the body.” Ex. 1001, 5:25–26. Thus, one
`
`possible reading of the claim reveals that the lower surfaces of the first and
`
`second lateral edge portions 1) are flat, 2) are coplanar with each other, and
`
`3) define an “extension of the lower surface of the body.” Such a reading is
`
`consistent with the ʼ664 patent, and is supported by Figures 1 and 3 provided
`
`in the first provisional application 60/676,212 filed April 29, 2005 (“the ʼ212
`
`provisional application”), depicted below:
`
`
`
`6 Petitioner proposes a claim construction for the term “lower surface” as it
`pertains to the tape body as a whole, but does not address the “coplanar
`extension” language at issue here. Pet. 18–19.
`
`16
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`PGR2019-00058
`Patent 10,214,664 B2
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`
`
`Ex. 1007, 10. Figure 1 of the ʼ212 provisional application illustrates “a
`
`cross section of the tape,” while Figure 3 “is a cross section of the edge of
`
`the tape applied to a floor surface.” Id. at 5:3, 5. The ʼ212 provisional
`
`application discloses how “[l]ower surface 24 defines a recess 30 bounded
`
`by a pair of shoulders 32. Recess 30 is designed to receive the adhesive 34
`
`that holds tape 10 to floor 12.” Id. at 5:15–16. Substantially similar
`
`language appears in the ʼ664 patent specification. Ex. 1001, 2:28–31. As
`
`depicted, each lateral edge portion is “flat” because it is “applied to a floor
`
`surface,” i.e., “a level, supporting surface.” See Ex. 2001 (emphasis added).
`
`Because the tape’s lateral edge portions are each applied to the floor,7 the
`
`
`
`7 Although Figure 3 illustrates only one lateral edge portion applied to floor
`surface 12, the skilled artisan would have understood that both lateral edge
`portions of the tape are applied to the floor surface because the ʼ212
`provisional application states “[a]t least the lateral edges of upper surface 22
`
`17
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`PGR2019-00058
`Patent 10,214,664 B2
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`lateral edges appear also to be coplanar with each other, and not with
`
`recess 30 that holds adhesive 34. Furthermore, Figure 1 depicts each lateral
`
`edge portion as an extension of the lower surface of tape body 10. Ex. 1007,
`
`10.
`
`On the other hand, Petitioner’s implicit construction requires the
`
`lateral edge portions to be coplanar with the lower surface of the tape body
`
`defined by recess 30, which would appear to require the entire lower surface
`
`of the tape body to be one planar surface. Such an interpretation is not
`
`supported by the figures depicted supra or any other disclosure referenced
`
`by Petitioner. It would also appear to effectively read the term “coplanar”
`
`out of claim 1 because the term “coplanar” describes a planar relationship
`
`between two or more things. See Texas Instruments, Inc. v. U.S. Intern.
`
`Trade Com’n, 988 F.2d 1165, 1171 (Fed. Cir. 1993) (“[T]o construe the
`
`claims in the manner suggested by TI would read an express limitation out
`
`of the claims. This, we will not do”).
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`Thus, in the absence of sufficient explanation from Petitioner as to
`
`why we should adopt its implicit construction, we agree with Patent Owner’s
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`assessment of this specific claim language, which finds support in the ʼ212
`
`provisional application: “Simply stated, the lower surfaces of the extensions
`
`are flat and coplanar. To read the language to require that the lower surfaces
`
`of the lateral edge portions be coplanar with the recess defined between the
`
`shoulders, as does Petitioner, is inconsistent with the claim language itself.”
`
`Prelim. Resp. 12.
`
`
`
`are smoothly beveled” to help “tape 10 from being unintentionally lifted”
`after being applied to a floor. Ex. 1007, 5:10–14 (emphasis added).
`
`18
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`PGR2019-00058
`Patent 10,214,664 B2
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`Furthermore, as with limitations 1a) and 1b), Petitioner does not
`
`advance a detailed argument as to how limitation 2) lacks an enabling
`
`disclosure in the pre-AIA applications. See Pet. 36–38. Rather, Petitioner
`
`again makes a simple assertion that the subject application “fails to provide
`
`an enabling disclosure.” As we found with limitations 1a) and 1b) above,
`
`this unsupported assertion fails to satisfy Petitioner’s burden of persuasion.
`
`Limitation 3)
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`Petitioner asserts that the recitation of “the entire body of each lateral
`
`edge portion being tapered” lacks written description and enablement
`
`support in the three pre-AIA applications. Pet. 38–42. Petitioner notes that
`
`the term “tapered” first appeared in original claim 12 after March 16, 2013.
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`Id. at 38–39. Petitioner also states that “multiple amendments submitted
`
`during [prosecution of the parent application to the ʼ664 patent] show that
`
`the entire body of the lateral edge portion and not just the upper surface of
`
`that edge portion must be tapered. Id. at 39. Specifically, Petitioner argues
`
`that because the ʼ664 patent “clearly defines ‘body’ as including both the
`
`upper and lower surfaces of the tape,” the recitation requiring “the entire
`
`body of each lateral edge portion being tapered” requires the upper, lower,
`
`and intermediate surfaces of the lateral edge portion to taper. Id. at 40–41.
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`Patent Owner asserts that support for limitation 3) does exist in each
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`of the pre-AIA applications. Prelim. Resp. 13–17. Specifically, Patent
`
`Owner avers that the word “tapered” need not be expressly disclosed in the
`
`pre-AIA applications for the skilled artisan to have understood that the body
`
`of each lateral edge portion is tapered, because Figures 2 and 3 of the first
`
`provisional application illustrate such a taper. Id. at 13–14. Patent Owner
`
`asserts that the term “tapered” is a common (as opposed to a technical) term,
`
`19
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`PGR2019-00058
`Patent 10,214,664 B2
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`and also provides a definition for “taper” as “to become smaller or thinner
`
`toward one end.” Id. at 15 (citing Ex. 2002).
`
`Upon consideration of the parties’ respective arguments, and the
`
`evidence of record, we determine Petitioner has not established that
`
`limitation 3) lacks written description or enablement support in the pre-AIA
`
`applications.
`
`We are not persuaded by Petitioner’s argument that the limitation
`
`requiring “the entire body of each lateral edge portion being tapered”
`
`requires the upper and lower surfaces of the lateral edge portions to be
`
`tapered. Pet. 41. The definition of “body” upon which Petitioner relies (id.
`
`at 40) refers to the “body” of the tape as a whole, not the “body” of the
`
`lateral edge portion recited in the claim. Ex. 1001, 2:23–25 (“Tape 10
`
`generally includes a body 20 having an upper surface 22 and a lower surface
`
`24.” (emphases added)).
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`Furthermore, the language immediately following “the entire body of
`
`each lateral edge portion being tapered” refers to “the lower surface of the
`
`first lateral edge portion” and “the lower surface of the second lateral edge
`
`portion.” Id. at 5:27–32. Each of those lower surfaces are expressly referred
`
`to in the immediately preceding limitation as being “flat” and “coplanar.”
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`
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