Athena Automation Ltd.v.Husky Injection Molding Systems Ltd.

Patent Trial and Appeal Board

Jul 23, 2014

08482869 (P.T.A.B. Jul. 23, 2014)

Trials@uspto.gov Paper 51
Tel: 571-272-7822 Entered: July 23, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

ATHENA AUTOMATION LTD.,
Petitioner,
v.
HUSKY INJECTION MOLDING SYSTEMS LTD.,
Patent Owner.

Case IPR2013-00169
Patent 5,624,695

Before JENNIFER S. BISK, MICHAEL J. FITZPATRICK, and
GEORGIANNA W. BRADEN, Administrative Patent Judges.
BISK, Administrative Patent Judge.
FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

IPR2013-00169
Patent 5,624,695
2
I. INTRODUCTION
A. Background
Petitioner Athena Automation Ltd. filed a Petition (Paper 1, “Pet.”) to
institute an inter partes review of claims 1-17 (“the challenged claims”) of
U.S. Patent No. 5,624,695 (Ex. 1001, “the ’695 patent”). 35 U.S.C.
§§ 311-319. Patent Owner Husky Injection Molding Systems Ltd. waived
the filing of a Preliminary Response. Paper 7. On July 30, 2013, the Board
instituted trial (Paper 8, “Decision to Institute”), concluding that Petitioner
had shown a reasonable likelihood of showing that the challenged claims
were unpatentable based on the following grounds:
Reference[s] 1 Basis Claims challenged
Queré § 102 1-11 and 14
Arend § 102 1-4 and 14-17
Arend and Queré § 103 5-13
Arend, Queré, and Kushibe § 103 13
Stüdli § 102 1, 2, and 14-17
Stüdli and Queré § 103 9-13
After institution of trial, Patent Owner filed a Response. Paper 22
(“PO Resp.”). Patent Owner also filed a Motion to Amend claims by
submitting proposed new claims 18-34 for claims 1-17. Paper 24 (“Mot. to
Amend”). Petitioner filed a Reply to the patent owner response (Paper 33,
“Reply”) and an Opposition to Patent Owner’s Motion to Amend (Paper 34,
“Opp. Mot. to Amend”). Patent Owner then filed a Reply in support of its

1 U.S. Patent No. 2,976,569 (Ex. 1002) (“Queré”); U.S. Patent No. 5,417,913
(Ex. 1003) (“Arend”); U.S. Patent No. 2,711,561 (Ex. 1004) (“Stüdli”); and
U.S. Patent No. 4,874,309 (Ex. 1006) (“Kushibe”).
IPR2013-00169
Patent 5,624,695
3
Motion to Amend (Paper 40, “Reply Mot. to Amend”). Oral hearing was
held April 28, 2014, a transcript of which appears in the record. Record of
Oral Hearing, Paper 50 (“Tr.”).
The Board has jurisdiction under 35 U.S.C. § 6(c). This final written
decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
Petitioner has shown, by a preponderance of evidence, that claims
1-17 are unpatentable.
Patent Owner’s Motion to Amend claims is denied.
B. Related Proceedings
The parties simultaneously are involved in two other inter partes
reviews based on patents claiming similar subject matter. IPR2013-00167
involves U.S. Patent No. 5,620,723 (“the ’723 patent”) and IPR2013-00290
involves U.S. Patent No. 7,670,536. The ’695 patent shares much of the
specification of the ’723 patent. In a separate decision, we conclude that
claims 21-37 of the ’723 patent are unpatentable as obvious over
combinations of some of the same references raised in this proceeding:
Queré, Arend, and Stüdli. IPR2013-00167, Paper 51 (“the 2013-00167
Decision”). The Petition in IPR2013-00290 was filed several months after
the other two petitions and is currently scheduled for oral hearing on July 22,
2014.
C. The ’695 Patent
The technology of the ’695 patent is the same as that of the ’723
patent and is described in the 2013-00167 Decision at pages 3-5. For the
purposes of this decision, we adopt that description.
IPR2013-00169
Patent 5,624,695
4
D. Illustrative Claims
Claim 1 is the only independent claim of the ’695 patent. Claims 1,
12, and 13, reproduced below, are illustrative of the claimed subject matter:
1. A securing assembly for use with a first platen of an injection
molding machine, comprising:
means for connecting said first platen to another platen;
and
means for securing said first platen to said means for connecting
and adapted to be attached to said first platen, wherein said
means for securing includes engagement means for placing
said means for securing into and out of locking engagement
with said means for connecting upon rotation of said means
for securing, such that when said engagement means is out
of locking engagement with said means for connecting, said
means for securing and said means for connecting are
relatively movable.
12. The securing assembly according to claim 11,
wherein said first platen is adapted to be forced in a direction for
achieving clamping with said another platen
and wherein said first platen has a bore for receiving said means for
securing,
wherein said means for conveying has an outer surface configured to
form cavities between said outer surface and said bore and has
surfaces extending substantially transversely to said direction,
said cavities for the introduction of pressurized fluid and said
surfaces for the receipt of pressure from said pressurized fluid
thereagainst.
13. The securing assembly according to claim 12, wherein said first
platen is a moveable platen.
IPR2013-00169
Patent 5,624,695
5
II. ANALYSIS
A. Assignor Estoppel
Patent Owner argues that Petitioner is barred from challenging the
validity of the ’695 patent by assignor estoppel. PO Resp. 37-59. Patent
Owner contends that Mr. Robert Schad, one of the named inventors of the
’695 patent, is the founder, co-owner, President, Chief Executive Officer,
and one of two directors on the Board of Directors of Petitioner and is,
therefore, in privity with Petitioner. Id. at 37-39. Thus, according to Patent
Owner, Petitioner is estopped from challenging the patentability of the ’695
patent under the doctrine of assignor estoppel. Id.
We have determined previously, in the related proceeding, IPR2013-
00290, that assignor estoppel is not a basis for denying a petition requesting
inter partes review:
Under the AIA, “a person who is not the owner of a patent may
file with the Office a petition to institute an inter partes review of the
patent.” 35 U.S.C. § 311(a) (emphasis added). Consequently, under
the statute, an assignor of a patent, who is no longer an owner of the
patent at the time of filing, may file a petition requesting inter partes
review. This statute presents a clear expression of Congress’s broad
grant of the ability to challenge the patentability of patents through
inter partes review.
Athena Automation Ltd. v. Husky Injection Molding Sys. Ltd., IPR2013-
00290, slip op. at 12-13 (PTAB Oct. 25, 2013) (Paper 18); see also Palo
Alto Networks, Inc. v. Juniper Networks, Inc., IPR2013-00369, slip op. at
11-14 (PTAB Dec. 19, 2013) (Paper 16).
Patent Owner does not persuade us otherwise in this proceeding.
Specifically, we are not persuaded by Patent Owner’s argument that
37 C.F.R. § 42.101(c), enacted pursuant to 35 U.S.C. §§ 312 and 316,
modifies the broad statutory language of § 311. See PO Resp. 45-50. We
IPR2013-00169
Patent 5,624,695
6
are also not persuaded that § 311(b) limits the scope of § 311(a) to grounds
not subject to assignor estoppel. See PO Resp. 49-50 n.6.
Because we are not persuaded that assignor estoppel, an equitable
doctrine, provides an exception to the statutory mandate that any person who
is not the owner of a patent may file a petition for an inter partes review, we
decline to dismiss this inter partes review based on the doctrine of assignor
estoppel.
B. 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. § 100(b); Office
Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012).
Pursuant to that standard, claim terms are given their ordinary and
customary meaning, as would be understood by one of ordinary skill in the
art in the context of the entire disclosure. In re Translogic Tech., Inc., 504
F.3d 1249, 1257 (Fed. Cir. 2007).
In the Decision to Institute, we adopted Petitioner’s construction of
several claim terms, concluding that they correspond to the plain and
ordinary meaning in the context of the Specification. Decision to Institute
4-5. Although Petitioner did not propose a construction for “movable
platen,” we expressly construed that term as well. Id. at 5. In particular, we
construed “movable platen” as “a platen that, at certain times, is capable of
being moved—i.e. not in a fixed position—relative to a stationary platen and
connecting tie bars.” Id. For all other claim terms not specifically addressed
in the Petition, we applied the plain and ordinary meaning that the term
IPR2013-00169
Patent 5,624,695
7
would have had to a person of ordinary skill in the art, without further
elaboration. Id.
Patent Owner argues “movable platen” should instead be construed as
“a platen that is movable during an injection molding operation” and
“stationary platen” should be construed as “a platen that does not move
during an injection molding operation.” PO Resp. 21-23. Petitioner
disagrees and asserts that the differences between Patent Owner’s proposed
construction and the construction adopted in the Decision to Institute are
irrelevant. Reply 2 n.1. Patent Owner agreed at oral argument that, for this
proceeding, the analysis is the same whether or not we adopt Patent Owner’s
proposed construction. See Tr. 19:1-13.
We agree with the parties that, on this record, either construction of
the term “movable platen” would result in the same patentability analysis.
Therefore, for purposes of this decision, we proceed under the construction
adopted in the Decision to Institute.
C. Claims 5-10
Previously, we considered the Petition and determined it was
reasonably likely that Petitioner would prevail in showing that claims 5-10
are unpatentable as anticipated by Queré and obvious over the combination
of Arend and Queré. Decision to Institute 6-8. We also determined that it
was reasonably likely that Petitioner would prevail in showing that claims 9
and 10 are unpatentable for the additional reason that they are obvious over
the combination of Stüdli and Queré. Id. at 9-10.
Patent Owner argues in its response that claims 5-8 are not obvious
over Arend and Queré and that claims 9 and 10 are not obvious over either
the combination of Arend and Queré or Stüdli and Queré. PO Resp. 33-37.
IPR2013-00169
Patent 5,624,695
8
Patent Owner, however, does not address whether these claims are
anticipated by Queré. Thus, Patent Owner has not directed us to any
argument or evidence to rebut Petitioner’s demonstration that claims 5-10
are unpatentable.
Moreover, during oral argument, Petitioner’s counsel stated that
“[w]ith regard to the ’695 patent, the 169 matter2, Claims 12 and 13 remain
on the table . . . Mr. Robinson noted in the . . . conference call on Friday that
the other claims have all been waived.” Tr. 5:4-7. In response, Patent
Owner’s counsel stated that “I agree with Mr. Schmitt with regard to the
original claims at issue, [for the] ’695 patent, we’re talking about Claims 12
and 13.” Id. at 17:23-24. Patent Owner’s counsel also conceded that “it
turns out upon closer scrutiny, while there’s an individual preferred
embodiment that’s represented by some of the dependent claims, including
the ones we’re talking about here today, some of the broader features were
shown . . . 40 years before the patent was actually filed.” Id. at 17:11-18.
To the extent that any of Patent Owner’s arguments presented for the
patentability of claims 12 and 13 are also applicable to the patentability of
claims 5-10, we are not persuaded for the reasons discussed below. Thus,
the preponderance of the evidence, including the findings of fact and
reasoning set forth in our Decision to Institute, indicate that these claims are
unpatentable as anticipated by Queré. We do not address the proposed
grounds of obviousness for claims 5-10. Accordingly, based on the record
before us, we conclude that a preponderance of the evidence demonstrates
that claims 5-10 are unpatentable as anticipated by Queré.

2 Referring to case caption IPR2013-00169.
IPR2013-00169
Patent 5,624,695
9
D. Claims 1-4, 11, and 14-17
Previously, we considered the Petition and determined it was
reasonably likely that Petitioner would prevail in showing that claims 1-4,
11, and 14-17 are unpatentable based on multiple grounds. Decision to
Institute 6-10. As noted above, Patent Owner did not file a Preliminary
Response in this proceeding and its Response addresses only claims 5-10,
12, and 13. See PO Resp. 23-37. Thus, Patent Owner has not directed us to
any argument or evidence to persuade us that Petitioner fails to demonstrate
that claims 1-4, 11, and 14-17 are unpatentable. Moreover, as described in
more detail above, during oral argument, Patent Owner’s counsel clarified
that Patent Owner is arguing patentability of only claims 12 and 13.
To the extent that any of Patent Owner’s arguments presented for the
patentability of claims 12 and 13 are also applicable to claims 1-4, 11, and
14-17, we are not persuaded for the reasons discussed below. Thus, the
preponderance of the evidence, including the findings of fact and reasoning
set forth in our Decision to Institute, indicate that these claims are
unpatentable.
Accordingly, based on the record before us, we conclude that a
preponderance of the evidence demonstrates that claims 1-4, 11, and 14-17
are unpatentable based on the following grounds:
(1) claims 1-4, 11, and 14 are anticipated by Queré;
(2) claims 1-4 and 14-17 are anticipated by Arend;
(3) claim 11 is obvious over Arend and Queré;
(4) claims 1, 2, and 14-17 are anticipated by Stüdli; and
(5) claim 11 is obvious over Stüdli and Queré.
IPR2013-00169
Patent 5,624,695
10
E. Claims 12 and 13
Claims 12 and 13 indirectly depend from independent claim 1. PO
Resp. 23-37. For the reasons discussed below, we conclude that a
preponderance of the evidence demonstrates that these claims are
unpatentable.
1. Overview of Arend
Arend is described in the 2013-00167 Decision at pages 17-19. For
the purposes of this decision, we adopt that description.
2. Overview of Queré
Queré is described in the 2013-00167 Decision at pages 10-12. For
the purposes of this decision, we adopt that description.
3. Alleged Obviousness over Arend, Queré, and Kushibe
Petitioner asserts that claims 12 and 13 are obvious over the
combination of Arend and Queré, and claim 13 is also obvious over the
combination of Arend, Queré, and Kushibe. Pet. 35-44. In particular,
Petitioner asserts that Arend discloses every limitation of claims 12 and 13
except (1) means for securing “comprises a piston positioned coaxially
relative to said means for connecting,” (2) “means for securing further
comprises means for conveying a clamping force to said first platen,” and
(3) “wherein said first platen has a bore for receiving said means for
securing” (“the bore limitation”). Id. at 36-37. Petitioner relies on Queré as
disclosing these limitations. Id.
In addition, for claim 13, Petitioner argues that, depending on the
construction of “movable platen,” Arend’s platen 16 would meet claim 13’s
limitation that “said first platen is a movable platen.” Pet. 42-43. Petitioner
alternatively relies on Kushibe, cited in the ’695 patent (Ex. 1001, 1:13-17,
26-30), to show that a person of ordinary skill in the art would find it an
IPR2013-00169
Patent 5,624,695
11
obvious design choice to make platen 16 movable as recited in claim 13.
Pet. 42-43.
Regarding the bore limitation, Petitioner concedes that Arend does not
disclose that the bore is within platen 16, because Arend discloses modified
cam nut 134 positioned within annular sleeve 128, which is secured to a rear
surface of platen 16 by fasteners 130. Id. at 37-38. According to Petitioner,
it would have been obvious to integrate part or all of sleeve 128 with platen
16, as opposed to being attached externally, to reduce part count, without
any effect on the function of platen 16. Id. Such integration would result in
the bore limitation—platen 16 having the bore of sleeve 128. Id.
As discussed above, we have already determined that both Queré and
Arend each disclose every limitation of claim 1, from which claims 12 and
13 depend. Regarding the limitations added by claims 12 and 13, Patent
Owner addresses only the bore limitation, arguing that Arend does not
disclose this limitation, because tie rod locks 126 are attached to platen 16,
but are not “within a platen.” PO Resp. 25. We note that claim 12, which
recites the bore limitation, does not use the language within the platen, but
instead recites that “said movable platen has bores for receiving said means
for securing” (emphasis added). Even assuming, as both parties appear to
do, that claims 12 and 13 require the bore to be within the platen, we agree
with Petitioner that a person of ordinary skill would have found it obvious,
based on the disclosure in Arend and Queré, to locate the bore within platen
16.
Patent Owner argues that modification of Arend to make sleeve 128
of tie rod locks 126 integral with platen 16, as suggested in the Petition,
would prevent installation of cam nuts 134 within the sleeves 128. Id. at 26-
IPR2013-00169
Patent 5,624,695
12
27 (citing Ex. 2006 ¶ 29). Thus, according to Patent Owner, the suggested
modification would make the resulting machine inoperable. PO Resp. 27-28
(citing Ex. 2006 ¶ 30). In support of this argument, Patent Owner’s
declarant, Frederick G. Steil, testifies that Arend, modified as suggested,
would be inoperable due to the disparate relative diameters of the
components. Ex. 2006 ¶¶ 30-33. Further, changing the size to permit the
modification would result in a platen 16 that is difficult and costly to
manufacture. Id. Petitioner replies that a person of ordinary skill would
have found it an obvious design choice to size the components of Arend
appropriately to produce an embodiment meeting the bore limitation. Pet.
38; Reply 2-3.
We agree with Petitioner. Patent Owner does not assert that there are
more than two obvious locations for securing the bore—either within the
platen or attached to the platen. Nor does Patent Owner point to persuasive
evidence that the particular location of the bore would achieve any novel or
unexpected results. Finally, Patent Owner does not point to persuasive
evidence that a person of ordinary skill would have been discouraged from
making the modification because of the size issue. Moreover, Stüdli
explicitly discloses this limitation, as described in more detail below,
evidencing that at the time of the invention a person of ordinary skill in the
art would have known to locate a bore in the platen. See Ex. 1004, Fig. 7.
Thus, we are persuaded that the location of the bore using appropriately
sized components would have been an obvious design choice within the
abilities of a person of ordinary skill. See KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 421 (2007) (“A person of ordinary skill is also a person of
ordinary creativity, not an automaton.”); In re Sovish, 769 F.2d 738, 742
IPR2013-00169
Patent 5,624,695
13
(Fed. Cir. 1985) (affirming a rejection of obviousness when modifying one
reference with a component of another reference required “no more change
than to make it the right size”).
We are not persuaded by Mr. Steil’s testimony that integration of
elements would increase the complexity of the design and the cost of
manufacturing. See Ex. 2006 ¶¶ 31-33; Medichem S.A. v. Rolabo, S.L., 437
F.3d 1157, 1165 (Fed. Cir. 2006) (“[A] given course of action often has
simultaneous advantages and disadvantages, and this does not necessarily
obviate motivation to combine.”). Moreover, Patent Owner does not point
to persuasive evidence that a person of ordinary skill would have been
discouraged from making the modification or found such modification not
obvious because of this increased expense. See, e.g., Tr. 25-26. Merely
knowing that the integration would cause increased expense does not
indicate whether such integration would not have been obvious to persons of
ordinary skill in the art. Orthopedic Equip. v. United States, 702 F.2d 1005,
1013 (Fed. Cir. 1983) (“[T]he fact that the two disclosed apparatus would
not be combined by businessmen for economic reasons is not the same as
saying that it could not be done because skilled persons in the art felt that
there was some technological incompatibility that prevented their
combination.”). In light of the disclosures of Arend and Queré, we are not
persuaded that a potential increase in cost of machining complexity changes
the fact that a person of ordinary skill in the art would have found obvious
the minimal modification of integrating the two components.
Finally, to the extent that Patent Owner argues that (1) Queré does not
show a cavity for pressurized fluid within the bore and improperly only
accommodates mold sections that have the same shut height, or
IPR2013-00169
Patent 5,624,695
14
(2) modification of Queré to include the bore limitation would be inoperable
because it would not include these features, we do not find these arguments
persuasive.3 See Tr. 23-24; Ex. 2006 ¶¶ 16-22. Claims 12 and 13 do not
recite a cavity for pressurized fluid within the bore or that the claimed
machine must accommodate mold sections with different shut heights. See,
e.g., Tr. 37.
We conclude that a preponderance of the evidence demonstrates that
claims 12 and 13 are unpatentable based on the combination of Arend and
Queré and claim 13 is unpatentable based on the combination of Arend,
Queré, and Kushibe.
4. Overview of Stüdli
Stüdli is described in the 2013-00167 Decision at pages 22-24. For
the purposes of this decision we adopt that description.
5. Alleged Obviousness over Stüdli and Queré
Petitioner asserts that Queré discloses all the limitations of claims 12
and 13 except the bore limitation and that a person of ordinary skill in the art
would find it obvious to modify Queré in light of Stüdli’s disclosure of a
bore located within a platen in order to reduce part count.4 Pet. 57-60.

3 Patent Owner’s Response does not present these arguments. See PO Resp.
25-30. We address them solely because Patent Owner’s declaration
testimony and oral argument, which referred to these features, do not clearly
identify what, precisely, Patent Owner’s arguments are or to what specific
grounds they apply. See, e.g., Tr. 23-24; Ex. 2006 ¶¶ 16-22.
4 Petitioner alternatively argues that Stüdli discloses every limitation of
claims 12 and 13 except “the means conveying a clamping force to said
platens for clamping said platens during injection molding” and relies on
Queré for disclosing this limitation. Pet. 52-57. Because we find that claims
12 and 13 are obvious based on the argument addressed here, we do not
reach Petitioner’s alternative argument.
IPR2013-00169
Patent 5,624,695
15
Specifically, Petitioner asserts that a person of ordinary skill would have
found it an obvious design choice to have made part or all of pressure
cylinder 9, which includes bore B, integral with block 7. Id. at 57-58 (citing
Ex. 1006 ¶ 11). As discussed above, we have already determined that Queré
discloses every limitation of claims 1 and 11, from which claims 12 and 13
depend. Also discussed above, we agree (1) that Stüdli discloses a bore
within a platen, and (2) that the location of the bore is an obvious design
choice within the abilities of a person of ordinary skill. See KSR, 550 U.S. at
421.
Patent Owner argues that this particular combination would not have
been obvious, because it would increase the complexity and manufacturing
cost of the resulting machine. PO Resp. 30-33 (citing Ex. 2006 ¶¶ 10-15).
We are not persuaded by this argument for the reasons discussed above with
respect to the combination of Arend and Queré. More specifically, merely
knowing that the integration would cause increased expense or machining
complexity does not indicate whether such integration would have been
nonobvious to persons of ordinary skill in the art. On this record, we are
persuaded that, despite a potential increase in cost and machining
complexity, a person of ordinary skill in the art would have found obvious
the modification of Queré by relocating pressure cylinder 9, including bore
B, within block 7.
We conclude that a preponderance of the evidence demonstrates that
claims 12 and 13 are unpatentable based on the combination of Stüdli and
Queré.
IPR2013-00169
Patent 5,624,695
16
F. Patent Owner’s Motion to Amend Claims
Because we determine that claims 1-17 are unpatentable we turn to
Patent Owner’s contingent request to enter proposed, amended claims 18-34.
In its Motion to Amend, Patent Owner proposes replacements for each of the
challenged claims. At oral argument, however, Patent Owner stated that it is
only interested in pursuing proposed claims 29 and 30, the proposed
substitutes for claims 12 and 13. Tr. 18:1-6, 49:14-16. Thus, we explicitly
address only proposed claims 29 and 30.
Proposed claims 29 and 30, reproduced below5 with underlining to
indicate additions and strikethrough to indicate deletions from claims 12 and
13 of the issued ’695 patent, recites:
29. (Proposed Conditional Substitute for Challenged Claim 12)
A securing assembly for use with a first platen of an injection molding
machine, comprising:
a securing assembly for use with a first platen of an injection molding
machine, comprising;
means for connecting said first platen to said means for connecting
and adapted to be attached to said first platen,
wherein said means for securing includes engagement means for
placing said means for securing into and out of locking engagement
with said means for connecting upon rotation of said for securing,
such that when said engagement means is out of locking engagement
with said means for connecting, said means for securing and said
means for connecting are relatively movable;
wherein said means for securing includes a first cylindrical portion, a
second cylindrical portion, and a tapered portion extending between
and connecting said first cylindrical portion and said second
cylindrical portion, said first cylindrical portion including a larger

5 For purposes of our analysis, we have rewritten proposed claim 29 in
independent form such that it includes the content of proposed claims 28 and
18 from which claim 29 depends.
IPR2013-00169
Patent 5,624,695
17
diameter than said second cylindrical portion and being disposed
farther from the other of said movable platen and said stationary
platen than said second cylindrical portion;
wherein said means for securing further comprises means for
conveying a clamping force to said first platen for clamping said first
platen to said another platen during injection molding;
wherein said first platen is adapted to be forced in a direction for
achieving clamping with said another platen
and wherein said first platen has a bore for receiving said means for
securing, wherein said means for conveying has an outer surface
including said tapered surface and surfaces extending substantially
transversely to said direction configured to form cavities between said
outer surface and said bore and has surfaces extending substantially
transversely to said direction, said cavities for the introduction of
pressurized fluid and said surfaces for the receipt of pressure from
said pressurized fluid thereagainst.
30. (Proposed Conditional Substitute for Challenged Claim 13) The
securing assembly according to claim 1229, wherein said first platen
is a movable platen.
During an inter partes review, we enter proposed amended claims
only upon a showing that the amended claims are patentable. Idle Free Sys.
v. Bergstrom, Inc., IPR2012-00027, slip op. at 33 (PTAB Jan. 7, 2014)
(Paper 66). This burden may not be met merely by showing that the
proposed claims are distinguished over the prior art references applied to the
original patent claims. Instead, because there is no examination of the
proposed claims, the patent owner must show that the subject matter recited
is not taught or suggested by the prior art in general for us to determine that
they comply with 35 U.S.C. §§ 102 and 103. Id.
Patent Owner argues that the securing assemblies recited in the
proposed claims 29 and 30 are patentable over Queré, because Queré fails to
disclose a coupling sleeve that includes a tapered portion that extends
IPR2013-00169
Patent 5,624,695
18
between and connects first and second cylindrical portions (“the tapering
limitation”). Mot. to Amend 3 (citing Ex. 2013 ¶ 8). Although it is Patent
Owner’s burden to show patentability over the prior art in general, Patent
Owner does not assert, or direct us to evidence, that the claimed securing
assemblies were novel over other securing assemblies known in the art.
Instead, Patent Owner focuses only on the disclosure of Queré. Patent
Owner does not direct us to evidence, such as the testimony of one of at least
ordinary skill in the art, that it is unaware of any other anticipatory art. See
Tr. 50:22-51:12. Nor does Patent Owner direct us to evidence that the
proposed claim would not have been obvious over Queré either alone or in
combination with another prior art reference. Id. at 51:17-22. Accordingly,
Patent Owner has not met the burden it undertook by putting forth proposed
amended claims.
In any event, even if Patent Owner’s burden was to show patentability
over only the prior art of record, we would not be persuaded that the
proposed claims are patentable, because Patent Owner addresses only
whether Queré anticipates the newly claimed injection molding machine, not
whether ordinarily skilled artisans would have considered Queré to render
the newly claimed securing assemblies obvious.
To argue for patentability of the proposed claim, Patent Owner’s
Motion argues that Queré fails to disclose a coupling sleeve that includes a
tapered portion that extends between and connects first and second
cylindrical portions. Mot. to Amend 2-3 (citing Ex. 2013 ¶ 8). Petitioner, in
response, argues that claims 29 and 30 are obvious over a combination of
Queré and one of U.S. Patent No. 2,916,768 (Ex. 1014; “Queré II”), U.S.
IPR2013-00169
Patent 5,624,695
19
Patent No. 4,285,384 (Ex. 1015; “Wunder”), and U.S. Patent No. 5,061,175
(Ex. 1016, “Iwamoto”). Opp. Mot. to Amend 2-5.
Petitioner points to Figure 2 of Queré II as disclosing sleeve 8 having
a first cylindrical portion and a tapered portion extending from that portion
to a smaller diameter end portion. Id. In support of this assertion,
Petitioner’s declarant, Mr. Link, testifies that “Queré II discloses an injection
molding machine very similar to that disclosed in Queré and includes” (Ex.
1019 ¶ 6) the tapering limitation, pointing to an annotated version of Figure
2 of Queré II, reproduced below.

Annotated Figure 2, above, points to a portion of sleeve 8 as meeting the
tapering limitation. Ex. 1019 ¶¶ 5-6. Mr. Link also testifies that a tapered
transition portion on the outer surface of a sleeve is disclosed in Figure 7 of
Wunder and Figure 1 of Iwamoto, both reproduced below.
IPR2013-00169
Patent 5,624,695
20

Annotated Figures 7 and 1, above, each point to a portion of a sleeve as
including the tapering limitation. Id. at ¶¶ 7-8. In addition, Mr. Link
testifies that “a person of ordinary skill in the art reading the ’695 patent
would understand that the ’695 patent teaches that the tapered shape of the
transitional portion 59a is not critical to the claimed device and [is] merely a
IPR2013-00169
Patent 5,624,695
21
matter of design choice.” Id. at ¶ 9. Mr. Link adds that “the shape chosen
for the corresponding transitional portion 59a of piston 44a also is not
critical and could be any number of different shapes without affecting the
piston’s function.” Id. at ¶ 10.
Patent Owner argues in reply that Petitioner does not provide a
rationale for combining Queré II, Wunder, or Iwamoto with Queré. Reply
Mot. to Amend 4-5. Patent Owner also argues that Petitioner improperly
picks and chooses the added elements from the secondary references even
though the structures perform a different function than the claimed securing
means. Id. at 4.
We are not persuaded, by either of Patent Owner’s arguments, that the
injection molding machine of the proposed claim is patentable under
35 U.S.C. § 103. We credit Mr. Link’s testimony that a person of ordinary
skill in the art would have found it an obvious design choice to substitute the
tapered shape disclosed in Queré II, Wunder, or Iwamoto between the
cylindrical portions of coupling sleeve 8 of Queré. Ex. 1019 ¶ 9. We also
credit Mr. Link’s testimony that such substitution would not affect the
machine’s function. Id. at ¶ 10. Patent Owner does not assert that this
substitution would achieve any novel or unexpected results. Nor does Patent
Owner point to any persuasive evidence that a person of ordinary skill would
have been discouraged from making such a substitution. Thus, we are
persuaded that modifying Queré as disclosed in Queré II, Wunder, or
Iwamoto to achieve the tapering limitation would be an obvious design
choice within the abilities of a person of ordinary skill. See KSR, 550 U.S. at
421 (“A person of ordinary skill is also a person of ordinary creativity, not
an automaton.”).
IPR2013-00169
Patent 5,624,695
22
Thus, we are not persuaded that proposed claims 18-34 are patentable
over a combination of Queré and one of Queré II, Wunder, or Iwamoto.
III. CONCLUSION
Petitioner has shown, by a preponderance of the evidence, that the
challenged claims are unpatentable based on the following grounds:
(1) claims 1-11 and 14 are anticipated by Queré; (2) claims 1-4 and 14-17
are anticipated by Arend; (3) claims 11-13 are obvious over Arend and
Queré; (4) claim 13 is obvious over Arend, Queré, and Kushibe; (5) claims
1, 2, and 14-17 are anticipated by Stüdli; and (6) claims 11-13 are obvious
over Stüdli and Queré.
Patent Owner has not shown that its proposed substitute claims 18-34
are patentable over the prior art.
Accordingly, it is
ORDERED that claims 1-17 of the ’695 patent are determined to be
unpatentable;
FURTHER ORDERED that Patent Owner’s Motion to Amend Claims
is denied;
FURTHER ORDERED that, because this is a final written decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

IPR2013-00169
Patent 5,624,695
23
PETITIONER:

Marshall J. Schmitt
Martin Stern
Edward Evans
Gilberto E. Espinoza
Michael Best & Friedrich, LLP
mjschmitt@michaelbest.com
mlstern@michaelbest.com
ejevans@michaelbest.com
geespinoza@michaelbest.com

PATENT OWNER:

Matthew Cutler
Bryan Wheelock
Douglas Robinson
Matthew Szalach
Harness Dickey & Pierce, PC
mcutler@hdp.com
bwheelock@hdp.com
drobinson@hdp.com
mszalach@hdp.com

lp