Handi Quilter, Inc.v.Bernina International AG

Patent Trial and Appeal Board

Dec 30, 2014

10776355 (P.T.A.B. Dec. 30, 2014)

Trials@uspto.gov Paper 17
Tel: 571-272-7822 Entered: 30 December 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
HANDI QUILTER, INC. and TACONY CORPORATION,
Petitioners,

v.
BERNINA INTERNATIONAL AG,
Patent Owner.
_______________

Case IPR2014-00270
Patent 6,883,446 B2
_______________

Before FRED E. McKELVEY, JENNIFER S. BISK, and
MICHAEL J. FITZPATRICK, Administrative Patent Judges.

PER CURIAM.

DECISION
Request for Rehearing
37 C.F.R. § 42.71(d)

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I. SUMMARY
Handi Quilter, Inc. and Tacony Corporation (collectively, “Petitioner”)
request rehearing of a Board decision denying institution of an inter partes
review of claims 8-9, 11, 14-16, 22, and 32 (“relevant claims”) of U.S. Patent
No. 6,883,446 B2 (Ex. 1001) (“the ’446 patent”). Paper 9 (Non-Institution
Decision) entered June 16, 2014; Paper 10 (Request for Rehearing).
For reasons that follow, Petitioner’s Request for Rehearing is granted and
institution of an inter partes review is ordered.
II. Facts
In its Petition, Petitioner sought entry of an order instituting an inter partes
review of the relevant claims of the ʼ446 patent. Ex. 1001. See Paper 6 (Corrected
Petition).
Petitioner alleges that the relevant claims are unpatentable under 35 U.S.C.
§ 103 over the prior art, viz., Watabe (Ex. 1004) and Gordon (Ex. 1015). Paper 6
(Petition) 49-53.
Also relied upon by Petitioner is an Agilent Brochure (Ex. 1007). Paper 6
(Petition) 15-16.
We entered an order declining to institute an inter partes review. Paper 9
(Non-Institution Decision).
In declining to institute, we said:
[A]lthough Petitioner argues that a person of ordinary skill could
have modified Watabe to include features meeting the light source
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and measuring movement limitations, Petitioner does not explain
persuasively why a person of ordinary skill would . . . [have done]
so.

Paper 9, page 9 (italics in original).
Watabe describes a device that we have found anticipates Patent Owner’s
independent claim 1 (Ex. 1001, col. 12:10) calling inter alia for “detector means.”
Handi Quilter, Inc. v. Bernina Int’l AG, IPR2013-00364, slip op. 17-22 (PTAB
Sept. 25, 2014) (Paper 39) (Final Written Decision), notice of appeal to the Federal
Circuit filed Nov. 21, 2014 (Paper 40).
For the purpose of resolving the Request for Rehearing, claims 8 and 9 are
representative.
Claims 8 and 9 further limit the “detector means” of independent claim 1.
Claim 8 includes a “light source.” Ex. 1001, col. 12:54.
Claim 9 includes “optical means for measuring movement of . . . [a] stack
source along orthogonal X and Y axes.” Ex. 1001, col. 12:60-61.
The object of Patent Owner’s invention is set out in the ʼ446 patent.
The present invention is directed to a system for fastening
together two or more flexible planar layers and more particularly
to a quilting method and apparatus for enabling a user to readily
produce uniform stitches for fastening together a stack of fabric
layers.

[An] [a]pparatus in accordance with the invention permits a
user to freely manually move a stack of planar layers across a
planar bed, or plate, beneath an actuatable stitch head. The
apparatus includes a detector for detecting the movement of the
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stack proximate to the stitch head for controlling actuation of the
stitch head. Consequently, an apparatus in accordance with the
invention functions to automatically synchronize the delivery of
stitch strokes to the movement of the stack. This enables the user
to move the stack within a wide range of speeds, to start or stop
the stack movement at will, and to guide the stack in any direction
across the planar bed.

Ex. 1001, col. 2:13-28 (italics added).
According to Patent Owner’s specification:
Preferred embodiments of the invention employ a detector
capable of measuring stack surface movement without physically
contacting the stack. A preferred detector in accordance with the
invention responds to energy e.g., light, reflected from a surface of
the stack as it moves across the planar bed. The detector
preferably includes a detection window located to collect reflected
energy from a target area coincident with the stack surface (top
and/or bottom) within the machine's throat space.

More particularly, a preferred apparatus in accordance with
the invention includes a detector configured to detect stack
movement within the throat space of a quilting/sewing machine by
measuring the movement of at least one surface of the stack as it
moves across the planar bed. Stack movement is preferably
measured by determining translation of the stack along
perpendicular X and Y directions.

In a specific preferred embodiment, an optical detector is
employed to provide output pulses representative of incremental
translational movement of the stack along perpendicular X and Y
directions. The output pulses are then counted to determine the
distance the stack has moved. When the magnitude of movement
exceeds a predetermined magnitude or threshold, a “stitch stroke”
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command is issued to cause the stitch head to insert a stitch
through the stacked layers. As the user continues to freely move
the stack across the planar bed, additional stitch stroke commands
are successively issued to produce successive stitches
synchronized with the user controlled stack motion.

Ex. 1001, col. 2:29-56.

Fig. 2 of the ʼ446 patent is reproduced below:

Fig. 2 depicts a diagrammatic illustration
of an embodiment of the invention.

With reference to Fig. 2, the ʼ446 patent states:
Although the motion detector 64 of FIG. 2 can take many
different forms, including both noncontacting devices (e.g.,
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optical detector) and contacting devices (e.g., track ball), it is
much preferred that it detect stack movement without physically
contacting the fabric layers. Accordingly, a preferred motion
detector in accordance with the invention comprises a device for
responding to energy reflected from, or sourced by, the stack.
Although this energy can be of several different forms (e.g.,
ultrasonic, RF, magnetic, electrostatic, etc.), the preferred detector
embodiment employs an optical motion detector (represented in
FIG. 8) utilizing, for example, an optical chip ADNS2051
marketed by Agilent Technologies. Alternative detectors for
measuring stack can employ technologies such as accelerometers,
resistive devices, etc.

Ex. 1001, col. 5:43-57.
Fig. 8 of the ʼ446 patent is reproduced below:

Fig. 8 depicts a schematic illustration of
an optical motion detector.

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With reference to Fig. 8, the ʼ446 patent states:
FIG. 8 depicts a preferred motion detector 64 comprising a
housing 90 having a light collecting window 91. A light source,
e.g., a light-emitting diode (LED) 92, is mounted in housing 90
and illuminates (via mirrors 93 and window 91) a target area
coincident with the surface of backing layer 36 just above window
91. The light reflected from layer 36 is collected by a lens system
94 and is applied to the optical chip 95 (e.g., Agilent ADNS
2051). The chip 95 internally as includes both a tiny CMOS array
camera (not shown) which successively acquires images from the
target area at about 1500 pictures per second and an associated
digital signal processor or DSP (not shown). The signal processor
operates at several million instructions per second to detect
patterns in the acquired images and to determine, based on
changes in a sequence of successive images, how those patterns
have moved. As a consequence, the chip 95 is able to provide
output pulses on lead 96 representative of incremental translation
of the backing layer 36 portion coincident with the target area in
an X direction and output pulses on lead 97 representative of
incremental translation of the backing layer 36 in a Y direction.

Ex. 1001, col. 6:37-57.
Watabe describes the prior art problem it set out to solve as follows
(paragraph numbers and parentheticals omitted):
The present invention relates to a sewing machine that is
able to perform sewing while the amount of fabric fed is adjusted
manually.

Conventionally, in sewing machines that can perform
sewing while the amount of fabric fed is adjusted manually have
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been structured so that the operating speed of the sewing needle
can be changed through a pedal operation.

A sewing machine of such a structure causes the stitch pitch
width to be uniform through having the operating speed of the
sewing needle be slow when the amount of fabric fed is small, and
having the operating speed of the sewing needle the fast when the
amount of fabric fed is large.

However, in such a sewing machine, it is necessary for the
user to adjust both the amount of fabric fed and the speed of the
sewing needle, meaning that if the user lacks expertise it will not
be possible to perform the sewing with the stitch pitch widths
aligned uniformly.

The object of the present invention is to provide a sewing
machine wherein the stitch pitch width can be matched even if the
user lacks expertise.

The sewing machine according to the present invention, in
order to solve the problem set forth above, comprises: distance
measuring means for measuring, with each constant time interval,
a distance by which a fabric is fed; pitch width setting means for
setting a stitch pitch width; and needle speed changing means for
setting a sewing needle operating speed for forming stitches
corresponding to the pitch width based on the distance measured
by the distance measuring means and the pitch width set by the
pitch width setting means.

Insofar as the distance measuring means in the present
sewing machine are able to measure the distance by which the
fabric is fed, there is no particular limitation to any specific
structure. For example, the distance measuring means may be
structured from an image sensor and a microcomputer. In this
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case, first still images of the fabric surface over a constant range
are taken at specific time intervals. Following this, the
microcomputer measures the distance of the offset (the amount of
change) between two still images taken with the specific time
interval. Moreover, while the microcomputer measures the
distance by which the fabric is fed at constant time intervals, at
this time preferably the time interval enables the pitch width to be
matched accurately, where the shorter the time interval, the more
frequently the operating speed of the sewing needle is changed.
However, insofar as the value is one wherein the pitch widths can
be matched with a tolerance to the degree that there is no problem
in practice, the time interval need not be an extremely small value.
Moreover, this value may be set in advance, or the structure may
be one wherein the user can set this value at will.

Ex. 1004, pages 2-3, ¶¶ 0001 through 0007 (italics added).
It is readily apparent that both the Patent Owner and Watabe set out to
solve essentially the same problem.
Watabe Fig. 1 is reproduced below.

Watabe Fig. 1 depicts a perspective view
of an embodiment of a sewing machine.

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Arm portion 4 is provided with an image sensor 10. Ex. 1004, page 4,
last ¶, line 3. “Image sensor” is another name for “detector.”
Watabe Fig. 2 is reproduced below.

Watabe Fig. 2 depicts a diagram of a control system.
As illustrated in Watabe Fig. 2, sewing machine 1 (Fig. 1) has a
microcomputer 40 built in. Ex. 1004, page 5:4.
Operation involves both a “first interrupt procedure” and a “second
interrupt procedure.” Ex. 1004, page 5, last line and page 6:3.
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Watabe Fig. 4 is reproduced below.

Watabe Fig. 4 depicts a flowchart of a procedure
executed by a microcomputer in the sewing machine.

With respect to the “first interrupt procedure,” Watabe states
(parentheticals omitted):
The first interrupt procedure executed by the
microcomputer 40 will be explained next based on FIG. 4. First,
the microcomputer 40 reads in a still image of the fabric surface
(s11). This still image is read in as a still image of a part of a video
that is inputted into the microcomputer 40 as a video from the
image sensor 10, and is stored in an image storing region of the
RAM 48 [Fig. 2]. The structure is such that the most recent still
image read in through this procedure, and the still image read in
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the first interrupt procedure executed one cycle earlier, are stored
in the still image storing region.

…[T]he microcomputer 40 [then] checks whether or not a
still image read in one cycle earlier has been stored (s12). At the
stage wherein the first interrupt procedure has first been started,
only the most recent still image is stored in the image storing
region. The distance by which the fabric is fed is measured based
on the most recent still image and the still image from one cycle
earlier, and thus if no still image from one cycle earlier is stored in
the image storing region, the distance by which the fabric is fed
cannot be measured. Consequently, in this procedure performing
a check as to whether or not a still image that has been read in one
cycle earlier is stored serves as a check as to whether or not the
distance by which the fabric is fed can be calculated. As a result,
the next execution of the first interrupt procedure, which is
executed once every 0.01 seconds, is awaited.

If, in the procedure in s12, a still image read in one cycle
earlier is stored (s12: YES), the microcomputer 40 measures the
distance by which the fabric is fed (s13). The first interrupt
procedure is structured so as to be executed repetitively with a
specific time period, and thus the still image that is stored in the
first interrupt procedure that is currently in execution, and the still
image that was stored in the first interrupt procedure one cycle
earlier, stored in the image storing region, will have a dislocation
(offset) in the images corresponding to the time difference of one
period in this specific time period. In this procedure, the distance
by which the fabric is fed, corresponding to the dislocation in the
image, is measured as a shift in the image with each one period
time interval, from the still image from one cycle earlier to the
most recent still image. Here the shift in the image that is
measured is measured as a number of the pixels that structure the
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still image, but because the still images read in by the image
sensor 10 are images of a specific range on the fabric surface
(which, in the present embodiment, is a circle with a radius of 5
mm), values indicating the surface area (distances in the
lengthwise and crosswise direction) on the fabric surface
corresponding to the size of the individual pixel are calculated in
advance. These values are stored in advance in the ROM 46 [Fig.
2], so the microcomputer 40, based on the values in the ROM 46
[Fig. 2], converts the measured number of pixels into a value
indicating the distance on the fabric surface, and adds this value to
the variable L in the RAM 48 (s14). The value of the variable L is
summed, as the distance by which the fabric is fed, until it is
initialized in the second interrupt procedure, described below.
Note that because the method for measuring the distance by which
the fabric is fed uses a known method, detailed explanations
thereof will be omitted.

Ex. 1004, page 6-7,¶¶ 18-21.

For the purpose of considering Petitioner’s position on unpatentability
under § 103 over Watabe and Gordon, the subject matter described by
Watabe differs from the subject matter of the relevant claims, including
claims 8 and 9, in that Watabe does not explicitly describe the specific
detectors called for by those claims.
However, the record establishes that those detectors were known.
Patent Owner does not maintain that Gordon fails to describe the
detector called for by the relevant claims.
As pointed out in the Petition (Paper 6, pages 15-16), the Agilent
Technology brochure confirms that as of January 2, 2002 (Ex. 1007,
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page 40), an Agilent ADNS-2051 sensor mentioned in the specification
(Ex. 1001, col. 5:54 and col. 6:44) was known.
Petitioner acknowledged in the Petition that claim 8 requires a
detector having a light or energy source. Petitioner concedes that the
required light or energy source differentiates claim 8 from independent
claim 1. Petitioner goes on to note that the claim 8 detector “was not
something the [Patent Owner’s] inventor conceived.” Paper 6, page 17, ¶ B.
Petitioner states that “use of an integrated light/energy source was
technology already part and parcel of the image correlation technology
found in standard optical mouse devices known and in use at the time of the
. . . invention.” Id.
Petitioner further acknowledged that claim 9 requires that
measurement of fabric movement must occur along two perpendicular (or
“orthogonal”) paths identified as X and Y axes. Paper 6, page 17, ¶ C.
The Agilent Brochure states that:
The IAS [image acquisition system] acquires microscopic surface
images via . . . [a] lens and illumination system . . . . These
images are processed by . . . [a] DSP [digital signal processor] to
determine the direction and distance of motion. The DSP
generates the ∆x and ∆y relative displacement values that are
converted into two channel quadrature signals.

Ex. 1007, page 1, col. 2.
As pointed out in the Petition (Paper 6, page 19), and confirmed by
the Agilent Brochure, the “∆x and ∆y relative displacement” mentioned in
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the Agilent Brochure refers to measurement in perpendicular (i.e.,
orthogonal) directions as borne out by Fig. 39 of the Brochure, reproduced
below.

Part of Agilent Fig. 39 depicts pixel addresses
(looking through an HDNS-2100 lens of a
sensor shown in the next figure)

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Another part of Agilent Fig. 39 depicts a mouse
sensor with an HDNS-2100 lens

Petitioner’s position on obviousness is bottomed on several theories,
one of which is that “a person of ordinary skill in the art would have
appreciated that the Gordon optical sensor could easily have been
substituted for the Watabe optical sensor, with the result being the same
. . . .” Paper 6 (Corrected Petition), page 50, first full paragraph, second
sentence; Paper 10 (Petition for Rehearing), page 5:7-10 (“The only question
. . . is whether a person of ordinary skill in the art . . . would have had ‘an
apparent reason to combine the known elements in the fashion claimed by
the patent at issue.’ See . . . [KSR Int’l Co. v Teleflex, Inc., 550 U.S. 398,
418 (2007)]”).
What the prior art describes does not seem to be in dispute.
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Rather, Patent Owner argues that Watabe and Gordon cannot be
combined, i.e., Watabe and Gordon are said to be non-analogous art.
According to Patent Owner, Gordon’s mouse is not in the same field
of endeavor as Watabe and does not describe its use for any solution to any
problem confronting Watabe.
III. Analysis
Watabe and the ʼ446 patent describe solving essentially the same
problem.
To solve its identified problem, Watabe describes the use of a sensor
10, which Patent Owner refers to as a detector.
Watabe reveals that sensors (i.e., detectors) are known and therefore there
was no need to further describe sensors. Watabe’s election not to describe what
was known is consistent with applicable precedent. Carnegie Steel Co. v. Cambria
Iron Co., 185 U.S. 403, 437 (1902) (an inventor may assume that what was already
known in the art of manufacturing steel was known to those skilled in the art);
Webster Loom Co. v. Higgins, 105 U.S. 580, 586 (1881) (an inventor may begin at
the point where the invention begins, and describe what has been made that is new,
and what it replaces of the old; that which is common and well known is as if it
were written out in the patent and delineated in the drawings).
Watabe further reveals to those skilled in the art that a detector having
characteristics necessary to carry out the Watabe objectives (which are essentially
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the same as Patent Owner’s objectives) are known. Watabe, however, leaves it to
those skilled in the art to use an appropriate detector.
On this record, the Agilent and Gordon detectors likely would have been
recognized by those skilled in the Watabe art as being suitable for use as Watabe’s
detector. Why? The Agilent and Gordon detectors (1) were known, (2) perform
the function required by Watabe, and (3) would have been expected to achieve a
predictable result, i.e., Watabe’s objective. KSR, 550 U.S. at 416 (combination of
known elements (Gordon and Agilent with those of Watabe) according known
methods (Watabe) is likely to be obvious when it does no more than yield
predictable results).
In other words, because the Agilent and Gordon detectors would have been
recognized by one skilled in the art as being suitable for use as the Watabe sensor,
those references reveal a means for solving a problem faced by Watabe—use of an
appropriate sensor to carry out Watabe’s objectives.
The Supreme Court counsels that often it will be necessary to look to
(1) interrelated teachings of multiple patents, (2) the effects of demands known to
the design community or present in the marketplace, and (3) the background
knowledge possessed by a person having ordinary skill in the art, all in order to
determine whether there was an apparent reason to combine the known elements in
the fashion claimed by the patent. KSR, 550 U.S. at 418.
Here there are multiple patents, one of which (Watabe) tells those skilled in
the art to use known sensors and other prior art (Gordon, as well as the Agilent
Brochure) revealing a sensor suitable for use in Watabe’s environment is known.
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At this stage of the IPR, there is no evidence that Patent Owner’s
combination leads to an unpredictable result or that Patent Owner’s combination
performs any new function vis-à-vis the Watabe apparatus. McClain v. Ortmayer,
141 U.S. 419, 429 (1891) (patent in suit does not involve invention, at least in the
absence of conclusive evidence that the single spring performs some new and
important function not performed by it in the prior patent). See also Sakraida v.
AG Pro, Inc., 425 U.S. 273, 282 (the patent did not produce a new or different
function); Anderson’s-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 60
(1969) (same); Mast, Foos & Co. v. Stover Mfg. Co., 177 U.S. 485, 493 (1900)
(same), and compare with United States v. Adams, 383 U.S. 39 (1966) (new
function performed); Eibel Process Co. v. Minn. & Ont. Paper Co., 261 U.S. 45
(1923) (same); Webster Loom Co. v. Higgins, 105 U.S. 580 (1881) (same).
Because a person skilled in the Watabe art is taught to use a sensor,
and further because the sensor described in the ʼ466 patent and the Gordon
sensor were known, it follows that one skilled in the art likely had a “reason”
(and a right) to use the known sensor in the Watabe combination. These
details provide an “articulated reason[] with some rationale [factual]
underpinning to support a [prima facie] legal conclusion of obviousness.”
KSR, 550 U.S. at 418.
Accordingly and on the current record before us, the patent appears to take
away from the public domain the obvious use of the Gordon/Agilent sensor as a
suitable sensor for use in the Watabe environment.
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Determining that there is a reasonable likelihood of obviousness based on
the record before us is not inconsistent with other applicable precedent.
For example, in Hotchkiss v. Greenwood, 52 U.S. 248 (1851), the Court held
that substitution of clay or porcelain knobs in place of known wood or metal knobs
would have been obvious. Like the case before us, the prior art reference differed
in that it did not describe clay or porcelain knobs in the precise combination
claimed by Hotchkiss. However, those knobs were known and were known to
perform the function required by the metal or wood knobs in the prior art. In the
case before us, the sensor was known and was known to perform the function
required by Watabe.
In Sinclair & Carroll Co., Inc. v. Interchemical Corp., 325 U.S. 327 (1945),
the inventor claimed the use of a particular solvent to solve a particular problem.
The characteristics of a solvent needed to solve the inventor’s problem were
known. Likewise, solvents having those characteristics were known. While the
prior art patents did not describe the use of the inventor’s particular solvent, the
Court observed that:
Reading a list and selecting a known compound [i.e., solvent] to
meet known requirements is no more ingenious than selecting
the last piece to put into the last opening in a jig-saw puzzle. It
is not invention [i.e., it would have been prima facie obvious].

Sinclair, 325 U.S. at 335.

So it is here. On this record, it appears that Watabe describes the need for a
sensor and its characteristics and the prior art reveals that sensor’s having those
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characteristics were known. It also appears, on this record, that Patent Owner has
used a known sensor for its intended purpose to carry out Watabe’s invention.
See also Dow Chemical Co. v. Halliburton Oil Well Cementing Co., 324
U.S. 320 (1945) (the mere substitution of equivalents which do substantially the
same thing in the same way, even though better results may be produced, is not
such an invention as will sustain a patent).
We have not overlooked Patent Owner’s argument that a person having
ordinary skill in the art “would not look to Gordon”—an argument that in this case
at this time we do not find controlling.
The significant prior art teaching is found in Watabe. As noted earlier,
Watabe refers the reader (i.e., a person having ordinary skill in the art) to the use of
sensors and leaves it to that person to determine which sensor would be appropriate
in Watabe’s environment.
The reason Gordon (and for that matter the Agilent Brochure) is offered in
evidence is to establish that sensors used by the Patent Owner and falling within
the scope of those suggested by Watabe were known.
Moreover, Patent Owner’s “would not look to Gordon” argument is
undermined by observations in the patent jurisprudence of the Supreme Court.
For example, in Graham v. John Deere Co., 383 U.S. 1, 10 (1966), the
Court, quoting from a letter from Thomas Jefferson to Oliver Evans1, observed:

1 Oliver Evans is the Evans in Evans v. Eaton, 16 U.S. 454 (1818), Evans v. Eaton,
20 U.S. 356 (1822), and Evans v. Hettich, 20 U.S. 453 (1822), involving Evans
“Hopperboy,” which the Patent Office identifies as Patent No. X3.
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A man has a right to use a saw, an axe, a plane separately; may he
not combine their uses on the same piece of wood?”

In Dunbar v. Myers, 94 U.S. 187, 195 (1876), the Court states (italics
added):
Ordinary mechanics know how to use bolts, rivets and screws and
it is obvious that anyone knowing how to use such devices would
know how to arrange a deflecting plate at one side of a circular
saw which had such a device properly arranged on the other
side….

A parallel between these statements from Graham and Dunbar and
the case before us is manifest.
In terms of Jefferson’s question: Does not a person skilled in the
Watabe art have a right to use the known sensor (which happens to be
described by Gordon)? On the record before us, it is difficult to think of a
reason why not. If on that record one answers “no,” then one would be
suggesting removal from the public domain an obvious use of applicable
sensor technology without a quid pro quo (i.e., teaching the public anything
not essentially taught by Watabe).
In terms of the Dunbar statement: A person skilled in the Watabe art
knows how to use sensors. It is likely that it would have been obvious for
that person to use a known sensor (which happens to be described by at least

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Gordon and the Agilent Brochure) consistent with Watabe’s suggestion to
use known sensors.
In our view, the Patent Owner’s “not look to Gordon” argument is too
narrow. KSR demands more as confirmed by a 2010 decision of our
appellate reviewing court noting:
The Supreme Court’s decision in KSR . . . directs us to construe
the scope of analogous art broadly, stating that “familiar items
may have obvious uses beyond their primary purposes, and a
person of ordinary skill often will be able to fit the teachings of
multiple patents together like pieces of a puzzle[2].”

Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010).

IV. The Rehearing Request
According to 37 C.F.R. § 42.71(d), “[t]he burden of showing a decision
should be modified lies with the party challenging the decision” and the “request
must specifically identify all matters the party believes the Board misapprehended
or overlooked.”
Petitioner points out in its Request for Rehearing that the Non-Institution
Decision in this case did not find persuasive Petitioner’s proffered declaration
evidence supporting the asserted rationale for obviousness. Req. Reh’g 2 (citing

2 The reference to a puzzle in KSR is similar to a reference to a puzzle in Sinclair,
supra.

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Dec. 10–11). Petitioner notes, however, that the Non-Institution Decision
apparently overlooked Petitioner’s argument that Watabe itself, even without the
support of expert testimony, provides sufficient rationale to show a reasonable
likelihood that a person of ordinary skill in the art would have found it obvious to
combine the teachings of Watabe and Gordon. Id. at 2-7 (citing Pet. 50). We
agree that we misapprehended the significance of this argument in the Petition.
The import of this argument becomes clear, however, upon consideration of
Petitioner’s request.
Obviousness, the issue considered in this case to decide whether to institute,
is a question of law. Graham, 383 U.S. at 17.
Because the evidence supports a reasonable likelihood that Petitioner will
establish that the invention of the claims before us would have been obvious,
Petitioner has demonstrated that the Non-Institution Decision should be modified
to institute an inter partes review.
At this stage, and having made out a prima facie case of obviousness,
Petitioner has established that there is a reasonable likelihood that Petitioner will
prevail on the merits. 35 U.S.C. § 314(a).
It is true that upon trial, any prima facie case may be overcome, when Patent
Owner has an opportunity to present evidence and its side of the story. But, Patent
Owner gets to put on its merits case only after inter partes review is ordered.
The Request for Rehearing should be granted and an order entered
instituting an inter partes review.
V. Decision and Order
IPR2013-00270
Patent 6,883,446 B2

25

Upon consideration of the Petitioner for Rehearing (Paper 10), Patent
Owner’s opposition (Paper 15) and Petitioner’s reply (Paper 16), and for the
reasons given, it is
ORDERED that the Request for Rehearing is granted.
FURTHER ORDERED that an inter partes review is instituted
commencing on the date of this DECISION.
FURTHER ORDERED that notice is hereby given of the institution of
a trial. 35 U.S.C. § 314(c); 37 C.F.R. §42.4.
FURTHER ORDERED that that an initial conference call with the
Board is scheduled for 1 PM Eastern Time on January 14, 2015. The parties are
directed to the Office Trial Practice Guide, 77 Fed. Reg. 48756, 48765-66 (Aug.
14, 2012) for guidance in preparing for the initial conference call. Further, the
parties should come prepared to discuss and agree to an appropriate schedule
governing the rest of this proceeding in light of the current status of related case
IPR2014-00364.

IPR2013-00270
Patent 6,883,446 B2

26

Petitioner:

Parrish Freeman
pfreeman@mabr.com

Mark Ford
mford@mabr.com

Patent Owner:

Anthony Volpe
avolpe@vklaw.com

Ryan O’Donnell
rodonnell@vklaw.com