MacNeil IP LLC

Patent Trials and Appeals Board

Jan 13, 2021

IPR2020-01140 (P.T.A.B. Jan. 13, 2021)

Trials@uspto.gov Paper 17
Tel: 571-272-7822 Date: January 13, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

YITA LLC,
Petitioner,

v.

MACNEIL IP LLC,
Patent Owner.
_______________

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Patent 8,833,834 B2
_______________

Before MITCHELL G. WEATHERLY, MICHAEL L. WOODS, and
ARTHUR M. PESLAK, Administrative Patent Judges.

WOODS, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314
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I. BACKGROUND
Yita LLC (“Petitioner”) filed a Petition to institute an inter partes
review of claims 1–15 (the “challenged claims”) of U.S. Patent No.
8,833,834 B2 (Ex. 1001, “the ’834 patent”). Paper 3, 2 (“Pet.” or
“Petition”). MacNeil IP LLC (“Patent Owner”) filed a Patent Owner’s
Preliminary Response. Paper 11 (“Prelim. Resp.” or “Preliminary
Response”). With our approval, Petitioner also filed a Reply to Patent
Owner’s Preliminary Response (Paper 15, “Reply”) and Patent Owner filed
a Sur-Reply in response to Petitioner’s Reply (Paper 16, “Sur-Reply”).
We have authority to determine whether to institute an inter partes
review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2019).
Section 314(a) of Title 35 of the United States Code provides that an inter
partes review may not be instituted “unless . . . the information presented in
the petition . . . shows that there is a reasonable likelihood that the petitioner
would prevail with respect to at least 1 of the claims challenged in the
petition.” Upon consideration of the evidence and arguments in the Petition
(including its supporting testimonial evidence) as well as the evidence and
arguments in the Preliminary Response, Reply, and Sur-Reply, for the
reasons below, we determine that the Petition fails to show a reasonable
likelihood that Petitioner would prevail with respect to any of the challenged
claims. We thus deny institution of the inter partes review.

A. Related Proceedings
The parties identify the following matters as related:
• MacNeil Auto. Prods. Ltd. et al. v. Yita LLC et al., No. 2:20-cv-
00278 (WDWA);
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• MacNeil Auto. Prods. Ltd. et al. v. Jinrong (SH) Auto. Accessory
Dev. Co., Ltd. et al., No. 2:20-cv-00856 (WDWA);
• IPR2020-01138, which seeks review of related U.S. Patent No.
8,382,186 B2 (the “’186 patent”);
• IPR2020-01139, which seeks review of the ’186 patent; and
• IPR2020-01142, which seeks review of the ’834 patent.
Pet. 96; Paper 6, 2.

B. Real Parties-in-Interest
The Petition lists Yita LLC, Jinrong (SH) Automotive Development
Co., Ltd., ShenTian (SH) Industrial Development Co., Ltd, and Hong Kong
Yita International Trade Company Limited as the real parties-in-interest.
Pet. 95. Patent Owner identifies itself, MacNeil Automotive Products
Limited, and WeatherTech Direct, LLC as the real parties-in-interest.
Paper 6, 2.

C. The ’834 Patent (Ex. 1001)
The ’834 patent is titled “Molded Vehicle Floor Tray and System.”
Ex. 1001, code (54). The ’834 patent describes a vehicle floor tray that is
molded from a sheet of polymeric material. Id. at code (57). The
’834 patent explains a need for a removable floor tray that fits precisely
within a vehicle’s foot well so that it’s more likely to remain in position
during vehicle operation, thereby minimizing the chance that it occludes the
gas, brake, or clutch pedal. See id. at 1:39–44, 2:12–16. To illustrate an
embodiment of the floor tray, we reproduce Figure 1, below:
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Figure 1 depicts an embodiment of the floor tray described in the ’834
patent. Id. at 5:49–50. In particular, this figure illustrates vehicle floor tray
(or cover) 100 that is designed to protect a vehicle’s floor and lower sides of
the foot well. See id. at 6:34–35. Floor tray 100 includes floor (or central
panel) 102 with channels 104 disposed in forward region 106 of the panel.
Id. at 6:37–41.

D. Illustrative Claim
Petitioner challenges claims 1–15. Pet. 2. Of these claims, claims 1,
5, 9, and 13 are independent. Ex. 1001, 20:4–24:19. We reproduce claim 1
below, reformatted from the version provided in the ’834 patent to include
bracketed alphanumeric nomenclature that corresponds with Petitioner’s
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nomenclature and italics to emphasize the limitation pertinent to our
decision.
1. [Preamble] A system including a vehicle and a floor
tray for consumer installation into a predetermined foot well of
the vehicle, the system comprising:
[Element 1(a)] a vehicle foot well having a floor, a
substantially longitudinally disposed first foot well wall
upstanding from the floor, a substantially transversely disposed
second foot well wall upstanding from the floor and joined to the
first foot well wall, a substantially longitudinally disposed third
foot well wall upstanding from the floor and joined to the second
foot well wall; and
[Element 1(b)] a vehicle floor tray molded from a sheet of
polymeric material of substantially uniform thickness,
[Element 1(c)] a central panel of the tray substantially
conforming to the floor of the vehicle foot well,
[Element 1(d)] a substantially longitudinally disposed first
tray wall joined to the central panel by a curved transition and
standing up from the central panel to substantially conform to the
first foot well wall,
[Element 1(e)] a substantially transversely disposed
second tray wall joined to the central panel and to the first tray
wall by respective curved transitions and standing up from the
central panel, the second tray wall substantially conforming to
the second foot well wall,
[Element 1(f)] a substantially longitudinally disposed third
tray wall joined to the central panel and to the second tray wall
by respective curved transitions and standing up from the central
panel,
[Element 1(g)] the central panel and first, second and third
tray walls each having an outer surface facing the vehicle foot
well and an inner surface opposed to the outer surface, a
thickness of the central panel and of the, first, second and third
tray walls measured between the outer surface and the inner
surface thereof being substantially uniform throughout the tray;
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[Element 1(h)] at least 90 percent of that one-third of the
outer surfaces of the first, second and third tray walls which are
closest to the respective top margins of the first, second or third
tray walls being within one-eighth of an inch of the respective
foot well walls.
Ex. 1001, 20:4–40 (emphasis added); Pet. 35–67.

E. Reference Relied Upon
Petitioner relies on U.S. Patent No. 7,444,748 B2 (Ex. 1004,
“MacNeil”), which issued on November 4, 2008, to argue that all challenged
claims are obvious. Pet. 34; Ex. 1004, 1.

F. Asserted Ground of Unpatentability
Petitioner contends that the challenged claims are unpatentable under
35 U.S.C. § 103 in view of MacNeil. Pet. 34. Petitioner supports its
challenge with a declaration from Dr. Paul E. Koch, Ph.D. Ex. 1003.
II. DISCUSSION
A. Principles of Law
35 U.S.C. § 311(b) provides that “[a] petitioner in an inter partes
review may request to cancel as unpatentable 1 or more claims of a patent
only on a ground that could be raised under section 102 or 103 and only on
the basis of prior art consisting of patents or printed publications” (emphasis
added).

B. Whether MacNeil is Prior Art to the ’834 patent
A threshold issue in determining whether review is warranted is
whether MacNeil is prior art to the ’834 patent. Specifically, the issue is
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whether the claimed “thickness of the central panel and of the, [sic] first,
second and third tray walls measured between the outer surface and the inner
surface thereof being substantially uniform throughout the tray” (Ex. 1001,
20:32–35) is supported by the written description of the ’834 patent’s parent
applications.

1. Prosecution History and Priority Chain of the ’834 patent
The ’834 patent issued from U.S. Application No. 14/139,432, filed
December 23, 2013, (the “’432 application”), and is a continuation of U.S.
Patent Application No. 13/773,706, filed February 22, 2013 (the “’706
application”). See Ex. 1002, 88–89; see also Ex. 1001, codes (22), (60).
The ’432 application as originally filed included claims that recited the
limitation in dispute. See, e.g., Ex. 1002, 130 (claim 1 reciting, “a thickness
of the central panel and of the, first, second and third tray walls measured
between the outer surface and the inner surface thereof being substantially
uniform throughout the tray”).
Petitioner submits a diagram that illustrates the chain of priority of the
’834 patent, which we find helpful and reproduce below. Pet. 27.
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The figure illustrates the priority chain of the ’834 patent and depicts priority
dating back to October 29, 2004, the filing date of U.S. Patent Application
No. 10,976,441 (the “’441 application”). See Ex. 1001, code (60)
(confirming the same).
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MacNeil, which is not shown in the priority chain, is a continuation-
in-part of the ’441 application. See Ex. 1004, code (63). MacNeil first
published on May 4, 2006. Id. at code (65).
If the ’834 patent is entitled to priority dating to October 29, 2004,
which is the filing date of the ’441 application, then MacNeil is not prior art
to the ’834 patent.

2. Petitioner’s Position as to Priority
Despite the priority claims listed in the ’834 patent (see Ex. 1001,
code (60)), Petitioner submits that the claims of the ’834 patent are not
entitled to a priority date earlier than the filing date of the ’432 application,
December 23, 2013. See Pet. 26 (“the ’834 patent is not entitled to a priority
date of any of its parent applications’ filing dates” (citing Ex. 1003 ¶¶ 92,
106–120)).
Petitioner’s analysis focuses on an alleged failure in U.S. Application
No. 12/879,899 (“the ’899 application”) to provide written description
support for the claim limitation “a thickness of the central panel and of the,
first, second and third tray walls measured between the outer surface and the
inner surface thereof being substantially uniform throughout the tray.” See
id. at 28. Petitioner contends that the first application in the priority chain to
disclose “uniform thickness” after thermoforming was the ’703 application,
filed August 27, 2012, almost four years after MacNeil issued. Id. (citing
Ex. 1027, 10; Ex. 1003 ¶ 106; Ex. 1028, 5:8–32).
In support of its position, Petitioner explains “neither the words nor
the drawings of ’899 application provide explicit written description of the
‘thickness . . . being substantially uniform throughout the tray.’” See id.
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at 30 (citing Ex. 1003 ¶ 112). Petitioner also asserts that the parent
applications do not describe the figures as being drawn to scale. See id.
(citing Ex. 1003 ¶¶ 110, 111). Petitioner concludes that the claims of the
’834 patent are “at best, only entitled to the ’186 patent’s filing date, and not
the priority date of any of the ’186 patent’s parent applications.” Id. at 33;
see also id. at 27 (identifying the ’186 patent as filed on August 27, 2012).

3. Patent Owner’s Response to Petitioner’s Priority Position
Patent Owner submits that the Petition fails, because the sole
challenge presented by Petitioner relies on MacNeil, which is not prior art to
the ’834 patent. See Prelim. Resp. 54. Patent Owner explains that “the
claimed tray features having substantially uniform thickness . . . finds
express written description support in each application in the priority chain
of the ’834 Patent back to the earliest filed ’441 application.” Id. at 55–56.
Patent Owner further explains that “the ’834 claims are entitled to priority to
the ’441 application’s October 29, 2004, filing date.” Id. at 56.
We agree.

4. Analysis
Petitioner submits that only one limitation recited in each of
independent claims 1, 5, 9, and 13 lacks written description support in the
priority applications. See Pet. 28–33. Specifically, Petitioner submits that
the ’899 application (and every application preceding it in the priority chain)
fails to provide subject matter support for the claimed “thickness of the
central panel and of the, first, second and third tray walls measured between
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the outer surface and the inner surface thereof being substantially uniform
throughout the tray.” See id.
We disagree with Petitioner’s position, however, at least because
various figures of the ’441 application—which are also present in the
intervening applications that form a continuous chain of priority between it
and the ’432 application—provide written description support for the
claimed feature.
As to Petitioner’s position that the parent applications fail to provide
“an explicit or inherent description of the molded floor tray having a
thickness that is substantially uniform throughout the tray after
thermoforming” (Pet. 28 (citations omitted)), “drawings alone may provide
a ‘written description’ of an invention as required by § 112.” Vas-Cath Inc.,
v. Mahurkar, 935 F.2d 1555, 1565 (Fed. Cir. 1991) (emphasis added). Here,
the figures filed in the ’432 application appear to be identical to the figures
filed in the ’441 application (compare Ex. 2002, 360–371 (Figs. 1–14), with
Ex. 1001, Figs. 1–14.) and each set of figures show the claimed
“substantially uniform” thickness after the trays have been manufactured, or
thermoformed.
As to Petitioner’s position that the figures are not described as being
drawn to scale (see Pet. 30), even if the “patent drawings are not working
drawings drawn to scale, things patent drawings show clearly are not to be
disregarded.” In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972); cited with
approval in Ex Parte Nobuya Sato & Kazunari Saitou, Appeal No. 2012-
001276, 2014 WL 1154010, at *2 (PTAB Mar. 20, 2014); see also
In re Aslanian, 590 F.2d 911, 914 (CCPA 1979) (“[T]he specific disclosure
of structure in a design patent application may inherently teach functional
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features.”). Here, the drawings of the ’441 application (and the other parent
applications to the ’834 patent) are drawn with a high level of detail. See,
e.g., Ex. 2002, 367–371 (Figs. 9–14); see also Ex. 1001, Figs. 9–14
(depicting the same figures). For example, Figures 10–14 are drawn with
enough detail to depict fitment of the trays within one-eighth of an inch
between the vehicle’s firewall surface and the trays. See, e.g., Ex. 2002,
320. Additionally, the dimensions shown on Figures 9–14 demonstrate that
the drawings are approximately to scale. See id., e.g., 371 (Figure 14
illustrating gap labeled 0.125 that is twice the size of gap labeled 0.061).
The drawings include sufficient detail to support the claimed “substantially
uniform” thickness.
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To further illustrate our point, we reproduce Patent Owner’s annotated
version of Figure 1 of the ’441 application (Prelim Resp. 62), below:

Annotated Figure 1 is an isometric view of floor tray 100 that depicts first
tray wall 132 (green), second tray wall 134 (lime), and third tray wall 137
(pink), and central panel 102 (aqua). Id. at 61; see also Ex. 2002, 312,
[0023] (“FIGURE 1 is an isometric view of one embodiment of a vehicle
floor tray according to the invention.”). The ’441 application describes this
figure as depicting floor tray or cover 100 for protecting “both the floor and
at least the lower sides of a vehicle foot well.” Ex. 2002, 314, [0038].
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We also reproduce Patent Owner’s annotated version of Figure 2 of
the ’441 application (Prelim. Resp. 63), below:

Annotated Figure 2 depicts a top view of floor tray 100 showing first tray
wall 132 (green), second tray wall 134 (lime), third tray wall 136 (pink), and
central panel 102 (blue). Prelim. Resp. 61; see also Ex. 2002, 312, [0024]
(“FIGURE. 2 is a top view of the floor tray illustrated in FIGURE 1”).
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We also reproduce Patent Owner’s annotated version of Figure 3 of
the ’441 application (Prelim. Resp. 65), below:

Annotated Figure 3 depicts first tray wall 132 (green), second tray wall 134
(lime), and central panel 102 (blue). See Prelim. Resp. 61; see also
Ex. 2002, 312, [0025] (“FIGURE 3 is an isometric and transverse sectional
view of the floor tray seen in FIGURES. 1 and 2, the section taken
substantially along line 3-3 of FIGURE 2.”). In particular, the annotated
figure depicts a cross-sectional view of first tray wall 132 (green) with its
“substantially uniform thickness.”
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We further reproduce Patent Owner’s annotated Figure 4 of the
’441 application (Prelim. Resp. 66), below:

Annotated Figure 4 depicts an isometric, sectional view of floor tray 100,
including a cross-sectional view of second tray wall 134 (lime) and central
panel 102 (blue), each depicting their “substantially uniform thickness.”
Prelim. Resp. 61; see also Ex. 2002, 312, [0026] (“FIGURE 4 is an
isometric and longitudinal sectional view of the floor tray shown in
FIGURES 1 and 2, the section taken substantially along line 4-4 of FIGURE
2”).
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We also reproduce Patent Owner’s annotated Figure 9 of the
’441 application (Prelim. Resp. 67), below:

Annotated Figure 9 depicts an isometric and sectional view of first tray wall
132 (green), second tray wall 134 (lime), and central panel 102 (blue).
Prelim. Resp. 61; see also Ex. 2002, 313, [0031] (“FIGURE 9 is a partly
transverse sectional, partly isometric view of both the floor tray illustrated in
FIGURE 2 and the vehicle well surface illustrated in FIGURE 8”). In
particular, the annotated figure illustrates central panel 102 (blue) and first
tray wall 132 (green) with “substantially uniform” thicknesses.
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We further reproduce Patent Owner’s annotated Figure 10 of the ’441
application (Prelim. Resp. 68), below:

Annotated Figure 10 depicts a cross-sectional and isometric view of floor
tray 100 of second tray wall 134 (lime) and central panel 102 (blue). See
Prelim. Resp. 61; see also Ex. 2002, 313, [0032] (“FIGURE 10 is a partly
transverse sectional, partly isometric view of both the floor illustrated in
FIGURE 2 and the vehicle foot well surface illustrated in FIGURE 8”).
Specifically, the annotated figure illustrates central panel 102 (blue) and
second tray wall 134 (lime) with “substantially uniform” thicknesses.
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Next, we reproduce Patent Owner’s annotated Figure 12 of the ’441
application (Prelim. Resp. 69), below:

Annotated Figure 12 depicts a part-sectional view of central panel 102
(blue). See Prelim. Resp. 61; see also Ex. 2002, 313, [0034] (“FIGURE 12
is a detail of a seat pedestal region of FIGURE 10”). In particular, the
annotated figure depicts central panel 102 (blue) with a “substantially
uniform thickness.”
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We also reproduce Patent Owner’s annotated Figure 13 of the ’441
application (Prelim. Resp. 69), below:

Annotated Figure 13 depicts a partly-cross-sectional, isometric view of floor
tray 100 with first tray wall 132 (green), second side wall (lime), and third
tray wall 136 (pink). See Prelim. Resp. 61; see also Ex. 2002, 313, [0035]
(“FIGURE 13 is a partly longitudinal sectional, partly isometric view of both
the floor tray illustrated in FIGURE 2 and the vehicle foot well surface
illustrated in FIGURE 8”). In particular, the annotated figure depicts first
tray wall 132 (green) and third tray wall 136 (pink) with “substantially
uniform” thicknesses.
In summary, we find that Figures 1–4, 9, 10, 12, and 13 of the
’441 application collectively depict first tray wall 132, second tray wall 134,
third tray wall 136, and central panel 102 as having a thickness as “measured
between the outer surface and the inner surface thereof being substantially
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uniform throughout the tray,” as required by the claims. See, e.g., Ex. 1001,
20:32–35.
We also note that our understanding is consistent with the patent
examiner’s understanding during prosecution of the ’899 application, a
parent to the ’834 patent. See id. at code (60) (identifying the ’899
application in the priority chain of the ’834 patent).
During prosecution of the ’899 application, the applicant amended
then-pending claim 12 “to recite a central panel, a first panel, a second
panel, a reservoir, and baffles each having a thickness from a point on the
upper surface to a closest point on the bottom surface that is substantially
uniform throughout the tray.” Ex. 1022, 209 (emphasis added). The patent
applicant stated that “support for this amendment is found in Figures 3 and
4” of the application. Id. Appellant also cited paragraph 51 of the
specification as providing written description support (id. at 208), which we
note references Figures 3 and 4 (id. at 21). During a subsequent interview
with the Examiner, claim 12 was discussed “with respect to the prior art and
uniform thickness.” Id. at 235 (emphasis added). In the interview summary,
the “Examiner suggested adding the limitations of claim 13 into claim 12 to
overcome the Strata prior art.” Id. The interview summary does not
indicate, however, that the examiner took issue with the “uniform thickness”
amendment as lacking written description support. See id. Indeed, claim 12
was ultimately allowed with the “substantially uniform” thickness limitation.
See id. at 237–243 (Notice of Allowance).
In summary, we find that disputed claim limitation is supported by the
figures of the ’441 application, and that this finding is consistent with the
prosecution of a parent application. As such, we are not persuaded by
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Petitioner’s argument that the ’834 patent is not entitled to claim priority to
the ’441 application. For this reason, we are not persuaded that MacNeil is
prior art to the ’834 patent and we deny institution.
III. CONCLUSION
For the reasons above, we determine that the Petition fails to show
that MacNeil is prior art to the ’834 patent. We deny to institute review of
any of the challenged claims.
IV. ORDER
For the reasons above, it is:
ORDERED that the Petition is denied as to the sole asserted ground
and all challenged claims of the ’834 patent.

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PETITIONER:
Mark P. Walters
John J. Bamert
LOWE GRAHAM JONES PLLC
Ralph W. Powers III
Jason A. Fitzsimmons
Stephen A. Merrill
STERNE KESSLER GOLDSTEIN & FOX P.L.L.C.
walters@lowegrahamjones.com
tpowers-PTAB@sternekessler.com
jfitzsimmons-PTAB@sternekessler.com
smerrill-PTAB@sternekessler.com
bamert@lowegrahamjones.com
PATENT OWNER:
David G. Wille
Chad C. Walters
Clarke W. Stavinoha
BAKER BOTTS L.L.P.
Jefferson Perkins
PERKINS IP LAW GROUP LLC
david.wille@bakerbotts.com
chad. walters@bakerbotts.com
clarke.stavinoha@bakerbotts.com
jperkins@perkinsip.com