Trials@uspto.gov
`571-272-7822
`
`Paper 11
`Entered: August 4, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`OCADO GROUP PLC,
`Petitioner,
`
`Vv.
`
`AUTOSTORE TECHNOLOGYAS,
`Patent Owner.
`
`PGR2021-00038
`Patent 10,696,478 B2
`
`Before BARRY L. GROSSMAN,MIRIAM L. QUINN,and
`FRANCESL. IPPOLITO,Administrative Patent Judges.
`
`GROSSMAN,Administrative Patent Judge.
`
`DECISION
`Denying Institution of Post-grant Review
`35 U.S.C. § 324
`
`
`571-272-7822
`
`Paper 11
`Entered: August 4, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`OCADO GROUP PLC,
`Petitioner,
`
`Vv.
`
`AUTOSTORE TECHNOLOGYAS,
`Patent Owner.
`
`PGR2021-00038
`Patent 10,696,478 B2
`
`Before BARRY L. GROSSMAN,MIRIAM L. QUINN,and
`FRANCESL. IPPOLITO,Administrative Patent Judges.
`
`GROSSMAN,Administrative Patent Judge.
`
`DECISION
`Denying Institution of Post-grant Review
`35 U.S.C. § 324
`
`
`
`PGR2021-00038
`Patent 10,696,478 B2
`
`I.
`
`INTRODUCTION
`
`Ocado Groupplc (“Petitioner’’) filed a Petition (Paper1, “Pet.”’)
`
`requesting a post-grant review of claim 19 of U.S. Patent No. 10,696,478 B2
`
`(Ex. 1001, “the ’478 patent”). AutoStore Technology AS (‘Patent Owner’’)
`
`filed a Preliminary Responseto the Petition (Paper7, “Prelim. Resp.”).
`
`Pursuantto our authorization for supplementalbriefing, Petitioner filed a
`
`Reply to the Preliminary Response addressing discretionary denial under
`
`§ 324(a) (Paper8, “Prelim. Reply”), and Patent Ownerfiled a Sur-reply to
`
`that Reply (Paper9, “Prelim. Sur-reply”). Petitioner filed forty-one exhibits
`
`(Exs. 1001-1041). Patent Ownerfiled thirty-one exhibits (Exs. 2001-2031).
`
`Institution of a post-grant review is authorized by statute only when
`
`“the information presented in the petition .. . demonstrate[s] that it is more
`
`likely than not that at least 1 of the claims challenged in the petition is
`
`unpatentable.” 35 U.S.C. § 324; see 37 C.F.R. § 42.4 (2020). The burdenis
`
`on Petitioner to show that the challenged patentis eligible for post-grant
`
`review. Mylan Pharms. Inc. v. Yeda Research & Dev. Co., PGR2016-
`
`00010, Paper 9 at 10 (PTAB Aug. 15, 2016) (holding that the ultimate
`
`burden of persuasion remains with a petitioner to demonstrate that the
`
`challenged patentis eligible for post-grant review).
`
`Upon considering the Petition, the Preliminary Response,the Reply,
`
`the Sur-reply, and the cited evidence, we conclude that Petitioner has not
`
`demonstrated that it is more likely than notthat the ’478 patent has, or had,
`
`at least one claim having aneffective filing date on or after March 16, 2013.
`
`Thus, the ’478 patent is not eligible for a post-grant review.
`
`
`
`PGR2021-00038
`Patent 10,696,478 B2
`
`A.
`
`Related Proceedings
`
`Theparties identify various judicial and administrative matters that
`
`would affect or be affected by a decision in this proceeding. Pet. 1-2; Paper
`
`5, 2.
`
`Theparties state that the °478 patent is at issue in AutoStore
`
`Technology AS v. Ocado Central Services Ltd., Ocado Group plc, Ocado
`
`Innovation Ltd., Ocado Operating Ltd., Ocado Solutions Ltd. and Ocado
`
`Solutions USA, Inc., Civil Action No. 2:20-cv-00494 (E.D. Va.) (“District
`
`Court Litigation”). See Ex. 1016. The °478 patentalso is at issue in Jn the
`
`Matter of Certain Automated Storage and Retrieval Systems, Robots, and
`
`Components Thereof(Inv. No. 337-TA-1228), filed October 1, 2020 (the
`
`“ITC investigation”). See Ex. 1017. The District Court Litigation has been
`
`stayed pending the ITC investigation. See Ex. 1016, 4 (Docket entry 20);
`
`Ex. 2001.
`
`Four additional patents relating to subject matter similar to that
`
`disclosed and claimed in the ’478 patent also have been challenged by
`
`Petitioner in the following inter partes review petitions: IPR2021-00274
`
`regarding U.S. Patent No. 10,294,025 B2 (review instituted); IPR2021-
`
`00311 regarding U.S. Patent No. 10,474,140 B2 (review instituted);
`
`IPR2021-00398 regarding U.S. Patent No. 10,093,525 B2 (review denied);
`
`and IPR2021-00412 regarding U.S. Patent No. 10,494,239 B2 (review
`
`denied).
`
`B.
`
`The '478 Patent
`
`The ’478 patent issued on June 30, 2020, from an application filed on
`
`October 1, 2019. Ex. 1001, codes (21), (22), (45). The ’478 patent states
`
`that it is a:
`
`
`
`PGR2021-00038
`Patent 10,696,478 B2
`
`Continuation of application No. 16/122,969, filed on Sep. 6,
`2018, now Pat. No. 10,494,239, which is a continuation of
`application No. 15/818,791, filed on Nov. 21, 2017, now Pat. No.
`10,093,525, which is
`a continuation of application No.
`15/632,441, filed on Jun. 26, 2017, now Pat. No. 9,862,579,
`which is a continuation of application No. 15/411,301, filed on
`Jan. 20, 2017, now Pat. No. 9,856,082, which is a continuation
`of application No. 15/197,391, filed on Jun. 29, 2016, now Pat.
`No. 9,656,802, which is a continuation of application No.
`14/650,757, filed as application No. PCT/EP2013/075671 on
`Dec. 5, 2013, now Pat. No. 9,422,108.
`
`Ex. 1001, code (63), 1:6-17.
`
`The °478 patentalso claimspriority to a Norwegian Application No.
`20121488 filed on December 10, 2012 (“NO/488”'). Ex. 1001, code (30).
`
`The *478 patent, titled “Automated Storage System,” is directed to “a
`
`remotely operated vehicle for picking up storage bins from a storage
`
`system.” Ex. 1001, 1:23-24. The invention “also relates to a storage system
`
`using the inventive vehicle.” /d. at 1:26—27.
`
`Claim 19, the sole challenged claim, is directed specifically to an
`
`automated storage system havingpillars defining storage columns,
`
`supporting rails on thepillars, and a plurality of remotely controlled robot
`
`vehicles. Jd. at 8:64-9:9. The vehicle or robot includes a vehicle body,
`
`vehicle driving means, and a storage section for receiving any storage bin
`
`stored in a storage column within the storage system. Jd. at 2:19-23. The
`
`vehicle or robot also includesa lifting device whichis at least indirectly
`
`connected to the vehicle body in orderto lift a storage bin into the storage
`
`section. Id. at 2:23—25. This general structure, admittedly, is well known,
`
`' We use the “NO/488” short form for consistency, because this is what the
`parties have used. See, e.g., Pet. 4; Prelim. Resp. xi, 30.
`
`4
`
`
`
`PGR2021-00038
`Patent 10,696,478 B2
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`and is shown in Figures | and 2, which are identified as “priorart.”
`
`Id. at 1:28-44.
`
`The disclosed invention also includes a first set of wheels or other
`
`“vehicle rolling means”(see, e.g., Ex. 1001, 2:26) to allow movementofthe
`
`vehicle along a first direction (X) within the storage system and a secondset
`
`of wheels or “vehicle rolling means” to allow movementof the vehicle along
`
`a seconddirection (Y) in the storage system. /d. at 2:26-31. The second
`
`direction (Y) is oriented perpendicularto the first direction (X). Ex. 1001,
`
`2:31-33.
`
`Figure 6, reproduced below, shows an embodimentofthe storage
`
`structure, and Figure 8, also reproduced below, shows an embodimentofthe
`
`disclosed vehicle or robot on the structure.
`
`No
`
`FIG.6
`
`FIG.8
`
`FIG.6 is a perspective top view ofa FIG. 8 is a perspective side view of
`bin storing grid and a vehicle
`part of a storage system including a
`support. Ex. 1001, 4:39-40.
`bin storing grid, a vehicle support
`and a remotely operated vehicle.
`Ex. 1001, 4:43-46.
`
`C.
`
`Illustrative Claim
`
`Claim 19 is the sole challenged claim and is reproduced below.
`
`
`
`PGR2021-00038
`Patent 10,696,478 B2
`
`19. An automated storage system, comprising
`a. a three-dimensional storage structure, comprising
`i. a plurality of pillars which are positioned with internal
`distances and in a rectangular arrangement, wherein the
`rectangular arrangementofthepillars define storage columnsfor
`the storage of a plurality of vertically-stacked storage bins,
`ii. supporting rails arranged in a two-dimensional matrix
`on thepillars, said supporting rails arranged inafirst direction
`and a second direction orthogonal to the first direction,
`the
`supporting rails defining openings for the storage columns,
`b. a plurality of remotely controlled robot vehicles, said
`robot vehicles comprising
`i. a vehicle body,
`ii. a cavity arrangedto receive a storage bin from a storage
`column,
`iii. a plurality of rolling members attached to the vehicle
`body about the cavity, arranged for travelling along the storage
`structure in the first and seconddirections,
`whereby the robot vehicle can move along the storage
`structure to position the cavity within the cross-sectional area of
`the storage columnto receive the storage bin into the cavity for
`further transport along the storage structure.
`
`Ex. 1001, 8:64-9:22.
`
`D.
`
`The Asserted Grounds of Unpatentability
`
`Petitioner asserts that claim 19 is unpatentable based on the following
`
`nine grounds:
`
`
`
`PGR2021-00038
`Patent 10,696,478 B2
`
`_|
`
` References
`
`
`35 U.S.C. §*|Claims Challenged
`Lindbo °055°
`102
`
`
`Lindbo °055
`103
`
`
`Hognaland ’366,* Oshima,”
`103
`AutoStore Presentation®
`
`
`Hognaland ’366, Ten Hompel,’
`
`
`AutoStore Presentation
`
`
`
`
`Hognaland °366, Hognaland
`’662,° AutoStore Presentation
`
`
`Russian Central Bank on-sale
`
`
`
`103
`
`103
`102
`
`? The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”) included revisions to 35 U.S.C. §§ 102, 103 that became
`effective on March 16, 2013. Because, as discussed in Section IV ofthis
`Decision, the application that resulted in the ’478 patent has an effective
`filing date before March 16, 2013, the pre-AJA versions apply. This is
`consistent with the original examination by the Patent and Trademark
`Office. See Ex. 1018, 8 (“The present application is being examined under
`the pre-AIA first to invent provisions.”) (Wecite to page 8 ofthe
`thirteen-page exhibit, and note that Petitioner failed to numberthe pages of
`this exhibit in accordance with 37 C.F.R. § 42.63(d)(2)(i).)
`3 Lindboet al. (International Publication No. WO 2015/019055 Al,
`published Feb. 12, 2015) (Ex. 1003). Petitioner refers to this documentas
`“WO/S5.” See Pet. viii.
`4 Hognaland (NO 317366 B1, published Jan. 2, 2001) (Ex. 1004; certified
`English translation (Ex. 1005)).
`5 Oshima (JP H10-203647 A, published Aug. 4, 1998) (Ex. 1007; certified
`English translation (Ex. 1008)).
`6 Video clip dated Aug. 2009 (Ex. 1013). Availableat
`https://www.youtube.com/watch?v=iyVDMp2bL9c.
`7 Ten Hompel, et al. (DE Patent Application DE 10 2009 017 241 Al,
`published Oct. 21, 2010) (Ex. 1009;certified English translation (Ex. 1010)).
`8 Hognaland (US Patent No. 6,654,662, B2, issued Nov. 25, 2003)
`(Ex. 1012).
`? Newsreport dated February 4, 2014, published in Haugesunds Avis
`[Haugesunds Newspaper], entitled “Hatteland delivers AutoStore to the
`Central Bank of Russia,” available at
`
`
`
`PGR2021-00038
`Patent 10,696,478 B2
`
`
`
`
`
`
`
`
`
`In support of its unpatentability arguments, Petitioner relies on the
`
`declaration testimony of Dr. Brian Pfeifer (the “Pfeifer Declaration”).
`
`Ex. 1014.
`
`POST-GRANT REVIEW ELIGIBILITY
`II.
`A threshold jurisdictional issue in this proceeding is whether the °478
`
`patentis eligible for a post-grant review. A patentis eligible for post-grant
`
`review only if it issued from an application that contains or contained at any
`
`time a claim that has an effective filing date on or after March 16, 2013.
`
`AIA § 3(n)(1).
`
`The ’478 patent claims priority to Norwegian Application No.
`
`20121488, the NO/488 application, filed on December 10, 2012, through an
`
`extensive chain of U.S. applications. See Ex. 1001, codes (30), (63). Based
`
`on this claimed priority date of December 10, 2012, which is before March
`
`16, 2013, the ’478 patent is not eligible to be challenged in a post-grant
`
`proceeding.
`
`Petitioner, however, contendsthat “the challenged claim [claim 19] of
`
`the °478 Patent is not disclosed by NO/488,and the ’478 Patenttherefore is
`
`not entitled to NO/488’s priority date.” Pet. 5. According to Petitioner,
`“(t]he effective filing date ofthe challenged claim is no earlier than
`November 21, 2017.” Jd. Petitioner’s primary arguments in support ofits
`
`arguedpriority date rely on: (1) Patent Owner’s infringement contentions in
`
`https://www.havis.no/vindafjord/nyheter/naringsliv/hatteland-
`inntarsentralbank/s/2-2.92 1-1.8277442 (Ex. 1033).
`
`8
`
`
`
`PGR2021-00038
`Patent 10,696,478 B2
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`the related ITC proceeding(e.g., id. at 11); (2) arguments by Patent Owner
`
`submitted to the Norwegian Patent Office during prosecution of the NO/488
`
`application (e.g., id. at 12 (citing Ex. 1025)); (3) arguments by Patent Owner
`
`in a “District Court in Oslo, Norway”(e.g., id. at 12-13 (citing Ex. 1027));
`
`and (4) a single passage from the written description in the ’478 patent (e.2.,
`
`id. at 12 (citing Ex. 1001, 2:34-39)).
`
`Patent Ownerasserts a different view of the facts, arguing that “the
`
`°478 Patent’s priority date is December 10, 2012, based on its Norwegian
`
`parent NO/488.” Prelim. Resp. 43. Patent Owneralso provides a clause-by-
`
`clause analysis of claim 19 asserting where each element and limitation in
`
`claim 19 is disclosed in the NO/488 application. Prelim. Resp. 44—50 (citing
`
`Ex. 2025). Patent Owner concludes from this analysis that “claim 19 of the
`
`’478 Patent is supported by the disclosure of NO/488, no new matter has
`
`been claimed”(id. at 44), and “NO/488 provides written description
`
`support” for claim 19 (id. at 50).
`
`Post-grant reviews are available only for patents “described in section
`3(n)(1)” of the AIA.'° AIA § 6(f)(2)(A). The eligible patents are those that
`
`issue from applications “that contain[] or contained at any time... aclaim
`
`10 Section 3(n)(1) establishes that the first inventor to file provisions
`of the AIA “shall apply to any application for patent, and to any patent
`issuing thereon, that contains or contained at any time—
`(A) a claim to a claimed invention that has an effective
`filing date as defined in section 100(i)oftitle 35, United States
`Code,that is on or after the [March 16, 2013] effective date... ;
`or
`
`(B) a specific reference under section 120, 121, or 365(c)
`of title 35, Unites States Code, to any patent or application that
`contains or contained at any time such a claim.”
`AIA § 3(n)(1), 125 Stat. at 293.
`
`
`
`PGR2021-00038
`Patent 10,696,478 B2
`
`to a claimed invention that has an effective filing date in section 100(i) of
`
`title 35, United States Code,that is on or after”“the expiration of the 18-
`
`month period beginning on the date of the enactment of” the AIA.
`
`AIA § 3(n)(1). Because the AIA was enacted on September 16, 2011, post-
`
`grant reviews are available only for patents that issue from applications that
`
`at one point contained at least one claim with an effective filing date on or
`
`after March 16, 2013.
`
`Thus, a threshold jurisdictional issue in this proceeding is whetherthe
`
`°478 patent contains, or contained at any time, a claim with an effective
`
`filing date of March 16, 2013, orlater.
`
`The effective filing date of an application for a patent on an invention
`
`is “the filing date of the earliest application for which the .
`
`.
`
`. applicationis
`
`entitled, as to such invention, to a right of priority under section 119, 365(a),
`
`365(b), 386(a), or 386(b) orto the benefit of an earlier filing date under
`
`section 120, 121, 365(c), or 386(c).” 35 U.S.C. § 100(i)(1)(B). In the event
`
`that the application is not entitled to any earlier filing date or right of
`
`priority, the effectivefiling date is “the actual filing date of the...
`application for the patent containing a claim to the invention.” Jd.
`
`§ 1000)(1)(A).
`
`Undercertain conditions and onfulfilling certain requirements, an
`
`application for patent filed in the United States may beentitled to the benefit
`of, or the priority of, the filing date of a prior application filed in the United
`
`States or in a foreign country. Priority claims are governed bystatute. See,
`
`e.g., 35 U.S.C. § 119 (priority based on a prior foreign application), § 120
`
`(priority based on a prior U.S. application); see also 37 C.F.R. § 1.55
`
`(regulations establishing the procedures forpriority based on a prior foreign
`
`10
`
`
`
`PGR202 1-00038
`Patent 10,696,478 B2
`
`application), § 1.78 (regulations establishing the proceduresfor priority
`
`based on a prior U.S. application).
`
`The °478 patent claimspriority to both prior U.S. applications and to a
`
`prior foreign application. Ex. 1001, codes (30), (63).
`
`For a claim in a later-filed U.S. patent application to be entitled to the
`
`filing date of an earlier U.S. or foreign patent application, the earlier
`
`application must, among other requirements, provide written description
`
`support under 35 U.S.C. § 112 for the claimed subject matterin the later-
`
`filed U.S. application. /n re Ziegler, 992 F.2d 1197, 1200 (Fed. Cir. 1993)
`
`(“A foreign patent application must meet the requirements of 35 U.S.C. §
`112, first paragraph, in orderforalater filed United States application to be
`entitled to the benefit of the foreign filing date under 35 U.S.C. § 119”);
`
`Anascape, Ltd. v. Nintendo ofAm. Inc., 601 F.3d 1333, 1335 (Fed. Cir.
`
`2010) (To obtain the benefit of a parent application’s filing date under
`
`section 120, “the claims of the later-filed application must be supported by
`
`the written description in the parent ‘in sufficient detail that one skilled in
`
`the art can clearly conclude that the inventor invented the claimed invention
`
`as of the filing date sought.’” (quoting Lockwood v. Am. Airlines, Inc., 107
`F.3d 1565, 1572 (Fed. Cir. 1997)).
`|
`The requirement for written description support in the prior
`
`application is the same, whetherthe claim for priority is based onaprior
`
`foreign application under Section 119 of the statute or is based onaprior
`
`U.S. application under Section 120 of the statute. Yasuko Kawaiv.
`
`Metlesics, 480 F.2d 880, 889 (CCPA 1973) (‘[I]t is our view that the
`
`purpose of the Paris Convention wasto have an application made in a
`
`foreign country treated as the equivalent of a domestic filing. We believe
`
`that equivalent treatment is accorded whenthe foreign application is
`
`11
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`PGR2021-00038
`Patent 10,696,478 B2
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`weighed underthe first paragraph of section 112 in the same manneras
`
`would a United States application under section 120.”).
`
`To satisfy the written description requirement, “the disclosure of the
`
`earlier application, the parent, must reasonably conveyto one ofskill in the
`
`art that the inventor possessed the later-claimed subject matter at the time
`
`the parent application wasfiled.” Tronzo v. Biomet, Inc., 156 F.3d 1154,
`
`1158 (Fed. Cir. 1998). “[A] description that merely renders the invention
`
`obvious doesnotsatisfy the requirement.” Ariad Pharms., Inc. v. Eli Lilly &
`Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (en banc).
`Moreover,“the level of detail required to satisfy the written
`
`description requirement varies depending on the nature and scopeofthe
`
`claims and on the complexity and predictability of the relevant technology.”
`
`Id. at 1351; see also In re Hayes Microcomputer Prods., Inc. Patent Litig.,
`
`982 F.2d 1527, 1534 (Fed. Cir. 1992) (“[A]n inventoris not required to
`
`describe every detail of his invention. An applicant’s disclosure obligation
`
`varies accordingto the art to which the invention pertains.”).
`
`As noted above,Petitioner’s argumentis that “the challenged claim
`
`(claim 19] of the ’478 Patent is not disclosed by NO/488.” Pet. 5 (emphasis
`
`added); see also Pet. 15 (arguing that the NO/488 application “does not
`
`provide a written description ofthe invention claimedin claim 19”)
`(emphasis added); Pet. 5 (“The effective filing date of the challenged claim
`
`is no earlier than November 21, 2017”) (emphasis added).
`
`Asstated above,to establish post-grant eligibility, Petitioner has the
`
`burden to show that the ’478 patent issued from an application that contains
`
`or contained at any time any claim that has an effective filing date onor after
`
`March 16, 2013. See AIA § 3(n)(1); see also MicroSurgical Tech., Inc. v.
`
`The Regents of the University of Colorado, PGR2021-00026, Paper 12, 13—
`
`12
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`PGR2021-00038
`Patent 10,696,478 B2
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`16 (PTAB Jun. 16, 2021) (discussing, as a threshold matter, the “more
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`complex”determination whethera “transition application,” that is, an
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`application filed on or after March 16, 2013, that claims the benefit of an
`
`earlier filing date is eligible for post-grant review). Petitioner focuses
`
`exclusively on the challenged claim, arguing that, due to a lack of written
`
`description support in NO/488, the earliest effective filing date of the
`
`challenged claim is after March 16, 2013. E.g., Pet. 36. Petitioner,
`
`however, does not address whetherthe ’478 patent issued from an
`
`application that contained at any time any other claim that lacks written
`
`description and enabling support in a priority application filed before March
`
`16, 2013. Petitioner has not directed us to any persuasive argument or
`
`evidence addressing whether any claim that ever existed in the ’478 patent,
`
`or the numerouspatent applications to whichit claimspriority, are supported
`
`by the disclosure in the NO/488 application.
`
`In determining whether the ’478 patent is eligible for a post-grant
`
`review, we consider the arguments and evidence presented by Petitioner,
`
`which focus exclusively on the scope of claim 19 of the ’478 patent. The
`
`“Board must base its decision on arguments that were advanced by a party,
`
`and to which the opposing party was given a chanceto respond.” Jn re
`
`Magnum Oil Tools Int'l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016).
`
`“fW]hile the PTO has broad authority to establish proceduresfor revisiting
`
`earlier-granted patents in IPRs, that authority is not so broadthatit allows
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`the PTO to raise, address, and decide unpatentability theories never
`
`presented by the petitioner and not supported by record evidence.” Jd. The
`
`same Administrative Procedure Act limitation applied in Magnum Oil in the
`
`context of an inter partes review (IPR) proceeding applies equally to this
`
`post-grant proceeding.
`
`/d. (interpreting 5 U.S.C. § 554(b)(3)).
`
`13
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`PGR2021-00038
`Patent 10,696,478 B2
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`Petitioner’s position on priority depends on whether we accept
`
`Petitioner’s position on claim construction. As stated by Petitioner, “[t]he
`
`fundamental problem with claim 19 is that its scope, as construed by Patent
`
`Ownerin pending ITClitigation captures subject matter that is not described
`
`in or enabled by the ’478 Patent’s specification, or the specification of the
`
`NO/488 Application to which it claims priority.” Pet. 11.
`
`Thus, to resolve this dispute, we consider Petitioner’s proposed claim
`
`construction.
`
`I.
`
`CLAIM CONSTRUCTION
`
`Weconstrue each claim “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) (2020). Underthis standard, claim terms
`
`are generally given their ordinary and customary meaning as would have
`
`been understood by a person of ordinary skill in the art at the time of the
`
`invention and in the context of the entire patent disclosure. Phillips v. AWH
`
`Corp., 415 F.3d 1303, 1312-14 (Fed. Cir. 2005) (en banc) (“We have
`
`frequently stated that the words of a claim ‘are generally given their ordinary
`9399
`and customary meaning.’”). To provide this meaning, we lookto “the words
`
`of the claims themselves, the remainderof the specification, the prosecution
`
`history, and extrinsic evidence concerningrelevantscientific principles, the
`
`meaning of technical terms, and the state of the art.” Phillips, 415
`
`F.3d at 1314 (quoting Innova/Pure Water, Inc. v. Safari Water Filtration
`
`Sys., Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004)).
`
`Although claim termsare interpreted in the context of the entire
`
`patent, it is improper to import limitations from the specification into the
`
`claims.
`
`/d. at 1323 (acknowledging “the danger of reading limitations from
`
`the specification into the claim’). “[T]he line between construing terms and
`
`14
`
`
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`PGR2021-00038
`Patent 10,696,478 B2
`
`importing limitations can be discerned with reasonable certainty and
`
`predictability if the court’s focus remains on understanding how a person of
`
`ordinary skill in the art would understand the claim terms.” Jd. Usually, the
`
`specification “is dispositive; it is the single best guide to the meaning of a
`
`disputed term.” Cont’! Circuits LLC v. Intel Corp., 915 F.3d 788, 796 (Fed.
`
`Cir. 2019) (citing Phillips at 1315 (quoting Vitronics Corp. v. Conceptronic,
`
`Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996))).
`
`Claims are construed only to the extent necessary to resolve a dispute.
`
`See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d
`
`1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms‘that are in
`
`controversy, and 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))).
`
`Because claim construction is based on how a term would be
`
`understood by a person ofordinary skill in the art, we first determine the
`
`ordinary skill level.
`
`A.
`
`Level of Ordinary Skill
`
`Thelevel 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). “This reference point prevents .
`
`.
`
`. factfinders
`
`from using their own insight or, worse yet, hindsight, to gauge obviousness.”
`
`Id.
`
`Factors pertinent to a determination of the level of ordinary skill in the
`
`art include: (1) educational level of the inventor; (2) type of problems
`
`encounteredin the art; (3) prior art solutions to those problems; (4) rapidity
`
`with which innovations are made; (5) sophistication of the technology, and
`
`(6) educational level of workers active in the field. Envtl. Designs, Ltd. v.
`
`15
`
`
`
`PGR2021-00038
`Patent 10,696,478 B2
`
`Union Oil Co., 713 F.2d 693, 696-697 (Fed. Cir. 1983) (citing Orthopedic
`
`Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 1381-82 (Fed.
`
`Cir. 1983)). Not all such factors may be present in every case, and one or
`
`more of these or other factors may predominate in a particular case. Id.
`
`Moreover, these factors are not exhaustive but are merely a guide to
`
`determining the level of ordinary skill in the art. Daiichi Sankyo Co.v.
`Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). Additionally, the
`
`Supreme Court informsusthat “[a] person of ordinary skill is also a person
`
`of ordinary creativity, not an automaton.” KSR Int'l v. Teleflex Inc., 550
`
`U.S. 398, 421 (2007).
`
`In determining a level of ordinary skill, we also may look to the prior
`
`art, which mayreflect an appropriate skill level. Okajima, 261 F.3d at 1355.
`
`Petitioner asserts that a person of ordinary skill in the relevant
`
`technology would have had “at least a bachelor’s degree in mechanical
`
`engineering, and at least two to three years’ experience workingin the field
`
`of the design of robotic vehicles for material handling systems.” Pet. 24—25
`
`(citing Ex. 1014 9 67). Dr. Pfeifer, Petitioner’s expert, testifies that based on
`
`his “review of the patent and understanding of the technology it describes,”
`
`it is his opinion that Petitioner’s proposed level of skill is correct. Ex. 1014
`
`{ 67.
`
`Patent Ownerdoes not proposea level of ordinary skill, nor does
`
`Patent Owner commenton Petitioner’s proposed level of ordinary skill.
`
`Based on the priorart of record, for purposes of this Decision, we
`
`adopt Petitioner’s undisputed definition of the level of ordinary skill.
`
`16
`
`
`
`PGR2021-00038
`Patent 10,696,478 B2
`
`B.
`
`“fa] plurality ofrolling members attachedto the vehicle body”
`and “vehicle body”
`
`Petitioner argues that the terms “a plurality of rolling members
`
`attached to the vehicle body” and “vehicle body”in claim 19 (see Ex. 1001,
`
`9:11, 14-15) should be “construed to require a robot body with at least one
`
`set of wheels arrangedfully within the vehicle body, which necessarily
`
`covers more than a single grid spacein at least one lateral direction.”
`
`Pet. 25. Petitioner asserts that “[t]his is the only construction consistent with
`
`the specification’s uniform description of the invention and Patent Owner’s
`repeated and clear admissions aboutthe prior art and the limited scope ofits
`
`owninvention.” /d. Wedisagree.
`
`As noted above,Petitioner derives its claim construction based on
`
`Patent Owner’s infringement contentions in the related ITC proceeding.
`
`Pet. 11. We discuss the infringement contentions in the ITC proceeding in
`
`Section III.B.5 of this Decision, concerning “extrinsic evidence.”
`
`In support of Petitioner’s proposed claim construction of claim 19 in
`this proceeding, Petitioner also relies on Patent Owner’s statementsto the
`
`Norwegian Patent Office (e.g., Pet. 33-34) and Patent Owner's statements
`to a Norwegian court considering infringementallegations against Petitioner
`(id. at 34). Wediscuss these arguments in SectionsIII.B.3, 5, respectively,
`
`of this Decision.
`
`Patent Ownerhasnotasserted any claim constructionin this post-
`
`grant proceeding.
`
`It is a “bedrock principle” of patent law that “the claims of a patent
`
`define the invention to which the patentee is entitled the right to exclude.”
`
`Phillips, 415 F.3d at 1312. Thus, in considering Petitioner’s claim
`
`
`
`PGR2021-00038
`Patent 10,696,478 B2
`
`construction argument,first we focus on the wordsin the claims. Renishaw,
`
`158 F.3d at 1248.
`
`1.
`
`Claims
`
`The claim language construed by Petitioner is included in the
`
`following clause (b) from claim 19, which is reproduced below. Wehave
`
`reproducedthe entire clause (b) from claim 19 to put in context the two
`
`phrases Petitioner construesin this post-grant proceeding (see Pet. 25),
`
`which we highlight in a bold font.
`
`b. a plurality of remotely controlled robot vehicles, said
`robot vehicles comprising
`i. a vehicle body,
`ii. a cavity arrangedto receive a storage bin from a storage
`column,
`iii. a plurality of rolling members attached to the
`vehicle body about the cavity, arranged for travelling along the
`storage structure in the first and second directions,
`whereby the robot vehicle can move along the storage
`structure to position the cavity within the cross-sectional area of
`the storage columnto receive the storage bin into the cavity for
`further transport along the storage structure.
`
`Ex, 1001, 9-22 (emphasis addedto identify the two phrases construed by
`
`Petitioner). Petitioner asserts the two bold-font phrases in claim 19 above
`
`collectively should be “construed to require a robot body with at least one
`
`set of wheels arranged fully within the vehicle body, which necessarily
`
`covers more than a single grid spacein at least one lateral direction.” Pet 25
`
`(emphasis omitted).
`
`The wordsof claim 19 require only that the rolling members, or
`
`wheels, are “attached” to the vehicle body and positioned “about”the cavity.
`
`Wehave notbeen directed to any persuasive evidence that the word “about”
`
`has a specific meaning in the relevant technology. In general, the word
`
`18
`
`
`
`PGR2021-00038
`Patent 10,696,478 B2
`
`“about” is being used as a preposition expressing a relation to the cavity
`
`recited in claim 19. The general meaning of about, in this context, is
`
`“around”or “somewherenear.””!!
`
`Wehavenotbeen directed to any persuasive evidence of language in
`
`claim 19, or in any other claim from the ’478 patent or the applications in
`
`the °478 patent’s chain ofpriority, that supports Petitioner’s proposed
`
`construction of claim 19.
`
`Based on the actual words of claim 19, we determine that the claim
`
`language does not support Petitioner’s proposed claim construction that the
`claims require “a robot body withat least one set of wheels arranged fully
`
`within the vehicle body, which necessarily covers more thana single grid
`
`spacein at least onelateral direction.” Pet. 25 (emphasis omitted). The
`claim languageitself is clear and unambiguous. It requires onlyaplurality
`of rolling members, or wheels, attached aboutthe cavity, to the vehicle body
`and arrangedfor travelling along the storage structure in first and second
`
`directions.
`
`2.
`
`Specification
`
`Petitioner argues that
`
`[c]rucially, the specification ofthe ’478 patentprovides that the
`wheels of the “inventive robot” must be arranged in one
`specific way: “the inventive vehicle is characterized”by thefact
`that “at least one of the two sets of vehicle rolling meansis
`arrangedfully within the vehicle body.”
`
`Pet. 12 (citing [Pfeifer Declaration] J 61; Ex. 1001, 2:34—39;bold,italicized
`
`font in original).
`
`' See https://dictionary.cambridge.org/us/dictionary/english/about (searched
`July 25, 2021).
`
`19
`
`
`
`PGR2021-00038
`Patent 10,696,478 B2
`
`Petitioner points to three sentences in the written description in
`
`support of its argumentthat there is only “one specific way”(id.) for the
`
`wheels to be arranged. This cited disclosure, included as part of the
`
`Summary of the Invention,states:
`
`The inventive vehicle is characterized in that the second
`section comprises a cavity arranged centrally within the vehicle
`body. This cavity has at least one bin receiving opening facing
`towards the underlying storage column [sic] during use.
`In
`addition, at least one of the two sets of vehicle rolling meansis
`arranged fully within the vehicle body.
`
`Ex. 1001, 2:34-39 (emphasis added).
`
`Petitioner then also states that “[t]he specification explains, and
`
`depicts in figures, that the inventive robot has at least one set of wheels
`
`‘mountedinside the cavity.’” Pet. 12 (citing Ex. 1001, 4:62—63, Figs. 3, 4)
`
`(emph
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