`Trials@uspto.gov
`571-272-7822
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`
`
`Paper 33
`Date: April 8, 2021
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`DONG GUAN LEAFY WINDOWARE CO. LTD.,
`Petitioner,
`
`v.
`
`ANLI SPRING CO., LTD. and
`HSIEN-TE HUANG,
`Patent Owner.
`____________
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`PGR2020-00001
`Patent 10,174,547 B2
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`____________
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`
`
`Before GEORGE R. HOSKINS, MICHAEL L. WOODS, and
`SCOTT C. MOORE, Administrative Patent Judges.
`
`HOSKINS, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`Denying Patent Owner’s Motion to Amend
`35 U.S.C. § 328(a)
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`INTRODUCTION
`I.
`Dong Guan Leafy Windoware Co. Ltd. (“Petitioner”) filed a Petition
`(Paper 1, “Pet.”) pursuant to 35 U.S.C. §§ 321–329 to institute a post-grant
`review of claims 1–4 of U.S. Patent No. 10,174,547 B2 (Ex. 1001, “the
`’547 patent”). The Petition asserted nine grounds challenging the
`patentability of these four claims. See Pet. 2–3. Anli Spring Co., Ltd. and
`Hsien-Te Huang (collectively, “Patent Owner”) oppose these challenges.
`At the institution stage, we determined it was more likely than not that
`claims 1–4 were unpatentable based on only two of the Petition’s nine
`grounds. See, e.g., Paper 7 (“Institution Decision” or “Inst. Dec.”), 13–14;
`35 U.S.C. § 324(a). Therefore, we instituted a trial as to all nine grounds,
`pursuant to USPTO policy implementing SAS Inst., Inc. v. Iancu, 138 S. Ct.
`1348 (2018) (“SAS”). See Inst. Dec. 13–14, 53.
`Now, upon review of the parties’ post-institution arguments and the
`full evidentiary record, we determine Petitioner has not shown by a
`preponderance of the evidence that claims 1 and 3 are unpatentable under
`any ground, and has shown by a preponderance of the evidence that claims 2
`and 4 are unpatentable as indefinite, the only challenge to those claims.
`Due to the latter conclusion, we also consider Patent Owner’s
`Contingent Motion to Amend the ’547 patent, proposing to replace claims 2
`and 4 of the ’547 patent with substitute claims 5 and 6. Upon review of the
`parties’ arguments and the full evidentiary record, we deny the Motion to
`Amend, because proposed substitute claims 5 and 6 seek to add new matter
`to the application leading to the issuance of the ’547 patent, and lack written
`description support in the ’547 patent.
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`BACKGROUND
`
`II.
`Real Parties in Interest and Related Proceedings
`A.
`Petitioner identifies Dong Guan Leafy Windoware Co. Ltd. as the sole
`real party in interest for Petitioner. Pet. 1. Patent Owner identifies Anli
`Spring Co., Ltd. and Hsien-Te Huang as the owners of the ’547 patent, and
`the real parties in interest for Patent Owner. Paper 12, 2. The parties
`identify Union Winner Int’l Co. Ltd. v. Hsien-Te Huang, Anli Spring Co.,
`Ltd., and Elegant Windows Inc., No. 3:19-cv-2060 (N.D. Tex.), as a matter
`that might affect, or be affected by, a decision in this proceeding. Pet. 1;
`Paper 12, 2. This District Court litigation has been dismissed voluntarily by
`joint stipulation of the parties. See Paper 12, 2; Union Winner, ECF No. 29
`(filed Jan. 27, 2020).
`
`The ’547 Patent
`B.
`The ’547 patent is directed to a spring motor using a coil spring that
`can automatically fold back a curtain. Ex. 1001, code (57).
`Prosecution of the ’547 patent began with the filing of a patent
`application in Taiwan. Id. at code (30); Ex. 2016, 16, 65, 96, 107. As often
`occurs, the translation of the parent application’s disclosure (Ex. 2016,
`68–95) into English (id. at 27–63) for filing in the United States appears to
`have included a few awkward translations of technical terms. Our
`discussion of the ’547 patent and claims throughout this Decision remains
`faithful to the terms used in the ’547 patent.
`
`Admitted Prior Art to the ’547 Patent
`1.
`The ’547 patent illustrates and describes the structure and operation of
`a prior art curtain set. Ex. 1001, Figs. 1–5, 1:16–3:53, 4:29–38. Figures 2
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`and 3 illustrate the structure of spring motor 2 for providing a feedback force
`to the curtain set, and are reproduced below.
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`Figure 2 is a three-dimensional structural view, and Figure 3 is a top view,
`of spring motor 2. Id. at 4:31–34. Spring motor 2 applies a feedback force
`to two pull cords 12, which support a lower beam and curtain pieces
`supported on the lower beam. Id. at Figs. 1 & 4–5 (illustrating spring
`motor 2, lower beam 14, and curtain 15 with curtain pieces 150), 1:19–29,
`2:32–53. Figure 5 illustrates that, as the lower beam moves down away
`from spring motor 2, more and more curtain pieces are supported by ladder
`strings rather than the lower beam. Id. at Fig. 5, 3:6–19.
`When the lower beam is at its uppermost position to support all of the
`curtain pieces, almost the entire length of equal-torque coil spring 20 is
`wound on axle 23, with a small portion of spring 20 received on coiling
`axle 24. Id. at Figs. 1 & 3, 1:53–63, 2:3–11. When a user grasps the lower
`beam and pulls it downward to close the curtain, cords 12 unwind from reel
`drums 21 and 22. Id. at 1:37–40. The resulting rotation of reel drums 21
`and 22 causes equal-torque coil spring 20 to unwind from axle 23 and wind
`on to coiling axle 24, due to the interactions among chainrings 210, 220,
`230, and 240. Id. at Fig. 3, 1:53–2:6. The user’s pulling down of the lower
`beam thereby stores the energy of equal-torque coil spring 20 as it winds on
`to coiling axle 24, so the tendency of coil spring 20 to wind back on to
`axle 23 provides a feedback force that: (a) holds the lower beam and the
`curtain pieces supported on the lower beam at a height selected by the user,
`and (b) assists the user to raise the lower beam to open the curtain. Id.
`at 1:17–37, 2:6–17, 2:32–42, 2:54–60, 3:20–30.
`Coil spring 20 of the disclosed prior art curtain set 1 is an
`“equal-torque” spring, meaning the spiral shape of spring 20 “generates an
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`effective torque curve that is close to being horizontal.” Id. at 1:30–32,
`1:45–52.
`
`Invention of the ’547 Patent
`2.
`The claims of the ’547 patent (Ex. 1001, 7:62–8:64) differ from the
`above-described admitted prior art in two principal respects.
`First, the ’547 patent discloses an unequal-torque coil spring 30,
`which has “various curvatures in different sections of a reed strip
`longitudinally” to provide an “unequal feedback torque” in a spring motor.
`Id. at 3:57–4:11, 4:64–5:6, 5:65–6:14 (describing Fig. 11). Figures 6–8 of
`the ’547 patent are reproduced below.
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`These figures illustrate different sections of reed strip 3 that combine to form
`unequal-torque coil spring 30, with each section having different
`curvatures A1, A2, A3, and A4. Id. at 5:7–18.
`Second, the ’547 patent discloses a specific torque profile provided by
`the different curvatures of unequal-torque coil spring 30. Id. at 5:19–41.
`Figure 12 of the ’547 patent is reproduced below.
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`Figure 12 illustrates a “feedback torque curve” (at the left) which
`“corresponds to the requirements for the curtain folding process in a curtain
`set [1]” (at the right). Id. at 4:55–57, 6:15–16. Figure 12 correlates various
`lengths L1–L5 of reed strip 3 forming unequal-torque coil spring 30 to
`various heights H1–H5 of lower beam 14 below spring motor 2
`incorporating spring 30. Id. at 5:19–41 (Fig. 9), 6:15–19 (Fig. 12). Strip 3
`has an initial curvature A0 between the end that is joined to coiling axle 24
`(the origin of Figure 12) and a first length L1, generating a suddenly
`increasing torque TC. Id. at 5:19–23, Fig. 9. Strip 3 has a first curvature A1
`between first length L1 and second length L2, generating a first torque T1
`“of a slowly increasing arc.” Id. at 5:23–26, 6:27–34, 6:44–51, Fig. 9.
`Strip 3 has a second curvature A2 between second length L2 and third
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`length L3, generating a second torque T2 which “is a constant torque which
`is of a curve extending from a highest torque output of the first torque T1.”
`Id. at 5:27–31, 6:35–44, Fig. 9. Strip 3 has a third curvature A3 between
`third length L3 and fourth length L4, generating a third torque T3 which “is
`a decreasing torque.” Id. at 5:31–34, 6:52–54, Fig. 9. Strip 3 has a fourth
`curvature A4 between fourth length L4 and fifth length L5, generating a
`fourth torque T4 which is less than the third torque T3. Id. at 5:34–38,
`6:54–57, Fig. 9.
`
`The Challenged Claims of the ’547 Patent
`C.
`All four claims of the ’547 patent are challenged in the Petition. See
`Pet. 2–3. Claim 1 illustratively recites, with line breaks and indenting added
`to improve readability:
`1. An unequal-torque coil spring, wherein feedback torque is
`provided in response to requirements of unequal forces at
`a loading end, comprises
`a long strip of reed strip;
`the reed strip has different sections longitudinally disposed
`from a front end to a rear end thereof, and the sections have
`different curvatures formed by getting coiled and bent
`inwards to generate different torque;
`an exposed end serving as a joining end,
`wherein the reed strip has torque distributed as follows:
`an increasing torque is implemented between the joining
`end and a first length,
`a first torque that follows the increasing torque and slowly
`increases is implemented between the first length and
`a second length,
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`a second torque that follows the first torque and is equal to
`a maximum value of the first torque is implemented
`between the second length and a third length,
`a third torque that follows the second torque and gradually
`decreases is implemented between the third length and a
`fourth length, and
`a fourth torque that follows a minimum value of the third
`torque and gradually decreases is implemented between
`the fourth length and a fifth length.
`Ex. 1001, 7:63–8:17 (line breaks and indenting added). Claim 2 depends
`from claim 1, and adds “wherein the unequal-torque coil spring generates
`usable feedback torque values with a ratio between 4:1.” Id. at 8:18–20.
`Claim 3 is independent, and recites “[a] spring motor being applied in
`a curtain set,” wherein the motor comprises several elements. Id. at
`8:21–62. One of the elements is an unequal-torque coil spring, having the
`same properties recited in claim 1. Id. at 8:40–58. Claim 4 depends from
`claim 3, and adds “wherein the unequal-torque coil spring generates usable
`feedback torque values with a ratio between 4:1.” Id. at 8:63–65.
`
`The Petition’s Grounds of Unpatentability
`D.
`The Petition presents nine grounds challenging claims 1–4 of the
`’547 patent, as reflected in the following table. See Pet. 2–3.
` Claim(s)
`Challenged 35 U.S.C. § Reference(s) / Basis
`1. 1, 3
`102(a)(2)
`Lin ’9431
`
`
`1 Ex. 1003, US 2011/0277943 A1, published Nov. 17, 2011.
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` Claim(s)
`Challenged 35 U.S.C. § Reference(s) / Basis
`2. 1, 3
`103
`Lin ’943, Yamashita2
`3. 1, 3
`103
`Admitted Prior Art3, Lin ’943
`4. 1
`103
`Maeda4
`5. 3
`103
`Lin ’1095, Maeda
`6. 1
`103
`Wang Drawing6
`7. 3
`103
`Ruggles7, Wang Drawing
`8. 2, 4
`112(b)
`Indefiniteness
`9. 1
`102(a)(1)
`On Sale Bar (Wang Springs)
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`E. Witness Testimony
`Petitioner relies on the declaration testimony of Mingshao Zhang,
`Ph.D., in support of the asserted unpatentability of claims 1–4 of the
`’547 patent (Exhibits 1015 and 1016), and in opposition to the Motion to
`Amend (Exhibits 1016 and 1017).
`Patent Owner relies on the declaration testimony of Glenn. E. Vallee,
`Ph.D., in opposition to the asserted unpatentability of claims 1–4 of the
`
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`2 Exs. 1007 (English translation) & 1008 (original), JP S53-113955,
`published Oct. 4, 1978.
`3 Petitioner cites the ’547 patent’s Figures 1–5, and written description at
`column 1, line 16 through column 3, line 44, as admitted prior art. See
`Pet. 41–43.
`4 Exs. 1004 (English translation) & 1005 (original), JP S53-115442,
`published Oct. 7, 1978.
`5 Ex. 1006, US 2008/0185109 A1, published Aug. 7, 2008.
`6 Exs. 1010 (English translation) & 1011 (original), engineering drawing of
`a spiral spring by Wei Wang dated Sept. 17, 2015.
`7 Ex. 1009, US 6,289,965 B1, issued Sept. 18, 2001.
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`’547 patent (Exhibits 2001 and 2020), and in support of the Motion to
`Amend (Exhibits 2020 and 2021).
`The record of this proceeding does not contain any cross-examination
`of either witness concerning the foregoing declaration testimony.
`
`III. POST-GRANT REVIEW TIMELINESS AND ELIGIBILITY
`Timeliness of the Petition
`A.
`A petition for post-grant review of a patent “may only be filed not
`later than the date that is 9 months after the date of the grant of the patent.”
`35 U.S.C. § 321(c). In the Institution Decision, we concluded the Petition
`was filed on October 8, 2019, which was not later than 9 months after the
`grant of the ’547 patent on January 8, 2019, and therefore timely. See Inst.
`Dec. 12. Neither party has challenged that determination during trial, and
`we maintain it here.
`
`Post-Grant Review Eligibility of the ’547 Patent
`B.
`The post-grant review provisions of 35 U.S.C. §§ 321–329 apply to
`patents subject to the first-inventor-to-file provisions of the Leahy-Smith
`America Invents Act8 (“the AIA”). See AIA § 6(f)(2)(A). In the Institution
`Decision, we concluded the earliest potential effective filing date for the
`’547 patent is March 22, 2016, after the March 16, 2013, effective date of
`the AIA’s first-inventor-to-file provisions. See Inst. Dec. 12–13. Neither
`party has challenged that determination during trial, and we maintain it here.
`
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`8 Pub. L. No. 112-29, 125 Stat. 284 (2011).
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`IV. CHALLENGES TO THE ’547 PATENT (CLAIMS 1–4)
`Introduction
`A.
`The Petition asserts Grounds 1–9 challenging the patentability of
`claims 1–4 in the ’547 patent. See supra Section II.D (identifying
`Grounds 1–9).
`At the institution stage, we determined it was more likely than not that
`claims 1–4 were unpatentable based on Ground 2 (obviousness of claims 1
`and 3 over Lin ’943 and Yamashita) and Ground 8 (indefiniteness of
`claims 2 and 4). See Inst. Dec. 20–24, 33–36. We also determined the
`preliminary record did not establish it was more likely than not that the
`’547 patent claims were unpatentable under any one of the other seven
`Grounds. See id. at 24–33, 36–53. We instituted a trial as to all nine
`Grounds, pursuant to USPTO policy implementing SAS. See id. at 13–14,
`53.
`
`Patent Owner then filed a Patent Owner Response (Paper 17,
`“PO Resp.”) to the Petition. Petitioner filed a Reply (Paper 19, “Reply” or
`“Pet. Reply”) to the Patent Owner Response. Patent Owner filed a Sur-reply
`(Paper 22, “Sur-reply”) to the Reply. We held an oral hearing, for which the
`transcript was entered into the record (Paper 32, “Tr.”).
`Petitioner bears the burden of proving unpatentability of the
`challenged ’547 patent claims, and this burden of persuasion never shifts to
`Patent Owner. See 35 U.S.C. § 326(e); Dynamic Drinkware, LLC v. Nat’l
`Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (applying 35 U.S.C.
`§ 316(e), which employs language identical to § 326(e)).
`This Decision is a final written decision under 35 U.S.C. § 328(a) and
`37 C.F.R. § 42.73 as to the patentability of claims 1–4 of the ’547 patent.
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`For reasons provided below, we determine Petitioner has not shown by a
`preponderance of the evidence that claims 1 and 3 are unpatentable under
`any ground, and has shown by a preponderance of the evidence that claims 2
`and 4 are unpatentable as indefinite.
`
`Level of Ordinary Skill in the Art
`B.
`Petitioner contends a person having ordinary skill in the art pertaining
`to the ’547 patent would possess a bachelor’s degree in engineering, with
`coursework or equivalent experience in mechanical engineering, basic
`mechanics, engineering mechanics, materials science, and engineering.
`Pet. 11; Ex. 1015 ¶ 9.
`Patent Owner asserts “Petitioner’s proposal is inadequate because it
`ignores that the field of the ’547 Patent specifically relates to torsional
`spring design and spring motors relying on torsional springs.” PO Resp.
`13–14 (emphasis added) (citing Ex. 1001, 1:7–14); Ex. 2001 ¶¶ 44–46.
`According to Patent Owner, a person having ordinary skill in the art
`pertaining to the ’547 patent would have “at least a bachelor’s degree in
`mechanical engineering, materials engineering, or similar discipline with
`course work relating to torsion spring analysis.” PO Resp. 14–15 (emphasis
`added); Ex. 2001 ¶ 47.
`We considered these same arguments at the institution stage, and
`concluded “the parties agree as to the level of ordinary skill, except that
`Patent Owner would require education or experience in torsion spring
`design.” Inst. Dec. 11. We found that we would have reached the same
`decision under either of the parties’ definitions, so we did not adopt one over
`the other. See id.
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`Petitioner does not address the level of ordinary skill in the art in its
`post-institution arguments. Patent Owner continues to “believe[] its
`proposed definition is more appropriate,” but nonetheless “agrees with the
`Board that neither party’s definition[] of a POSITA affects the outcome and
`thus applies the Board’s position for purposes of this proceeding.” PO
`Resp. 15.
`Having reviewed the foregoing arguments, and the full evidentiary
`record developed during trial, we agree with both parties that a person of
`ordinary skill in the art would possess at least a bachelor’s degree in
`engineering, with coursework or equivalent experience in mechanical
`engineering, basic mechanics, engineering mechanics, materials science, and
`engineering. As to the dispute over whether experience with torsion springs
`is required, we would reach the same decision as set forth below regardless
`of whether such experience is required. Therefore, we need not resolve that
`particular dispute.
`
`Claim Construction
`C.
`We interpret the claims of the ’547 patent “using the same claim
`construction standard that would be used to construe the claim in a civil
`action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.200(b) (2019). This
`“includ[es] construing the claim in accordance with the ordinary and
`customary meaning of such claim as understood by one of ordinary skill in
`the art and the prosecution history pertaining to the patent.” Id.
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`1.
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`“the sections have different curvatures formed by getting coiled and
`bent inwards to generate different torque”
`At the institution stage, the proper construction of the phrase in
`claims 1 and 3 reciting that “the sections [of the reed strip] have different
`curvatures formed by getting coiled and bent inwards to generate different
`torque” was a significantly disputed issue. See Inst. Dec. 15–20. Based on
`the preliminary record, we interpreted claims 1 and 3 to require a reed strip
`having different sections, wherein each section has a different curvature
`from the other sections, such that the different sections are capable of
`generating different torques. See id. at 16–17, 19–20. We also determined
`the process of manufacture recited in the claims, “formed by [the sections]
`getting coiled and bent inwards,” cannot be used to distinguish the claims
`from the prior art. See id. at 17–19, 20.
`The Patent Owner Response does not disagree with the foregoing
`claim construction, and instead “applies” it “for the purposes of discussing
`the failings of” Lin ’943 and Yamashita in Ground 2. PO Resp. 12–13.
`Petitioner’s Reply does not address the foregoing claim construction.
`Accordingly, both parties have waived any challenge to the claim
`construction set forth in our Institution Decision. See, e.g., Paper 8, 8
`(“Patent Owner is cautioned that any arguments for patentability not raised
`in the response may be deemed waived.”).
`Based on the record presented, we discern no reason to depart from
`our initial claim construction. We, therefore, continue to apply it here.
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`2.
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`“a second torque that follows the first torque and is equal to a
`maximum value of the first torque is implemented
`between the second length and a third length”
`Patent Owner contends claims 1 and 3, in reciting the “second
`torque . . . is equal to a maximum value of the first torque” (Ex. 1001,
`8:8–11, 8:50–53 (emphasis added)), require the spring to generate a
`“constant” torque between the second and third lengths. See PO Resp.
`23–26 (citing Ex. 1001, Figs. 9 & 12, 6:35–52, 8:4–16); Ex. 2001 ¶¶ 53–58;
`Ex. 2020 ¶¶ 20–24.
`Petitioner disagrees. See Pet. Reply 3–5; Ex. 1016 ¶¶ 7–9. Petitioner
`asserts Patent Owner “arbitrarily read[s]” a “constant” limitation into the
`claims from the ’547 patent specification, because the claims do not recite
`the term “constant” like the ’547 patent specification does. Pet. Reply 3–4,
`5; Ex. 1016 ¶¶ 7–8. Petitioner also cites Figure 12 of the ’547 patent, as
`showing second torque T2 “apparently decreasing when the travel length
`approaches L3.” Pet. Reply 4–5 (annotating Fig. 12 to identify the portion
`of the torque curve at issue); see also Tr. 9:12–11:8 (during the oral hearing,
`Petitioner cited Figure 12 as establishing that claims 1 and 3 do not require
`“the second torque has to be a constant torque force throughout the whole
`length between” the second and third lengths, and instead more broadly
`require only that “there is one torque value” between the second and third
`lengths “that equals to the maximum value of the first torque” (emphases
`added)). Petitioner concludes from Figure 12 that the ’547 patent
`specification “is not consistent on whether the second torque has to be a
`‘constant’ value.” Pet. Reply 4–5.
`Petitioner also provides extrinsic evidence. Dr. Zhang testifies: “No
`matter based on a common sense understanding or what a POSHITA would
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`perceive, ‘equal to’ a value does not mean the torque has to stay constant at
`the exact value.” Ex. 1016 ¶ 7; Pet. Reply 4. Dr. Zhang also testifies that “it
`is infeasible to [construct] a coil spring . . . that can maintain a perfectly
`unchanging amount of torque,” and “[a] reasonable amount of error or
`deviation is always anticipated.” Ex. 1016 ¶ 9; Pet. Reply 4.
`Patent Owner replies that “the plain language” of claims 1 and 3
`requires the second torque to be a constant torque. Sur-reply 2. Patent
`Owner points out that all of the other torque sections recited in the claims
`are expressly required to be changing torques, either “increasing” (the
`increasing torque and the first torque sections) or “decreasing” (the third
`torque and the fourth torque sections). Id. at 2–4 (citing Ex. 1001, 8:4–17);
`Tr. 25:4–26:15. By contrast, the second torque must be “equal to a single
`value (e.g., ‘the maximum value of the first torque’),” that is, be constant.
`Sur-reply 3–4. In this way, Patent Owner asserts the claims incorporate the
`“constant” second torque section of the ’547 patent specification. Id. at 4–5
`(citing Ex. 1001, 6:35–44).
`Upon review of the foregoing, we agree with Patent Owner’s position.
`Claims 1 and 3 recite that the second torque must be “equal to a maximum
`value of the first torque.” Ex. 1001, 8:8–11, 8:50–53. It is undisputed that
`there can be only one maximum value of the first torque. It is also
`undisputed that, because the first torque is required to be “slowly
`increas[ing],” the maximum value of the first torque is found at the second
`length, where the first torque transitions to the second torque. Id. at 8:6–8,
`8:48–50. This is illustrated, for example, by Figure 12 of the ’547 patent, in
`which first torque T1 slowly increases to a maximum value found at second
`length L2, where first torque T1 transitions to second torque T2. See id. at
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`Fig. 12, 5:27–32, 6:35–51. We agree with Patent Owner’s argument that, by
`requiring the second torque to be equal to one (and only one) value, the
`claims necessarily require the second torque to be constant between the
`second and third lengths.
`Further, the ’547 patent specification twice describes the second
`torque as being “constant.” See id. at 5:29, 6:35–37. Figure 12
`correspondingly illustrates second torque T2 as a line segment extending
`from second length L2 to third length L3, which is flat (i.e., constant) over a
`substantial portion of its length. See id. at Fig. 12. It is true, as Petitioner
`points out, that the very tail end of this line segment near third length L3
`bends downward slightly. Nonetheless, in light of the claim language and
`the written description in the ’547 patent specification, we conclude the
`second torque must be constant between the second and third lengths.
`Dr. Vallee agrees. See Ex. 2001 ¶¶ 16, 43, 55–58; Ex. 2020 ¶¶ 22–24.
`Dr. Zhang’s testimony does not persuade us otherwise. Dr. Zhang offers no
`support, whether intrinsic evidence or otherwise, for his testimony that
`“‘equal to’ a value does not mean the torque has to stay constant at the exact
`value.” Ex. 1016 ¶¶ 7–8. It may very well be, as Dr. Zhang testifies, that it
`is “infeasible” to construct a coil spring “that can maintain a perfectly
`unchanging amount of torque,” and “[a] reasonable amount of error or
`deviation is always anticipated.” Id. ¶ 9. Nonetheless, Patent Owner does
`not contend that claim 1 requires a perfectly unchanging amount of torque in
`the second torque section. Indeed, we determine a person of ordinary skill in
`the art would recognize the limited ability of real-world manufacturing
`processes to generate a coil spring having a perfectly constant torque at an
`
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`acceptable cost, and would accordingly not interpret claim 1 to require such
`a torque.
`Thus, we construe the second torque of claims 1 and 3 to require a
`constant torque, equal to the maximum value of the first torque, within
`reasonable manufacturing tolerances.
`
`Remaining Claim Terms
`3.
`We determine no further explicit constructions of any claim terms are
`needed to resolve the issues presented by the arguments and evidence
`presented here. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor
`Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (per curiam) (claim terms
`need to be construed “only to the extent necessary to resolve the
`controversy”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
`795, 803 (Fed. Cir. 1999)).
`
`D. Grounds 1, 3–7, and 9: Various Challenges
`(Claims 1 and 3)
`The Petition, in Grounds 1, 3–7, and 9, asserts claims 1 and 3 of the
`’547 patent are unpatentable under 35 U.S.C. §§ 102(a)(1), 102(a)(2),
`and 103, based on one or more of Admitted Prior Art, Lin ’943, Maeda,
`Lin ’109, Ruggles, the Wang Drawing, and sale of the Wang Springs. See
`Pet. 2–3, 14–31, 40–85, 88–89.
`In the Institution Decision, we determined the preliminary record did
`not establish it was more likely than not that claims 1 and 3 were
`unpatentable under any one of Grounds 1, 3–7, and 9. See Inst. Dec. 24–33
`(Ground 1), 36–37 (Ground 3), 38–45 (Ground 4), 46–48 (Ground 5), 48–50
`(Ground 6), 50 (Ground 7), 51–53 (Ground 9). In doing so, we cited the
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`provision in the PTAB Consolidated Trial Practice Guide (“Consolidated
`Guide”)9 that: “If a trial is instituted, the Board generally will provide
`analysis of the strengths and weaknesses of all challenges in the petition in
`order to provide guidance to the parties for the upcoming trial.” Inst.
`Dec. 14 (citing Consolidated Guide, 5–6). According to the Consolidated
`Guide, this is done to “permit the petitioner, in its reply brief, to address
`issues discussed in the institution decision.” Consolidated Guide, 73.
`Concerning Grounds 1, 3–7, and 9, the Patent Owner Response
`“asserts that the Board’s conclusions [in the Institution Decision] are correct
`for the reasons set forth in the [I]nstitution [D]ecision.” PO Resp. 21–22
`(Ground 1), 37–38 (Ground 3), 38–39 (Ground 4), 39–40 (Ground 5), 40–41
`(Ground 6), 41–42 (Ground 7), 45–46 (Ground 9). Petitioner’s Reply does
`not address any one of Grounds 1, 3–7, and 9. See, e.g., Pet. Reply i (Table
`of Contents).
`When asked about the status of these Grounds during the oral hearing,
`Petitioner’s counsel stated Petitioner is “only arguing” the other Grounds 2
`and 8. See Tr. 22:23–24:4. On this record, we find Petitioner has
`abandoned Grounds 1, 3–7, and 9 in this proceeding.
`We further determine Petitioner has not proven the unpatentability of
`claims 1 and 3 under any one of Grounds 1, 3–7, and 9, by a preponderance
`of the evidence. In this regard, the evidence of record is the same as when
`we issued the Institution Decision, and we have not discerned anything in
`the arguments presented during trial to change our view of the evidence. We
`summarize our findings and conclusions here, and rely on the analysis
`
`
`9 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
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`provided in the Institution Decision for support, which Petitioner has not
`disputed during trial.
`As to Grounds 1 and 3, a preponderance of the evidence does not
`support the Petition’s contention that Lin ’943 discloses a spring having
`different sections with “different curvatures . . . to generate different torque”
`as recited in claims 1 and 3.10 See Inst. Dec. 15–20 (discussing claim
`construction), 26–27 (discussing Ground 1), 36–37 (discussing Ground 3).
`As to Grounds 4 and 5, a preponderance of the evidence does not
`support the Petition’s contention that Maeda’s Figure 3(c) illustrates a torque
`that “slowly increases” approximately between turns 14 and 16 of a spring,
`as recited in claims 1 and 3. See Inst. Dec. 43–45 (discussing Ground 4),
`47–48 (discussing Ground 5). Also, even assuming Maeda’s Figure 3(c)
`does disclose such a torque section, a preponderance of the evidence does
`not support the Petition’s contention that it would have been obvious to
`modify the spring of Maeda’s Figure 3(a) to include a slowly increasing
`torque section between turns 0 and 1. See id. at 45.
`As to Grounds 6 and 7, a preponderance of the evidence does not
`support the Petition’s contention that the Wang Drawing qualifies as prior
`
`
`10 On August 18, 2020, after we instituted trial in the present proceeding on
`April 20, 2020, a USPTO Memorandum was issued with guidance that binds
`the Board, limiting a petitioner’s use of admitted prior art in IPR
`proceedings. See USPTO Memorandum, “Treatment of Statements of the
`Applicant in the Challenged Patent in Inter Partes Reviews Under§ 311”
`(Aug. 18, 2020), available at https://www.uspto.gov/sites/default/files/
`documents/signed_aapa_guidance_memo.pdf. We need not address whether
`or how this Memorandum applies to the present PGR proceeding, because
`Ground 3 fails for reasons that are entirely separate from Petitioner’s
`reliance on Admitted Prior Art in the ’547 patent.
`
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`art to the ’547 patent as a publicly accessible, printed publication. See id. at
`48–50 (discussing Grounds 6 and 7).
`As to Ground 9, because the Wang Spring design was obtained
`directly or indirectly from a joint inventor of the ’547 patent, the sale of the
`Wang Springs is not prior art by virtue of 35 U.S.C. § 102(b)(1)(A). See
`Inst. Dec. 51–53. Thus, even if we were to find that a preponderance of the
`evidence supports Petitioner’s contentions that the Wang Springs embodied
`the invention of claim 1, and were on sale under 35 U.S.C. § 102(a)(1) less
`than one year before the earliest potential effective filing date of the
`’547 patent, Petitioner’s arguments would still fail.
`
`E. Ground 2: Obviousness over Lin ’943 and Ya
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