- 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 - PTAB · Nov 14, 2016 · IPR2015-01243 · APJ Grace Karaffa Obermann · IPR · Final written decision
Petitioner failed to prove claims 1–8, 10, and 11 of the ’290 patent, claims 1–8 and 10–13 of the ’173 patent, and claims 1–6 and 8–19 of the ’510 patent obvious over Fohr, Sato, and …
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“We recognize that it may be necessary “to look to interrelated teachings of multiple patents . . . in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed.” KSR Int’l, 550 U.S. at 418. Petitioner in these proceedings, however, directs us to no persuasive reason why an ordinary artisan would have turned to the heat-retaining battery module of Hallaj when working to implement a plurality of Sato’s cells in a pack to replace the capacitors in Fohr. Pet. 36–38 (nowhere addressing that critical point); Reply 13 (devoting four sentences to rebuttal of Patent Owner’s persuasive evidence that one would not have combined the disclosures of Hallaj, Fohr, and Sato in the manner claimed); see Ex. 1033, 15 (Examiner’s observation, in confirming the patentability of the challenged claims during reexamination, that Sato contains “no information as to how Sato’s cells would be implemented in a pack”). We view Petitioner’s unexplained leap from the single battery cell of Sato to the heat-retaining battery module of Hallaj as a classic example of impermissible hindsight reconstruction driven not by any teaching in the prior art, but by the claim requirement of a “plurality” of cells implemented in a battery pack. Pet. 36–38; Reply 13. Patent Owner, by contrast, comes forward with persuasive evidence, which we credit, showing that one of ordinary skill in the art would not have been led to arrange a plurality of Sato’s cells in the heat-retaining battery module of Hallaj because such a modified battery pack would have been unsuitable for use as a replacement for the capacitors in Fohr. Specifically, we credit the testimony of Dr. Blomgren, who cogently explains why a person of ordinary skill in the art would not have been led to the proposed modification. Ex. 2147 ¶¶ 79–85.” slip op. at 17
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“We are not persuaded by Dr. Riley’s testimony that Fohr effectively teaches that both lithium-based battery cells and capacitors can achieve the 20 Amp Limitation, on a theory that “it’s actually the tool that draws the power” and “the right lithium cell” would be “a drop in replacement for this application.” Ex. 2169, 121:12–16 (Dr. Riley’s deposition testimony); Resp. 17. Dr. Riley readily admitted an unfamiliarity with capacitors, and identified no suitable “drop in” ready lithium cells available at the time of the invention. Ex. 2169, 121:11–122:4 (“[I]f I had a cell that could do similar things, I’d certainly swap it in there.”). On that point, we find more credible Dr. Blomgren’s testimony that “there is no guarantee that a given pack of battery cells can provide the current that a tool tries to draw.” Resp. 17 (citing Ex. 2147 ¶ 60).” slip op. at 13
- Skill levelSkill level board ownOther
“B. Level of Ordinary Skill in the Art We hold that the prior art references asserted in the Petition are representative of the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (absence of specific findings on “level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown’” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). To the extent that a more specific definition is required, we hold that an ordinary artisan would include one holding a Bachelor’s Degree in Electrical Engineering with two or three years of experience in battery design. That definition comports with the very similar definitions advanced by the parties. In that regard, Petitioner asserts that an ordinary artisan would encompass a person holding a Bachelor’s Degree in Electrical Engineering with three years of experience in battery design. Pet. 8; Ex. 1007 ¶ 9. Patent Owner similarly asserts that an ordinary artisan would include a person holding a Bachelor’s Degree in Electrical Engineering with two years of battery design experience. Resp. 8; Ex. 2105 ¶ 24.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“In our Decisions to Institute, we construed the 20 Amp Limitation to require that “the battery cells, when configured together in a battery pack, are capable of producing reasonably close to 20 amps of discharge current or greater over the course of delivering their entire rated capacity.” Dec. 5. Neither party disputes that construction, which we adopt for the purposes of this Final Written Decision. To the extent that any other claim term requires express construction, we discuss the construction in our analysis below. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only claim terms in controversy need be construed, and then only to the extent necessary to resolve the controversy). The following facts are supported by a preponderance of the evidence.” slip op. at 10
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,944,173
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.