- Daifuku Co., Ltd. / Daifuku America Corp. v. Murata Machinery, Ltd.Some claims unpatentablePTAB · May 3, 2016 · IPR2015-00083 · APJ Ken B Barrett · IPR · Final written decision
Claims 1, 3, 4, 9, 11–15, 17, and 20 are unpatentable as anticipated by JPAP ’213; claims 1–20 were not shown unpatentable as obvious over JPAP ’213 and JPAP ’237.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“In our Institution Decision, we construed the “translating stage is configured to vertically move the gripper portion” limitation as follows: Claim 1 merely requires a translating stage configured to vertically move the gripper to a position near (“proximate”) one of two locations, a load port and a storage location. The translating stage need not be configured to move the gripper to a location proximate both because the claim uses the phrase “at least one of” those two locations. Dec. on Inst. 12. After further development of the record and consideration of the arguments presented and evidence relied upon by both parties, we determine that the above construction is appropriate with respect to this Final Written Decision. Accordingly, we construe “at least one of [a] and [b]” to mean “at least one of the listed items but not necessarily both.”” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“construction for the “at least one of” phrase, “there is no anticipation because JPAP ’213 cannot move the gripper proximate to the claimed positions.” PO Resp. 22. This argument is not persuasive because, for the reasons set forth above, the properly construed claims are not as narrow as Patent Owner proposes. See Section II.A. Even were we to conclude that Patent Owner’s proposed construction, where “at least one of” modifies both “[a]” and “[b],” Patent Owner’s arguments are not on point. Claim 1, for example, recites “the translating stage is configured to vertically move the gripper portion . . . to at least one of a second position proximate to a load port [beneath the rail] and a third position proximate to a storage location [disposed lateral to the rail].” There is no dispute that the system of JPAP ’213 is capable of moving to a location proximate a location under the rail. As to the storage location, it is not readily apparent how the above-quoted claim language requires, as Patent Owner argues, a vehicle “capable of moving the gripper/hoist mechanism laterally.” PO Resp. 23; see also Ex. 2016 ¶ 102 (Dr. Bottom’s offering the conclusory opinion that “[A] vehicle capable of moving the gripper to a position proximate to the storage location/conveyer lateral to the overhead rail must be capable of moving the gripper/hoist mechanism laterally.”). A vertically-moving system would be configured to move a gripper proximate (near, next to) an adjacent storage location even if lacking the ability to move laterally so as to place a unit on a storage shelf. Cf. Dec. on Inst. 12 (indicating our understanding of “proximate” as meaning “near”); see, e.g., Ex. 1003, col. 8, ll. 12–16 (“[The overhead hoist transport vehicle is moved along a track, as depicted in step 904, to a position adjacent the selected storage bin.”), and Figs. 3, 5b. Accordingly, we find the system of JPAP ’213 has the capability of moving to a position proximate a laterally disposed storage location as well as a positon beneath the rail. Ex. 1005, 20 (Fig. 1). Based on the argument and evidence presented in the Petition, and the insufficiency of the responsive argument and evidence presented in the Patent Owner Response, as discussed above, we are persuaded that Petitioner has established, by a preponderance of the evidence, that claims 1, 3, 4, 9, 11–15, 17 and 20 are anticipated by JPAP ’213.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“paragraph 7 as providing the motivation for one of ordinary skill in the art to add the lateral transfer device from the conveyance truck of JPAP ’237 to moving body 3 in JPAP ’213 Figure 1. Dr. Sturges, moreover, does not provide a reasoned analysis based on the disclosures and embodiments of JPAP ’213 and JPAP ’237, in the context of the knowledge and skill level of a degreed engineer with 3–5 years of experience developing automated material handling systems. Dr. Sturges does not explain why and how one of ordinary skill would have selected the lateral transfer device from the conveyance truck of JPAP ’237 for use with moving body 3 in JPAP ’213 Figure 1. Ex. 1028 ¶¶ 162–165. For example, there is no explanation of why one of ordinary skill would use the lateral transfer device from JPAP ’237, given that mechanically moveable storage tables already are used to effect lateral transfer of articles B on both sides of moving body 3 in JPAP ’213 Figure 1. See id. Even if the proposed modification were to be made, Dr. Sturges does not account for counterweight 51 in JPAP ’237, which extends laterally to the opposite side of extendable arm 42, or explain why the counterweight would not interfere with the articles and storage tables located on the opposite side of moving body 3 in JPAP ’213 Figure 1. Id.; see also Mot. Observ. 4–5 (quoting Ex. 2041, 70:22–71:15 (“Q. [Y]ou did not provide any testimony that the hoist vehicle of the JPAP ’213 reference can utilize the robotic arm on one side while maintaining the swinging shelves on the other side; correct? A. That’s correct.”)). To the extent Petitioner argues that Dr. Sturges has provided evidence on this point (Tr. 83:9–13), such evidence has not been cited in the Petition or the Reply, nor have we located such evidence. Pet. 48–58 (citing Ex. 1028 ¶¶ 57, 157– 196); Reply 12–13 (citing Ex. 1028 ¶¶ 162–65, and 169); Mot. Observ., 2–3 (quoting Ex. 2041, 71:23–72:9 (“Q. [Y]ou did not address whether it would have been necessary to change the functional relationship between the swinging shelf and the hoist vehicle of the JPAP ’213 reference; correct? A. That’s accurate.”)).10” slip op. at 32
- ExcludeMotion to exclude, deniedDenied
“D. Patent Owner’s Motion to Exclude Evidence Patent Owner seeks to exclude Exhibit 1038 and ¶¶ 3–4 of Exhibit 1040 filed by Petitioner with Petitioner’s Reply. Mot. Excl. 1 (Paper 47). Petitioner opposes the motion to exclude. Pet. Excl. Opp. 4–14 (Paper 56). Exhibit 1038 is a confidential product development plan dated September 25, 2002, and produced by Petitioner in this proceeding. Exhibit 1040 is a Second Declaration of Dr. Sturges, and paragraphs 3–4 contain his testimony explaining aspects of the confidential product development plan of Exhibit 1038. Petitioner relies on Exhibit 1038 and paragraphs 3–4 of Exhibit 1040 to rebut Patent Owner’s argument that Petitioner copied Patent Owner’s invention claimed in the ’172 patent. Reply 20, 22, and 25. Patent Owner seeks to exclude Exhibit 1038 and paragraphs 3–4 of Exhibit 1040 as irrelevant (Fed. R. Evid. 401, 402), inadmissible hearsay (Fed. R. 11 In view of our determination, we need not consider Patent Owner’s objective evidence of nonobviousness. See Transocean Offshore Deepwater Drilling, Inc., v. Maersk Drilling USA, Inc., 699 F.3d 1340, 1349 (Fed. Cir. 2012) (“objective evidence of nonobviousness . . . may be sufficient to disprove or rebut a prima facie case of obviousness”). PO Resp. 46–60; see also Reply 18–25. Evid. 801(c)), and unauthenticated (Fed. R. Evid. 901). Mot. Excl. 1–8. We do not rely on or address Patent Owner’s asserted objective evidence of nonobviousness or Petitioner’s rebuttal evidence in our Decision. Therefore, Patent Owner’s motion to exclude Exhibits 1038 and paragraphs 3–4 of Exhibit 1040 is dismissed as moot.” slip op. at 36
Patent outcomesUS 8,197,172 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 8,197,172 - Apple Inc. v. THX Ltd.Some claims unpatentablePTAB · Jun 9, 2015 · IPR2014-00235 · APJ Brian P Murphy · IPR · Final written decision
Claims 1 and 2 are unpatentable as obvious over Tomonori and Sadaie; claim 3 was not shown unpatentable over Tomonori, Virva, and Sadaie.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“In sum, the ’483 patent describes and claims a sound reflecting surface that redirects sound waves output from the speaker towards the elongate output slot, whereas sound damping material absorbs standing waves inside the sound duct. The ’483 patent goes to great lengths to distinguish a sound reflecting surface from a sound damping surface. Furthermore, given that “sound damping material” is different from a “sound reflecting surface” and both are recited as separate claim limitations, it follows that a sound reflecting surface is not made of sound damping material. For the reasons given above, we construe “sound reflecting surface,” in the context of claim 1 and in light of the ’483 patent specification, as “a surface that redirects sound waves output from a speaker, not made of sound damping material.”” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“2. Other Terms Petitioner proposes to construe additional claim terms. Pet. 11–14. We determine that no express construction of these additional terms is necessary for purposes of this decision.” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundMotivation not foundMixed
“suppress standing waves inside a duct. Pet. 44 (citing Ex. 1002 ¶ 112). Dr. Vipperman identifies the reason for Sadaie’s use of side wall sound damping as enabling “the sharpness of a fundamental wave resonance of a standing wave determined by the length of the sound path . . . to be suppressed because a substantial length of the sound path cannot be primarily determined.” Ex. 1002 ¶ 112 (citing Ex. 1003, 14). We agree with Petitioner’s reasoning, therefore, that “[e]xtending the damping material of Tomonori along the sidewalls of the duct,” as taught by Sadaie, would have been one of a limited number of known solutions further minimizing the presence of spurious resonances and standing waves inside the duct. Id. at 45 (citing Ex. 1002 ¶ 113). The quoted statements of Petitioner and Dr. Vipperman with respect to Tomonori and Sadaie are consistent with the principles set forth in KSR.10 Petitioner and Dr. Vipperman provide an analysis of why one of ordinary skill in the art of speaker design would have been motivated by Sadaie’s disclosure of side wall sound damping to modify Tomonori’s narrow sound duct, such that sound damping material forms the sides of the sound duct but not the bottom (sound reflecting) surface. In particular, Dr. Vipperman’s Declaration provides a sufficient analysis to support the obvious modification of Tomonori’s narrow profile speaker, by a speaker designer of ordinary skill, such that “sound damping material form[s] sides of the sound duct” to help suppress the presence of spurious resonances and standing waves inside the duct. Ex. 1002 ¶¶ 112, 113.” slip op. at 28
Patent outcomesUS 7,433,483 mixedClaim construction§ 103 obviousnesscites KSRPatents in suitUS 7,433,483
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.