Columbia Insurance Company

Patent Trials and Appeals Board

Mar 11, 2021

PGR2019-00063 (P.T.A.B. Mar. 11, 2021)

Trials@uspto.gov Paper 52
571-272-7822 Date: March 11, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

SIMPSON STRONG-TIE COMPANY INC.,
Petitioner,

v.

COLUMBIA INSURANCE COMPANY,
Patent Owner.
____________

PGR2019-00063
Patent 10,316,510 B2
____________

Before SCOTT A. DANIELS, NEIL T. POWELL, and
STEPHEN E. BELISLE, Administrative Patent Judges.

BELISLE, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
Granting-in-Part Patent Owner’s Revised Contingent Motion to Amend
35 U.S.C. § 328(a)
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UNITED STATES PATENT AND TRADEMARK OFFICE ...................... 1
I. INTRODUCTION ................................................................................ 1
A. Case Posture ............................................................................... 1
B. Related Proceeding ..................................................................... 2
C. The ’510 Patent .......................................................................... 3
D. Illustrative Claim ........................................................................ 7
E. Applied References .................................................................... 8
F. Instituted Grounds of Unpatentability........................................ 8
II. ANALYSIS: ORIGINAL CLAIMS 1–20 ........................................... 9
A. Applicable Law .......................................................................... 9
1. Written Description ........................................................ 10
2. Indefiniteness ................................................................. 11
3. Anticipation.................................................................... 12
4. Obviousness ................................................................... 12
B. Level of Ordinary Skill in the Art ............................................ 14
C. Claim Construction .................................................................. 15
D. Unpatentability of Claims 1–19 Based on Lack of
Written Description .................................................................. 16
E. Unpatentability of Claim 20 Based on Indefiniteness ............. 23
F. Anticipation of Claims 1–19 by Brekke ’370 .......................... 28
G. Obviousness of Claims 1–20 Over the Combination of
Gilb ’155, Bundy, and Allan .................................................... 30
1. Overview of Gilb ’155 ................................................... 31
2. Overview of Bundy ........................................................ 34
3. Independent Claim 1 ...................................................... 35
a) “A hanger for connecting a structural
component to a wall adapted to have
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sheathing mounted thereon, the hanger
comprising:” ........................................................ 35
b) “a channel-shaped portion configured to
receive the structural component, the
channel-shaped portion including a base
sized and shaped for receiving an end of the
structural component thereon to support the
structural component, and side panels
extending upward from the base generally
perpendicular to the base, the side panels
having rearward edges lying in a rear edge
plane;” .................................................................. 37
c) “an extension portion extending from the
channel-shaped portion and configured to
extend through the sheathing; and” ..................... 39
(1) Claim Construction: “configured to
extend through the sheathing” ................... 41
(2) Disclosure of Gilb ’155 ............................. 52
d) “a connection portion including a top flange
configured for attachment to a top surface of
a top plate of the wall, the connection portion
further including a back flange extending
from an edge of the top flange in a direction
toward a plane of the base of the channel-
shaped portion, the back flange having a front
surface lying in a back flange plane,” ................. 55
e) “the extension portion spacing the side panels
from the back flange plane by a distance sized
large enough to permit two layers of 5/8 inch
thick sheathing to be received between the
rear edge plane and the back flange plane, but
too small to permit three layers of 5/8 inch
thick sheathing to be received between the
rear edge plane and the back flange plane.” ........ 56
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(1) Spacing Dimension Limitation ................. 57
(2) Reason to Combine Gilb ’155 and
Bundy ........................................................ 57
(3) Operable for Intended Purpose ................. 60
(4) Allan .......................................................... 63
f) Objective Evidence of Nonobviousness .............. 63
g) Conclusion ........................................................... 68
4. Independent Claims 13 and 20 ...................................... 68
5. Dependent Claims 2–12 and 14–19 ............................... 70
a) Claims 2 and 14 ................................................... 70
b) Claim 3 ................................................................ 71
c) Claim 4 ................................................................ 71
d) Claims 5 and 18 ................................................... 72
e) Claim 6 ................................................................ 73
f) Claim 7 ................................................................ 73
g) Claim 8 ................................................................ 74
h) Claims 9 and 15 ................................................... 74
i) Claims 10 and 16 ................................................. 75
j) Claims 11 and 17 ................................................. 76
k) Claims 12 and 19 ................................................. 76
6. Summary ........................................................................ 80
H. Obviousness of Claims 12 and 19 Over the Combination
of Gilb ’155, Bundy, Allan, and Gilb ’942 .............................. 80
I. Summary of Analysis of Original Claims 1–20 ....................... 81
III. REVISED CONTINGENT MOTION TO AMEND ......................... 83
A. Applicable Law ........................................................................ 83
B. Proposed Substitute Claims ..................................................... 85
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C. Statutory and Regulatory Requirements .................................. 88
1. Reasonable Number of Claims (35 U.S.C.
§ 326(d)(1)(B); 37 C.F.R. § 42.221(a)(3)) .................... 88
2. Respond to a Ground of Unpatentability (37 C.F.R.
§ 42.221(a)(2)(i)) ........................................................... 88
3. Scope of Amended Claims (35 U.S.C. § 326(d)(3);
37 C.F.R. § 42.221(a)(2)(ii)) ......................................... 89
4. New Matter or Written Description (35 U.S.C.
§ 326(d)(3); 37 C.F.R. § 42.221(b)(1)) .......................... 89
a) Citations to Show Written Description
Support ................................................................. 90
b) Written Description Support for “Rigidly
Fixed” and Negative Spacing Limitation in
Claims 21–39 ....................................................... 94
(1) Negative Spacing Limitation .................... 95
(2) “Rigidly Fixed” Limitation ....................... 95
5. Conclusion ................................................................... 102
D. Unpatentability of Proposed Substitute Claims 21–40 as
Indefinite ................................................................................ 102
1. “Rigidly Fixed” ............................................................ 103
2. Large Enough Limitation ............................................. 104
E. Obviousness of Proposed Substitute Claims 21, 22, 24,
26–37, 39, and 40 Over the Combination of Tsukamoto,
Bundy, and Allan ................................................................... 104
1. Structure Disclosed by Tsukamoto .............................. 105
2. Meaning of “Extending From” .................................... 106
3. “a back flange extending from an edge of the top
flange in a direction toward a plane of the base of
the channel-shaped portion” ........................................ 110
4. Conclusion ................................................................... 118
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F. Obviousness of Proposed Substitute Claim 23 Over the
Combination of Tsukamoto, Bundy, Allan, and Gilb ’416 ... 118
G. Obviousness of Proposed Substitute Claims 21–40 Over
the Combination of Gilb ’155, Bundy, Allan, and Gilb
’942 ......................................................................................... 119
1. Rigidly Fixed Limitation ............................................. 120
a) Impermissible Hindsight ................................... 120
b) Inoperability for Intended Purpose .................... 124
2. Extension Flange Limitation ........................................ 125
3. Conclusion ................................................................... 125
H. Obviousness of Proposed Substitute Claims 21–24, 26–
37, 39 and 40 Over the Combination of Timony and
Bundy ..................................................................................... 126
1. Structure Disclosed by Timony ................................... 126
2. Rationale For Combining Bundy’s “Top Flange”
With Timony’s Hanger ................................................ 128
3. Conclusion ................................................................... 130
I. Obviousness of Proposed Substitute Claim 23 Over
Timony, Bundy, and Gilb ’416 .............................................. 131
J. Obviousness of Proposed Substitute Claims 32 and 39
Over Timony, Bundy, and Gilb ’942 ..................................... 131
K. Summary of Analysis of Proposed Substitute Claims 21–
40 ............................................................................................ 132
IV. CONCLUSION ................................................................................ 134
V. ORDER ............................................................................................. 135
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I. INTRODUCTION
A. Case Posture
Simpson Strong-Tie Company Inc. (“Petitioner”) filed a Petition
(Paper 2, “Pet.”) to institute a post-grant review of claims 1–20 (“the
challenged claims”) of U.S. Patent No. 10,316,510 B2 (Ex. 1001,
“the ’510 patent”). Columbia Insurance Company (“Patent Owner”) filed a
Preliminary Response to the Petition (Paper 8, “Prelim. Resp.”). In addition,
with prior authorization from the Board, the parties filed supplemental
briefing concerning the Preliminary Response. Papers 11, 13. We instituted
a post-grant review of claims 1–20 of the ’510 patent on all grounds of
unpatentability alleged in the Petition. Paper 14 (“Institution Decision” or
“Dec.”).
After institution, Patent Owner filed a Response. Paper 27
(“PO Resp.”). Petitioner filed a Reply. Paper 32 (“Pet. Reply”). Patent
Owner filed a Sur-Reply. Paper 36 (“PO Sur-Reply”). Patent Owner filed a
Contingent Motion to Amend. Paper 28. Petitioner filed an Opposition to
the Contingent Motion to Amend. Paper 33. Patent Owner filed a Revised
Contingent Motion to Amend. Paper 37 (“RMTA”). Petitioner filed an
Opposition to the RMTA. Paper 40 (“RMTA Opp.”). Patent Owner filed a
Reply to the RMTA Opposition. Paper 43 (“RMTA Reply”). Petitioner
filed a Sur-Reply to the RMTA Reply. Paper 48 (“RMTA Sur-Reply”). We
held a hearing on January 14, 2021, and a transcript of the hearing appears in
the record. Paper 51 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6. The evidentiary standard is
a preponderance of the evidence. See 35 U.S.C. § 326(e) (2018); 37 C.F.R.
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§ 42.1(d) (2019). This Final Written Decision is issued pursuant to
35 U.S.C. § 328(a) and 37 C.F.R. § 42.73.
For the reasons discussed below, we determine (1) Petitioner has
established by a preponderance of the evidence that claims 1–20 of the
’510 patent are unpatentable; (2) Patent Owner has not satisfied the statutory
requirements of 35 U.S.C. § 326(d) and the procedural requirements of
37 C.F.R. § 42.221 as to proposed substitute claims 21–39, and therefore, we
deny Patent Owner’s RMTA as to proposed substitute claims 21–39; and
(3) Patent Owner has satisfied the statutory requirements of 35 U.S.C.
§ 326(d) and the procedural requirements of 37 C.F.R. § 42.221 as to
proposed substitute claim 40, and Petitioner has not demonstrated
unpatentability of this claim by a preponderance of evidence, and therefore,
we grant Patent Owner’s RMTA as to proposed substitute claim 40.
B. Related Proceeding
The parties identify the following active matter as related to the
’510 patent (Pet. 137; Paper 4, 2):
Columbia Insurance Company et al v. Simpson Strong-Tie Company
Inc., No. 3-19-cv-04683 (N.D. Cal.) (“Related Litigation”).
The parties also identify pending U.S. Patent Application
No. 16/433,799, filed June 6, 2019, as claiming benefit of the ’510 patent.
Pet. 137; Paper 4, 2. Although not advised by the parties,1 we note that

1 See 37 C.F.R. § 42.11(a) (“Parties and individuals involved in the
proceeding have a duty of candor and good faith to the Office during the
course of a proceeding.”).
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action by the USPTO is suspended on this application at the applicant’s
request. See Letter of Suspension – Applicant Initiated, mailed Sept. 24,
2020.
C. The ’510 Patent
The ’510 patent is titled “Hanger For Fire Separation Wall,” and
issued on June 11, 2019, from U.S. Application No. 16/225,517, filed
December 19, 2018. Ex. 1001, codes (10), (21), (22), (45), (54). The
’510 patent claims priority to U.S. Provisional Application No. 61/922,531,
filed December 31, 2013. Ex. 1001, code (60).
The ’510 patent generally relates to “a truss hanger for connecting a
truss to a wall including fire retardant sheathing.” Id. at 1:16–18. Figure 2
of the ’510 patent is reproduced below.
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Figure 2 is a perspective view of a truss hanger.
Id. at 2:54–55.
Figure 2 shows truss hanger 26 having three main portions: channel-
shaped portion 38, extension portion 40, and connection portion 42. Id. at
4:29–31. Channel-shaped portion 38 is configured to receive floor truss 12
(not shown), and includes seat or base 44 and a pair of side panels 46
extending upward from base 44. Id. at 4:31–34. When installed, base 44 is
generally horizontal, and side panels 46 extend generally vertical from
base 44. Id. at 4:34–36. Back panel 48 extends from each of side panels 46,
and each back panel 48 is generally perpendicular to both side panels 46 and
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base 44. Id. at 4:36–39. When installed, each back panel 48 extends
generally parallel to interior face 50 of fire retardant sheathing 34 (not
shown). Id. at 4:39–41.
Extension portion 40 includes two extension flanges 60 configured to
extend through fire retardant sheathing 34 (not shown). Id. at 4:63–65.
Each flange 60 extends from one of back panels 48, and is “positioned in
opposed, face-to-face relation,” “preferably engag[ing] each other along a
juncture.” Id. at 4:65–5:1. Back flange 66 extends generally perpendicular
from each of extension flanges 60, and is oriented generally parallel to back
panels 48. Id. at 5:1–3.
Connection portion 42 includes a pair of connector tabs 74 extending
from back flanges 66. Id. at 6:32–34. Each connector tab 74 extends
generally perpendicular from one of back flanges 66, and is generally
horizontal when hanger 26 is installed. Id. at 6:34–37.
Truss hanger 26 mounts to framing of a wall during construction as
shown in Figure 10 of the ’510 patent, reproduced below. Id. at 5:27–36.
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Figure 10 is a perspective view of wall 28 having fire
retardant sheathing 34 with a slot cut in the sheathing to
receive truss hanger 26.
Id. at 2:54–55. Once installed, a portion of fire retardant sheathing 34
extends into each sheathing channel 68 and is secured between back
panels 48 and back flanges 66. Id. at 5:33–36. According to the ’510 patent,
an exemplary embodiment of fire retardant sheathing 34, as shown in
Figure 10 for example, is gypsum board, such as two layers of 5/8" gypsum
board. Id. at 4:13–19.
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According to the ’510 patent, the use of truss hanger 26 allows for the
mounting of joists to fire separation walls with less interruption to the wall’s
fire retardant sheathing, thus minimizing any reduction in the wall’s fire
resistant rating. See id. at 1:22–38.
D. Illustrative Claim
The ’510 patent includes 20 claims, all of which are challenged.
Claims 1, 13, and 20 are independent claims. Claim 1 is illustrative and
reproduced below.
1. A hanger for connecting a structural component to a wall
adapted to have sheathing mounted thereon, the hanger
comprising:
a channel-shaped portion configured to receive the structural
component, the channel-shaped portion including a base
sized and shaped for receiving an end of the structural
component thereon to support the structural component,
and side panels extending upward from the base generally
perpendicular to the base, the side panels having rearward
edges lying in a rear edge plane;
an extension portion extending from the channel-shaped
portion and configured to extend through the sheathing;
and
a connection portion including a top flange configured for
attachment to a top surface of a top plate of the wall, the
connection portion further including a back flange
extending from an edge of the top flange in a direction
toward a plane of the base of the channel-shaped portion,
the back flange having a front surface lying in a back
flange plane, the extension portion spacing the side panels
from the back flange plane by a distance sized large
enough to permit two layers of 5/8 inch thick sheathing to
be received between the rear edge plane and the back
flange plane, but too small to permit three layers of 5/8
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inch thick sheathing to be received between the rear edge
plane and the back flange plane.
Ex. 1001, 12:10–36.
E. Applied References
Petitioner relies upon the following references:
Brekke, U.S. Patent Publication No. 2015/0184370
(Ex. 1027, “Brekke ’370”), published July 2, 2015.
Tsukamoto, Japanese Patent Publication
No. JPH0314482Y2 (Ex. 1009, “Tsukamoto”), published
October 16, 1987 (citations herein to Tsukamoto are to the
certified translation thereof included in Ex. 1009).
Bundy et al., U.S. Patent No. 9,394,680 (Ex. 1007,
“Bundy”), filed December 14, 2013 and issued July 19, 2016.
Allan, U.S. Patent No. 4,827,684 (Ex. 1012, “Allan”),
issued May 9, 1989.
Gilb, U.S. Patent No. 4,230,416 (Ex. 1011, “Gilb ’416”),
issued October 28, 1980.
Gilb, U.S. Patent No. 4,261,155 (Ex. 1010, “Gilb ’155”),
issued April 14, 1981.
Gilb, U.S. Patent No. 4,005,942 (Ex. 1032, “Gilb ’942”),
issued February 1, 1977.
Timony, U.S. Patent Publication No. 2005/0155307
(Ex. 1008, “Timony”), published July 21, 2005.
Pet. 1–3.
F. Instituted Grounds of Unpatentability
We instituted post-grant review of claims 1–20 of the ’510 patent on
the following grounds. Dec. 2–3, 9, 62.
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Claim(s) Challenged 35 U.S.C. § Reference(s)
1–19 112(a) N/A
20 112(b) N/A
1–19 102 Brekke ’370
1–2, 4, 6–17,
19, 20
103 Tsukamoto, Bundy,
Allan
3 103 Tsukamoto, Bundy,
Allan, Gilb ’416
1–20 103 Gilb ’155, Bundy,
Allan
12, 19 103 Gilb ’155, Bundy,
Allan, Gilb ’942
1–4, 6–17, 19,
20
103 Timony, Bundy
3 103 Timony, Bundy, Gilb ’416
12, 19 103 Timony, Bundy, Gilb ’942
Petitioner relies on the Declarations of W. Andrew Fennell
(Exs. 1003, 1036, 1039, 1042). Patent Owner relies on the Declarations of
Reynaud Serrette, Ph.D. (Exs. 2001, 2042, 2044, 2055, 2057).
II. ANALYSIS: ORIGINAL CLAIMS 1–20
A. Applicable Law
Petitioner challenges the patentability of claims 1–20 of the
’510 patent on the grounds that various claims lack written description, are
indefinite, or are anticipated under 35 U.S.C. § 102 or obvious under
35 U.S.C. § 103 in light of various references including: Brekke ’370,
Tsukamoto, Bundy, Allan, Gilb ’416, Gilb ’155, Gilb ’942, and Timony.
To prevail in its challenges to the patentability of the claims, Petitioner must
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establish unpatentability by a preponderance of the evidence. 35 U.S.C.
§ 326(e); 37 C.F.R. § 42.1(d). In a post-grant review, the petitioner has the
burden from the onset to show with particularity why the patent it challenges
is unpatentable. See 35 U.S.C. § 322(a)(3)(requiring post-grant review
petitions to identify “with particularity . . . the evidence that supports the
grounds for the challenge to each claim”); cf. Harmonic Inc. v. Avid Tech.,
Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (“[I]t was [Petitioner’s] burden to
explain to the Board how [the combination of prior art] rendered the
challenged claims unpatentable.”). This burden never shifts to Patent
Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d
1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc.,
545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in
inter partes review).
1. Written Description
Under 35 U.S.C. 112(a), a patent specification shall contain a “written
description” of the invention. The purpose of the written description
requirement is to “‘ensure that the scope of the right to exclude, as set forth
in the claims, does not overreach the scope of the inventor’s contribution to
the field of art as described in the patent specification.’” Univ. of Rochester
v. G.D. Searle & Co., 358 F.3d 916, 920 (Fed. Cir. 2004) (quoting Reiffin v.
Microsoft Corp., 214 F.3d 1342, 1345 (Fed. Cir. 2000)). This requirement
protects the quid pro quo between inventors and the public, whereby the
public receives “meaningful disclosure in exchange for being excluded from
practicing the invention for a limited period of time.” Enzo Biochem, Inc. v.
Gen–Probe Inc., 323 F.3d 956, 970 (Fed. Cir. 2002).
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To satisfy the written description requirement, the disclosure must
reasonably convey to skilled artisans that the inventor possessed the claimed
invention as of the filing date. See Ariad Pharms., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). “One does that by such
descriptive means as words, structures, figures, diagrams, formulas, etc., that
fully set forth the claimed invention.” Lockwood v. Am. Airlines, Inc.,
107 F.3d 1565, 1572 (Fed. Cir. 1997) (emphasis added). “The invention is,
for purposes of the ‘written description’ inquiry, whatever is now claimed.”
Vas–Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991). Such
description need not recite the claimed invention in haec verba but must do
more than merely disclose that which would render the claimed invention
obvious. Univ. of Rochester, 358 F.3d at 923; Regents of the Univ. of Cal. v.
Eli Lilly & Co., 119 F.3d 1559, 1566–67 (Fed. Cir. 1997); see also
PowerOasis, Inc. v. T–Mobile USA, Inc., 522 F.3d 1299, 1306–07 (Fed. Cir.
2008) (explaining that § 112, ¶ 1 “requires that the written description
actually or inherently disclose the claim element”).
2. Indefiniteness
Under 35 U.S.C. 112(b), a patent specification “shall conclude with
one or more claims particularly pointing out and distinctly claiming the
subject matter which the inventor . . . regards as the invention.” This is
commonly referred to as the definiteness requirement.
The Board applies in post-grant reviews the same indefiniteness
standard as used in federal courts and the U.S. International Trade
Commission under Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898
(2014), and its progeny. USPTO Memorandum, Approach To Indefiniteness
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Under 35 U.S.C. § 112 In AIA Post-Grant Proceedings (Jan. 6, 2021).
Under Nautilus, “[a] patent is invalid for indefiniteness if its claims, read in
light of the patent’s specification and prosecution history, fail to inform,
with reasonable certainty, those skilled in the art about the scope of the
invention.” Nautilus, 572 U.S. at 898–99 (emphasis added). “[A] patent
must be precise enough to afford clear notice of what is claimed, thereby
apprising the public of what is still open to them,” but the present standard
recognizes that “absolute precision is unattainable.” Id. at 899 (internal
quotation marks omitted).
3. Anticipation
To serve as an anticipatory reference under 35 U.S.C. § 102, “the
reference must disclose each and every element of the claimed invention,
whether it does so explicitly or inherently.” In re Gleave, 560 F.3d 1331,
1334 (Fed. Cir. 2009). “The identical invention must be shown in as
complete detail as is contained in the . . . claim.” Richardson v. Suzuki
Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989) (emphasis added).
The elements must be arranged as required by the claim, “but this is not an
‘ipsissimis verbis’ test,” i.e., identity of terminology is not required. In re
Bond, 910 F.2d 831, 832–33 (Fed. Cir. 1990) (citing Akzo N.V. v. United
States Int’l Trade Comm’n, 808 F.2d 1471, 1479 & n.11 (Fed. Cir. 1986)).
4. Obviousness
A claim is unpatentable under 35 U.S.C. § 103 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
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subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). 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 skill in the art; and (4) when of record, objective evidence of
non-obviousness, i.e., secondary considerations. Graham v. John Deere Co.,
383 U.S. 1, 17–18 (1966). Secondary considerations may include the
following: “commercial success, long felt but unsolved needs, failure of
others, etc.” Id. The totality of the evidence submitted may show that the
challenged claims would not have been obvious to one of ordinary skill in
the art. In re Piasecki, 745 F.2d 1468, 1471–72 (Fed. Cir. 1984). When
evaluating a combination of teachings, we must also “determine whether
there was an apparent reason to combine the known elements in the fashion
claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006)).
The Supreme Court has made clear that we apply “an expansive and
flexible approach” to the question of obviousness. Id. at 415. Whether a
patent claiming a combination of prior art elements would have been
obvious is determined by whether the improvement is more than the
predictable use of prior art elements according to their established functions.
Id. at 417. To reach this conclusion, however, requires more than a mere
showing that the prior art includes separate references covering each
separate limitation in a claim under examination. Unigene Labs., Inc. v.
Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011). Rather, obviousness
requires the additional showing that a person of ordinary skill at the time of
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the invention would have selected and combined those prior art elements in
the normal course of research and development to yield the claimed
invention. Id. “To satisfy its burden of proving obviousness, a petitioner
cannot employ mere conclusory statements. The petitioner must instead
articulate specific reasoning, based on evidence of record, to support the
legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd.,
829 F.3d 1364, 1380 (Fed. Cir. 2016).
We analyze the challenges presented in the Petition and to the RMTA
(see section III, infra) in accordance with the above-stated principles.
B. Level of Ordinary Skill in the Art
Petitioner contends that a person of ordinary skill in the art, at the time
of the effective filing date of the ’510 patent, “would have had an education
background of, or practical experience providing an equivalent to, a
Bachelor of Science in Mechanical Engineering, Structural Engineering or a
related/equivalent field and at least four years of work experience in
construction connector design/development.” Pet. 11 (citing Ex. 1003 ¶ 14).
Similarly, Patent Owner contends that the skilled artisan “would have
acquired a body of knowledge gained through formal education, or practical
experience providing an equivalent to, a Bachelor of Science in Mechanical
Engineering, Civil/Structural Engineering, or a related/equivalent field, and
at least four years of work experience in construction connector
design/development.” PO Resp. 22; see Ex. 2001 ¶ 14.
Neither party argues that the outcome of this case would differ based
on our adoption of any particular definition of the level of ordinary skill in
the art. Although slight differences exist in the formulation of such skill
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level between the parties, we discern no meaningful differences because
none of those differences would affect the outcome of our analysis.
Accordingly, we apply the level of skill set forth in the preceding paragraph,
which also is consistent with the prior art before us. See Okajima v.
Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific
findings on the level of skill in the art does not give rise to reversible error
‘where the prior art itself reflects an appropriate level and a need for
testimony is not shown.’”); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir.
1995) (finding that the Board of Patent Appeals and Interferences did not err
in concluding that the level of ordinary skill in the art was best determined
by the references of record).
C. Claim Construction
We apply the claim construction standard articulated in Phillips v.
AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R.
§ 42.200(b). Under Phillips, claim terms are afforded “their ordinary and
customary meaning.” Phillips, 415 F.3d at 1312. “[T]he ordinary and
customary meaning of a claim term is the meaning that the term would have
to a person of ordinary skill in the art in question at the time of the
invention.” Id. at 1313. “In determining the meaning of the disputed claim
limitation, we look principally to the intrinsic evidence of record, examining
the claim language itself, the written description, and the prosecution
history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek,
Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d
at 1312–17). Extrinsic evidence is “less significant than the intrinsic record
in determining ‘the legally operative meaning of claim language.’” Phillips,
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415 F.3d at 1317. Only terms that are in controversy need to be construed,
and only to the extent necessary to resolve the controversy. Vivid Techs.,
Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec
Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017
(Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes
review).
The parties dispute the meanings of five claim limitations, namely,
(1) “the extension portion spacing the side panels from the back flange plane
by a distance . . . too small to permit three layers of 5/8 inch thick sheathing
to be received between the rear edge plane and the back flange plane,” as
recited in independent claim 1 (Pet. 12–13); (2) “formed as one piece,” as
recited in dependent claims 12 and 19 (Pet. 13–14; PO Resp. 30–31);
(3) “extend through,” as recited in independent claims 1, 13, and 20 and
dependent claim 4 (PO Resp. 22–24); (4) “[extension portion / extension
flanges] . . . configured to extend through the [fire barrier],” as recited in
independent claims 1, 13, and 20 (PO Resp. 24–29); and (5) “extending
from,” as recited in independent claims 1, 13, and 20 and dependent
claims 4, 11, and 17 (PO Resp. 30). To the extent necessary to resolve the
controversy before us, we address claim interpretation in our unpatentability
analysis below.
D. Unpatentability of Claims 1–19 Based on Lack of Written
Description
Petitioner contends claims 1–19 are unpatentable under 35 U.S.C.
§ 112(a) for lack of written description. Pet. 14–21; Pet. Reply 26–27.
Patent Owner opposes Petitioner’s contentions. PO Resp. 93–96; PO Sur-
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Reply 25–26. For the reasons expressed below, and based on the complete
record before us, we determine that Petitioner has demonstrated by a
preponderance of evidence that claims 1–19 are unpatentable under
35 U.S.C. § 112(a) for lack of written description.
“Sufficiency of written description is a question of fact.” Gen. Hosp.
Corp. v. Sienna Biopharmaceuticals, Inc., 888 F.3d 1368, 1371 (Fed. Cir.
2018). Whether a patent claim satisfies the written description requirement
depends on whether the description “clearly allow[s] persons of ordinary
skill in the art to recognize that [the inventor] invented what is claimed.”
Vas–Cath, 935 F.2d at 1562–63 (internal quotation marks omitted) (quoting
In re Gosteli, 872 F.2d 1008, 1012 (Fed. Cir. 1989)). “Negative claim
limitations are adequately supported when the specification describes a
reason to exclude the relevant limitation,” although “[s]uch written
description support need not rise to the level of disclaimer.” Santarus, Inc.
v. Par Pharm., Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012); see MPEP
§ 2173.05(i) (“Negative Limitations”). But “one cannot disclose a forest in
the original application, and then later pick a tree out of the forest and say
here is my invention. In order to satisfy the written description requirement,
the blaze marks directing the skilled artisan to that tree must be in the
originally filed disclosure.” Purdue Pharma L.P. v. Faulding Inc., 230 F.3d
1320, 1326–27 (Fed. Cir. 2000). Moreover, “where a specification discloses
a broad range of values and a value within that range is claimed, the
disclosure must allow one skilled in the art to ‘immediately discern the
limitation at issue in the claims.’” Gen. Hosp., 888 F.3d at 1372.
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Petitioner contends the Specification of the ’510 patent does not
provide written description support for the “negative limitation” in
independent claim 1 of “the extension portion spacing the side panels from
the back flange by a distance sized . . . too small to permit three layers of
5/8 inch thick sheathing to be received between the rear edge plane and the
back flange plane” (Ex. 1001, 12:30–36 (emphasis added)); and in
independent claim 13 of “the extension portion spacing the side panels from
the back flange by a distance sized . . . too small to permit three layers of 5/8
inch thick sheathing to be received in the space bounded by the side panels
and the back flange” (Ex. 1001, 13:28–34 (emphasis added)) (collectively,
the “Negative Spacing Limitation”). Pet. 14–21. Petitioner argues, based on
this negative limitation, “any extension portion distances sized to permit
three layers of 5/8" thick sheathing or more are explicitly excluded from the
scope of the claim,” but “such an upper bound on the gap size does not
appear to be described in the originally filed specification of the
’510 patent.” Pet. 15 (citing Ex. 1003 ¶ 67). Petitioner also argues the
’510 patent does not describe a reason to exclude three or more layers and
does not disavow three or more layers. See Pet. 14–21.
Patent Owner argues “[Petitioner] fails to account for the detailed
disclosures contained in the figures of the ’510 patent.” PO Resp. 93
(emphasis added); see id. at 93–96; Lockwood v. Am. Airlines, Inc., 107 F.3d
at 1572 (Possession is shown “by such descriptive means as words,
structures, figures, diagrams, formulas, etc., that fully set forth the claimed
invention.”). Patent Owner argues “[Petitioner’s] analysis inexplicably
ignores the detailed patent figures,” specifically, “Figures 1, 10A, 11, 13A,
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14A, 35, 36, 38, and 39,” which show that “the two layers of 5/8 inch
sheathing sufficiently fill the space between side panels (46) and back
flange (66) such that the disclosed hanger could not possibly receive an
additional third layer of 5/8 inch sheathing within the shown fixed space.”
PO Resp. 94–96. Patent Owner relies on these figures, along with a
statement in the Specification identifying the two layers of sheathing in the
figures as 5/8" gypsum board (Ex. 1001, 4:10–19), to allege written
description support. See generally PO Resp. 93–96; PO Sur-Reply 25–26.
In our Institution Decision, we preliminarily found Petitioner’s written
description argument unpersuasive in view of certain ’510 patent figures,
such as Figures 1, 10A, and 11. Dec. 17–19. However, on further
consideration of the parties’ briefing on this issue and the relevant case law,
and based on the complete record before us, we now conclude otherwise, as
discussed below.
The parties agree that certain ’510 patent figures, such as Figures 1,
10A, and 11, describe a hanger with two sheets of 5/8" sheathing between a
channel-shaped portion and a back flange. Pet. Reply 26 (“Petitioner
recognizes that the figures disclose the claimed hanger with two sheets of
5/8" sheathing, but that is not the problem.”); PO Resp. 95 (“As is evident
from the identified figures, the two layers of 5/8 inch sheathing sufficiently
fill the space between side panels (46) and back flange (66).”). But, as
argued by Petitioner, “[w]hile the figures support a claim for a discrete
distance of 1 1/4" between the channel-shaped portion and the back flange,
neither the figures nor the words of the specification support the claimed
range of distance (1 1/4" to 1 7/8").” Pet. Reply 26; see Ex. 1003 ¶ 18
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(Because “two layers of 5/8" sheathing equates to a distance of 1¼", and the
measurement of three layers of 5/8" sheathing equates to a distance of 1⅞",
a [skilled artisan] would have understood the range recited in this claim
element as equal to ‘at least 1¼" but less than 1⅞"’.”); Ex. 1001, 4:10–28,
Figs. 1, 10A, 11, 13A, 14A, 35, 36, 38, and 39. To illustrate its point here,
Petitioner provides the following illustration of extension portion spacing.

The above illustration shows Petitioner’s rendering of the
claimed range of extension portion spacing in claims 1 and 13.
Pet. Reply 26. The above illustration highlights the issue at hand: what
disclosure in the ’510 patent describes an extension portion spacing that, for
example, (1) accommodates two layers of 5/8" sheathing and (2) provides an
additional gap of up to 5/8" (i.e., the gap defined by the difference between
three layers of 5/8" sheathing or 1-7/8" and two layers of 5/8" sheathing or
1-1/4")? We find the ’510 patent does not provide sufficient written
description of such a spacing range (or gap as in this example).
First, as argued by Petitioner (Pet. 19–21), we find the ’510 patent
does not provide any discussion of the subject extension portion spacing
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range or any reason to exclude extension portion spacing larger than the
claimed range, i.e., three or more layers of 5/8" drywall (1-7/8" or larger).
See Ex. 1003 ¶ 68 (“[T]he [S]pecification does not mention three layers of
5/8" thick sheathing in any context. Nor does the specification limit the
invention to any particular spacing size range, or describe any particular
advantage or benefit attaching to two, three, or any number of layers of
sheathing.”). Instead, the Specification simply refers to the use of two layers
of 5/8" thick sheathing as an open-ended example:
In one embodiment, the fire retardant sheathing is gypsum board,
such as two layers of 5/8" gypsum board mounted on each side
of the wall 28 as illustrated, although other configurations of fire
retardant sheathing are within the scope of the present invention.
Other wall configurations, including different wall constructions
and materials, are within the scope of the present invention.
Ex. 1001, 4:15–21 (emphases added); see Ex. 1003 ¶ 68. Notably, Patent
Owner does not direct us to any such discussion or reason to exclude in the
Specification. See generally PO Resp. 93–96; PO Sur-Reply 25–26.
Nevertheless, Patent Owner argues it is “evident from the identified
figures [i.e., Figs. 1, 10A, 11, 13A, 14A, 35, 36, 38, and 39] . . . [that] the
two layers of 5/8 inch sheathing sufficiently fill the space between side
panels (46) and back flange (66).” PO Resp. 95; see PO Sur-Reply 26.
But this supports Petitioner’s argument here, not Patent Owner’s. Since all
of the relevant figures show two 5/8" layers of sheathing “sufficiently
fill[ing] the space” at issue, then none of these figures describe or show any
additional gap remaining within that space, let alone a specific gap of up
to 5/8", i.e., the claimed spacing range from 1-1/4" (two 5/8" layers) up to
1-7/8" (three 5/8" layers). Patent Owner also argues the disclosed hanger in
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these figures “could not possibly receive a third layer of 5/8 inch sheathing
within the shown fixed space.” PO Resp. 95–96; see PO Sur-Reply 26.
But the disclosed hanger in these figures also “could not possibly receive”
within that shown fixed space countless (undisclosed) items, such as a third
layer of 1/2" sheathing or 1/4" sheathing, or four, five, or more additional
layers of 5/8" sheathing, or a third layer of 1-1/4" fire brick. We do not
agree, at least in this case, that the mere existence of such impossibilities
alone constitute their own express disclosure and show possession by an
inventor. Indeed, Patent Owner does not direct us to any “blaze marks” or
discussion in the Specification that would have directed the skilled artisan to
the particular claimed “tree” or extension portion spacing range of up to
1-7/8" (three layers of 5/8" sheathing) versus any of the other “trees” in the
vast “forest” of impossibilities noted above, like a third layer of 1/2"
sheathing (which would translate into a spacing range of up to 1-3/4" (two
5/8" layers plus one 1/2" layer). See Purdue Pharma, 230 F.3d at 1326–27;
Ex. 1003 ¶ 70.
Second, Patent Owner amended independent claim 1 (and similarly
independent claim 13) during prosecution by adding the limitation of
“the extension portion spacing the side panels from the back flange plane by
a distance sized [1] large enough to permit two layers of 5/8 inch thick
sheathing to be received between the rear edge plane and the back flange
plane [the lower limit], but [2] too small to permit three layers of 5/8 inch
thick sheathing to be received between the rear edge plane and the back
flange plane [the upper limit],” and merely asserted “[n]o new matter is
added.” Ex. 1002, 41, 43–44, 46. But, as argued by Petitioner (Pet. 20–21),
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Patent Owner did not identify any portion of the Specification as supporting
this upper limit to the extension portion spacing. See Ex. 1002, pp. 46–53.
Rather, Patent Owner pointed only to support for the lower limit to the
extension portion spacing: “As described in paragraphs [0055]
[i.e., Ex. 1001, 4:10–21] and [0084] [i.e., Ex. 1001, 11:41–56] of the
Applicant’s disclosure, the extension portion 40 spaces apart the first and
second planes by a distance sized large enough to permit two layers of 5/8
inch thick sheathing 34 to be received in the space 68, as shown in Fig. 1.”
Id. at 47 (emphases added). Petitioner argues Patent Owner “did not point to
any portion of the [S]pecification for support of the upper bound, because
they could not.” Pet. 21; see Ex. 1003 ¶ 71. We find Patent Owner’s failure
during prosecution to identify any written description support for the added
upper limit to the extension portion spacing further validates our view that
no such support exists in the ’510 patent.
For the reasons expressed above, and based on the complete record
before us, we conclude that Petitioner has demonstrated by a preponderance
of evidence that claims 1–19 are unpatentable under 35 U.S.C. § 112(a) for
lack of written description support for the Negative Spacing Limitation.
E. Unpatentability of Claim 20 Based on Indefiniteness
Petitioner contends claim 20 is unpatentable under 35 U.S.C. § 112(b)
for indefiniteness. Pet. 22–25; Pet. Reply 27. Patent Owner opposes
Petitioner’s contentions. PO Resp. 96–101; PO Sur-Reply 26–27. For the
reasons expressed below, and based on the complete record before us,
we determine that Petitioner has not demonstrated by a preponderance of
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evidence that claim 20 is unpatentable under 35 U.S.C. § 112(b) for
indefiniteness.
Petitioner contends that the phrase “sized large enough” is indefinite
in the limitation, “the extension portion spacing the channel-shaped portion
from the back flange plane by a distance sized large enough to permit the
drywall to be received between the channel-shaped portion and the back
flange plane” (emphasis added), in independent claim 20 (“Large Enough
Limitation”). Pet. 22–25; Ex. 1001, 14:34–39. Petitioner argues “sized
large enough” is indefinite for two reasons: (1) “the term ‘large enough’
defines a minimum boundary and not an upper limit” and is a “relative
term;” and (2) “defining a distance based on an indeterminate size of ‘the
drywall’ is insufficient to clearly set out the metes and bounds of the claim,”
because “[d]rywall comes in [a] variety of different sizes—some narrow,
some thick.” Pet. 23–25. We are unpersuaded by Petitioner’s arguments.
First, like Patent Owner (PO Resp. 98–99), we do not agree with
Petitioner that a claimed range with no upper limit is inherently indefinite.
Cf. Exxon Research & Eng’g Co. v. United States, 265 F.3d 1371, 1382
(Fed. Cir. 2001), abrogated as to the standard for indefiniteness by Nautilus,
572 U.S. 898. In Exxon, the Federal Circuit explained:
The claims do not contain any limitation on maximum particle
size, and no limitation is required as a matter of definiteness.
Thus, the claims expressly reach any composition with catalyst
particles having an average diameter greater than five microns,
no matter how large the particles may be; as such, there is no
indefiniteness as to the scope of that limitation. The
government’s real objection to the claims as written is that they
may include some inoperable embodiments, such as one in which
the particles have an average diameter greater than 100 microns.
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However, that is an issue of enablement, and not indefiniteness.
. . . A patent claim to a fishing pole would not be invalid on
indefiniteness grounds if it contained a limitation requiring that
the pole be “at least three feet long,” even though a 50 foot long
fishing pole would not be very practical.
265 F.3d at 1382 (emphases added).
Although Exxon was decided using an indefiniteness standard other
than the one articulated by Nautilus, we find the court’s above-quoted
reasoning concerning claimed ranges without upper limits to be equally
pertinent to the indefiniteness issue presented here under Nautilus. See
Biosig Instruments, Inc. v. Nautilus, Inc., 783 F.3d 1374, 1381 (Fed. Cir.
2015) (“[The Nautilus] standard does not render all of the prior Federal
Circuit and district court cases inapplicable.” (quoting J. Bryson’s decision
in Freeny v. Apple Inc., No. 2:13-CV-00361-WCB, 2014 WL 4294505,
at *4–*5 (E.D. Tex. Aug. 28, 2014)); Augme Techs. v. Yahoo! Inc.,
755 F.3d 1326, 1340 (Fed. Cir. 2014) (A limitation “clear on its face”
“unquestionably meets [the Nautilus] standard.”); cf. One-E-Way, Inc. v.
Int’l Trade Comm’n, 859 F.3d 1059, 1063 (Fed. Cir. 2017) (“As long as
claim terms satisfy [the Nautilus] test, relative terms and words of degree do
not render patent claims invalid.”). Also, contrary to Petitioner’s argument
(Pet. 24), we find In re Wertheim, 541 F.2d 257 (CCPA 1976) inapposite.
As acknowledged by Petitioner, Wertheim addressed the written description
requirement of 35 U.S.C. § 112, not indefiniteness. See Pet. 24 (citing
Wertheim for “finding that a claim limitation to ‘at least 35%’ did not meet
the [written] description requirement because the phrase ‘at least’ had no
upper limit” (emphasis added)). Notably, in asserting “Petitioner disagrees
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with the Board’s conclusions” here (Pet. Reply 27), Petitioner does not
address Exxon. See generally Pet. 22–25; Pet. Reply. 27.
Second, like Patent Owner (PO Resp. 100–101), we do not agree with
Petitioner that a claimed space or distance defined by the size of a well-
known object available in various sizes is inherently indefinite. See
Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed.
Cir. 1986). In Orthokinetics, the Federal Circuit explained:
The claims were intended to cover the use of the invention with
various types of automobiles. That a particular chair on which
the claims read may fit within some automobiles and not others
is of no moment. The phrase ‘so dimensioned’ is as accurate as
the subject matter permits, automobiles being of various sizes.
. . . As long as those of ordinary skill in the art realized that the
dimensions could be easily obtained, [the indefiniteness
standard] requires nothing more. The patent law does not require
that all possible lengths corresponding to the spaces in hundreds
of different automobiles be listed in the patent, let alone that they
be listed in the claims.
806 F.2d at 1576 (internal citation omitted). Notably, again, in asserting
“Petitioner disagrees with the Board’s conclusions” here (Pet. Reply 27),
Petitioner does not address Orthokinetics. See generally Pet. 22–25; Pet.
Reply. 27.
In this case, the ’510 patent’s disclosure includes many figures
depicting the relevant extension portion spacing being “sized large enough”
to receive drywall. See, e.g., Ex. 1001, 5:33–36, Figs. 10A, 11, 13A, 14A,
35, 36, 38, 39. In addition, both Petitioner and Patent Owner agree that
drywall was “common” at the time of filing of the ’510 patent, and that the
skilled artisan would have known that drywall was manufactured in a variety
of standard thicknesses, such as 3/8" and 1/2". See Pet. 24–25, 35 (The
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skilled artisan “would have been well aware of the commonality of such
wall finishes.”), 67–68; PO Reply 100–101; Ex. 2001 ¶ 117 (“[D]rywall is a
well-known building material available in well-known standard sizes. . . .
For example, drywall (also called gypsum) typically comes in the following
standard thicknesses: ¼", 5/16", 3/8", ½", 5/8", ¾", l", and 1-3/8".” (citing,
in part, Ex. 2023, p. 2; Ex. 2024, pp. 3–6)). We find the cited evidence
shows that skilled artisans at the relevant time were intimately familiar with
drywall and drywall thicknesses. We also find nothing to suggest that the
limitation of a space “sized large enough” to receive a well-known object
therein would not inform the skilled artisan, with reasonable certainty, about
the scope of the claimed invention, even if that scope may cover some
embodiments that may be inoperable.
Third, Petitioner alleges that Patent Owner’s declarant, Dr. Serrette,
“assert[ed] [in deposition] that claim 20 could not be interpreted without
knowing the intent of either a manufacturer or installer who would make or
use the recited hanger”; and “[g]iven the scenario of a hanger, on a shelf,
that meets all the structural limitations of claim 20 and has an extension
portion spacing of 1/2", . . . confirmed it would not be possible to determine
whether that hanger fell within the scope of claim 20, since one must know
what size drywall an installer intends to use with the hanger.” Pet. Reply 27
(citing Ex. 1038, 55:20–57:10, 65:19–66:13). Patent Owner responds that in
“[r]eviewing the cited passages, it is not evident that 65:19–66:13 of
Dr. Serrette’s deposition transcript (Ex. 1038) even pertained to claim 20,”
and “the passage at 55:20–57:10 merely establishes that claim 20 does not
place an upper boundary on the number of sheets of drywall.” PO Sur-
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Reply 26–27. We agree with Patent Owner, and find Petitioner’s liberal
characterization of Dr. Serrette’s actual testimony unhelpful in deciding the
issue of indefiniteness before us. We also note Petitioner’s underlying
questioning here invokes claim construction and indefiniteness, both of
which ultimately are questions of law, but Dr. Serrette is a fact witness.
Thus, we do not agree with Petitioner that its foregoing allegations and cited
testimony demonstrate indefiniteness of independent claim 20.
Based on the foregoing, and on the complete record before us, we are
not persuaded that the limitation at issue, namely, “the extension portion
spacing the channel-shaped portion from the back flange plane by a distance
sized large enough to permit the drywall to be received between the channel-
shaped portion and the back flange plane,” would not inform the skilled
artisan, with reasonable certainty, about the scope of the claimed invention.
See Biosig, 783 F.3d at 1382–83 (“[F]igures illustrating the ‘spaced
relationship’ between the live and common electrodes are telling and
provide sufficient clarity to skilled artisans as to the bounds of this disputed
term.”).
Accordingly, we conclude that Petitioner has not demonstrated by a
preponderance of evidence that claim 20 is unpatentable under 35 U.S.C.
§ 112(b) for indefiniteness.
F. Anticipation of Claims 1–19 by Brekke ’370
Petitioner contends claims 1–19 are unpatentable under 35 U.S.C.
§ 102 as anticipated by Brekke ’370 (Ex. 1027), to which the ’510 patent
claims priority. Pet. 1, 26–33; Ex. 1001, codes (60), (63); Ex. 1027.
Petitioner’s contention here hinges on its contention that claims 1–19 are
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unpatentable under 35 U.S.C. § 112(a) for lack of written description.
Pet. 26 (arguing “claims 1–19 lack written description support for priority
purposes for the same reasons that the claims lack written description
support under § 112”); see id. at 26–33. Patent Owner opposes Petitioner’s
contentions, but does so solely on the asserted basis that “the identified
limitations in claims 1 and 13 are fully supported under 35 U.S.C. § 112(a).”
PO Resp. 101–102. Patent Owner does not dispute that, absent a proper
priority claim to Brekke ’370, Brekke ’370 would anticipate claims 1–19.
See generally id.
Initially, for the same reasons we conclude Petitioner has
demonstrated by a preponderance of evidence that claims 1–19 are
unpatentable under 35 U.S.C. § 112(a) for lack of written description (see
supra), we also conclude Petitioner has likewise demonstrated that claims 1–
19 lack written description in Brekke ’370 for priority purposes. See PO
Resp. 95 n.16 (“The Figures, Background, and Detailed Description of the
’510 patent are the same as in the priority ’370 application.” (citing
Ex. 1002, pp. 233–303)). As such, the earliest possible filing date of
claims 1–19 of the ’510 patent becomes December 19, 2018, which is the
actual filing date of the ’510 patent (Ex. 1001, code (22)). Because
Brekke ’370 published July 2, 2015 (Ex. 1027, code (43)), more than three
years before the earliest possible filing date of claims 1–19, Brekke ’370
constitutes prior art to the ’510 patent under 35 U.S.C. § 102(a)(1).
Although we conclude Brekke ’370, like the ’510 patent, does not
provide written description for an “extension portion spacing” that excludes
distances capable of receiving three or more layers of 5/8 inch thick
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sheathing (see Ex. 1001, 12:30–36 (claim 1), 13:28–34 (claim 13)), we find
Brekke ’370 still anticipates this feature because, as argued by Petitioner,
“it discloses an explicit value within [the] claimed range (namely, the size
corresponding to two sheets of 5/8" sheathing).” Pet. 26 (citing Ex. 1003
¶ 75); see Pet. 30 (citing, in part, Ex. 1003 ¶ 87); Ex. 1001, 4:10–19, Figs. 1,
10A. It is “an elementary principle of patent law” that a recitation of a range
that covers several values is anticipated if one such value is found within the
prior art. Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 782 (Fed.
Cir. 1985).
Petitioner maps each of the limitations in claims 1–19 to disclosure in
Brekke ’370. Pet. 28–33. As noted above, Patent Owner, not surprisingly,
does not argue that Brekke ’370 fails to disclose any limitations in these
claims, as Patent Owner relies on Brekke ’370 for priority purposes. We are
persuaded by Petitioner’s mapping to Brekke ’370 (Pet. 28–33), which we
adopt as our own, and find that Brekke ’370 discloses each limitation of
claims 1–19, arranged as recited in these claims.
For the reasons expressed above, and based on the complete record
before us, we conclude that Petitioner has demonstrated by a preponderance
of evidence that claims 1–19 are unpatentable under 35 U.S.C. § 102 as
anticipated by Brekke ’370.
G. Obviousness of Claims 1–20 Over the Combination of Gilb ’155,
Bundy, and Allan
Petitioner contends claims 1–20 are unpatentable under 35 U.S.C.
§ 103 as obvious over the combination of Gilb ’155 (Ex. 1010), Bundy
(Ex. 1007), and Allan (Ex. 1012). Pet. 67–99; Pet. Reply 2–18. Patent
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Owner opposes Petitioner’s contentions. PO Resp. 21–56; PO Sur-Reply 2–
19. For the reasons expressed below, and based on the complete record
before us, we determine that Petitioner has demonstrated by a preponderance
of evidence that claims 1–11, 13–18, and 20 are unpatentable as obvious
over the combination of Gilb ’155, Bundy, and Allan. We also determine
that Petitioner has not demonstrated by a preponderance of evidence that
claims 12 and 19 are unpatentable as obvious over the combination of
Gilb ’155, Bundy, and Allan.
1. Overview of Gilb ’155
Gilb ’155 generally relates to “a hanger intended to provide for any
known intersection requirement to any amount of skew and any amount of
slope,” as shown, for example, in Figure 2, reproduced below. Ex. 1010,
1:6–9.
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Figure 2 of Gilb ’155 is a perspective view of
an infinite skewed hanger.
Id. at 3:5–6, 3:51–54. As shown in Figure 2, the Gilb ’155 hanger includes
(1) supporting member 2' formed with top flange member 57,
embossments 102, and face element 4' positioned generally in a vertical
plane, where top flange member 57 is formed with fastener openings 58 for
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attachment to a supporting structure, like a wall; (2) supported gusset-like
member 9; (3) connection means 16; and (4) pivot means 18 pivotably
connected to supporting member 2' and supported gusset-like member 9.
Ex. 1010, 3:51–4:3, 5:9–17, 5:29–35, 7:36–49.
Supported gusset-like member 9 connects with connection means 16,
which receives and connects to a supported structure, like a joist. Ex. 1010,
3:67–4:1. Connection means 16 includes first hanger side member 47 and
second hanger side member 49. Ex. 1010, 5:9–17. Connection means 16
also includes U-shaped seat member 61 having seat element 62 and
upstanding leg elements 63 and 64 integrally connected to seat element 62,
and connected to first and second hanger side members 47 and 49,
respectively. Ex. 1010, 5:36–45.
Gilb ’155 states that, once installed, friction forces effectively prevent
the hanger from moving:
Unlike a hinge whose structure and function is to repeatedly
rotate, the structure of the present invention is not designed to
rotate after load has been imposed. In fact, the friction set up
within the infinite skewed hanger is so great that after load has
been imposed, it is virtually impossible to rotate the separable
parts with respect to one another.
Ex. 1010, 7:13–20.
Petitioner contends Gilb ’155 qualifies as prior art under 35 U.S.C.
§ 102(a)(1) based on its issue date. Pet. 1–2. We determine that Gilb ’155
qualifies as prior art under 35 U.S.C. § 102(a)(1) because Gilb ’155’s issue
date of April 14, 1981, is before the earliest possible effective filing date of
the challenged claims, which is December 31, 2013. Ex. 1001, codes (22),
(60), (63); Ex. 1010, code (45).
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2. Overview of Bundy
Bundy generally is directed to “a joist hanger adapted to secure a joist
to a header or other support member with a first drywall panel between the
back of the joist hanger and the front of the header,” as shown, for example,
in Figure 1, reproduced below. Ex. 1007, 1:5–11.

Figure 1 of Bundy is an upper right perspective
view of a connection formed in which the joist
hanger has a pair of top flanges.
Id. at 3:7–9, 3:55–67. Bundy discloses that “[t]he one or more panels 6
preferably are drywall panels 6,” and explains “[c]ommon panel thicknesses
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are 1/2-inch and 5/8-inch,” and “[i]n the present invention, two layers of
5/8-inch drywall is preferred.” Id. at 5:10–22 (emphasis added).
We further discuss below the disclosures of Gilb ’155 and Bundy in
connection with the parties’ arguments.
3. Independent Claim 1
a) “A hanger for connecting a structural component to
a wall adapted to have sheathing mounted thereon,
the hanger comprising:”
The preamble of claim 1 recites “[a] hanger for connecting a
structural component to a wall adapted to have sheathing mounted thereon.”
Ex. 1001, 12:10–12 (emphasis added). Gilb ’155 discloses “[a]n infinite
skewed and sloped sheet metal hanger for holding a supported structure to a
supporting structure.” Ex. 1010, Abstract, Fig. 2; see Pet. 72–73 (citing
Ex. 1003 ¶ 169; Ex. 1010, 7:4–25). Petitioner argues that the phrase
“for connecting a structural component to a wall adapted to have sheathing
mounted thereon” is not a limitation, but rather “recites an intended use of
the claimed invention [i.e., a hanger], satisfied by any prior art structure
capable of performing the intended use.” Pet. 72–73 (citing, in part,
Ex. 1002, 166 (Examiner finding this phrase constitutes merely a
“statement[] of intended use”); Ex. 1003 ¶ 23).
“Whether to treat a preamble as a limitation is a determination
‘resolved only on review of the entire[] . . . patent to gain an understanding
of what the inventors actually invented and intended to encompass by the
claim.’” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801,
808 (Fed. Cir. 2002) (quoting Corning Glass Works v. Sumitomo Elec.
U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989)) (alterations in original).
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“In general, a preamble limits the invention if it recites essential structure or
steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.”
Id. (quoting Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298,
1305 (Fed. Cir. 1999)). “Conversely, a preamble is not limiting ‘where a
patentee defines a structurally complete invention in the claim body and uses
the preamble only to state a purpose or intended use for the invention.’” Id.
(quoting Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997)). “No litmus test
defines when a preamble limits claim scope.” Id. (citing Corning Glass,
868 F.2d at 1257).
In this case, we determine the above preamble phrase is not limiting,
because the patentee recites a structurally complete invention in the body of
claim 1, and uses the preamble only to state a purpose or intended use for the
claimed invention. Claim 1 is an apparatus claim directed to “[a] hanger”—
just the hanger—and there is no evidence of record that the structure of that
hanger, as one may find for sale in a local home center, includes a
“structural component” (like a joist), a “wall,” or “sheathing” (like gypsum
board), mounted on a wall. See RMTA Reply 7 (“[T]he claims describe a
hanger prior to installation.”). Indeed, in the Related Litigation, Patent
Owner accuses certain of Petitioner’s hangers—just the hangers—of
infringing the ’510 patent. See Ex. 1031. If a hanger, standing separate
from any joist, wall, or installed sheathing, may fall within the scope of
claim 1 for infringement purposes, then a prior disclosure of the structure of
such a hanger (alone) may anticipate or in combination with other prior art
render obvious that claim. See Int’l Seaway Trading Corp. v. Walgreens
Corp., 589 F.3d 1233, 1239 (Fed. Cir. 2009) (citing Peters v. Active Mfg.
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Co., 129 U.S. 530, 537 (1889)) (“[I]t has been well established for over a
century that the same test must be used for both infringement and
anticipation,” and “[t]his general rule derives from the Supreme Court’s
proclamation 120 years ago in the context of utility patents: ‘[t]hat which
infringes, if later, would anticipate, if earlier.’”). In addition, Patent Owner
agrees that “the claimed structure does not itself include the sheathing or
drywall recited in the claims.” PO Resp. 24.
For the reasons expressed above, and based on the complete record
before us, we conclude that the preamble phrase “for connecting a structural
component to a wall adapted to have sheathing mounted thereon” in claim 1
is not a limitation, and find Gilb ’155 discloses a “hanger,” as recited in
claim 1.
b) “a channel-shaped portion configured to receive the
structural component, the channel-shaped portion
including a base sized and shaped for receiving an
end of the structural component thereon to support
the structural component, and side panels extending
upward from the base generally perpendicular to
the base, the side panels having rearward edges
lying in a rear edge plane;”
Gilb ’155 discloses a hanger as shown in Figure 2, reproduced above,
including U-shaped seat member 61 and connection means 16 “adapted for
connection to a supported structure 17,” such as a joist. Ex. 1010, 3:67–4:3,
5:35–45, 6:14–26, Figs. 2, 13, 14. U-shaped seat member 61 and connection
means 16 together form a channel-shaped portion, which includes a base,
seat element 62, sized and shaped for receiving an end of supported
structure 17 (e.g., a joist) thereon to support supported structure 17.
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Ex. 1010, 5:35–45, Figs.2, 13, 14. Gilb ’155’s channel-shaped portion also
includes side panels (upstanding leg elements 63 and 64, lower legs 47, 47’
and 49, 49’) extending upward from the base (integrally connected to seat
member 61) generally perpendicular to the base. Ex. 1010, 5:36–45, Figs. 2,
13, 14. Gilb ’155’s side panels (upstanding leg elements 63 and 64, lower
legs 47, 47’ and 49, 49’) have rearward edges (edges of upstanding leg
elements 63 and 64) lying in a rear edge plane, as shown, for example, in
Petitioner’s annotated version of Figure 2, reproduced below.

The above illustration shows Figure 2 of Gilb ’155 annotated in
red by Petitioner to identify rearward edges of side panels lying
in a rear edge plane.
Ex. 1010, 5:36–45, Fig. 2 (annotated); Pet. 76–77; see Pet. 73–77 (citing
Ex. 1003 ¶¶ 171–174).
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Patent Owner does not contend that the subject “channel-shaped
portion” limitation is absent in Gilb ’155. See PO Resp. 31–48. Any such
argument has been waived. See 37 C.F.R. § 42.23(a) (“Any material fact not
specifically denied may be considered admitted.”); In re Nuvasive, Inc.,
842 F.3d 1376, 1379–82 (Fed. Cir. 2016) (holding that patent owner waived
arguments on an issue that were not raised in its response after institution);
see also Papst Licensing GmbH & Co. KG v. Samsung Elecs. Am., Inc.,
924 F.3d 1243, 1250 (Fed. Cir. 2019) (holding patent owner forfeited
argument for patentability not presented to the Board); Bradium Techs. LLC
v. Iancu, 923 F.3d 1032, 1048 (Fed. Cir. 2019) (explaining that arguments
not presented to the Board are waived).
Based on the foregoing evidence, Petitioner contends, and we find,
Gilb ’155 discloses “a channel-shaped portion configured to receive the
structural component, the channel-shaped portion including a base sized and
shaped for receiving an end of the structural component thereon to support
the structural component, and side panels extending upward from the base
generally perpendicular to the base, the side panels having rearward edges
lying in a rear edge plane,” as recited in claim 1. Pet. 73–77 (citing
Ex. 1003 ¶¶ 171–174).
c) “an extension portion extending from the channel-
shaped portion and configured to extend through the
sheathing; and”
Gilb ’155 discloses an extension portion (gusset-like member 9, 9’)
extending from the channel-shaped portion (U-shaped seat member 61 and
connection means 16), as shown, for example, in Petitioner’s annotated
version of Figure 2, reproduced below.
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The above illustration shows Figure 2 of Gilb ’155 annotated in
red by Petitioner to identify gusset-like member 9, 9’ extending
from connection means 16 and U-shaped seat member 61.
Ex. 1010, 3:57–62, 4:63–5:8, 6:14–26, Fig. 2 (annotated); Pet. 78. Based on
the foregoing evidence, Petitioner contends, and we find, Gilb ’155 discloses
“an extension portion extending from the channel-shaped portion,” as recited
in claim 1. Pet. 77–78 (citing Ex. 1003 ¶ 175).
Although Patent Owner does not contend that the structure of “an
extension portion extending from the channel-shaped portion” is absent in
Gilb ’155 (see PO Resp. 31–48), and therefore, has waived such argument
(see 37 C.F.R. § 42.23(a)), Patent Owner disputes whether Gilb ’155’s
extension portion is “configured to extend through the sheathing” (PO
Resp. 22–48; PO Sur-Reply 6–17).
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(1) Claim Construction: “configured to extend
through the sheathing”
Claim 1 recites that the “extension portion” is “configured to extend
through the sheathing [mounted on a wall].” Ex. 1001, 12:10–36 (emphasis
added). The parties dispute whether the phrase “configured to extend
through the sheathing” is (1) a purpose or intended use of the “extension
portion” (e.g., a capability of the extension portion); or (2) a function of the
“extension portion” that provides additional structural attributes to the
extension portion (e.g., a particular configuration of the extension portion);
and if (2), what is that claimed configuration. See PO Resp. 8, 22–48; PO
Sur-Reply 6–18; Pet. 77–79; Pet. Reply 5–16.
(a) Capability or Intended Use vs.
Configuration
Patent Owner argues “[c]ontrolling authority[] has established that the
‘configured to’ claim language should be construed to require that the
claimed structures are specifically ‘meant to’ or ‘designed to’ perform the
claimed function, ‘not simply that they are capable of doing so.’” PO
Resp. 25–26 (citing Aspex Eyewear, Inc. v. Marchon Eyewear, Inc.,
672 F.3d. 1335, 1349 (Fed. Cir. 2012); In re Giannelli, 739 F.3d 1375, 1379
(Fed. Cir. 2014); Acclarent, Inc. v. Ford Albritton, IV, IPR2017-00498,
2018 Pat. App. LEXIS 9828, at *19–22 (PTAB July 9, 2018)); PO Sur-
Reply 6–8.
Petitioner argues Patent Owner “ignores more recent case law
clarifying when such intended use carries patentable weight,” and that
“[c]laims which ‘recite no structural limitations that would preclude a prior
art reference that discloses a different structure from performing the claimed
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function’ require nothing more than that a structure be capable of
performing that claimed function.” Pet. Reply 6 (citing ParkerVision, Inc. v.
Qualcomm, Inc., 903 F.3d 1354, 1361 (Fed. Cir. 2018)). Petitioner also
argues “[w]here functional language, such as ‘configured to,’ is interpreted
to mean ‘made to or designed to,’ the written description has to make clear
the term, [as] used in the patent[,] ‘has a narrower meaning.’” Pet. Reply 7
(citing Giannelli, 739 F.3d at 1379). Petitioner further argues “the Federal
Circuit has recently rejected a construction of ‘configured to’ as meaning
‘designed to.’” Id. at 7 (citing Nevro Corp. v. Boston Scientific Corp.,
955 F.3d 35, 40–42 (Fed. Cir. 2020)).
Patent Owner responds “Petitioner[] mischaracterize[s]
[ParkerVision] as supporting a broad construction for the ‘configured to …’
claim element. But [ParkerVision] recognized that the case law
distinguished ‘between claims with language that recites capability, and
those that recite configuration.’” PO Sur-Reply 7 (citing ParkerVision,
903 F.3d at 1361). Patent Owner also responds, “[i]n [ParkerVision], the
claims at issue did not use the language ‘configured to’ and instead merely
recited the capabilities of a ‘switch module.’” PO Sur-Reply 7 (citing
ParkerVision, 903 F.3d at 1358). Patent Owner further responds, “[w]hile
[Nevro] did reject a construction of ‘configured to’ as meaning ‘designed
to,’ it did so to adopt an even narrower claim construction,” namely,
“‘programmed to generate’” in the context of the claim limitation of
“a signal generator configured to generate a therapy signal.” PO Sur-
Reply 7 (citing Nevro, 955 F.3d at 40–41). Patent Owner argues “not only
did the signal generator need to be designed to perform its function, the
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Nevro Court specified which aspects of the signal generator—its
programming and parameter settings—were required to be configured to
meet the claimed function.” PO Sur-Reply 7–8.
As recently explained by the Federal Circuit, case law “distinguish[es]
between claims with language that recites capability, and those that recite
configuration.” ParkerVision, 903 F.3d at 1361 (emphases added). “The
language used in the claims is critical to deciding on which side of this line
the claims fall.” Id. In this case, the claim language itself supports a
narrower construction by expressly reciting the “configured to” language.
Precedent makes clear that the “configured to” phrase itself connotes the
narrower meaning (i.e., configuration), as opposed to the broader meaning
(i.e., capability), and simply presumes this is the case. For example, in
Aspex Eyewear, the court treated “configured to” as synonymous with the
narrower “made to” and “designed to” phrases. Aspex Eyewear, 672 F.3d
at 1349 (“In common parlance, the phrase ‘adapted to’ is frequently used to
mean ‘made to,’ ‘designed to,’ or ‘configured to,’ but it can also be used in a
broader sense to mean ‘capable of’ or ‘suitable for.’”); see Giannelli,
739 F.3d at 1379 (same); In re Man Machine Interface Technologies LLC,
822 F.3d 1282, 1286 (Fed. Cir. 2016) (same). Petitioner does not adequately
explain how “configured to” can be construed as requiring a mere capability
under this precedent. Although Petitioner contends the court in Nevro
“rejected a construction of ‘configured to’ as meaning ‘designed to’”
(Pet. 7), Petitioner does not adequately explain how the court’s construction
of “configured to” to instead mean “programmed to generate” in that case
supports construing the phrase to require a mere capability in this case.
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Based on the foregoing, and our review of the cases cited in the
parties’ briefs, we agree with Patent Owner that the most natural reading of
“configured to” in the claim 1 limitation of “an extension portion . . .
configured to extend through the sheathing” requires additional structure
configured or designed to accomplish the claimed function. We next turn to
construing “extend through” in the function of “extend through the
sheathing,” and then to determining the structural attributes of an “extension
portion” that allow it to extend through sheathing (keeping in mind that
sheathing is not part of the claimed hanger’s structure (PO Resp. 24 (“[T]he
claimed structure does not itself include the sheathing or drywall recited in
the claims.”))).
(b) “Extend Through”
Claim 1 recites that the “extension portion” is “configured to extend
through the sheathing [mounted on a wall].” Ex. 1001, 12:10–36 (emphasis
added). Prior to our Institution Decision, neither party proffered a
construction for the phrase “extend through.” Post-institution, Patent Owner
contends “‘extend through’ (i.e., element A ‘extend[ing] through’
element B) should be construed to mean that element A extends into one
side and out the other side of element B.” PO Resp. 22 (citing Ex. 2044
¶ 22). Patent Owner argues “[t]his definition represents the plain and
ordinary meaning of ‘through’ as would be understood by [the skilled
artisan],” and also cites to a dictionary definition of “through” that defines
the term as “‘moving in one side and out of the other side of (an opening,
channel, or location).’” Pet. Resp. 22–23 (citing Ex. 2044 ¶¶ 23–24; quoting
Ex. 2049, p. 2 (p. 1758 of dictionary)). Patent Owner also argues “[s]uch a
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construction is supported by the specification of the ’510 patent,” and cites,
for example, to Figure 11, which “illustrat[es] the truss hanger extending
through the fire retardant sheathing” (Ex. 1001, 3:3–4, Fig. 11). PO
Resp. 23. Petitioner does not offer a competing construction for the phrase
“extend through,” or otherwise dispute Patent Owner’s proposed
construction. We find Patent Owner’s proposed construction reasonable.
Based on the foregoing, we construe “extend through,” in the context
of element A “extend[ing] through” element B, to mean “element A extends
into one side and out the other side of element B.”
(c) Structural Attributes of an “Extension
Portion” Allowing It to Extend
Through Sheathing
We determine above that the phrase “configured to extend through the
sheathing” further limits the “extension portion” by requiring the extension
portion to have structural attributes for extending through “the sheathing,” or
more particularly, for extending into one side of “the sheathing” and out the
other side of “the sheathing.” Next, we determine what additional structural
attributes are required to do so.
Patent Owner contends “an extension portion . . . configured to extend
through the sheathing” means “an extension portion that is designed to
extend through a fire barrier while being in close conformance with the
exposed edges of the opening in the fire barrier when installed.” PO
Resp. 29 (emphasis added). Patent Owner also contends this phrase means
“an extension portion designed to extend through a fire barrier by being
shaped and arranged on the hanger so that the extension portion is in close
conformance with the exposed edges of the opening in the fire barrier when
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installed, thereby blocking flames and smoke from passing into the opening
and through the fire barrier.” PO Sur-Reply 11 (emphasis added). Patent
Owner alleges support for these proposed constructions based on statements
in the Specification (which are not recited in claim 1) and alleged best
practices for installing the claimed hanger to minimize firewall gaps (which
also are not recited in claim 1). See, e.g., PO Resp. 26 (“The title of the
patent is ‘Hanger for a Fire Separation Wall.’” (citing Ex. 1001, code (54)),
27 (“Being aware of the building code requirements for these analogous
projections, [the skilled artisan] would have been strongly biased against
creating gaps in the fire barrier to accommodate a hanger.” (citing Ex. 2016,
27–29 (2012 International Building Code)), 28 (“[T]he installation of the
hanger must ‘minimally disrupt . . . the continuity of the sheathing [such that
it] does not reduce the fire resistive rating of a fire rated assembly.” (citing,
in part, Ex. 1001, 11:25–28)), 29 (“[T]he extension portions minimize the
discontinuity in the fire barrier by being shaped and arranged to follow along
the exposed edges of the opening in the fire barrier such that only a very
small gap in the fire barrier is exposed next to the hanger.”); see generally
PO Resp. 8, 22–48; PO Sur-Reply 6–18.
Petitioner characterizes Patent Owner’s proposed constructions of “an
extension portion . . . configured to extend through the sheathing” as
“convoluted construction[s] [that] eschew[] long-standing tenets of claim
construction and attempt[] to improperly import multiple limitations far
beyond the plain and ordinary meaning of this term.” Pet. Reply 5.
Petitioner argues Patent Owner’s proposed constructions “ask[] the Board to
import new limitations into the claims, such as ‘close conformance’ and
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‘open edges,’ that are not recited in the claims, not described in the
specification, and not definable even by [Patent Owner’s] own expert.” Pet.
Reply 5–6. Petitioner argues Patent Owner contends “its hanger is
specifically designed for and intended to be used only with fire barriers and
that this intended use should be read into the claims,” but “fails to provide
any evidence of why a hanger structurally configured to extend through
sheathing and/or drywall would not be configured to extend through fire-
rated drywall.” Pet. Reply 6. Petitioner argues “[n]ot only are types of fire
retardant sheathing other than gypsum board explicitly ‘within the scope of
the present invention,’ but ‘[o]ther wall configurations, including different
wall constructions and materials, are within the scope of the present
invention.’” Pet. Reply 8 (citing Ex. 1001, 4:15–24 (“[T]he truss hangers 26
can be used with any wall assembly or fire-rated wall assembly.” (emphases
added))). Petitioner also argues “[e]ven if the Board interprets the term
‘configured to’ to mean ‘adapted to,’ ‘constructed to,’ or ‘designed to,’ the
Board should interpret the term as designed to create sufficient spacing, not
designed to achieve some intended use applying only to fire-rated barriers.”
Pet. Reply 9. We are persuaded by Petitioner’s argument.
The Federal Circuit “explained long ago that ‘[a]pparatus claims
cover what a device is, not what a device does.’” ParkerVision, 903 F.3d at
1361 (quoting Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464,
1468 (Fed. Cir. 1990)). Claim 1 is an apparatus claim directed to
“[a] hanger”—just the hanger—and there is no evidence of record that the
structure of that hanger includes a “structural component” (like a joist), a
“wall,” or “sheathing” (like gypsum board), mounted on a wall. See PO
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Resp. 24 (Patent Owner agreeing that “the claimed structure does not itself
include the sheathing or drywall recited in the claims.”); RMTA Reply 7
(“[T]he claims describe a hanger prior to installation.”). Claim 1 also
explicitly recites use with “sheathing” generally, not “fire resistant
sheathing” like claim 13, not “drywall” like claim 20, and not a “fire barrier”
as in Patent Owner’s proposed construction of the subject limitation.2
Similarly, claim 1 recites no limitation on the size, shape, or conformance of
any sheathing cutout necessary for a hanger’s extension portion to “extend
through the sheathing.” In other words, claim 1 recites a hanger with an
extension portion having certain structural features, and would cover a
hanger having the structural limitations of claim 1 whether that hanger were
on a shelf in a hardware store or installed as shown, for example, in Figure 1
of the ’510 patent. As such, we find the claimed hanger’s extension portion
necessarily exists structurally independent of whether an installer later
decides to install one or more layers of sheathing around the hanger, let
alone install a fire barrier as some or all of the sheathing, and independent of
how the installer later chooses to conform such sheathing around the hanger.
We find the foregoing weighs against Patent Owner’s proposed construction.
Patent Owner acknowledges that we must determine what additional
structural or physical attributes are required of the “extension portion” for
the extension portion to extend through the sheathing. See PO Resp. 35
(“‘[C]onfigured to’ . . . require[es] structure designed specifically to

2 Patent Owner does not explain why or how the type of sheathing affects
the structure of the claimed extension portion.
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accomplish the specified objective.”); PO Sur-Reply 7 (The extension
portion “pertain[s] to a structure that must be physically ‘configured to’
extend through a fire barrier.”). But, Patent Owner never identifies or
explains what additional structural or physical attributes are required to do
so. Instead, Patent Owner liberally rewrites the function that the extension
portion is configured to perform from what’s explicitly recited in the claim,
“extend through the sheathing,” to “extend through a fire barrier while
being in close conformance with the exposed edges of the opening in the fire
barrier when installed.” PO Resp. 29 (emphasis added). Having done so,
Patent Owner still does not identify or explain what additional structural or
physical attributes of the extension portion are required to do so. We find
the foregoing also weighs against Patent Owner’s proposed construction.
Moreover, we find no basis in the record before us for rewriting claim 1 to
unnecessarily import limitations from the Specification or from alleged best
practices for installing hangers to minimize firewall gaps into the recited
function of the extension portion. See E-Pass Techs., Inc. v. 3Com Corp.,
343 F.3d 1364, 1369 (Fed. Cir. 2003) (Claims must be interpreted “‘in view
of the specification’ without unnecessarily importing limitations from the
specification into the claims.” (citing Texas Digital Sys., Inc. v. Telegenix,
Inc., 308 F.3d 1193, 1203–04 (Fed. Cir. 2002))). Accordingly, we do not
adopt Patent Owner’s proffered claim construction for “configured to extend
through the sheathing.”
We turn to Petitioner’s proposed construction for the subject
limitation, namely, “designed to create sufficient spacing.” Pet. Reply 9.
We note Patent Owner agrees that the extension portion does provide for
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“spacing.” See PO Resp. 8 (“Because the extension portion spaces the joist
a sufficient distance from the wall framing, the fire barrier does not require a
cutout corresponding to the entire cross section of the joist.” (emphasis
added)). Petitioner neither explains its proposed construction nor identifies
or explains what additional structural or physical attributes of the extension
portion are required to “create sufficient spacing.”
Nevertheless, we find the prosecution history of the ’510 patent and
its family most instructive here. In related U.S. Patent No. 10,184,242 B2,
the hanger’s “extension portion” is characterized and claimed as “extending
from the channel-shaped portion to the connection portion and
interconnecting the channel-shaped portion and the connection portion, the
extension portion separating the back wall of the channel-shaped portion
from the back flange of the connection portion to define the space sized to
receive the sheathing.” Ex. 1014, 11:57–63 (emphases added). In related
U.S. Patent No. 10,024,049 B2, the hanger’s “extension portion” is
characterized and claimed as “extending from the channel-shaped portion
and configured to extend through the sheathing to engage the wall at a first
location.” Ex. 1006, 11:32–37 (emphases added). In prosecution of the
’510 patent, Patent Owner amended the “extension portion” limitation of
“extending from the channel-shaped portion and configured to extend
through the sheathing to engage the wall at a first location,” by deleting “to
engage the wall at a first location” and adding the limitation of the
“extension portion spacing” of more than two but less than three layers of
5/8" sheathing. Ex. 1002, 41.
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Based on the foregoing, we find that “configured to extend through
the sheathing,” or more particularly, “configured to extend into one side of
the sheathing and out the other side of the sheathing” requires the “extension
portion” to have structural attributes that extend towards the “connection
portion” and define a space to receive sheathing. Cf. PO Resp. 53
(“[A]n extension portion . . . spaces the channel-shaped portion from the
connection portion by a distance dimensioned to receive and fit the
sheathing.”). We find this construction supported by the Specification. See
Ex. 1001, 1:64–67 (“The extension portion separates the back wall of the
channel-shaped portion from the back flange of the connection portion to
define the space sized to receive the sheathing.” (emphasis added)), Abstract
(“An extension portion extends from the channel-shaped portion and is
configured to extend through the sheathing to engage the wall at a first
location.” (emphasis added)), Figs. 1, 2, 10A. Accordingly, we construe
“an extension portion extending from the channel-shaped portion and
configured to extend through the sheathing” to mean (or require structurally)
“an extension portion extending from the channel-shaped portion towards
the connection portion and defining a space to receive sheathing.” 3 Unlike
the parties’ proposed constructions, we find this construction stays true to

3 Petitioner did not contend that the limitation “an extension portion . . .
configured to extend through the sheathing” is indefinite under 35 U.S.C.
§ 112. Yet both parties appear to struggle to give any meaning to this phrase
under governing claim construction principles.
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defining apparatus claim 1 for “what [the hanger] is,” not “what [the hanger]
does.” See ParkerVision, 903 F.3d at 1361 (emphases added).
(2) Disclosure of Gilb ’155
Patent Owner argues “gusset-like member (9/9') of Gilb ’155 fails to
disclose ‘an extension portion . . . configured to extend through the [fire
barrier]’ limitation for two reasons: (1) the gusset-like member would not
extend into one side and out the other side of the fire barrier, and (2) the
gusset-like member is not designed to extend through the fire barrier in close
conformance with an edge of the opening in the fire barrier.” PO Resp. 32;
see PO Resp. 31–47; PO Sur-Reply 12–18. Patent Owner’s arguments here
are based on its proposed construction for “an extension portion . . .
configured to extend through the sheathing,” which as discussed above, we
do not adopt. Under the construction of this limitation that we do adopt (see
supra), we are unpersuaded by Patent Owner’s arguments directed to this
limitation, as discussed below.
Gilb ’155 discloses “an extension portion extending from the channel-
shaped portion” as explained above, and also discloses “an extension portion
extending . . . towards the connection portion and defining a space to receive
sheathing.” As shown in Figure 2 (reproduced above), for example, an
extension portion (gusset-like member 9, 9’) extends from the channel-
shaped portion (U-shaped seat member 61 and connection means 16)
towards the connection portion (supporting member 2, 2’, which attaches to
supporting structure 3) and defines a space to receive sheathing (the space
defined between the channel-shaped portion (U-shaped seat member 61 and
connection means 16) and the connection portion (supporting member 2, 2’).
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See Ex. 1010, 3:51–54, 5:30–35, Fig 2. In its Petition, Petitioner provides an
isometric rendering of Gilb ’155’s hanger showing where and how its
extension portion extends towards supporting member 2, 2’ and defines a
space to receive or accommodate sheathing. See Pet. 72, 78–79; Ex. 1003
¶¶ 175–177. Patent Owner also effectively agrees Gilb ’155 defines a space
to receive sheathing (see, e.g., PO Resp. 35 (“[I]f a fire barrier was installed
around the Gilb ’155 hanger, the cutout in the fire barrier would need to
account for the width of the tabs.”)), and proffers annotated figures from
Gilb ’155 showing a space to receive sheathing (see, e.g., PO Resp. 38).
During prosecution in the ’510 patent family, in the first Office Action
in the family, the Examiner found the limitation of “an extension portion
extending from the channel-shaped portion and configured to extend through
the sheathing” to be anticipated (explicitly disclosed) by Gilb ’155.
Specifically, the Examiner found: “Gilb [’155] provides in figure 2 a hanger
for connecting a structural component to a wall adapted to have sheathing
mounted thereon, the hanger comprising: . . . an extension (34) portion
extending from the channel-shaped portion and configured to extend through
the sheathing to engage the wall at a first location (at 11).” Ex. 1019, 114
(emphases added). In response, Patent Owner amended this limitation to
further recite “the extension portion including extension flanges extending
from the channel-shaped portion, each of the extension flanges being
configured to extend through the sheathing,” and “wherein the extension
flanges define planar surfaces in opposed face-to-face relation and directly
engaging each other along a juncture between the connection portion and the
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channel-shaped portion.” Ex. 1019, 102. Rather than dispute the
Examiner’s above finding, Patent Owner argued:
Gilb [’155] fails to show or suggest the hanger as set forth in
claim 1 for at least the reason that it does not describe an
extension portion including the extension flanges define planar
surfaces in opposed face-to-face relation and directly engaging
each other along a juncture between the connection portion and
the channel-shaped portion. Gusset-like projections 11 and 34
of gusset-like member 9 of Gilb are spaced apart and do not
define planar surfaces that engage each other in this manner.
Therefore, Gilb does not provide the low-profile extension
portion of Applicant's invention. It is believed a very wide
opening would be required to have the gusset like member 9
extend through a wall board.
Ex. 1019, 108 (emphasis added). In view of this amendment, the Examiner
withdrew the anticipation rejection based on Gilb ’155, but proceeded to
reject the claims on other grounds. Ex. 1019, 87–95. Interestingly, neither
Petitioner nor Patent Owner directed the panel to the Examiner’s citation and
application of Gilb ’155 during prosecution of the ’510 patent family.4
Based on the foregoing evidence, we find Gilb ’155 discloses
“an extension portion extending from the channel-shaped portion and
configured to extend through the sheathing,” as recited in claim 1.

4 See 37 C.F.R. § 42.11(a)(“Parties and individuals involved in the
proceeding have a duty of candor and good faith to the Office during the
course of a proceeding.”).
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d) “a connection portion including a top flange
configured for attachment to a top surface of a top
plate of the wall, the connection portion further
including a back flange extending from an edge of
the top flange in a direction toward a plane of the
base of the channel-shaped portion, the back flange
having a front surface lying in a back flange plane,”
Gilb ’155 discloses a hanger as shown in Figure 2, reproduced above,
including a connection portion (supporting member 2, 2’) having a top
flange (top flange 57) configured for attachment to a top surface (supporting
structure 3) of a top plate of a wall. Ex. 1010, 7:35–49, 8:20–32, Fig. 2; see
Pet. 79–81 (citing Ex. 1003 ¶¶ 178–179). Gilb ’155 discloses the connection
portion (supporting member 2, 2’) includes a back flange (face element 4,
4’) extending from an edge of the top flange in a direction toward a plane of
the base of the channel-shaped portion (plane of U-shaped seat member 61).
Ex. 1010, 5:29–35, 8:20–32, Fig. 2; see Pet. 81–82. Gilb ’155 discloses the
back flange having a front surface lying in a back flange plane. In
particular, for example, Gilb ’155’s back flange (face element 4, 4’) has a
front surface facing toward the rest of the hanger, and Gilb ’155 discloses
that its back flange (face element 4, 4’) is “positioned generally in a vertical
plane.” Ex. 1010, 3:53–54, Fig. 2; see Pet. 82–83 (citing Ex. 1003 ¶ 180).
Patent Owner does not contend that the subject “connection portion”
limitation is absent in Gilb ’155. See PO Resp. 31–48. Any such argument
has been waived. See 37 C.F.R. § 42.23(a).
Based on the foregoing evidence, Petitioner contends, and we find,
Gilb ’155 discloses “a connection portion including a top flange configured
for attachment to a top surface of a top plate of the wall, the connection
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portion further including a back flange extending from an edge of the top
flange in a direction toward a plane of the base of the channel-shaped
portion, the back flange having a front surface lying in a back flange plane,”
as recited in claim 1. Pet. 79–83 (citing Ex. 1003 ¶¶ 178–180).
e) “the extension portion spacing the side panels from
the back flange plane by a distance sized large
enough to permit two layers of 5/8 inch thick
sheathing to be received between the rear edge
plane and the back flange plane, but too small to
permit three layers of 5/8 inch thick sheathing to be
received between the rear edge plane and the back
flange plane.”
Claim 1 recites the extension portion “spacing the side panels from
the back flange plane by a distance sized large enough to permit two layers
of 5/8 inch thick sheathing to be received between the rear edge plane and
the back flange plane, but too small to permit three layers of 5/8 inch thick
sheathing to be received between the rear edge plane and the back flange
plane” (emphases added) (hereinafter the “Spacing Dimension Limitation”).
Petitioner contends “Gilb ’155 does not expressly disclose a dimension of
the gap between the side panels 63/64 and face element 4/4’,” but “Bundy
discloses an extension portion sized to accommodate two layers of 5/8" thick
sheathing,” and “it would have been obvious to a [skilled artisan] to size
Gilb ’155’s extension portion distance to allow two sheets of 5/8" sheathing
to be received between the rear edge plane and the back flange plane, as
taught by Bundy.” Pet. 84–85 (emphasis added). Patent Owner opposes
Petitioner’s contentions. PO Resp. 39–47; PO Sur-Reply 17–18.
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(1) Spacing Dimension Limitation
Bundy discloses sheathing (e.g., panels 6) installed between the back
of a joist hanger and wall framing for mounting the hanger, as shown in
Figure 1, reproduced above. Ex. 1007, 1:5–11, 3:55–67, Fig. 1. Bundy also
discloses that “[t]he one or more panels 6 preferably are drywall panels 6,”
and explains “[c]ommon panel thicknesses are 1/2-inch and 5/8-inch,” and
“[i]n the present invention, two layers of 5/8-inch drywall is preferred.” Id.
at 5:10–22 (emphasis added).
Based on the foregoing evidence, Petitioner contends, and we find,
Bundy discloses the Spacing Dimension Limitation, as recited in claim 1.
Pet. 84–86 (citing Ex. 1003 ¶ 183).
(2) Reason to Combine Gilb ’155 and Bundy
Petitioner argues “Bundy discloses a hanger providing an extension
portion that allows precisely two layers of 5/8" thick sheathing to be
received between the rear edge plane and the wall,” and that “it would have
been obvious for [the skilled artisan] to size Gilb ’155’s extension distance
to receive two layers of 5/8" thick sheathing” to support “fire-rated [wall]
construction.” Pet. 71. More specifically, Petitioner argues “[t]his would
have been nothing more than a simple substitution of one [known] element
(Bundy’s preferred sizing for the extension distance) for another
(Gilb ’155’s indeterminate sizing for the extension distance) to obtain
predictable results.” Pet. 71–72 (citing Ex. 1003 ¶ 167) (emphasis added);
Pet. 83–86. Petitioner contends “the reference to two 5/8" layers of
sheathing is not itself inventive,” as “[t]his dimension of fire-rated
construction has already been standardized in international and well-known
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building code requirements, and in any event would have involved routine
optimization to arrive at this value.” Pet. 86; see Ex. 1003 ¶ 46 (“[A] wall
composed of two layers of 5/8" sheathing is a well-known standard for fire-
rated construction”).
Patent Owner argues in various forms that the skilled artisan would
not have been motivated to combine Gilb ’155’s hanger with Bundy’s
disclosure of the Spacing Dimension Limitation, because allegedly Gilb
’155 doesn’t explicitly disclose use of its hanger in conjunction with a fire
barrier or firewall, and installing Gilb ’155’s hanger in a firewall scenario
would result in gaps in the firewall that reduces its fire rating. See, e.g., PO
Resp. 40 (“As Gilb ’155 makes no reference to fire ratings or resistance[,]
Gilb ’155 provides no suggestion that the disclosed infinite skew hanger
would have any particular applicability for use with firewalls.”), 40–41
(“[U]sing the Gilb ’155 hanger in conjunction with a fire barrier as
suggested in the Petition would leave a portion of the wood framing exposed
and a portion of the wall cavity completely open, unprotected and
uncovered,” and “[l]eaving a portion of the wood frame wall exposed
negatively impacts, if not eliminates, the entire wall’s fire rating.”), 41
(“[The skilled artisan] would not even look to modify the hanger disclosed
in Gilb ’155 to extend through a fire barrier because doing so would
compromise the ability of the fire barrier to prevent the spread of a fire.”).
We are not persuaded by Patent Owner’s argument. Again, Patent Owner’s
argument is not commensurate in scope with the independent claims (under
claim constructions we adopt above) and ignores the breadth of these
claims—apparatus claim 1 is directed only to a hanger, not to a hanger in
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combination with sheathing (or drywall, firewalls, or fire barriers), and not
to a method of installing a hanger to minimize gaps in sheathing. See In re
Self, 671 F.2d 1344, 1348 (CCPA 1982) (limitations not appearing in the
claims cannot be relied upon for patentability). Moreover, Patent Owner
does not meaningfully address Petitioner’s obviousness contentions based on
simple substitution of a dimension.
Contrary to Patent Owner’s framing of the obviousness argument at
hand (see, e.g., PO Resp. 39–47; PO Sur-Reply 17–18), Petitioner contends
Gilb ’155 itself already discloses the extension portion structure but for
explicitly disclosing the claimed Spacing Dimension Limitation (see Pet. 83
(“Gilb ’155 teaches the extension portion . . . spaces the side panels away
from the back flange plane by a distance.”)), and argues the skilled artisan
could have simply substituted the dimension of the extension portion
disclosed in Bundy to obtain the predictable result of Gilb ’155’s extension
portion providing space for two but not three sheets of 5/8" drywall for any
purpose, including fire protection purposes. See, e.g., Pet. 70–72.
As outlined in our Institution Decision (Dec. 29–30), we find that
Petitioner shows persuasively and Patent Owner still does not persuasively
controvert:
(1) Gilb ’155 discloses a structure of an “extension portion spacing
. . . side panels from [a] back flange plane by [a] distance,” as recited in
claim 1 (Ex. 1001, 12:30–36) (i.e., the prior art contains a hanger which
differs from the claimed hanger by the substitution of one dimension of the
hanger’s extension portion);
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(2) firewall composition and thickness of two layers of 5/8" drywall as
measured between side panels of a hanger’s channel-shaped portion and wall
framing for mounting the hanger are shown, for example, in Figures 1–3, 10,
11, and 18 of Bundy (Ex. 1007) (we note Patent Owner argues its similar
patent drawings provide written description support for the ‘two but not
three layers’ Spacing Dimension Limitation (see PO Resp. 93–96; PO Sur-
Reply 25–26)) (cf. Prelim. Resp. 3–6 (“Section 706.6 of the 2012
International Building Code specifies that the fire resistant partitions must
have vertical continuity extending from the foundation to the roof of the
structure. . . . [F]or fire separation walls, the double layer of 5/8 inch thick
Type-X Gypsum wallboard is installed . . . .”)) (i.e., the substituted
dimension and the function of that dimension were known in the prior art);
or
(3) the skilled artisan could have substituted the extension portion
(firewall thickness) dimension from Bundy for the relevant dimension of
Gilb ’155’s “extension portion” structure to predictably result in a spacing
accommodating two but not three sheets of 5/8" drywall. See KSR, 550 U.S.
at 416 (“The Court recognized that when a patent claims a structure already
known in the prior art that is altered by the mere substitution of one element
for another known in the field, the combination must do more than yield a
predictable result.”); see generally PO Resp. 78–88.
(3) Operable for Intended Purpose
Patent Owner also argues “[Petitioner’s] proposed modification and
application of the Gilb ’155 hanger in view of Bundy would have greatly
reduced the ability of the hanger to operate according to its intended
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purpose,” namely, for the channel-shaped portion to pivot or provide for
“‘any amount of skew’” relative to the connection portion. PO Resp. 41, 46
(emphasis added); see PO Resp. 41–47. Notably, Patent Owner does not
argue that the modification (or more accurately in view of Petitioner’s
argument, the substitution) would render Gilb ’155 inoperable, but rather,
allegedly less operable relative to its intended purpose. See PO Resp. 43
(Placing sheathing within the space defined by the extension portion of
Gilb ’155 “could still allow for near perpendicular use of the Gilb ’155
hanger.” (emphasis added)), 44 (“Sizing the gusset 9/9' of Gilb ’155 to allow
more space than exactly two sheets of sheathing would permit some pivoting
of the hanger, but the gusset swivel would still be limited to approximately
30º.” PO Resp. 44 (emphasis added). But Patent Owner argues “[the skilled
artisan] would not choose to sacrifice the ability to reach 45° so that the
Gilb ’155 hanger could extend through a fire barrier—which is not even a
purpose of the Gilb ’155 hanger or a task for which the Gilb ’155 hanger is
suitable for.” PO Resp. 47; PO Sur-Reply 17–18.
We are unpersuaded by Patent Owner’s argument that combining
Gilb ’155 and Bundy would render Gilb ’155 inoperable for its intended
purpose (PO Resp. 41–47). Specifically, we are not persuaded that the
Gilb ’155 hanger would be rendered “inoperable” by making the spacing of
its extension portion sized to accommodate two but not three sheets of
5/8" drywall. First and foremost, claim 1 does not require sheathing, so
making the extension portion spacing in Gilb ’155 align with the dimension
requirements of claim 1 likely would have little to no effect on the operation
of its hanger. Second, even if sheathing were present, the Gilb ’155 hanger
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still would be operable to attach a joist perpendicularly to a wall, as
conceded by Patent Owner. See PO Resp. 43. Third, because the claimed
extension portion spacing allows for more space than the thickness of
exactly two sheets of 5/8" drywall, any additional space beyond the
thickness of installed sheathing also would render the hanger operable to
attach a joist to a wall at some angles other than 90 degrees, as conceded by
Patent Owner. See PO Resp. 44. Fourth, because claim 1 does not limit the
size of any sheathing cutout, recite any particular sheathing-to-hanger
conformance requirements, or recite fire rating requirements, for example,
sheathing may be adjusted (cut out) to allow pivoting of the Gilb ’155
hanger. See PO Sur-Reply 17–18; Pet. Reply 16 (citing, in part, Ex. 1038,
179:5–180:5, 182:23–183:3); Ex. 1039 ¶¶ 36–37; see also, e.g., Allied
Erecting & Dismantling Co. v. Genesis Attachments, LLC, 825 F.3d 1373,
1381 (Fed. Cir. 2016) (“Although modification of the movable blades may
impede the quick change functionality disclosed by Caterpillar, ‘[a] given
course of action often has simultaneous advantages and disadvantages, and
this does not necessarily obviate motivation to combine.’”).
In addition, to the extent that Patent Owner attempts to refute
Petitioner’s obviousness showing based on allegedly different objectives or
purposes of the hangers of Gilb ’155, Bundy, and the ’510 patent (see, e.g.,
PO Resp. 16–18, 41–47), we are not persuaded. It is sufficient that the
skilled artisan would have had a rational reason to combine Gilb ’155 and
Bundy to arrive at the invention of claim 1 (discussed above), even if the
particular purpose of the invention of claim 1 is different from that of the
references. See In re Heck, 699 F.2d 1331, 1333 (Fed. Cir. 1983) (citing
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In re Gershon, 372 F.2d 535, 538–39 (CCPA 1967)); In re Graf,
343 F.2d 774, 777 (CCPA 1965) (“Obviousness is not to be determined on
the basis of purpose alone.”).
(4) Allan
As explained above, based on the complete record before us, we are
persuaded that the combination of Gilb ’155 and Bundy discloses all
structural limitations in claim 1, and therefore, Petitioner’s reliance on Allan
(Ex. 1012) to teach sheathing installed around an extension portion is
unnecessary. Accordingly, we do not address Allan in this obviousness
ground.
f) Objective Evidence of Nonobviousness
Patent Owner presents evidence that, in Patent Owner’s view,
demonstrates the non-obviousness of the challenged claims. PO. Resp. 51–
56; PO Sur-Reply 18.
First, Patent Owner submits (1) “it has been a common fire proofing
tactic to use two layers of 5/8" thick drywall on firewalls dating back to at
least 1993” (PO Resp. 52) (in its Preliminary Response, Patent Owner
argues this dated back to “at least 2000” (Prelim. Resp. 104, 106)); and
(2) Petitioner and Patent Owner allegedly “started with the same goal (i.e.,
develop a hanger to accommodate drywall) but each contemporaneously
came up with a different solution to achieve the goal,” and contends “[t]his
situation . . . is probative of the non-obviousness of the two different
solutions” (PO Resp. 54). However, the record before us does not
adequately evidence this alleged “situation.” For example, (1) according to
the Declaration of Petitioner’s declarant Sam Hensen (Ex. 2020), “[i]n 2013,
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building codes changed, allowing for wood structures to be built taller and
more dense, leading to increased demand for hangers that would allow larger
wood-framed structures to meet the new fire-resistance regulations”
(Ex. 2020 ¶ 9); (2) “[Petitioner] has been working on the development of fire
wall hangers or drywall hangers since at least as early as around 2013
[not 1993 or 2000]” (Ex. 2020 ¶ 8); and (3) Patent Owner’s allegation that
Petitioner and Patent Owner started with the “same goal” (i.e., “develop a
hanger to accommodate drywall”) is vague and conflicts with testimony of
Petitioner’s declarant, Mr. Hensen, who stated that, unlike Patent Owner’s
goal, Petitioner’s initial goal was to “develop[] a new hanger that was
installed over the typical two layers of 5/8 inch drywall without damaging
the drywall” (Ex. 2020 ¶ 9 (emphasis added)). Based on the foregoing, and
on the complete record before us, we are unpersuaded by Patent Owner’s
argument, and find Patent Owner does not adequately evidence the above
“situation.”
Second, Patent Owner submits that “‘demand existed for the patented
invention, and that others tried but failed to satisfy that demand.’” PO
Resp. 55. According to Patent Owner, evidence of this consists of
“[Petitioner’s] customers request[ing] a firewall hanger that could be
installed before the drywall,” “[h]aving been presented with competing
products ([Petitioner’s] DHUTF Hangers embodying the Bundy patent and
[Patent Owner’s] FWH Hanger embodying the invention of the
’510 patent).” PO Resp. 54–55 (emphasis added).
“Longfelt need is closely related to the failure of others. Evidence is
particularly probative of obviousness when it demonstrates both that a
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demand existed for the patented invention, and that others tried but failed to
satisfy that demand.” Eurand, Inc. v. Mylan Pharms., Inc. (In re
Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig.),
676 F.3d 1063, 1082 (Fed. Cir. 2012). Establishing a longfelt need requires
objective evidence that the invention has provided a long-awaited, widely
accepted, and promptly adopted solution to a problem existent in the art, or
that others had tried but failed to solve that problem. See In re Mixon,
470 F.2d 1374, 1377 (CCPA 1973). Furthermore, one must demonstrate
that “widespread efforts of skilled workers having knowledge of the prior art
had failed to find a solution to the problem.” In re Allen, 324 F.2d 993, 997
(CCPA 1963).
In this case, the testimony of Petitioner’s declarant, Mr. Hensen,
evidences that Petitioner’s DHU Hangers, which install over or after
drywall, “were successful in the market,” but “some [of Petitioner’s]
customers requested a firewall hanger that could be installed before the
drywall, [and] which would achieve a fire-resistance rating that was closer to
the DHU Hanger.” Ex. 2020 ¶ 11 (emphases added). According to
Mr. Hensen, due to that customer feedback received “after the DHU Hangers
were developed and released, [Petitioner] worked on the design,
development, and testing of the products [accused of infringing the
’510 patent in the Related Litigation].” Ex. 2020 ¶ 11; see id. ¶ 9. As such,
any unmet need here realized by Petitioner went unresolved for a time far
less than the time since 2000 as suggested by Patent Owner. See Ex. 2020
¶¶ 9 (stating building codes changed in 2013), 8–13. Patent Owner does not
cite evidence of the actual time needed by Petitioner to design the hangers
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accused of infringement in the Related Litigation. See PO Resp. 54–55.
Also, Petitioner’s declarant, Mr. Hensen, did not assert (nor has Patent
Owner) that anyone in the industry tried repeatedly but failed to create a
hanger as claimed in the ’510 patent.
Based on the foregoing, and on the complete record before us, we are
unpersuaded by Patent Owner’s argument, and find Patent Owner does not
adequately evidence widespread, failed efforts by others to solve any
particular problem or that the asserted claims of the ’510 patent demonstrate
a widely accepted solution to such a problem.
Third, Patent Owner argues “[Petitioner’s] use of [Patent Owner’s]
FWH Hanger embodying the invention of the ’510 patent and the
’510 patent’s parent patent and applications as a guide in the design of their
own hangers is the essence of copying and is further indicia of
nonobviousness.” PO Resp. 56. According to Patent Owner, evidence of
this “copying” consists of Petitioner’s knowledge of parent patent
applications to the ’510 patent, and Petitioner’s admission to intending to
“design around” (Ex. 2020 ¶ 17) patents issuing from such applications. See
PO Resp. 55–56.
Although “copying of a claimed invention can be evidence of
nonobviousness,” Panduit Corp. v. Dennison Manufacturing, 774 F.2d
1082, 1099 (Fed. Cir. 1985), “a showing of copying is only equivocal
evidence of non-obviousness in the absence of more compelling objective
indicia of other secondary considerations,” Ecolochem, Inc. v. S. California
Edison Co., 227 F.3d 1361, 1380 (Fed. Cir. 2000); see In re GPAC, 57 F.3d
1573, 1580 (Fed. Cir. 1995) (“‘[M]ore than the mere fact of copying by an
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accused infringer is needed to make that action significant to a determination
of the obviousness issue.’”). In this case, Patent Owner itself admits
“[Petitioner] was careful to design around the claims of the ’510 patent’s
parent applications and patents.” Prelim. Resp. 107 (emphasis added).
Further, the ’510 patent issued June 11, 2019 (Ex. 1001, code (45)), but
Petitioner’s hangers accused of copying the claims in the ’510 patent were
released to the market in June 2017—about two years before the patent. See
Ex. 2020 ¶ 13. In addition, Patent Owner does not evidence that Petitioner’s
accused hangers are physically the same (or even substantially the same) as
any embodiment disclosed in the ’510 patent.
Based on the foregoing, and on the complete record before us, we are
unpersuaded by Patent Owner’s argument, and find Patent Owner does not
adequately evidence copying by Petitioner. See Pentec, Inc. v. Graphic
Controls Corp., 776 F.2d 309, 317 (Fed. Cir. 1985) ([Defendant’s] effort to
develop their own solution was not shown to have been extensive, its
product is not identical to the claimed invention, and it vigorously denied
infringement. [Plaintiff’s] copying argument can, accordingly, be given
little weight.” (We note Patent Owner here alleges “[Petitioner] has not
vigorously denied infringement.” (PO Resp. 56))).
We have considered the secondary considerations of nonobviousness
presented by Patent Owner and accorded them, along with all of the Graham
factors, appropriate weight in reaching our determination below.
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g) Conclusion
For the reasons expressed above, we conclude that Petitioner has
demonstrated by a preponderance of evidence that the combined teachings
of Gilb ’155 and Bundy render claim 1 unpatentable as obvious.
4. Independent Claims 13 and 20
Petitioner contends that independent claims 13 and 20 would have
been obvious over Gilb ’155, Bundy, and Allan. Pet. 72–86, 98–99. Patent
Owner argued claims 13 and 20 together with independent claim 1,
discussed above. See PO Resp. 31–48.
The preamble of claim 13 recites “[a] hanger for connecting a
structural component to a wall adapted to have fire resistant sheathing
mounted thereon.” Ex. 1001, 13:12–14. Claim 13’s preamble differs from
claim 1 by reciting “fire resistant sheathing” rather than “sheathing.”
Regardless, we conclude that the preamble of claim 13 is not a limitation, for
the same reasons expressed above for the preamble of claim 1. Compared to
claim 1, although claim 13 recites a “channel-shaped portion including . . .
side panels extending upward from the base,” it does not recite “side panels
extending upward from the base generally perpendicular to the base, the
side panels having rearward edges lying in a rear edge plane.” Compare
Ex. 1001, 13:15–19, with Ex. 1001, 12:13–20. Also, claim 13 recites “the
extension portion spacing the side panels from the back flange,” rather than
“from the back flange plane,” as in claim 1; and recites that this spacing is
sized to permit sheathing to be received “in a space bounded by the side
panels and the back flange,” rather than to be received “between the rear
edge plane [defined by rearward edges of the side panels] and the back
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flange plane,” as in claim 1. Compare Ex. 1001, 13:28–34, with Ex. 1001,
12:30–36. In other words, claim 13 recites these limitations in a broader
manner than claim 1. Petitioner contends, and we find, Gilb ’155 discloses
these limitations for the same reasons as set forth above for claim 1.
Pet. 73–77 (citing Ex. 1003 ¶¶ 171–174).
The preamble of claim 20 recites “[a] hanger for connecting a
structural component to a wall adapted to have drywall mounted thereon.”
Ex. 1001, 14:21–23. Claim 20’s preamble differs from claim 1 by reciting
“drywall” rather than “sheathing.” Regardless, we conclude that the
preamble of claim 20 is not a limitation, for the same reasons expressed
above for the preamble of claim 1. Compared to claim 1, claim 20 does not
include the limitation “the channel-shaped portion including a base sized and
shaped for receiving an end of the structural component thereon to support
the structural component, and side panels extending upward from the base
generally perpendicular to the base, the side panels having rearward edges
lying in a rear edge plane.” Compare Ex. 1001, 14:25–39, with Ex. 1001,
12:13–36. Claim 20 also does not include the complete Spacing Dimension
Limitation of claim 1, and instead recites only “spacing the channel-shaped
portion from the back flange plane by a distance sized large enough to
permit the drywall to be received between the channel-shaped portion and
the back flange plane,” rather than “sized large enough to permit two layers
of 5/8 inch thick sheathing to be received between the rear edge plane and
the back flange plane, but too small to permit three layers of 5/8 inch thick
sheathing to be received between the rear edge plane and the back flange
plane,” as recited in claim 1. Compare Ex. 1001, 14:25–39, with Ex. 1001,
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12:13–36. In other words, claim 20 recites these limitations in a broader
manner than claim 1. Petitioner contends, and we find, Gilb ’155 discloses
these limitations for the same reasons as set forth above for claim 1.
Pet. 98–99 (citing Ex. 1003 ¶¶ 206–210).
We agree with Petitioner that independent claims 13 and 20 otherwise
recite limitations commensurate in scope with independent claim 1. See
Pet. 72–99. We find that Gilb ’155 and Bundy disclose the limitations that
overlap with claim 1 for the same reasons given above for claim 1.
Accordingly, we conclude that Petitioner has demonstrated by a
preponderance of evidence that the combined teachings of Gilb ’155 and
Bundy render independent claims 13 and 20 unpatentable as obvious.
5. Dependent Claims 2–12 and 14–19
Petitioner contends that dependent claims 2–12 and 14–19 would have
been obvious over Gilb ’155, Bundy, and Allan. Pet. 86–98. Patent Owner
opposes Petitioner’s contentions as to dependent claims 4, 12, and 19.
PO Resp. 48–56. For the reasons expressed below, and based on the
complete record before us, we determine that Petitioner has demonstrated by
a preponderance of evidence that dependent claims 2–11 and 14–18 are
unpatentable as obvious over the combination of Gilb ’155, Bundy, and
Allan, but has not demonstrated by a preponderance of evidence that
dependent claims 12 and 19 are unpatentable as obvious over the
combination of Gilb ’155, Bundy, and Allan.
a) Claims 2 and 14
Claims 2 and 14 further recite “a portion of [the rearward edge of] at
least one of the side panels is in opposed, spaced apart relation with the back
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flange.” Gilb ’155 discloses that upstanding leg elements 63 and 64 and first
hanger side members 47 and 49 are facing and spaced apart from face
element 4’. Ex. 1010, Fig. 2; see Ex. 1003 ¶ 189. Based on this evidence,
Petitioner contends, and we find, that such description discloses “a portion
of [the rearward edge of] at least one of the side panels is in opposed, spaced
apart relation with the back flange,” as recited in claims 2 and 14. Pet. 86–
88. We conclude that Petitioner has demonstrated by a preponderance of
evidence that the combined teachings of Gilb ’155 and Bundy render
dependent claims 2 and 14 unpatentable as obvious.
b) Claim 3
Claim 3 further recites “the channel-shaped portion is disposed with
respect to the extension portion to mount the structural component at a non-
orthogonal angle relative to the wall.” Gilb ’155 discloses that gusset-like
member 9 (extension portion) may be skewed either right or left. Ex. 1010,
7:9–28, Fig. 8; see Ex. 1003 ¶ 191. Based on this evidence, Petitioner
contends, and we find, that such description discloses “the channel-shaped
portion is disposed with respect to the extension portion to mount the
structural component at a non-orthogonal angle relative to the wall,” as
recited in claim 3. Pet. 88–89. We conclude that Petitioner has
demonstrated by a preponderance of evidence that the combined teachings
of Gilb ’155 and Bundy render dependent claim 3 unpatentable as obvious.
c) Claim 4
Claim 4 further recites “the extension portion includes extension
flanges extending from the channel-shaped portion, each of the extension
flanges being configured to extend through the sheathing.” Gilb ’155
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discloses that an extension portion (gusset-like member 9) includes
extension flanges (gusset-like projections 34) extending from a channel-
shaped portion. Ex. 1010, Fig. 8; see Ex. 1003 ¶¶ 192–193. Based on this
evidence, Petitioner contends, and we find, that such description discloses
“the extension portion includes extension flanges extending from the
channel-shaped portion, each of the extension flanges being configured to
extend through the sheathing,” as recited in claim 4. Pet. 89–90. Although
Patent Owner argues Gilb ’155 does not disclose extension flanges
configured to extend through sheathing, we are not persuaded by this
argument for the same reasons expressed above regarding the claim 1
limitation of “an extension portion extending from the channel-shaped
portion and configured to extend through the sheathing.” See
Section II.G.3.c, supra. We conclude that Petitioner has demonstrated by a
preponderance of evidence that the combined teachings of Gilb ’155 and
Bundy render dependent claim 4 unpatentable as obvious.
d) Claims 5 and 18
Claims 5 and 18 further recite “[the extension portion includes
extension flanges extending away from the channel-shaped portion,] the
extension flanges are configured to engage each other along a juncture
positioned within the [fire resistant] sheathing.” Gilb ’155 discloses that an
extension portion (gusset-like member 9) includes extension flanges (gusset-
like projections 34) extending away from a channel-shaped portion and are
configured to engage each other along a juncture positioned between the
channel-shaped portion and a connecting portion, specifically around and
behind pivot means 18. Ex. 1010, Fig. 8; see Ex. 1003 ¶ 194. Based on this
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evidence, Petitioner contends, and we find, that such description discloses
“[the extension portion includes extension flanges extending away from the
channel-shaped portion,] the extension flanges are configured to engage
each other along a juncture positioned within the [fire resistant] sheathing,”
as recited in claims 5 and 18. Pet. 90–91. We conclude that Petitioner has
demonstrated by a preponderance of evidence that the combined teachings
of Gilb ’155 and Bundy render dependent claims 5 and 18 unpatentable as
obvious.
e) Claim 6
Claim 6 further recites “the extension flanges are parallel to one
another.” Gilb ’155 discloses that extension flanges 34 are parallel to one
another. Ex. 1010, Fig. 8; see Ex. 1003 ¶ 195. Based on this evidence,
Petitioner contends, and we find, that such description discloses “the
extension flanges are parallel to one another,” as recited in claim 6. Pet. 91.
We conclude that Petitioner has demonstrated by a preponderance of
evidence that the combined teachings of Gilb ’155 and Bundy render
dependent claim 6 unpatentable as obvious.
f) Claim 7
Claim 7 further recites “the extension flanges are connected to the
channel-shaped portion at an end of the channel-shaped portion opposite an
end where the base is disposed.” Gilb ’155 discloses that extension flanges
connect to an end of a channel-shaped portion opposite its base. Ex. 1010,
Fig. 2; see Ex. 1003 ¶ 196. Based on this evidence, Petitioner contends, and
we find, that such description discloses “the extension flanges are connected
to the channel-shaped portion at an end of the channel-shaped portion
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opposite an end where the base is disposed,” as recited in claim 7. Pet. 91–
92. We conclude that Petitioner has demonstrated by a preponderance of
evidence that the combined teachings of Gilb ’155 and Bundy render
dependent claim 7 unpatentable as obvious.
g) Claim 8
Claim 8 further recites “the top flange comprises a first connector tab
and a second connector tab, the first and second connector tabs being spaced
apart from each other.” Gilb ’155 discloses that top flange 57 comprises a
first connector tab (left side of 21’) and a second connector tab (right side of
21’), the first and second connector tabs being spaced (portion 21’) apart
from each other. Ex. 1010, Fig. 8; see Ex. 1003 ¶ 197. Based on this
evidence, Petitioner contends, and we find, that such description discloses
“the top flange comprises a first connector tab and a second connector tab,
the first and second connector tabs being spaced apart from each other,” as
recited in claim 8. Pet. 92–93. We conclude that Petitioner has
demonstrated by a preponderance of evidence that the combined teachings
of Gilb ’155 and Bundy render dependent claim 8 unpatentable as obvious.
h) Claims 9 and 15
Claims 9 and 15 further recite “a stop configured to engage [the] end
of the structural component to space the end of the structural component
from the back flange [plane] by a distance sized large enough to permit two
layers of 5/8 inch thick sheathing to be received between the end of the
structural component and the back flange [plane].” Gilb ’155 discloses a
stop (e.g., the rear face portion element 77, 80) configured to engage end 78
of supported structure 17 to space the end of structure 17 from the back
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flange plane (e.g., face element 4’), where the stop spaces end 78 of
structure 17 substantially the same distance from the back flange plane as
the side panels in claim 1 (namely, the thickness dimension of two but not
three layers of 5/8” sheathing). Ex. 1010, 5:54–60, Fig. 8; see Ex. 1003
¶¶ 198–200. Based on this evidence, Petitioner contends, and we find, that
such description discloses “a stop configured to engage [the] end of the
structural component to space the end of the structural component from the
back flange [plane] by a distance sized large enough to permit two layers of
5/8 inch thick sheathing to be received between the end of the structural
component and the back flange [plane],” as recited in claims 9 and 15.
Pet. 93–94. We conclude that Petitioner has demonstrated by a
preponderance of evidence that the combined teachings of Gilb ’155 and
Bundy render dependent claims 9 and 15 unpatentable as obvious.
i) Claims 10 and 16
Claims 10 and 16 further recite “the stop comprises back panels
extending toward each other.” Gilb ’155 discloses the stop with face portion
element 77 extending toward face portion element 80. Ex. 1010, Fig. 8; see
Ex. 1003 ¶ 201. Based on this evidence, Petitioner contends, and we find,
that such description discloses “the stop comprises back panels extending
toward each other,” as recited in claim 8. Pet. 94–95. We conclude that
Petitioner has demonstrated by a preponderance of evidence that the
combined teachings of Gilb ’155 and Bundy render dependent claims 10
and 16 unpatentable as obvious.
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j) Claims 11 and 17
Claims 11 and 17 further recite “the back panels include a first back
panel and a second back panel, the first back panel extending from a first of
the side panels toward the second back panel and the second back panel
extending from a second of the side panels toward the first back panel.”
Gilb ’155 discloses the stop with face portion element 77 (first back panel)
extending from a first side panel (upstanding leg elements 63 and lower
leg 47) toward face portion element 80 (second back panel) extending from
a second side panel (upstanding leg elements 64 and lower leg 49) toward
the first back panel. Ex. 1010, 5:54–60, Fig. 8; see Ex. 1003 ¶ 202. Based
on this evidence, Petitioner contends, and we find, that such description
discloses “the back panels include a first back panel and a second back
panel, the first back panel extending from a first of the side panels toward
the second back panel and the second back panel extending from a second of
the side panels toward the first back panel,” as recited in claims 11 and 17.
Pet. 96. We conclude that Petitioner has demonstrated by a preponderance
of evidence that the combined teachings of Gilb ’155 and Bundy render
dependent claims 11 and 17 unpatentable as obvious.
k) Claims 12 and 19
Claims 12 and 19 further recite “the channel-shaped portion, the
extension portion, [and] the connection portion[, and the stop] are formed as
one piece [of sheet metal]” (emphasis added).
In our Institution Decision, for purposes of institution, we construed
“formed as one piece” to mean “formed as a single, unitary piece of
material.” Dec. 40–43. Patent Owner agrees with the Board’s construction.
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See PO Resp. 30–31 (“Patent Owner agrees that ‘one piece’ ordinarily
means ‘a single, unitary piece’ and that this definition is consistent with the
teachings of the specification.” (citing Ex. 1001, Figs. 15, 40, 7:10–17,
10:17–26; Ex. 2044 ¶ 45)). To clarify, by “formed as a single, unitary piece
of material” we mean “shaped or molded as a single, unitary piece of
material,” as discussed below.
We determine the appropriate construction by initially looking to the
specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d at 1364 (Claim
limitations must be read “in light of the specification as it would be
interpreted by one of ordinary skill in the art.”). The ’510 patent describes
“formed as one piece” in the context of Figures 15 and 40, reproduced
below.

Figures 15 and 40 are views of stamped metal blanks
for forming truss hangers “according to the present
invention” of the ’510 patent.
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Ex. 1001, Figs. 15, 40, 3:15–16, 3:51–52. According to the ’510 patent, as
shown in Figure 15 above, “a truss hanger 26 . . . can be formed as one piece
from a metal blank 80 that is stamped from a sheet metal roll and bent into
shape,” and in an exemplary embodiment, “the truss hanger 26 is stamped
from 12–14 gauge steel, although other suitable materials are within the
scope of the present invention.” Id. at 7:10–17 (emphasis added), Fig. 15;
see id. at 10:17–26 (“As seen in FIG. 40, a truss hanger 126 . . . can be
formed as one piece from a metal blank 180 that is stamped from a sheet
metal roll and bent into shape. . . . In one embodiment, the truss hanger 126
is stamped from 12–14 gauge steel.” (emphasis added)). The ’510 patent
also describes benefits of being “formed as one piece,” stating: “The truss
hanger 26, 126 can be formed from a metal blank 80, 180, which reduces the
number of parts required to hang the floor truss 12 and simplifies the
manufacturing process.” Id. at 11:37–40 (emphasis added).
We find the Specification of the ’510 patent describes the phrase
“formed as one piece” in a manner consistent with the ordinary and
customary meaning of that phrase, where “formed” ordinarily means
“shaped or molded” and “one piece” ordinarily means just that, “a single,
unitary piece.” We find the term “formed” is used in the Specification in a
manner that distinguishes it from other related terms like “built,”
“constructed,” or “assembled.” For example, we are unpersuaded that a bolt
and a nut are “formed as one piece” upon threading the nut onto the bolt, or
even upon welding the nut onto the bolt (even though this welded bolt and
nut may be “assembled” into a single, unitary piece). Accordingly, we
reaffirm and construe “formed as one piece” to mean “shaped or molded as a
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single, unitary piece of material.” Because this issue of claim scope is
sufficient to resolve the unpatentability issues raised in connection with
claims 12 and 19, we need not further construe this phrase for purposes of
this Decision. See Nidec, 868 F.3d at 1017.
Petitioner argues “‘formed as one piece’ is different from ‘formed
from one piece,’ a distinction that appears to be unappreciated by the
Board.” Pet. Reply 3. Petitioner argues “Patent Owner has taken the
position that the term ‘one piece’ includes components that were originally
separate but later joined together,” based on Patent Owner’s product
infringement contentions in the Related Litigation. Pet. 13 (citing Ex. 1031,
11), 97; see Pet. Reply 3. Petitioner further argues “Patent Owner asserts
that the term ‘formed as one piece’ applies to hangers whose welds are
clearly visible.” Pet. 13; see Pet. Reply 3. Petitioner also argues, and finds
great value in, “[b]oth experts . . . agree that the proper construction of the
term ‘formed as one piece’ means that all of the parts are in a fixed position
when installed.” Pet. Reply 3 (citing Ex. 1039 ¶¶ 6–8). We have considered
Petitioner’s arguments, but are not persuaded by them in view of the
intrinsic evidence discussed above.
Petitioner argues Gilb ’155 discloses a channel-shaped portion, an
extension portion, and/or a connection portion, and/or a stop are formed as
one piece (Claim 12), and even formed as one piece of sheet metal
(Claim 19). See Pet. 96–98 (“[O]nce Gilb ’155’s pin is put in place, the
extension portion (gusset-like member 9/9’) also ‘cannot be separated from’
the connection portion (supporting member 2).”); Pet. Reply 18–19.
We find this argument unpersuasive. Here, Petitioner does not show
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sufficiently how Gilb ’155, or the combination of Gilb ’155, Bundy, and
Allan, teaches a channel-shaped portion, an extension portion, and/or a
connection portion, and/or a stop shaped or molded as a single, unitary piece
of material. See, e.g., Ex. 1010, Fig. 2.
Accordingly, we conclude that Petitioner has not demonstrated by a
preponderance of evidence that the combined teachings of Gilb ’155 and
Bundy render dependent claims 12 and 19 unpatentable as obvious.
6. Summary
For the reasons expressed above, we conclude that Petitioner has
demonstrated by a preponderance of evidence that the combined teachings
of Gilb ’155 and Bundy render claims 1–11, 13–18, and 20 unpatentable as
obvious. We also conclude that Petitioner has not demonstrated by a
preponderance of evidence that claims 12 and 19 are unpatentable as
obvious over the combination of Gilb ’155, Bundy, and Allan.
H. Obviousness of Claims 12 and 19 Over the Combination of
Gilb ’155, Bundy, Allan, and Gilb ’942
Petitioner contends claims 12 and 19 are unpatentable under
35 U.S.C. § 103 as obvious over the combination of Gilb ’155 (Ex. 1010),
Bundy (Ex. 1007), Allan (Ex. 1012), and Gilb ’942 (Ex. 1032). Pet. 99–102;
see Pet. Reply 18–19. Patent Owner opposes Petitioner’s contentions.
PO Resp. 30–31, 50–51, 56; PO Sur-Reply 19. For the reasons expressed
below, and based on the complete record before us, we determine that
Petitioner has not demonstrated by a preponderance of evidence that
claims 12 and 19 are unpatentable as obvious over the combination of Gilb
’155, Bundy, Allan, and Gilb ’942.
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Petitioner argues Gilb ’942 teaches welding originally separate hanger
components together into one piece, which, according to Petitioner, teaches
a hanger “formed as one piece.” Pet. 99–102. Patent Owner argues
Petitioner’s contentions are based on a construction for “formed as one
piece” not adopted by the Board. See PO Resp. 56 (referring to arguments at
PO Resp. 50–51). Because we construe “formed as one piece” to mean
“shaped or molded as a single, unitary piece of material” (see supra),
we find Petitioner’s arguments here unpersuasive. Although Gilb ’942 may
teach welding separate components together to create a hanger, we are not
persuaded Gilb ’942 teaches a hanger shaped or molded as a single, unitary
piece of material.
Accordingly, we conclude that Petitioner has not demonstrated by a
preponderance of evidence that the combined teachings of Gilb ’155, Bundy,
Allan, and Gilb ’942 render dependent claims 12 and 19 unpatentable as
obvious.
I. Summary of Analysis of Original Claims 1–20
In our analysis above of original claims 1–20 of the ’510 patent, we
determined that Petitioner has demonstrated by a preponderance of evidence:
(1) claims 1–19 are unpatentable under 35 U.S.C. § 112(a) for lack
of written description;
(2) claims 1–19 are unpatentable under 35 U.S.C. § 102 as
anticipated by Brekke ’370; and
(3) claims 1–11, 13–18, and 20 are unpatentable as obvious over
the combination of Gilb ’155, Bundy, and Allan.
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We also determined that Petitioner has not demonstrated by a
preponderance of evidence:
(4) claim 20 is unpatentable under 35 U.S.C. § 112(b) for
indefiniteness;
(5) claims 12 and 19 are unpatentable as obvious over the
combination of Gilb ’155, Bundy, and Allan; and
(6) claims 12 and 19 are unpatentable as obvious over the
combination of Gilb ’155, Bundy, Allan, and Gilb ’942.
Given Patent Owner’s stated contingency of its proposed substitute
claims in the RMTA (RMTA 1), for efficiency purposes, we need not and do
not address in this section Petitioner’s remaining unpatentability arguments
directed to original claims 1–20, and instead hereinafter turn to proposed
substitute claims 21–40, as discussed below in Section III. See SAS Inst. Inc.
v. Iancu, 138 S. Ct. 1348, 1359 (2018) (holding a petitioner “is entitled to a
final written decision addressing all of the claims it has challenged”); Boston
Sci. Scimed, Inc. v. Cook Grp. Inc., Nos. 2019-1594, -1604, -1605, 2020
WL 2071962, at *4 (Fed. Cir. Apr. 30, 2020) (non-precedential)
(recognizing that the “Board need not address issues that are not necessary
to the resolution of the proceeding” and, thus, agreeing that the Board has
“discretion to decline to decide additional instituted grounds once the
petitioner has prevailed on all its challenged claims”). Nevertheless, in
Section III, because all proposed substitute claims are narrower than their
corresponding original claims, our findings and conclusions as to the
proposed substitute claims apply equally to their corresponding original
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claims. We now turn to Patent Owner’s Revised Contingent Motion to
Amend.
III. REVISED CONTINGENT MOTION TO AMEND
Patent Owner requests that we grant entry of proposed substitute
claims 21–40, which correspond to original claims 1–20. RMTA 1,
App. A, 1. In particular, Patent Owner requests that “[i]f after considering
Patent Owner’s Response and Sur-Reply the Board finds any of issued
claims 1–20 unpatentable, Patent Owner respectfully requests that the Board
replace claims 1–20 with respective proposed substitute claims 21–40.”
RMTA 1 (emphases added).
A. Applicable Law
In a post-grant review, amended claims are not added to a patent as of
right, but rather must be proposed as a part of a motion to amend. 35 U.S.C.
§ 326(d). The Board must assess the patentability of proposed substitute
claims “without placing the burden of persuasion on the patent owner.”
Aqua Prods., Inc. v. Matal, 872 F.3d 1290, 1328 (Fed. Cir. 2017) (en banc);
see also Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 15 at 3‒4
(PTAB Feb. 25, 2019) (precedential). Subsequent to the issuance of Aqua
Products, the Federal Circuit issued a decision in Bosch Automotive Service
Solutions, LLC v. Matal, 878 F.3d 1027 (Fed. Cir. 2017) (“Bosch”), as well
as a follow-up order amending that decision on rehearing. See Bosch Auto.
Serv. Sols., LLC v. Iancu, No. 2015-1928 (Fed. Cir. Mar. 15, 2018) (Order
on Petition for Panel Rehearing).
In accordance with Aqua Products, Bosch, and Lectrosonics, a patent
owner does not bear the burden of persuasion to demonstrate the
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patentability of the substitute claims presented in the motion to amend.
Rather, ordinarily, “the petitioner bears the burden of proving that the
proposed amended claims are unpatentable by a preponderance of the
evidence.” Bosch, 878 F.3d at 1040 (as amended on rehearing);
Lectrosonics, Paper 15 at 3–4. In determining whether a petitioner has
proven unpatentability of the proposed substitute claims, the Board focuses
on “arguments and theories raised by the petitioner in its petition or
opposition to the motion to amend.” Nike, Inc. v. Adidas AG, 955 F.3d 45,
51 (Fed. Cir. 2020). Ultimately, the Board determines whether the proposed
substitute claims are unpatentable by a preponderance of the evidence based
on the entirety of the record, including any opposition made by the
Petitioner. See Lectrosonics, Paper 15 at 4.
Notwithstanding the foregoing, Patent Owner’s proposed substitute
claims 21–40 must meet the statutory requirements of 35 U.S.C. § 326(d)
and the procedural requirements of 37 C.F.R. § 42.221. Lectrosonics,
Paper 15 at 4–8. Accordingly, Patent Owner must demonstrate: (1) the
amendment proposes a reasonable number of substitute claims; (2) the
amendment responds to a ground of unpatentability involved in the trial,
(3) the proposed claims are supported in the original disclosure (and any
earlier filed disclosure for which the benefit of filing date is sought); and
(4) the amendment does not seek to enlarge the scope of the claims of the
patent or introduce new subject matter. See 35 U.S.C. § 326(d); 37 C.F.R.
§ 42.221.
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B. Proposed Substitute Claims
Proposed substitute independent claim 21 would replace independent
claim 1, and is reproduced below with underlining indicating text added to
claim 1.
21. A hanger for connecting a structural component to a wall
adapted to have sheathing mounted thereon, the hanger
comprising:
a channel-shaped portion configured to receive the
structural component, the channel-shaped portion including a
base sized and shaped for receiving an end of the structural
component thereon to support the structural component, and side
panels extending upward from the base generally perpendicular
to the base, the side panels having rearward edges lying in a rear
edge plane;
an extension portion extending from the channel-shaped
portion and configured to extend through the sheathing; and
a connection portion including a top flange configured for
attachment to a top surface of a top plate of the wall, the
connection portion further including a back flange extending
from an edge of the top flange in a direction toward a plane of
the base of the channel-shaped portion, the back flange having a
front surface lying in a back flange plane, the extension portion
spacing the side panels from the back flange plane by a distance
sized large enough to permit two layers of 5/8 inch thick
sheathing to be received between the rear edge plane and the
back flange plane, but too small to permit three layers of 5/8 inch
thick sheathing to be received between the rear edge plane and
the back flange plane;
wherein the extension portion includes an extension flange
extending from the back flange of the connection portion to the
channel-shaped portion;
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wherein the channel-shaped portion, the extension portion
and the connection portion are rigidly fixed with respect to one
another.
RMTA, App. A, 3–4.
Proposed substitute independent claim 33 would replace independent
claim 13, and is reproduced below with underlining indicating text added to
claim 13.
33. A hanger for connecting a structural component to a wall
adapted to have fire resistant sheathing mounted thereon, the
hanger comprising:
a channel-shaped portion configured to receive the
structural component, the
channel-shaped portion including a base sized and shaped
for receiving an end portion of the structural component thereon
and side panels extending upward from the base;
an extension portion extending from the channel-shaped
portion and configured to extend through the fire resistant
sheathing; and
a connection portion including a top flange configured for
attachment to a top surface of a top plate of the wall, the
connection portion further including a back flange extending
from an edge of the top flange in a direction toward a plane of
the base of the channel-shaped portion, the extension portion
spacing the side panels from the back flange by a distance sized
large enough to permit two layers of ⅝ inch thick sheathing to be
received in a space bounded by the side panels and the back
flange, but too small to permit three layers of ⅝ inch thick
sheathing to be received in the space bounded by the side panels
and the back flange;
wherein the channel-shaped portion, the extension portion
and the connection portion are rigidly fixed with respect to one
another.
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RMTA, App. A, 6–7.
Proposed substitute independent claim 40 would replace independent
claim 20, and is reproduced below with underlining indicating text added to
claim 20.
40. A hanger for connecting a structural component to a wall
adapted to have drywall mounted thereon, the hanger
comprising:
a channel-shaped portion configured to receive the
structural component;
an extension portion extending from the channel-shaped
portion and configured to extend through the drywall; and
a connection portion including a top flange configured for
attachment to a top surface of a top plate of the wall and a back
flange extending from an edge of the top flange, the back flange
having a front surface lying in a back flange plane, the extension
portion spacing the channel-shaped portion from the back flange
plane by a distance sized large enough to permit the drywall to
be received between the channel-shaped portion and the back
flange plane;
wherein the extension portion includes an extension flange
extending from the back flange of the connection portion to the
channel-shaped portion.
RMTA, App. A, 9.
According to Patent Owner, “no substitute claim enlarges the scope of
the claim that is [sic: it] replaces in any respect,” because “the amendments
only add elements to the issued claims of the ’510 patent that narrow their
scope” and “do not delete any elements.” RMTA 2.
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C. Statutory and Regulatory Requirements
1. Reasonable Number of Claims (35 U.S.C. § 326(d)(1)(B);
37 C.F.R. § 42.221(a)(3))
“There is a rebuttable presumption that a reasonable number of
substitute claims per challenged claim is one (1) substitute claim.”
Lectrosonics, Paper 15 at 4–5 (citing 37 C.F.R. § 42.221(a)(3)). Petitioner
challenges claims 1–20 of the ’510 patent, and Patent Owner proposes
claims 21–40, as potential substitutes for claims 1–20, respectively.
RMTA 1. Patent Owner thus proposes no more than 1 substitute claim for
each challenged claim, and proposes to replace three independent claims and
seventeen dependent claims with three independent claims and seventeen
dependent claims. See RMTA, App. A. We find Patent Owner proposes a
reasonable number of substitute claims.
2. Respond to a Ground of Unpatentability (37 C.F.R.
§ 42.221(a)(2)(i))
Patent Owner contends that proposed substitute claims 21–40 are
responsive to the grounds in this trial because they “address [Petitioner’s]
35 U.S.C. § 103 obviousness grounds (Grounds 4–10).” RMTA 15. Patent
Owner contends the independent claims are “amended [with narrowing
limitations] to further distinguish the claim[s] from the prior art cited in the
Petition.” RMTA 16; see RMTA 22–23. We agree that proposed substitute
claims 21–40 adequately assert additional limitations relevant to the issues
in the instituted grounds. Thus, the proposed claims satisfy the requirement.
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3. Scope of Amended Claims (35 U.S.C. § 326(d)(3);
37 C.F.R. § 42.221(a)(2)(ii))
“A substitute claim will meet the requirements of § 42.221(a)(2)(i)
and (ii) if it narrows the scope of at least one claim of the patent, for
example, the challenged claim it replaces, in a way that is responsive to a
ground of unpatentability involved in the trial.” Lectrosonics, Paper 15
at 6–7. Patent Owner contends “no substitute claim enlarges the scope of
the claim that is [sic: it] replaces in any respect,” because “the amendments
only add elements to the issued claims of the ’510 patent that narrow their
scope” and “do not delete any elements.” RMTA 2; see RMTA, App. A.
We agree that proposed substitute independent claims 21, 33, and 40 include
additional limitations not recited in challenged claims 1, 13, and 20,
respectively, and do not strike any original limitations. Proposed substitute
claims 22–32 and 34–39 merely change the dependency of challenged
claims 2–12 and 14–19 of the ’510 patent. RMTA, App. A. Thus, we agree
with Patent Owner that proposed substitute claims 21–40 are of narrower
scope than challenged claims 1–20, respectively.
4. New Matter or Written Description (35 U.S.C. § 326(d)(3);
37 C.F.R. § 42.221(b)(1))
An amendment cannot introduce new matter. 35 U.S.C. § 326(d)(3).
Thus, the motion to amend must set forth the support in the original
disclosure of the patent for each claim that is added or amended. 37 C.F.R.
§ 41.121(b)(1); Lectrosonics, Paper 15 at 7. “Amendments should clearly
state where the specification and any drawings support all the limitations in
the proposed substitute claims. If the Board is unable to determine how the
specification and drawings support the proposed substitute claims, the
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motion to amend may be denied.” Consolidated Trial Practice Guide
(“CTPG”)5 at 71; see also 84 Fed. Reg. 64,280 (Nov. 21, 2019).
Under 35 U.S.C. § 112(a), a patent specification shall contain a
“written description” of the invention. The purpose of the written
description requirement is to “‘ensure that the scope of the right to exclude,
as set forth in the claims, does not overreach the scope of the inventor’s
contribution to the field of art as described in the patent specification.’”
Univ. of Rochester v. G.D. Searle & Co., 358 F.3d 916, 920 (Fed. Cir. 2004)
(quoting Reiffin v. Microsoft Corp., 214 F.3d 1342, 1345 (Fed. Cir. 2000)).
This requirement protects the quid pro quo between inventors and the
public, whereby the public receives “meaningful disclosure in exchange for
being excluded from practicing the invention for a limited period of time.”
Enzo Biochem, Inc. v. Gen–Probe Inc., 323 F.3d 956, 970 (Fed. Cir. 2002)
(emphasis added).
a) Citations to Show Written Description Support
In its RMTA, Patent Owner provides citations to U.S. Patent
Application No. 16/225,517 (Ex. 1002 (file history) at 233–303
(“’517 application”)), and to its earlier-filed benefit applications on which
the ’510 patent relies for priority, to show written description support for
proposed substitute claims 21–40. See RMTA 3–12. Patent Owner also
provides explanation of alleged written description support of the newly
added “rigidly fixed” limitation. RMTA 12–15.

5 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
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Petitioner argues that Patent Owner’s citations to the ’517 and earlier
applications are insufficient because Patent Owner does not explain how the
cited disclosures allegedly support the limitations of each proposed
substitute claim, individually or as a whole. RMTA Opp. 1–3; RMTA Sur-
Reply 3–5. Although noting “[w]here the claim language is near-identical to
the specification, string cites pointing to that same language in the
specification may be sufficient” (RMTA Sur-Reply 4), Petitioner argues
(1) Patent Owner “nowhere explains how the 2 paragraphs and 6 figures
listed support the claimed ‘top flange,’ even though the term ‘top flange’
appears nowhere in the cited paragraphs or the portions of the specification
corresponding to the 6 figures listed” (RMTA Opp. 2); and (2) “none of the
paragraphs cited by [Patent Owner] use [the term ‘back flange plane’]
(indeed, the word ‘plane’ does not appear anywhere in the ʼ510 patent
specification despite its varied use throughout the claims)” (RMTA Opp. 2).
We address these arguments in turn below.
As for the “top flange,” as recited in proposed substitute independent
claims 21, 33, and 40, Patent Owner cites to paragraphs 65 and 77 and
figures 1, 2A, 10A, 25, 26, and 35 in the ’517 application. RMTA 6. In the
context of proposed substitute claim 40, for example, “top flange” is recited
in the limitation “a connection portion including a top flange configured for
attachment to a top surface of a top plate of the wall.” RMTA App. A, 9.
Paragraph 65 states:
Referring again to FIGS. 2-8, the connection portion of the
hanger includes a pair of connector tabs 74 extending from the
back flanges 66. Each connector tab 74 extends generally
perpendicular from one of the back flanges 66. The connector
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tabs 74 are generally horizontal when the hanger 26 is installed.
The connector tabs 74 are configured to engage an upper surface
of the top plate 30 of the wall 28 at a second location L2 spaced
from the first location L1.
Ex. 1002, 249 (¶ 65) (emphases added). Although the claim uses the term
“top flange” and the specification uses the term “connector tab,” we are
persuaded that at least this disclosure, in conjunction with the cited and
referenced figures, would reasonably convey to the skilled artisan that the
inventor here possessed the “top flange” as of the relevant filing date. See
Univ. of Rochester, 358 F.3d at 923 (description need not recite the claimed
invention in haec verba); RMTA Reply 3 (citing Ex. 2057 ¶¶ 32–36);
Ex. 2057 ¶ 36 (The skilled artisan “recognizes that the ‘tabs’ could be called
a flange. The location of the tabs is at the top of the hanger.”). We find
Patent Owner’s citations, in this instance, allow us to determine how the
specification and drawings support the proposed substitute claims.
As for the “back flange plane,” as recited in proposed substitute
independent claims 21, 33, and 40, Patent Owner cites to paragraphs 59
and 75 and figures 2, 4, 7, 26, 28, and 32 in the ’517 application. RMTA 7.
In the context of proposed substitute claim 40, for example, “back flange
plane” is recited in the limitation “a connection portion including . . . a back
flange extending from an edge of the top flange, the back flange having a
front surface lying in a back flange plane.” RMTA App. A, 9. Paragraph 59
states:
A back flange 66 extends from each of the extension
flanges 60. Each back flange 66 extends generally perpendicular
from the extension flange 60 and is oriented generally parallel
to the back panels 48. . . . [T]he back flanges 66 engage the
wall 28 at a first location L1, which in the illustrated embodiment
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is a vertical face of the top plate 30 of the wall. The back
panels 48, extension flanges 60, and back flanges 66 form a pair
of sheathing channels 68. Each sheathing channel 68 is
configured to receive a portion of the fire retardant sheathing 34
to secure the sheathing between the hanger 26 and the wall 28.
As seen in FIG. 7, the sheathing channels 68 extend generally
perpendicular to the truss-receiving channel 52.
Ex. 1002, 246 (¶ 59) (emphases added). Although the claim introduces the
term “plane,” which is not recited in the specification, it does so in the
context of identifying geometric properties for reference purposes, i.e., that
the explicitly disclosed back flange 66 has a front surface, as shown, for
example, in figure 2, and this surface defines or lays in a geometric plane,
also as reflected in figure 2. We are persuaded that at least this disclosure, in
conjunction with the cited and referenced figures, would reasonably convey
to the skilled artisan that the inventor here possessed the “back flange plane”
as of the relevant filing date. See Univ. of Rochester, 358 F.3d at 923;
RMTA Reply 3 (citing Ex. 2057 ¶¶ 39–40); Ex. 2057 ¶ 40 (“[T]he back
flange has a front surface that lies in a back flange plane,” and “[t]his would
be readily understood by [the skilled artisan] reviewing Figs. 2, 4, and 7 and
the description at paragraph [0059].”). We again find Patent Owner’s
citations, in this instance, allow us to determine how the specification and
drawings support the proposed substitute claims.
In addition, Patent Owner amended proposed substitute claim 40, for
example, by adding the limitation “wherein the extension portion includes an
extension flange extending from the back flange of the connection portion to
the channel-shaped portion.” RMTA App. A, 9. Patent Owner cites to
paragraphs 58, 59, 74, and 75 and figures 2, 4, 7, 26, 28, and 32 in the
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’517 application. RMTA 8. Paragraphs 58 and 59 refer to Figures 2–8 and
disclose: (a) “extension portion 40 includes two extension flanges 60
configured to extend through the fire retardant sheathing 34”; (b) “[e]ach
flange 60 extends from one of the back panels 48”; (c) “back flange 66
extends from each of the extension flanges 60”; and (d) “[e]ach back
flange 66 extends generally perpendicular from the extension flange 60 and
is oriented generally parallel to the back panels 48.” Ex. 1002, 246 (¶¶ 58–
59). We are persuaded that at least this disclosure, in conjunction with the
cited and referenced figures, would reasonably convey to the skilled artisan
that the inventor here possessed this additional limitation as of the relevant
filing date. We again find Patent Owner’s citations, in this instance, allow
us to determine how the specification and drawings support the proposed
substitute claims.
Based on the foregoing, and in the context of this case and Petitioner’s
challenges noted above, we find Patent Owner’s citations to show written
description support do not render the Board unable to determine whether the
specification and drawings support the proposed substitute claims.
We turn to Petitioner’s substantive written description challenges
below.
b) Written Description Support for “Rigidly Fixed”
and Negative Spacing Limitation in Claims 21–39
Patent Owner’s proposed substitute independent claims 21 and 33 add
the limitation, “wherein the channel-shaped portion, the extension portion
and the connection portion are rigidly fixed with respect to one another”
(emphasis added); and maintain from original claims 1 and 13, respectively,
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the limitation of “the extension portion spacing . . . sized . . . too small to
permit three layers of 5/8 inch thick sheathing to be received . . .” (emphases
added) (we labeled this the “Negative Spacing Limitation” in our analysis in
Section II.D, supra, and use the same shorthand hereinafter). RMTA,
App. A, 3–4, 6–7. Petitioner contends that Patent Owner fails to show
sufficient written description support for this newly added limitation of
“rigidly fixed” and, as with the original claims, for the Negative Spacing
Limitation. RMTA Opp. 3–7; RMTA Sur-Reply 5–7. Patent Owner
opposes Petitioner’s contentions. RMTA Reply 3–8.
(1) Negative Spacing Limitation
As for the Negative Spacing Limitation, which we already addressed
in connection with original claims 1–19 in Section II.D, supra, we are not
persuaded that the ’510 patent adequately supports the Negative Spacing
Limitation in proposed substitute claims 21–39, for the same reasons
provided in Section II.D. Accordingly, we find that the Negative Spacing
Limitation in proposed substitute claims 21–39 introduces new matter,
which runs afoul of the requirements of 35 U.S.C. § 326(d)(3) and 37 C.F.R.
§ 42.221(a)(2)(ii). For this reason, we deny Patent Owner’s RMTA as to
proposed substitute claims 21–39.
(2) “Rigidly Fixed” Limitation
As for the “rigidly fixed” limitation, Petitioner’s contention raises two
intertwined issues: (1) what is the meaning of “rigidly fixed” in “wherein
the channel-shaped portion, the extension portion and the connection portion
are rigidly fixed with respect to one another” (claim construction issue); and
(2) given that meaning, whether the Specification contains written
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description support for such a “rigidly fixed” construction (written
description issue). We address these two issues in turn.
(a) Claim Construction: Meaning of
“rigidly fixed”
Although Patent Owner introduced the term “rigidly fixed” into
certain proposed substitute claims, and despite the ’510 patent not explicitly
reciting that term anywhere, Patent Owner does not provide a proposed
construction for “rigidly fixed” in its RMTA. Petitioner argues “rigidly
fixed” is indefinite (RMTA Opp. 7–8), but in the alternative, proposes that
the term’s plain and ordinary meaning is “components cannot move at all
with respect to each other” (RMTA Opp. 9–10 (citing Ex. 1042, ¶ 28)). In
Reply, Patent Owner contends “rigidly fixed” means “components are
connected in a stiff manner such that they do not move freely with respect to
one another.” RMTA Reply 3 (citing Ex. 2057 ¶¶ 5–6); see RMTA Reply 4
(citing Ex. 2057 ¶ 9 (“[The skilled artisan] would understand that ‘rigidly
fixed’ applies to hangers whose components come from the factory at set
orientations – i.e., to hangers whose corresponding components are
connected in a stiff manner such that they do not move freely.”)). Patent
Owner also argues that the skilled artisan understands, “while ‘rigidly fixed’
requires the components not move freely with respect to one another, the
limitation does not require the claimed hanger to be so rigid that it absolutely
cannot be deformed.” RMTA Reply 5 (citing Ex. 2057 ¶¶ 10–17;
Ex. 2056, 26). Petitioner responds that Patent Owner and its declarant
cannot clearly explain the difference between “fixed” and “rigidly fixed,”
and that Patent Owner allegedly advances “multiple wide-ranging and
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contradictory concoctions of what ‘rigidly fixed’ means.” RMTA Sur-
Reply 7.
Patent Owner’s and Petitioner’s proposed constructions appear to
meaningfully differ only in that Patent Owner defines “rigidly fixed” in
terms of components connected so as not to “move freely” with respect to
one another, whereas Petitioner defines the term to require no movement “at
all.” Compare RMTA Reply 3, with RMTA Opp. 9–10. We find
Petitioner’s requirement for absolute rigidity here to be divorced from
realities of mechanics and materials and from the knowledge and skill of the
skilled artisan, because as explained by Patent Owner’s declarant, with
enough force, anything will deform, move, or break. See Ex. 2057 ¶¶ 10–15
(providing the example of “a tree is rigidly fixed to the ground yet a strong
enough wind (e.g., hurricane, tornado, etc.) can still blow the tree over”).
We also note that in discussing the hanger in the Tsukamoto reference,
Petitioner explains that the Tsukamoto hanger is made by bending a sheet
metal blank (as with the hanger in the ’510 patent), and then argues the
Tsukamoto hanger components are “rigidly fixed” because they “do not
move with respect to each other”—this argument tends to support Patent
Owner’s proposed construction, not Petitioner’s. RMTA Opp. 17–18; see
Ex. 2057 ¶ 50.
Turning next to the Specification, the term “rigidly fixed” is not
explicitly recited therein. However, considering this claim term in the
context it is used, “wherein the channel-shaped portion, the extension
portion and the connection portion are rigidly fixed with respect to one
another,” we find at least Figures 2 and 15 and description thereof in the
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’510 patent support Patent Owner’s proposed construction. In particular,
Figure 15 depicts stamped metal blank 80 for forming truss hanger 26
(shown in Figure 2) (Ex. 1001, 3:15–16, 7:10–17), which includes as part of
the one-piece blank the channel-shaped portion (base 44 and side panels 46),
extension portion (extension flanges 60), and connection portion (connector
tabs 74 and back flanges 66) (Ex. 1001, 4:29–34, 4:63–65, 6:32–37). See
RMTA 12–15. Figure 15 also depicts that the channel-shaped portion,
extension portion, and connection portion are connected (as part of the same
metal blank) such that they do not move freely with respect to one another.
See Ex. 2055 ¶¶ 13–16 (¶ 14: “When a bend is formed in the metal blank by
a die, the portions on either side of the bend are rigidly fixed relative to one
another.”); RMTA 14–15.
Turning next to the prosecution history, this is of no help in
construing “rigidly fixed,” as the term was not in the original claims (now
the challenged claims), which were allowed without discussion relevant to
the term. See generally Ex. 1002.
Accordingly, based on the complete record before us, we are
persuaded by Patent Owner’s proposed construction of “rigidly fixed,” and
determine that “rigidly fixed” as recited in the proposed substitute claims
means “components are connected such that they do not move freely with
respect to one another.” We do not adopt Patent Owner’s phrasing of “in a
stiff manner” in our construction, because we find the phrase redundant of
“not move freely,” and “stiff” may unnecessarily introduce a term of degree.
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(b) New Matter: “rigidly fixed”
To satisfy the “new matter” or written description requirement, the
disclosure must reasonably convey to skilled artisans that the inventor
possessed the claimed invention as of the filing date. See Ariad Pharms.,
Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc).
“One does that by such descriptive means as words, structures, figures,
diagrams, formulas, etc., that fully set forth the claimed invention.”
Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). “The
invention is, for purposes of the ‘written description’ inquiry, whatever is
now claimed.” Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed.
Cir. 1991) (emphasis omitted). Such description need not recite the claimed
invention in haec verba but must do more than merely disclose that which
would render the claimed invention obvious. Univ. of Rochester, 358 F.3d
at 923; Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1566–
67 (Fed. Cir. 1997); see also PowerOasis, Inc. v. T-Mobile USA, Inc.,
522 F.3d 1299, 1306–07 (Fed. Cir. 2008) (explaining that § 112, ¶ 1
“requires that the written description actually or inherently disclose the
claim element”).
As noted above, the invention for which the inventor must provide
written description support is whatever is now claimed. In this case, we ask
whether the ’517 and benefit applications underlying the ’510 patent show
that the inventor possessed a channel-shaped portion, extension portion, and
connection portion that are “rigidly fixed” with respect to one another, or in
view of our construction of “rigidly fixed,” possessed a channel-shaped
portion, extension portion, and connection portion that are connected such
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that they do not move freely with respect to one another. We are persuaded
by Patent Owner that the underlying applications do show possession of this
feature by the inventor, for the same reasons provided above for why the
Specification supports Patent Owner’s proposed construction of “rigidly
fixed.” See Section III.C.4.b.2.a, supra; RMTA 12–15; Ex. 2055 ¶¶ 10–18.
In particular, we are persuaded by Patent Owner’s explanation that the
skilled artisan: (a) would have had knowledge of metal stamping,
“a common and routine manufacturing technique for forming an object out
of a flat piece of sheet metal” (Ex. 2055 ¶ 14); (b) would have known that
“stamping involves cutting a metal blank from a piece of sheet metal and
then bending the metal blank using a folding machine, or one or more dies,
to form the object” (Ex. 2055 ¶ 14); (c) would have recognized that
Figure 15 of the ’517 and benefit applications illustrates metal blank 80 used
to form hanger 26 (shown in Figure 2) by bending metal blank 80 along the
dash-dot-dash fold lines shown in Figure 15 (Ex. 2055 ¶ 14); (d) would have
recognized that the underlying applications describe the one-piece metal
blank 80 as including the channel-shaped portion (base 44 and side
panels 46), extension portion (extension flanges 60), and connection portion
(connector tabs 74 and back flanges 66) (Ex. 2055 ¶ 13); and (e) would have
recognized that “[s]ince the hangers of [the] ’517 [and benefit] application[s]
are described as being made from a single piece of sheet metal bent into
shape by stamping, . . . the elements (e.g., channel-shaped portion, extension
portion and connection portion) of the hanger are rigidly fixed relative to
one another,” i.e., connected such that they do not move freely with respect
to one another (Ex. 2055 ¶ 16–17). See RMTA 12–15; RMTA Reply 6–8.
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Petitioner argues against “rigidly fixed” having written description
support based on its proposed construction for this term, which requires that
connected components cannot move “at all” with respect to each other. See
RMTA Opp. 3, 4 (“[Patent Owner] would need to show that the positions of
those elements are so rigid that they cannot move at all”; “[T]he
specification nowhere states that the channel-shaped portion cannot move at
all with respect to the connection portion.”), 5–6; RMTA Sur-Reply 5–7;
Ex. 2057 ¶ 43 (Patent Owner’s declarant testifying that “[Petitioner’s]
argument that the ‘rigidly fixed’ limitation lacks written description support
is premised entirely on its proposed claim construction of the phrase,
specifically requiring absolute rigidity. . . . But . . . the ‘rigidly fixed’
limitation is not so extreme so as to exclude any movement under any
circumstances.”). As explained above, we do not adopt Petitioner’s
proposed construction requiring absolute rigidity, and consequently, are not
persuaded by Petitioner’s written description arguments based on the alleged
need for such absolute rigidity.
Based on the foregoing, and on the complete record before us, we are
persuaded that the ’517 and benefit applications adequately support the term
“rigidly fixed,” and more specifically, the limitation “wherein the channel-
shaped portion, the extension portion and the connection portion are rigidly
fixed with respect to one another.” Accordingly, we find the limitation,
“wherein the channel-shaped portion, the extension portion and the
connection portion are rigidly fixed with respect to one another,” does not
introduce new matter; and for this limitation, Patent Owner satisfies the
requirements of 35 U.S.C. § 326(d)(3) and 37 C.F.R. § 42.221(a)(2)(ii).
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5. Conclusion
For the reasons expressed above, we conclude Patent Owner has
failed to meet its burden to identify written description support for the
Negative Spacing Limitation in proposed substitute claims 21–39
(Section III.C.4.b.1), but has met its burden to identify written description
support for remaining proposed substitute claim 40. Accordingly, we deny
Patent Owner’s Revised Contingent Motion to Amend as to proposed
substitute claims 21–39.
For completeness, we address below Petitioner’s unpatentability
arguments directed not only to proposed substitute claim 40, but all
proposed substitute claims 21–40.
D. Unpatentability of Proposed Substitute Claims 21–40 as
Indefinite
Petitioner contends the following terms or phrases in the proposed
substitute claims are indefinite: (1) “rigidly fixed,” as recited in proposed
substitute claims 21–39; and (2) “distance sized large enough to permit the
drywall to be received” in the limitation of “the extension portion spacing
the channel-shaped portion from the back flange plane by a distance sized
large enough to permit the drywall to be received between the channel-
shaped portion and the back flange plane” (we labeled this the “Large
Enough Limitation” in our analysis in Section II.E, supra, and use the same
shorthand hereinafter), as recited in proposed substitute claim 40. RMTA
Opp. 7–9; RMTA Sur-Reply 7–9. Patent Owner opposes Petitioner’s
contentions. RMTA Reply 8, 12.
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1. “Rigidly Fixed”
Petitioner argues proposed substitute claims 21–39 “should be found
indefinite, as it is unclear how much rigidity is needed for a hanger’s
channel-shaped, extension, and connection portions to be considered ‘rigidly
fixed with respect to each other.’” RMTA Opp. 7–8; RMTA Sur-Reply 7–8.
We are not persuaded by Petitioner’s argument, as discussed below.
The limitation at issue here in proposed substitute claim 21, for
example, is “wherein the channel-shaped portion, the extension portion and
the connection portion are rigidly fixed with respect to one another.”
As explained above, we construe “rigidly fixed” to mean “components are
connected such that they do not move freely with respect to one another.”
Taken together, the issue at hand becomes whether the skilled artisan would
have been informed, with reasonable certainty, as to the scope of the phrase
“wherein the channel-shaped portion, the extension portion and the
connection portion are connected such that they do not move freely with
respect to one another.” Petitioner does not address this key issue. See
RMTA Opp. 7–8; RMTA Sur-Reply 7–8. Patent Owner argues that “[the
skilled artisan] would understand that the phrase ‘rigidly fixed’ simply
requires the hanger’s design is such that its components do not move freely
with respect to one another.” RMTA Reply 8 (citing Ex. 2057 ¶¶ 53–55);
see Nautilus, 572 U.S. at 910 (“The definiteness requirement, so understood,
mandates clarity, while recognizing that absolute precision is
unattainable.”); Minerals Separation v. Hyde, 242 U.S. 261, 270 (1916)
(“[T]he certainty which the law requires in patents is not greater than is
reasonable, having regard to their subject matter.”). Patent Owner also
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responds, “[a]s acknowledged by [Petitioner], [the skilled artisan] can easily
determine that certain hangers—such as the Tsukamoto hanger—are ‘rigidly
fixed’ and while other hangers—such as Gilb ’155 hanger (Ex. 1010)—are
not rigidly fixed.” RMTA Reply 8 (citing Ex. 2057 ¶ 55; RMTA Opp. 18,
22–23).
Based on the foregoing, and on the complete record before us, we are
not persuaded that the limitation at issue, namely, “wherein the channel-
shaped portion, the extension portion and the connection portion are rigidly
fixed with respect to one another,” would not inform the skilled artisan, with
reasonable certainty, about the scope of the claimed invention.
Accordingly, we conclude that Petitioner has not demonstrated by a
preponderance of evidence that proposed substitute claims 21–39 are
unpatentable under 35 U.S.C. § 112(b) for indefiniteness.
2. Large Enough Limitation
As for the Large Enough Limitation, which we already addressed in
connection with original claim 20 in Section II.E, supra, we conclude that
Petitioner has not demonstrated by a preponderance of evidence that
proposed substitute claim 40 is unpatentable under 35 U.S.C. § 112(b) for
indefiniteness, for the same reasons provided in Section II.E.
E. Obviousness of Proposed Substitute Claims 21, 22, 24, 26–37,
39, and 40 Over the Combination of Tsukamoto, Bundy, and
Allan
Petitioner contends proposed substitute claims 21, 22, 24, 26–37, 39,
and 40 are unpatentable under 35 U.S.C. § 103 as obvious over the
combination of Tsukamoto (Ex. 1009), Bundy (Ex. 1007), and Allan
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(Ex. 1012). RMTA Opp. 14–19; RMTA Sur-Reply 9–12; see Pet. 33–63;
Pet. Reply 19–25. Patent Owner opposes Petitioner’s contentions. RMTA
Reply 9–10; see PO Resp. 57–78; PO Sur-Reply 19–23. For the reasons
expressed below, and based on the complete record before us, we determine
that Petitioner has not demonstrated by a preponderance of evidence that
proposed substitute claims 21, 22, 24, 26–37, 39, and 40 are unpatentable as
obvious over the combination of Tsukamoto, Bundy, and Allan.
1. Structure Disclosed by Tsukamoto
Tsukamoto generally is directed to a “beam hanger” for connecting a
beam to a wall, as shown, for example, in Figure 5, reproduced below.
Ex. 1009, 1–3, Fig. 5.

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Figure 5 of Tsukamoto is a cross-sectional view of a
beam hanger connecting a beam to a wall.
Id. at 3.
Petitioner contends “Tsukamoto discloses each and every element
listed in claim 1 of the ’510 Patent [and proposed substitute claim 21, for
example], but does not explicitly provide disclosure regarding the [Spacing
Dimension Limitation].” Pet. 33–34; see RMTA Opp. 14–19; RMTA Sur-
Reply 9–12. Patent Owner disputes, inter alia, whether Tsukamoto
discloses the limitations in proposed substitute claim 21 of (1) a “connection
portion further including a back flange extending from an edge of the top
flange in a direction toward a plane of the base of the channel-shaped
portion” (RMTA Reply 9–10; see PO Resp. 57–62; PO Sur-Reply 19–21);
and (2) “an extension flange extending from the back flange of the
connection portion to the channel-shaped portion” (RMTA Reply 10).
We find this dispute turns on whether Tsukamoto discloses “a back flange
extending from an edge of the top flange in a direction toward a plane of the
base of the channel-shaped portion,” and in part on the meaning of
“extending from” as used in context therein, as discussed below.
2. Meaning of “Extending From”
In our Institution Decision, for purposes of institution, we construed
“extending from” to mean “the starting point of one element’s extension is
on another element,” and noted that this construction was sufficient to
resolve the unpatentability issues raised at that stage of the proceeding.
Dec. 47. To clarify, by this construction we mean “in the context of
element B extending from element A, the beginning of element B’s
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extension is on element A.” Patent Owner agrees with the Board’s
construction. See RMTA Reply 5–6.
Petitioner argues “extending from” “should be construed to include
elements that connect either directly or through intervening components.”
RMTA Opp. 14; see RMTA Opp. 10–14. Although the limitation at issue
(“a back flange extending from an edge of the top flange in a direction
toward a plane of the base of the channel-shaped portion”) recites
“extending from,” Petitioner argues (a) the ’510 patent also includes the
phrase “extending away from”; (b) “the Board overlooked a key point—the
two phrases include the same fundamental word: ‘from’”; (c) since both
phrases use the same word “from,” they both must include or allow for the
same “starting point[s]” for an extension; (d) the ’510 patent uses the phrase
“extending away from” in a context where element B is described as
extending away from element A, but the starting point of element B’s
extension is not on element A, but rather on an intervening component; and
(e) therefore, “extending from” must allow not only for the “starting point”
of element B’s extension to be on element A, but also for the “starting point”
of element B’s extension to be on one or more intervening elements with the
last of those being on element A (i.e., according to Petitioner, if element Z
were connected through intervening elements Y through B ultimately to
element A, then element Z would “extend from” element A). See RMTA
Opp. 10–14; RMTA Sur-Reply 9–10. We did not overlook Petitioner’s “key
point,” and still are not persuaded by Petitioner’s argument, as discussed
below.
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First, we turn to proposed substitute claim 21, and the limitation at
issue, which recites, in part, “a back flange extending from an edge of the top
flange in a direction toward a plane of the base of the channel-shaped
portion.” In this context, we find the added emphasis on the back flange not
only “extending from” the top flange, but “extending from” “an edge of” the
top flange, suggests that the beginning of the back flange’s extension is
directly on the top flange, indeed on an edge of the top flange, and not on
some indeterminate number of intervening components that eventually
connect onto the top flange. We also find that the added emphasis on the
back flange not only “extending from” the top flange, but also doing so “in a
direction toward” another component, further suggests that the beginning of
the back flange’s extension is directly on the top flange (i.e., that the
orientation of the back flange is directly relative to the top flange from
which it extends, not some intervening component). Also, proposed
substitute claim 21 includes three instances of element B “extending from”
element A, and in each instance, the beginning of element B’s extension is
on element A, as follows: (1) “extension portion [40] extending from the
channel-shaped portion [38]”; (2) “back flange [66] extending from an edge
of the top flange [connector tabs 74]”; and (3) “extension flange [60]
extending from the back flange [66],” all as shown in Figure 2 of the
’510 patent. See RMTA, App. A, 3–4; Ex. 1001, Fig. 2. We find the claim
language itself supports the Board’s construction, not Petitioner’s.
Second, we turn to the specification of the ’510 patent, which
although it does not expressly define “extending from,” does use the term
many times in describing various element B’s “extending from” various
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element A’s. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004) (Claim limitations must be read “in light of the specification
as it would be interpreted by one of ordinary skill in the art.”). Tellingly, as
conceded by Petitioner, in every instance in the ’510 patent where
“extending from” is used in that context, the beginning of an element B’s
extension is on element A (and not on any intervening component).
See Tr. 18:7–11 (Q: “Is there an example in the specification that uses the
language ‘extending from’ applied to something with an intermediate
structure between the two things?” A: “No, Your Honor. There’s not an
example of anything where the term ‘extending from’ applies to two
separate structures.”). We find the specification of the ’510 patent also
supports the Board’s construction, not Petitioner’s.
Third, in the context of element B directly connected to element A,
we find no conflict under our construction in characterizing element B as
“extending from” element A or as “extending away from” element B
(accepting for illustration purposes that “extending away from” may
contemplate intervening components, although we do not construe
“extending away from” herein); or in the context of element B indirectly (via
intervening components) connected to element A, characterizing element B
as “extending away from” element A, but not as “extending from”
element A. Indeed, “extending away from,” at least in the present context, is
simply a broader relationship than “extending from.” See Ex. 2057 ¶ 30
(“[T]he phrase ‘extending away from’ is actually broader than the phrase
‘extending from.’”). For example, in our view and under our construction,
a human arm may be characterized both as “extending from” the shoulder
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(i.e., the beginning of the arm’s extension is on the shoulder) and as
“extending away from” the shoulder; but although one’s finger may be
characterized as “extending away from” the shoulder, we find it strains
credibility to assert that one’s finger “extends from” the shoulder (or more
so that one’s foot “extends from” one’s head). See Tr. 19:21–21:12
(discussing shoulder-arm-finger analogy). Thus, we are not persuaded by
Petitioner’s arguments involving comparisons of the phrases “extending
from” and “extending away from.”
Based on the foregoing, we reaffirm and construe “extending from” to
mean “in the context of element B extending from element A, the beginning
of element B’s extension is on element A.”
3. “a back flange extending from an edge of the top flange in
a direction toward a plane of the base of the channel-
shaped portion”
Petitioner argues Tsukamoto teaches “the connection portion
(e.g., horizontal portions 2A/3A, vertical plates 2D/3D) includes a back
flange (vertical plates 2D/3D) extending from an edge of the top flange
(horizontal portions 2A/3A),” as allegedly shown in Figure 3, reproduced
below. Pet. 48–49 (citing Ex. 1003 ¶ 122; Ex. 1009, 2–3, Figs. 1–6)
(emphasis added).
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Figure 3 of Tsukamoto is a right side view
of a beam hanger.
Ex. 1009, 3, 5.
However, as argued by Patent Owner (PO Resp. 57–62), we find
Tsukamoto’s cross-sectional drawings, taken together, as well as Petitioner’s
own three-dimensional illustrations of such drawings, belie Petitioner’s
position here. Petitioner’s illustrations of the Tsukamoto beam hanger are
reproduced below (with red arrows added).
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The illustrations at left and right above show Petitioner’s
understanding of the structure of Tsukamoto’s beam hanger.
Pet. 45 (illustration at above left is a “three-dimensional (3D) rendering of
Tsukamoto’s hanger, highlighting the extension portion”), 46 (illustration at
above right is an “isometric rendering of Tsukamoto used in conjunction
with sheathing”). Patent Owner argues:
Fig. 3 [of Tsukamoto, reproduced above] is a side view
that is misleading as to the actual arrangement of the hanger
disclosed in Tsukamoto. [Petitioner] equates the vertical plates
(2D, 3D) of Tsukamoto with the claimed back flange and the
horizontal portions (2A, 3A) of Tsukamoto with the claimed top
flange. However, as shown more clearly in Fig. 2 below, the
vertical plates (2D, 3D) of Tsukamoto do not extend from an
edge of the horizontal portions (2A, 3A).
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Instead, the vertical plates (2D, 3D) are ‘continuously
connected to the inclined portions 2B, 3B via connection plates
2D', 3D',’ and thus extend from the connection plates (2D', 3D')
instead of the horizontal portions (2A, 3A).
PO Resp. 59–60 (citing Ex. 2001 ¶¶ 125–126) (emphasis added); see
Ex. 1009, 3–4, Figs. 1–5. We are persuaded by Patent Owner’s argument.
Petitioner identifies the green-shaded angled region in the above left
illustration of Tsukamoto’s beam hanger as an “extension portion” (Pet. 45–
46 (referencing Tsukamoto’s connection plates 2D’/3D’, 2B/3B), and
identifies Tsukamoto’s vertical plates 2D/3D, identified by the red arrow in
the above illustrations, as a “back flange” (Pet. 48–49). As such, Tsukamoto
plainly discloses a back flange (red arrow) extending from an edge of an
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extension portion (green-shaded region). But we are not persuaded by
Petitioner’s contention that Tsukamoto’s back flange extends from an edge
of the top flange in a direction toward a plane of the base of the channel-
shaped portion. The beginning of Tsukamoto’s back flange’s extension is
on an edge of the extension portion, not an edge of the top flange. Further,
Tsukamoto’s back flange not only extends from the extension portion, but
extends in a direction toward the other back flange (i.e., left / right), not in a
direction toward a plane of the base of the channel-shaped portion (i.e.,
downward). Petitioner ignores these distinctions, particularly the
limitation’s requirement to not only “extend from” the top flange but to
“extend from an edge of” the top flange, and to extend in a particular
direction. Petitioner does not argue that Bundy or Allan remedies these
deficiencies in Tsukamoto.
Faced with Patent Owner’s and the Board’s use of Petitioner’s own
three-dimensional (3D) rendering and isometric rendering of Tsukamoto’s
drawings against Petitioner’s contentions here, Petitioner argues: “The
isometric rendering was simply used to illustrate how two sheets of
sheathing would fit inside the extension space, and was not relied on for nor
meant to be used as a precise measure for any other element in the claims.”
RMTA Opp. 17 (emphasis added). Notably, Petitioner does not appear to
denigrate the three-dimensional (3D) rendering with the green-highlighted
extension portion, which as noted above, we find to support Patent Owner,
not Petitioner. Regardless, Petitioner’s backtracking now is contradicted by
its original representation to the Board, where Petitioner represented the
green-highlighted 3D rendering without disclaimer as “[a] three-dimensional
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(3D) rendering of Tsukamoto’s hanger, highlighting the extension portion”
(Pet. 45; Ex. 1003 ¶ 118 (Petitioner’s declarant testifying to this)); and
where Petitioner represented the isometric rendering with sheathing on wall
framing without disclaimer as “[a]n isometric rendering of Tsukamoto used
in conjunction with sheathing” (Pet. 46; Ex. 1003 ¶ 119 (Petitioner’s
declarant testifying to this)). When Petitioner argued Tsukamoto’s back
flange extends from an edge of the top flange through intervening
components (Pet. Reply 20), Petitioner did not characterize its renderings as
imprecise or otherwise; yet now that Petitioner argues Tsukamoto’s back
flange extends from a corner or vertex of the top flange without intervening
components, Petitioner declares its own renderings (specifically, only the
isometric rendering) unreliable. We find Petitioner’s change of heart here
not fully credible, and its denigration of its own renderings entitled to little
probative weight. See 37 C.F.R. §§ 42.11(c), 11.18(b).
Petitioner argues that, even under the Board’s construction of
“extending from,” Tsukamoto discloses the subject limitation, because
allegedly in Tsukamoto “the starting corner of Tsukamoto’s back flange is
‘on’ the top flange.” RMTA Opp. 15 (emphasis added); see RMTA
Opp. 14–15, 16 (“So even under [Patent Owner’s] definition, Tsukamoto
teaches that back flanges 2D/3D start from a point ‘on’ top flanges 2A/3A.”
(emphasis added)), 17 (“[T]he top flange, the extension portion, and the
back flange all meet at one vertex.” (emphasis added)), 18. But because
Tsukamoto’s Figure 2 (above) appears to contradict Petitioner’s argument
that the starting corner of Tsukamoto’s back flange is ‘on’ the top flange
(i.e., Petitioner’s “three intersecting planes” theory), Petitioner argues
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Tsukamoto’s Figure 2 is “imprecise” (but of course not Figures 3 and 4 on
which Petitioner relies). RMTA Opp. 16. Petitioner also argues “none” of
Tsukamoto’s figures appear to be computer-aided design (CAD) drawings,
but rather “sketches.” RMTA Opp. 16. We find Petitioner’s challenge to
the integrity and reliability of Tsukamoto’s drawings favors Patent Owner,
not Petitioner, as it is Petitioner’s burden to prove unpatentability. See
Dynamic Drinkware, 800 F.3d at 1378; see RMTA Reply 9 (“But this
alleged imprecision only further weaken[s] [Petitioner’s] ‘intersecting
planes’ theory, as the figures that [Petitioner] chooses to rely on both feature
orientations in which the alleged intersection of the top flange and the back
flange is obscured.”).
Both parties have offered competing renderings of a “blank” that
allegedly would have been used to manufacture the Tsukamoto hanger. See
RMTA Opp. 17–18 (citing Ex. 1042 ¶¶ 50–51); RMTA Reply 9–10 (citing
Ex. 2057 ¶¶ 66–69). These “blank” renderings are neither in Tsukamoto nor
prior art themselves. Not surprisingly, Petitioner’s rendering depicts a back
flange “sharing a corner” with a top flange (RMTA Opp. 17–18), and Patent
Owner’s depicts those components not sharing a corner (Ex. 2057 ¶ 67).
Patent Owner characterizes Petitioner’s “blank” rendering as “a fictional
rendering that is not representative of the hanger as disclosed in
Tsukamoto.” RMTA Reply 9–10. Petitioner likewise denigrates Patent
Owner’s “blank” rendering. RMTA Sur-Reply 10–11. Given these “blank”
renderings are not prior art, are based on “imprecise” “sketches” of the
Tsukamoto hanger as argued by Petitioner (RMTA Opp. 16), and the parties’
experts disagree on the specific design of the “blank” used to make the
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Tsukamoto hanger, we find the parties’ renderings entitled to little probative
weight.
We return to Tsukamoto itself, which as noted above explicitly states:
“Reference numerals 2D, 3D are vertical plates for abutting the base
continuously connected to the inclined portions 2B, 3B via connection plates
2D', 3D' that have triangular side surfaces.” Ex. 1009, 2 (emphasis added).
We find this disclosure teaches, using Petitioner’s allocation of components,
back flanges 2D/3D “continuously connected” to an extension portion
(2D'/2B, 3D'/3D), or as stated, to triangular connection plates 2D'/3D' which
in turn are “continuously connected” to inclined portions 2B/3B. Notably
absent in this disclosure, and indeed refuted by this disclosure, is any
suggestion that the beginning of back flanges 2D/3D’s extension is on
horizontal portions 2A/3A. We find this disclosure in Tsukamoto favors
Patent Owner, not Petitioner.
Nevertheless, even if “Tsukamoto’s back flange shares a corner with
the top flange” as argued by Petitioner (RMTA Opp. 15 (emphasis added)),
we are not persuaded by this argument. Petitioner does not show
persuasively that a back flange “extending from” a “corner” discloses
“extending from” an “edge” let alone “extending from an edge of the top
flange,” as recited, for example, in proposed substitute claim 21 (and
original claim 1). Petitioner also does not show persuasively that back
flanges 2D/3D extend in a direction toward a plane of the base of the
channel-shaped portion (i.e., downward), particularly given that Tsukamoto
depicts such back flanges as extending from extension portions in a direction
toward each other (i.e., left/right).
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Based on the foregoing, on our review of the complete record before
us, and in light of Petitioner’s burden to evidence unpatentability, we find
Petitioner does not show persuasively that Tsukamoto discloses “a back
flange extending from an edge of the top flange in a direction toward a plane
of the base of the channel-shaped portion,” as recited in proposed substitute
independent claims 21 and 33 (and original claims 1 and 13), or “a back
flange extending from an edge of the top flange,” as recited in proposed
substitute independent claim 40 (and original claim 20).
4. Conclusion
For the reasons expressed above, and based on the complete record
before us, we determine that Petitioner has not demonstrated by a
preponderance of evidence that proposed substitute claims 21, 22, 24, 26–
37, 39, and 40 (and corresponding original claims 1, 2, 4, 6–17, 19, and 20)
are unpatentable as obvious over the combination of Tsukamoto, Bundy, and
Allan.
F. Obviousness of Proposed Substitute Claim 23 Over the
Combination of Tsukamoto, Bundy, Allan, and Gilb ’416
Petitioner contends proposed substitute claim 23 is unpatentable under
35 U.S.C. § 103 as obvious over Tsukamoto (Ex. 1009), Bundy (Ex. 1007),
Allan (Ex. 1012), and Gilb ’416 (Ex. 1011). RMTA Opp. 19; see Pet. 64–
67. Patent Owner opposes Petitioner’s contentions. PO Resp. 78. Proposed
substitute claim 23 depends from proposed substitute independent claim 21.
RMTA App. A, 4. As discussed above, we determine that Petitioner has not
demonstrated by a preponderance of evidence that proposed substitute
claim 21 is unpatentable as obvious over the combination of Tsukamoto,
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Bundy, and Allan. Petitioner does not argue that Gilb ’416 remedies the
noted deficiency in Tsukamoto. See Pet. 64–67. Accordingly, we determine
that Petitioner has not demonstrated by a preponderance of evidence that
proposed substitute claim 23 (and corresponding original claim 3) is
unpatentable as obvious over the combination of Tsukamoto, Bundy, Allan,
and Gilb ’416.
G. Obviousness of Proposed Substitute Claims 21–40 Over the
Combination of Gilb ’155, Bundy, Allan, and Gilb ’942
Petitioner contends proposed substitute claims 21–40 are unpatentable
under 35 U.S.C. § 103 as obvious over the combination of Gilb ’155
(Ex. 1010), Bundy (Ex. 1007), Allan (Ex. 1012), and Gilb ’942 (Ex. 1032).
RMTA Opp. 19–24; RMTA Sur-Reply 12. Patent Owner opposes
Petitioner’s contentions. RMTA Reply 10–12. For the reasons expressed
below, and based on the complete record before us, we determine that
Petitioner has not demonstrated by a preponderance of evidence that
proposed substitute claims 21–40 are unpatentable as obvious over the
combination of Gilb ’155, Bundy, Allan, and Gilb ’942.
We determined in Section II.G, supra, that Petitioner has
demonstrated by a preponderance of evidence that original independent
claims 1, 13, and 20 are unpatentable as obvious over the combination of
Gilb ’155, Bundy, and Allan. In its RMTA, Patent Owner amended
proposed substitute claim 21 by adding (1) “wherein the channel-shaped
portion, the extension portion and the connection portion are rigidly fixed
with respect to one another” (“Rigidly Fixed Limitation”); and (2) “wherein
the extension portion includes an extension flange extending from the back
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flange of the connection portion to the channel-shaped portion” (“Extension
Flange Limitation”). See RMTA, App. A, 3–4. Patent Owner amended
proposed substitute claim 23 by adding the Rigidly Fixed Limitation.
RMTA, App. A, 6–7. Patent Owner also amended proposed substitute
claim 40 by adding the Extension Flange Limitation. RMTA, App. A, 9.
1. Rigidly Fixed Limitation
a) Impermissible Hindsight
Petitioner argues Gilb ’942 discloses that components of a hanger can
be fixed into place by welding, and argues the skilled artisan would have had
rational reasons to weld together Gilb ’155’s channel-shaped portion,
extension portion, and connection portion, rendering these portions rigidly
fixed with respect to one another. See RMTA Opp. 19–23. Petitioner
argues the reasons to do so are: (1) “identifying particular angles to be used
in building specifications;” (2) “minimizing adjustments at installation”; and
(3) “ensuring the accuracy of angle setting in controlled environments.”
RMTA Sur-Reply 12; see RMTA Opp. 20–23.
Patent Owner responds “[t]here is no legitimate reason to fix the angle
of the Gilb ’155 hanger in place by welding,” as the hanger “can already be
adjusted in the field to the exact right angle.” RMTA Reply 10–11
(emphasis added). Patent Owner also argues “the unmodified Gilb ’155
hanger can rotate in the field to make adjustments for misalignments, as
Simpson has repeated[ly] stated are often necessary.” RMTA Reply 10
(citing, in part, RMTA Opp. 4–5 (Petitioner arguing that “sheet metal
hangers are commonly bent in the field to account for slight angle
misalignments during beam installation.”)). Patent Owner further argues,
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“[f]ailing to identify any genuine motivation to modify the Gilb ’155 hanger,
[Petitioner’s] suggestion that the hanger could be welded to meet the ‘rigidly
fixed’ limitation is simply a hindsight aided reconstruction of the claimed
invention.” RMTA Reply 11. We are persuaded by Patent Owner’s
argument.
The Board must “recognize that we cannot allow hindsight bias to be
the thread that stitches together prior art patches into something that is the
claimed invention.” Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d
1358, 1367 (Fed. Cir. 2017) (“Without any explanation as to how or why the
references would be combined to arrive at the claimed invention, we are left
with only hindsight bias that KSR warns against.”); see KSR Intern. Co. v.
Teleflex Inc., 550 U.S. 398, 421 (2007) (“A factfinder should be aware, of
course, of the distortion caused by hindsight bias and must be cautious of
arguments reliant upon ex post reasoning.”). Our reviewing court has
instructed that the Board “should consider a range of real-world facts to
determine ‘whether there was an apparent reason to combine the known
elements in the fashion claimed by the patent at issue.’” Intercontinental
Great Brands LLC v. Kellogg N. Am. Co., 869 F.3d 1336, 1344 (Fed. Cir.
2017) (citing KSR, 550 U.S. at 418) (emphasis added); see KSR, 550 U.S.
418 (“[I]t can be important to identify a reason that would have prompted a
person of ordinary skill in the relevant field to combine the elements in the
way the claimed new invention does.”); In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some articulated
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reasoning with some rational underpinning to support the legal conclusion of
obviousness”) (quoted with approval in KSR, 550 U.S. at 418).
Heeding these cautions, we first turn to Gilb ’155. Gilb ’155 “is a
hanger intended to provide for any known intersection requirement to any
amount of skew and any amount of slope.” Ex. 1010, 1:5–9. Gilb ’155
states that “[t]he sheet metal connector industry is a multi-million dollar
business with hundreds of designers furnishing connectors for almost every
conceivable intersection requirement,” and “[i]n spite of the employment of
a great many people over many years in this field not a single production
sheet metal universal skewed and sloped hanger is known to Applicant.”
Ex. 1010, 1:10–20 (emphases added). Gilb ’155 explains that a “connector
capable of being custom formed on the construction site for fixed skew and
slope angles” existed, but “[o]nce the connector is bent, however, it is
impractical to use the connector at another angle.” Ex. 1010, 1:37–42.
Gilb ’155 also expresses concern that a hanger “formed at the factory at a
fixed angle . . . cannot be used for intersections of different angles.”
Ex. 1010, 1:43–48. Gilb ’155 concludes “[i]t was obvious that a potential
solution had to involve two separate parts, and that the support element had
to rotate in respect to the supporting element in order to solve the basic
requirement of the device.” Ex. 1010, 2:3–6 (emphases added). Based on
the foregoing disclosures and context of Gilb ’155, we are not persuaded that
Gilb ’155 itself suggests or contemplates taking its purposefully designed
multi-part, universal skewed and sloped hanger and rendering it a rigidly
fixed hanger, which is the very type of hanger to which Gilb ’155 provided
an alternative.
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Petitioner’s argument that it would have been obvious to the skilled
artisan to fix Gilb ’155’s hanger to a desired angle by welding is premised
on “Gilb ’155’s disclosure that it can be preassembled prior to installation,
and that it is not intended to be rotatable afterwards.” RMTA Opp. 20
(emphasis added); RMTA Opp. 22 (“Gilb ’155 hanger is not intended to
move once it is installed.”). But we find this premise flawed, because
Gilb ’155 touts its feature of being able to remove the pin and separate, for
example, a joist from a wall, without uninstalling the hanger components:
“After the supported structure and skewed hanger has been attached to the
supporting structure, it is possible to remove pin 18 and lift the supported
structure away from the supporting member without unfastening the
supported member 2 from the supporting structure 3 or unfastening the
connecting means 16 from the supported structure 17.” Ex. 1010, 7:29–35
(emphases added).
Based on the foregoing, particularly Petitioner’s flawed premise
underlying its purported obviousness rationale here and its admission that
“sheet metal hangers are commonly bent in the field to account for slight
angle misalignments during beam installation” (RMTA Opp. 4–5), we are
not persuaded that Petitioner’s obviousness rationale is not infected with
hindsight bias. Petitioner asks the Board to take a huge leap in accepting
that the skilled artisan, without holding the ’510 patent’s blueprints, would
have taken a purposefully pivotable hanger and eliminated its primary
feature. Based on the complete record before us, including the parties’
competing testimony from their declarants, we are not persuaded to jump
that far.
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b) Inoperability for Intended Purpose
Patent Owner argues “welding the Gilb ’155 hanger prior to
installation would render the hanger inoperable for its intended purpose.”
RMTA Reply 11 (citing, in part, Ex. 2057 ¶¶ 88–89). Petitioner argues
Gilb ’155’s purpose “would not be frustrated or lost by assembling the
rotatable hanger as taught by Gilb ’155, and using that rotatable hanger as a
stock hanger whose angle can then be set according to a custom order and
then fixed in place.” RMTA Opp. 20–21 (citing, in part, Ex. 1042 ¶ 36); see
RMTA Sur-Reply 12.
A combination of prior art elements under KSR cannot “change the
basic principles under which the prior art was designed to operate, or . . .
render the prior art inoperable for its intended purpose.” Plas-Pak Indus.,
Inc. v. Sulzer Mixpac AG, 600 F. App’x 755, 758 (Fed. Cir. 2015) (citations
and quotation marks omitted); In re Gordon, 733 F.2d 900, 902 (Fed. Cir.
1984); In re Ratti, 46 CCPA 976, 270 F.2d 810, 813 (1959); cf. DePuy
Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1326 (Fed.
Cir. 2009) (Although predictability is a touchstone of obviousness, “the
‘predictable result’ discussed in KSR refers not only to the expectation that
prior art elements are capable of being physically combined, but also that the
combination would have worked for its intended purpose.”). Similarly,
although one of ordinary skill in the art may understand that multiple
references could have been combined as reasoned by the Petitioner, this does
not imply a reason one of ordinary skill in the art would have combined the
multiple references. Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987,
993–94 (Fed. Cir. 2017); see Belden Inc. v. Berk–Tek LLC, 805 F.3d 1064,
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1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not
only could have made but would have been motivated to make the
combinations or modifications of prior art to arrive at the claimed
invention.”).
In this case, for the same reasons expressed above in discussing
impermissible hindsight, we are not persuaded by Petitioner’s argument that
welding together Gilb ’155’s channel-shaped portion, extension portion, and
connection portion would have been obvious, because doing so would render
Gilb ’155’s resulting hanger inoperable for its intended purpose, which
included having a separable channel-shaped portion and connection portion
even after installation (see Ex. 1010, 7:29–35).
2. Extension Flange Limitation
Petitioner’s argument that the combination of references at hand
disclose the Extension Flange Limitation is based on (1) a construction of
“extending from” that we do not adopt (see RMTA Opp. 23–24 (relying on
“extending from” to contemplate intervening components); Section III.E.2,
supra); and (2) welding together Gilb ’155’s channel-shaped portion,
extension portion, and connection portion, which we are not persuaded is
obvious to do based on the complete record before us (see RMTA Opp. 24;
Section III.G.1, supra).
3. Conclusion
For the reasons expressed above, and based on the complete record
before us, we determine that Petitioner has not demonstrated by a
preponderance of evidence that proposed substitute claims 21–40 are
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unpatentable as obvious over the combination of Gilb ’155, Bundy, Allan,
and Gilb ’942.
H. Obviousness of Proposed Substitute Claims 21–24, 26–37, 39
and 40 Over the Combination of Timony and Bundy
Petitioner contends proposed substitute claims 21–24, 26–37, 39 and
40 are unpatentable under 35 U.S.C. § 103 as obvious over the combination
of Timony (Ex. 1008) and Bundy (Ex. 1007). RMTA Opp. 25; see
Pet. 102–132; Pet. Reply 25. Patent Owner opposes Petitioner’s
contentions. RMTA Reply 12; see PO Resp. 78–92; PO Sur-Reply 24–25.
For the reasons expressed below, and based on the complete record before
us, we determine that Petitioner has not demonstrated by a preponderance of
evidence that proposed substitute claims 21–24, 26–37, 39, and 40 are
unpatentable as obvious over the combination of Timony and Bundy.
1. Structure Disclosed by Timony
Timony generally is directed to “a hanger in an insulated concrete
system,” and as applied by Petitioner, more particularly to “a retrofit hanger
[for] an insulated concrete system,” as shown, for example, in Figure 8,
reproduced below. Ex. 1008 ¶ 2 (emphasis added), Fig. 8.
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Figure 8 of Timony is a perspective view of a
partially assembled retrofit bracket.
Id. ¶ 29. Petitioner contends that the limitations of the claims at issue “were
already substantially disclosed by Timony at the time of invention, except
for a top flange widely taught by other structural hangers, and the spacing of
an extension portion, which is evidenced by numerous building codes and
taught explicitly by Bundy.” Pet. 102 (emphasis added); see Pet. Reply 25.
Patent Owner disputes, inter alia, whether Petitioner identifies a valid
rationale for why the skilled artisan would have combined the top flange of
Bundy with the hanger of Timony. PO Resp. 78–84; PO Sur-Reply 24–25.
We address this dispute below.
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2. Rationale For Combining Bundy’s “Top Flange” With
Timony’s Hanger
Petitioner argues “[the skilled artisan] would have appreciated that
adding top flanges to Timony’s hanger would help to stabilize the hanger
and counteract the shear force resulting from the weight of the joist pulling
on the back flange wall connection, as taught by Bundy.” Pet. 103. More
specifically, Petitioner argues “[w]ith the addition of a top flange to the
retaining portion 203, Timony’s back flange (203a and 203b) naturally
extends from an edge of a top flange (based on Bundy) in a direction toward
a plane of the base of the channel-shaped portion (U-shaped bracket 265).”
Pet. 104. Petitioner further argues “[s]uch a combination would have been
nothing more than combining prior art elements (the top flange of Bundy
and Timony’s hanger having a back flange) according to known methods
(e.g., welding or cutting the sheet metal from which Timony’s hanger is
made) to yield predictable results.” Pet. 104–105 (citing Ex. 1003 ¶¶ 224–
225); see Pet. Reply 25–26.
As explained above, a combination of prior art elements under KSR
cannot “change the basic principles under which the prior art was designed
to operate, or . . . render the prior art inoperable for its intended purpose.”
Plas-Pak Indus., 600 F. App’x at 758 (citations and quotation marks
omitted). Similarly, although one of ordinary skill in the art may understand
that two references could have been combined as reasoned by the Petitioner,
this does not imply a reason one of ordinary skill in the art would have
combined the references. Personal Web Techs., 848 F.3d at 993–94.
In addition, “it can be important to identify a reason that would have
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prompted a person of ordinary skill in the relevant field to combine the
elements in the way the claimed new invention does.” KSR, 550 U.S. 418.
In this case, Patent Owner argues “[Petitioner’s] proposed
modification of Timony in view of Bundy to include a top flange would
render the retrofit bracket of Timony inoperable for its intended purpose.”
PO Resp. 78–79 (emphasis added). In particular, Patent Owner argues:
The intended purpose of the retrofit bracket is to be able to hang
or connect the joist on a composite wall (210) after the wall has
already been constructed. Because the retrofit bracket installs
flush with the face of the concrete core (250), the retrofit bracket
can be installed at any position on the composite wall. This
ability is required in retrofit construction because the existing
configuration of building components, such as composite
walls (210), may not align or match the changes being made by
the retrofit construction. Having the ability to attach the retrofit
bracket (195) at any position on the composite wall allows the
retrofit bracket to be used in any type of retrofit construction of
a building, regardless of the existing configuration of the
building’s building components (e.g., the building structure built
on top of the foundation).
Adding a top flange to the retrofit bracket would prevent
the retrofit bracket from being able to be mounted at any position
on the composite wall, making the retrofit bracket inoperable for
its intended purpose.
PO Resp. 79 (internal citations omitted). We are persuaded by Patent
Owner’s above argument, as discussed below.
Timony discloses installing a hanger via retrofit bracket 195 by
fastening it to concrete core 250, and also discloses that the design of the
hanger “permit[s] an installer to accommodate moderate discrepancies in the
heights of retrofit plates 230a and 230b after they are fastened to composite
wail 210.” Ex. 1008 ¶¶ 48–49. That is, the disclosed purpose of Timony’s
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hanger is for mounting objects, like beams or joists, to sides of concrete
walls, and to provide means for adjusting the mounting height of such
objects due to bracket mounting height discrepancies. Ex. 1008 ¶¶ 46–52.
Timony provides no disclosure, text or figures, of mounting its hanger via a
flange or otherwise via the top (not side) of a concrete wall. Petitioner even
admits “Timony relates to a composite wall where [hanger] embodiments
[without flanges] are shown attaching to a [wall] portion below the top of
the wall,” not to hangers mounted (via flanges) to the top of a wall. Pet. 111
(emphasis added). Petitioner also provides no explanation as to how
Timony’s hanger could continue to be operable to mount to the side of a
concrete wall (the very purpose disclosed in Timony) if the hanger included
top flanges as urged by Petitioner. Based on the foregoing, we are not
persuaded by Petitioner’s argument that combining the top flange of Bundy
with the back flange of Timony’s hanger would have been obvious, because
doing so would render Timony’s resulting hanger inoperable for its intended
purpose. See Plas-Pak Indus., 600 F. App’x at 760 (“[M]odifying [prior
art A] to accommodate the spray nozzle of [prior art B] would render [prior
art A] ‘inoperable for its intended purpose,’ and a person of ordinary skill
would thus not have been motivated to pursue the combination.”).
3. Conclusion
For the reasons expressed above, and based on the complete record
before us, we determine that Petitioner has not demonstrated by a
preponderance of evidence that proposed substitute claims 21–24, 26–37,
39, and 40 (and corresponding original claims 1–4, 6–17, 19 and 20) are
unpatentable as obvious over the combination of Timony and Bundy.
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I. Obviousness of Proposed Substitute Claim 23 Over Timony,
Bundy, and Gilb ’416
Petitioner contends proposed substitute claim 23 is unpatentable under
35 U.S.C. § 103 as obvious over the combination of Timony (Ex. 1008),
Bundy (Ex. 1007), and Gilb ’416 (Ex. 1011). RMTA Opp. 25; see Pet. 132–
134; Pet. Reply 25. Patent Owner opposes Petitioner’s contentions. RMTA
Reply 12; see PO Resp. 92–93; PO Sur-Reply 24–25. Proposed substitute
claim 23 depends from proposed substitute independent claim 21. RMTA
App. A, 4. As discussed above, we determine that Petitioner has not
demonstrated by a preponderance of evidence that proposed substitute
claim 21 is unpatentable as obvious over the combination of Timony and
Bundy. Petitioner does not argue that Gilb ’416 remedies the noted
deficiency in combining Timony and Bundy. See Pet. 132–134.
Accordingly, we determine that Petitioner has not demonstrated by a
preponderance of evidence that proposed substitute claim 23 (and
corresponding original claim 3) is unpatentable as obvious over the
combination of Timony, Bundy, and Gilb ’416.
J. Obviousness of Proposed Substitute Claims 32 and 39 Over
Timony, Bundy, and Gilb ’942
Petitioner contends proposed substitute claims 32 and 39 are
unpatentable under 35 U.S.C. § 103 as obvious over the combination of
Timony (Ex. 1008), Bundy (Ex. 1007), and Gilb ’942 (Ex. 1032). RMTA
Opp. 25; see Pet. 134–136; Pet. Reply 25. Patent Owner opposes
Petitioner’s contentions. RMTA Reply 12; see PO Resp. 93; PO Sur-
Reply 24–25. Proposed substitute claims 32 and 39 depend, directly or
indirectly, from proposed substitute independent claim 21 and 33,
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respectively. RMTA App. A, 6, 9. As discussed above, we determine that
Petitioner has not demonstrated by a preponderance of evidence that
proposed substitute claims 21 and 33 are unpatentable as obvious over the
combination of Timony and Bundy. Petitioner does not argue that Gilb ’942
remedies the noted deficiency in combining Timony and Bundy.
See Pet. 134–136. Accordingly, we determine that Petitioner has not
demonstrated by a preponderance of evidence that proposed substitute
claims 32 and 39 (and corresponding original claims 12 and 19) are
unpatentable as obvious over the combination of Timony, Bundy, and
Gilb ’942.
K. Summary of Analysis of Proposed Substitute Claims 21–40
In our analysis above of proposed substitute claims 21–40, we
determined that Patent Owner has satisfied the statutory and regulatory
requirements for:
(1) reasonable number of claims;
(2) responding to a ground of unpatentability;
(3) not enlarging the scope of original claims; and
(4) written description support, for proposed substitute claim 40.
We also determined that Patent Owner has not satisfied the statutory
and regulatory requirements for:
(5) written description support, for proposed substitute claims 21–
39 due to the Negative Spacing Limitation.
We also determined that Petitioner has not demonstrated by a
preponderance of evidence:
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(1) proposed substitute claims 21–39 are unpatentable under
35 U.S.C. § 112(b) for indefiniteness;
(2) proposed substitute claims 21, 22, 24, 26–37, 39, and 40 (and
corresponding original claims 1, 2, 4, 6–17, 19, and 20) are unpatentable as
obvious over the combination of Tsukamoto, Bundy, and Allan;
(3) proposed substitute claim 23 (and corresponding original
claim 3) is unpatentable as obvious over the combination of Tsukamoto,
Bundy, Allan, Gilb ’416;
(4) proposed substitute claims 21–40 are unpatentable as obvious
over the combination of Gilb ’155, Bundy, Allan, and Gilb ’942;
(5) proposed substitute claims 21–24, 26–37, 39 and 40 (and
corresponding original claims 1–4, 6–17, 19 and 20) are unpatentable as
obvious over the combination of Timony and Bundy;
(6) proposed substitute claim 23 (and corresponding original
claim 3) is unpatentable as obvious over the combination of Timony, Bundy,
and Gilb ’416; and
(7) proposed substitute claims 32 and 39 (and corresponding
original claims 12 and 19) are unpatentable as obvious over the combination
of Timony, Bundy, and Gilb ’942.
Accordingly, because Patent Owner has not satisfied all statutory and
regulatory requirements for proposed substitute claims 21–39, we deny
Patent Owner’s Revised Contingent Motion to Amend as to proposed
substitute claims 21–39. Because Patent Owner has satisfied all statutory
and regulatory requirements for proposed substitute claim 40, and Petitioner
has not demonstrated unpatentability of this claim by a preponderance of
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evidence, we grant Patent Owner’s Revised Contingent Motion to Amend as
to proposed substitute claim 40.
IV. CONCLUSION6
Claims
35
U.S.C. §
References /
Basis
Claims
Shown
Unpatentable
Claims Not
Shown
Unpatentable
1–19 112(a) Written Description 1–19
20 112(b) Indefiniteness 20
1–19 102 Brekke ’370 1–19
1–20 103 Gilb ’155, Bundy, Allan
1–11, 13–18,
20 12, 19
12, 19 103
Gilb ’155,
Bundy, Allan,
Gilb ’942
12, 19
*1, 2, 4,
6–17, 19,
20
103 Tsukamoto, Bundy, Allan
1, 2, 4, 6–17,
19, 20

6 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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Claims
35
U.S.C. §
References /
Basis
Claims
Shown
Unpatentable
Claims Not
Shown
Unpatentable
*3 103
Tsukamoto,
Bundy, Allan,
Gilb ’416
3
*1–4, 6–
17, 19, 20 103 Timony, Bundy
1–4, 6–17, 19,
20
*3 103 Timony, Bundy, Gilb ’416 3
*12, 19 103 Timony, Bundy, Gilb ’942 12, 19
Overall Outcome 1–20
* The asterisks indicate that the subject claims and bases were
analyzed in Section III in conjunction with corresponding proposed
substitute claims.

Revised Motion to Amend Outcome Claims
Original Claims Cancelled by Amendment
Substitute Claims Proposed in the Amendment 21–40
Substitute Claims: Motion to Amend Granted 40
Substitute Claims: Motion to Amend Denied 21–39
Substitute Claims: Not Reached

V. ORDER
Upon consideration of the record, it is:
ORDERED that claims 1–20 of U.S. Patent No. 10,316,510 B2 are
unpatentable;
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FURTHER ORDERED that Patent Owner’s Revised Contingent
Motion to Amend is granted as to proposed substitute claim 40;
FURTHER ORDERED that Patent Owner’s Revised Contingent
Motion to Amend is denied as to proposed substitute claims 21–39; and
FURTHER ORDERED that, because this is a Final Written Decision,
parties to this proceeding seeking judicial review of the Decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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For PETITIONER:

Michelle Holoubek
Sean Flood
Ali Allawi
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
holoubek-ptab@sternekessler.com
sflood-ptab@sternekessler.com
aallawi-ptab@sternekessler.com

For PATENT OWNER:

Kurt James
Steven Levitt
John Schroeder
STINSON LLP
kurt.james@stinson.com
steven.levitt@stinson.com
john.schroeder@stinson.com