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[email protected] Paper 50 Tel: 571-272-7822 Entered: April 5, 2017
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
PRAIRIE LAND MILLWRIGHT SERVICES, INC., Petitioner,
v.
SIOUX STEEL COMPANY, Patent Owner.
Case IPR2016-01873 Patent 8,967,937 B2
Before NEIL T. POWELL, JAMES A. TARTAL, and GEORGE R. HOSKINS, Administrative Patent Judges.
POWELL, Administrative Patent Judge.
DECISION TO INSTITUTE 37 C.F.R. § 42.108
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I. INTRODUCTION
A. Background
Prairie Land Millwright Services, Inc. (“Petitioner”) filed a Petition
requesting an inter partes review of claims 1–28 of U.S. Patent
No. 8,967,937 B2 (Ex. 1001, “the ’937 patent”). Paper 9 (“Pet.”). Patent
Owner, Sioux Steel Company, filed a Preliminary Response. Paper 46
(“Prelim. Resp.”).
We have authority to determine whether to institute an inter partes
review. 35 U.S.C. § 314(a); 37 C.F.R. § 42.4(a). The standard for
instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which
provides that an inter partes review may not be instituted “unless the
Director determines . . . there is a reasonable likelihood that the petitioner
would prevail with respect to at least 1 of the claims challenged in the
petition.”
After considering the Petition and Preliminary Response, we
determine that Petitioner has established a reasonable likelihood of
prevailing in showing the unpatentability of claims 1–28. Accordingly, we
institute an inter partes review of these challenged claims.
B. Related Matters
The parties note the following related case: Sioux Steel Co. v. Prairie
Land Millwright Svcs., Inc., No. 1-16-cv-02212-JBG/SMF (N.D. Ill.).
Pet. 7; Paper 45, 1.
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C. The Asserted Grounds of Unpatentability
Petitioner contends that claims 1–28 of the ’937 patent are
unpatentable based on the following grounds:
References Statutory Basis Challenged Claim(s)
Dixon1, Berreau2, and Borowski3 35 U.S.C. § 103(a) 1–4 and 6–114 Dixon, Berreau, Borowski, and Vander Schaaf5
35 U.S.C. § 103(a) 5
Dixon, Berreau, Borowski, and Sudenga6
35 U.S.C. § 103(a) 12–28
1 U.S. Patent No. 6,499,930 to Dixon, iss. Dec. 31, 2002 (Ex. 1007). 2 U.S. Patent Application Publication No. 2005/0254922 to Berreau et al., published Nov. 17, 2005 (Ex. 1013). 3 Canadian Patent Application No. CA2312068 to Borowski, published Dec. 20, 2001 (Ex. 1019). 4 Petitioner identifies a “First Ground” as being “Obviousness of Claims 1–28 in view of 35 USC § 103(a) in view of U.S. Patent 6,499,930 to Dixon; U.S. Published Patent Appl’n. 2005/0254922 to Berreau et al.; Canadian Published Patent Appl’n. 2,312,068 to Borowski; U.S. Patent 3,175,676 to Vander Schaaf; and Sudenga Industries, Inc. Press Release.” Pet. 14 (emphasis omitted). Petitioner does not, however, cite each of the listed references with respect to each of the challenged claims. For example, Petitioner asserts that Dixon, Berreau, and Borowski render claims 1–4 and 6–11 obvious. Id. Based on the combinations of references that Petitioner actually cites as rendering different claims obvious, we identify the actual grounds as those listed in this table. 5 U.S. Patent No. 3,175,676 to Vander Schaaf, iss. Mar. 30, 1965 (Ex. 1032). 6 Sudenga Industries, Inc. “Series II Sweep Augers,” November 1, 2004 (Ex. 1035).
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References Statutory Basis Challenged Claim(s)
Cantenot7, Carrouget8, Jackson9, and Schiltz10
35 U.S.C. § 103(a) 1, 3, 4, and 6–11
Cantenot, Carrouget, Jackson, Schiltz, and Weikel11
35 U.S.C. § 103(a) 2
Cantenot, Carrouget, Jackson, Schiltz, and Klein12
35 U.S.C. § 103(a) 5
Cantenot, Carrouget, Jackson, Schiltz, and Wilham13
35 U.S.C. § 103(a) 12–15 and 17–20
Cantenot, Carrouget, Jackson, Schiltz, Wilham, and Weikel
35 U.S.C. § 103(a) 16, 21, 22, and 26–28
Cantenot, Carrouget, Jackson, Schiltz, Wilham, Weikel, and Epp14
35 U.S.C. § 103(a) 23
Cantenot, Carrouget, Jackson, Schiltz, Wilham, Weikel, Epp, and Sudenga
35 U.S.C. § 103(a) 24 and 25
Dixon, Jackson, and Schiltz 35 U.S.C. § 103(a) 1–4 and 6–11 Dixon, Jackson, Schiltz, and Klein 35 U.S.C. § 103(a) 5 Dixon, Jackson, Schiltz, and Sudenga
35 U.S.C. § 103(a) 12–28
7 U.S. Patent No. 4,516,898 to Cantenot, iss. May 14, 1985 (Ex. 1008). 8 French Patent Application Publication No. FR2630620 to Carrouget, published Nov. 3, 1989 (Ex. 1009). 9 U.S. Patent No. 3,647,094 to Jackson, iss. Mar. 7, 1972 (Ex. 1011). 10 U.S. Patent No. 4,824,312 to Schiltz, iss. Apr. 25, 1989 (Ex. 1018). 11 U.S. Patent No. 6,039,647 to Weikel, iss. Mar. 21, 2000 (Ex. 1037). 12 U.S. Patent No. 3,014,575 to Klein, iss. Dec. 26, 1961 (Ex. 1031). 13 U.S. Patent No. 6,017,180 to Wilham, iss. Jan. 25, 2000 (Ex. 1002). 14 U.S. Patent Application Publication No. 2006/0245864 to Epp et al., published Nov. 2, 2006 (Ex. 1038).
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Petitioner also relies on a Declaration from Bruce Meyer. Ex. 1039.
Patent Owner relies on a Declaration from James E. Maness. Ex. 2001.
D. The ’937 Patent
The ’937 patent discloses a modular storage bin sweep system.
Ex. 1001, 4:31–34. Figure 2 of the ’937 patent shows a top view of one
embodiment of the system. Figure 2 is reproduced below.
Figure 2 shows system 10, including sweep assembly 12, which comprises
power unit 26, drive unit 56, and linking units 70. Id. at 4:48–50; 5:32–33.
The ’937 patent discloses that sweep assembly 12 “may include two units,
but often includes more than two units in the linear array.” Id. at 4:62–63.
The ’937 patent elaborates that:
The number of units in the array of the sweep assembly may typically be a function of the distance between the central area and the peripheral area of the bin interior so that the length of the sweep assembly generally approximates the distance between the areas (which in the case of a round bin is approximately the radius of the bin interior). The units may have different lengths that may be utilized in the linear array of units to achieve
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substantial correspondence between the length of the sweep assembly and the radius of the bin.
Id. at 4:63–5:5.
The ’937 patent also discloses that sweep assembly 12 may include
paddles 18 mounted on an endless loop 20 (not shown in Figure 2) extending
between inboard 14 and outboard 15 ends of sweep assembly 12. Id. at
5:13–31. Power unit 26 drives paddles 18 along sweep assembly 12. Id. at
5:37–38.
Further, the ’937 patent discloses that sweep assembly 12 may include
pivot unit 90. Id. at 9:31–34. Pivot unit 90 is shown in Fig. 11, reproduced
below.
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Figure 11 shows the structure of pivot unit 90, including sections 92, 94 and
pivot structure 96. Id. at 9:31–38. Section 92 includes pivot arms 98
extending outward. Id. at 9:38–40. Section 94 includes pivot tabs 100. Id.
at 9:40–41. Pivot pins 102 fasten pivot arms 98 to pivot tabs 100. Id. at
9:41–43. Accordingly, sections 92, 94 may pivot about a substantially
horizontal axis relative to one another. Id. at 9:31–34.
E. Illustrative Claim
Of the challenged claims, claim 1 is independent, and claims 2–28
depend from claim 1. Claim 1 is illustrative of the challenged claims and
recites:
1. A modular storage bin sweep system utilizing paddles to sweep particulate matter across a floor surface of a bin, the system comprising:
a sweep assembly including at least two units connectable together in a substantially linear array along a longitudinal axis, each of the units having a unit longitudinal axis, the sweep assembly having an inboard end for locating toward a center of the bin and an outboard end for locating toward a peripheral area of the bin, each of the at least two units having a longitudinal axis, the sweep assembly comprising:
a plurality of interconnected paddles movable in a succession on a path along at least a portion of the sweep assembly between the inboard and outboard ends;
at least one of the at least two units comprising a power unit configured to move the succession of paddles along the path of the sweep assembly;
at least one of the at least two units comprising a drive unit configured to carry a portion of the succession of interconnected paddles and move the sweep assembly with respect to a surface of the bin below the sweep assembly, the drive unit being positioned toward the outboard end from the inboard end of the sweep assembly, the drive unit including a
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surface engaging portion configured to engage a surface below the sweep assembly and move the sweep assembly with respect to the surface, the surface engaging portion comprising at least one surface engaging wheel resting on the surface of the bin; and
at least one of the at least two units comprising a pivot unit configured to carry a portion of the succession of interconnected paddles, the pivot unit including a pair of connected sections with each section being connected to an adjacent said unit of the array, the pivot unit including a pivot structure positioned between and connecting the sections to permit pivoting of a first section with respect to a second section and thereby to permit a degree of pivotability of the unit longitudinal axes of the adjacent units with respect to each other in the array of units of the sweep assembly.
Ex. 1001, 10:46–11:17.
II. ANALYSIS
A. Claim Construction
In an inter partes review, the Board interprets claim terms in an
unexpired patent according to the broadest reasonable construction in light
of the specification of the patent in which they appear. 37 C.F.R.
§ 42.100(b); see In re Cuozzo Speed Techs., LLC, 136 S. Ct. 2131, 2142–46
(2016). Under that standard, and absent any special definitions, we give
claim terms their ordinary and customary meaning, as would be understood
by one of ordinary skill in the art at the time of the invention. See In re
Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special
definitions for claim terms must be set forth with reasonable clarity,
deliberateness, and precision. See In re Paulsen, 30 F.3d 1475, 1480 (Fed.
Cir. 1994).
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Petitioner proposes constructions of certain claim terms. Pet. 10–12.
Patent Owner “does not agree with any of the Petition’s proposed
constructions,” but states that we need not address Petitioner’s proposed
constructions. Prelim. Resp. 14. Patent Owner proposes a construction for
the claim term “unit.” Id. at 13–14.
For purposes of this decision, in order to determine whether to
institute inter partes review, we need not construe explicitly every claim
term for which the parties propose a construction. See 35 U.S.C. § 314(a);
Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
1999) (“[O]nly those terms need be construed that are in controversy, and
only to the extent necessary to resolve the controversy.”).
In order to resolve whether Petitioner has demonstrated a reasonable
likelihood of prevailing, the only claim-construction contention we need to
address is Patent Owner’s proposed construction of the term “unit.” Patent
Owner contends, and Mr. Maness testifies, that “in the context of the ‘937
Patent, the broadest reasonable interpretation for ‘unit’ is a modular housing
segment at least partially defining an interior.” Prelim. Resp. 13–14; see
also Ex. 2001, ¶ 33. In support of this position, Patent Owner cites various
statements in the ’937 patent. Patent Owner asserts that the units disclosed
in the ’937 patent “are modular.” Prelim. Resp. 13; see also Ex. 2001 ¶ 33.
Patent Owner further asserts that the ’937 patent teaches that “units” have a
housing segment that at least partly defines an interior, regardless of whether
the unit is a “drive unit,” a “power unit,” a “linking unit,” or a “pivot unit.”
Prelim. Resp. 13; see also Ex. 2001 ¶ 33.
At this stage, we are not persuaded that the proper construction of
“unit” is limited to a modular housing segment at least partially defining an
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interior. Looking to the language of independent claim 1, itself, we find no
reference to the “unit” being a “housing segment.” Patent Owner does not
assert that the ordinary meaning of “unit” is a “housing segment,” and we
discern no reason to conclude as much from Patent Owner” arguments.
Of course, as noted above, the language of the claims must be
interpreted in light of the specification. Nonetheless, “[t]hough
understanding the claim language may be aided by the explanations
contained in the written description, it is important not to import into a claim
limitations that are not part of the claim.” SuperGuide Corp. v. DirecTV
Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). At this stage, Patent
Owner’s observation that the ’937 patent discloses examples of “units” that
have housing segments at least partially defining an interior does not
persuade us that the broadest reasonable construction of the claim term
“units” is narrowed from its ordinary meaning to one that requires housing
segments.
B. Alleged Obviousness of Claims 1–4 and 6–11 over Dixon, Berreau, and Borowski
Petitioner asserts claims 1–4 and 6–11 would have been obvious over
Dixon, Berreau, and Borowski, citing record evidence. Pet. 14–23.
Petitioner asserts that Dixon teaches a bin sweep system that uses paddles to
move particulate matter in a bin. Id. at 14. Petitioner contends that Dixon’s
sweep assembly includes most of the limitations of independent claim 1. Id.
at 14–15.
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Figure 4 of Dixon is reproduced below.
Figure 4 of Dixon shows a cross-sectional view of sweep conveyor
27. See Ex. 1007, 2:46–48. Dixon’s sweep conveyor 27 includes elongated
frame 33, which has a hood with top panel 39, side walls 41, 43 (not shown
in Figure 4), and end walls 46. Id. at 2:46–56. Sweep conveyor 27 includes
sprockets 49, 51 rotatably attached to frame 33. Id. at 2:64–3:15. Sweep
conveyor 27 also includes roller chain 57 passing around sprockets 49, 51,
as well as paddles 59 mounted on roller chain 57. Id. at 3:16–22. Sweep
conveyor 27 has power means 63 for rotating one of sprockets 49, 51 to
move roller chain 57, and paddles 59 to sweep grain. Id. at 3:35–39.
Additionally, “sweep conveyor 27 preferably includes drive means 79 for
causing the frame 33 to rotate about the well 25” (not shown in Figure 4).
Id. at 3:58–59.
Petitioner notes that Dixon does not teach certain limitations in
independent claim 1. For example, Petitioner states that Dixon does not
teach:
inter alia, the sweep unit including at least two units connectable together in a substantially linear array along a longitudinal axis, each of the units having a unit longitudinal axis; at least one of the units comprising the aforementioned power unit; at least one
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of the units comprising the aforementioned drive unit; and at least one of the units comprising a pivot unit including a pair of connected sections with each section being connected to an adjacent unit of the array, the pivot unit including a pivot structure positioned between and connecting the sections to permit pivoting of a first section with respect to a second section, thereby permitting a degree of pivotability of the unit longitudinal axes of the adjacent units with respect to each other.
Pet. 15–16. Addressing these aspects of the claims, Petitioner asserts that a
person of ordinary skill in the art would have been motivated to make certain
changes to Dixon’s disclosed apparatus, based on the teachings of Berreau
and Borowski. Id. at 16–20.
Petitioner asserts that Berreau teaches an “auger sweep – which is an
art-recognized equivalent to a paddle sweep . . . including at least two units
connectable together in a substantially linear array along a longitudinal
axis,” and which includes other features consistent with claim 1’s recitations
regarding the “units.” Id. at 16–17.
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Figure 2 of Berreau is reproduced below.
Figure 2 of Berreau shows bin sweep 12 with frame 10, auger 30, first
support structure 24, and second support structure 26. Ex. 1013, ¶ 21.
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Figure 4 of Berreau is reproduced below.
Figure 4 of Berreau shows an exploded view of support frame 10 and its
components, including panels 46a, 46b, 46c, 46d, 46e, 46f, 46g, 46h, and
46i. Id. at ¶¶ 27, 30. Berreau teaches a construction that “allows for easy
connection of multiple sections of support frame 10, such as panels 46a, 46b,
and 46c with 46d, 46e, and 46f and 46g, 46h, and 46i as pictured in FIG. 4.”
Id. at ¶ 30.
Figure 6 of Berreau is reproduced below.
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Figure 6 of Berreau shows “a side view of a support frame comprised of
several sections.” Id. at ¶ 16. Berreau explains that “[a]s seen in FIG. 6,
multiple support frames 10a, 10b, and 10c are attached to lengthen the frame
to a desired length.” Id. at ¶ 36.
Petitioner contends that, in view of Berreau, a person of ordinary skill
in the art would have been motivated “to construct the Dixon sweep from
modular units, including a power unit, a drive unit, and intermediate linking
units, to facilitate construction of a sweep having a desired length, as
suggested by Berreau.” Pet. 17. Petitioner suggests that Berreau’s
explanation of the reason for having multiple units mirrors the ’973 patent’s
stated reasons for modular construction. Id. (citing Ex. 1001, 4:48–5:8).
Petitioner also contends that a person of ordinary skill in the art would have
been motivated to construct Dixon’s sweep from modular units for
“manufacturing and repair efficiencies, as such modular units can be
individually manufactured and inventoried for later construction of a sweep
of the desired length, and can be individually swapped out of completed
sweeps for ease of repair with minimal sweep downtime.” Id. at 17–18
(citing Ex. 1039 ¶ 42).
Petitioner also states that “[s]uch a Dixon/Berreau sweep would still
lack the pivot unit recited in claim 1.” Id. at 18. In addressing the claimed
pivot unit, Petitioner cites Borowski. Id. at 18–20.
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Figure 1 of Borowski is reproduced below.
Figure 1 of Borowski shows bin sweep 10, including hydraulic motor 24,
inner flighting section 26, universal joint 28, outer flighting section 30,
backboard 32, and shield 38. Ex. 1019, 2:15–16, 2:24–25, 3:2–12.
Petitioner asserts that universal joint 28 couples inner flighting section 26 to
outer flighting section 30, “allowing the sweep to ‘move up and down as
necessary as the sweep progresses around the bin.’” Pet. 18 (quoting
Ex. 1019, 4:4–6). Petitioner further asserts that shield 38 and backboard 32
are “coupled to ‘allow[] free, universal movement of the shield on the
backboard so as to not restrain relative movements of the inner and outer
[sweep] flighting sections at the universal joint.’” Id. (quoting Ex. 1019,
4:1–4). In view of this, Petitioner asserts that “both the auger and its
adjacent ‘casing’ (shield and backboard) are pivotally coupled.” Id.
Petitioner contends that Borowski would have motivated a person of
ordinary skill in the art “to add one or more pivots along the length of Dixon
as modified by Berreau (i.e., between the modular units of modified
Dixon).” Id. Petitioner argues that pivots could be included at one or more
different places between units to allow units of the sweep to “move up and
down as necessary as the sweep progresses around the bin,” as taught by
Borowski. Id. at 18–19 (quoting Ex. 1019, 2:4–6). Petitioner contends that
this mirrors the reason the ’973 patent identifies for including a pivot. Id. at
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19 (citing Ex. 1001, 9:25–30). Petitioner also cites evidence that it was
recognized in the art that a sweep performs less well on uneven surfaces, but
that adding flexibility and pivots can help compensate for this. Id. (citing
Ex. 1039 ¶¶ 29–33; Ex. 1025, Fig. 11A, 8:32–9:2, 10:28–40). Petitioner
also cites evidence that a person of ordinary skill in the art would have had a
reasonable expectation of success in combining the teachings of the
references in the proposed manner. Id. (citing Ex. 1021; Ex. 1039 ¶¶ 40–
41). Petitioner asserts that combining the teachings of the references in this
manner would result in a sweep system having the “pivot unit” of claim 1,
elaborating that:
at least one of the at least two units of the Dixon/Berreau sweep, e.g., an intermediate linking unit between the power and drive units (as suggested by Berreau’s intermediate unit 10 between its power and drive units 24 and 26, see EX. 1013, FIG. 3), would comprise a pivot unit configured to carry a portion of the succession of interconnected paddles, the pivot unit including a pair of connected sections with each section being connected to an adjacent said unit of the array (as where the pivot is added between the “subunits” of Berreau’s intermediate unit, see EX. 1013, FIG. 4), the pivot unit including a pivot structure positioned between and connecting the sections to permit pivoting of a first section with respect to a second section and thereby to permit a degree of pivotability of the unit longitudinal axes of the adjacent units with respect to each other in the array of units of the sweep assembly. Thus, all features of claim 1 are met by the Dixon/Berreau/Borowski sweep.
Id. at 19–20.
Thus, Petitioner contends that the proposed combination of Dixon,
Berreau, and Borowski renders obvious all of the limitations of independent
claim 1. Petitioner also contends that the combination of Dixon, Berreau,
and Borowski renders obvious the limitations of each of dependent claims
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2–4 and 6–11. Id. at 20–23. Petitioner’s assertions and evidence persuade
us that Petitioner has demonstrated a reasonable likelihood of establishing
that claims 1–4 and 6–11 would have been obvious over Dixon, Berreau,
and Borowski.
At this stage, Patent Owner’s arguments to the contrary do not
persuade us that Petitioner has failed to demonstrate a reasonable likelihood
of prevailing. Patent Owner argues that Petitioner does not explain
sufficiently the significance of the cited portions of the prior art references,
contending that Petitioner does not explain adequately how the cited
disclosures teach the limitations of the claims. Prelim. Resp. 19–24. Patent
Owner argues, for example, that Petitioner does not adequately explain
“where any of [the] limitations of the Pivot Unit Element are found in the
prior art.” Id. at 22. Patent Owner further argues that the references do not
disclose all of the limitations of the claims. Id. at 24–29.
In particular, Patent Owner contends that the references do not
disclose all of the limitations regarding the “units” recited in claim 1. Id.
Patent Owner argues that Berreau does not teach modular units, but “an
assembly of panels to provide overall rigidity to the structure.” Id. at 15.
Citing Mr. Maness’s testimony, Patent Owner contends that “[u]nlike
Berreau, the ‘units’ of claim 1 each at least partially comprise a modular
housing segment at least partially defining an interior (which carries a
portion of the interconnected paddles).” Id. at 25–26 (citing Ex. 2001 ¶¶ 48–
51, 59–60). Patent Owner also asserts that the prior art does not teach the
“pivot unit” recited in claim 1. Id. at 26–28. Patent Owner argues that
“Borowski does not teach two sections of a single modular unit, carrying a
portion of the paddles, connected by a pivot structure. Instead, in Borowski,
Case IPR2016-01873 Patent 8,967,937 B2
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two separate flights of augers are simply connected end-to-end by a
universal joint.” Id. at 27.
We find Petitioner’s explanation of how the combination of the
teachings of the references allegedly would have rendered obvious the claim
limitation sufficient to demonstrate a reasonable likelihood of prevailing. At
this stage, the argument and testimony that Berreau does not teach units with
a housing that at least partially defines an interior is unpersuasive because,
as discussed above in Section II.A, we are not persuaded that the claim term
“unit” requires a housing section that at least partially defines an interior.
Furthermore, even if we did adopt Patent Owner’s proposed construction,
we determine that there is a reasonable likelihood of Petitioner prevailing,
given that (1) Dixon’s sweep conveyor 27 includes elongated frame 33,
which has a hood with top panel 39 and side walls 41, 43, and end walls 46
(Ex. 1013, 2:46–56) and (2) Petitioner asserts that a person of ordinary skill
in the art would have been motivated “to construct the Dixon sweep from
modular units” (Pet. 17).
At this stage, we also find unpersuasive Patent Owner’s argument that
Borowski does not teach a pivot unit according to the claims. Neither Patent
Owner nor Mr. Maness explains, and we do not discern, the structural
difference between “two sections of a single modular unit” and “two
separate flights of an auger . . . simply connected end-to-end.” See Prelim.
Resp. 27; Ex. 2001 ¶¶ 48–51, 59–60. Patent Owner states that in the claims,
“the ‘pivot structure’ is within a ‘unit,’ not between units.” Prelim.
Resp. 28. Similarly, Mr. Maness testifies that claim 1 requires “a structure
that allows limited pivoting within a unit of the paddle sweep array.”
Ex. 2001 ¶ 60. At this stage, we are not persuaded that there is a structural
Case IPR2016-01873 Patent 8,967,937 B2
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difference between a pivot structure “within” a unit and one “between” two
units. Moreover, it would appear reasonably likely that Petitioner can
demonstrate that connecting two units with a pivot structure between the
units would produce another, larger unit “within” which the pivot unit is
disposed. Furthermore, in arguing that Borowski does not teach the claimed
“pivot unit,” Patent Owner improperly attacks Borowski individually, when
Petitioner asserts that combining the teachings of Dixon, Berreau, and
Borowski would produce the claimed pivot unit. Pet. 19; see also In re
Keller, 642 F.2d 413, 426 (CCPA 1981).
Patent Owner also argues that the combined teachings of Dixon,
Berreau, and Borowski would not meet the claim 1 limitation that the “pivot
unit” has a “unit longitudinal axis.” Prelim. Resp. 28. In support of this
assertion, Patent Owner asserts that Borowski’s inner flighting section 26
extends at an angle to its outer flighting section 30, implying that they
therefore do not extend along a common longitudinal axis. Id.
At this stage, we find this argument unpersuasive for multiple reasons.
First, Petitioner asserts that a person of ordinary skill in the art would have
been motivated by Borowski to add a pivot to a sweep constructed in
accordance with the teachings of Dixon and Berreau. Pet 18–19. Petitioner
does not assert that doing so would necessarily entail positioning the
components connected by the pivot at an angle, as in Borowski. And we see
no reason that it would, especially given that Dixon’s sweep conveyor 27
extends in a straight line (see, e.g., Ex. 1007 Fig. 4). See Keller, 642 F.2d at
425 (“The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference; nor is it that the claimed invention must be expressly suggested in
Case IPR2016-01873 Patent 8,967,937 B2
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any one or all of the references.”). Furthermore, at this stage, we are not
persuaded that the claim recitation that the “pivot unit” has a “unit
longitudinal axis” excludes a joint disposed at an angle at least sometimes.
After all, the ’937 patent teaches that “pivot unit 90 . . . may have a pair of
connected sections 92, 94 that are able to move with respect to each other,
and may be able to pivot about a substantially horizontal axis with respect to
each other” (Ex. 1001, 9:31–34). This indicates that connected portions of
the “pivot unit” may extend at an angle like that shown in Borowski.
Patent Owner also criticizes Petitioner as not explaining details of
how a person of ordinary skill in the art would construct an assembly based
on the combined teachings of the references. Prelim. Resp. 29–31. At this
stage, and in view of the nature of the technology, we find this argument
unpersuasive, as “[a] person of ordinary skill is also a person of ordinary
creativity, not an automaton.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
421 (2007); see also Merck & Co., Inc. v. Biocraft Labs, Inc., 874 F.2d 804,
807 (Fed. Cir. 1989) (explaining a reference is good for all that it teaches to
a person of ordinary skill in the art); EWP Corp. v. Reliance Universal Inc.,
755 F.2d 898, 907 (Fed. Cir. 1985) (“A reference must be considered for
everything it teaches by way of technology and is not limited to the
particular invention it is describing and attempting to protect.”).
Patent Owner also argues that a person of ordinary skill in the art
would not have combined Berreau’s teachings with Dixon’s. Prelim.
Resp. 31–32. Patent Owner reasons that “a [person of ordinary skill in the
art] would not be motivated to combine the teachings of such references
because the open framework of the Berreau frame structure would not
accommodate the safety and support purpose and functions of the Dixon
Case IPR2016-01873 Patent 8,967,937 B2
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enclosed box-like frame.” Id. at 32. Here again, at this stage, we find this
argument unpersuasive because the test for obviousness is not whether the
features of Berreau may be bodily incorporated into Dixon’s structures.
Keller, 642 F.2d at 425.
Patent Owner also argues that Berreau teaches away from Petitioner’s
proposed combination of the references. Prelim. Resp. 32–33. Patent
Owner asserts that Berreau strives to provide a rigid frame to endure
tremendous pressure from grain. Id. at 32. In view of this, Patent Owner
argues that “it would be counterintuitive to attempt to add ‘flexibility’ or
‘pivots’ to a Dixon frame modified by Berreau because Berreau teaches a
construction that ensures that the frame remains rigid.” Id. at 33. In support
of these arguments, the only evidence Patent Owner cites is Berreau itself.
See id. at 32–33.
At this stage, we are not persuaded that Berreau teaches away from
adding a pivot to the sweep. The portions of Berreau cited by Patent Owner
teach a desire for a frame that can withstand large forces from grain,
teaching a “strong” frame to do so. Ex. 1013, Abstract, ¶¶ 31, 37. Unlike
Patent Owner’s assertions, however, the cited portions neither say that the
frame needs to be rigid to be “strong,” nor say that adding a pivot would
undermine the objective of a frame that can withstand large forces from
grain. See id. Although a person of ordinary skill in the art may have
interpreted Berreau in the manner alleged by Patent Owner, at this stage, the
attorney argument offered by Patent Owner does not persuade us of as much.
Moreover, even if Berreau does indicate that flexibility might prove
disadvantageous, this does not necessarily negate Petitioner’s assertion that a
person would have had motivation to add a pivot to provide certain
Case IPR2016-01873 Patent 8,967,937 B2
23
advantages. See Pet. 18–19; Winner Int’l Royalty Corp. v. Wang, 202 F.3d
1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the motivating benefit comes
at the expense of another benefit,. . . should not nullify its use as a basis to
modify the disclosure of one reference with the teachings of another.”); In re
Urbanski, 809 F.3d 1237, 1243–44 (Fed. Cir. 2016) (Affirming
determination that person of ordinary skill in the art would have been
motivated to pursue advantages disclosed in one reference at the expense of
foregoing benefit taught in other reference).
In view of the foregoing, we determine Petitioner has demonstrated a
reasonable likelihood of establishing that claims 1–4 and 6–11 would have
been obvious over Dixon, Berreau, and Borowski. We recognize, however,
that Patent Owner will have further opportunity to present evidence and
arguments.
C. Alleged Obviousness of Claims 5 and 12–28 over Dixon, Berreau, Borowski, and either Vander Schaaf or Sudenga
Petitioner alleges that claim 5 would have been obvious over Dixon,
Berreau, Borowski, and Vander Schaaf, citing record evidence. Pet. 24.
Petitioner asserts that claims 12–28 would have been obvious over Dixon,
Berreau, Borowski, and Sudenga, citing record evidence. Id. at 24–30.
Patent Owner does not dispute Petitioner’s contentions beyond the
arguments raised by Patent Owner with respect to Petitioner’s assertion that
claims 1–4 and 6–11 would have been obvious over Dixon, Berreau, and
Borowski. Having reviewed the assertions and evidence presented by
Petitioner, we determine there is a reasonable likelihood of Petitioner
establishing that claim 5 would have been obvious over Berreau, Borowski,
Case IPR2016-01873 Patent 8,967,937 B2
24
and Vander Schaaf, and that claims 12–28 would have been obvious over
Dixon, Berreau, Borowski, and Sudenga.
D. Alleged Obviousness of Claims 1, 3, 4, and 6–11 over Cantenot, Carrouget, Jackson, and Schiltz
Petitioner asserts that claims 1, 3, 4, and 6–11 would have been
obvious in view of Cantenot, Carrouget, Jackson, and Schiltz. Pet. 31–41.
Petitioner cites Cantenot, Carrouget, and Jackson, in combination, as
rendering obvious many of the limitations of independent claim 1. Id. at 31–
36. Petitioner concedes that combining the teachings of these references
would not provide the “pivot unit” recited in claim 1, stating that “[s]uch a
Cantenot/Carrouget/Jackson sweep would still lack certain features of claim
1, inter alia, a pivot unit.” Id. at 36. Petitioner cites Schiltz as disclosing an
auger sweep with a pivot. Id. at 36–37. Petitioner asserts that a person of
ordinary skill in the art would be motivated to include a pivot in a sweep
produced by combining the teaching of Cantenot, Carrouget, and Jackson,
“thereby providing a pivot unit and meeting all limitations of [the ’937
patent’s] claim 1.” Id. at 37.
Patent Owner argues that “the Petition provides no identification
whatsoever, nor any explanation, as to where the Pivot Unit Element
limitations are found in the prior art.” Prelim. Resp. 36. Consistent with
Patent Owner’s argument, the portion of the Petition asserting obviousness
over Cantenot, Carrouget, Jackson, and Schiltz says nothing about claim 1’s
limitations that the “pivot unit” is
configured to carry a portion of the succession of interconnected paddles, the pivot unit including a pair of connected sections with each section being connected to an adjacent said unit of the array, the pivot unit including a pivot structure positioned between and
Case IPR2016-01873 Patent 8,967,937 B2
25
connecting the sections to permit pivoting of a first section with respect to a second section and thereby to permit a degree of pivotability of the unit longitudinal axes of the adjacent units with respect to each other in the array of units of the sweep assembly.
Ex. 1001, 11:8–17; see Pet. 31–38. In view of this, we determine that
Petitioner has not demonstrated a reasonable likelihood of prevailing on its
contention that claims 1, 3, 4, and 6–11 would have been obvious in view of
Cantenot, Carrouget, Jackson, and Schiltz.
E. Alleged Obviousness of Claims 2, 5, and 12–28 over Cantenot, Carrouget, Jackson, Schiltz, and one or more of Weikel, Klein, Wilham, Epp, and Sudenga
Claims 2, 5, and 12–28 depend from claim 1. Petitioner’s assertion
that claims 2, 5, and 12–28 would have been obvious over Cantenot,
Carrouget, Jackson, Schiltz, and one or more of Weikel, Klein, Wilham,
Epp, and Sudenga is premised on Petitioner’s assertion that claim 1 would
have been obvious over Cantenot, Carrouget, Jackson, and Schiltz. In
particular, Petitioner does not further address the limitations recited in claim
1 regarding the pivot unit in light of any of the additional prior art asserted.
See Pet. 41–51. In view of this, for the reasons discussed above in Section
II.D with respect to alleged obviousness of claim 1 over Cantenot,
Carrouget, Jackson, and Schiltz, we determine that Petitioner has not
demonstrated a reasonable likelihood of prevailing in showing any of claims
Case IPR2016-01873 Patent 8,967,937 B2
26
2, 5, or 12–28 would have been obvious over Cantenot, Carrouget, Jackson,
Schiltz, and one or more of Weikel, Klein, Wilham, Epp, and Sudenga.
F. Alleged Obviousness of Claims 1–4 and 6–11 over Dixon, Jackson, and Schiltz
Petitioner asserts that claims 1–4, and 6–11 would have been obvious
over Dixon, Jackson, and Schiltz. Pet. 52–59. Petitioner cites Dixon and
Jackson, in combination, as rendering obvious many of the limitations of
independent claim 1. Id. at 52–55. Petitioner does not assert that the
combination of Dixon and Jackson renders obvious the “pivot unit” of claim
1. See id. Petitioner cites Schiltz as disclosing an auger sweep with a pivot.
Id. at 55. Petitioner asserts that a person of ordinary skill in the art would
have been motivated to include a pivot in a sweep produced by combining
the teaching of Dixon and Jackson, “thereby providing a pivot unit as in [the
’937 patent’s] claim 1.” Id. at 55–56.
Patent Owner argues that “the Petition provides no identification
whatsoever, nor any explanation, as to where the Pivot Unit Element
limitations are found in the prior art.” Prelim. Resp. 46. Consistent with
Patent Owner’s argument, the portion of the Petition asserting obviousness
over Dixon, Jackson, and Schiltz says nothing about claim 1’s limitations
that the “pivot unit” is
configured to carry a portion of the succession of interconnected paddles, the pivot unit including a pair of connected sections with each section being connected to an adjacent said unit of the array, the pivot unit including a pivot structure positioned between and connecting the sections to permit pivoting of a first section with respect to a second section and thereby to permit a degree of pivotability of the unit longitudinal axes of the adjacent units with respect to each other in the array of units of the sweep assembly.
Case IPR2016-01873 Patent 8,967,937 B2
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Ex. 1001, 11:8–17; see Pet. 52–59. In view of this, we determine that
Petitioner has not demonstrated a reasonable likelihood of prevailing on its
contention that claims 1–4 and 6–11 would have been obvious in view of
Dixon, Jackson, and Schiltz.
G. Alleged Obviousness of Claims 5 and 12–28 over Dixon, Jackson, Schiltz, and either Klein or Sudenga
Claims 5 and 12–28 depend from claim 1. Petitioner’s assertion that
claims 5 and 12–28 would have been obvious over Dixon, Jackson, Schiltz,
and either Klein or Sudenga is premised on Petitioner’s assertion that claims
1 would have been obvious over Dixon, Jackson, and Schiltz. See Pet. 60–
66. In particular, Petitioner does not further address the limitations recited
in claim 1 regarding the pivot unit in light of any of the additional prior art
asserted. In view of this, for the reasons discussed above in Section II.F
with respect to alleged obviousness of claim 1 over Dixon, Jackson, and
Schiltz, we determine that Petitioner has not demonstrated a reasonable
likelihood of prevailing in showing any of claims 5 and 12–28 would have
been obvious over Dixon, Jackson, Schiltz, and either Klein or Sudenga.
III. CONCLUSION
Having evaluated the information presented in the Petition, its
underlying supporting evidence, and the arguments presented in Patent
Owner’s Preliminary Response, we determine that Petitioner has shown a
reasonable likelihood of establishing that claims 1–28 are unpatentable. At
Case IPR2016-01873 Patent 8,967,937 B2
28
this stage of the proceeding, we have not made a final determination with
respect to the patentability of these challenged claims.
IV. ORDERS
After due consideration of the record before us, it is:
ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes
review is hereby instituted on the following grounds:
1) claims 1–4 and 6–11 as allegedly obvious over Dixon, Berreau, and Borowski;
2) claim 5 as allegedly obvious over Dixon, Berreau, Borowski, and Vander Schaaf; and
3) claims 12–28 as allegedly obvious over Dixon, Berreau, Borowski, and Sudenga; and
FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
37 C.F.R. § 42.4, notice is hereby given of the institution of a trial. The trial
will commence on the entry date of this decision.
Case IPR2016-01873 Patent 8,967,937 B2
29
FOR PETITIONER: Craig A. Fieschko Joseph T. Leone DEWITT ROSS & STEVENS S.C. [email protected] FOR PATENT OWNER: Robert Eichenberger Robert J. Theuerkauf MIDDLETON REUTLINGER [email protected] [email protected]
