Autoquip, Inc.v.Graco Minnesota, Inc.

Patent Trial and Appeal Board

Jan 14, 2015

09691916 (P.T.A.B. Jan. 14, 2015)

Trials@uspto.gov Paper No. 18
571-272-7822 Entered: January 14, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

AUTOQUIP, INC.,
Petitioner,

v.

GRACO MINNESOTA, INC.,
Patent Owner.
____________

Case IPR2013-00452
Patent 6,554,204 B1
____________

Before BRIAN J. McNAMARA, GEORGIANNA W. BRADEN, and
BARBARA A. PARVIS, Administrative Patent Judges.

BRADEN, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

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I. INTRODUCTION
Autoquip, Inc. (“Petitioner”) filed a Corrected Petition (Paper 7,
“Pet.”) requesting an inter partes review of claim 1 of U.S. Patent No.
6,554,204 B1 (Ex. 1001, “the ’204 Patent”) pursuant to 35 U.S.C. §§ 311 et
seq. Graco Minnesota, Inc. (“Patent Owner”) did not file a Preliminary
Response. On January 22, 2014, we instituted an inter partes review of
claim 1 on all of the grounds of unpatentability alleged in the Petition. Paper
11 (“Dec. to Inst.”). After institution of trial, Patent Owner filed a Patent
Owner’s Response (Paper 14, “PO Resp.”), to which Petitioner filed a Reply
(Paper 15). An oral argument was not held.
The Board has jurisdiction under 35 U.S.C. § 6(c). In this final
written decision, issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R.
§ 42.73, we determine Petitioner has shown by a preponderance of the
evidence that challenged claim 1 is unpatentable.
A. Related Proceedings
The parties have indicated that they are unaware of any related
proceedings. Pet. 23; Paper 10, 2.
B. The ’204 Patent
The ’204 patent describes a system that uses a flush box for flushing
paint automatically from a spray gun and loading a new color into the spray
gun. Ex. 1001, 1:21–23. When a color change is desired, the spray gun is
placed in the flush box. Id. at 2:4–5. A controller triggers the gun and then
flushes the gun with cleaning solvent. Id. at 2:6–7. The old paint and
cleaning solvent are routed to a waste container. Id. The controller flushes
the exact amount of solvent required to clean the gun. Id. at 1:27–28. Using
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Ex.1001, 1:50–53. According to the specification, the controller is the
Graco PrecisionMix II® proportioning controller. Id. at 1:53–2:1.
C. Challenged Claim
Claim 1 is the only claim of the ’204 patent and is reproduced as
follows:
1. An integrated gun flush controller in a plural component
proportioning system for producing a mixed material and having a
control unit, first and second sources of material, a mixing unit
connected to said sources and said control unit and an application
device connected to said mixing unit, the improvement comprising:
a gun flush box connected to said control unit and capable of
receiving said application device, said control unit being capable of
calculating potlife of mixed material and alarming to require
placement of said application device in said gun flush box; and

said control unit being responsive to placement of said
application device in said gun flush box in order to operate said
application device.
D. Prior Art References Alleged to Support Unpatentability
The following prior art references were asserted in the instituted
grounds (Pet. 45):
Reference Date Exhibit
Gun Flush Box Module Instructions  Parts
List 684-019
1998 Ex. 1003
Graco Dual Gun Flush Box, Program Listing
Associated with Operation of Gun Flush Box
Module
Apr. 30,
1997
Ex. 1004
PrecisionMix® Proportioning Control
Instructions  Parts List 684-029
1998 Ex. 1005
Schematic Drawing of Proportioning Control
and Gun Flush Module
Mar. 2,
1998
Ex. 1006
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E. Alleged Grounds of Unpatentability Instituted for Trial
The following table summarizes the challenges to patentability that
were instituted for inter partes review:
Reference(s) Basis Claim
Challenged
Gun Flush Box Module Instructions  Parts
List 684-019
§ 102(b) 1
Graco Dual Gun Flush Box Program Listing
Associated with Operation of Gun Flush Box
Module
§ 102(b) 1
Gun Flush Box Module Instructions  Parts
List 684-019, Graco Dual Gun Flush Box
Program Listing Associated with Operation
of Gun Flush Box Module, and
PrecisionMix® Proportioning Control
Instructions  Parts List 684-029
§ 103(a) 1

II. ANALYSIS
A. Claim Interpretation
In an inter partes review, claim terms in an unexpired patent are given
their broadest reasonable construction in light of the specification of the
patent in which they appear. 37 C.F.R. § 42.100(b); see Office Patent Trial
Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). Also, claim
terms are given their “ordinary and customary meaning” as would be
understood by one of ordinary skill in the art at the time of the invention and
in the context of the entire patent disclosure. In re Translogic Tech., Inc.,
504 F.3d 1249, 1257 (Fed. Cir. 2007) (quoting Phillips v. AWH Corp., 415
F.3d 1303, 1312 (Fed. Cir. 2005) (en banc)).
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1. “being responsive to”
Claim 1 recites a “control unit being responsive to placement of said
application device in said gun flush box in order to operate said application
device.” Ex. 1001, 2:48–50 (emphasis added). The Petitioner initially
argued that claim limitation should be construed as requiring “no further
manipulation of any switches, buttons, or other ‘controls’” to operate the
application device when the application device is placed in the gun flush
box. Pet. 7. Petitioner reasoned that its construction is consistent with the
disclosure of the ’204 Patent, which discloses that “operation of the
application device is automatically effectuated by the control unit after the
application device is placed in the gun flush control box after initiation of the
alarm condition requiring that the application device be placed into the gun
flush control box,” and the purpose of placing the application device in the gun
flush box is “to provide the ‘painter and operator . . . with automated gun
flushing capabilities.’” Pet. 8 (emphases added).
Patent Owner contested Petitioner’s construction, stating that such a
construction would require that the application device itself must be
“automatic.” Ex. 1007 ¶ 4. According to Patent Owner, the claim term
“responsive” does not mean “automatic.” Patent Owner further argued that
Petitioner’s initial construction was not supported by the disclosure in the
’204 Patent. Id.
The Specification gives several examples of automatic or automated
actions by components of the disclosed system:
The gun flush box of the instant invention is controlled by Graco’s
PRECISION-MIX® II controller to automatically flush one or two
manual guns into a closed waste container. During an automated
color change, it automatically flushes the gun and loads the next paint
color.
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Ex. 1001, 1:17–23 (emphasis added).
Control is provided by intelligence already present in the
PRECISIONMIX II proportioning controller so that no additional
control is needed to perform the automated flush functions.
Id. at 1:52–2:3 (emphasis added).
When a new color is selected, the control system automatically
triggers the gun and flushes the gun with solvent with the flush
material safely routed to a waste container.
Id. at 2:5–8 (emphasis added).
The control system automatically triggers the gun to refill the lines
with new color paint without using excess paint as it displaces the
flush solvent.
Id. at 2:8–10 (emphasis added).
If the control system determines the pot-life of the material in the
system has expired, it will alarm and purge the material automatically
thereby protecting the system from getting plugged with cured
material.
Id. at 2:13–16 (emphasis added).
This allows customers to buy one product that will perform both the
proportioning and automated gun flush function without having to add
on external controllers or PLCs.
Id. at 2:22–25 (emphasis added).
Each of the above-cited disclosures in the Specification indicates that
the controller or control system has certain automated functions. Yet, the
claims do not recite the word “automatic.” Rather, the particular limitation
is that the control unit (which is part of the claimed controller) is “responsive
to” placement of the applications. Therefore, we are not persuaded by
Petitioner’s contention that a “control unit being responsive to placement of
said application device in said gun flush box,” under the broadest reasonable
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interpretation rule, should be construed as “requiring no further
manipulation of any switches, buttons, or other ‘controls’” to operate the
device when the application device is placed in the gun flush box.
The Specification and the claim language itself indicate that once an
operator places a spray gun (or application device) in the gun flush box, the
controller can detect or sense the presence of the spray gun and then the
controller can perform other automated actions. The Specification, however,
discloses that “[w]hen a color change is desired, the operator places the
spray gun in the flush box. When a new color is selected, the control system
automatically triggers the gun and flushes the gun . . . .” Ex. 1001, 2:4–9
(emphasis added). Similarly, the Specification discloses that the system may
be used to perform an automated gun flush at the end of a shift or work day
“simply by placing the gun in the box and initiating a purge at the
operator’s station.” Id. at 2:17–21 (emphasis added). Thus, even if the
control system determines the pot life has expired and begins the flush when
the application device is put in the box without further switch manipulation,
the Specification does not describe a system that is “responsive to”
placement in the box in a way that does not require further manipulation in
every situation.
In the Decision to Institute, we were persuaded by Patent Owner’s
arguments that the claim term “responsive” does not mean “automatic.”
Dec. to Inst. 7–10. Rather, based on the claim limitation read in light of the
Specification, we construed the limitation “control unit being responsive to
placement of said application device in said gun flush box” as a “control unit
that can detect or sense when an application device is in said gun flush box.”
Id. at 10. During the course of the trial, neither party challenged our
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construction of the claim term or presented evidence inconsistent with that
construction. Thus, we see no reason to alter the construction for this term
set forth in the Decision to Institute.
2. Other Claim Terms
All other terms in the challenged claim are given their “ordinary and
customary meaning” and need not be further construed.
B. Principles of Law
To prevail in its challenges to the patentability of the claims, the
petitioner must establish facts supporting its challenges by a preponderance
of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). A claim is
unpatentable under 35 U.S.C. § 102 if a prior art reference discloses every
limitation of the claimed invention, either explicitly or inherently. Glaxo
Inc. v. Novopharm Ltd., 52 F.3d 1043, 1047 (Fed. Cir.1995); see
MEHL/Biophile Int’l Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir.
1999) (holding that “[t]o anticipate, a single reference must teach every
limitation of the claimed invention,” and any limitation not explicitly taught
must be inherently taught and would be so understood by a person
experienced in the field); In re Baxter Travenol Labs., 952 F.2d 388, 390
(Fed. Cir. 1991) (the dispositive question is “whether one skilled in the art
would reasonably understand or infer” that a reference teaches or discloses
all of the elements of the claimed invention); Continental Can Co. v.
Monsanto Co., 948 F.2d 1264, 1268–69 (Fed. Cir. 1991) (“to anticipate,
every element of the claims must appear in a single prior art reference, or if
not expressly shown, then demonstrated to be known to persons experienced
in the field of technology”).
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The principle of “inherency,” in the law of anticipation, requires that
any information missing from the reference would nonetheless be known to
be present in the subject matter of the reference, when viewed by persons
experienced in the field of the invention. However, “anticipation by inherent
disclosure is appropriate only when the reference discloses prior art that
must necessarily include the unstated limitation [or the reference] cannot
inherently anticipate the claims.” Transclean Corp. v. Bridgewood Servs.,
Inc., 290 F.3d 1364, 1373 (Fed. Cir. 2002) (internal citation omitted);
Hitzeman v. Rutter, 243 F.3d 1345, 1355 (Fed. Cir. 2001) (“consistent with
the law of anticipation, an inherent property must necessarily be present in
the invention described by the count, and it must be so recognized by
persons of ordinary skill in the art”) (citations omitted); In re Robertson,
169 F.3d 743, 745 (Fed. Cir. 1999) (that a feature in the prior art reference
“could” operate as claimed does not establish inherency). Thus, when a
claim limitation is not set forth explicitly in a reference, evidence “must
make clear that the missing descriptive matter is necessarily present in the
thing described in the reference, and that it would be so recognized by
persons of ordinary skill.” Continental Can Co., 948 F.2d at 1268 (citations
omitted). It is not sufficient if a material element or limitation is “merely
probably or possibly present” in the prior art. Trintec Indus., Inc. v. Top–
U.S.A. Corp., 295 F.3d 1292, 1295 (Fed. Cir. 2002) (citations omitted); see
W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1554 (Fed. Cir.
1983) (anticipation “cannot be predicated on mere conjecture respecting the
characteristics of products that might result from the practice of processes
disclosed in references”) (citation omitted); In re Oelrich, 666 F.2d 578, 581
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(CCPA 1981) (to anticipate, the asserted inherent function must be present
in the prior art).
A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). To establish obviousness of a claimed invention, all the claim
limitations must be taught or suggested by the prior art. See CFMT, Inc. v.
Yieldup Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003); In re Royka,
490 F.2d 981, 985 (CCPA 1974). A patent claim composed of several
elements, however, is not proved obvious merely by demonstrating that each
of its elements was known, independently, in the prior art. KSR Int’l Co.,
550 U.S. at 419. In that regard, for an obviousness analysis it can be
important to identify a reason that would have prompted one of skill in the
art to combine prior art elements in the way the claimed invention does. Id.
However, a precise teaching directed to the specific subject matter of a
challenged claim is not necessary to establish obviousness. Id. Rather,
obviousness must be gauged in view of common sense and the creativity of
an ordinarily skilled artisan. Id. Moreover, obviousness can be established
when the prior art itself would have suggested the claimed subject matter to
a person of ordinary skill in the art. In re Rinehart, 531 F.2d 1048, 1051
(CCPA 1976).
We analyze the instituted grounds of unpatentability in accordance
with the above-stated principles.
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C. Level of Ordinary Skill in the Art
In determining whether an invention would have been obvious at the
time it was made, 35 U.S.C. § 103 requires us to determine the level of
ordinary skill in the pertinent art at the time of the invention. Graham v.
John Deere, 383 U.S. 1, 17 (1966). “The importance of resolving the level
of ordinary skill in the art lies in the necessity of maintaining objectivity in
the obviousness inquiry.” Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718
(Fed. Cir. 1991). “Instead of ascertaining what was subjectively obvious to
the inventor at the time of invention, [we] must ascertain what would have
been objectively obvious to one of ordinary skill in the art at such time.” Id.
(citation omitted). Thus, “the level of ordinary skill in the art is a factual
question that must be resolved and considered.” Id.
Neither Petitioner nor Patent Owner offers an explanation regarding
the level of ordinary skill in the pertinent art at the time of the alleged
invention. Based on our review of the ’204 patent and the types of problems
and solutions described in the ’204 patent and cited prior art, we conclude
that the cited 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).
D. Alleged Anticipation by Gun Flush Box Module Instructions 
Parts List 684-019 (Ex. 1003)
Petitioner alleges that claim 1 of the ’204 patent is unpatentable under
35 U.S.C. § 102(b) over Gun Flush Box Module Instructions-Parts List 684-
019 (Ex. 1003). Pet. 10.
For the reasons discussed below, we conclude that Petitioner has not
proved by a preponderance of the evidence that claim 1 is anticipated under
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35 U.S.C. § 102(b) by Gun Flush Box Module Instructions  Parts List
684-019.
1. Overview of Gun Flush Box Module Instructions  Parts List 684-
019 (Ex. 1003)
Gun Flush Box Module Instructions — Parts List 684-019 (“Ex.
1003”) discloses the use and installation of a gun flush box that works in
conjunction with a controller to flush automatically paint from spray guns
into an enclosed waste container. Ex. 1003, 5. Exhibit 1003 indicates on its
face that it has a copyright date of 1998. According to Exhibit 1003, the gun
flush box and controller work to reduce solvent use and VOC emissions and
improve operator safety during flushing. Id.
Figure 1 of Exhibit 1003 is reproduced below:

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Figure 1 illustrates the gun flush box system of Exhibit 1003, which
includes an application device (the spray gun), the Graco PrecisionMix®
proportioning controller in the control panel, a resin supply, a catalyst
supply, a mixing unit, a gun flush box, and a waste dump.
Exhibit 1003 discloses instructions for setting up the gun flush box
controller so that the controller can track the pot life of material and sound
an audible alarm before the material pot life expires. Ex. 1003, 10.
A flow chart illustrating operation parameters for a gun flush box
controller is shown in Figure 6, reproduced below:

Figure 6 shows gun flush box controller parameters for detecting the
pot life time of material and for arming a warning alarm when a specific pot
life time has elapsed.
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Exhibit 1003 further indicates that the gun flush box controller can
detect when a spray gun is active/inactive and when it is in the gun flush
box. Ex. 1003, 14. For example, if a spray gun is active and has mixed
material in it, the gun flush box controller will start the pot life timer. Id.
When the timer expires, the gun flush box will purge automatically the
mixed material. Id. If the spray gun is inactive, but not in the gun flush box,
the gun flush box controller will activate a flashing “abort” light. Id. The
“abort” light will continue flashing until the spray gun is placed in the gun
flush box with the lid closed. Id. Once the spray gun is in position in the
gun flush box, the gun flush box controller will open the spray gun and
activate the PrecisionMix® purge input. Id.
2. Analysis
a. Whether Gun Flush Box Module Instructions  Parts List 684-
019 (Ex. 1003) Is Prior Art Under 35 U.S.C. § 102(b).
Petitioner contends that Exhibit 1003 qualifies as prior art under
35 U.S.C. § 102(b), because the document was provided during the
installation of a Gun Flush System at Cooper Power Systems (“Cooper”) in
Waukesha, Wisconsin in 1997. Pet. 10. Petitioner then contends that
Exhibit 1003 was “publically available as being provided with systems sold
by the patent owner more than one year before the earliest claimed priority
of the [’204 patent].” Id. at 11.
Patent Owner does not challenge the content of Exhibit 1003 or the
relevance of Exhibit 1003 to challenged claim 1. PO Resp. 3. Rather,
Patent Owner argues that Petitioner failed to authenticate the document as
prior art. Id. To counter Patent Owner’s argument, Petitioner provides the
Declaration of Michael Elberson in support of Petitioner’s contention that
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the contested reference is prior art. Ex. 1008. Patent Owner did not file a
motion to exclude Exhibit 1003 or Mr. Elberson’s Declaration, Ex. 1008, nor
did Patent Owner depose Mr. Elberson.
Mr. Elberson testified in his Declaration that prior to filing the
Petition, he contacted Cooper, a former customer of Patent Owner that had
possession of certain documents related to Patent Owner’s gun flush box
modules, including Exhibit 1003. Id. ¶ 5. Mr. Elberson further testified that
he received Exhibit 1003 from Cooper in response to his request. Id. ¶ 6.
According to Mr. Elberson, Exhibit 1003 is an “off-the-shelf” document that
is provided by Patent Owner to any of its customers that purchase the Graco
Gun Flush Box Module. Id. ¶ 7. Mr. Elberson opined that Exhibit 1003 has
been available freely to people in the industry since the time it entered into
Cooper’s possession. Id.
Exhibit 1003 shows a copyright date of 1998. Ex. 1003, Title Page.
We note that, internally, Exhibit 1003 cites to the PrecisionMix®
Proportioning Control Instructions  Parts List 684-029 (Ex. 1005), which
also lists a copyright date of 1998. Id. at 10 (citing Ex. 1005, Title Page).
Given that the copyright date indicates only the year of the copyright, and
not a specific date, we determine that the document is entitled to a copyright
of December 31, 1998. In light of the testimony of Mr. Elberson and the
copyright date listed on the face of Exhibit 1003, we are satisfied that
Exhibit 1003 would have been available publically at least by December 31,
1998. December 31, 1998 is less than one year prior to the October 8, 1999
filing date of the provisional patent application from which the ’204 patent
claims priority. See Ex. 1001. Therefore, Exhibit 1003 does not qualify as
§ 102(b) prior art, but it does qualify as § 102(a) prior art.
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Patent Owner gives us no reason to doubt that Exhibit 1003 is a copy
of the actual document given to Graco’s customers. Based the information
provided by Exhibit 1003 itself, as corroborated by Mr. Elberson’s
testimony, we conclude that Exhibit 1003 is prior art under 35 U.S.C.
§ 102(a) to the ’204 patent. Petitioner does not challenge claim 1 as
anticipated under 35 U.S.C. § 102(a), however. Petitioner only challenges
claim as being anticipated by Exhibit 1003 under 35 U.S.C. § 102(b).
Petitioner has not proved by a preponderance of the evidence that claim 1 is
anticipated under 35 U.S.C. § 102(b) by Gun Flush Box Module Instructions
 Parts List 684-019 (Ex. 1003) as challenged in the Petition.
E. Anticipation by Graco Dual Gun Flush Box Program Listing Associated
with Operation of Gun Flush Box Module (Ex. 1004)
Petitioner alleges that claim 1 of the ’204 patent is unpatentable under
35 U.S.C. § 102(b) over Exhibit 1004. Pet. 13.
For the reasons discussed below, we conclude that Petitioner has
proved by a preponderance of the evidence that claim 1 is anticipated by
Exhibit 1004.
1. Overview of Graco Dual Gun Flush Box Program Listing Associated
with Operation of Gun Flush Box Module (Ex. 1004)
Exhibit 1004 is associated with the operation of a Gun Flush Box
Module and describes software coding for the operation of the Graco Dual
Gun Flush Box. Ex. 1004, 1. Exhibit 1004 discloses that the “purge output
rung to PMix” is activated (i) when the spray gun is mounted in the gun
flush box and when the selector is set to purge, (ii) when the pot life time is
activated, (iii) when the pot life input is received from the PMix, or (iv)
when a ratio alarm is received from the PMix. Ex. 1004, 18.
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1004, 27. According to Exhibit 1004, a purge will be done only when a
spray gun is sensed in the gun flush box. Id.
2. Analysis
a. Whether Graco Dual Gun Flush Box Program Listing
Associated with Operation of Gun Flush Box Module (Ex.
1004) Is Prior Art.
Petitioner contends that Exhibit 1004 qualifies as prior art because it
was provided to a customer of Patent Owner when a Graco dual gun flush
box was installed at Cooper in Waukesha, Wisconsin in 1997. Pet. 10.
Petitioner then contends that Exhibit 1004 was “publically available as being
provided with systems sold by the patent owner more than one year before
the earliest claimed priority of the [’204 patent].” Id. at 11.
Patent Owner does not challenge the content of Exhibit 1004 or the
relevance of Exhibit 1004 to challenged claim 1. PO Resp. 3. Rather,
Patent Owner argues that Petitioner failed to authenticate the document as
prior art. Id. To counter Patent Owner’s argument, Petitioner provides the
Declaration of Michael Elberson in support of Petitioner’s contention that
the contested reference is prior art. Ex. 1008. Patent Owner did not file a
motion to exclude Exhibit 1004 or Mr. Elberson’s Declaration, nor did
Patent Owner depose Mr. Elberson.
Mr. Elberson testified, in his Declaration, that prior to filing the
Petition, he contacted Cooper, a former customer of Patent Owner that had
possession of certain documents related to Patent Owner’s gun flush box
modules, including Exhibit 1004. Id. ¶ 5. Mr. Elberson further testified that
he received Exhibit 1004 from Cooper in response to his request. Id. ¶ 6.
Mr. Elberson testified that he understands Exhibit 1004 to be an “off-the-
shelf” document that is provided by Patent Owner to any of its customers
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Patent 6,554,204 B1

20
that purchases the Graco Gun Flush Box Module. Id. ¶ 7. Mr. Elberson
opined that Exhibit 1004 has been available freely to people in the industry
since the time it entered into Cooper’s possession. Id. Mr. Elberson then
testified that Exhibit 1004 was provided to Petitioner by Patent Owner’s
representative and then Petitioner gave Exhibit 1004 to Cooper during the
installation of the Graco Gun Flush Box Module at a Cooper facility in May
1997. Id. ¶¶ 3, 7. Mr. Elberson testified that he freely viewed Exhibit 1004
and Exhibit 1006 during the installation at Cooper in May 1997. Id. ¶¶ 4–7.
On its face, each program listing in the operational code in Exhibit
1004 shows a date of April 30, 1997, which is more than one year prior to
the October 8, 1999 filing date of the provisional patent application from
which the ’204 claims priority. Ex. 1004; see Ex. 1001. The date shown on
Exhibit 1004 corroborates the testimony of Mr. Elberson that Exhibit 1004
was available at a Cooper facility in May 1997.
Patent Owner gives us no reason to doubt that Exhibit 1004 is a copy
of the actual document given to Graco’s customers or that Exhibit 1004 was
available publically more than one year before the earliest claimed priority
of the ’204 patent, nor does Patent Owner direct us to specific evidence that
undercuts Mr. Elberson’s testimony in that regard. Given the information
provided by Exhibit 1004 itself and the uncontested testimony of Mr.
Elberson, we are satisfied Petitioner has demonstrated by a preponderance of
the evidence that Exhibit 1004 is § 102(b) prior art to the ’204 patent.
b. Whether Graco Dual Gun Flush Box Program Listing
Associated with Operation of Gun Flush Box Module (Ex.
1004) Meets the Claim Limitations.
Petitioner contends that every limitation in claim 1 of the ’204 patent
is disclosed by Exhibit 1004. Pet. 14. According to Petitioner, Exhibit 1004
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Patent 6,554,204 B1

21
discloses (i) a gun flush box connected to a control unit and capable of
receiving an application device, (ii) that the control unit is capable of
calculating pot life of mixed materials and alarming to require placement of
an application device in the gun flush box, and (iii) that the control unit is
responsive to placement of the application device in the gun flush box to
operate the application device. Id. Patent Owner does not contest
Petitioner’s arguments and specifically states that it does not challenge the
consideration of the content of Exhibit 1004 or the relevance of Exhibit 1004
to challenged claim 1. PO Resp. 3
In reviewing Exhibit 1004, we are persuaded by Petitioner’s
contention that every limitation in claim 1 of the ’204 patent is disclosed by
Exhibit 1004. Specifically, Exhibit 1004 discloses Dual Gun Flush Box
program software that is an executed processor file. Id. at 1. The software
receives signals when a spray gun is mounted in a gun flush box (id. at 18),
and then causes a purge to be performed only in response to placement of a
spray gun in the gun flush box (id. at 27). Exhibit 1004 further discloses that
the software includes a pot life sequence timer that can count down the pot
life of material in the system. Id. at 18. The information regarding the pot
life results in the software activating an alarm when the pot life sequence
timer reaches a specific time. Id. The alarm information is sent to the Graco
PrecisionMix® Proportioning Controller in the PrecisionMix® system. Id.
Such disclosures indicate that (i) a gun flush box is connected to a control
unit, and (ii) the control unit has software that calculates pot life or is
capable of calculating pot life. Although Exhibit 1004 does not disclose
explicitly a control unit, the evidence associated with the disclosed software
and program listings indicate that a control unit necessarily is present, and
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Patent 6,554,204 B1

22
we are satisfied that it would be so recognized by persons of ordinary skill.
See Continental Can Co., 948 F.2d at 1268.
Accordingly, we determine that Petitioner has proved by a
preponderance of the evidence that claim 1 is anticipated by Exhibit 1004.
F. Obviousness over Gun Flush Box Module Instructions  Parts
List 684-019 (Ex. 1003), Graco Dual Gun Flush Box Program
Listing Associated with Operation of Gun Flush Box Module (Ex.
1004), and PrecisionMix® Proportioning Control Instructions —
Parts List 684-029 (Ex. 1005)
Petitioner alleges that claim 1 of the ’204 patent is unpatentable under
35 U.S.C. § 103(a) over Gun Flush Box Module Instructions  Parts List
684-019 (Ex. 1003), Graco Dual Gun Flush Box Program Listing Associated
with Operation of Gun Flush Box Module (Ex. 1004), and PrecisionMix®
Proportioning Control Instructions  Parts List 684-029 (Ex. 1005). Pet.
15.
For the reasons discussed below, we conclude that Petitioner has
proved by a preponderance of the evidence that claim 1 would have been
obvious over Ex. 1003, Ex. 1004, and Ex. 1005.
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Patent 6,554,204 B1

23
1. Overview of Gun Flush Box Module Instructions  Parts List 684-
019 (Ex. 1003)
See Section II.D.1 discussed above.
2. Overview of Graco Dual Gun Flush Box Program Listing Associated
with operation of Gun Flush Box Module (Ex. 1004)
See Section II.E.1 discussed above.
3. Overview of PrecisionMix® Proportioning Control Instructions 
Parts List 684-029 (Ex. 1005)
Ex. 1005 discloses instructions for the operation of the Graco
PrecisionMix® Proportioning Controller for the proportional mixing of
plural components and its use in connection with the Graco Gun Flush Box.
Ex. 1005, 1. Exhibit 1005 has on its face a copyright date of 1998. Id. The
PrecisionMix® Proportioning Controller of Exhibit 1005 is designed to
blend most two-component epoxy or polyurethane paints. Id. at 6, col. 1 ¶ 1.
The two components (generally catalyst and resin) are introduced into an
integrator chamber one at a time, through separate fluid lines, and then
mixed. Id. at 6, col. 1 ¶ 6col. 2 ¶ 1. The mixture is given a further
“homogeneous blending” as they pass through a static mixer tube. Id. at
6, col. 2 ¶ 1.
A diagram illustrating the components of the Graco PrecisionMix®
system is shown in Figure 3 of Exhibit 1005, reproduced below:
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IPR2013-00452
Patent 6,554,204 B1

27
that Exhibit 1005 was “publically available as being provided with systems
sold by the patent owner more than one year before the earliest claimed
priority of the [’204 patent.]” Id. at 11.
Patent Owner does not challenge the content of Exhibit 1005 or the
relevance of Exhibit 1005 to challenged claim 1. PO Resp. 3. Rather,
Patent Owner argues that Petitioner failed to authenticate the document as
prior art. Id. To counter Patent Owner’s argument, Petitioner provides the
Declaration of Michael Elberson in support of Petitioner’s contention that
the contested reference is prior art. Ex. 1008. Patent Owner did not file a
motion to exclude Exhibit 1005 or Mr. Elberson’s Declaration, nor did
Patent Owner depose Mr. Elberson.
Mr. Elberson testified, in his Declaration, that prior to filing the
Petition, he contacted Cooper, a former customer of Patent Owner that had
possession of certain documents related to Patent Owner’s gun flush box
modules, including Exhibit 1005. Id. ¶ 5. Mr. Elberson further testified that
he received Exhibit 1005 from Cooper in response to his request. Id. ¶ 6.
According to Mr. Elberson, Exhibit 1005 is an “off-the-shelf” document that
is provided by Patent Owner to any of its customers that purchase the Graco
Gun Flush Box Module. Id. ¶ 7. Mr. Elberson opined that Exhibit 1005 has
been available freely to people in the industry since the time it entered into
Cooper’s possession. Id.
Exhibit 1005 shows a copyright date of 1998. Ex. 1005, Title page.
Given that the copyright date indicates only the year of the copyright, and
not a specific date, we determine that the document is entitled to a copyright
of December 31, 1998. In light of the testimony of Mr. Elberson and the
copyright date listed on the face of Exhibit 1003, we are satisfied that
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Patent 6,554,204 B1

28
Exhibit 1005 would have been available publically at least by December 31,
1998. December 31, 1998, is less than one year prior to the October 8, 1999
filing date of the provisional patent application from which the ’204 patent
claims priority. See Ex. 1001. Therefore, Exhibit 1005 does not qualify as
§ 102(b) prior art, but it does qualify as § 102(a) prior art.
Patent Owner gives us no reason to doubt that Exhibit 1005 is a copy
of the actual document given to Graco’s customers. Based upon the
information provided by Exhibit 1005 itself, we conclude that Petitioner has
demonstrated by a preponderance of the evidence that Exhibit 1005 is prior
art under 35 U.S.C. § 102(a) and can be applied in our analysis of the ’204
patent under 35 U.S.C. § 103(a).
b. Whether Gun Flush Box Module Instructions  Parts List 684-
019 (Ex. 1003), Graco Dual Gun Flush Box Program Listing
Associated with Operation of Gun Flush Box Module (Ex.
1004), and PrecisionMix® Proportioning Control Instructions
 Parts List 684-029 (Ex. 1005) Meet the Claim Limitations
Petitioner contends that every limitation in claim 1 of the ’204 patent
is taught or suggested by the combination of Exhibits 1003, 1004, and 1005.
Pet. 15. According to Petitioner, Exhibit 1005 discloses a system that
includes the calculation of material pot life, generation of an alarm to require
placement of the application device in the gun flush box, and which is
responsive to the placement of the application device in the box. Id. at 18.
According to Petitioner, because gun flush boxes were well known at the
time of filing the application that became the ’204 patent, as is disclosed
expressly in the ’204 patent, using the control as disclosed in Exhibit 1005 to
calculate pot life of a mixed material and alarm to require actuation of the
application device or placement of the same in a gun flush box would have
IPR2013-00452
Patent 6,554,204 B1

29
been obvious to even those of less than ordinary skill in the art in view of the
disclosure of Exhibit 1005. Id.
Furthermore, we note that Exhibit 1005 is referenced specifically in
Exhibit 1003 (Ex. 1003, 10), while Exhibit 1004 references the Graco Duel
Gun Flush Box product disclosed in Exhibits 1003 and 1005 (Ex. 1004, 1).
Therefore, we are persuaded by Petitioner’s contention that it would have
been obvious to one of ordinary skill in the art to combine the Graco Dual
Gun Flush Box systems disclosed in Exhibit 1003 with the software for the
Graco Dual Gun Flush Box systems disclosed in Exhibit 1004 and with the
Graco PrecisionMix® Proportioning Controller disclosed in Exhibit 1005.
For the foregoing reasons, we are persuaded that Petitioner has
demonstrated by a preponderance of the evidence that independent claim 1 is
unpatentable over the combination of the teachings found in Exhibits 1003,
1004, and 1005.
III. CONCLUSION

We conclude Petitioner has demonstrated by a preponderance of the
evidence that:
1. Claim 1 is unpatentable under 35 U.S.C. § 102(b) as anticipated by
Graco Dual Gun Flush Box Program Listing Associated with operation
of Gun Flush Box Module (Ex. 1004); and
2. Claim 1 is unpatentable under 35 U.S.C. § 103(a) as obvious over the
combination of Gun Flush Box Module Instructions  Parts List 684-
019 (Ex. 1003), Graco Dual Gun Flush Box Program Listing
Associated with Operation of Gun Flush Box Module (Ex. 1004), and
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30
PrecisionMix® Proportioning Control Instructions  Parts List 684-
029 (Ex. 1005).
IV. ORDER

In consideration of the foregoing, it is hereby:
ORDERED that, based on a preponderance of the evidence, claim 1 of
the ’204 patent is unpatentable;
FURTHER ORDERED that, because this is a final written decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

For PETITIONER:

Kirk L. Deheck
James F. Boyle
BOYLE FREDRICKSON, S.C.
kld@boylefred.com
jfb@boylefred.com

For PATENT OWNER:

William K. Weimer
FAEGRE BAKER DANIELS
PatentDocketing@FaegreBD.com