Daifuku Co., Ltd.v.Murata Machinery, Ltd.

Patent Trial and Appeal Board

May 3, 2016

12724194 (P.T.A.B. May. 3, 2016)

Trials@uspto.gov Paper 63
571-272-7822 Entered: May 3, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

DAIFUKU CO., LTD. AND DAIFUKU AMERICA CORP.,
Petitioner,

v.

MURATA MACHINERY, LTD.,
Patent Owner.
____________

Case IPR2015-00083
Patent 8,197,172 B2
____________

Before KEN B. BARRETT, BARRY L. GROSSMAN, and
BRIAN P. MURPHY, Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

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

IPR2015-00083
Patent 8,197,172 B2

2
I. INTRODUCTION
Daifuku Co., Ltd. and Daifuku America Corp. (collectively,
“Petitioner”) filed a request for an inter partes review of claims 1–20 of U.S.
Patent No. 8,197,172 B2 (“the ’172 patent,” Ex. 1003). Paper 6 (“Pet.”).
Murata Machinery, Ltd. (“Patent Owner”) filed a Patent Owner Preliminary
Response. Paper 8 (“Prelim. Resp.”). The Board instituted a trial for all
asserted claims. Paper 9 (Dec. on Inst.) Although Petitioner proposed five
grounds of unpatentability, we instituted trial on only the asserted ground of
unpatentability for anticipation and one asserted ground of unpatentability
for obviousness. Dec. on Inst. 25.
After institution of trial, Patent Owner filed a Patent Owner Response
(“PO Resp.”) to the Petition. Paper 25. Petitioner filed a Reply (“Reply”) to
Patent Owner’s Response. Paper 37. Petitioner relies on the Declaration
testimony of Dr. Robert Sturges in support of its Petition (Ex. 1028) and a
Second Declaration of Dr. Sturges (Ex. 1040) and Declaration of Shuzo
Nishino (Ex. 1037) in support of its Reply. Patent Owner relies on the
Declaration testimony of Dr. Wilmer Bottoms (Ex. 2016), Mr. Toyu Yazaki
(Ex. 2022), Mr. David Ben-Meir (Ex. 2026), and Mr. Masahiro Hatashita
(Ex. 2040) in support of its Response.1
Patent Owner filed a Motion for Observations on Cross-Examination
of Petitioner’s Reply Witness. Paper 45 (“Mot. Observ.”). Petitioner filed a
Response to Patent Owner’s Motion for Observations. Paper 54 (“Resp.
Observ.”).

1 Both parties rely on confidential information covered by a Protective
Order entered in this proceeding. Paper 20; see also Ex. 1033.
IPR2015-00083
Patent 8,197,172 B2

3
Patent Owner also filed a Motion to Exclude. Paper 47 (“PO Mot. To
Exclude”). Petitioner filed an Opposition to that Motion (Paper 56, “Pet.
Exclude Opp.”), and Patent Owner filed a Reply (Paper 58, “PO Exclude
Reply”).
Oral hearing was conducted on February 4, 2016. The record contains
a transcript of the hearing. Paper 62 (“Tr.”).
The Board has jurisdiction under 35 U.S.C. § 6(c). This final written
decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
Petitioner has shown by a preponderance of the evidence that claims
1, 3, 4, 9, 11–15, 17 and 20 are unpatentable as anticipated by JPAP ’213.
Petitioner has not shown by a preponderance of the evidence that claims 1–
20 are unpatentable as obvious over JPAP ’213 and JPAP ’237. We dismiss
Patent Owner’s Motion to Exclude as moot.
A. Related Proceedings
The parties identify the following as related proceedings regarding the
’172 patent:
Murata Machinery USA, Inc. v. Daifuku Co., Ltd., No. 2:13-cv-00866
(D. Utah 2013), in which the ’172 patent and two related patents are at issue.
The related patents are U.S. Patent No. 7,165,927 (“the ’927 patent”) and
U.S. Patent No. 7,771,153 (“the ’153 patent”);
IPR2015-00084 (the ’153 patent, claims 6–14); IPR2015-00085 (the
’153 patent, claims 6–11 and 14); IPR2015-00087 (the ’927 patent, claims
1–5, 11–20, and 25–36); IPR2015-00088 (the ’927 patent, claims 1, 2, 5,
11–16, 19, 20, and 25–36);2 and

2 The Board instituted inter partes review proceedings in IPR2015-00083
IPR2015-00083
Patent 8,197,172 B2

4
Pending related U.S. Patent Application Nos. 10/682,809 (filed
October 9, 2003), 13/492,341 (filed June 8, 2012), and 14/080,590 (filed
November 14, 2013). Pet. 2; Paper 4 (“Patent Owner Murata Machinery,
Ltd.’s Mandatory Notices”).
B. The’172 Patent
The ’172 patent, titled “Automated Material Handling System for
Semiconductor Manufacturing Based On a Combination of Vertical
Carousels And Overhead Hoists,” pertains to an automated material
handling system “that allows an overhead hoist to load and unload Work-In-
Process (WIP) parts directly to/from one or more WIP storage units included
in the system.” Ex. 1003, col. 2, ll. 38–42. Such systems may be employed
in integrated circuit chip manufacturing. Id. at col. 1, ll. 45–47.3 Figure 6 of
the ’172 patent is reproduced below:

and IPR2015-00088. The Board denied institution in IPR2015-00084 and
IPR2015-00087.
3 As we noted in the Decision on Institution and as Patent Owner
acknowledges, the independent claims of the ’172 patent are not limited to
the semiconductor manufacturing environment. Dec. on Inst. 9–10; see also
PO Resp. 20 (arguing “the field of the invention is semiconductor AMHS
systems (even though some of the claims are more broadly directed to any
type of AMHS system)”).
IPR2015-00083
Patent 8,197,172 B2

5

Figure 6 depicts a translating hoist vehicle system. Ex. 1003, col. 7,
l. 39. The depicted system has suspended track 808 and overhead hoist
transport vehicle 805 configured to travel on track 808. Id. at col. 7, ll. 43–
46. “[T]he overhead transport vehicle 805 includes an overhead hoist 831
having a hoist gripper 835, which is mounted to a translating stage 833
configured to allow both horizontal and vertical motion, as indicated by the
directional arrows 870 and 871, respectively.” Id. at col. 7, ll. 57–61. The
depicted gripper holds Front Opening Unified Pod (FOUP) 810, a type of
cassette pod for transporting semiconductor wafers. Id. at col., 1, l. 63–67,
col. 7, ll. 64–66. Also depicted are rail based conveyer 895 and process tool
load port 899. Id. at col. 7, ll. 49, 54.
IPR2015-00083
Patent 8,197,172 B2

6
Figures 2 and 3 of the ’172 patent are reproduced below:

Figure 2 “is [a] block diagram of a first embodiment of an automated
material handling system according to the present invention,” and Figure 3
“is a block diagram of a second embodiment of the automated material
handling system of FIG. 2.” Id., col. 3, ll. 37–39. In the embodiment of
Figure 2, a vertical carousel stocker 202 has storage bins 203, each
comprised of a fixed shelf. Id., col. 5, ll. 16–25. In operation, overhead
hoist transport vehicle 205 is moved to a position substantially directly
above the storage bin 203 and the overhead hoist is lowered and operated to
pick a FOUP 210 directly from the storage bin. Id., col. 5, ll. 39–54. The
embodiment of Figure 3 depicts vertical carousel stocker 302 having
extraction mechanism 330 to position storage bin 332 (e.g., a movable shelf)
directly underneath track 308 such that the overhead hoist may be lowered
IPR2015-00083
Patent 8,197,172 B2

7
from overhead transport vehicle 305 and pick FOUP 310 directly from
storage bin 332. Id., col. 3, ll. 4–8, col. 6, ll. 16–18, 39–55. The ’172 patent
explains that, in the embodiment of Figure 3, “each storage bin may
comprise either a movable or fixed shelf.” Id., col. 6, ll. 28–30.
C. Illustrative Claim
Claims 1, 9, and 15 are independent claims. Claims 1 and 9 each
recite a system, and claim 15 recites a method. Claim 1, reproduced below
with emphasis added, is illustrative:
1. An automated material handling system comprising:
an overhead hoist transport subsystem comprising at least
one overhead hoist and at least one overhead hoist transport
vehicle, the at least one overhead hoist comprising a translating
stage and a gripper portion coupled to the translating stage, the
gripper portion being configured to grip a material unit;
wherein the translating stage is configured to vertically
move the gripper portion configured to grip the material unit
from a first position proximate to the at least one overhead hoist
transport vehicle to at least one of a second position proximate
to a load port and a third position proximate to a storage
location;
wherein the overhead hoist transport subsystem is
configured to load the material unit on at least one of the load
port and the storage location;
wherein the load port is beneath an overhead rail; and
wherein at least a portion of the storage location is
disposed lateral to the overhead rail.
Ex. 1003, col. 8, ll. 43–61.
D. Applied References
Japanese Patent Application Publication No. HEI 10[1998]-45213, published
Feb. 17, 1998 (as translated) (“JPAP ’213”). Ex. 1005.
IPR2015-00083
Patent 8,197,172 B2

8
Japanese Patent Application Publication No. 2000-53237, published Feb. 22,
2000 (as translated) (“JPAP ’237”). Ex. 1012.
E. Asserted Grounds of Unpatentability
We instituted inter partes review on the following asserted grounds of
unpatentability against the challenged claims (Dec. on Inst. 25):
Reference[s] Basis Claims
JPAP ’213 § 102(b) 1, 3, 4, 9, 11–15, 17, and 20
JPAP ’213 and JPAP ’237 § 103(a) 1–20
II. ANALYSIS
A. Claim Construction
In an inter partes review, claim terms in an unexpired patent are given
their broadest reasonable construction in light of the specification of the
patent in which they appear. 37 C.F.R. § 42.100(b); see also In re Cuozzo
Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed. Cir. 2015), cert. granted
sub nom. Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 890 (2016). Under the
broadest reasonable construction standard, claim terms are given their
ordinary and customary meaning, as would be understood by one of ordinary
skill in the art in the context of the entire patent disclosure. In re Translogic
Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
At Least One Of
Patent Owner frames the issue dispositive of the anticipation ground
as “whether the claims require a translating stage that can move a gripper to
both at least one location proximate a load port beneath the rail and at least
one location proximate to a storage location lateral to the overhead rail.” PO
Resp. 6. Independent claim 1 recites:
IPR2015-00083
Patent 8,197,172 B2

9
wherein the translating stage is configured to vertically
move the gripper portion . . . to at least one of a second position
proximate to a load port and a third position proximate to a
storage location; . . .
wherein the load port is beneath an overhead rail; and
wherein at least a portion of the storage location is
disposed lateral to the overhead rail.
Ex. 1003, col. 8, ll. 50–61. Independent claim 9 is similar and recites a
conveyor rather than a storage location. Independent claim 15 recites a
method of operating a system similar to claim 1.
Patent Owner identifies seven occurrences of the phrase “at least one
of . . . [a] . . . and [b] . . .” in independent claims 1, 9, and 15, and argues that
the phrase should be construed as “‘one or more of [a] and one or more of
[b],’ where [a] and [b] are the claimed second/third positions (claims 1 and
9) or the claimed first/second and third/fourth positions (claim 15).” PO
Resp. 8–9. Thus, Patent Owner argues, in effect, that the claims should be
read as if the phrase “at least one of” appears before both the “[a]” and the
“[b]” thereby requiring “the ability to move the gripper proximate to both a
position underneath the rail and a position lateral to the overhead rail.” Id.
at 9. Petitioner argues that that Patent Owner’s proposed construction is not
the broadest reasonable construction and renders the phrase “at least one of”
superfluous. Reply 1, 2. Petitioner argues that the Board’s preliminary
construction—that the translating stage need not be configured to move the
gripper to a location proximate both locations—is correct. See Reply 1
(citing Dec. on Inst. 12).
Patent Owner’s position primarily is based on the Federal Circuit’s
decision in SuperGuide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870
(Fed. Cir. 2004). PO Resp. 9–12. In that case, the Court construed the
IPR2015-00083
Patent 8,197,172 B2

10
limitation “first means for storing at least one of a desired program start
time, a desired program end time, a desired program service, and a desired
program type.” SuperGuide Corp., 358 F.3d at 884. The Court determined
that each item in the list was a category and construed “this phrase as
requiring that the user select at least one value for each category.” Id.
at 886. The Court’s conclusion was based on an interpretation of the
specific claim language in that case read in light of the particular
specification. See, e.g., id. at 887 (“Importantly, the flow chart [of Figure
4a] uses a conjunctive criteria list, i.e., the system’s user must choose at least
one value for each designated criteria, or the logic would be inoperable.”).
Contrary to Patent Owner’s implied argument, “SuperGuide did not erect a
universal rule of construction for all uses of ‘at least one of’ in all patents.”
Fujifilm Corp. v. Motorola Mobility LLC, No. 12–cv–03587-WHO, 2015
WL 1265009, at *8 (N.D.Cal. Mar. 19, 2015) (citing decisions where “courts
have declined to follow the SuperGuide court’s construction of ‘at least one
of’ where the facts before them called for a different understanding of the
term.”). We agree with Petitioner (Reply 1–2) that the claims, specification,
and evidence before us call for a different outcome than in SuperGuide.
As an initial matter, we clarify that not all occurrences of the key
phrase “at least one of” precede the explicit recitation of the word “position”
as might be inferred from Patent Owner’s arguments (see, e.g., PO Resp. 9
(proposed claim construction where “[a]” and “[b]” are “positions”). For
example, while claim 1 recites “at least one of a second position proximate
to a load port and a third position proximate to a storage location,” it further
recites that the subsystem is configured to load the material on “at least one
of the load port and the storage location.” Ex. 1003, col. 8, ll. 50–59
IPR2015-00083
Patent 8,197,172 B2

11
(emphasis added). Thus, contrary to Patent Owner’s assertion (PO
Resp. 11), not every member of the listed items in the claims is a category
and not every item has multiple possible values. The “configured to load”
limitation of Claim 1 refers to the singular load port and the singular storage
location. Patent Owner’s proposed construction leads to the unnatural
reading: “at least one of the load port and at least one of the storage
location.” Petitioner also persuasively argues that, unlike in SuperGuide, the
’172 patent refers to a single category (“positions”) rather than a list of
several categories. Reply 2. The category includes the recited “second
position” and the “third position.”
Although not dispositive, we also note that the claims contain several
indicia of breadth. For example, the drafter utilized the phrase “at least one”
multiple places in the independent claims, the key structures are defined
functionally (e.g., “the translating stage is configured to vertically move”),
and the limiting modifier “fixed” of the term “storage location” was deleted
by amendment during prosecution (see Ex. 1019, 3, 6). A person of ordinary
skill in the art would find Patent Owner’s current argument for a narrow
interpretation inconsistent with the overall tenor of the otherwise broadly
written claims.
We additionally note that, by deleting “fixed,” Patent Owner
broadened the claim to include a movable storage location such that the
system could operate vertically with respect to the storage location. Pet. 20
(citing Ex. 1003, col. 6, ll. 28–29 (“each storage bin [in the embodiment of
Figure 3] may comprise either a movable or fixed shelf”)). Thus, as
Petitioner argues, “[t]he storage location could be (1) ‘lateral to the . . . rail’
and (2) movable to a position under the transport vehicle (i.e., under the rail)
IPR2015-00083
Patent 8,197,172 B2

12
where the gripper portion could approach it vertically.” Pet. 20 (underlining
omitted). Patent Owner’s narrower interpretation is inconsistent with the
claim language and the specification’s description of “embodiment[s] . . .
according to the present invention” (Ex. 1003, col. 3, ll. 37–39).
Patent Owner argues that the Specification supports its construction,
pointing to the embodiments of Figures 4, 5, 6, and 7. PO Resp. 12. While
certain embodiments can move materials vertically and laterally, Patent
Owner does not direct our attention to any portion of the Specification:
(i) that limits the claims to that dual-movement capability, (ii) that is
otherwise inconsistent with the broader construction advocated by Petitioner,
or (iii) that disclaims vertical-only movement. The Specification describes
the embodiment of Figure 5 as configured to pick and place a unit “to a
position located directly below the suspended track” (i.e. via vertical
movement), and further describes—merely as a preferred embodiment—an
embodiment of Figure 5 having the ability to “to pick/place a cassette pod to
either side of the overhead transport vehicle.” Ex. 1003, col. 7, ll. 25–354–
12; see also id. at col. 7, ll. 4–12 (describing a Figure 4 preferred
embodiment). Patent Owner, however, does not persuade us that the claims
should be limited to the preferred vertical and lateral movement
embodiments.
Patent Owner argues that certain disclosed embodiments, including
the overhead hoist and carousel stocker embodiment of Figures 2 and 3, are
not contrary to Patent Owner’s proposed construction because “Figures 2
and 3 relate to a different invention (the carousel stocker).” PO Resp. 12;
see also Ex. 2016. This conclusory argument is not persuasive as it is
premised on the premature presumption of correctness of Patent Owner’s
IPR2015-00083
Patent 8,197,172 B2

13
claim construction analysis. Further, Patent Owner’s position seemingly is
contradicted by its earlier statement that: “The amendment to independent
claims 1 and 15 to omit the word ‘fixed,’ was intended to capture one of the
embodiments of the ’172 patent, namely the ‘vertical carousel WIP stocker’
[of Figure 2].” Prelim. Resp. 23 (citing Ex. 1003, col. 4, ll. 42–51).
Patent Owner’s proposed construction in the context of independent
method claim 15 also yields a reading that is inconsistent with the
Specification and awkward at best. The Specification describes the method,
depicted in Figure 7, as: moving the hoist vehicle to a position adjacent the
selected storage bin (step 904); lowering the hoist to grip a material unit, a
“FOUP,” in the bin (step 906); operating the gripper to pick the FOUP from
the bin (step 908); raising and retracting the hoist to move the FOUP within
the vehicle (step 910); and transporting the FOUP via the vehicle to a
workstation or processing machine (e.g., to a load port4). Ex. 1003, col. 8,
ll. 6–32; Fig. 7. However, Patent Owner’s reading of method claim 15
would require, in the same step, carrying the vehicle to both a position
proximate a load port and a position proximate a storage location. See id. at
col. 10, ll. 15–21. Similarly, Patent Owner’s proposed construction would
require, in the same step, loading the material unit on both the load port and
the storage location. See id. at col. 10, ll. 26–27. A more natural reading of
one of ordinary skill is that the “at least one of” phrase allows the method
claim to broadly cover either the process of moving the material unit from

4 In our Decision on Institution, we construed “load port” as an interface
where a material unit is exchanged between a material handling system and
a process tool. Dec. on Inst. 10. Patent Owner does not contest that
construction. PO Resp. 15.
IPR2015-00083
Patent 8,197,172 B2

14
storage to the load port location beneath the overhead rail or the separate
process of returning the unit from the work location to storage, with the
appropriate alternative “one of [a] and [b]” used for each particular process.
Patent Owner also relies upon a Provisional Application (Ex. 2003),
incorporated by reference in the Specification (see Ex. 1003, col. 3, ll. 54–
67) as supporting its argument for a narrow construction. PO Resp. at 12.
Specifically, Patent Owner points to a statement of a benefit of the
invention. Id. (quoting Ex. 2003, 2). We do not find the cited page of the
Provisional Application to support a narrow reading of the claim. The
Provisional Application explains that there are three embodiments of the
invention—two involving a vertical movement of the payload and placement
on a shelf that moves horizontally such that the hoist deposits the payload
through vertical movement only, and a third embodiment having a
configuration where the system can place a payload laterally on a fixed shelf
to either side. Ex. 2003, 2. Patent Owner does not explain why the
statement of benefit applies to only the embodiment involving lateral
movement of the hoist system. PO Resp. 12; see also Ex. 2016 ¶¶ 24–25.
Patent Owner further argues that the prosecution history supports its
position. PO Resp. 13. Specifically, Patent Owner points to the Examiner’s
statement of allowable subject matter where the Examiner remarks that the
claims “have limitations dealing with the lateral translation of a gripper.”
Ex. 1018, 3. Patent Owner, however, does not direct our attention to any
portion of the prosecution history where Patent Owner agreed with the
Examiner’s understanding or otherwise disclaimed a system lacking lateral
translation ability. See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)
(“Absent claim language carrying a narrow meaning, the PTO should only
IPR2015-00083
Patent 8,197,172 B2

15
limit the claim based on the specification or prosecution history when those
sources expressly disclaim the broader definition.”). To the contrary, Patent
Owner refused the Examiner’s request to amend the title to one specifically
reciting lateral translation. Ex. 1019, 9. Thus, to the extent that the
prosecution history is informative, it is not helpful to Patent Owner’s
position.
Lastly, we note that, unlike the independent claims of the patent at
issue here which recite that “the translating stage is configured to vertically
move the gripper portion” (claims 1 and 9) or “vertically moving the gripper
portion” (claim 15), claims of a related patent explicitly articulate the
requirement of the translating stage’s capability of lateral movement.
Ex. 1001, col. 8, ll. 61–62 (US 7,165,927 B2, claim 1, “the translating stage
is configured to move the gripper portion laterally”). That the drafter of the
’172 claims opted not to utilize a form of the word “laterally” counsels
against implicitly reading it into the claims now, as Patent Owner requests.
In our Institution Decision, we construed the “translating stage is
configured to vertically move the gripper portion” limitation as follows:
Claim 1 merely requires a translating stage configured to
vertically move the gripper to a position near (“proximate”) one
of two locations, a load port and a storage location. The
translating stage need not be configured to move the gripper to
a location proximate both because the claim uses the phrase “at
least one of” those two locations.
Dec. on Inst. 12. After further development of the record and consideration
of the arguments presented and evidence relied upon by both parties, we
determine that the above construction is appropriate with respect to this
Final Written Decision. Accordingly, we construe “at least one of [a] and
[b]” to mean “at least one of the listed items but not necessarily both.”
IPR2015-00083
Patent 8,197,172 B2

16
B. Anticipation by JPAP ’213
Petitioner, relying on the Declaration of Dr. Robert H. Sturges
(Ex. 1028), argues that JPAP ’213 anticipates claims 1, 3, 4, 9, 11–15, 17
and 20. Pet. 20–31.
Figure 1 of JPAP ’213 is shown below.

Figure 1 depicts an article conveyance facility. The depicted system
has moving body 3 traveling on guide rail 1. Ex. 1005 ¶ 19. Moving body 3
comprises travel part 3a and vertically movable lifting unit 3c. Id.
Extending from the lower end of lifting unit 3c is gripper 3d. Id. Article
retaining unit BS comprises horizontally swingable article mounting
tables 11 with link mechanisms 10, which are activated by hydraulic
cylinders 12, located on the sides of the path of the moving body. Id. ¶ 21.
Article mounting tables 11 are normally positioned laterally to the side of
moving body 3 to allow i) unobstructed travel of moving body 3 along the
IPR2015-00083
Patent 8,197,172 B2

17
rail, and ii) “elevation of lifting part 3c of moving body 3 to allow transfer of
the article [B] with respect to station ST.” Id. When needed for temporary
storage of article B, article mounting tables 11 move horizontally in a back-
and-forth motion between the positions shown in solid lines in Figure 1 and
the position shown in double-dot lines directly below moving body 3. Id.
¶ 22.
Each pair of linkage 10 and hydraulic cylinder 12, used to move
mounting table 11 laterally back-and-forth, is referred to as the “article
movement means MS” that sets an article B “retained in the lateral direction
of the guide rail at a transfer position with respect to moving body 3.” Id.
For example, hydraulic cylinder 12 activates linkage 10 to move table 11
(holding article B) laterally to a position directly under moving body 3 (to
the double-dot line position depicted in Figure 1 for table 11). Id. Moving
body 3 lowers lifting unit 3c to allow gripper 3d to grip article B. Id.
Lifting unit 3c and article B are then elevated to allow table 11 (now empty)
to move back to its storage position (to the solid line position depicted in
Figure 1 for table 11). Id. Article B being gripped by moving body 3 may
then be lowered to workstation ST or conveyed along guiderail 1. Id. The
process may be reversed such that article B may be lifted from workstation
ST by moving body 3 then placed onto mounting table 11 for temporary
storage. Id.
In Figure 1, gripper 3d is shown gripping article B. Figure 1 depicts
article B located near travel part 3a. Also depicted is lifting unit 3c “lowered
to place the article on the conveyer 5c of the article receiving part 5a of
processing apparatus 5.” Id. ¶ 29. In Figure 1, station ST is article receiving
part 5a. Id.
IPR2015-00083
Patent 8,197,172 B2

18
Petitioner maintains that vertically movable lifting unit 3c constitutes
the claimed translating stage, conveyor 5c (station ST) is the claimed load
port, and article retaining unit BS is the claimed storage location. Pet. 26.
Petitioner also relies on the embodiment in Figures 14 and 15 having sliding
mounting table 22 (Ex. 1005 ¶ 36) which Petitioner maintains is the claimed
conveyor of claim 9. Pet. 29.
Patent Owner does not dispute that JPAP ’213 describes most
elements of the claims before us. PO Resp. 21–24; see, e.g., Ex. 1028
¶¶ 57–87 (Dr. Sturges comparing JPAP ’213 to the challenged claims);
Pet. 25–31 (Petitioner comparing JPAP ’213 to the challenged claims).
Patent Owner contends, however, that the system of JPAP ’213 does not
anticipate “because it cannot move the gripper proximate to a storage
location that is lateral to the overhead rail.” Id. at 21.5
Patent Owner first argues that “[Petitioner] Daifuku’s anticipation
theory did not rest on the interpretation of ‘at least one of . . . [a] . . . and . . .
[b] . . .[,]’ that the Board adopted, and thus Daifuku cannot rely on that
interpretation now.” Id. at 22. We disagree. Petitioner applied an
interpretation where only one alternative need be satisfied. See, e.g., Pet. 27
(arguing the “configured to load” limitation of claim 1: “The overhead hoist
transport subsystem 1, 3 is configured to load the material unit B on at least

5 Patent Owner argues that the swinging table of JPAP ’213 does not
constitute the recited laterally disposed storage location because it is not so
disposed when the unit is loaded on the table. PO Resp. 21. We do not rely
on the table’s ability to swing under the rail when addressing the pertinent
claimed features. See Dec. on Inst. 15; contra PO Resp. 21 (incorrectly
arguing that “The Board’s Institution Decision did not address Daifuku’s
‘swinging table’ anticipation theory.”).
IPR2015-00083
Patent 8,197,172 B2

19
the load port ST, 5c (¶ 29 (‘article B is placed on conveyor 5c’)).”).
As mentioned, Patent Owner argues that, under its proposed
construction for the “at least one of” phrase, “there is no anticipation
because JPAP ’213 cannot move the gripper proximate to the claimed
positions.” PO Resp. 22. This argument is not persuasive because, for the
reasons set forth above, the properly construed claims are not as narrow as
Patent Owner proposes. See Section II.A.
Even were we to conclude that Patent Owner’s proposed construction,
where “at least one of” modifies both “[a]” and “[b],” Patent Owner’s
arguments are not on point. Claim 1, for example, recites “the translating
stage is configured to vertically move the gripper portion . . . to at least one
of a second position proximate to a load port [beneath the rail] and a third
position proximate to a storage location [disposed lateral to the rail].” There
is no dispute that the system of JPAP ’213 is capable of moving to a location
proximate a location under the rail. As to the storage location, it is not
readily apparent how the above-quoted claim language requires, as Patent
Owner argues, a vehicle “capable of moving the gripper/hoist mechanism
laterally.” PO Resp. 23; see also Ex. 2016 ¶ 102 (Dr. Bottom’s offering the
conclusory opinion that “[A] vehicle capable of moving the gripper to a
position proximate to the storage location/conveyer lateral to the overhead
rail must be capable of moving the gripper/hoist mechanism laterally.”). A
vertically-moving system would be configured to move a gripper proximate
(near, next to) an adjacent storage location even if lacking the ability to
move laterally so as to place a unit on a storage shelf. Cf. Dec. on Inst. 12
(indicating our understanding of “proximate” as meaning “near”); see, e.g.,
Ex. 1003, col. 8, ll. 12–16 (“[The overhead hoist transport vehicle is moved
IPR2015-00083
Patent 8,197,172 B2

20
along a track, as depicted in step 904, to a position adjacent the selected
storage bin.”), and Figs. 3, 5b. Accordingly, we find the system of JPAP
’213 has the capability of moving to a position proximate a laterally
disposed storage location as well as a positon beneath the rail. Ex. 1005, 20
(Fig. 1).
Based on the argument and evidence presented in the Petition, and the
insufficiency of the responsive argument and evidence presented in the
Patent Owner Response, as discussed above, we are persuaded that
Petitioner has established, by a preponderance of the evidence, that claims 1,
3, 4, 9, 11–15, 17 and 20 are anticipated by JPAP ’213.
C. Obviousness over JPAP ’213 and JPAP ’237
Petitioner asserts that claims 1–20 would have been obvious to a
person of ordinary skill in the art over JPAP ’213 and JPAP ’237. Pet. 48–
58. Patent Owner opposes, contests Petitioner’s English language
translation and interpretation of a disputed sentence in paragraph 7 of
JPAP ’213, and provides its own interpretation of that sentence. PO
Resp. 24–60.
1. Differences between JPAP ’213 and the Claims of the ’172
Patent
Petitioner does not directly address differences between the ’172
patent claims and the disclosure of JPAP ’213, but suggests that the
differences are “the concept of providing lateral-movement capability for a
rail-mounted vehicle hoist” (Pet. 33) and certain integrated circuit chip-
related features (id. at 47). See id. at 48. Petitioner acknowledges that
JPAP ’213 Figure 1 depicts and describes the lateral movement of article B
on table 11 as being carried out by mechanical linkage 10 and hydraulic
IPR2015-00083
Patent 8,197,172 B2

21
cylinder 12, referred to as the “article movement means MS” in JPAP ’213
(Ex. 1005 ¶ 22). Pet. 22–24.
2. The disputed translation of JPAP ’213 paragraph 7
Petitioner argues that JPAP ’213 teaches that the vehicles may “carry
the mechanism for transferring the cassette pods B to and from the article
retaining units BS, by providing the transferring mechanism ‘on the side of’
the hoist vehicles 3.” Id. at 34–35 (emphasis added, quoting Ex. 1005 ¶ 7).
Petitioner relies, in particular, on a sentence in paragraph 7 of the English
language translation of JPAP ’213, the meaning of which is disputed by the
parties. The translated sentence is as follows:
When the apparatus having the configuration described in
Claim 4 is adopted, a retaining unit transfer means used for
transferring articles between the article retaining unit and the
moving body is provided on the side of the moving body.
Ex. 1005 ¶ 7 (emphasis added). Petitioner asserts that JPAP ’213, through
this quoted sentence, “expressly contemplates that rail-mounted vehicles
[moving bodies] 3 may be configured to do the work of transferring pods B
laterally to and from article retaining units BS.” Pet. 51–52 (citing Ex. 1005
¶ 7); see also Reply 9. Petitioner relies on its interpretation of paragraph 7
as providing motivation for one of ordinary skill to modify moving body 3
in JPAP ’213 Figure 1 to include extendable arm 42 of the conveyance truck
transfer device disclosed in JPAP ’237. Pet. 51–52 (citing Ex. 1028 ¶¶ 162–
165).6

6 Although the parties argue for certain differences in the level of skill in the
art, the differences are not material to our decision. Therefore, we apply
Petitioner’s proffered skill level of one having at least an undergraduate
degree in industrial or systems engineering and 3–5 years of experience
IPR2015-00083
Patent 8,197,172 B2

22
Patent Owner opposes Petitioner’s interpretation of JPAP ’213
paragraph 7, arguing that the quoted sentence from paragraph 7 does not
“expressly contemplate” modifying the hoist vehicle of moving body 3 as
argued by Petitioner. PO Resp. 26–35. Patent Owner argues, inter alia, that
because Figure 1 already is an embodiment of the complete apparatus
described in paragraph 7 there is no modification to be made. Id. at 27–29
(citing Ex. 1005 ¶¶ 7, 20, 22; Ex. 2016 ¶¶ 109–111; and Ex. 1028 ¶¶ 49–53).
Patent Owner also argues that Petitioner is misreading paragraph 7, because
the “transfer means” in paragraph 7 refers to providing the hoist (wind-up
cords 3b, lifting unit 3c, and gripper 3d) on the moving body. Id. at 30–32
(citing Ex. 2022 ¶¶ 2–5; Ex. 2016 ¶ 114). According to Patent Owner,
Petitioner’s argument that paragraph 7 supports the concept of putting a
lateral transfer mechanism on the side of an overhead hoist vehicle, such as
moving body 3, is wrong. See id. at 30. Patent Owner further asserts that
Petitioner’s translator admitted that paragraph 7 does not suggest the
retaining unit transfer means would move laterally. Id. at 30–31. Patent
Owner also argues that its interpretation of JPAP ’213 paragraph 7 is
supported by a Japanese Intellectual Property High Court review of JPAP
’213 paragraph 7.7 Id. at 31 (citing Ex. 2018).

designing systems and processes using automated material handling systems.
Pet. 32 (citing Ex. 1028 ¶ 34); see also PO Resp. 20 (citing Ex. 2016 ¶ 15).
7 For the reasons given by Petitioner in its Reply, which raise significant
uncertainties concerning the context and import of the Japanese IP High
Court decision relied upon by Patent Owner in Exhibit 2018, we do not give
that decision any weight in our analysis. Reply 11–12.
IPR2015-00083
Patent 8,197,172 B2

23
3. Analysis of JPAP ’213 Paragraph 7
We begin our analysis with Claim 4 referenced in JPAP ’213
paragraph 7. Claim 4, as translated, recites “wherein a retaining unit transfer
means used for transferring the articles with respect to said article retaining
unit is provided on said moving body.” Ex. 1005, 3. Claim 4, as translated,
characterizes the retaining unit transfer means as located “on” the moving
body rather than “on the side of” the moving body as stated in paragraph 7.
Therefore, we look to the detailed description of the retaining unit transfer
means for clarification. JPAP ’213 describes the retaining unit transfer
means as a vertical hoist mechanism used when articles B are moved
between swinging storage tables 11 and workstation ST located directly
below moving body 3. Referring to Figures 1 and 2, JPAP ’213 explains
that “retaining unit transfer means BC” and “station transfer means SC” are
“constituted within a single article transfer means BM mainly comprising
cord 3b, lifting part 3c, and gripper 3d.” Id. ¶ 20 (emphasis added).
Petitioner’s expert, Dr. Sturges, agrees that the hoist in Figure 1 of JPAP
’213 is the retaining unit transfer means being described in paragraph 7.
Ex. 1034, 141:10–13.
We reproduce below an enlarged view of JPAP ’213 Figure 1,
annotated by us with three arrows and four boxes.
IPR2015-00083
Patent 8,197,172 B2

24

Focusing first on the three arrows in annotated JPAP ’213 Figure 1, above,
Figure 1 consistently uses the acronyms BC, SC, and BM in parentheses
following the alphanumeric designators for cords 3b, vertically movable
lifting unit 3c, and gripper 3d. Ex. 1005 ¶¶ 19–20. The structures
designated 3a, 3b, and 3c are part of a hoist mechanism located on moving
body 3 and designed for vertical movement. Id. The description and
depiction of the retaining unit transfer means as referring to vertical hoist
movement, rather than lateral movement, is reinforced by the description in
paragraph 22 of JPAP ’213. JPAP ’213 paragraph 22 distinguishes the
vertical lifting and lowering structures of the retaining unit transfer means
from the lateral movement linkages and hydraulic cylinders of the article
movement means MS. Id. ¶ 22. The indication of article movement means
MS in parentheses following elements 10 and 12, shown in the four boxes of
IPR2015-00083
Patent 8,197,172 B2

25
annotated Figure 1, further underscores the distinction being vertical and
lateral movement components. Thus, the “retaining unit transfer means” in
claim 4 of JPAP ‘213, as referenced in paragraph 7, refers to vertical hoist
movement, not lateral transfer movement.
We also credit the Declaration testimony of Dr. Bottoms and Patent
Owner’s translator, Mr. Yazaki, and the deposition testimony of Petitioner’s
translator, Mr. Chu. Mr. Chu testifies that JPAP ’213 paragraph 7 does not
“say anything about the transfer means moving an article laterally.”
Ex. 1035, 30:23–31:5. Mr. Yazaki’s Declaration states that paragraph 7
expresses only that “the transfer means is on the moving body side, as
opposed to being on the article retaining unit side” of the conveyance system
and “not [] that the transfer means is on a lateral surface of the moving body
facing the article retaining unit.” Ex. 2022 ¶ 5. Dr. Bottoms testifies that a
person of ordinary skill would have understood the translated phrase “on the
side of the moving body” in paragraph 7 to refer to the transfer means (the
hoist) being located on the moving body side of the system rather than the
storage side of the system, not physically positioning the transfer means on
the lateral side of moving body 3. Ex. 2016 ¶ 114.
Dr. Bottoms also explains how JPAP ’213 distinguishes between
vertical movement of the retaining unit transfer means and lateral movement
of the article movement means MS. Id. ¶ 116 (citing Ex. 1005 ¶ 22).
Dr. Sturges’ Declaration testimony, relied upon by Petitioner to rebut Patent
Owner’s argument and evidence (Reply 12–13), provides no analysis of
paragraph 7, claim 4, or the relevant description in JPAP ’213. Rather, it
mimics the error of the Petition in asserting that JPAP ’213 “already
contemplates modifying the Fig. 1 system . . . to do the work of moving
IPR2015-00083
Patent 8,197,172 B2

26
[articles] B to and from the overhead locations BS.” Ex. 1028 ¶ 165.8
Therefore, for the reasons given above, we find that JPAP ’213
paragraph 7 does not expressly contemplate or teach an overhead transport
vehicle (moving body 3 in Figure 1) configured to effect lateral movement
of an overhead hoist and gripper.
4. JPAP ’213 Figures 12 and 18
Petitioner argues that JPAP ’213 Figures 12 and 18 disclose
alternative embodiments of moving body 3 that have “their own ‘article
transfer means.’” Pet. 35 (citing Ex. 1005 ¶¶ 35, 39). This argument builds
on Petitioner’s incorrect interpretation of JPAP ’213 paragraph 7. Petitioner
gives the analogy of a flight attendant who picks up a backpack from the
floor (a hoisting movement), carries it down the aisle (conveyance along a
predetermined path) and then “transfers the backpack laterally toward and
into the overhead compartment.” Id. (citing Ex. 1028 ¶ 107). In its Reply,
Petitioner again relies on the “lateral transfer means” shown in Figures 12
and 18 in support of the argument. Reply 10. Petitioner and Dr. Sturges,
however, do not analyze the structure of moving body 3 in Figures 12
and 18, which has “the same configuration as moving body 4 . . . to move
article B in the lateral direction” without a hoist. Ex. 1005 ¶¶ 35, 39, Figs.

8 Patent Owner argues that other translations produced by Petitioner in the
co-pending district court case are inconsistent with the translation relied
upon by Petitioner in this inter partes review proceeding. PO Resp. 32. We
note that the provenance of the other translations is not clear, and Patent
Owner has neither clarified the context of their production nor cited to an
affidavit attesting to the accuracy of the translations on which Patent Owner
attempts to rely. 37 C.F.R. § 42.63(b). Regardless, the differences in the
translations of paragraph 7 among the several translations do not add
meaningfully to our analysis of the import of the disputed language.
IPR2015-00083
Patent 8,197,172 B2

27
12, and 18; see also PO Resp. 41–42 (citing Ex. 1005, Fig. 12; Ex. 2016
¶ 121). Dr. Bottoms explains that moving body 3 in Figure 12 “runs on top
of the rail” to move articles laterally, but does not teach or suggest
combining the different embodiments of Figures 1 and 12. Ex. 2016 ¶ 121.
All of the embodiments of moving body 4 described in JPAP ’213 are
depicted as a lateral transfer unit (designated 17 in Figures 4–6 and
designated 20 in Figures 9–11) without a hoist and gripper. Ex. 1005 ¶¶ 24,
25, and 32–34. This is consistent with the purpose of moving body 4.
Moving body 4 is designed to provide only lateral transfer of articles B
between suspended rails 1 and 2, as the articles move into production
processing and then exit from production processing. Ex. 1005 ¶¶ 16, 23,
30, and Fig. 7. There is no indication of a need for a hoist and gripper on
moving body 4 when transferring articles laterally between suspended rails 1
and 2. The embodiment of Figure 12 (Figure 18 is to like effect), below,
depicts lateral transfer of articles B on top of moving body 3 without a hoist.

Ex. 1005, Fig. 12. As explained by Dr. Bottoms with respect to Figure 12,
above, there is no teaching or suggestion in JPAP ’213 that the vertical hoist
mechanism of moving body 3 in Figure 1 should be combined with the
lateral transfer mechanism of moving body 4 (depicted as moving body 3 in
Figures 12 and 18), which are designed for different functions in the
IPR2015-00083
Patent 8,197,172 B2

28
disclosed conveyance system. See Ex. 2016 ¶ 121.9 This conclusion is
confirmed by the descriptions of Figures 12 and 18. Ex. 1005 ¶¶ 35
(Moving body 3 in Figure 12 has “the same configuration as moving body 4
. . . to move article B in the lateral direction of the moving body to transfer
article B.”), 39 (“an article transfer means BM is provided to move article B
on moving body 3 in the width [lateral] direction of the moving body to
transfer article B.”).
Petitioner, moreover, does not analyze the lateral transfer mechanism
disclosed and described in JPAP ’213 Figures 12 and 18 or provide evidence
of how one skilled in the art would understand such a mechanism to work.
Pet. 35 (citing Ex. 1028 ¶¶ 107); see also Reply 10. Not only does
Dr. Sturges base his opinion on an incorrect interpretation of JPAP ’213
paragraph 7, but he does not analyze or discuss the transfer mechanism
(“article transfer means”) actually shown and described in Figures 12
and 18. Id. ¶ 107. In the absence of a more particularized analysis to
explain the lateral transfer mechanism disclosed in the context of the various
embodiments of JPAP ’213, we are not persuaded by Petitioner’s evidence
or argument.
For the reasons given above, we are not persuaded that Figures 12 and
18 support Petitioner’s argument that JPAP ’213 discloses, teaches, or
expressly contemplates a lateral transfer mechanism on the side of moving
body 3 in Figure 1.

9 We do not rely on Dr. Bottoms’ discussion of the Japanese IP High Court
decision referenced in paragraph 121 of his Declaration.
IPR2015-00083
Patent 8,197,172 B2

29
5. Petitioner’s motivation-to-combine argument
Petitioner argues that a person of ordinary skill in the art would have
been motivated to modify moving body 3 of JPAP ’213 Figure 1 to
incorporate the lateral transfer device of JPAP ’237, because JPAP ’213
“expressly contemplates that rail-mounted vehicles 3 may be configured to
do the work of transferring pods B laterally to and from article retaining
units BS.” Pet. 51–52 (citing Ex. 1005 ¶ 7). Petitioner argues that the
proposed modification would have been obvious as an alternative to
swinging the table 11 of JPAP ’213. Id. at 51. Dr. Sturges emphasizes that
because JPAP 213 “expressly contemplates” modifying moving body 3 in
Figure 1 such that it could move articles B (cassette pods) laterally to and
from the storage tables, it would have been obvious to one of skill in the art
to modify moving body 3. Ex. 1028 ¶ 165. Dr. Sturges, however, does not
explain why such an application would have been obvious to one of ordinary
skill. Dr. Sturges merely re-emphasizes that “[s]ince the ‘213 publication
already contemplates configuring a rail-mounted vehicle to do the work of
moving cassette pods B to and from storage locations BS, this is all the more
reason why it would have been obvious to modify the prior art system in
view of the ‘237 publication.” Id.
6. JPAP 237
JPAP ’237 Figure 3, below, depicts a conveyance system for
transporting cassette boxes of semiconductor wafers in a manufacturing
facility. Ex. 1012 ¶ 12.
IPR2015-00083
Patent 8,197,172 B2

30

Ex. 1012, Figure 3. The conveyance system of JPAP ’237 Figure 3, above,
like the conveyance system depicted in JPAP ’213 Figure 7, may be an
overhead system “disposed at the ceiling” that comprises central loop 18 of
track 13 and several loops of branch tracks 20 oriented orthogonally to the
central loop. Id. ¶¶ 12, 13. Each loop of track guides a “conveyance truck”
(not shown) for conveying semiconductor cassettes to and from
manufacturing process locations 16, which are located adjacent to each of
the branch loops. Id. Stockers 15 house semiconductor cassettes and are
arranged adjacent to smaller track branches 19.
JPAP ’237 Fig. 1, below, depicts a sectional view of conveyance truck
21 “running on” track 13. Id. ¶ 14.
IPR2015-00083
Patent 8,197,172 B2

31

Ex. 1012, Fig. 1. The lower part of the conveyance truck shown in Figure 1
comprises truck body 22 housed within track 13, including wheels 24, linear
motor 30, and support strut 31 for supporting “goods stand” 38 and
semiconductor cassette housing 39. Id. ¶¶ 14–17. The upper portion of the
conveyance truck depicts “transfer device” 40 that includes extendable arm
42, fixed to the top of cassette housing 39a, which “advances and retreats
freely in the horizontal direction . . . orthogonal to the running direction of
the conveyance truck [shown in double-dot lines].” Id. ¶ 18. Transfer
device 40 also includes hoist 43 (winch 46, wire 45, and chuck 47) for
gripping semiconductor cassette box 49 at grip 50. Id. ¶ 19. When arm 42
is extended laterally “to the side of the conveyance truck 21 [double-dot
lines],” the transfer device lowers chuck 47, grips semiconductor cassette
box 49 (Figure 2), hoists the cassette box up, and retracts arm 42 such that
semiconductor cassette pod 49 is housed within cassette housing 39 and
ready for transport to storage stockers 15 and manufacturing process
IPR2015-00083
Patent 8,197,172 B2

32
locations 16. Id. ¶¶ 12, 20, 22. Counterweight 51 “advances and retreats
freely in the direction opposite the extending direction of the arm 42” to
stabilize the transfer device during operation. Id. ¶ 21.
Thus, transfer device 40 is configured to provide lateral and vertical
movement of chuck 47, which acts as a gripper for semiconductor cassette
pod 49.
7. Analysis
Dr. Sturges relies on an incorrect interpretation of JPAP ’213
paragraph 7 as providing the motivation for one of ordinary skill in the art to
add the lateral transfer device from the conveyance truck of JPAP ’237 to
moving body 3 in JPAP ’213 Figure 1. Dr. Sturges, moreover, does not
provide a reasoned analysis based on the disclosures and embodiments of
JPAP ’213 and JPAP ’237, in the context of the knowledge and skill level of
a degreed engineer with 3–5 years of experience developing automated
material handling systems. Dr. Sturges does not explain why and how one
of ordinary skill would have selected the lateral transfer device from the
conveyance truck of JPAP ’237 for use with moving body 3 in JPAP ’213
Figure 1. Ex. 1028 ¶¶ 162–165. For example, there is no explanation of
why one of ordinary skill would use the lateral transfer device from JPAP
’237, given that mechanically moveable storage tables already are used to
effect lateral transfer of articles B on both sides of moving body 3 in JPAP
’213 Figure 1. See id. Even if the proposed modification were to be made,
Dr. Sturges does not account for counterweight 51 in JPAP ’237, which
extends laterally to the opposite side of extendable arm 42, or explain why
the counterweight would not interfere with the articles and storage tables
located on the opposite side of moving body 3 in JPAP ’213 Figure 1. Id.;
IPR2015-00083
Patent 8,197,172 B2

33
see also Mot. Observ. 4–5 (quoting Ex. 2041, 70:22–71:15 (“Q. [Y]ou did
not provide any testimony that the hoist vehicle of the JPAP ’213 reference
can utilize the robotic arm on one side while maintaining the swinging
shelves on the other side; correct? A. That’s correct.”)). To the extent
Petitioner argues that Dr. Sturges has provided evidence on this point (Tr.
83:9–13), such evidence has not been cited in the Petition or the Reply, nor
have we located such evidence. Pet. 48–58 (citing Ex. 1028 ¶¶ 57, 157–
196); Reply 12–13 (citing Ex. 1028 ¶¶ 162–65, and 169); Mot. Observ., 2–3
(quoting Ex. 2041, 71:23–72:9 (“Q. [Y]ou did not address whether it would
have been necessary to change the functional relationship between the
swinging shelf and the hoist vehicle of the JPAP ’213 reference; correct? A.
That’s accurate.”)).10
Dr. Sturges’ deposition testimony, regarding his motivation-to-
combine testimony at paragraphs 164 and 165 of his Declaration, does not
persuade us to take a different view. Ex. 1034, 163:12–166:10, 179:12–
180:16 (Dr. Sturges indicating his deposition testimony concerning a reason
to combine regarding the ’153 patent applies to the declaration testimony
regarding the ’172 patent). Dr. Sturges acknowledges that in paragraph 165
of his Declaration he relies only on Petitioner’s interpretation of JPAP ’213
paragraph 7 as “expressly contemplate[ing]” the modification of moving
body 3 in Figure 1 to transfer articles B laterally to and from storage tables
11. Ex. 1034, 165:9–17. Dr. Sturges further testifies that in paragraph 164

10 To the extent Petitioner relies on “reasonable inferences” to be drawn
from the disclosure of the prior art references, we are not persuaded by
Petitioner’s argument. Resp. Observ. 5.
IPR2015-00083
Patent 8,197,172 B2

34
of his Declaration he provides “a pretty good example” of the teaching,
suggestion, or motivation for one of ordinary skill to make the asserted
modification of JPAP ’213 based on JPAP ’237. Id. at 165:18–166:10. A
review of Dr. Sturges’ Declaration paragraph 164, however, reveals nothing
more than a conclusory paraphrasing of KSR International Co. v. Teleflex
Inc., 550 U.S. 398 (2007). There is no analysis of the prior art or discussion
of why one of ordinary skill in the art, without the benefit of hindsight,
would have been motivated to make the asserted modification of moving
body 3 in JPAP ’213 Figure 1, or how such a modification might work with
a reasonable expectation of success. Ex. 1028 ¶ 164.
A conclusion of obviousness “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 the invention would
have selected and combined the prior art elements in the normal course of
their work to yield the claimed invention. Id. Here we have rejected
Petitioner’s interpretation of JPAP ’213 paragraph 7 that underpins its
motivation to combine argument and Dr. Sturges’ corresponding testimony.
See Section II.C.3 above. Although Petitioner and Dr. Sturges do provide
evidence of known alternatives for laterally transferring semiconductor
cassette pods in overhead rail conveyance systems, (Pet. 50–51 (citing
Ex. 1028 ¶ 162)), their analysis of a reason or motivation to combine the
systems in the manner claimed in the ’172 patent is lacking. The
insufficiency of the evidence and analysis is particularly acute when the
assertion that JPAP ’213 paragraph 7 “expressly contemplates” such a
IPR2015-00083
Patent 8,197,172 B2

35
combination is removed from the analysis.
Petitioner’s remaining argument, that it would have been obvious for
a person of ordinary skill to make the asserted modification because it was
one of a “finite number of identified, predictable solutions” and “an
arrangement of old elements . . . yielding no more than one would expect
from such an arrangement” is little more than a conclusory summary of KSR
without the incumbent analysis based on the facts and evidence of the
present case. Pet. 51 (citing Ex. 1028 ¶ 164); see also Reply 7–8, 12–13
(citing Ex. 1028 ¶¶ 162–165). For example, Petitioner argues that “any
mechanical engineer would have understood that the number of moving
mechanisms should always be reduced when possible” in support of its
motivation to combine argument. Reply 12 (citing Ex. 1005 ¶ 7; Ex. 1028
¶ 165). Petitioner’s cited evidence does not support the statement; rather it
relies on an incorrect interpretation of JPAP ’213 paragraph 7. Dr. Sturges
also acknowledges in his deposition that paragraph 165 of his Declaration
relies only on Petitioner’s incorrect interpretation of JPAP ’213 paragraph 7.
Ex. 1034, 165:9–17 (“Q. [L]ooking at paragraph 165, I don’t see any
reference to anything besides paragraph 7 of the ’213 reference. Right? A.
No. 165 doesn’t have any other cite.”). Neither Petitioner nor Dr. Sturges,
moreover, provides a meaningful mechanical analysis or explanation beyond
citing JPAP ’213 paragraph 7 in support of Petitioner’s motivation to
combine argument.
In short, Petitioner’s conclusory paraphrasing of KSR is insufficient to
satisfy its burden, particularly without the support of Petitioner’s
interpretation of JPAP ’213 paragraph 7. See In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained
IPR2015-00083
Patent 8,197,172 B2

36
by mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.”) (quoted with approval in KSR, 550 U.S. at 418). Therefore,
for the reasons given above, we determine that Petitioner has not satisfied its
burden of proving the asserted obviousness of claims 1–20 over JPAP ’213
and JPAP ’237 by a preponderance of the evidence.11
D. Patent Owner’s Motion to Exclude Evidence
Patent Owner seeks to exclude Exhibit 1038 and ¶¶ 3–4 of
Exhibit 1040 filed by Petitioner with Petitioner’s Reply. Mot. Excl. 1
(Paper 47). Petitioner opposes the motion to exclude. Pet. Excl. Opp. 4–14
(Paper 56). Exhibit 1038 is a confidential product development plan dated
September 25, 2002, and produced by Petitioner in this proceeding. Exhibit
1040 is a Second Declaration of Dr. Sturges, and paragraphs 3–4 contain his
testimony explaining aspects of the confidential product development plan
of Exhibit 1038. Petitioner relies on Exhibit 1038 and paragraphs 3–4 of
Exhibit 1040 to rebut Patent Owner’s argument that Petitioner copied Patent
Owner’s invention claimed in the ’172 patent. Reply 20, 22, and 25. Patent
Owner seeks to exclude Exhibit 1038 and paragraphs 3–4 of Exhibit 1040 as
irrelevant (Fed. R. Evid. 401, 402), inadmissible hearsay (Fed. R.

11 In view of our determination, we need not consider Patent Owner’s
objective evidence of nonobviousness. See Transocean Offshore Deepwater
Drilling, Inc., v. Maersk Drilling USA, Inc., 699 F.3d 1340, 1349 (Fed. Cir.
2012) (“objective evidence of nonobviousness . . . may be sufficient to
disprove or rebut a prima facie case of obviousness”). PO Resp. 46–60; see
also Reply 18–25.

IPR2015-00083
Patent 8,197,172 B2

37
Evid. 801(c)), and unauthenticated (Fed. R. Evid. 901). Mot. Excl. 1–8. We
do not rely on or address Patent Owner’s asserted objective evidence of
nonobviousness or Petitioner’s rebuttal evidence in our Decision. Therefore,
Patent Owner’s motion to exclude Exhibits 1038 and paragraphs 3–4 of
Exhibit 1040 is dismissed as moot.
III. CONCLUSION
For the reasons given above, Petitioner has shown by a preponderance
of the evidence that claims 1, 3, 4, 9, 11–15, 17 and 20 are unpatentable as
anticipated by JPAP ’213. Petitioner, however, has not shown by a
preponderance of the evidence that claims 1–20 are unpatentable as obvious
over JPAP ’213 and JPAP ’237.
IV. ORDER
Accordingly, it is
ORDERED that claims 1, 3, 4, 9, 11–15, 17 and 20 of the ’172 patent
are held unpatentable;
FURTHER ORDERED that claims 2, 5–8, 10, 16, 18, and 19 of the
’172 patent have not been shown by a preponderance of the evidence to be
unpatentable;
FURTHER ORDERED that Patent Owner’s Motion to Exclude
Evidence is dismissed as moot.
FURTHER ORDERED that, because this is a Final Written Decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

IPR2015-00083
Patent 8,197,172 B2

38
FOR PETITIONER:
Mark J.Thronson
Dipu A. Doshi
Blank Rome LLP
MThronson@BlankRome.com
Daifuku.IPR@BlankRome.com

FOR PATENT OWNER:
David L. McCombs
Thomas B. King
Greg J. Michelson
Gregory Huh
HAYNES AND BOONE, LLP
david.mccombs.ipr@haynesboone.com
ipr.thomas.king@haynesboone.com
greg.michelson.ipr@haynesboone.com
gregory.huh.ipr@haynesboone.com

Jim Warriner
David Ben-Meir
jim.warriner@nortonrosefulbright.com
david.ben-meir@nortonrosefulbright.com