Autel Robotics USA LLC

Patent Trials and Appeals Board

May 14, 2020

PGR2019-00014 (P.T.A.B. May. 14, 2020)

Trials@uspto.gov Paper 33
571.272.7822 Date: May 14, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SZ DJI TECHNOLOGY CO., LTD.,
Petitioner,

v.

AUTEL ROBOTICS USA LLC,
Patent Owner.
____________

PGR2019-00014
Patent 9,979,000 B2
____________

Before ERICA A. FRANKLIN, JENNIFER MEYER CHAGNON, and
AVELYN M. ROSS, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
35 U.S.C. § 328(a)
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INTRODUCTION
This is a Final Written Decision in a post-grant review of claims 1–12
of U.S. Patent No. 9,979,000 B2, Ex. 1001 (“the ’000 patent”). We have
jurisdiction under 35 U.S.C. § 6, and enter this Decision pursuant to
35 U.S.C. § 328(a) and 37 C.F.R. § 42.3. For the reasons set forth below,
we determine that SZ DJI Technology Co., Ltd. (“Petitioner”) has shown, by
a preponderance of the evidence, that the challenged claims are
unpatentable. See 35 U.S.C. § 326(e) (2018).
A. Procedural History
Petitioner filed a Petition requesting post-grant review of claims 1–12
of the ’000 patent. Paper 8 (Corrected Petition, “Pet.”). Autel Robotics
USA LLC (“Patent Owner”) did not file a Preliminary Response to the
Petition. On May 22, 2019, pursuant to 35 U.S.C. § 324(a), we instituted
trial to determine whether the challenged claims are unpatentable on the
grounds raised in the Petition. Paper 9 (“Dec.”). Patent Owner filed a
Patent Owner’s Response on August 27, 2019. Paper 18 (“PO Resp.”).
Petitioner filed a Reply to the Patent Owner’s Response on November 22,
2019. Paper 23 (“Pet. Reply”). Patent Owner filed a Sur-Reply on
December 30, 2019. Paper 24 (“PO Sur-Reply”).
On February 20, 2020, the parties presented arguments at an oral
hearing. Paper 27. The transcript of the oral hearing has been entered in the
record. Paper 32 (“Tr.”).
B. Real Parties in Interest
Petitioner identifies its real parties in interest as SZ DJI Technology
Co., Ltd., DJI Europe B.V., DJI Technology, Inc., iFlight Technology
Company Limited, DJI Japan K.K., and DJI Research LLC. Pet. 1. Patent
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Owner identifies its real party in interest as Autel Robotics USA LLC.
Paper 4, 2.
C. Related Matters
The parties provide notice of the following matter involving the ’000
patent before the U.S. International Trade Commission: Certain Unmanned
Aerial Vehicles and Components Thereof, 337-TA-1133 (ITC). Pet. 2;
Paper 4, 2. Petitioner provides notice of the following district court
proceeding involving the ’000 patent: “SZ DJI Technology Co. Ltd., et al. v.
Autel Robotics USA LLC, et al., DED-1-16-cv-00706.” Pet. 2. Patent
Owner refers to the district court proceeding as: “SZ DJI Tech. Co Ltd. et al.
v. Autel Robotics USA LLC et al., C.A. No. 16-706-LPS-CJB (consolidated)
(D. Del.).” Paper 29, 2. The parties note also that an application related to
the ’000 patent, U.S. Patent Application 15/598,914, is pending before the
Office. Pet. 2, Paper 4, 2. We note that application later issued as U.S.
Patent No. 10,224,526, on March 5, 2019.
D. The ’000 Patent
1. Eligibility for Post-Grant Review
Post-grant review is available only for patents “described in section
3(n)(1)” of the Leahy-Smith America Invents Act (“AIA”), Pub L. No.
112-29, 125 Stat. 284 (2011). AIA § 6(f)(2)(A) (2011). Those are patents
that issue from applications “that contain[] or contained at any time . . . a
claim to a claimed invention that has an effective filing date in section
100(i) of title 35, United States Code, that is on or after” “the expiration of
the 18-month period beginning on the date of the enactment of” the AIA.
See AIA § 3(n)(1). The AIA was enacted on September 16, 2011,
therefore, post-grant review is available only for patents that, at any point,
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contained at least one claim with an effective filing date, as defined by 35
U.S.C. § 100(i), on or after March 16, 2013.
The earliest possible filing date for the ’000 patent is December 14,
2015, which falls after the March 16, 2013 date. See Ex. 1001, 1:10–13;
see also Pet. 3 (asserting that the earliest possible priority date of the ’000
patent is December 14, 2015); PO Resp. 2 (asserting that the ’000 patent
claims a priority date of December 14, 2015).
The AIA also requires the petition for post-grant review to be filed
within nine months of the issue date of the challenged patent. 35 U.S.C.
§ 321(c) (2018). The ’000 patent issued on May 22, 2018. Ex. 1001,
code (45). The Petition has been accorded a filing date of November 11,
2018, Papers 6, 7 (correcting the date accorded), which is within the nine-
month window. Thus, Petitioner has timely filed the Petition.
Accordingly, we determine that the ’000 patent is eligible for post-
grant review.
2. Patent Specification
The ’000 patent describes an unmanned aerial vehicle and,
particularly, a battery used for the vehicle. Ex. 1001, 1:18–20. The
Specification explains that “[i]n prior arts, a main body of the unmanned
vehicle offers a cavity for accommodating the power of the unmanned aerial
vehicle, such as a lithium battery.” Id. at 1:39–41. A sealing board set in an
opening of the cavity of the unmanned vehicle would be employed to fasten
the battery, thereby preventing it from dropping from the cavity during
flight. Id. at 1:42–44. “The sealing board is usually fixed to the main body
of the unmanned aerial vehicle by screws, bolts or other fasteners.” Id. at
1:45–46. Those screws, bolts, or fasteners would need to be loosened before
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changing the battery, and then tightened after changing the battery, thus
making it inconvenient to change a battery. Id. at 1:47–50.
The Specification explains that the present invention seeks to
overcome defects that cause the inconvenience in changing the battery. Id.
at 1:54–57. In particular, the Specification states that “because a clamp
button is configured on one end of the shell, the battery is capable of
detachably connecting with the main body of the unmanned aerial vehicle
which makes the changing of the battery [] more convenient.” Id. at 2:44–
47. Additionally, “the inner side of the clamp button is configured [with] a
restorable elastic piece for realizing the clamp button returning back to [its]
original place automatically.” Id. at 2:48–51.
Figure 1 of the ’000 patent is reproduced below:

Figure 1 depicts a disassembled structure diagram of an unmanned
aerial vehicle (“UAV”) in an embodiment of the invention. Id. at 2:62–64.
The vehicle includes UAV main body 1 and UAV battery 2, shown removed
and away from the UAV opening of battery compartment 11. Id. at 3:35–37,
4:53–56.
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Figure 2 of the ’000 patent is reproduced below:

Figure 2 depicts a diagram of a battery used for an unmanned aerial
vehicle in an embodiment of the invention. Id. at 2:65–67. The battery
includes battery body 21 and shell 22 disposed on one end of the battery
body. Id. at 3:43–46. Clamp button 221 is configured on a side of the shell,
opposite the UAV. Id. at 3:45–46. One end 221a of the clamp button is
fixed to the shell, and the other end 221b of the clamp button is used to
detachably connect the UAV. Id. at 3:46–49. End 221b of the clamp button
has hook 2211 for detachably hanging on the UAV. Id. at 3:50–52.
Anti-slip structure 2212 is configured on the outer surface of the
clamp button to increase “touching friction” of the clamp button and to
prevent slipping upon touching by a user. Id. at 3:61–66. Restorable elastic
piece 222 is disposed on an inner side of the clamp button, wherein one end
of the piece connects to the shell and the other end abuts the clamp button.
Id. at 4:5–10. The battery’s restorable elastic piece is “for realizing the
clamp button 221 returning to [its] original position automatically.” Id. at
4:1–4.
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E. Illustrative Claim
Petitioner challenges claims 1–12. Claim 1, the only independent
claim, is illustrative and reads as follows:
1. A multi-rotor unmanned aerial vehicle, comprising:
a main body comprising a battery compartment;
four arms, wherein each arm is coupled to the main body;
a propulsion assembly disposed on the each arm, wherein
the propulsion assembly comprises a propeller and a motor,
the motor being configured to drive the propeller to rotate in
order to generate lift force;
a battery accommodated in the battery compartment, and
the battery comprising a shell and a battery body disposed in
the shell;
a clamp button disposed on the shell, wherein one end of
the clamp button is mounted on the shell and the other end of
the clamp button is detachably coupled to the main body; and
a restorable elastic piece disposed on an inner side of the
clamp button;
wherein one end of the restorable elastic piece is disposed on
the shell and the other end of the restorable elastic piece is
fixed with the clamp button:
wherein the battery compartment comprises a clamping
portion configured to detachably connect to the clamp
button;
wherein the clamp button is configured to cause the
restorable elastic piece to be pressed down in a first state
where the battery is not completely pushed into the battery
compartment or is only partially positioned in the battery
compartment;
wherein in a second state where the battery is completely
pushed or positioned into the battery compartment,
the restorable elastic piece is configured to automatically
rebound so that (a) the clamp button is able to return back
to its original place and (b) the battery is able to be stuck by
the cooperation of the clamping portion and the clamp
button.

Ex. 1001, 5:35–6:16.
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F. Prior Art and Asserted Grounds
We instituted review of claims 1–12 of the ’000 patent on the
following asserted grounds:

Petitioner also relies on the Corrected Declaration (Ex. 1003) and
Reply Declaration (Ex. 1049) of Juan J. Alonso, Ph.D. Patent Owner relies
upon the Declaration of Charles F. Reinholtz (Ex. 2001).
ANALYSIS
A. Legal Standards
We analyze the asserted grounds of unpatentability in accordance with
the following principles.

1 Phantom 2 Vision+ User Manual (EN) v. 1.4, Aug. 15, 2014 (Ex. 1029)
(“Phantom 2 Manual”).
2 Kondo et al., U.S. Patent 5,769,657, issued June 23, 1998 (Ex. 1008)
(“Kondo”).
3 Saika et al., US 2017/0001721, published Jan. 5, 2017 (Ex. 1006)
(“Saika”).
4 Ichiba, JP 2007-123082, published May 17, 2007 (Ex. 1009), English
Translation (Ex. 1010) (“Ichiba”).
5 Phelps et al., U.S. Patent 6,136,467, issued Oct. 24, 2000 (Ex. 1011)
(“Phelps”).
Claims Challenged 35 U.S.C. § References/Basis
1–12 103 Phantom 2 Manual,1 Kondo2

1–9, 12 103 Saika,3 Ichiba4

10, 11 103 Saika, Ichiba, Phelps5
1–12 112(b) Indefiniteness
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1. Obviousness
As set forth in 35 U.S.C. § 103,
[a] patent for a claimed invention may not be obtained . . . if the
differences between the claimed invention and the prior art are
such that the claimed invention as a whole would have been
obvious before the effective filing date of the claimed invention
to a person having ordinary skill in the art to which the claimed
invention pertains.

35 U.S.C. § 103 (2018). The question of obviousness is resolved on the
basis of underlying factual determinations, including: (1) the scope and
content of the prior art; (2) any differences between the claimed subject
matter and the prior art; (3) the level of ordinary skill in the art; and (4) if in
the record, objective evidence of nonobviousness. Graham v. John Deere
Co., 383 U.S. 1, 17–18 (1966). Consideration of the Graham factors “helps
inform the ultimate obviousness determination.” Apple Inc. v. Samsung
Elecs. Co., 839 F.3d 1034, 1048 (Fed. Cir. 2016) (en banc).
“An obviousness determination requires finding both ‘that a skilled
artisan would have been motivated to combine the teachings of the prior art
references to achieve the claimed invention, and that the skilled artisan
would have had a reasonable expectation of success in doing so.’” CRFD
Research, Inc. v. Matal, 876 F.3d 1330, 1340 (Fed. Cir. 2017) (quoting
Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367–
1368 (Fed. Cir. 2016)). “The reasonable expectation of success requirement
refers to the likelihood of success in combining references to meet the
limitations of the claimed invention.” Intelligent Bio-Sys., 821 F.3d at 1367.
2. Indefiniteness
“The specification [of a patent] shall conclude with one or more
claims particularly pointing out and distinctly claiming the subject matter
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which the inventor or a joint inventor regards as the invention.” 35 U.S.C.
§ 112(b) (2012). “[A] patent is invalid for indefiniteness if its claims, read
in light of the specification . . . and the prosecution history, fail to inform,
with reasonable certainty, those skilled in the art about the scope of the
invention.” Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2124
(2014); In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014) (holding a
claim is indefinite when it contains words or phrases whose meaning is
“unclear in describing and defining the claimed invention”).
B. Level of Ordinary Skill in the Art
The level of skill in the art is a factual determination that provides a
primary guarantee of objectivity in an obviousness analysis. Al-Site Corp. v.
VSI Int’l Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999) (citing Graham, 383
U.S. at 17–18; Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir.
1991)).
Petitioner describes a person having ordinary skill in the art as
follows:
A person of ordinary skill in the art [] at the time of the alleged
invention would have had the equivalent of a bachelor’s degree
from an accredited institution in aeronautical engineering,
electrical engineering, mechanical engineering, or the
equivalent and at least two years of experience with UAVs. []
Additional graduate education could substitute for professional
experience and significant work experience could substitute for
formal education.
Pet. 19 (citing Ex. 1003 ¶ 20).
In the Institution Decision, we preliminarily adopted Petitioner’s
definition of an ordinarily skilled artisan based upon a determination that it
was sufficiently supported by the record at that time. Dec. 10. In the Patent
Owner Response, Patent Owner asserts that the definition proposed by
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Petitioner is inappropriate “because it references a degree in electrical
engineering.” PO Resp. 9–10. According to Patent Owner,
A person of ordinary skill in the art (“POSA”) at the time of the
invention of the ’000 patent would have had a bachelor’s degree
in mechanical engineering and at least two years of experience
designing mechanisms and mechanical structures of the type
used in releasable couplings and locking devices. (Ex. 2001
¶¶ 30-34.) Additional education could substitute for
professional experience and significant work experience could
substitute for formal education. (Id.)
Id. at 9. In the Reply, Petitioner asserts that Patent Owner’s definition is
overly narrow because it “focus[es] solely on the design of mechanisms and
mechanical structures used in releasable couplings and locking devices.”
Pet. Reply 3. According to Petitioner and Dr. Alonso, “[a]eronautical,
electrical, and mechanical engineers, particularly those working with UAVs,
would naturally work with and understand mechanisms for coupling one
component to another component.” Id. (citing Ex. 1049 ¶ 6). Further
Petitioner and Dr. Alonso assert that Petitioner’s inclusion of a broader set of
engineering fields is “supported by the simplicity of the latching mechanism
claimed in the ’000 patent.” Id. (citing Ex. 1049 ¶ 5).
Petitioner and Patent Owner agree that the differences in their
proposed definitions do not impact Petitioner’s grounds for unpatentability
or Patent Owner’s responsive arguments. Pet. Reply 3; PO Sur-Reply 1.
We agree and note that our consideration of the issues presented does not
turn on which proposed definition is applied. In any event, having
considered the evidence and the arguments, we find Petitioner’s rationale for
its broader description of the level of ordinary skill in the art to be
persuasive and supported by record as a whole. Accordingly, for this
Decision, we adopt Petitioner’s description of a person of ordinary skill in
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the art, while maintaining that the prior art reflects the appropriate level of
skill at the time of the claimed invention. See Okajima v. Bourdeau,
261 F.3d 1350, 1355 (Fed. Cir. 2001).
C. Claim Construction
In a post-grant review involving a petition that was filed before
November 13, 2018, such as here, we interpret a claim in an unexpired
patent based on the broadest reasonable construction in light of the
specification of the patent in which it appears. 37 C.F.R. § 42.100(b)
(2018); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142 (2016)
(affirming applicability of the broadest reasonable construction standard in
Board trial proceedings).6 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. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
2007); TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1062 (Fed. Cir. 2016)
(“Under a broadest reasonable interpretation, words of the claim must be
given their plain meaning, unless such meaning is inconsistent with the
specification and prosecution history.”).
Any special definitions for claim terms must be set forth with
reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d
1475, 1480 (Fed. Cir. 1994).

6 The Final Rule changing the claim construction standard in Board trial
proceedings does not apply here, as the Petition was filed before the rule’s
effective date, November 13, 2018. See Changes to the Claim Construction
Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial
and Appeal Board, 83 Fed. Reg. 51,340, 51,344 (Oct. 11, 2018).
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In the Institution Decision, we provided a preliminary construction of
the single term for which Petitioner proposed a claim construction, i.e.,
“fixed with.” Dec. 8–9. In particular, we determined that, in view of
Specification, the broadest reasonable construction of the claim phrase
“fixed with the clamp button” is “fastened to, attached or placed and not
readily moveable with respect to the clamp button, such that it does not
merely abut against the clamp button nor is it detachably connected to it.”
Id. at 9.
In the Patent Owner Response, Patent Owner asserts that “the term
‘fixed with’ needs no construction here because—whether the Board adopts
Petitioner’s proposal or Patent Owner’s position—the . . . obviousness
analysis will not ultimately be impacted.” PO Resp. 9. In the Reply,
Petitioner agrees with Patent Owner that “the construction of ‘fixed with’ is
not necessary to resolve the controversy in this proceeding.” Pet. Reply 2.
Based upon our review of the record as a whole, we agree that no
claim terms are in controversy with respect to the asserted obviousness
grounds. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
(Fed. Cir. 1999) (only terms that are in controversy need to be construed,
and only to the extent necessary to resolve the controversy). This finding is
consistent with our analysis of the indefiniteness challenge, as discussed
below in Section II.F.
D. Obviousness over the Phantom 2 Manual and Kondo
Petitioner asserts that the combination of the Phantom 2 Manual and
Kondo renders claims 1–12 obvious. Pet. 19–55, Pet. Reply 4–24. Patent
Owner disagrees. PO Resp. 21–28, PO Sur-Reply 2–9.
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1. Phantom 2 Manual
The Phantom 2 Manual is a user manual for the “Phantom 2 Vision+”
UAV. Ex. 1029, 2. The Phantom 2 Manual includes instructions for the
assembly and use of the UAV, and describes the features of the UAV
components, including the battery and battery compartment. Id. at 7–11. In
particular, the Phantom 2 Manual describes the UAV as a “quadrotor” with a
“specialized battery compartment for its flight battery.” Id. at 11.
According to the Phantom 2 Manual, those and other “features make the
Phantom 2 Vision+ easy to assemble and configure.” Id.
Figure 18 of the Phantom 2 Manual is reproduced below:

Figure 18 depicts the Phantom 2 UAV with its four arms and
propellers. Id. at 14. A motor is positioned below each propeller. Id.; see
also id. at 11 (Figure 8, component [2]).
Figures 3, 5, and 7 of the Phantom 2 Manual are reproduced below:

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Figures 3, 5, and 7 each depict the battery used in the Phantom 2
UAV. Id. at 7, 8, 10. The Phantom 2 Manual explains that the battery is
installed by “push[ing the] battery into the battery compartment” as shown
in Figure 7 (arrow). Id. at 10. The Phantom 2 Manual states, “When you
hear a click, the battery has been properly installed.” Id.
2. Kondo
Kondo discloses an “attachment structure which allows a battery pack
including secondary cells to be detachably attached to a battery holder in a
power-driven tool.” Ex. 1008, 1:6–10.
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Figures 3 and 4 of Kondo are reproduced below:

Figure 3 is a cross-sectional view illustrating the attachment structure
of an embodiment of Kondo’s invention. Id. at 7:15–16. Figure 4 is a
partially omitted side view illustrating the attachment structure of the same
embodiment as shown in Figure 3. Id. at 7:16–18. The Specification states,
When the battery pack 10 is inserted upward into the battery
holder 60 fixed to the handle assembly 50 of the power-driven
tool, the pair of stop hooks 18 formed on the lower end of the
battery pack 10 are engaged with curved elements 53 of the
housing members 50a and 50b. The curved element 53 is formed
by bending inward the lower end of each housing member 50a
(50b). Each stop hook 18 arranged in the attachment member 35
is pressed outward by a flat spring 17 and has a hook end 18a
held by a pair of projections 37 as clearly shown in FIG. 4. Once
the stop hooks 18 of the battery pack 10 are engaged with the
curved elements 53 of the handle assembly 50, the engagement
is kept by the pressing force of the flat springs 17.
In this state, the spring terminals 64a and 64b of the battery
holder 60 are fitted in the insertion slots 48a and 48b of the
connection unit 40. Each insertion element 66a (66b) of the
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spring terminal 64a (64b) is pressed inward and received in the
space defined by the inner wall of the U-shaped element 43a and
the upright element 45a of the electrode terminal assembly 41a
(41b). The elasticity of the spring terminals 64a and 64b presses
the insertion elements 66a and 66b thereof against the electrode
terminal assemblies 4la and 4lb. This realizes electrical
connection of the spring terminals 64a and 64b with the electrode
terminal assemblies 41a and 41b and enables the battery pack 10
to be integrally joined with the battery holder 60 of the power-
driven tool.
Id. at 7:18–45 (bold and italics emphasis removed).
3. Analysis
a) Petitioner’s Contentions
In the Petition, Petitioner sets forth in detail how the Phantom 2
Manual discloses a multi-rotor UAV comprising: (1) a main body
comprising a battery compartment, (2) four arms coupled to the main body,
(3) a propulsion assembly comprising a propeller and a motor to drive the
propeller to rotate and generate a lift force, and (4) a battery accommodated
in the battery compartment, wherein the battery comprises a shell and a
battery body disposed in the shell. Pet. 27–30. Petitioner illustrates with a
side-by-side comparison of Figure 1 of the ’000 patent and Figure 18 of the
Phantom 2 Manual how the two UAV’s share the same basic quadcopter
structure. Pet. 28.
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Petitioner’s side-by-side comparison of Figure 1 of the ’000 patent
and Figure 18 of the Phantom 2 Manual is reproduced below:

Phantom 2 Manual, Figure 18 ’000 Patent, Figure 1

Petitioner asserts that both Figure 1 of the ’000 patent and Figure 18
of the Phantom 2 Manual depict a quadrotor, i.e., a UAV having a main
body and four arms, wherein each arm is equipped with a propeller
assembly. Pet. 28; Ex. 1003 ¶ 55. Referring to Figure 7 of the Phantom 2
Manual, set forth above, Petitioner explains that the Phantom 2 Manual
discloses that its UAV includes a “specialized battery compartment for its
flight battery” that is integrated into the side of the main body of the UAV.
Pet. 30 (quoting Ex. 1029, 11). Petitioner also demonstrates the similarity
between the structure of the battery assembly disclosed by the Phantom 2
Manual and the ’000 patent with a side-by-side comparison of a figure from
each reference. Id. at 32.
Petitioner’s side-by-side comparison of annotated versions of Figure 5
of the Phantom 2 Manual and Figure 1 of the ’000 patent is reproduced
below:
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Phantom 2 Manual, Figure 5 ’000 Patent, Excerpt from Figure 1
(annotated) (annotated)

Petitioner asserts that both annotated Figure 5 of the Phantom 2
Manual and Figure 1 of the ’000 patent, above, depict a battery assembly
comprising a shell (shaded orange) and a battery body substantially disposed
in the shell (shaded white). Pet. 31.
Regarding the limitation in claim 1 requiring “a clamp button,
disposed on the shell, wherein one end of the clamp button is mounted on
the shell and the other end of the clamp button is detachably coupled to the
main body,” Petitioner begins by referring to Figures 3 and 5 of the Phantom
2 Manual, set forth above, and asserting that the Phantom 2 Manual
discloses a button disposed on both sides of the battery. Id. at 32–33.
Petitioner acknowledges that “[o]ther than depicting buttons on its battery
package and referencing a ‘click’ sound when the battery is inserted, the
Phantom 2 Manual does not provide details regarding the mechanism used to
latch the battery into the device.” Id. at 21.
To reach the claim limitation requiring a “clamp button,” Petitioner
relies upon Kondo’s disclosure. Id. at 32. In particular, Petitioner asserts
that Kondo’s battery package also includes buttons disposed on both sides,
wherein the battery pack includes a pair of attachment members 35 which
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are each provided with a stop hook 18. Id. (citing Ex. 1008, Fig. 3, 7:15–
31). According to Petitioner, Kondo’s stop hook 18 is a “clamp button”
because it engages, i.e., clamps, with the curved element in the battery
compartment. Id. (citing Ex. 1003 ¶ 81).
Additionally, Petitioner asserts that Kondo’s stop hook mounts on the
shell of its battery pack in a similar manner as shown in the ’000 patent,
wherein one end of the stop hook, or clamp button, has a portion that
couples with a corresponding portion in the battery shell. Id. at 34–35.
Further, Petitioner asserts that Kondo discloses that its stop hook
detachably couples the battery pack to the main body of the portable device
by teaching that “[o]nce the stop hooks 18 of the battery pack 10 are
engaged with the curved elements 53 of the handle assembly 50, the
engagement is kept by the pressing force of the flat springs 17.” Id. at 36
(quoting Ex. 1008, 7:28–31).
Petitioner asserts that Kondo discloses a spring 17 that functions as a
“restorable elastic piece,” because Kondo explains that when force is applied
to the clamp button, spring 17 is pressed inwards to lower the hook end of
stop hook 18, which allows stop hook 18 to move past the curved element of
the battery compartment during insertion or removal of the battery pack. Id.
at 37–38 (citing Ex. 1003 ¶ 85). According to Petitioner and Dr. Alonso,
Kondo’s Figure 3 illustrates that “[w]hen the battery is inserted into the
battery compartment and the external force is removed from the clamp
button, the restoring force of the spring 17 presses the stop hook 18 outward
so that the curved element 53 of the housing engages with hook end 18a.”
Id. (citing Ex. 1003 ¶ 85; Ex. 1008, Fig. 3).
Additionally, Petitioner and Dr. Alonso assert that Kondo’s Figure 3
illustrates that “one end of Kondo’s spring 17 is inserted between the outer
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shell of the battery and a small protrusion of the shell,” so as to meet the
claim limitation requiring that one end of the restorable elastic piece “is
disposed on the shell.” Id. at 39 (citing Ex. 1003 ¶ 86). They assert that
Kondo’s Figure 3 also illustrates that the other end of spring 17 is “bent to
follow the shape of the inner corner of the clamp,” with “no clearance
between the end of Kondo’s spring 17 and the inner surface of the stop hook
18 (‘clamp button’).” Id. at 40 (citing Ex. 1003 ¶ 87). Petitioner asserts,
therefore, that “the fit of the end of the spring with the clamp button is tight
and the force of the spring after installation presses the end of the spring
against the inner surface of the stop hook 18.” Id. According to Petitioner
and Dr. Alonso, “[b]ased on this engagement, the end of spring 17 is placed
(‘disposed’) so as to be firm and not readily moveable relative to the clamp
button after implementation—that is, the spring is ‘fixed with’ the clamp
button,” thereby meeting the claim recitation that the “other end of the
restorable elastic piece is fixed with the clamp button.” Id. (emphasis
omitted).
Petitioner asserts that Kondo’s curved element 53 represents a
“clamping portion,” as claimed, because it is designed to engage with the
hook portion 18a of Kondo’s “clamp button.” Pet. 42. In particular,
Petitioner notes that Kondo states that upon insertion of the battery pack “the
pair of stop hooks 18 formed on the lower end of the battery pack 10 are
engaged with curved elements 53 of the housing members 50a and 50b.” Id.
(quoting Ex. 1008, 7:18–23). According to Petitioner and Dr. Alonso, the
battery pack is removed by “pressing down on the ‘clamp buttons’ (stop
hooks 18) which in turn press spring 17 inwardly to disengage the hook
portion 18a from the curved element of the battery compartment.” Id.
(citing Ex. 1003 ¶ 90) (emphasis omitted). Further, Petitioner demonstrates
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how Kondo’s clamping portion, i.e., curved element 53 shown in Kondo’s
Figure 3, appears to connect to the clamp button in the same manner as
illustrated in Figure 4 of the ’000 patent, such that the combination of the
Phantom 2 Manual and Kondo discloses “the battery compartment
comprises a clamping portion configured to detachably connect to the clamp
button,” as required by claim 1. Id. at 43–44.
The challenged claims also include a requirement for the clamp button
in a first state, wherein the battery is not completely pushed into the battery
compartment, or is only partially pushed into the battery compartment, and
requirements for the restorable elastic piece in a second state, wherein the
battery is completely pushed or positioned into the battery compartment.
Ex. 1001, 6:4–16. Petitioner asserts that the combination of the Phantom 2
Manual and Kondo meets each of those limitations. Pet. 44–48.
Specifically, Petitioner asserts that the combination teaches the
limitation that “the clamp button is configured to cause the restorable elastic
piece to be pressed down in first state where the battery is not completely
pushed into the battery compartment or is only partially positioned in the
battery compartment,” because Kondo teaches that during insertion of the
battery into the battery compartment, “the inward movement of the battery
causes the curved element 53 of the battery compartment to contact the hook
end 18a of Kondo’s stop hook 18 (‘clamp button’) which in turn causes the
spring 17 to press inwards,” and causes the hook end 18a of the Kondo’s
clamp button to move downward. Id. at 45 (citing Ex. 1008, 7:15–31;
Ex. 1003 ¶ 94). According to Petitioner and Dr. Alonso, when the battery
pack is not completely pushed into the battery compartment or is partially
positioned in the battery compartment, spring 17 is in this “pressed down
state.” Id. (citing Ex. 1008, Fig. 3). Similarly, Petitioner asserts that the
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battery is not completely pushed into the battery compartment or is only
partially positioned in such compartment during the removal of the battery
from the battery compartment, which involves a user pressing the clamp
buttons, thereby causing spring 17 to be pressed inward and the hook end
18a to move downward, resulting in the hook portion becoming disengaged
from the curved element 53, i.e., the restorable elastic piece. Id. at 46–47
(citing Ex. 1003 ¶ 95).
Petitioner asserts that the combination teaches the claim limitation
wherein when the battery is completely pushed or positioned into the battery
compartment, “the restorable elastic piece is configured to automatically
rebound so that (a) the clamp button is able to return back to its original
place and (b) the battery is able to be stuck by the cooperation of the
clamping portion and the clamp button.” Id. at 47. Petitioner asserts that
“Kondo explains that when the battery pack 10 is inserted into the portable
device, ‘the pair of stop hooks 18 formed on the lower end of the battery
pack 10 are engaged with curved elements 53 of the housing members 50a
and 50b,’” and states that after the battery is inserted, “the engagement is
kept by the pressing force of the flat springs 17.” Id. (quoting Ex. 1008,
7:18–23, 28–31). According to Petitioner and Dr. Alonso, that means
“spring 17 presses the ‘clamp button’ outwards, restoring it to its original
place when the opposing force is removed from stop hook 18,” and that the
battery is “stuck by the cooperation of the clamping portion and the clamp
button,” as required by claim 1. Id. (citing Ex. 1003 ¶ 96) (emphasis
omitted).
According to Petitioner, a person of ordinary skill in the art would
have been motivated to use Kondo’s battery latching mechanism in the
Phantom 2 UAV because the Phantom 2 Manual does not provide details
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regarding the specific mechanism used to latch the battery into the battery
compartment. Id. at 23. Petitioner asserts that the skilled artisan would have
been motivated to review a reference describing battery latching
mechanisms for portable electronic devices, as provided by Kondo. Id.
Petitioner explains that Kondo’s disclosure directed to a power tool is
analogous art because it addresses a problem with which the inventors of the
’000 patent are involved, i.e., how to latch a battery package into a housing
of an electronic device in a secure, user-friendly manner. Id. at 24.
Additionally, Petitioner asserts that the proposed combination merely
represents a “simple substitution of one element (Phantom 2 Manual’s
battery latch) with another (Kondo’s secure, user-friendly latching
mechanism).” Id. at 26 (citing Ex. 1003 ¶ 67).
b) Patent Owner’s Contentions
Patent Owner does not dispute Petitioner’s assertions regarding the
separate teachings of the Phantom 2 Manual and Kondo. Rather, Patent
Owner’s contentions are directed to Petitioner’s proposed combination of
those teachings to arrive at the claimed subject matter. In one aspect, Patent
Owner contends that Petitioner has not established a motivation to modify
the Phantom 2 Manual at all. PO Resp. 21 (citing Ex. 2001 ¶¶ 58–79).
According to Patent Owner, a skilled artisan seeking details of the
mechanism used to latch the battery or secure the coupling in the Phantom 2
would have “been far more likely to obtain, inspect, and experiment with the
battery latching mechanism on an actual Phantom 2 rather than engaging in
research to find alternatives.” Id. at 22 (quoting Ex. 2001 ¶ 60). Patent
Owner asserts that even if a Phantom 2 was unavailable for such inspection,
Petitioner still has not identified “any problem associated with the Phantom
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2 that would encourage or motivate a POSA to create a more secure latching
mechanism.” Id. at 23 (Ex. 2001 ¶¶ 61–62).
In another aspect, Patent Owner asserts that a person of ordinary skill
in the art would not have looked to Kondo for a mechanism to latch the
battery into the battery compartment of the Phantom 2 because Kondo
describes a hand-held power tool which is a device that is “entirely different
from the Phantom 2 itself and from other UAVs.” Id. at 22 (citing Ex. 2001
¶¶ 29, 68). In support of that contention, Patent Owner asserts that
(1) UAVs and power tools use different types of batteries, (2) UAVs and
power tools are subjected to different service loads, (3) consequences of a
battery becoming dislodged are less consequential for hand-held power tools
than UAVs, (4) reducing weight is a much higher priority when designing
batteries for quadcopter UAVs, (5) there is no basis to believe that synergies
between UAVs and power tools, particularly in battery design, were
recognized at the time of the invention, and (6) power tool batteries and
UAVs have been known for years and yet the spring-loaded latching
mechanisms for power tools had not been combined with UAVs. Id. at 23–
28.
c) Petitioner’s Reply
Regarding Patent Owner’s assertion that a person of ordinary skill in
the art would not have had a reason to modify the Phantom 2 Manual
because the skilled artisan would have been more likely to look to the actual
Phantom 2 rather than engaging in research to find alternatives, Petitioner
asserts that Patent Owner “cites no legal authority for its extraordinary
position that a product manual should and can only be combined with the
product itself.” Pet. Reply 10. As for Patent Owner’s assertion that the
skilled artisan would not have had a reason to modify the Phantom 2 Manual
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because the reference does not disclose a problem with its battery latching
mechanism, Petitioner asserts that such argument should be disregarded
because, “even if a reference describes an operable device or component, a
POSITA would have still been motivated to make improvements.” Id. at 9.
In support of that contention, Petitioner notes that the motivation to combine
may be found in a number of sources, including “the background,
knowledge, creativity, and common sense of the person of ordinary skill,”
id. (quoting ZUP, LLC v. Nash Mfg., Inc., 896 F.3d 1365, 1371 (Fed. Cir.
2018)), and asserts that the Petition identifies design incentives, needs and
problems known in the art which would have motivated a skilled artisan to
integrate a known secure battery latching mechanism into the Phantom 2
UAV, id. at 9–11 (citing Pet. 9–12, 19–26; Ex. 1003 ¶¶ 26–36, 63–67).
Regarding Patent Owner’s assertion that Kondo is non-analogous art
based upon six alleged differences between UAVs and hand-held power
tools, Petitioner contends that those reasons are “unsupported by evidence or
legal precedent” and are “legally and factually irrelevant” to the issue of
selecting a battery latching mechanism for a UAV. Pet. Reply 12–20. For
example, Petitioner asserts that neither Patent Owner nor Dr. Reinholtz
provides any evidence to support the assertion that there are fundamental
differences in the structure and type of battery used in UAVs and power
tools, or that such devices are subject to different service loads. Id. at 13–
14. Further, Petitioner asserts also that Patent Owner has not explained why
either the structure or type of battery or how a general service load on a
device relates to the selection of a battery latching mechanism or would lead
away from modifying a UAV latch with one used on a power tool. Id.
Additionally, Petitioner describes Patent Owner’s assertion that the
consequences of a battery being dislodged in a power tool are less than those
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involved with a UAV as unsupported speculation and irrelevant. Petitioner
asserts that regardless of whether such consequences are more serious for
UAVs than for hand-held power tools, the fact that the latch is important to
the operation of each “makes a power tool battery latch pertinent to the
problem of designing a UAV battery latch.” Id. at 16.
Similarly, Petitioner asserts that Patent Owner’s assertion that because
reducing weight is a much higher priority for UAVs, such devices typically
use LiPo (lithium polymer) batteries “which were known to be fragile and at
an extreme fire risk from mechanical damage,” making the shell and latch
requirements more demanding for UAVs than for hand-held power tools is
speculative, unsupported, and irrelevant. Id. at 17 (quoting PO Resp. 26).
Petitioner asserts that there is a strong motivation for power tools to be
lightweight too. Id. Moreover, Petitioner asserts that Patent Owner has not
provided any evidence that UAVs and hand-held power tools would not
utilize the same type of battery or explained how its argument would have
led a skilled artisan away from modifying a UAV battery latch with one used
for a hand-held device. Id. at 17–18.
According to Petitioner, Kondo is analogous art because it is within
the field of endeavor of the ’000 patent. Petitioner asserts that the field of
endeavor of the ’000 patent is not limited to UAVs because “there is nothing
about the battery latching mechanism of the ’000 patent that requires any
particular focus on UAVs.” Id. at 5 (citing In re ICON Health and Fitness,
Inc., 496 F.3d 1374, 1380 (Fed. Cir. 2007)). Rather, Petitioner asserts that
such field includes any area describing mechanisms for latching a battery in
a portable consumer electronic device, such as Kondo. Id. at 6.
Further, Petitioner asserts that even if the field of endeavor of the ’000
patent is considered to be limited to UAVs, Kondo is analogous art as it is
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“reasonably pertinent” to the particular problem with which the inventors of
the ’000 patent are involved. Id. (citing In re Clay, 966 F.2d 656, 659 (Fed.
Cir. 1992)). According to Petitioner, the ’000 patent identifies the problem
of how to latch a battery package to the body of a portable device, such as a
UAV, in a secure, user-friendly manner. Id. (citing Pet. 13, 24, 65; Ex. 1003
¶¶ 42–46, 64, 203). Petitioner asserts that “[b]attery-latching mechanisms
for portable, consumer power tools are reasonably pertinent to the problem
of latching a battery in a portable, consumer UAV” because both devices (a)
involve heavy use and rough handling, (b) require secure battery position
and engagement to avoid safety issues, and (c) require an easy mechanism
for replacing batteries to limit interrupted operation. Id. at 6–8. Based on
those similarities, Petitioner asserts that “UAV designers would have looked
to other portable, consumer devices such as power tools for user-friendly
mechanisms to latch and unlatch a battery.” Id. at 8 (citing Pet. 9–12, 23–
26, 65–70; Ex. 1003 ¶¶ 26–36, 63–67, 199–203). Moreover, according to
Petitioner, Patent Owner’s definition of a person having ordinary skill in the
art does not limit the required experience to that of designing UAV
couplings and locking devices. Id. (citing PO Resp. 9).
d) Patent Owner’s Sur-Reply
In its Sur-Reply, Patent Owner maintains that Kondo is non-analogous
art by asserting that it is in a different field of endeavor than the ’000 patent.
PO Sur-Reply 3. According to Patent Owner, the Specification of “the ’000
patent “contains numerous explicitly [sic] and unambiguous statements that
the invention’s subject matter is tailored to the field of UAV batteries.” Id.
For example, Patent Owner asserts that the Specification describes
shortcomings of preexisting UAV batteries, states that the claimed invention
“relates to a battery used for unmanned aerial vehicles[s],” and places an
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emphasis on reducing the “inconvenien[ce] of changing the battery used for
the unmanned aerial vehicle.” Id. (quoting Ex. 1001, 1:18–20, 24–50, 54–
57) (alterations in original). Additionally, Patent Owner asserts that the
challenged claims are expressly tied to a quadcopter UAV, as limitations of
the independent claim recite various quadcopter UAV components. Id.
(citing Ex. 1001, 5:34–41). In contrast, Kondo is directed to hand-held
power tools. Id. at 4. According to Patent Owner, because UAVs and hand-
held power tools are “used in very different environments,” they are not
from the same field of endeavor. Id. (quoting Smith & Nephew, Inc. v.
Hologic, Inc., 721 F. App’x 943, 949 (Fed. Cir. 2018)).
Further, Patent Owner contends, in its Sur-Reply, that Kondo is not
reasonably pertinent to the problem the ’000 patent seeks to solve because
the field of hand-held power tools would not have “commended itself to an
inventor’s attention” in considering the problem of designing a battery latch
for a UAV. PO Sur-Reply 5 (quoting Clay, 966 F.2d at 659). In support of
that contention, Patent Owner revisits its list of how UAVs and hand-held
power tools differ.
Regarding reason (1), Patent Owner asserts again that UAV batteries
use LiPo cells, whereas hand-held power tools typically use Li-Ion cells
which are less fragile, heavier and have a cylindrical shape which does not
optimize space between the cells. Id. at 6. Regarding reason (2), Patent
Owner refers to its earlier contention that UAVs and hand-held tools are
subject to different operational demands, asserting here that “[w]hat matters
for the reasonably pertinent analysis is that the service loads are different,”
meaning that a UAV battery latch is designed to solve a different problem.
Id. Regarding reason (3), Patent Owner asserts again that, unlike with a
UAV, if a power tool battery becomes dislodged, it does not cause any harm.
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Id. at 7–8. According to Patent Owner, “[t]his means there is a higher
tolerance for failure in a power tool battery latch than a UAV’s battery latch,
and a UAV’s battery latch is designed with a higher factor of safety, and
with additional feedback mechanisms, for this reason.” Id. at 8 (citing Ex.
2001 ¶ 69).
Regarding reason (4), Patent Owner contends that an inventor would
not have considered a battery latch used in a hand-held tool because “a UAV
battery must be built in a way that uses space and weight in the most
efficient way possible, while hand-held power tools are subject to much
more lenient space and weight constraints.” Id. at 5. Patent Owner asserts
that this “leads to a strong preference for UAV batteries that have ‘simpler
designs with fewer components over more complex designs with multiple
interlocking or interacting structures.’” Id. (quoting Ex. 2001 ¶ 70).
According to Patent Owner, that assertion is adequately supported by
common knowledge that “optimizing space and weight are extremely high
priorities in any object that flies.” Id. at 6.
Regarding reasons (5) and (6), Patent Owner repeats its assertions that
there are no synergies between hand-held power tools and unmanned aerial
vehicles, and that at the time of the invention, it did not occur to anyone to
combine power tool battery latches with UAVs. Id. at 8–9.
Patent Owner asserts that even if Kondo is analogous to the ’000
patent, Petitioner has failed to show that a skilled artisan would have been
motivated to combine the Phantom 2 Manual with Kondo. Id. at 9. Patent
Owner asserts that Petitioner’s rationale for the combination is “tainted with
hindsight bias and should be disregarded.” Id. at 10. According to Patent
Owner, “each of the six reasons raised by Patent Owner and its expert
illustrate how designing a battery system in a UAV is subject to a host of
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different design priorities, considerations and technical challenges when
compared to a hand-held power tool.” Id.
e) Discussion
Based upon our review and consideration of the arguments and
evidence, we find that Petitioner demonstrates persuasively that each
element of the challenged claims is taught or suggested by the combined
teachings of the Phantom 2 Manual and Kondo. In particular, we find that
Petitioner has shown that the Phantom 2 Manual discloses a multi-rotor
UAV comprising a main body comprising a battery compartment, four arms
coupled to the main body, a propulsion assembly comprising a propeller and
a motor to drive the propeller to rotate and generate a lift force, and a battery
accommodated in the battery compartment, wherein the battery comprises a
shell and a battery body disposed in the shell. Pet. 27–32.
As for the claim recitations relating to the battery latching mechanism,
i.e., the clamp button with a restorable elastic piece disposed on an inner
side of it and the clamping portion of the battery compartment with which it
detachably connects, we find that Petitioner has shown that Kondo teaches a
battery latching assembly comprising each of those elements, i.e., stop hooks
18 (clamp button), spring 17 (restorable elastic piece), and a curved element
53 (clamping portion). Pet. 32–48.
Patent Owner does not dispute that the combination of the Phantom 2
Manual and Kondo teaches or suggests each limitation of the challenged
claims. See In re NuVasive, 841 F.3d 966, 974 (Fed. Cir. 2016) (explaining
that the Board need not make specific findings as to claim limitations that
Patent Owner does not dispute are disclosed in the prior art). Nor does
Patent Owner dispute that a person of ordinary skill in the art had the skill to
combine those teachings, i.e., using the battery latching mechanism taught
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by Kondo as the battery latching mechanism for the quadcopter UAV
disclosed in the Phantom 2 Manual, with a reasonable expectation of
successfully arriving at the claimed invention. See Paper 10, 7 (“Patent
Owner is cautioned that any arguments for patentability not raised in the
response may be deemed waived.”). Rather, the parties dispute whether a
person of ordinary skill in the art would have had a reason to combine the
Phantom 2 Manual with Kondo. Additionally, the parties dispute whether
Patent Owner’s evidence of secondary considerations supports an ultimate
determination of non-obviousness. Thus, we address those disputed issues
in turn.
(1) Motivation to Combine
The parties agree that the Phantom 2 includes some type of latching
mechanism for its battery, although the Phantom 2 Manual does not provide
details regarding such mechanism. Yet Patent Owner asserts that a skilled
artisan would have “been far more likely to obtain, inspect, and experiment
with the battery latching mechanism on an actual Phantom 2 rather than
engaging in research to find alternatives.” PO Resp. 22. We discount that
argument as Patent Owner’s position is unsupported by any legal authority
and disregards patent law principles recognizing obviousness over a
combination of prior art teachings.
Next, Patent Owner asserts that the lack of detail in the Phantom 2
Manual regarding the battery latching mechanism used would “discourage,
rather than encourage a POSA to modify the Phantom 2 battery,”
particularly because Petitioner has not identified “any problem associated
with the Phantom 2 that would encourage or motivate a POSA to create a
more secure latching mechanism.” Id. at 23. That argument, however, fails
to consider that the motivation to combine may be found in a number of
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sources, including “the background, knowledge, creativity, and common
sense of the person of ordinary skill,” as Petitioner asserts. Pet. Reply 9
(quoting ZUP, LLC, 896 F.3d at 1371).
Based upon our review, Petitioner has set forth persuasive reasons
why a person of ordinary skill in the art would have been motivated to
review and combine a reference describing battery latching mechanisms for
portable electronic devices, such as Kondo, with the Phantom 2 Manual. In
particular, Petitioner asserts that such motivation is supplied by the lack of
detail in the Phantom 2 Manual regarding the specific battery latching
mechanism used. Pet. 23. We agree with Petitioner that a person of
ordinary skill in the art would have been motivated to search and review
references describing battery latching mechanisms for portable electronic
devices to address that deficiency in the Phantom 2 Manual. See id.
Further, Petitioner has demonstrated that a skilled artisan would have looked
to Kondo because it is directed to and describes such a battery latching
mechanism in detail. Id. at 23–24.
The parties dispute whether Kondo is analogous art to the claimed
invention. Based upon our review of the arguments and evidence, we find
that it is. “Two criteria have evolved for determining whether prior art is
analogous: (1) whether the art is from the same field of endeavor, regardless
of the problem addressed, and (2) if the reference is not within the field of
the inventor's endeavor, whether the reference still is reasonably pertinent to
the particular problem with which the inventor is involved.” Clay, 966 F.2d
at 658–59.
Patent Owner argues that Kondo and the ’000 patent are not from the
same field of endeavor because Kondo is concerned with batteries for hand-
held power tools and the challenged patent is directed to batteries for UAVs.
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PO Sur-Reply 3–5. Petitioner asserts that the field of endeavor includes any
area describing mechanisms for latching a battery in a portable consumer
electronic device. Pet. 24; Pet. Reply 6. We find Petitioner’s description of
the field of endeavor to be overly broad as the ’000 patent explicitly states
that it “relates to [the] unmanned aerial vehicle field, more particularly,
relates to a battery used for unmanned aerial vehicle and an unmanned aerial
vehicle.” Ex. 1001, 1:18–20. Moreover, as Patent Owner correctly asserts,
the only independent claim of ’000 patent recites “[a] multi-rotor unmanned
aerial vehicle,” comprising components of such a UAV, including its battery
compartment, battery, and battery latching mechanism. Id. at 5:34–6:16. In
contrast, Kondo explicitly states that it “relates to a novel attachment
structure which allows a battery pack including secondary cells to be
detachably attached to a battery holder in a power-driven tool.” Ex. 1008,
1:6–9. Moreover, each of Kondo’s claims are directed toward such
attachment structure for power-driven tools. Petitioner has not argued
persuasively why we should consider either of the fields of endeavor for the
challenged patent or Kondo to be more inclusive than what each patent
explicitly describes its own field to be.
Accordingly, we agree with Patent Owner that Petitioner has not
shown that Kondo is in the same field of endeavor as the ’000 patent.
However, our inquiry whether Kondo is analogous art does not end there.
Next, we consider whether Kondo is reasonably pertinent to the
particular problem with which the inventors of the ’000 patent are involved,
meaning it is “one which, because of the matter with which it deals, logically
would have commended itself to an inventor's attention in considering his
problem.” Clay, 966 F.2d at 659. According to Petitioner, Kondo’s
disclosure is reasonably pertinent because the problem it addresses, i.e., how
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to securely latch a battery package into a housing of an electronic device in a
secure, user-friendly manner, is similarly addressed in the ’000 patent. Pet.
24; Pet. Reply 6–8. Patent Owner argues that Kondo is not reasonably
pertinent based upon alleged differences between design considerations for
UAV batteries compared to hand-held power tool batteries. PO Resp. 23–
28; PO Sur-Reply 5–10. Patent Owner, however, does not adequately
support those alleged differences with evidence or explain sufficiently why
such differences would have caused the ’000 inventors to not take account of
the battery latching mechanism used to detachably connect a battery in a
different device, such as that taught by Kondo.
Based upon our review of the arguments and evidence, we find that
Petitioner has shown persuasively that Kondo is reasonably pertinent to the
problem addressed by the ’000 patent. The ’000 patent explains that the
technical problem the invention seeks to solve is to overcome the defect that
causes changing the battery in the UAV to be inconvenient. Ex. 1001, 1:54–
57. The Specification describes that defect not as revolving around the UAV
itself, but rather as a direct result of using a sealing board that is fixed to the
main body of the UAV to fasten the battery. Id. at 1:41–44. The sealing
board is fixed to the main body of the UAV by screws, bolts, or other
fasteners that must be loosened before changing the battery and again
fastened after changing the battery. Id. at 1:45–50. In other words, the
problem addressed in the challenged patent relates to how the prior art
battery fastening approach, i.e., the use of a screwed or bolted sealing board,
caused changing the battery to be inconvenient. Kondo teaches a different
approach to maintaining a battery in an electrical device, i.e., the use of a
latching system, which eliminates the need to screw, bolt, or otherwise
fasten a sealing board to the main body of the device, thereby solving the
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problem, i.e., inconvenience, of having to loosen and fasten screws or bolts
of a sealing board each time a battery is changed.
Although Patent Owner and Dr. Reinholtz have asserted various
differences between UAVs and hand-held power tools regarding, e.g., the
batteries they use and how the devices are used, we find no persuasive
evidence of record suggesting that any such differences would have caused a
person of ordinary skill in the art to not have reasonably consulted Kondo’s
teaching regarding a battery latching mechanism in seeking a solution to the
problem the inventors of the ’000 patent sought to solve.
Accordingly, because we agree with Petitioner that Kondo’s teaching
of a battery latching mechanism is reasonably pertinent to the battery
fastening problem addressed by the ’000 patent, we find that Kondo is
analogous art to the challenged patent. Further, and for similar reasons, we
are persuaded that modifying the Phantom 2 Manual to include Kondo’s
battery latching mechanism in place of the latching mechanism that exists on
the Phantom 2 UAV would have amounted to no more than a simple
substitution of one known battery latching mechanism for another. See KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416–417 (2007).
(2) Secondary Considerations
We continue our analysis with a discussion of Patent Owner’s asserted
secondary considerations of nonobviousness. Transocean Offshore
Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc., 699 F.3d 1340, 1349
(Fed. Cir. 2012). Patent Owner asserts that evidence of long-felt, but
unsolved need in the industry and failure of others supports a finding of non-
obviousness. PO Resp. 33–34.
Regarding long-felt need, Patent Owner asserts that (a) the Phantom 2
Manual is dated August 2014, (b) other quadcopter UAVs have been
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available for sale at least since 1999, (c) Kondo was filed in February 1996
and published in June 1998, and (d) other latching mechanisms relied upon
by Petitioner were filed and published in the late 1990’s and early 2000’s.
Id. at 34. Without further explanation, Patent Owner states, “Accordingly,
there has been a need in the industry as early as 1999 for a battery latching
mechanism for quadcopter UAVs that strikes the right balance between
securely latching the battery and allow[ing] a user to easily and quickly
install and remove batteries between flights.” Id. (citing Ex. 2001 ¶¶ 94–
96). Patent Owner asserts further that “[t]he length of time between that
recognized need and the inventions of the ’000 patent, which has a priority
date of December 14, 2015, represents a long-felt, but unsolved need in the
industry for the inventions of the ’000 patent.” Id.
Based upon our consideration of the arguments and the evidence, we
find that Patent Owner’s assertion that the challenged claims have satisfied a
long-felt but unmet need for securely and conveniently latching a detachable
battery to a UAV is unsupported. To begin, we do not find that Patent
Owner’s assertions regarding the filing and publication dates of the cited
prior art demonstrate that any long-felt need existed in the art as a whole
regarding quadcopter UAV battery latches. See Iron Grip Barbell Co., Inc.
v. USA Sports, Inc., 392 F.3d. 1317, 1325 (Fed. Cir. 2004) (“[T]he mere
passage of time without the claimed invention is not evidence of
nonobviousness.”). Nor has Patent Owner explained how that information
might establish that such a need existed.
Further, even if such a long-felt need had been established, Patent
Owner has not demonstrated sufficiently that the challenged claims met that
need by demonstrating a nexus to the claims. See Fox Factory, Inc. v.
SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019). Indeed, upon careful
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inspection, we note that the Patent Owner does not even assert as much in
the Patent Owner Response. Rather, Patent Owner’s argument begins and
ends with a discussion of a “long-felt, but unresolved need,” without any
further assertion or evidence that the challenged claims met that alleged
need. See PO Resp. 33–34.
Regarding failure of others, Patent Owner asserts that a company,
GoPro, Inc., launched a quadcopter drone, named “the Karma,” in 2016. Id.
at 34. Patent Owner asserts that the Karma “‘gained notoriety’ for having a
faulty battery latch” that would allow the battery “shake loose . . . and cause
the drone to lose power.” Id. According to Patent Owner, “[t]he failure of
the Karma’s battery latching mechanism is evidence of the failure of others
to conceive of, and reduce to practice, the claimed inventions of the ’000
patent.” Id.
Based upon our consideration of the arguments and the evidence, we
find that Patent Owner’s assertion of the failure of others to provide a UAV
with a battery latching mechanism that securely holds the battery and
conveniently allows the battery to be changed is unsupported. As Petitioner
correctly asserts, Patent Owner has failed to demonstrate, or even allege, a
nexus to the challenged claims. See Fox Factory, 944 F.3d at 1373. In other
words, Patent Owner has not shown that the battery latching element of the
challenged claims obviates the failure of the battery latching mechanism in
the Karma.
Accordingly, we find that the evidence submitted does not
demonstrate that the challenged claims satisfied a long-felt unmet need or
addressed a failure of others so as to support a finding of nonobviousness.
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(3) Conclusion as to Obviousness
We base our final determination regarding obviousness upon an
analysis of the foregoing arguments and evidence. In particular, we have
considered the secondary considerations of nonobviousness and accorded
them appropriate weight along with all of the other Graham factors.
Accordingly, based upon the preponderance of the evidence, we conclude
that claims 1–12 of the ’000 patent are unpatentable as obvious over a
combination of the Phantom 2 Manual and Kondo.
E. Obviousness over Combinations Including Saika and Ichiba
Petitioner asserts that the combination of Saika and Ichiba renders
claims 1–9 and 12 obvious. Pet. 55–92; Pet. Reply 4–23. Patent Owner
disagrees. PO Resp. 21–28; PO Sur-Reply 2–10. Additionally, Petitioner
asserts that the combination of Saika, Ichiba, and Phelps renders claims 10
and 11 obvious. Pet. 92–95; Pet. Reply 20–21. Patent Owner disagrees. PO
Resp. 31–34; PO Sur-Reply 10–11. In the following discussion, we consider
each of those contentions.
1. Saika
Saika discloses a UAV with a removable battery. Ex. 1006, code
(57). Saika explains that “a battery which can be removed quickly and
easily is advantageous.” Id. ¶ 4. Saika explains that its reference to a
removable battery “may refer to both the electrochemical device used to
store chemical energy in one or more cells and to the mechanical structure,
e.g., the housing surrounding the electrochemical device and/or an assembly
to mechanically couple to the aerial vehicle [].” Id. ¶ 39.
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Figure 1 of Saika is reproduced below:

Figure 1 depicts an example of Saika’s remote controlled UAV.
Ex. 1006 ¶ 8. The UAV is described as a “quadcopter,” i.e., it is “a
helicopter with four rotors.” Id. ¶ 28.
Figures 7A and 7B of Saika are reproduced below:

Figures 7A and 7B illustrate an example of Saika’s removable latch
battery and a chassis of the UAV. Ex. 1006 ¶ 14. Figure 7A illustrates a left
side view of the latch battery 700. Id. ¶ 47. Figure 7B illustrates a rear, top,
and right view of the latch battery and chassis 310. Id. The removable
battery “may be coupled and removed from the aerial vehicle 100 by a latch
or ‘squeeze open’ assembly.” Id. In addition to the removable latch battery
assembly, Saika also describes embodiments of the invention using either a
removable pull-bar battery assembly or a lever battery assembly. Id. ¶ 23.
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Regarding the embodiment using a latch battery assembly, Saika
explains that the chassis may be part of the UAV and may have a cavity
wherein the latch battery may be mechanically inserted and coupled with the
UAV to provide power to the UAV. Id. ¶ 47. Saika describes the latch
battery as follows:
The latch battery 700 may include buttons 701 which may be
used to decouple the latch battery 700 and the chassis 310. The
latch battery 700 may be coupled to the chassis 310 by pushing
the latch battery 700 in the direction indicated by the arrow 710.
Once the latch battery 700, is fully inserted into the cavity in the
chassis 310, a locking mechanism may be triggered. The latch
battery 700 may be removed by pressing on the buttons 701 as
depicted by the arrow 720 while simultaneously pulling the latch
battery 700 in the direction indicated by the arrow 730.
Id. ¶ 48 (bold emphasis removed). According to Saika, this assembly allow
the “battery to be quickly attached to and/or removed from [a UAV].” Id.
¶ 49.
2. Ichiba
Ichiba discloses “[a] battery pack provided with a pair of hooks which
can interlock on both sides of an object device when slid on the installation
parts of an electric tool or other object device . . . in a case which houses the
batteries . . . .” Ex. 1010, Claim 1. The object of Ichiba’s invention is to
provide a battery pack that is “easy to handle and can be securely attached
and detached on the object device,” e.g., an electric tool. Id. at code (57).
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Figures 2, 3, and 4 (a) – (c) of Ichiba are reproduced below:

Figure 2 illustrates an inclined view of the battery pack. Id. ¶ 12.
Figure 3 illustrates an exploded inclined view of the battery pack. Id.
Figures 4 (a) – (c) illustrate, respectively, a side view of the battery pack, a
sectional view of the battery pack along the X–X axis, and a sectional view
of the battery pack along the Y–Y axis. Id. Ichiba explains,
Battery pack A is comprised of an outside case 2 and an inside
case 3. Outside case 2 is configured of a box-shaped case main
body 2a, the upper end of which is left open, and a cover member
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2b used to close the above-mentioned open end. Inside case 3 is
configured so that it can house and retain four battery packs.
After the battery has been housed in inside case 3, inside case 3
is then housed in outside case 2.
Id. ¶ 14.
Ichiba describes “[i]nterlocking jaw 18 on the front end of hook 14 is
positioned on groove 23 between lower sheet part 8 and guide arm part 10
(see Figure 2).” Id. ¶ 16. According to Ichiba, “the pair of hooks 14 are
spring energized together in the opening direction. When operating part 16
is pushed inside, it is linked to this, rotates around convex part 15 and hooks
14 can be moved inside in their entirety.” Id. ¶ 17. Figure 4 (b) shows “an
interlocking groove 28 corresponding to locking jaw 18 of hook 14 on
battery pack A is formed on the inside surface.” Id. ¶ 19.
Figure 5 is reproduced below:

Figure 5 is an explanatory view of the installation mode of the battery
pack. Id. ¶ 30. Ichiba explains that upon installation of battery pack A,
guide arm part 10 of battery pack A is slid and pushed into sliding
grove 27 of installation part B, as indicated in Figure 5. At the
same time, protruding guide line 26 of installation part B is
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engaged in groove 23. Interlocking jaw 18 of hook 14 of battery
pack A is pushed into interlocking groove 28 on installation part
B by compression spring 21 and interlocked there on the part of
battery pack A which is pushed in so that battery pack A is
installed securely.
Id. ¶ 20. Compression spring 21 may be an elastic body. Id. ¶ 27.
To remove the battery, Ichiba explains,
[o]perating parts 16 on both sides are pressed with the thumb and
index finger from both sides so that these are grasped tightly
inside. As a result, hook 14 of battery pack A rotates inside
around convex part 15 and interlocking jaw 18 moves inside,
thereby releasing the interlocking with interlocking groove 28.
Then, battery pack A is slid in the opposite direction in this state
and may be pulled out from installation part B of the electric tool.
Id. ¶ 21.
3. Phelps
Phelps discloses a “latching system for connecting a battery housing
to a portable electronic device.” Ex. 1011, 1:47–48. According to Phelps, a
battery should “have a mechanical attachment to the device secure enough
for ordinary and extraordinary conditions of use. The mechanical
attachment of the battery to the device should also be easy to operate, yet not
be triggered inadvertently.” Id. at 1:23–26. Phelps’ latching system
comprises:
a battery housing, a button extending from the exterior to the
interior of the battery housing, and a springy metal sheet attached
to the interior of the housing []. The button has a cam on its
interior end which contacts the springy metal, so that the springy
metal deflects when the button is moved. The button is located
in an orifice in the housing, which maybe either a hole or a
channel. When the springy metal sheet is deflected, the orifice
in the springy metal sheet releases or catches on a projection on
the electronic device. In one embodiment of the present
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invention, the button consists of a head, a neck, and shoulders,
and the orifice comprises a narrow channel to accept the neck
and a larger opening at one end of the channel which accepts the
shoulders when forced through the larger opening. When the
button is slid along the channel, the cam on the end of the button
deflects the springy metal sheet, causing the springy metal sheet
to release or engage the projection on the electronic device.
Id. at 1:49–66.
Figure 5 is reproduced below:

Figure 5 is a cut-away top view of an embodiment of the battery
housing latch of the invention. Id. at 1:41–42. Button 40 is “moved back
and forth along the ‘x’ axis.” Id. at 3:14–15. According to Phelps,
In otherwords [sic], the button is pushed in and out of the housing
(20). In this embodiment, the end (150) of the springy metal lies
along a diagonal in the “xy” plane. For example, the diagonal
might be a line (going through the origin) at 135 degrees to the
x-axis. In this manner, in and out motions of the button (40)
along the “x” axis are translated into motions of the springy metal
(30) along the “y” axis. This causes the orifice (140) in the
springy metal to either engage or disengage a projection (not
shown) in the electronic device to which the battery housing (20)
is attached. Button (40) could be attached to the housing (20) by
means known to those skilled in the art, such as being placed in
a well with a lip.
Id. at 3:15–27 (bold emphasis removed). Phelps explains that the button and
housing may be made of plastic or rubber. Id. at 3:28–30.
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4. Analysis
a) Petitioner’s Contentions
In the Petition, Petitioner sets forth in detail how Saika discloses a
multi-rotor UAV comprising: (1) a main body comprising a battery
compartment, (2) four arms coupled to the main body, (3) a propulsion
assembly comprising a propeller and a motor to drive the propeller to rotate
and generate a lift force, and (4) a battery accommodated in the battery
compartment, wherein the battery comprises a shell and a battery body
disposed in the shell. Pet. 70–73 (citing Ex. 1006, Fig. 1). In particular,
Petitioner demonstrates that Saika’s Figure 1, set forth above, depicts a
quadcopter, i.e., a UAV having a main body and four arms, wherein each
arm is equipped with a propeller assembly. Id. at 70–71 (citing Ex. 1006,
Fig. 1, ¶ 28). Petitioner asserts also that Saika teaches that there are “motors
in the rotors” coupled with the propellers 145, thereby providing a
propulsion assembly. Id. at 72 (quoting Ex. 1006 ¶ 64; citing Ex. 1003
¶ 209).
Petitioner asserts that Saika explains that its quadcopter includes one
or more removable batteries, such as latch battery 700, and a cavity in the
UAV “within which the latch battery 700 is mechanically inserted.” Id. at
71 (quoting Ex. 1006 ¶ 47). Petitioner asserts also that Saika describes the
removable battery as referring to both the “electrochemical device used to
store chemical energy in one or more cells,” i.e., the battery body, and to the
“mechanical structure, e.g., the housing surrounding the electrochemical
device and/or an assembly to mechanically couple to the aerial vehicle 100,”
i.e., the battery shell. Id. at 73 (citing Ex. 1006 ¶ 39).
Petitioner asserts that Saika teaches that the housing of the battery
may “contain mechanisms for mechanically coupling to the aerial vehicle
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100 and/or mechanisms for assisting the user in attaching or detaching the
battery to or from the aerial vehicle 100.” Id. at 64–65 (citing Ex. 1006
¶ 39). However, Petitioner acknowledges that “Saika does not provide
details of the mechanisms used with the latch battery to mechanically couple
to or detach from the UAV.” Id. at 65.
To reach the claim limitation requiring a “clamp button,” Petitioner
relies upon Ichiba’s disclosure of the components of its latching mechanism.
Id. In particular, Petitioner asserts that the latching mechanism for Ichiba’s
battery package includes “a pair of hooks 14 which can interlock on both
sides of an object device.” Id. at 73–74 (quoting Ex. 1010, “Means of
Solving Problem”). Petitioner asserts that Ichiba teaches that “hooks 14 are
‘arranged inside opening part 13 on both sides’ of the battery pack.” Id.
(quoting Ex. 1010 ¶ 16). According to Petitioner, Ichiba’s hook 14 is the
recited “clamp button.” Id. Further, Petitioner asserts that Ichiba’s latching
mechanism includes a convex part 15 on the rear end of the hook that
interlocks with a corresponding part formed on the shell of the battery
package. Id. at 74–75 (citing Ex. 1010 ¶ 16). According to Petitioner, that
end is mounted on the shell of the battery pack, meeting the claim limitation
requiring “a clamp button disposed on the shell, wherein one end of the
clamp button is mounted on the shell.” Id. at 75 (citing Ex. 1003 ¶ 213).
Referring to Figure 4b of Ichiba, set forth above, Petitioner asserts
that the combination of Saika and Ichiba teaches that the other end of the
clamp button is “detachably coupled to the main body,” as required by
claim 1 because the end of Ichiba’s hook 14, the clamp button, has an
“interlocking jaw 18,” and Saika’s battery compartment includes a
corresponding interlocking groove 28. Id. According to Petitioner, when
Saika’s battery package, including Ichiba’s latching mechanism, is inserted
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into the UAV, the “[i]nterlocking jaw 14 of hook of battery pack A is pushed
into interlocking groove 28 on installation part B [UAV] by compression
spring 21 and interlocked there . . . so that battery pack A is installed
securely.” Id. at 76 (quoting Ex. 1010 ¶ 20) (alterations in original).
Petitioner notes also that Ichiba teaches that to remove the battery pack,
“[o]perating parts 16 on both sides are pressed with the thumb and index
finger from both sides,” resulting in the “interlocking jaw 18 mov[ing]
inside, thereby releasing the interlocking with interlocking groove 28.” Id.
(quoting Ex. 1010 ¶ 21) (alterations in original).
Petitioner asserts that Ichiba’s latching mechanism also includes a
restorable elastic piece, as required by claim 1, because Ichiba discloses a
“‘compression spring 21 placed between the spring receiving part 17’ of
hook 14 (‘clamp button’) and the ‘spring receiving part 20’ of the shell of
the battery package.” Id. at 77 (quoting Ex. 1010 ¶ 16). Petitioner asserts
that Ichiba explains that compression spring 21 is “an elastic body” and
“may be a spring or other material such as rubber and the like.” Id. (quoting
Ex. 1010 ¶ 27).
Petitioner and Dr. Alonso further contend that Saika’s UAV, modified
with Ichiba’s latching mechanism, provides that “one end of the restorable
elastic piece is disposed on the shell,” as required by claim 1. Pet. 77–78
(citing Ex. 1003 ¶ 216). In particular, referring to Figure 4b, Petitioner and
Dr. Alonso explain that Ichiba teaches that its clamp button (hook 14) has a
“spring receiving part 17” and the battery shell has a corresponding “spring
receiving part 20,” but Ichiba does not describe the coupling between the
compression spring 21 and the spring receiving part 20. Id. However,
Petitioner and Dr. Alonso assert that Ichiba’s Figure 4b shows that the spring
receiving part 20 has a cylindrical protrusion having a diameter equal to the
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inner diameter of the compression spring 21, such that one end of the
compression spring may be fit onto the protrusion, wherein the end of the
spring surrounds the protrusion. Id. at 77. According to Petitioner and
Dr. Alonso, “[b]ecause the cylindrical protrusion is part of the battery shell
in the combined UAV of Saika and Ichiba, the end of the compression
spring placed on the protrusion of the battery shell is ‘disposed on’ the
battery shell,” meeting the claim requirement that “one end of the restorable
elastic piece is disposed on the shell.” Id. at 77–78.
Additionally, Petitioner and Dr. Alonso explain how Ichiba’s Figure
4b illustrates that the other end of Ichiba’s restorable elastic piece is fixed
with the clamp button, as required by claim 1. Id. at 78–79. They assert that
the spring receiving part 17 of Ichiba’s clamp button, i.e., hook 14, has a
“slot for receiving the end of the spring.” Id. at 78 (citing Ex. 1003 ¶ 217).
Petitioner asserts that the spring receiving part 17 is “located on the inner
side of the clamp button.” Id. According to Petitioner and Dr. Alonso,
“[w]hen the end of the compression spring is placed into the slot in the
spring receiving part 17 and the other end is placed on the spring receiving
part 20, the force of the spring urges and retains the end of the spring in the
slot in spring receiving part 17.” Id. (citing Ex. 1010 ¶ 16; Ex. 1003 ¶ 217).
Petitioner asserts, because the end of the compression spring cannot move
with respect to the hook 14 after implementation, “Ichiba’s compression
spring 21 coupled to spring receiving part 17 is placed so as to be firm and
not readily moveable relative to hook 14 after the latching mechanism is
assembled—it is ‘fixed with’ hook 14,” i.e., the clamp button. Id. at 78–79
(citing Ex. 1003 ¶ 217) (emphasis omitted).
As for the recited “clamping portion,” Petitioner asserts this claim
limitation is met by Ichiba’s teaching that its latching mechanism includes
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“an interlocking groove 28 corresponding to locking jaw 18 of hook 14,”
formed in the housing of the device receiving the battery. Pet. 80 (citing
Ex. 1010 ¶ 19). According to Petitioner, in the modified UAV of Saika and
Ichiba, the interlocking groove 28 is included in the battery compartment
and the portion of the battery compartment comprising or defining the
interlocking groove 28 is the recited “clamping portion.” Id. at 79–80
(citing Ex. 1003 ¶ 219).
Further, Petitioner asserts that the clamping portion is “configured to
detachably connect to the clamp button,” as required by claim 1, because
Ichiba teaches that upon insertion of the battery, “[i]nterlocking jaw 18 of
hook 14 of battery pack A is pushed into interlocking groove 28 of
installation part B by compression spring 21 and interlocked there on the
part of battery pack A which is pushed in so that battery pack A is installed
securely,” id. at 81 (quoting Ex. 1010 ¶ 20) (alterations in original), and
upon removal of the battery, “[o]perating parts 16 on both sides are pressed
with the thumb and index finger from both sides,” id. (quoting Ex. 1010
¶ 21) (alterations in original). According to Petitioner, “[a]s a result,
‘interlocking jaw 18 moves inside, thereby releasing the interlocking with
interlocking groove 28.’” Id. (quoting Ex. 1010 ¶ 21).
The challenged claims also include requirements for the clamp button
in a first state wherein the battery is not completely pushed into the battery
compartment, or is only partially pushed into the battery compartment, and
requirements for the restorable elastic piece in a second state wherein the
battery is completely pushed or positioned into the battery compartment.
Ex. 1001, 6:4–16. Petitioner asserts that the combination of Saika and
Ichiba meets each of those limitations. Pet. 82–86.
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Specifically, Petitioner asserts that the combination teaches the
limitation that “the clamp button is configured to cause the restorable elastic
piece to be pressed down in first state where the battery is not completely
pushed into the battery compartment or is only partially positioned in the
battery compartment,” as required by claim 1, because Ichiba teaches that to
remove the battery package, “[o]perating parts 16 on both sides [of the
latching mechanism] are pressed with the thumb and index finger from both
sides,” and “interlocking jaw 18 moves inside, thereby releasing the
interlocking with interlocking groove 28.” Id. at 83 (citing Ex. 1010 ¶ 21)
(alterations in original). According to Petitioner and Dr. Alonso, pressing
operating part 16 causes spring 21 to be compressed and it “remains in this
compressed state while force is applied to the clamp button and as the
battery package is pulled from the UAV’s battery compartment (i.e., not
completely pushed into the battery compartment).” Id. (citing Ex. 1003
¶ 222).
Further, Petitioner asserts that when Ichiba’s battery pack is installed
in Saika’s UAV, “‘[i]nterlocking jaw 18 of hook 14 of battery pack A is
pushed into interlocking groove 28’ on the battery compartment.” Id. (citing
Ex. 1010 ¶ 20) (alteration in original). Petitioner asserts that during this
process “the triangular wedge of the locking jaw 18 contacts and slides
against a portion of the battery compartment,” causing hook 14 to be pressed
downward, and spring 21 to be compressed and remain compressed while
the battery is in a state of not being completely pushed into the battery
compartment. Id.
Petitioner asserts, when the battery is in a state of being completely
pushed into the battery compartment, “the triangular wedge reaches the
interlocking groove [and] jaw 18 has space to move outward, allowing the
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hook [i.e., clamp button] to return to its original position.” Id. at 83–84
(referring to Ex. 1010, Fig. 4b; Ex. 1003 ¶ 223). According to Petitioner,
when the battery is fully inserted into the battery compartment of Saika,
Saika teaches that “a locking mechanism may be triggered.” Id. at 84
(quoting Ex. 1006 ¶ 48). Petitioner asserts that “the interlocking jaw 18 of
Ichiba’s hook 14 aligns with the interlocking groove 28 of the battery
compartment,” and once in this position, “the ‘[i]nterlocking jaw 18 of hook
of battery pack A is pushed into interlocking groove 28 on installation part B
[device] by compression spring 21 and interlocked there on the part of
battery pack A which is pushed in so that battery pack A is installed
securely.’” Id. at 85 (citing Ex. 1010 ¶ 20) (alterations in original).
According to Petitioner and Dr. Alonso, that means that “when the battery
package is completely pushed into the battery compartment, the compression
spring pushes the clamp button outward to position interlocking jaw 18 into
interlocking groove 28,” rendering the battery “stuck by the cooperation of
the clamping portion and the clamp button.” Id. (citing Ex. 1003 ¶ 224)
(emphasis omitted).
Petitioner and Dr. Alonso assert that “[w]hen a load is placed on a
compression spring making it shorter (e.g., by pushing down on of operating
part 16), the spring pushes back against the load attempting to return to its
original length.” Id. (citing Ex. 1003 ¶ 225). According to Petitioner, “[t]his
outward biasing of the spring in turn results in the hook 14 (‘clamp button’)
returning back to its initial position,” as required by claim 1. Id. (referring to
Ex. 1010, Fig. 4b).
Petitioner asserts that a person of ordinary skill in the art would have
been motivated to use Ichiba’s battery latching mechanism in Saika’s UAV
because the skilled artisan would have recognized that Ichiba’s latching
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mechanism provides a more user-friendly latch than Saika, while providing a
means to secure the battery in place. Id. at 67–69. Petitioner explains that
although Ichiba’s disclosure is directed to electric tools, Ichiba provides
express motivation to apply its teachings to other devices, by stating that
“[i]t should by no means be construed that the present invention is restricted
to electric tools.” Id. at 69 (quoting Ex. 1010 ¶¶ 2, 29).
Additionally, Petitioner asserts that the proposed combination merely
represents “simple substitution of one element (Saika’s latching mechanism)
with another (Ichiba’s secure, user-friendly latching mechanism).” Id. at 70
(citing Ex. 1003 ¶ 204).
Petitioner adds Phelps to the combination of Saika and Ichiba to meet
additional limitations of claims 10 and 11. Claim 10 requires the UAV to
comprise at least two restorable elastic pieces that are “mirror symmetric.”
Ex. 1001, 6:45–46. Claim 11 requires those restorable elastic pieces to have
an “S-shape.” Id. at 6:48–49. Petitioner asserts that Phelps, directed to
“latching systems for battery housings,” discloses both of those features in
Figure 5, set forth above. Id. at 92. Petitioner asserts that Phelps’ battery
latching system includes a springy metal 30 having two portions connected
to “attachment point 130” of the battery housing 20. Id. at 92–93. Petitioner
asserts that Phelps describes the button in its latching system as moving
“back and forth along the ‘x’ axis,” i.e., being “pushed in an[d] out of the
housing (20),” which Petitioner describes as being in the same direction as in
Ichiba. Id. at 93 (quoting Ex. 1011, 3:13–16). Petitioner asserts that Phelps
explains that such motions in its latching system are “translated into motions
of the springy metal (30) along the ‘y’ axis.” Id. (quoting Ex. 1011, 3:19–
22).
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According to Petitioner, a person of ordinary skill in the art would
have been motivated to (a) modify Ichiba’s latching system to replace
Ichiba’s helical springs with Phelps’ springy metal 30, (b) modify Ichiba’s
spring receiving parts 17 and 20 to receive the ends of Phelps’ flat spring 30,
and (c) attach one end of each S-shape springy metal piece to the surface
dividing the cavity of Ichiba’s battery shell and attach the other end 150 to
the inside surface of Ichiba’s button, so that it is not readily moveable with
respect to the button. Pet. 93–94 (citing Ex. 1003 ¶ 243). Petitioner asserts
that a skilled artisan would have been motivated to incorporate those aspects
of Phelps’ latching system into the latching mechanism of Saika and Ichiba
“to improve the form factor and usability of the battery package,” because a
battery pack using Phelps’ springy metal can be made smaller to provide a
user a better grip. Id. at 94 (citing Ex. 1003 ¶ 244). Further, Petitioner
asserts that the proposed modification is merely a simple substitution of a
helical spring for a spring metal, which would have been known and
understood by a person of ordinary skill in the art. Id. at 95 (citing Ex. 1003
¶ 245).
Petitioner asserts that the result of modifying Saika and Ichiba with
Phelps in the manner described provides a latching system wherein the
spring metal structures, i.e., restorable elastic pieces, are “mirror symmetric”
and have an “S-shape,” as depicted in Figure 5 of Phelps and as required by
claims 10 and 11. Id. (citing Ex. 1003 ¶ 246).
b) Patent Owner’s Contentions
Patent Owner asserts that, for the same reasons addressed regarding
the combination of the Phantom 2 Manual and Kondo, a person of ordinary
skill in the art “would not be motivated to modify the UAV battery of Saika
in view of the power tool battery in Ichiba.” PO Resp. 29. Specifically,
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Patent Owner asserts that “Petitioner has not established any general
shortcomings in any aspect of Saika’s battery latching mechanism, nor any
specific flaws” that would motivate a skilled artisan to seek to improve
Saika or to consider Ichiba in doing so. Id. Additionally, Patent Owner
asserts that a person of ordinary skill in the art would not be motivated to
combine Saika and Ichiba because “Ichiba’s double case design may be well
suited for a hand power tool, but weight and complexity would make it
unsuitable for use in a quadcopter UAV.” Id.
Regarding the combination of Saika, Ichiba, and Phelps, Patent Owner
further challenges Petitioner’s motivation to combine by asserting that
Petitioner has not explained how adding Phelps’ springy metal might
improve the form factor of Ichiba to make it more suitable for use in a
quadcopter. Id. at 31. Additionally, Patent Owner asserts that the structure
of Phelps is inconsistent with Ichiba and Saika, and teaches away from
Ichiba because Phelps’ clamp button does not have a second end that can be
detachably coupled to the main body, and the buttons in Phelps move
inwardly in a self-parallel motion and serve no latching function. Id. at 32.
Patent Owner asserts also that a person of ordinary skill in the art would not
look to Phelps, which is directed to a cellular phone battery, for a solution to
latch a battery for a quadcopter UAV because those devices are subject to
different service loads. Id.
c) Petitioner’s Reply
In the Petitioner’s Reply, Petitioner asserts that Patent Owner
mischaracterizes Petitioner’s proposed combination of Saika and Ichiba by
suggesting that such combination includes combining Ichiba’s double case
design to Saika. Pet. Reply 18. Petitioner explains that its proposed
combination only involves combining Ichiba’s battery latch with Saika’s
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UAV battery pack. Id. (citing Pet. 67–68). According to Petitioner, in that
combination, the weight, size and volume of Ichiba’s battery pack are not
relevant. Id. at 18–19.
Petitioner asserts that Patent Owner also mischaracterizes Phelps as
being directed only to a cellular phone battery. Id. at 20. According to
Petitioner, Phelps “relates in general to battery housings” and to “latching
systems for battery housings,” without limiting its application to use only in
cellular phones. Id. (quoting Ex. 1011, 1:5–6). Additionally, Petitioner
asserts that Patent Owner’s argument that Phelps is inconsistent with Ichiba
and Saika and teaches away from Ichiba is directed to a combination of
those references not relied upon by Petitioner. Id. at 21. Petitioner explains
that its proposed combination “replace[s] Ichiba’s helical springs with
Phelps’ springy metal (30) and [ ] modif[ies] Ichiba’s spring receiving parts
17 and 20 to receive the ends of Phelps’ flat spring 30.” Id. (quoting Pet.
93–94) (alterations in original). Petitioner asserts also that, contrary to
Patent Owner’s argument, the Petition explains how the form factor of
Ichiba is improved by incorporating Phelps’ spring metal, i.e., by making the
form factor smaller so that a user can better grip and operate the buttons on
the sides of the battery package. Id. (citing Pet. 94–95).
The remainder of Petitioner’s arguments in the Reply largely mirror
those arguments set forth for the ground based upon the combination of the
Phantom 2 Manual and Kondo. Accordingly, we reference and incorporate
those arguments here.
d) Patent Owner’s Sur-Reply
In Patent Owner’s Sur-Reply, Patent Owner asserts that the
combination of Saika, Ichiba, and Phelps is flawed because it is unclear how
motion from the axis of the button is translated to a perpendicular axis. PO
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Sur-Reply 11. According to Patent Owner, that motion is translated via a
cam, which does not appear to be part of Petitioner’s proposed combination.
Id. (citing Ex. 2001 ¶ 89). The remainder of Patent Owner’s arguments in
the Sur-Reply for these grounds rely upon the same arguments set forth for
the ground based upon the combination of the Phantom 2 Manual and
Kondo. Accordingly, we reference and incorporate those arguments here.
e) Discussion
Based upon our review and consideration of the arguments and
evidence, we find that Petitioner demonstrates persuasively that each
element of claims 1–9 and 12 are taught or suggested by the combined
teachings of Saika and Ichiba, Pet. 70–92, and the additional elements of
claims 10 and 11 are taught or suggest by the combined teachings of Saika,
Ichiba, and Phelps, id. at 92–95. In particular, we find that Petitioner has
demonstrated that Saika discloses a quadcopter UAV having a main body
and four arms, wherein each arm is equipped with a propeller assembly,
wherein the propellers are coupled with motors in the rotors. Pet. 70–72.
Saika’s quadcopter includes one or more removable batteries, such as a latch
battery, and a cavity in the UAV “within which the latch battery 700 is
mechanically inserted.” Ex. 1006 ¶ 47. Saika describes the removable
battery as referring to both the “electrochemical device used to store
chemical energy in one or more cells,” i.e., the battery body, and to the
“mechanical structure, e.g., the housing surrounding the electrochemical
device and/or an assembly to mechanically couple to the aerial vehicle 100,”
i.e., the battery shell. Ex. 1006 ¶ 39. Saika teaches that the housing of the
battery may “contain mechanisms for mechanically coupling to the aerial
vehicle 100 and/or mechanisms for assisting the user in attaching or
detaching the battery to or from the aerial vehicle 100.” Id. ¶ 39.
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As for the claim recitations relating to the battery latching mechanism,
i.e., the clamp button with a restorable elastic piece disposed on an inner
side of it and the clamping portion of the battery compartment with which it
detachably connects, we find that Petitioner has shown that Ichiba teaches a
battery latching assembly comprising each of those elements, i.e., hooks 14
(clamp button), compression spring 21 (restorable elastic piece), and an
interlocking groove 28 (clamping portion). Pet. 76–89.
Regarding claims 10 and 11, we find that Petitioner has shown that
Phelps teaches a battery latching system that includes a springy metal having
two portions that, in the proposed combination, meet the limitations of the
recited “2 restorable elastic pieces” in those claims. Pet. 92–95.
Patent Owner does not dispute that the combination of the Saika and
Ichiba teaches or suggests each limitation of claims 1–9 and 12, or that the
combination of Saika, Ichiba, and Phelps teaches or suggests each limitation
of claims 10 and 11. See In re NuVasive, 841 F.3d at 974. Nor does Patent
Owner dispute that a person of ordinary skill in the art had the skill to
combine those teachings with a reasonable expectation of successfully
arriving at the claimed invention. See Paper 10, 7. Rather, the parties
dispute whether a person of ordinary skill in the art would have had a reason
to combine the cited references. Additionally, the parties dispute whether
Patent Owner’s evidence of secondary considerations supports an ultimate
determination of non-obviousness. Thus, we address those disputed issues
in turn.
(1) Motivation to Combine
As mentioned above, Saika discloses that its quadcopter UAV may
comprise a latch battery that may include buttons used to couple and
decouple the latch battery to the UAV. Ex. 1006 ¶¶ 47–49. Saika explains
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that such embodiments “may allow a battery to be quickly attached to and/or
removed from an aerial vehicle 100.” Id. ¶ 49. Saika, however, does not
provide any further details of the mechanisms used with the latch battery to
mechanically couple to or detach from the UAV. Patent Owner argues that
Petitioner has not shown that a person of ordinary skill in the art would have
been motivated to modify the UAV battery of Saika with the battery latching
mechanism disclosed in Ichiba because “Petitioner has not established any
general shortcomings in any aspect of Saika’s battery latching mechanism.”
PO Resp. 29. That argument, however, fails to consider that the motivation
to combine may be found in a number of sources, including “the
background, knowledge, creativity, and common sense of the person of
ordinary skill.” ZUP, LLC, 896 F.3d at 1371.
Based upon our review, Petitioner has set forth persuasive reasons
why a person of ordinary skill in the art would have been motivated to
review and combine a reference describing battery pack latching
mechanisms for electronic tools, such as Ichiba, with Saika. Pet. 68–70. In
particular, Petitioner explains persuasively that a person of ordinary skill in
the art would have been motivated to incorporate mechanisms to make
Saika’s battery latch more user-friendly and easier to operate by modifying
Saika with Ichiba’s latch, which has features that make removing a battery
easier. Pet. 68–69.
Patent Owner has not established otherwise by asserting that a person
of ordinary skill in the art would not be motivated to combine Saika and
Ichiba because “Ichiba’s double case design may be well suited for a hand
power tool, but weight and complexity would make it unsuitable for use in a
quadcopter UAV.” PO Resp. 29. As Petitioner has explained, its proposed
combination of Saika and Ichiba does not involve using Ichiba’s double case
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design in Saika’s UAV. Pet. Reply 18. Rather, Petitioner’s combination
involves combining only Ichiba’s battery latching mechanism with Saika’s
UAV battery pack. Id. (citing Pet. 67–68).
Patent Owner does not set forth any additional specific challenges
regarding a motivation to combine Saika and Ichiba. Instead, Patent Owner
asserts that “[f]or the same reasons addressed in [its arguments challenging
the obviousness ground over the Phantom 2 Manual and Kondo], a POSA
would not be motivated to modify the UAV battery of Saika in view of the
power tool battery in Ichiba.” PO Resp. 29. We have addressed the
deficiencies in those arguments above, in Section II.D.3., and incorporate
them by reference here. In particular, for similar reasons to those discussed
in Section II.D.3., we (a) find that Ichiba is analogous art to the challenged
patent because Ichiba’s teaching of a battery latching mechanism is
reasonably pertinent to the battery fastening problem addressed by the ’000
patent, and (b) are persuaded that modifying the Saika to include Ichiba’s
battery latching mechanism in place of the latching mechanism that exists on
Saika would have amounted to no more than a simple substitution of one
known battery latching mechanism for another.
Further, based upon our review, we determine that Petitioner has set
forth persuasive reasons why a person of ordinary skill in the art would have
been motivated to include Phelps in the combination of Saika and Ichiba.
Pet. 93–95. For example, Petitioner explains persuasively that a person of
ordinary skill in the art would have been motivated to use the S-shape
springs described in Phelps in the latching mechanisms of Saika and Ichiba
to improve the form factor and usability of the battery package of Saika and
Ichiba. Id. Contrary to Patent Owner’s assertion, see PO Resp. 31, we find
that Petitioner describes how that modification provides such an
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improvement. In the Petition, Petitioner explains that a battery package
using Phelps’ springy metal can be made smaller, thereby allowing a user to
better grip and operate the button on the sides of the battery package.
Pet. 94.
We also find that Patent Owner’s assertion that Phelps is inconsistent
with Ichiba and Saika, and teaches away from Ichiba is unsupported. PO
Resp. 32. According to Patent Owner, Phelps’ clamp button does not have a
second end that can be detachably coupled to the main body and the buttons
in Phelps move inwardly in a self-parallel motion and serve no latching
function. Id. Petitioner explains, however, that its proposed combination
provides a different result, as it “replace[s] Ichiba’s helical springs with
Phelps’ springy metal (30) and [ ] modif[ies] Ichiba’s spring receiving parts
17 and 20 to receive the ends of Phelps’ flat spring 30.” Pet. Reply 21
(quoting Pet. 93–94) (emphasis added, alterations in original).
Patent Owner asserts also that a person of ordinary skill in the art
would not look to Phelps, a reference directed to a cellular phone battery, for
a solution to latch a battery for a quadcopter UAV because those devices are
subject to different service loads and, at the time of the invention, cell
phones “tended to emphasize ruggedness and durability over lightness and
portability.” PO Resp. 32. Patent Owner, however, does not adequately
support those alleged differences with evidence or explain sufficiently why
such differences would have caused a skilled artisan not to consider or
combine a spring element of the battery latching mechanism used by Phelps
with the UAV and latching mechanism of Saika and Ichiba. Indeed, we find
that Petitioner has demonstrated persuasively that its proposed combination
amounts to a simple substitution of a helical spring for a spring metal, which
would have been known and understood by a person of ordinary skill in the
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art. Pet. 95. Moreover, as Petitioner correctly asserts, Phelps does not limit
its latching mechanism for use only in a cellular phone. Pet. Reply 20.
Rather, Phelps explains that its disclosure “relates in general to battery
housings” and to “latching systems for battery housings.” Ex. 1011, 1:5–6.
(2) Secondary Considerations
We continue our analysis with a discussion of Patent Owner’s asserted
secondary considerations of nonobviousness. Patent Owner asserts that
evidence of long-felt, but unsolved need in the industry and failure of others
supports a finding of non-obviousness. PO Resp. 33–34. Patent Owner
relies on the same arguments and evidence to support those assertions here
as it did for the ground based on the Phantom 2 Manual and Kondo.
Accordingly, for the same reasons discussed regarding that ground, see
Section II.D.3., we find that the evidence submitted does not demonstrate
that the challenged claims satisfied a long-felt unmet need or addressed a
failure of others so as to support a finding of nonobviousness.
(3) Conclusions as to Obviousness
We base our final determination regarding obviousness upon an
analysis of the foregoing arguments and evidence. In particular, we have
considered the secondary considerations of nonobviousness and accorded
them appropriate weight along with all of the other Graham factors.
Accordingly, based upon the preponderance of the evidence, we conclude
that claims 1–9 and 12 of the ’000 patent are unpatentable as obvious over a
combination of Saika and Ichiba, and that claims 10 and 11 of the ’000
patent are unpatentable as obvious over a combination of Saika, Ichiba, and
Phelps.
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F. Indefiniteness
Petitioner asserts that claims 1–12 are indefinite under 35 U.S.C.
§ 112(b). Pet. 95–100. Patent Owner disagrees. PO Resp. 35–39.
1. Petitioner’s Contentions
Petitioner asserts that independent claim 1 is indefinite because it does
not sufficiently “inform a person of ordinary skill in the art of the scope of
the claim with reasonable certainty and is therefore indefinite.” Pet. 96
(quoting SAP America Inc. v. Lakshmi Arunachalum, CBM2013-00013,
Paper 61 at 11 (PTAB Sept. 18, 2014)). Claim 1 recites, in part, that the
“clamp button is configured to cause the restorable elastic piece to be
pressed down in a first state where the battery assembly is not completely
pushed into the battery compartment or is only partially positioned in the
battery compartment.” Ex. 1001, 6:4–8. Petitioner asserts that the scope of
“not completely pushed into” or “partially positioned in” in reference to the
battery position in the battery compartment is unclear because a battery with
only a small portion of the end of its package inserted into the battery
compartment may be considered as “not completely pushed into,” and yet
the restorable elastic piece would not be pressed down as required by the
claim. Pet. 96–97.
Further, Petitioner asserts that when the battery is not completely
pushed into the battery compartment, the battery cannot simultaneously be
considered to be “detachably coupled to the main body,” as required by
claim 1. Id.
Petitioner asserts that “claim 1 is also indefinite because it covers both
an apparatus and the use of that apparatus by a user,” as the claim “recites
two ‘wherein’ clauses [] tied to the operation of the UAV’s battery latching
mechanism.” Pet. 97. Petitioner asserts that although the claim recites
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passive language such as “the clamp button is configured” and the
“restorable elastic piece is configured,” a person having ordinary skill in the
art “would recognize that the recited operation limitations of claim 1 do not
rely on the configuration of either the clamp button or the restorable elastic
piece but instead rely on the user’s action of inserting or removing the
battery from the battery compartment of the UAV.” Id.
Specifically, regarding the recitation in claim 1, “wherein the clamp
button is configured to cause the restorable elastic piece to be pressed down
in a first state,” Petitioner asserts that “the clamp button, on its own, is
incapable of causing the restorable elastic piece to be pressed down because
it is merely connected to (‘fixed with’) the restorable elastic piece.” Id.
According to Petitioner, the clamp button is not “working autonomously to
press down the restorable elastic piece,” but instead “it is the actions of a
user, by applying a lateral force that pushes or positions the battery in the
battery compartment or by applying a downward force to the clamp button
that causes the ‘restorable elastic piece to be pressed down in a first state.’”
Id. at 97–98 (quoting Ex. 1003 ¶ 249) (emphasis omitted). Petitioner asserts
that a person of ordinary skill in the art “would understand the claim
limitation to mean ‘wherein the user causes the clamp button to apply a
downward force on the restorable elastic piece to press down (compress) the
restorable elastic piece.’” Id. at 98.
Regarding the recitation in claim 1, “wherein a second state where the
batter[y] is completely pushed or positioned into the battery compartment,
the restorable elastic piece is configured to automatically rebound,”
Petitioner asserts that this limitation also requires user action because this
“second state cannot occur until after the restorable elastic piece has been
pressed down (e.g., by the action of a user pressing the clamp button) so that
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the spring can later elongate (or ‘rebound’).” Id. at 99 (citing Ex. 1003
¶ 250). According to Petitioner, “[i]t is unclear whether infringement of
claim 1 occurs when the UAV with the recited battery latching mechanism is
created or when a user actually uses the UAV’s battery latching mechanism
by inserting or removing a battery from the UAV.” Id. at 100 (citing
Ex. 1003 ¶ 251).
2. Patent Owner’s Contentions
Patent Owner challenges Petitioner’s assertion that claims 1–12 are
indefinite because they allegedly insert method steps into an apparatus claim
by reciting two “wherein” clauses tied to the operation of the UAV’s battery
latching mechanism. PO Resp. 36. Patent Owner contends that the
challenged claims are not indefinite because they are “directed to the
capability of a system in a specific state and the environment in which the
structures operate.” Id. at 37 (citing Microprocessor Enhancement Corp. v.
Texas Instruments Inc., 520 F.3d 1367, 1374 (Fed. Cir. 2008)). In particular,
Patent Owner asserts that the use of the phrases “configured to,” “in a first
state,” “in a second state,” and “able to” in independent claim 1 “indicate
that the claims are directed to the capability of a system in a specific state
and the environment in which the structures operate.” Id. at 37–38.
Patent Owner also challenges Petitioner’s contention that the
limitation “not completely pushed into the battery compartment or is only
partially positioned in the battery compartment,” recited in claim 1 is unclear
and renders the claim indefinite. PO Resp. 38. In particular, Patent Owner
asserts that Petitioner’s contention that when the battery is not completely
pushed into the battery compartment, the battery cannot simultaneously be
“detachably coupled to the main body” is untrue. Id. According to Patent
Owner, the claim contemplates the existence of states where the battery
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assembly is “not completely pushed into” or “only partially positioned in”
the battery compartment, while the restorable elastic piece is not pressed
down. Id. at 39. Patent Owner asserts, “[b]ecause a POSA would be
reasonably informed as to the scope of the claims, they are not indefinite.”
Id. (citing Ex. 2001 ¶¶ 101–102).
3. Discussion
Based on our review of the arguments and evidence, we are
persuaded, for the reasons discussed by Patent Owner, that independent
claim 1 is permissibly directed to the UAV battery latching mechanism in a
specific state and the environment in which the structures operate and does
not impermissibly insert method steps into an apparatus claim by reciting
“wherein” clauses tied to the operation of the UAV’s battery latching
mechanism. See Microprocessor Enhancement, 520 F.3d at 1374.
Further, based upon our review of the record, we determine that
Petitioner has not shown persuasively that claims 1–12 are indefinite based
upon an asserted lack of clarity in the scope of claim terms. Rather, we
conclude that the preponderance of the evidence demonstrates that the
claims, when read in light of the Specification, adequately inform those
skilled in art, with reasonable certainty, about the scope of the invention. In
particular, we credit Dr. Reinholtz’s unrebutted testimony that
When read in context, the plain meaning of “not completely
pushed into” and “partially positioned in” the battery
compartment is clear. The full context of claim 1 explains that
“the clamp button is configured to cause the restorable elastic
piece to be pressed down in a first state where the battery is not
completely pushed into the battery compartment or is only
partially positioned in the battery compartment.” Thus, the claim
contemplates the existence of other states where the battery
assembly is also “not completely pushed into” or “only partially
positioned in” the battery compartment, but the restorable elastic
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piece is not pressed down. This claim makes it clear that the
clamp button can cause the restorable elastic piece to be pressed
down at some state (but not necessarily every state) when the
battery is being positioned into the battery compartment. This is
useful for allowing the battery to be installed in the battery
compartment without requiring the user to press down on the
clamp button.
Ex. 2001 ¶ 102 (citing Ex. 1001, 5:7–25).

CONCLUSION7
For the foregoing reasons, we conclude Petitioner has demonstrated
by a preponderance of the evidence that claims 1–12 of the ’000 patent are
unpatentable. The results are summarized below in the table.

ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1–12 of U.S. Patent No. 9,979,000 B2 have
been shown to be unpatentable; and
FURTHER ORDERED that, because this is a Final Written Decision,
any party to this proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

7 Should Patent Owner wish to pursue amendment of the challenged
claims in a reissue or reexamination proceeding subsequent to the
issuance of this decision, we draw Patent Owner’s attention to the April
2019 Notice Regarding Options for Amendments by Patent Owner
Through Reissue or Reexamination During a Pending AIA Trial
Proceeding. See 84 Fed. Reg. 16,654 (Apr. 22, 2019). If Patent Owner
chooses to file a reissue application or a request for reexamination of the
challenged patent, we remind Patent Owner of its continuing obligation to
notify the Board of any such related matters in updated mandatory
notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
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In summary:

Claims

35
U.S.C. §
Reference(s)/Basis
Claims
Shown
Unpatentable
Claims
Not shown
Unpatentable
1–12 103 Phantom 2
Manual, Kondo
1–12
1–9, 12 103 Saika, Ichiba 1–9, 12
10, 11 103 Saika, Ichiba,
Phelps
10, 11
1–12 112(b) Indefiniteness 1–12
Overall
Outcome
1–12
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PETITIONER:
Lori A. Gordon
Steve W. Peters
Matthew Edward Carey
KING & SPALDING LLP
lgordon@kslaw.com
speters@kslaw.com
mcarey@kslaw.com

PATENT OWNER:

John L. Abramic
Timothy C. Bickham
Matthew Bathon
Harold H. Fox
Katherine D. Cappaert
Katherine H. Johnson
STEPTOE & JOHNSON LLP
jabramic@steptoe.com
tbickham@steptoe.com
mbathon@steptoe.com
hfox@steptoe.com
kcappaert@steptoe.com
kjohnson@steptoe.com