- PTAB · Sep 25, 2017 · IPR2016-00788 · APJ Neil T Powell · IPR · Final written decision
The Board held that claims 15, 18, and 20 were not shown unpatentable over Johnson or Hitt because neither reference disclosed containment walls standing on the floor.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“broadest reasonable interpretation of the disputed claim language requires that the containment walls stand “on” the floor. In the recitation “containment walls standing upwardly from said floor,” the word “from” indicates that the containment walls are disposed “on” the floor. Consistent with this, all of the various embodiments of the invention disclosed by the ’611 patent consistently show sidewalls of a rail car that stand or rest on underlying floor of the car, as Patent Owner notes. See, e.g., PO Resp. 7–12; Ex. 1001, Figs. 1–10. Patent Owner also relies on the testimony of Mr. Long, in discussing the meaning of “standing upwardly from.” See, e.g., PO Resp. 17–21 (citing Ex. 2118 ¶¶ 101–102, 144–161). Specifically, Mr. Long testifies that a person of ordinary skill in the art would have recognized that in the ’611 patent, the term “standing” is used in “its positional sense,” citing, for instance, to a dictionary definition of “standing” as “to rest or remain upright on a base or lower end.” Ex. 2118 ¶ 145 (citing Ex. 2112, 7). Mr. Long’s testimony and the underlying support for that testimony shed favorable light on the meaning of “standing upwardly from” that is urged by Patent Owner.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“containment walls standing upwardly from said floor.” Pet. 24–28. The Petition notes that Johnson discloses floor 26 and side sheet 16. Id. at 24– 25. The Petition contends that “[b]ased on the vertical direction of the ‘side frame assembly,’ . . . , a [person of ordinary skill in the art] would have understood Johnson to teach that the containment walls stand ‘upwardly from said floor.’” Id. at 25. Showing the uncorrected versions of Figures 1 and 2 of Johnson, the Petition elaborates that “[t]his is further shown, e.g., in Fig. 2, where wall 16 is generally perpendicular with respect to the floor 26.” Id. at 25–26 (citing Ex. 1106, Fig. 2; Ex. 1103 ¶ 132). These statements do not indicate, much less prove, that Johnson discloses a containment wall that stands on a floor. Observing the vertical direction of side frame 12 and the perpendicular orientation of side sheet 16 to floor 26 does not establish that side frame 12 or side sheet 16 is disposed on floor 26. The cited testimony of Mr. Miller notes that Figure 2 shows “side sheet 16 is shown as standing normal to the floor.” Ex. 1103 ¶ 132. This too facially does not indicate, much less prove, that side sheet 16 is disposed on floor 26. slip op. at 13
- Strike new argumentNew argument disregardedDenied
“Petitioner’s citation of Johnson’s Figure 5 in the Reply is unavailing. When addressing the claim limitations “containment walls standing upwardly from said floor,” the Petition does not cite Figure 5 of Johnson. See Pet. 24–28. This section of the Petition cites paragraphs 54–56, 130– 132, 134, and 135 of Mr. Miller’s testimony (id.), and none of this testimony cites to or addresses Figure 5 of Johnson, either (see Ex. 1103 ¶¶ 54–56, 130–132, 134–135). Furthermore, it is not apparent that Figure 5 of Johnson shows the same embodiment as Figure 2; Johnson identifies Figure 5 as a cross-section of Figure 4, which Johnson introduces as “a partial side elevation view of a gondola railcar having a bolster.” Ex. 1106, 3:7–8. We determine that Petitioner’s citation of Johnson’s Figure 5 in the Reply is unavailing because it constitutes an improper new argument. In that respect, we do not regard Petitioner’s new reliance on Johnson’s Figure 5 in an attempt to address a deficiency raised by Patent Owner in its Patent Owner Response as constituting a proper response envisioned by our rules. See 37 C.F.R. § 42.23(b). Furthermore, even if Petitioner’s citation of Figure 5 were a proper response, it would not demonstrate, by a preponderance of the evidence, that Johnson discloses the claimed relationship. We are persuaded that, without any other supporting evidence, Figure 5 of Johnson does not show the relationship between containment walls and a floor clearly enough to support, by a preponderance of the evidence, Petitioner’s contention that Johnson discloses containment walls that stand on a floor.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“For the foregoing reasons, Petitioner has not persuaded us that Johnson discloses containment walls that stand on the floor, as required by independent claim 15. Additionally, Petitioner has not asserted that it would have been obvious to modify Johnson’s railcar to have such a configuration, much less provided evidence and reasoning persuading us that it would have been obvious to do so. See, e.g., Pet. 24–28. Accordingly, Petitioner has not demonstrated by a preponderance of the evidence that claims 15, 18, and 20 are unpatentable over Johnson.” slip op. at 19
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,757,611
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.