[email protected] paper 16 united states patent and ... · 2/6/2014 · , no. 1:2013-cv-03075,...
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[email protected] Paper 16
571-272-7822 Entered: February 6, 2014
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
POSITEC USA, INC. and RW DIRECT, INC.
Petitioners
v.
BLACK & DECKER INC.
Patent Owner
____________
Case IPR2013-00502
Patent 5,544,417
____________
Before BRIAN J. McNAMARA, RICHARD E. RICE, and
CARL M. DeFRANCO, Administrative Patent Judges.
RICE, Administrative Patent Judge.
DECISION
Institution of Inter Partes Review
37 C.F.R. § 42.108
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I. INTRODUCTION
Positec USA, Inc. and RW Direct, Inc. (“Petitioners”) filed a petition
(Paper 1) and a corrected petition (Paper 4, “Pet.”), requesting an inter partes
review of claims 1, 2, 4, 5, 7, 10, 12-14, 16, and 17 of U.S. Patent No. 5,544,417
(Ex. 1008, “the ’417 patent”). In response, Black & Decker Inc. (“Patent Owner”)
filed a preliminary response (Paper 8, “Prelim. Resp.”), enclosing a copy of a
statutory disclaimer (Ex. 2001) that disclaims claims 1, 2, 4, 5, and 12-14 of the
’417 patent. We have jurisdiction under 35 U.S.C. § 314 with respect to the
remaining claims (claims 7, 10, 16, and 17) for which Petitioners seek an inter
partes review.
The standard for instituting an inter partes review is set forth in 35 U.S.C.
§ 314(a), which provides as follows:
THRESHOLD -- The Director may not authorize an inter partes
review to be instituted unless the Director determines that the
information presented in the petition filed under section 311 and any
response filed under section 313 shows that there is a reasonable
likelihood that the petitioner would prevail with respect to at least 1 of
the claims challenged in the petition.
Upon consideration of the corrected petition and the preliminary response,
we determine that the information presented in the corrected petition establishes
that there is a reasonable likelihood that Petitioners would prevail in challenging
claims 7, 10, 16, and 17 of the ’417 patent as unpatentable on at least one ground
of patentability. Accordingly, pursuant to 35 U.S.C. § 314, we institute an inter
partes review for claims 7, 10, 16, and 17.
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A. Related Proceedings
Petitioners represent that the ’417 patent is involved in co-pending litigation
styled Black & Decker Inc. et al. v. Positec USA, Inc. et al., No. 1:2013-cv-03075,
filed in the United States District Court for the Northern District of Illinois. Pet. 3.
B. The ’417 Patent
The ’417 patent, titled “Multi-Purpose Motor Mounting System for a String
Trimmer,” issued on August 13, 1996. According to the patent, the motor of a
conventional string trimmer “is positioned within a housing by one or more
protruding ribs which are integrally formed on interior surfaces of the housing.”
Ex. 1008, 1:42-45. This conventional motor mounting arrangement, according to
the patent, requires “relatively precisely-positioned ribs on the interior surfaces of
the housing” (id. at 1:55-56), “complex and expensive molds or dies” (id. at 1:58-
59), and a housing constructed from ABS plastic, rather than polypropylene (id. at
1:56-2:3). As described in the patent, a solution to these problems of the prior art
is a motor mounting plate assembly that “allows the motor to be freely supported
within the housing halves of the trimmer apparatus housing, thus obviating the
need to precisely position the motor over a plurality of outwardly protruding ribs
formed on the interior surfaces of the housing halves.” Id. at 2:44-49.
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Figure 3 of the ’417 patent is reproduced below.
Figure 3 is a side view of the interior
of the base of a string trimmer apparatus.
Figure 3 shows motor 36 of string trimmer apparatus 10 supported by motor
mounting plate assembly 38. Id. at 4:30-33. The motor mounting plate assembly
includes planar plate member 40 and U-shaped bracket member 42. The motor
mounting plate and the U-shaped bracket are shown in greater detail in
Figure 4, which is reproduced below. Id. at 4:38-40.
Figure 4 depicts a side view of the motor mounting plate assembly.
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As illustrated in Figure 4, plate member 40 is secured to base portion 50 of
bracket member 42 via threaded screws 44. Id. at 4:40-45. The bracket member
includes a pair of transversely extending arm portions 52, each of which includes
an aperture 54. Id. at 4:45-48.
Motor 36 is secured to bracket member 42 via apertures 54 and threaded
screws 61. Id. at 4: 48-50, 5:8-10. “When assembled together, the motor
mounting plate 40, the U-shaped bracket member 42 and motor 36 form a rigidly
coupled assembly.” Id. at 5:5-7.
During assembly of string trimmer apparatus 10, motor 36 and motor
mounting plate assembly 38 are first assembled together and then positioned within
housing half 16b, such that plate member 40 is inserted in groove 26b. Id. at 5:8-
11, 14-15. The height of groove 26b is sized preferably “such that a slight degree
of force is required to seat two of the edge portions 40a of the mounting plate
member 40 in the groove such that the mounting plate member does not wobble or
otherwise ‘rock’ in the groove.” Id. at 5:21-25. The patent describes that:
[o]nce the mounting plate member 40 is inserted in the groove 26b,
the entire motor 36 is supported within the housing half 16b such that
no portion of the motor 36 touches the interior wall 30 of the housing
half 16b. Accordingly, no other portion of the interior wall 30 of the
housing half 16b or any other external component is required to
support the motor 36.
Id. at 5:25-31.
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C. Exemplary Claim
Claims 7 and 16 are independent. Claim 10 depends directly from claim 7,
and claim 17 depends directly from claim 16.
Claim 16 is illustrative of the invention of the ’417 patent and is reproduced
below (emphasis added):
16. A method for assembling an outdoor power tool, the
method comprising:
forming a first housing section having a circumferential groove
formed in an interior wall thereof;
forming a second housing section having a circumferential
groove formed in an interior wall thereof;
fixedly securing a motor mounting plate to a motor;
inserting a portion of said motor mounting plate into said
circumferential groove in said second housing section;
placing said first housing section against said second housing
section to cause a portion of said mounting plate to engage within said
circumferential groove in said interior wall of said first housing
section, to thereby cause said mounting plate to be supported at a
plurality of positions by said circumferential grooves, to thereby
enable said motor to be supported within said first and second housing
sections without said motor contacting any portion of said interior
walls of said first and second housing sections; and
securing said first housing section to said second housing
section.
D. Prior Art Relied Upon
Petitioners rely on the following prior art references:
Laverick GB 2 115 665 A Sept. 14, 1983 Ex. 1009
Mack US 4,498,237 Feb. 12, 1985 Ex. 1010
Anderson US 4,603,478 Aug. 5, 1986 Ex. 1011
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E. The Alleged Grounds of Unpatentability
Petitioners challenge claims 7, 10, 16, and 17 of the ’417 patent based on the
alleged grounds of unpatentability set forth in the table below:
Reference(s) Basis Challenged Claims
Mack § 102(b) 16 and 17
Mack § 103(a) 16 and 17
Laverick and Anderson § 103(a) 7 and 16
Laverick and Mack § 103(a) 7, 10, 16, and 17
Laverick, Mack, and
Anderson
§ 103(a) 7 and 16
II. ANALYSIS
A. Claim Construction
In an inter partes review, claim terms in an unexpired patent are interpreted
according to their broadest reasonable construction in light of the specification of
the patent in which they appear. 37 C.F.R. § 42.100(b); Office Patent Trial
Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). Applying this
standard, we construe the claims as follows:
1. “Fixedly Secured” and “Fixedly Securing”
Claim 7 recites “a motor mounting plate assembly fixedly secured to said
motor” (emphasis added), and claim 16 recites “fixedly securing a motor mounting
plate to a motor” (emphasis added).
Petitioners contend that the broadest reasonable construction of the term
“fixedly secure” is “securely placed or fastened.” Pet. 11. Patent Owner does not
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propose a competing claim construction in the preliminary response. We do not
agree with Petitioners’ claim construction, because it is not consistent with the
plain meaning of “fixedly,” as interpreted in light of the specification of the ’417
patent.
As Petitioners point out, the terms “fixedly secured” and “fixedly securing”
do not appear in the specification of the ’417 patent. Id. However, the patent
specification sheds light on the meaning of these terms where it describes the
manner in which motor 36, plate member 40, and bracket member 42 are “secured”
to each other and assembled in the housing. Notably, the specification uses the
term “rigidly coupled” (emphasis added) to describe the assembly of the motor, the
plate member, and the bracket. Ex. 1008, 5:5-7. We understand “rigidly coupled,”
in this context, to signify that the coupled components cannot move relative to one
another. Consistent with this understanding, the specification describes the use of
threaded screws to assemble motor 36, plate member 40, and bracket member 42.
Id. at 4:40-42 (“[t]he plate member 40 is secured to the U-shaped bracket member
42 via a plurality of threaded screws 44”), 5:8-10 (“the motor 36 is secured to the
U-shaped bracket member 42 via a pair of threaded screws 61”). Because
motor 36, plate member 40, and bracket member 42 cannot move relative to each
other, no other support is needed to prevent the motor from touching the interior
wall of the housing when the plate member (with bracket member and motor
attached) is mounted in groove 26b such that it does not wobble or rock in the
groove. See id. at 5:20-31.
The plain meaning of “fixedly secured,” in light of the specification, is
fastened such that relative movement is prevented. See MERRIAM WEBSTER’S
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COLLEGIATE DICTIONARY 440-41, 1056 (10th
ed. 1993) (“fix”: “to make . . .
stationary” and “secure”: “to make fast”); In re Zletz, 893 F.2d 319, 321 (Fed. Cir.
1989) (the words of the claim must be given their plain meaning unless the plain
meaning is inconsistent with the specification). Similarly, the plain meaning of
“fixedly securing,” in light of the specification, is fastening such that relative
movement is prevented.
2. Other Terms
All terms in claims 7, 10, 16, and 17, other than “fixedly secured” and
“fixedly securing,” are given their ordinary and customary meaning as would be
understood by one with ordinary skill in the art, and need not be construed
explicitly at this time.
B. Claims 16 and 17—Anticipation
or Obviousness over Mack
As noted above, Petitioners allege, inter alia, that claims 16 and 17 of the
’417 patent are unpatentable under 35 U.S.C. § 102(b) or 103(a) as anticipated by
or obvious over Mack. Petitioners have established a reasonable likelihood that
claims 16 and 17 are unpatentable over Mack for the reasons explained below.
1. Mack
Mack discloses electric-powered hair trimmer 10, which has hollow
casing 11 comprising first and second screwed-together sections 12a, 12b, and
inner walls 17a, 17b, which are molded integrally within sections 12a, 12b,
respectively, and “provide support to parts of the cutter assembly 21 and minimize
undesirable movement within the casing 11.” Ex. 1010, 2:31-36, 43-47; Fig. 3.
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Figure 3 of Mack is reproduced below:
Figure 3 is an exploded view of an electric-powered hair trimmer.
As illustrated in Figure 3, the electric-powered hair trimmer includes: casing
sections 12a, 12b; inner walls 17a, 17b; motor 25; and motor housing 26. As
depicted in Figure 3, inner wall 17a comprises parallel, inner wall extensions 62a,
62b, which define a groove for insertion of flat portion 45. Id. at 3:22-24. There
are opposing inner wall extensions on inner wall 17b that are not visible in
Figure 3. Id. Flat portion 45 (which is not identified by number in Figure 3)
includes slots 56a, 56b. Id. at 3:13-14.
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Figure 6 of Mack is reproduced below:
Figure 6 is a cross-sectional view of the main drive assembly.
As illustrated in Figure 6, motor 25 includes bearing portion 27 with
rotatable output shaft 29 extending therefrom. Id. at 2:66-68. Secured to bearing
portion 27 is gear housing assembly 32, which includes motor mounting yoke 43
and flat portion 45. Id. at 3:5-7. An aperture in flat portion 45 receives bearing
portion 27 of motor 25. Id. at 3:7-8. (The aperture, identifiable in other figures as
element 47, is not visible in Figure 6). See id. Yoke 43, which “is formed from a
spring grade wire,” engages the rear end of motor housing 26 and extends
forwardly via legs 55a, 55b along opposite sides of motor 25 to attachment
apertures 65 in flat portion 45, as shown in Figure 6. Id. at 3:9-18. Mack discloses
that this configuration positions and supports motor 25 against rotation:
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The motor 25 is positioned and supported against rotation by the snug
fit of the bearing portion 27 in the aperture 47, tension on the yoke 43
and the sandwiching of the flat portion 45 between inner wall
extensions 62a, 62b on inner wall 12a and opposing wall extensions
(not shown) on inner wall 17b.
Id. at 3:18-24.
2. Anticipation/Obviousness Analysis
Petitioners contend that claims 16 and 17 are anticipated by or obvious over
Mack. For the reasons discussed below, Petitioners have shown a reasonable
likelihood of prevailing on the alleged of ground of obviousness, but not
anticipation.
Petitioners contend that Mack discloses all of the features recited in claims
16 and 17 of the ’417 patent, including the step of “fixedly securing a motor
mounting plate to a motor” (emphasis added). Pet. 58-60. Petitioners
acknowledge that the Examiner considered Mack during prosecution of the ’417
patent, but argue that “the term ‘fixedly secure’ means simply ‘securely placed or
fastened’” and that “the spring grade wire [of Mack’s motor mounting yoke 43]
does in fact ‘fixedly secure’ the motor to the mounting assembly.” Id. at 51, 58
(claim chart, at [d]). We are not persuaded by Petitioners’ anticipation analysis.
In particular, we are not persuaded that Mack discloses the “fixedly
securing” limitation, as construed above. Mack discloses that motor mounting
yoke 43 in cooperation with other elements, including flat portion 45, supports
motor 25 against rotation. See Ex. 1010, 3:18-24. However, this disclosure falls
short of establishing that flat portion 45 (the asserted motor mounting plate) is
fastened to motor 25 such that relative movement of the mounting plate and the
motor is prevented, as claim 16 requires. Petitioners have not persuaded us that, in
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the orientation depicted in Mack’s Figure 6, the rear end of motor 25 necessarily
does not move up or down relative to flat portion 45. Thus, we are not persuaded
that Petitioners have shown a reasonable likelihood that they would prevail in their
contention that claims 16 and 17 are anticipated by Mack.
As discussed above, Mack does not disclose that flat portion 45 (the asserted
motor mounting plate) is fastened to motor 25 such that relative movement of the
fastened items is prevented. However, we are persuaded that one of ordinary skill
in the art, motivated to support motor 25 of Mack against rotation as taught by
Mack, would have fastened mounting plate 45 of Mack to motor 25 such that
relative movement of the mounting plate and the motor is prevented, and that
doing so would have required nothing more than the arrangement of old elements
with each performing its known function to yield predictable results. See
Pet. 49-51, 58-59; KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)
(“[W]hen a patent ‘simply arranges old elements with each performing the same
function it had been known to perform’ and yields no more than one would expect
from such an arrangement, the combination is obvious.”) (quoting Sakraida v. Ag
Pro, Inc., 425 U.S. 273, 282 (1976)).
We are persuaded that Petitioners have shown a reasonable likelihood that
they would prevail in establishing obviousness of claims 16 and 17 over Mack.
The claim charts and supporting evidence presented by Petitioners that explain
how Mack allegedly teaches or suggests the subject matter recited in claims 16
and 17 have merit and are otherwise unrebutted. See Pet. 58-60.
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C. Claims 7 and 16—Obviousness
over Laverick and Anderson
Petitioners contend that claims 7 and 16 are unpatentable under 35 U.S.C.
§ 103(a) as obvious over Laverick and Anderson. However, for the reasons
explained below, Petitioners have not established a reasonable likelihood that
claims 7 and 16 are unpatentable as obvious over Laverick and Anderson.
1. Laverick
Laverick discloses a string trimming apparatus having motor housing
portions 3, 4 at its lower end. Ex. 1009, p. 10, ll. 92-96, Fig. 2. A portion of
Figure 2 of Laverick is reproduced below:
This portion of Figure 2 shows a composite
side elevation of portion 3 of the housing.
As illustrated in Figure 2, “portion 3 is contoured internally to support a
driving motor.” Id. at p. 11, ll. 17-18, Fig. 2.1 In this regard, Laverick discloses
that “[p]ortion 3 has an internal groove 13 in which locate flanges 14 on end
1 We cite to the page numbers of the exhibit as filed. However, we note that the
published page numbering is different.
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cap 11 and has an internal rib 15 that supports the motor in the vicinity of end
cap 10.” Id. at p. 11, ll. 24-27; see Pet. 14, 19, 35 (claim chart, at [g]). “The motor
comprises end caps 10 and 11 supported upon the ends of the laminated cores 12 of
the motor.” Id. at p. 11, ll. 22-24. Laverick also discloses that “[t]he lower end . . .
of the portion 3 is strengthened by internal transverse walls forming box-like
partitions 16,” which also support the motor. Id. at p. 11, ll. 28-38, Fig. 2. In this
regard, Laverick states:
The lower end (as seen in Fig. 2) of the portion 3 is
strengthened by internal transverse walls forming box-like partitions
16 separated by a central gap 17 into which extends a boss 18 of end
cap 11. The gap 17 has a semi-cylindrical part to receive the boss 18
and a narrower part extending from the semi-cylindrical part in which
locates one of two projections on the end face of the end cap 11. In
this way, the motor is securely held in position when the portions 1, 2
are secured together.
Id. at p. 11, ll. 28-38. Box-like partitions 16, rib 15, flanges 14, groove 13,
laminated cores 12, and end caps 10 and 11 all are visible in the portion of Figure 2
of Laverick shown above.
2. Anderson
Anderson discloses string trimming apparatus 10 having a handle tube that is
pivotally adjustable relative to a motor housing. Ex. 1011, 3:63-4:2.
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A portion of Figure 2 of Anderson is reproduced below.
This portion of Figure 2 shows the motor housing.
As illustrated in the portion of Figure 2 shown above, downwardly-facing
trimmer head 24 is disposed beneath bottom wall 26 of motor housing 14 and is
mounted for rotation on drive shaft 28, which is coupled to motor 22. Id.
at 4:45-48.
Petitioners assert that Anderson “discloses a groove positioned in the motor
housing such that when the two sections are secured together the groove is
disposed within a common plane to effectively form a generally circumferential
groove.” Pet. 15 (citing Ex. 1011, Fig. 2). Petitioners also assert that Anderson
“discloses a planar plate member placed in the circumferential groove formed
within the motor housing” and “a motor supported within the motor housing by the
planar plate member.” Id. Petitioners further assert that “[Anderson] shows that
the engine does not contact any other portion of the housing other than the
groove.” Id.
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On the present record, we are not persuaded by Petitioners’ assertions with
respect to Anderson. In particular, we are not persuaded that Figure 2 of
Anderson, standing alone, discloses that the motor necessarily does not contact any
portion of the housing other than the groove, as Petitioners contend.
A portion of Figure 2 of Anderson, as reproduced with annotations on page
24 of the petition, is reproduced below, along with markings of our own:
This is a portion of Figure 2 of Anderson,
as reproduced with annotations in the petition,
and including markings added by the Board.
In the annotated figure above, Petitioners use arrows to identify, inter alia,
the asserted “PLATE - A” and the asserted “GROOVE - B,” to which Petitioners
refer in their contentions with respect to obviousness, discussed in the next section
below. We have super-imposed four rectangles on Petitioners’ annotated Figure 2
to identify locations where motor 22 potentially contacts, directly or indirectly, a
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portion of housing 14 other than GROOVE - B. The two lower rectangles identify
structures that are located between the bottom of the motor and the bottom wall of
the housing, and that potentially support the weight of the motor. The two upper
rectangles identify rib-like internal structures of the housing that potentially
contact the side of the motor. Likewise, the rib-like internal structures of the
housing that define GROOVE - B potentially contact the side of the motor.
Given the points of potential contact/support that we have marked with
rectangles in the annotated figure above, as well as the potential contact between
the side of the motor and the rib-like structures that define GROOVE-B,
Petitioners have not persuaded us that a person of ordinary skill in the art would
have understood Figure 2 of Anderson to depict a free-standing motor.
3. Obviousness Analysis
Petitioners contend that “one of ordinary skill in the art would have readily
recognized the advantage of the simplified plate/groove combination as disclosed
in . . . [Anderson] (see Ex. 1011, Fig. 2)” and, “[a]ccordingly, . . . it would have
been obvious to substitute the ribs in [Laverick] (see Ex. 1009 at 2:22-44) with the
plate/groove assembly disclosed in . . . [Anderson].” Pet. 21.
Petitioners argue that “[Anderson] would have motivated a person of
ordinary skill to try to support the motor in [Laverick] by eliminating the additional
support structures in the housing, including ribs, as . . . suggested by [Anderson].”
Id. at 19. Petitioners further argue that the person of ordinary skill in the art would
have recognized that “the extra [motor] supports” in Laverick were “redundant and
contrary to the stated desire of . . . simplifying the construction and reducing costs
by reducing the number of components.” Id. at 20 (citing Ex. 1008 at 2:43-56;
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Ex. 1009 at 1:17-20). Petitioners also argue that
one of ordinary skill in the art would have dimensioned . . . the planar
plate member A of [Anderson] so as to be insertable into . . . groove B
of [Anderson], . . . in order to freely support the motor within the
housing without contacting the interior of the housing.
Id. at 20-21 (citing Ex. 1009 at 2:22-44; Ex. 1011, Fig. 2).
Petitioners’ arguments do not provide adequate articulated reasoning with
rational underpinning to support the conclusion that substituting the plate/groove
assembly of Anderson for the motor support structures, including the ribs, used in
Laverick’s string trimming apparatus would have been obvious. See KSR, 550
U.S. at 418 (“‘[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning with
some rational underpinning to support the legal conclusion of obviousness.’”)
(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). First, Petitioners have
not persuaded us that Figure 2 of Anderson, standing alone, would have motivated
a person of ordinary skill to try to support the motor in Laverick by eliminating
support structures in Laverick’s housing. See Pet. 19. As discussed above, a
person of ordinary skill could have understood Anderson, like Laverick, to teach or
suggest internally contouring the housing to support the motor. Second, Petitioners
have not persuaded us that Anderson teaches or suggests freely supporting the
motor within the housing. Rather, a person of ordinary skill could have understood
Anderson, like Laverick, to teach the use of ribs and other internal housing
structures, in addition to PLATE - A and GROOVE - B, to hold the motor in place.
Accordingly, we are not persuaded that one of ordinary skill in the art would have
been motivated to dimension PLATE - A of Anderson so as to be fixedly secured
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in GROOVE - B of Anderson, in order to support freely the motor within the
housing without contacting the interior of the housing.
For the foregoing reasons, Petitioners have not established a reasonable
likelihood that they would prevail in showing that claims 7 and 16 are unpatentable
under 35 U.S.C. § 103(a) as obvious over Laverick and Anderson.
D. Claims 7 and 10—Obviousness
over Laverick and Mack
Petitioners contend that claims 7 and 10 are unpatentable under 35 U.S.C.
§ 103(a) as obvious over Laverick and Mack. Petitioners have established a
reasonable likelihood that claims 7 and 10 are unpatentable over Laverick and
Mack for the reasons explained below.
Petitioners contend that “one of ordinary skill in the art would have readily
recognized the advantage of the simplified plate/groove combination as disclosed
in [Mack] (see Ex. 1010 at 3:9-14, Fig. 3)” and, “[a]ccordingly, . . . it would have
been obvious to substitute the ribs in [Laverick] (see Ex. 1009 at 2:22-44) with the
plate/groove assembly disclosed in [Mack].” Pet. 21. Petitioners argue that
“[Mack] . . . would have motivated a person of ordinary skill to try to support the
motor in [Laverick] by eliminating the additional support structures in the housing,
including ribs, as taught by [Mack].” Id. at 19. Petitioners further argue that the
person of ordinary skill in the art would have recognized that “the extra [motor]
supports” in Laverick were “redundant and contrary to the stated desire of
minimizing contact with the housing (e.g., Ex. 1010 at 1:39-42), and simplifying
the construction and reducing costs by reducing the number of components.” Id.
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at 20 (citing Ex. 1008 at 2:43-56; Ex. 1009 at 1:17-20; Ex. 1010 at 1:39-42).
Petitioners also argue that:
[O]ne of ordinary skill in the art would have dimensioned the flat
portion 45 of [Mack] . . . so as to be insertable into the groove formed
by the inner wall extensions 62a, 62b of [Mack], . . . in order to freely
support the motor within the housing without contacting the interior of
the housing.
Id. at 20-21 (citing Ex. 1009 at 2:22-44; Ex. 1010 at 3:18-24, Fig. 3).
On the present record, we are satisfied that Petitioners have provided
adequate articulated reasoning with rational underpinning to support the asserted
conclusion of obviousness. For essentially the same reasons as discussed with
respect to Mack alone, in section II. B above, we are persuaded that one of
ordinary skill in the art would have secured mounting plate 45 fixedly in the
groove formed by the inner wall extensions 62a, 62b of Mack, in order to support
freely the motor within the housing without contacting the interior of the housing.
Further, on the present record, substituting Mack’s simplified plate/groove
combination for Laverick’s ribs and other internal housing structure, as asserted by
Petitioners, would appear to be nothing more than substituting one structure for
another known in the field. See KSR, 550 U.S. at 416 (“when a patent claims a
structure already known in the prior art that is altered by the mere substitution of
one element for another known in the field, the combination must do more than
yield a predictable result”) (citing U.S. v. Adams, 383 U.S. 39, 50-51 (1966)).
We determine that Petitioners have shown a reasonable likelihood that they
would prevail in establishing obviousness of claims 7 and 10 over Laverick and
Mack. The claim charts and supporting evidence presented by Petitioners that
explain how the combination of Laverick and Mack allegedly teaches or suggests
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the subject matter recited in claims 7 and 10 have merit and are otherwise
unrebutted. See Pet. 33-37.
E. Remaining Grounds of Unpatentability
Petitioners also contend that the following claims are unpatentable under
35 U.S.C. § 103(a): 1) claims 16 and 17 over Laverick and Mack; and 2) claims 7
and 16 over Laverick, Mack, and Anderson. Those grounds of unpatentability are
redundant to the grounds of unpatentability on which we initiate an inter partes
review. Accordingly, we do not authorize an inter partes review on the remaining
grounds of unpatentability asserted by Petitioners against claims 7, 16, and 17 of
the ’417 patent. See 37 C.F.R. § 42.108(a).
III. CONCLUSION
For the forgoing reasons, we determine that there is a reasonable likelihood
that Petitioners would prevail in showing that claims 7, 10, 16, and 17 of the ’417
patent are unpatentable. However, we have not made a final determination on the
patentability of any challenged claim.
IV. ORDER
Accordingly, it is
ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is
hereby instituted as to claims 7, 10, 16, and 17 of the ’417 patent on the following
grounds of unpatentability:
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Patent 5,544,417
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1. Claims 16 and 17 as unpatentable under 35 U.S.C. § 103(a) as obvious over
Mack; and
2. Claims 7 and 10 as unpatentable under 35 U.S.C. § 103(a) as obvious over
Laverick and Mack;
FURTHER ORDERED that no other grounds of unpatentability are
authorized for the inter partes review as to claims 7, 10, 16, and 17 of the ’417
patent;
FURTHER ORDERED that pursuant to 35 U.S.C. § 314(d) and 37 C.F.R.
§ 42.4, notice is hereby given of the institution of a trial on the grounds of
unpatentability authorized above; the trial commences on the entry date of this
decision; and
FURTHER ORDERED that an initial conference call with the Board is
scheduled for 2:00 PM Eastern Time on February 20, 2014; the parties are directed
to the Office Trial Practice Guide (Office Patent Trial Practice Guide, 77 Fed. Reg.
48756, 48765-66 (Aug. 14, 2012)) for guidance in preparing for the conference
call, and should be prepared to discuss any proposed change to the Scheduling
Order entered concurrently herewith and any motion the parties intend to file.
Case IPR2013-00502
Patent 5,544,417
24
Petitioner:
Robert Eichenberger
Robert Theuerkauf
Patent Owner:
Christopher Brock
Michael Hilton