DeLaval International ABv.Lely Patent N.V.

Patent Trial and Appeal Board

Feb 20, 2015

09698433 (P.T.A.B. Feb. 20, 2015)

Trials@uspto.gov Paper 42
Tel: 571-272-7822 Entered: February 20, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
DELAVAL INTERNATIONAL AB,
Petitioner,
v.
LELY PATENT N.V.,
Patent Owner.
_______________

Case IPR2013-00575
Patent 6,443,094 C2
_______________

Before TONI R. SCHEINER, BENJAMIN D. M. WOOD, and
SCOTT E. KAMHOLZ, Administrative Patent Judges.

WOOD, Administrative Patent Judge.

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

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I. INTRODUCTION
A. Background
Petitioner DeLaval International AB (“Petitioner”) filed a Petition
(Paper 1, “Pet.”) requesting inter partes review of claims 1–10 of U.S.
Patent No. 6,443,094 C2 (Ex. 1001, “the ’094 patent”). Lely Patent N.V.
(“Patent Owner”) filed a Preliminary Response (Paper 11, “Prelim. Resp.”).
We instituted an inter partes review on the following grounds of
unpatentability:1
Reference[s] Basis Claims Challenged
Rose2 § 102(b) 1 and 4–9
Rose and Chandler3 § 103(a) 1 and 4–9
Rose, Chandler, and Ornerfors4 § 103(a) 2 and 3
Rose, Chandler, and Phillips5 § 103(a) 10

After the Board instituted trial, Patent Owner filed a Patent Owner
Response (Paper 26, “PO Resp.”), as well as a contingent Motion to Amend
seeking to substitute claims 11–20 for original claims 1–10. Paper 27
(“Mot. to Amend”). Petitioner filed a Reply to Patent Owner’s Response
(Paper 31, “Pet. Reply”), and an Opposition to the Motion to Amend (Paper
32, “Opp. to Mot. to Amend”). Patent Owner then filed a Reply in support
of its Motion to Amend. Paper 34 (“Reply to Opp. to Mot. to Amend”).

1 Decision to Institute (Paper 13, “Dec.”) 23.
2 British Patent No. 1,415,318 to Rose (Nov. 26, 1975) (Ex. 1002).
3 British Patent No. 1,398,596 to Chandler (June 25, 1975) (Ex. 1004).
4 WO 97/15183 to Ornerfors (May 1, 1997) (Ex. 1005).
5 US 3,765,373 to Phillips (Oct. 16, 1973) (Ex. 1007).
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Oral Hearing was held on September 12, 2014, and the Hearing Transcript
(Paper 41, “Tr.”) has been entered in the record.
We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
Decision is entered pursuant to 35 U.S.C. § 318(a). We determine that
Petitioner has shown by a preponderance of the evidence that the challenged
claims are unpatentable. We deny Patent Owner’s Motion to Amend.
B. Related Proceedings
The ’094 patent has been asserted in an infringement action titled
Daritech, Inc. v. Green Source Automation, LLC, Case No. 1:11-cv-156
(C.D. Cal. Jan. 27, 2011). Pet. 54. Daritech is Patent Owner’s predecessor-
in-interest. Paper 10, 1. Patent Owner informs us that this matter has been
resolved. Id. The defendant in that proceeding, Green Source Automation,
initiated two ex parte reexaminations of the ’094 patent (Appl. Nos.
90/011,755 and 90/012,285), which also have been resolved. Id. The first
reexamination resulted in no amendments to the claims. Ex. 1001, ’094 C1.
The second reexamination resulted in amendments to claim 1. Id. at
’094 C2. Finally, Petitioner informs us that Patent Owner filed U.S. Appl.
No. 14/476,979 seeking reissue of the ’094 patent. Paper 40, 1.

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C. The ’094 Patent
The ’094 patent relates to an apparatus for automatically sanitizing the
udder of a cow, after it has been milked. Ex. 1001, Abstract. The system is
implemented on a circular, rotating milking parlor. Id. at 1:26–27, Fig. 1.
Figure 1 of the ’094 patent is reproduced below:

Figure 1 depicts “conventional” milking parlor 20 on which the
automatic cleaning device 28 is installed. Id. at 3:47. Milking parlor 20
comprises platform 22, which continuously rotates at a relatively low speed
so that cows can step onto and off of the platform with little difficulty;
perimeter railing 26 surrounding the platform; and inwardly facing stalls 42,
which hold cows 24. Id. at 3:47–55. As platform 22 rotates, the stalls pass
by six locations where portions of the milking operation occur. Id. at 3:56–
59. Each cow 24 enters at entry location 30, where a milking operator
washes its udder before milking. Id. at 3:62–66. A “claw,” used to draw
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milk from an udder using low pressure, is attached to the cow’s udder at
location 32. Id. at 1:14–16, 3:66–67. Milk is extracted at milking location
34, and a spring-loaded device withdraws the claw at removal location 36.
Id. at 4:2–7. At udder cleaning location 38, cleaning device 28 sprays the
cow’s udder with disinfectant. Id. at 4:7–10. The cow backs out of stall 42
at exit location 40. Id. at 4:10–11.
Figures 2 and 4 of the ’094 patent are reproduced below:

Figures 2 and 4 depict in greater detail udder cleaning device 28.
Each stall 42 is defined by two posts 43 at the perimeter of platform 22. Id.
at 4:21–23.6 As platform 22 rotates, each vertical post 43 contacts
horizontal arm 66 of contact sensor 56 (shown in figure 3), which indicates
that a stall has reached the cleaning location in front of the cleaning
apparatus. Id. at 4:23–26, 58–62. An optical sensor 58 detects whether a

6 Although Figure 2 uses reference number 43 to refer to the posts, the
written description refers to “posts 44.” Ex. 1001, 4:21. We will conform to
Figure 2’s reference number.
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cow is occupying stall 42, and if so, arm 46 moves between the cow’s hind
legs, sprays the udder with disinfectant from nozzle 47 (not depicted but part
of dispersion portion 80), and then retracts. Id. at 4:20–31.
D. Illustrative Claims
Sole independent claim 1 of the ’094 patent is reproduced below:7
1. A system for cleaning udders of cows in a milking parlor,
where there is a plurality of milking stalls arranged on a moving
platform to move through a milking cycle, and said parlor
comprises a milk extracting location where milking machines
extract milk, and an exit location, said system comprising:
a) an udder cleaning apparatus positioned at a cleaning
location intermediate the milk extracting location and
the exit location, with said stalls passing by said
cleaning location, said cleaning apparatus comprising:
i) a mounting structure at the cleaning location;
ii) a cleaning section which is movable between a
retracted position which is out of a path of travel of
the stalls and a cleaning position when the cleaning
section discharges cleaning fluid to clean an udder
of the cow which is in one of said stalls which is at
the cleaning location;
b) a control section comprising a location sensor responsive
to location of the stalls and to provide signals
identifying arrival times at which each of the stalls is at
the cleaning location, said control section being
arranged to cause the cleaning section to move, relative
to the arrival times, from the retracted position to the
cleaning position to discharge said cleaning fluid
toward the udder of the cow, then to retract the cleaning
section from the cleaning position to complete a
cleaning cycle, and when the stall in the cleaning
location moves from the cleaning location, to again

7 Claim 1 appears as amended in Reexamination No. 90/012,285. See Ex.
1001, ’094 C2.
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cause the cleaning section to move to the cleaning
position to initiate a subsequent cleaning cycle as a
following stall is arriving at the cleaning location.

II. ANALYSIS
A. Claim Construction
“A claim in an unexpired patent shall be given its broadest reasonable
construction in light of the specification of the patent in which it appears.”
37 C.F.R. § 42.100(b); see In re Cuozzo Speed Tech., LLC, ---F.3d---, 2015
WL 448667, *7 (Fed. Cir. Feb. 4, 2015) (“We conclude that Congress
implicitly adopted the broadest reasonable interpretation standard in
enacting the AIA.”). Under that standard, the claim language should be read
in light of the specification, as it would be interpreted by one of ordinary
skill in the art. In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir.
2010). Thus, we generally give claim terms their ordinary and customary
meaning. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
2007) (“The ordinary and customary meaning is the meaning that the term
would have to a person of ordinary skill in the art in question.”) (internal
quotation marks omitted).
We expressly interpret below only those claim terms that require
analysis to resolve arguments related to the patentability of the challenged
claims; all other terms will be accorded their ordinary and customary
meaning as would be understood by one of ordinary skill at the time of the
invention.
1. “stalls passing by said cleaning location”
In its Preliminary Response, Patent Owner argued that the phrase
“said stalls passing by said cleaning location” requires that the stalls, and the
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platform on which they are mounted, be in “continuous” motion past the
cleaning location. Prelim. Resp. 2. In other words, under Patent Owner’s
interpretation, the language would not encompass intermittent movement in
which a stall arrives at the cleaning location, pauses, and then moves past the
cleaning location. But in the decision to institute, the panel construed “stalls
passing by said cleaning location” according to its ordinary and customary
meaning and not to required continuous rotation of the stalls. Dec. 11.8
Patent Owner renewed its proposed construction at trial, primarily
relying, as it did before institution, on the Specification’s description of an
embodiment in which “platform 22 rotates continuously.” PO Resp. 18.
(citing Ex. 2001, 4:12–14 (emphasis added)). Patent Owner also relies on
the May 5, 2013 “Notice of Intent to Issue Ex Parte Reexamination
Certificate,” (“NIRC”), issued in ex parte reexamination no. 90/012,285
(“the ’285 Reexam”), in which the Examiner confirmed the patentability of
the ’094 patent claims. Id. (citing Ex. 2010, 5). Patent Owner cites the
NIRC for the proposition that “[the ’094 patent] specifically requires that the
insertion and retraction of the cleaning section occur ‘with said stalls passing
by said cleaning location,’” i.e., that the cleaning section moves while the
stalls are moving. Id. According to Patent Owner, such continuous
movement of the platform is necessary to allow “the carousel itself as a
timing unit to synchronize movement of the cleaning section relative to the

8 Patent Owner also argued, in its Preliminary Response, that claim 1
requires that the retraction of the cleaning section be triggered by the
location sensor. Prelim. Resp. 10–11. But in the Institution Decision, the
panel determined that claim 1 only requires that the deployment of the
cleaning section be triggered by the location sensor. Id. at 11–13. Patent
Owner does not challenge this determination in its Response.
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stall so as to avoid tripping up the cow standing therein.” Id. Petitioner
disagrees with Patent Owner’s proposed construction, arguing, inter alia,
that the construction improperly imports a feature from the specification into
the claims. Pet. Reply 7 (citing Liebel-Flarsheim Co. v. Medrad, Inc., 358
F.3d 898, 906 (Fed. Cir. 2004)).
“As with any claim construction analysis, we begin with the claim
language.” In re NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir. 2011) (citing
Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc)).
We find nothing in claim 1—or, for that matter, any of its dependent
claims—that requires the stalls to be capable of moving past the cleaning
location in a continuous manner, or that excludes intermittent movement
past the cleaning location. For example, claim 1 refers several times to the
stalls being “at” the cleaning location, which seems to encompass the
possibility that the stalls are briefly stopped at the cleaning location. Ex.
1001, 9:14–15, 18–19, 29.
Further, we agree with Petitioner that the Specification does not
mandate the narrower construction that Patent Owner proposes. Patent
Owner is correct that the Specification describes an embodiment in which
the platform “rotates continuously.” Ex. 1001, 4:11–12. But “while the
specification [should be used] to interpret the meaning of a claim, courts
must not import[] limitations from the specification into the claim.” In re
Trans Texas Holdings Corp., 498 F.3d 1290, 1299 (Fed. Cir. 2007)
(alterations in original) (citing Phillips v. AWH Corp., 415 F.3d 1303 (Fed.
Cir. 2005 (en banc) (internal quotation marks omitted)). It is only when “the
patentee has demonstrated a clear intention to limit the claim scope using
words or expressions of manifest exclusion or restriction” that the scope of a
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claim is properly restricted to that of a disclosed embodiment. Liebel-
Flarsheim, 358 F.3d at 906. Patent Owner does not direct us to any
language in the Specification that it asserts demonstrates such a clear
intention to limit the claim scope. Nor do we find any such language. We
are also unable to find support in the Specification for Patent Owner’s
contention that continuous movement of the platform is required to “avoid
tripping up the cows” when the cleaning section deploys and retracts. As for
the NIRC, although statements made during the prosecution history,
including reexamination proceedings, may be relevant to determining claim
scope, E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d
1430, 1439 (Fed. Cir. 1988), we are unable to find anything in the NIRC that
disclaims the scope of claim 1 to exclude intermittent motion, or that
otherwise supports Patent Owner’s interpretation.
Accordingly, we construe the language “said stalls passing by said
cleaning location” according to its ordinary and customary meaning, which
encompasses both continuous and intermittent motion.
2. a plurality of milking stalls arranged on a moving
platform
Petitioner contended in its Petition that the phrase “a plurality of
milking stalls arranged on a moving platform” constitutes “structural
limitations of the claims,” even though the phrase appears in claim 1’s
preamble. Pet. 7–8. Patent Owner did not dispute this contention in either
its Preliminary Response or Patent Owner Response. We agree with
Petitioner that the body of claim 1 “expressly refers and relies upon both the
plurality of stalls and the moving platform on which they are arranged to
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define structural recitations in the claim.” Id. Accordingly, we agree that
claim 1 calls for a moving platform having a plurality of stalls.
B. Claims 1 and 4–9, Anticipation by Rose
Petitioner contends that Rose describes each limitation in claims 1 and
4–9, and therefore anticipates the claims under 35 U.S.C. § 102(b). Pet. 11–
23. In support of this contention, Petitioner provides a claim chart
demonstrating where Rose discloses each limitation of the claims, as well as
the declaration testimony of Jonathan Cagan, Ph.D, P.E. Id.; Ex. 1011
(Cagan Decl.).
1. Rose
Rose describes a spray device for automatically disinfecting cows’
udders after milking. Ex. 1002, 1:9–26. The device is intended to be
installed at “one or more locations around the periphery of the rotatable
platform” of a “rotary type animal milking and/or treatment apparatus.” Ex.
1002, 1:27–41. Figure 1 of Rose, reproduced below, depicts Rose’s
automated spray device.
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As shown in Rose Figure 1, Rose’s automated spray device comprises
swing arm 10 pivotally mounted to rump rail 12 of a rotary type milking
apparatus, the milking apparatus including rotatable platform 13 that rotates
about a vertical axis relative to rump rail 12. Id. at 1:69–75. Piston and
cylinder device 15, pivotally mounted to support 14, extends from rump rail
12 and actuates swingable spray arm 23. Id. at 1:78–83.
In operation, a cam on rotating platform 13 contacts actuating switch
33, which activates solenoid 31 via timing relay 32. Id. at 2:29–32, Fig. 4.
Solenoid 31 in turn activates vacuum control valve 17, causing piston and
cylinder device 15 to pivot swing arm 10 from a retracted position (indicated
in dotted lines) to a cleaning position between the hind legs of the cow
standing on platform 13. Id. at 2:25–39. Spray nozzles 24 dispense a
sanitizing liquid over the cow’s udders. Id. at 2:42–46. After a period of
time determined by timing relay 32, solenoid 31 deenergizes, activating
vacuum control valve 17 to cause piston and cylinder device 15 to pivot
swing arm 10 back into the inoperative position. Id. at 2:49–55.
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Two spray devices may be provided on the rotary-type milking
apparatus, one of which is located near the position where the cows exit
platform 13. Id. at 2:58–65. Rose twice refers to UK Patent 1,398,596 (i.e.,
Chandler, described below) as an example of a rotary-type milking apparatus
suitable for use with Rose’s automated spray device. Id. at 1:75–78; 2:74–
77.
2. Analysis
a. Claim 1
A prior art reference anticipates a patent claim under 35 U.S.C. § 102
if it discloses every claim limitation in the claimed arrangement. In re
Montgomery, 677 F.3d 1375, 1379–80 (Fed. Cir. 2012). Patent Owner
makes two arguments against a determination that Rose anticipates claim 1.
First, Patent Owner argues that Rose does not disclose the “plurality of
milking stalls.” PO Resp. 9. Second, Patent Owner argues that Rose does
not disclose a cleaning location that is “intermediate to the milk extracting
location and the exit location.” Id. at 9–10. We disagree on both counts.
Regarding the plurality of milking stalls, Rose teaches attaching its
spray device to the rump rail of the rotary type milking apparatus described
in Chandler, which apparatus has a plurality of milking stalls. Ex. 1004,
1:9–22, Fig. 1. Because Rose teaches using its spray device with Chandler’s
milking apparatus, and Chandler’s milking apparatus comprises a rotating
platform with a plurality of milking stalls, a person of ordinary skill would
have known that Rose teaches attaching its spray device to a milking
apparatus having a plurality of milking stalls. See In re Baxter Travenol
Labs, 952 F.2d 388, 390 (Fed. Cir. 1991) (holding that because a prior-art
reference “referred to Baxter’s commercial system and Baxter’s commercial
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systems utilized a DEHP-plasticized primary bag, it is clear that one skilled
in the art would have known that [the reference] was referring to a DEHP-
plasticized primary bag”).
We also agree with Petitioner that Rose describes a cleaning location
between the milking location and exit locations. Rose teaches that one of
the purposes of its automated spray device is to replace the manual udder
cleaning that occurs on a rotating platform after the cows are milked. Ex.
1002, 1:19–24, 2:7–12. Such cleaning necessarily would take place after the
milking location and before the exit location. Moreover, Rose teaches
locating the spray device near to the position where the cows leave the
platform 13, i.e., before the exit location. Id. at 2:62–65. Therefore, Rose
makes clear that its device is to be installed between the milking location
and the exit location.
After considering Petitioner’s and Patent Owner’s positions, as well as
their supporting evidence, we determine that Petitioner has shown by a
preponderance of the evidence that claim 1 is unpatentable under 35 U.S.C.
§ 102(b) as anticipated by Rose.
b. Claims 4–6
Claim 4 depends from claim 1 and additionally recites that “said
location sensor responds to location elements which are arranged to move
synchronously with said moving platform and are at spaced locations
corresponding to spacing of said stalls.” Claim 5 depends from claim 4 and
additionally recites that “said location sensor is a contact sensor and said
location elements are arranged to come into contact with said location sensor
as said platform moves.” Claims 6 depends from claim 5 and additionally
recites that “said location elements are physical components of the milking
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parlor which move sequentially into engagement with the location sensor
during movement of the platform.” Petitioner contends that Rose’s actuating
switch 33, 31’ corresponds to the claimed location sensor, and that cams
mounted to the moving platform at each stall location, which contact the
actuating switch to actuate the spray device, correspond to the claimed
location elements. Pet. 17; see Pet. 21–22 (citing Ex. 1002, 2:19–24, 74–77,
3:2–3, Fig. 5: Ex. 1004, 2:62–67). Patent Owner does not argue separately
the patentability of claims 4–6, and thus does not dispute these contentions.
We agree with Petitioner, and find that Rose discloses the claimed location
sensor and location elements. Accordingly, we determine that the
preponderance of the evidence of record demonstrates that Rose anticipates
each of claims 4–6.
c. Claims 7–9
Claim 7 depends from claim 1 and additionally requires that “said
cleaning section comprises an extension arm on which a cleaning fluid
dispensing portion is positioned, and said extension arm moves on a path of
travel from the retracted position to the cleaning position where at least a
portion of said extension arm is beneath the cow which is in the stall at the
cleaning location.” Claim 8 depends from claim 7 and additionally recites
that “said extension arm is arranged so that the path of travel extends
between two legs of the cow.” Claim 9 depends from claim 8 and
additionally requires that “said path of travel extends between two hind legs
of the cow.” Petitioner contends that Rose’s spray arm 23 and spray nozzles
24 correspond to the claimed extension arm and cleaning fluid dispensing
portion, respectively. Pet. 18 (citing Fig. 1). According to Petitioner, Rose
teaches that the path of travel for the spray device is between the cow’s hind
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legs. Id. (citing Ex. 1002, 2:37). Patent Owner does not separately argue the
patentability of claims 7–9, and thus does not dispute these contentions. We
agree with Petitioner, and find that Rose discloses the claimed extension arm
and cleaning fluid dispensing portion, arranged so that the path of travel
extends between the two hind legs of the cow. Accordingly, we determine
that the preponderance of the evidence of record demonstrates that Rose
anticipates claims 7–9.
C. Claims 1 and 4–9, Obviousness over Rose and Chandler
Petitioner argues that claims 1 and 4–9 would have been obvious over
Rose and Chandler. Pet. 26–36.
1. Chandler (Ex. 1004)
Chandler is a British patent relating to an animal milking apparatus.
The animals are carried in stalls provided on a platform that rotates
intermittently, each stop bringing one animal in line with an exit and another
in line with an entry. Figure 1, reproduced below, depicts Chandler’s
milking apparatus.
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Figure 1 of Chandler.
As shown in Figure 1, when platform 10 is stationary, stall 12 is
presented in line with entry 23, and a cow enters via a ramp. Platform 10 is
rotated, carrying the cow to the next station where operator No. 1 washes the
cow’s udders and applies teat cups 17. As the platform continues to be
rotated, the cow is automatically milked. Eventually, the cow reaches
operator No. 2 (see Fig. 9), who removes the teat cups. Id. at 3:34–37. With
each stop of platform 10, another cow enters via entry bridge 23, while
another exits via bridge 24. Id. at 3:29–33. Chandler discloses using cam
members 57, mounted below each stall 12 on track 26, to engage stop/start
switch 55 as platform 10 is rotated from one center of a stall to the next. Id.
at 2:60–67, Fig. 4. While the figures of Chandler depict the cows facing in
toward the center of the platform hub, the Specification indicates that stalls
12 may be arranged in a herringbone pattern, where the cows face
outwardly. Id. at 3:61–67.
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2. Analysis
a. Principles of Law
A claim is unpatentable under 35 U.S.C. § 103(a) “if the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which the
subject matter pertains.” 35 U.S.C. § 103; 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 ordinary skill in the art; and (4) objective evidence
of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
The level of ordinary skill in the art usually is evidenced by the references
themselves. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In
re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995).
b. Claim 1
Petitioner contends that “[i]t would have been obvious to one skilled
in the art to provide Rose’s platform with Chandler’s platform mounted
stalls to achieve the same and predictable result of securing and orienting
cows when they are present on the rotating platform.” Pet. 25. Petitioner
further argues that it would have been obvious “in light of Chandler to
provide Rose’s described switch-actuating cam as one of a plurality of such
cams spaced in correspondence with the spacing of the stalls, in order to
provide the same and predictable result of triggering the desired automatic
operation of Rose’s automated spray device each time a cow is presented to
the cleaning location.” Id. Moreover, according to Petitioner, a person of
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ordinary skill would have been motivated to combine Rose and Chandler
because, inter alia, “Rose expressly points the skilled artisan to the
disclosure in Chandler.” Id.
Patent Owner argues that Petitioner—or at least Petitioner’s expert,
Dr. Cagan—based the obviousness analysis on an incorrect level of ordinary
skill. See PO Resp. 13 (“Dr. Cagan is urging the creation of a person with
extraordinary skill in the art . . . and tailored to create the exact invention he
has been asked to examine.”). Patent Owner urges us to adopt Dr. Mein’s
opinion as to the level of ordinary skill. Id. at 16. Dr. Mein, however,
advocates a higher level of ordinary skill than does Dr. Cagan. Dr. Mein
criticizes Dr. Cagan’s proposed level of ordinary skill as “[m]ere mastery of
automation,” which Dr. Mein states is “not sufficient.” Ex. 2012 ¶ 29.
Instead, argues Dr. Mein, “the true definition of a person skilled in the
art . . . is one with an unusually wide range of skills including design
engineering, dairy science, cow behavior, dairy microbiology, the chemistry
of cleaning of milking equipment and, preferably, a practical appreciation of
the working conditions and attitudes of milking staff with (typically) limited
education.” Id. But the challenged claims are at least as likely to have been
obvious to someone having this level of skill than to someone having the
level of skill that Dr. Cagan advocates. See Innovention Toys, LLC v. MGA
Entertainment, Inc., 637 F.3d 1314, 1323 (Fed. Cir. 2011) (“A less
sophisticated level of skill generally favors a determination of
nonobviousness . . . while a higher level of skill favors the reverse”). Thus,
we need not resolve the parties’ dispute over the level of ordinary skill
because our obviousness determination would be the same under either
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standard. In any event, we determine that the level of ordinary skill is best
evidenced by the references themselves, particularly Rose and Chandler.
Patent Owner also argues that the combination of Rose and Chandler
does not teach all of claims 1’s limitations, because the combination does
not teach that the plurality of milking stalls must be in continuous motion as
they pass by the cleaning location. See PO Resp. 18 (asserting that “Dr.
Cagan’s conclusion of obviousness cannot be upheld” because Dr. Mein
concludes that the combination of Rose and Chandler “could only work in
the context of an intermittent carousel”). But we determined above that
claim 1 does not require the milking stalls to move continuously past the
cleaning location. Therefore, this argument is unpersuasive.
Finally, Patent Owner argues that any evidence of obviousness is
overcome by its showing of long-felt but unmet need for “automated teat
sanitization.” PO Resp. 22. According to Patent Owner, “if Rose or the
Rose/Chandler combination were such as to render the instant Claim 1
obvious, economic forces would have created a commercial race to the teat
sprayer.” PO Resp. 22. Relying on the testimony of its expert, Dr. Mein,
Patent Owner asserts that the need for an automated udder sanitizer became
apparent when dairies in New Zealand and Australia adopted automated
cluster pullers, which would have eliminated the need for one laborer but for
the continued need to disinfect the udders manually after milking. Id. at 22–
23; Ex. 2012 ¶ 36. Petitioner responds that Patent Owner does not support
its assertion of long-felt but unmet need with objective evidence, and does
not identify any claimed features that are responsible for satisfying the need.
Pet. Reply 11–12.
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“Evidence that an invention satisfied a long-felt and unmet need that
existed on the patent’s filing date is a secondary consideration of
nonobviousness.” Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324,
1332 (Fed. Cir. 2009). In the present case, however, we are not persuaded
that there was a long-felt but unmet need for “automated teat sanitization”
that existed on the patent’s filing date, as Patent Owner argues, because any
such need would have been met by Rose’s automated teat spray device. See
Geo. M. Martin Co. v. Alliance Machine Systems Int’l, LLC, 618 F.3d 1294,
1304–05 (Fed. Cir. 2010) (“Where the differences between the prior art and
the claimed invention are as minimal as they are here, however, it cannot be
said that any long-felt need was unsolved.”).
As discussed above (Sec. II.B.2.a), we find that Rose and Chandler
disclose all of the limitations of claim 1, arranged as in the claim. Further,
we agree with Petitioner that a person of ordinary skill would have been
motivated to combine Rose and Chandler because, inter alia, “Rose
expressly points the skilled artisan to the disclosure in Chandler.” Pet. 25.
After considering Petitioner’s and Patent Owner’s positions, as well as their
supporting evidence, we determine that Petitioner has shown by a
preponderance of the evidence that claim 1 is unpatentable under 35 U.S.C.
§ 103(a) over Rose and Chandler.
c. Claims 4–9
Patent Owner does not separately argue the patentability of claims 4–
9. As discussed above (Sec. II.B.2.b–c), Rose and Chandler teach all of the
additional limitations of claims 4–9. Therefore, upon review of claims 4–9,
as well as the contentions and evidence relied upon by Petitioner, we
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determine that the preponderance of the evidence of record demonstrates
that claims 4–9 would have been obvious over Rose and Chandler.
D. Claims 2 and 3, Obviousness over Rose, Chandler, and
Ornerfors
Claim 2 depends from claim 1 and further recites “a presence detector
to detect the presence of a cow in a stall which is at the cleaning location.”
Claim 3 depends from claim 2 and further requires that “said presence
detector comprises an electromagnetic detector which directs an
electromagnetic wave toward the stall at the cleaning location and responds
to the electromagnetic wave encountering a cow in the stall at the cleaning
location to permit the cleaning cycle to take place.” Petitioner relies on
Ornerfors to teach these additional limitations. Ornerfors describes an
apparatus for automatically detecting the location of a cow’s teat to
facilitate, e.g., cleaning the teat after milking. Ex. 1005, 2:1–4, 4:21–23,
7:3–5, Figs. 1a, 1d. In one embodiment, a signal reflecting means, such as a
metal plate or microchip, is applied onto or near the end of the teat. Id. at
7:3–5, 10:5–8, Fig. 5. Sensing means 8, such as a combined
transmitter/receiver, sends a signal to the signal reflecting means, which
returns the signal to the transmitter receiver to identify the teat’s location.
Id. at 10:8–13.
Petitioner contends that the signal transmitter/receiver necessarily
sends electromagnetic radiation to the signal reflecting means and receives
reflected electromagnetic radiation from the signal reflecting means. Pet.
38. Petitioner further contends that “Ornerfors and Rose address the same
technical feature of automatically positioning a spray arm beneath a cow’s
udder for post-milking treatment with a disinfecting spray,” and that “[o]ne
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skilled in the art would have recognized Ornerfors’ electromagnetic teat
location sensor as useful in Rose for the same purpose it is described in
Ornerfors—to guide the spray arm to a precise position beneath each teat.”
Id. at 39–40.
Patent Owner does not dispute Petitioner’s characterization of
Ornerfors or its contention that one of ordinary skill would be motivated to
combine Ornerfors with Rose and Chandler. Instead, Patent Owner argues
that Ornerfors “discloses nothing that would set forth a moving carousel, nor
any of the sensing electronics which would indicate when a stall had arrived
for teat sanitation.” PO Resp. 25. But Ornerfors is not relied to teach a
moving carousel or a device that determines when a stall moves into the
cleaning location; Rose and Chandler are relied on for those teachings. Pet.
18–20 (claim chart). Therefore, Patent Owner’s argument is not persuasive.
See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-
obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references.”).
After considering Petitioner’s and Patent Owner’s positions, as well as
their supporting evidence, we determine that Petitioner has shown by a
preponderance of the evidence that claims 2 and 3 are unpatentable under
35 U.S.C. § 103(a) over Rose and Chandler.
E. Claim 10, Obviousness over Rose, Chandler, and Phillips
Claim 10 depends from claim 8, which depends from claim 1. Claim
8 additionally recites that the “extension arm is arranged so that the path of
travel extends between two legs of the cow.” Claim 10 further recites that
the “extension arm is arranged so that the path of travel extends between a
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front leg and a hind leg of the cow.” Petitioner relies on Phillips to teach
these additional limitations. Pet. 43–45.
Patent Owner does not separately argue the patentability of claim 10,
but instead relies on arguments raised in support of the patentability of claim
1 (PO Resp. 25), which we found unpersuasive. Upon review of claim 10,
as well as the contentions and evidence relied upon by Petitioner, we
determine that the preponderance of the evidence of record demonstrates
that claim 10 would have been obvious over Rose, Chandler, and Phillips.
F. Motion to Amend
Patent Owner moves to substitute claims 11–20 for challenged claims
1–10 if we determine that the challenged claims are unpatentable. Mot. to
Amend. 2–3. As stated above, we determine that Petitioner has
demonstrated by a preponderance of the evidence that all of the challenged
claims are unpatentable. Therefore, Patent Owner’s motion is before us for
consideration. For the reasons set forth below, Patent Owner’s motion is
denied.
Proposed substitute claim 11 is an amended version of independent
claim 1. Id. at 2. Proposed substitute claims 12–20 are identical to and
would replace claims 2–10, but would depend from claim 11 rather than
claim 1. Id. at 3. Proposed substitute claim 11, with changes to claim 1
indicated, is reproduced below:
11. A system for cleaning udders of cows in a milking parlor,
where there is a plurality of milking stalls arranged on a moving
platform to move through a milking cycle, and said parlor
comprises a milk extracting region where milking machines
extract milk, and an exit location, said system comprising:
a) an udder cleaning apparatus positioned at a cleaning
location intermediate the milk extracting location and
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the exit location, with said stalls passing by said
cleaning location in continuous motion throughout the
milking cycle, said cleaning apparatus comprising:
i) a mounting structure at the cleaning location;
ii) a cleaning section which is movable between a
retracted position which is out of a path of travel of
the stalls and a cleaning position when the cleaning
section discharges cleaning fluid to clean an udder
of the cow which is in one of said stalls which is at
the cleaning location;
b) a control section comprising a location sensor responsive
to location of the stalls and to provide signals
identifying arrival times at which each of the stalls is at
the cleaning location, said control section being
arranged to cause the cleaning section to move, relative
to the arrival times, from the retracted position to the
cleaning position to discharge said cleaning fluid
toward the udder of the cow, then to retract the cleaning
section [form] from the cleaning position to complete a
cleaning cycle, and when the stall in the cleaning
location moves from the cleaning location, to again
cause the cleaning section to move to the cleaning
position to initiate a subsequent cleaning cycle as a
following stall is arriving at the cleaning location.

Mot. to Amend. 8–9.
As the movant, Patent Owner bears the burden of demonstrating, by a
preponderance of the evidence, that the proposed substitute claims are
patentable. 37 C.F.R. § 42.20(c); see 37 C.F.R. § 42.1(d) (noting that the
“default evidentiary standard [in proceedings before the Board] is a
preponderance of the evidence”). To demonstrate patentability, Patent
Owner must, inter alia, demonstrate that the proposed substitute claims are
patentable over the prior art of record, as well as prior art not of record but
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known to the patent owner. Idle Free Sys., Inc. v. Bergstrom, Inc., Case
IPR2012-00027, slip op. at 7 (PTAB June 11, 2013) (Paper 26).
In its Motion, Patent Owner asserts that the proposed claims are
patentable over two references not of record, but does not address the
patentability of the proposed claims over the prior art for which trial was
instituted, primarily Rose and Chandler. Mot. to Amend. 12–13. Patent
Owner’s failure to address the art of record is fatal to its motion, as the
patentability of substitute claim 11 over Rose and Chandler is far from self-
evident. It is undisputed that the feature that Patent Owner seeks to add to
claim 1, a continuously rotating milking platform, was “conventional” at the
time of the invention. See Ex. 1001, 3:47–48, 4:11–12 (continuously
rotating platform 22 part of “conventional” milking parlor 22). Indeed,
Patent Owner’s expert testifies that at the time the ’094 patent was filed, “the
overwhelming majority of rotary parlors in all major dairying nations
incorporated continuously moving platforms.” Ex. 2012 ¶ 35. Thus,
proposed claim 11 would represent the combination of a known and
commonly used milking apparatus with Rose’s automated spray device.
Neither Patent Owner nor its expert contend that it would have been beyond
ordinary skill at the time of the invention to modify Rose’s automated spray
device so that it could be used on a milking apparatus with a continuously
rotating platform. See Tr. 36:12–17. Patent Owner has not given us any
reason not to conclude that proposed claim 11 is simply the “combination of
familiar elements according to known methods . . . yield[ing] predictable
results.” KSR, 550 U.S. at 416. Thus, based on the current record, Patent
Owner has not carried its burden of demonstrating that proposed claim 11 is
patentable over the prior art of record.
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III. CONCLUSION
Petitioner has shown by a preponderance of the evidence that claims
1–10 of the ’094 patent are unpatentable under 35 U.S.C. § 102(b) and
35 U.S.C. § 103(a). Patent Owner’s Motion to Amend is denied.
IV. ORDER
Accordingly, it is
ORDERED that claims 1–10 of the ’094 patent are held
unpatentable; and
FURTHER ORDERED that Patent Owner’s Motion to Amend
is denied.
This is a final 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.

PETITIONER:

Jeffrey R. Snay
Jeff Goehring
Douglas V. Rigler
Young & Thompson
JSnay@Young-Thompson.com
JGoehring@Young-Thompson.com
DRigler@Young-Thompson.com

PATENT OWNER:

Mark L. Lorbiecki
Michael J. Folise
Lowe Graham Jones PLLC
Lorbiecki@LoweGrahamJones.com
Folise@LoweGrahamJones.com