A.R.M., Inc.v.Cottingham Agencies Ltd.

Patent Trial and Appeal Board

Oct 3, 2014

11023063 (P.T.A.B. Oct. 3, 2014)

Trials@uspto.gov Paper 10
571-272-7822 Entered: October 3, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

A.R.M., INC.,
Petitioner,

v.

COTTINGHAM AGENCIES LTD,
Patent Owner.
____________

Case IPR2014-00671
Patent 7,666,103
____________

Before JAMES T. MOORE, JAMES A. TARTAL, and
CARL M. DEFRANCO, Administrative Patent Judges.

TARTAL, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

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I. INTRODUCTION
Petitioner, A.R.M., Inc., filed a Petition requesting an inter partes
review of claims 1–46 of U.S. Patent No. 7,666,103 (Ex. 1001, “the ’103
patent”). Paper 2 (“Pet.”). Patent Owner, Cottingham Agencies, Ltd., filed
a Preliminary Response (Paper 8, “Prelim. Resp.”). We have jurisdiction
under 35 U.S.C. § 314(a), which provides that an inter partes review may
not be instituted “unless . . . the information presented in the petition . . .
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.”
Patent Owner also filed a “Disclaimer under 37 C.F.R. [§] 1.321”
(Paper 9, “Disclaimer”) stating that it disclaims claims 19, 20, 37, 38, and 40
of the ’103 patent. Accordingly, because Patent Owner has disclaimed
claims 19, 20, 37, 38, and 40, inter partes review may not be instituted based
on those claims. See 35 U.S.C. § 253(a), 37 C.F.R. § 42.107(e).
Additionally, upon consideration of the Petition, we conclude the
information presented does not show there is a reasonable likelihood that
Petitioner would prevail in showing the unpatentability of any of the
remaining challenged claims 1-18, 21-36, 39, or 41-46. Accordingly, we do
not authorize an inter partes review to be instituted as to the ’103 patent.
A. Related Proceedings
The parties state that the ’103 patent has been asserted by Patent
Owner against Petitioner in the United States District Court for the District
of Connecticut in Cottingham Agencies, Ltd. v. A.R.M., Inc., Civil Action
No. 13-01603-JCH. Pet. 2; Paper 7, 1.
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anchored to the ground, support head 15 mounted on the tower, and
suspension links 19 suspended from support head 15 for conveying riders 17
through the air about the tower. Id. at 4:63–67.
C. Illustrative Claims
Of the challenged claims, claims 1, 36, 37, 41, 43, and 45 are
independent. Claim 1 is illustrative of the claimed subject matter:
1. An aerial amusement ride comprising:
(a) a column, extending from a base portion to a rider carrier
support portion, said column comprising:
(i) a plurality of elongated members;
(ii) a plurality of struts, said elongated members being
interconnected by said plurality of struts, said elongated
members and said struts forming an open framework
structure with open spaces defined by said elongated
members and said struts, said elongated members
defining at least one support surface, said support surface
extending from points proximate said rider carrier
support portion of said column to points proximate the
base portion of said column,
(b) a hub displaceably mounted on said column, said hub riding
on said at least one support surface, whereby said hub may
be displaced along said column,
(c) a pulley mounted on said column above or proximate said
rider carrier support portion,
(d) a first drive motor,
(e) a cable having a first point on said cable and a second point
on said cable, said cable extending around said pulley, said
cable being coupled at said first point on said cable to said
hub and at said second point on said cable to said first drive
motor,
(f) a support structure mounted for rotation on said hub,
(g) a plurality of rider carriers configured to support riders, and
(h) a plurality of links secured to said support structure at one
link end at a radial distance from the column and to said
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rider carriers at another link end, said links allowing, upon
rotation of said support structure and resultant movement of
said rider carriers around the axis of said column, the rider
carriers to move radially outwards from the column as the
speed of rotation of said support structure increases.

D. Asserted Grounds of Unpatentability
Petitioner contends that claims 1–46 of the ’103 patent are
unpatentable under 35 U.S.C. § 103(a) based on the following grounds:

References Basis Challenged Claims
Walsh1 and Barnstormer2 § 103(a) 1–9, 11, 14–18,
21–33, 37, 38, 40, 45,
and 46
Walsh, Barnstormer, and Spieldiener3 § 103(a) 10, 11, 19, and 20
Walsh, Barnstormer, and Harrap4 § 103(a) 8–13
Walsh, Barnstormer, and Gnezdilov5 § 103(a) 34–36, 39, 41–44,
and 46

1 U.S. Patent No. 1,023,897, issued Apr. 23, 1912 (Ex. 1002, “Walsh”).
2 Petitioner identifies Ex. 1003 as “Barnstormer,” a one page, undated
document depicting an amusement park ride. Like Petitioner, we will refer
to Ex. 1003 as “Barnstormer,” and to the amusement park ride of the same
name as “the Barnstormer ride.”
3 U.S. Patent No. 4,576,373, issued Mar. 18, 1986 (Ex. 1004, “Spieldiener”).
4 U.S. Patent No. 6,126,552, issued Oct. 3, 2000 (Ex. 1005, “Harrap”).
5 U.S. Patent No. 6,592,463 B1, issued Jul. 15, 2003 (Ex. 1006,
“Gnezdilov”).
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II. ANALYSIS
Each of the grounds of unpatentability asserted by Petitioner relies
upon Barnstormer. In its “List of Exhibits,” Petitioner provides citations to
the exhibits relied upon in the Petition, including the following:
Exhibit 1003: Barnstormer (Barnstormer) (Ex. 1003); prior art to
the ’103 patent under 35 U.S.C. §§ 102(b) and 103(a).

Pet. ii. Petitioner further states that:
Both Walsh, issued April 23, 1912, and Barnstormer—
produced, sold, and used by the general public—were public
disclosures more than one year prior of the ’103 patent filing
date. Ex. 1007 is a brochure created prior to the closure of
Opryland Amusement Park in 1997 showing the Barnstormer as
operated and available to the public. The attached Declaration
of David Gill (Ex. 1008) dates the Barnstormer reference to
before the filing date of the ’103 patent.

Pet. 8. Contrary to Petitioner’s assertion, the Declaration of David Gill
makes no mention of Barnstormer, Exhibit 1003. Instead, Mr. Gill states
that “the Barnstormer ride was built by Bradley & Kaye of Long Beach,
California, and installed and operated for the public at various amusement
parks from the late 1970’s into the 1990’s.” Ex. 1008, ¶ 7.
Mr. Gill’s statement does not date Barnstormer to before the filing
date of the ’103 patent. In fact, as opposed to “the Barnstormer ride,”
neither the Petition nor the Declaration of Mr. Gill identifies any date for
Barnstormer, and none appears on the face of the document. See Ex. 1003.
Similarly, Petitioner offers no explanation of the source of Barnstormer, and
provides virtually no argument or evidence in support of the conclusion that
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Barnstormer was a printed publication available as prior art to the ’103
patent.
The scope of inter partes review is limited, as is made clear by
35 U.S.C. § 311(b), which states:
A petitioner in an inter partes review may request to
cancel as unpatentable 1 or more claims of a patent . . . only on
the basis of prior art consisting of patents or printed
publications.

The determination of whether a given reference qualifies as a prior art
“printed publication” involves a case-by-case inquiry into the facts and
circumstances surrounding the reference’s disclosure to members of the
public. In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). The key
inquiry is whether the reference was made “sufficiently accessible to the
public interested in the art” before the critical date. In re Cronyn, 890 F.2d
1158, 1160 (Fed. Cir. 1989); In re Wyer, 655 F.2d 221, 226 (CCPA 1981).
“A given reference is ‘publicly accessible’ upon a satisfactory showing that
such document has been disseminated or otherwise made available to the
extent that persons interested and ordinarily skilled in the subject matter or
art exercising reasonable diligence, can locate it.” Bruckelmyer v. Ground
Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006) (citation omitted).
Although Petitioner has provided evidence that “the Barnstormer ride”
was operated and available to the public before the filing date of the
’103 patent, Petitioner has not provided sufficient evidence to support a
threshold showing that Barnstormer is a printed publication. Petitioner
offers no evidence of a date certain for when Barnstormer was a publication,
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and no evidence that Barnstormer was disseminated or otherwise made
available to the extent that persons interested and ordinarily skilled in the
subject matter or art exercising reasonable diligence, could have located it.
We conclude that Petitioner has not shown sufficiently that Barnstormer is
available as prior art for purposes of inter partes review.
As a result, because each of the grounds of unpatentability asserted by
Petitioner relies upon Barnstormer, we determine that the information
presented does not establish a reasonable likelihood that Petitioner would
prevail in showing that at least one challenged claim of the ’103 patent is
unpatentable based on the asserted grounds.
III. CONCLUSION
For the foregoing reasons, we do not institute an inter partes review
on any of the asserted grounds as to any of the challenged claims of the ’103
patent.
IV. ORDER
Accordingly, it is:
ORDERED that claims 19, 20, 37, 38, and 40 of the ’103 patent have
been disclaimed by Patent Owner pursuant to 35 U.S.C. § 253(a); and,
FURTHER ORDERED that the Petition to institute inter partes
review of the ’103 patent is DENIED, and no trial is instituted.

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PETITIONER:
Scott A.M. Chambers
Matthew J. Laskoski
PATTON BOGGS LLP
2550 M Street, NW
Washington, DC 20037
SChambers@PattonBoggs.com
MLaskoski@PattonBoggs.com

PATENT OWNER:
Anthony H. Handal
Monami Roy
HANDAL & MOROFSKY, LLC
501 Kings Highway East
Fairfield, CT 06825
Handal@handalglobal.com
mroy@handalglobal.com