• Euro-Pro Operating LLC v. Acorne Enterprises, LLCAll claims unpatentable
  PTAB · Jul 9, 2015 · IPR2014-00352 · APJ Scott A Daniels · IPR · Final written decision

  Claims 1 and 12 are unpatentable as obvious over the stated prior-art combinations; the Patent Owner’s contingent motion to amend is denied.

  RulingsFinal written decision

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “Decision to Institute, in which we determined that the following claim terms invoke section 112 ¶ 6 because they specify a function but no structure for performing that function. Inst. Dec. 7. Construed Term(s) Claim Construction Temperature The function of this means-plus-function term we controlling means determined to be “regulating the temperature of said heating elements,” and the structure to include “a temperature control switch as shown in Figures 1A–3, and its equivalents, which can be manipulated from outside the housing of the deep well cooker.” Inst. Dec. 6–7. Function controlling We determined the function for this means-plus- means function limitation we found to be “enabling [the] bottom heating element and [the] wrap-around heating element to be selectively energized to provide variable cooking modes,” and the corresponding structure we determined to be “the device, and its equivalents, as reflected in Figures 1A–3 of the ’392 patent mounted in the outer housing of the deep well cooker and manipulated separately from the temperature control means by a user, and as represented in the specification, can pass current individually to either the bottom heater or wrap-around heater, or in combination to both.” Inst. Dec. 7.” slip op. at 7

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “and education as an electrical engineer with 50 years of product development and design experience including electric cooking devices. Ex. 1019¶¶ 3–14. Mr. Sherwood’s testimony is offered by Petitioner, not as expert testimony on the specific legal criteria of obviousness, but as evidence of what one of ordinary skill in the art of electric cooker design would have understood at the time of the filing of the ’392 patent. Id. ¶ 22. Mr. Sherwood’s legal principal statements are informative as to his understanding of obviousness, but not expert testimony as to the specific legal elements and requirements for obviousness. Id. ¶¶ 20–21. Mr. Sherwood’s opinions and testimony as they relate specifically to the prior art, and his knowledge of one of ordinary skill in the art at the time of 1 Fed. R. Evid. 702. Testimony by Expert Witnesses A witness who is qualified as an expert by knowledge, skill, experience, training, or education may testify in the form of an opinion or otherwise if: (a) the expert’s scientific, technical, or other specialized knowledge will help the trier of fact to understand the evidence or to determine a fact in issue; (b) the testimony is based on sufficient facts or data; (c) the testimony is the product of reliable principles and methods; and (d) the expert has reliably applied the principles and methods to the facts of the case. filing of the ’392 patent, comport with the legal requirements for obviousness as explained to him by Petitioner’s counsel. See Ex. 1019 ¶ 20. Obviousness is a mixed question of law and fact and it is not necessary that an expert be a “legal” expert on the question of obviousness. See Soverain Software LLC, v. Newegg Inc., 705 F.3d 1333, 1341 (Fed. Cir. 2013) (“precedent does not require ‘expert’ opinions on matters of law”). Also, we are persuaded that Mr. Sherwood’s testimony was undertaken with consideration as to the level of ordinary skill in the art within the 2000-2001 time frame of the alleged invention and filing of the ’392 patent. Although Mr. Sherwood did not state, explicitly, what the level of one of ordinary skill in the art would have been at the time of filing of the ’392 patent, it is reasonable to determine that a professional engineer having a master’s degree in electrical engineering and 50 years of electronic product design experience including extensive experience in the design of cooking appliances and electronic temperature control systems including slow cookers and crockpots, is qualified to testify as to what would have been known by, and obvious, to one of ordinary skill in the art at the time of the filing of the ’392 patent. Ex. 1019 ¶ 8. Mr. Sherwood specifically states that his opinions are “based on my personal knowledge, experience, and the materials I have reviewed, as to how someone of ordinary skill in the field of cooking appliances would understand the challenged claims of . . .the ’262 patent and the ’392 patent as of at least July 2001.” Id. ¶ 22. We determine that Mr. Sherwood’s opinions and testimony are entitled to weight, as they embrace the requirement of one of skill in the art at the time of filing of the ’392 patent, and are adequately supported by his professional experience and skill in the field of electronic cooking appliance design.” slip op. at 24

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable

    “Patent Owner’s first argument is not persuasive because the fact that an element of claim 1, namely the bottom heating element, is missing from the Hlava reference is essentially the basis upon which Petitioner has asserted that claim 1 is obvious, as opposed to anticipated. See Pet. 24. Moreover, we are aware of no case law, nor has Patent Owner directed us to any, that all the features of a claim must be found in a prior art reference to properly support an obviousness analysis, or that the absence of a feature in the reference, “mitigates,” against a finding of obviousness. See 35 U.S.C § 103, see also In re O'Farrell, 853 F.2d 894, 902 (Fed. Cir. 1988) (claimed invention would have been obvious over single reference or combination of references). We are also not persuaded by Patent Owner’s contention that Petitioner has failed to present an articulated reasoning with rational underpinnings in support of its obviousness positions. Petitioner has asserted several reasons why one of ordinary skill in the art would shift, or add a bottom heating element to Hlava, one reason being that: it was known in the prior art to use a bottom heating element in addition to a side heating element to facilitate heat distribution in roasting (see Nachumsohn at page 2, column 1, lines 61–71 (discussing properly proportioned heat for browning a roast, which is part of roasting)), and because roasting is a function for which Hlava’s heating element 30c' was designed. Pet. 24–25 (citing Ex. 1004, 8:17–22). Petitioner additionally asserts that although Hlava does not disclose expressly a bottom heating element, Hlava teaches that heating elements for other cooking situations, besides those shown in the reference itself, are contemplated: “the actual number of elements and wattage values could be varied in order to obtain the desired heating profile” . . . to accommodate “a wide variety of cooking situations,” [] which an extra heating element would have helped to accomplish by expanding the heating profiles of the Hlava cooking apparatus. Pet. 27 (citing Ex. 1004, 1:53–64, 5:48–56). Petitioner has supported its reasoning with evidence from the prior art references, such as Hlava and Nachumsohn, which teach that it was well known in the art to use bottom heating elements in deep well cooking apparatus for particular cooking operations. Pet. 25–26 (citing Ex. 1004, 4:11–19, 8:17–22, Fig. 5). Indeed, Petitioner points to the Background section of the ’392 patent itself, discussing certain prior art cooking devices having bottom heating elements. Pet. 7–8, 25 (citing Ex. 1001, 1:21–60). Mr. Sherwood testifies persuasively that shifting or adding a bottom heating element to Hlava was well within the ordinary skill in the art, and “would have yielded the predictable result of quicker heating of the bottom of Hlava’s cooking insert and/or would have resulted in providing Hlava’s cooking apparatus 10 associated with FIG. 9 with additional cooking modes.” Ex. 1019 ¶¶ 27–29. In view of such reasons and evidence, we are satisfied that Petitioner’s explanations constitute articulated reasoning with rational evidentiary underpinnings sufficient to justify the legal conclusion of obviousness.” slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “Patent Owner next argues that Hlava teaches away from a bottom heating element because Hlava’s “stoneware insert 16 could not resist the localized thermal stresses and cracking that would be caused by the proposed new bottom heating device.” PO Resp. 22 (citing Ex. 1004, 4:23– 34). However, teaching away requires a reference to actually criticize, discredit, or otherwise discourage investigation into the claimed solution. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). The concern addressed by Hlava is that localized hot spots can compromise stoneware inserts, and therefore sensors are used to discriminate between a stoneware insert, and a metallic insert better suited to higher heat settings. Ex. 1004, 4:23–41. The passages in Hlava referred to by Patent Owner state that “when stoneware insert 16 is placed within housing 12, the maximum heat output permitted by heating device 30 is limited to prevent thermal shock and cracking of the stoneware.” Id. at 4:46–49. Patent Owner’s argument fails to explain why one of ordinary skill in the art would have been discouraged from providing a bottom heating element even though Hlava specifically states that metallic inserts were available that could handle higher heat stress. See id. at 4:49– 52. Indeed, Patent Owner’s argument fails to explain why such a bottom heating element could not be regulated in temperature just like Hlava’s heating device 30, for any type of insert in such a deep well cooking apparatus including a stoneware insert. Patent Owner’s further contention that Hlava’s insert discriminating sensor 36 somehow dissuades one of skill in the art from using a bottom heating element is also unavailing. See PO Resp. 23–25. Even if a bottom heating element shifted, or added to Hlava, theoretically could “result in localized thermal stresses and cracking of the stoneware insert 16” (id. at 26), Hlava expressly teaches how to avoid such a result with sensor 36 to limit the maximum heating temperature of the heating elements. See Ex. 1004, 4:46–49. Patent Owner’s conclusory argument, that shifting heating element 30c' to the bottom of Hlava’s cooker would “destroy the intent, purpose or function” of Hlava’s invention, does not explain persuasively why the temperature of a bottom heating element, either shifted or added to Hlava’s cooker, would not also be limited by operation of sensor 36, for instance when a stoneware insert is used in the cooker. For the above reasons, we conclude that a preponderance of the evidence demonstrates that claim 1 is unpatentable based on Hlava and the admitted prior art.” slip op. at 16

  Patent outcomesUS 6,624,392 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites KSR
  Patents in suitUS 6,624,392

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.