Jacobs Corp.v.Genesis III, Inc.Download PDFPatent Trial and Appeal BoardJan 22, 201511150430 (P.T.A.B. Jan. 22, 2015) Copy Citation Trials@uspto.gov Paper 12 Tel: 571–272–7822 Entered: January 22, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _______________ JACOBS CORP., Petitioner, v. GENESIS III, INC., Patent Owner. _______________ IPR2014-01267 Patent 7,140,569 B2 _______________ Before WILLIAM V. SAINDON, SCOTT E. KAMHOLZ, and MITCHELL G. WEATHERLY, Administrative Patent Judges. SAINDON, Administrative Patent Judge. DECISION Denying Institution of Inter Partes Review 37 C.F.R. § 42.108 IPR2014-01267 U.S. Patent 7,140,569 B2 2 I. INTRODUCTION Petitioner filed a corrected petition requesting an inter partes review (Paper 5, “Pet.â€) of claims 1–30 of U.S. Patent No. 7,140,569 B2 (Ex. 1001, “the ’569 patentâ€). Pet. 2. Patent Owner filed a Preliminary Response. Paper 9 (“Prelim. Resp.â€). We have jurisdiction under 35 U.S.C. § 314, which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.†Our Rules place the burden on Petitioner to show, in its Petition, a reasonable likelihood of prevailing. 37 C.F.R. § 42.104(b)(3)–(5). We have reviewed the Petition, Preliminary Response, and the evidence cited therein. For the reasons discussed below, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to any of the challenged claims of the ’569 patent. A. Related Matters The ’569 patent was involved in two district court actions that were dismissed: Bakko Bros, Inc.., vs. Black Diamond Hammers, Inc., Case 4:13- cv-00134 (S.D. Iowa); and Bakko Bros, Inc. vs. Jacobs Corporation, Case 4:13-CV-00070 (S.D. Iowa). Pet. 1; Prelim. Resp. 4. Patent Owner states that the action involving Petitioner was “voluntarily dismissed without prejudice by Genesis on May 23, 2013.†Id. B. The ’569 Patent The ’569 patent is directed to a hammer mill hammer. Ex. 1001, Abstr. Specifically, “[t]he hammer is produced through forging versus casting or rolling as found in the prior art.†Id. at 3:20–21. In addition, the IPR2014-01267 U.S. Patent 7,140,569 B2 3 hammer optionally includes other strengthening features such as raised shoulders (see, e.g., id. at 8:5–18; Fig. 5, item 27), a tapered shape (see, e.g., id. at 9:54–62, Fig. 11, item 30), and welded edges (see, e.g., id. at 8:24–27, Fig. 5, item 25). C. Illustrative Claims Petitioner challenges all of the claims in the ’569 patent, of which claims 1, 8, 14, 18, and 23 are independent. Each independent claim specifies that the hammer is forged, either in the body (claims 8 and 23) or the preamble (claims 1, 14, and 18) of the claim. Claims 1 and 8 are reproduced below. 1. An improved metallic based forged hammer for use in a rotatable hammermill assembly comprising: a. a first end for securement within said hammermill assembly; b. a rod hole, said rod hole centered in said first end for engagement with and attachment to said hammermill assembly; c. at least one rod hole shoulder surrounds the perimeter of said rod hole; d. a second end for contact and delivery of momentum to material to be comminuted wherein said second end has a weld hardened edge; and, e. a neck connecting said first hammer end to said second hammer end, wherein said thickness of said neck is less than the combined thickness of said rod hole shoulder and said first end of said hammer. 8. An improved metallic based hammer for use in a rotatable hammermill assembly comprising: IPR2014-01267 U.S. Patent 7,140,569 B2 4 a. a first end for securement within said hammermill assembly; b. a second end for contact and delivery of force to material to be comminuted; and, c. a neck connecting said first end to said second end, wherein said the thickness of said neck of said hammer is less than the thickness of either said first or second ends; and d. said hammer is forged. D. Prior Art and Asserted Grounds Petitioner asserts 13 grounds against the ’569 patent, citing to 7 prior art references. Pet. 2–5. These grounds are divided into three groups, each group primarily relying on one of three references: Kachik, 1 Hermann, 2 or Schillinger. 3 We need only discuss these three references for purposes of this decision. II. ANALYSIS Each claim in the ’569 patent recites that the hammer is forged. For the reasons set forth below, we determine that Petitioner has failed to address adequately this term in each of the asserted grounds. First, we discuss Patent Owner’s time bar argument, then we discuss the asserted grounds in turn. 1 U.S. Patent No. 4,856,170, issued Aug. 15, 1989 (Ex. 1002). 2 U.S. Patent No. 3,058,676, issued Oct. 16, 1962 (Ex. 1003). 3 U.S. Pub. No. 2004/0017955 A1, published Jan. 29, 2004 (Ex. 1004). IPR2014-01267 U.S. Patent 7,140,569 B2 5 A. Patent Owner’s 35 U.S.C. § 315(b) Time Bar Argument Patent Owner argues that this Petition is time barred under 35 U.S.C. § 315(b) on account of the Bakko Bros, Inc. vs. Jacobs Corporation action listed in Section I.A. above. Prelim. Resp. 1–6. As Patent Owner states, however, the action involving Petitioner was “voluntarily dismissed without prejudice by Genesis on May 23, 2013.†Id. at 4. We have held previously that district court actions voluntarily dismissed without prejudice typically do not invoke a § 315(b) bar. See, e.g., Cyanotech Corp. v. Bd. of Trs. of the Univ. of Ill., Case IPR2013-00401, slip op. at 9–12 (PTAB Dec. 19, 2013) (Paper 17); Clio USA, Inc. v. Procter & Gamble Co., Case IPR2013-00450, slip op. at 5–8 (PTAB Jan. 9, 2014) (Paper 14); Butamaxâ„¢ Adv. Biofuels LLC v. Gevo, Inc., Case IPR2013-00539, slip op. at 6–8 (PTAB Mar. 4, 2014) (Paper 9). We determine, on the facts before us, that Petitioner is not barred under § 315(b). B. Grounds Primarily Relying on Kachik Petitioner asserts that each claim in the ’569 patent is anticipated by Kachik or obvious in view of Kachik. Pet. 3. Petitioner presents a claim chart setting forth where it believes each limitation of the claims is found in the prior art (id. at 28–35) as well as a narrative explanation of the grounds (id. at 14–18). We briefly discuss the relevant disclosures of Kachik before turning to Petitioner’s grounds. 1. Kachik Kachik describes a way to rebuild worn hammer mill hammers. Ex. 1002, 1:6–11. Depending on the use of the hammer, the size and weight of hammer mill hammers can vary greatly, from 12 pounds to 200 pounds, for IPR2014-01267 U.S. Patent 7,140,569 B2 6 example. Id. at 1:64–2:2. Consequently, different rebuilding apparatus are required for different hammer sizes. Id. at 2:35–43. In Figures 4–8, Kachik depicts a rebuilding apparatus for smaller, forged hammers, such as those depicted in Figures 1–3, whereas in Figures 11 and 12, Kachik depicts a rebuilding apparatus for larger hammers, such as that depicted in Figures 9 and 10. Id. at 5:35–58 (describing the Figures); id. at 9:19–25 (describing the smaller hammers as forged). Kachik emphasizes that the larger hammer “does not have a configuration similar to the [smaller hammer].†Id. at 9:30–37. Thus, Kachik describes two different hammers (small and large), but describes only the small hammer as forged. 2. Petitioner’s Analysis Regarding the Term “Forged†Petitioner’s analysis reads the claim term “forged†on the small hammer of Kachik, but otherwise reads the claim terms on the large hammer of Kachik (or on other art). See Pet. 28–35. Using this analysis, Petitioner asserts that Kachik anticipates independent claims 1, 8, 18, and 23. Id. Kachik describes the small hammer as being a separate type of hammer from the large hammer, however. Ex. 1002, 9:30–37 (describing how the larger hammer “does not have a configuration similar to the [smaller hammer]â€). Petitioner does not address adequately why it is permissible to pick and choose features from multiple embodiments of Kachik in an anticipation context. See, e.g., Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1370–71 (Fed. Cir. 2008) (holding that a prior art reference that “includes multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention†is insufficient to show anticipation). In addition, Petitioner does not address sufficiently why it would have been IPR2014-01267 U.S. Patent 7,140,569 B2 7 obvious to a person of ordinary skill in the art to combine features from multiple embodiments of Kachik. Similarly, with respect to independent claim 14, Petitioner merely asserts that “Kachik . . . shows a forged free swinging hammer 101.†Pet. 31. Petitioner does not cite where it finds in Kachik a description of hammer 101 being forged. Instead, as we discussed above, Kachik states that small hammer 1 is forged, not hammer 101. Ex. 1002, 6:31–35, 9:19– 25. 3. Conclusion Petitioner has not addressed sufficiently the “forged†aspect of each independent claim for the reasons set forth above. Consequently, Petitioner has failed to show a reasonable likelihood that the subject matter of claims 1–30 is anticipated by Kachik or obvious in view of Kachik alone or in view of one or more other references. C. Grounds Primarily Relying on Hermann Petitioner asserts that claims 1–30 of the ’569 patent are unpatentable over Hermann in view of one or more other references (one of which includes Kachik). Pet. 3–5. Petitioner presents a claim chart setting forth where it believes each limitation of the claims is found in the prior art (id. at 35–42) as well as a narrative explanation of the grounds (id. at 18–23). 1. Claims 1–7 and 14–22 With respect to independent claim 1, Petitioner’s analysis as to the term “forged†is limited to the following statement: “‘forged’ is in the preamble.†Pet. 35. With respect to independent claims 14 and 18, Petitioner does not discuss the term “forged.†Pet. 38, 39. Petitioner does IPR2014-01267 U.S. Patent 7,140,569 B2 8 not set forth sufficiently an analysis of either: 1) how the prior art describes a forged hammer; or 2) why Petitioner need not address the term “forged†found in the claims. Accordingly, Petitioner has not addressed sufficiently the “forged†aspect of independent claims 1, 14, and 18, or the claims that depend therefrom. 2. Claims 8–13 and 23–30 With respect to independent claims 8 and 23, Petitioner’s analysis as to the term “forged†begins by pointing to the word “forged†in Kachik. Pet. 37, 41 (citing to Ex. 1002, 9:19–25). Petitioner then states, for claim 8, that “[i]t would be obvious to forge the Hermann hammer by using the teaching . . . of Kachik to forge Kachik’s hammer.†Id. at 19 (emphasis removed). Petitioner’s discussion of claim 23 does not discuss the “forged†aspect of the claim. Id. at 22. An obviousness analysis requires more than simply showing that each limitation is found in the prior art. KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (“a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior artâ€). Petitioner must also show “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.†Id. (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Petitioner has failed to address this latter, “reason to combine†portion of the obviousness analysis and instead merely points to a disclosure of “forged†and baldly concludes that it would have been obvious to forge the Hermann hammer. E.g., Pet. 19. Accordingly, Petitioner has not addressed sufficiently the “forged†aspect of independent claims 8 and 23, or the claims that depend therefrom. IPR2014-01267 U.S. Patent 7,140,569 B2 9 3. Conclusion Petitioner has not addressed sufficiently the “forged†aspect of each independent claim for the reasons set forth above. Consequently, Petitioner has failed to show a reasonable likelihood that the subject matter of claims 1–30 is anticipated by Hermann or obvious over Hermann in view of one or more other references. D. Grounds Primarily Relying on Schillinger Petitioner asserts that claim 1 of the ’569 patent is anticipated by Schillinger and that claims 2–30 of the ’569 patent are unpatentable over Schillinger. Pet. 5. Petitioner presents a claim chart setting forth where it believes each limitation of the claims is found in the prior art (id. at 42–49) as well as a narrative explanation of the grounds (id. at 23–28). Petitioner’s assertions with respect to Schillinger are deficient for reasons analogous to those reasons we determined Petitioner’s assertions with respect to Hermann were deficient. With respect to independent claims 1, 14, and 18, Petitioner’s analysis does not address sufficiently the “forged†aspect of the claims. See Pet. 42, 45, 46. With respect to independent claims 8 and 18, Petitioner’s analysis does not address sufficiently why a person of ordinary skill in the art would have considered the combination obvious. See Pet. 24, 26. Accordingly, Petitioner has failed to address sufficiently the “forged†aspect of each independent claim. Consequently, Petitioner has failed to show a reasonable likelihood that the subject matter of claims 1–30 is anticipated or obvious in view of Schillinger alone or in view of one or more other references. IPR2014-01267 U.S. Patent 7,140,569 B2 10 III. ORDER In view of the foregoing, it is hereby: ORDERED that no inter partes review of the ’569 patent is instituted and that all grounds set forth in the Petition challenging the ’569 patent are denied. IPR2014-01267 U.S. Patent 7,140,569 B2 11 PETITIONER: Michael O. Sturm Richard Fix STURM & FIX LLP sturm@hsllp.com fix@hsllp.com PATENT OWNER: Jay R. Hamilton Charles A. Damschen HAMILTON IP LAW P.C. Jay@hamiltoniplaw.com Charlie@hamiltoniplaw.com Copy with citationCopy as parenthetical citation