Nelson Products, Inc.v.BAL SEAL ENGINEERING, INC.

Patent Trial and Appeal Board

Sep 24, 2015

13447595 (P.T.A.B. Sep. 24, 2015)

Trials@uspto.gov Paper 55
Tel: 571-272-7822 Entered: September 24, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

NELSON PRODUCTS, INC.,
Petitioner,
v.
BAL SEAL ENGINEERING, INC.,
Patent Owner.
____________

Case IPR2014-00572
Patent 8,297,662 B2
____________

Before CHRISTOPHER L. CRUMBLEY, KRISTINA M. KALAN, and
CHRISTOPHER M. KAISER, Administrative Patent Judges.

KALAN, Administrative Patent Judge.

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

IPR2014-00572
Patent 8,297,662 B2

2

I. INTRODUCTION
A. Background
Nelson Products, Inc. (“Petitioner”) filed a Petition to institute an inter
partes review of claims 1–16 and 19 of U.S. Patent No. 8,297,662 B2
(Ex. 1001, “the ’662 patent”). Paper 7 (“Pet.”). Bal Seal Engineering, Inc.
(“Patent Owner”) filed a Preliminary Response. Paper 9 (“Prelim. Resp.”).
We instituted trial on Petitioner’s asserted ground that claims 1–16 and 19
are unpatentable. Paper 10 (“Dec.”).
During trial, Patent Owner filed a Patent Owner Response (Paper 17,
“PO Resp.”), which was accompanied by Declarations from Pete Balsells
(Ex. 2006), Daniel Poon (Ex. 2007), and J. Michael McCarthy, Ph.D.
(Ex. 2008). Petitioner filed a Reply to the Patent Owner Response.
Papers 30, 31 (“Pet. Reply”). An oral hearing was held on May 27, 2015. A
transcript of the hearing has been entered into the record. Paper 54 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6. This Final Written
Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
We determine that Petitioner has shown by a preponderance of the evidence
that claims 1–16 and 19 of the ’662 patent are unpatentable. Petitioner’s
Motion to Exclude Evidence (Paper 40) is denied. Patent Owner’s Motion
to Exclude Evidence (Paper 38) is dismissed.
B. Related Proceedings
The parties indicate that the ’662 patent is involved in the following
proceeding: Bal Seal Engineering, Inc., v. Nelson Products, Inc., No. 8:13-
cv-01880-JLS-RNB (C.D. Cal.) (“the district court case”). Pet. 4; Paper 5,
Related Matters, 2.
IPR2014-00572
Patent 8,297,662 B2

3

C. The ’662 Patent
The ’662 patent, titled “Method for Controlling Connect and
Disconnect Forces of a Connector,” issued on October 30, 2012. The ’662
patent relates to “a connector that requires low force to connect and high
force to disconnect.” Ex. 1001, 1:19–21. Figure 1 is reproduced below:

Figure 1 depicts one embodiment of the claimed connector. Id. at
2:48–49. The connector shown in Figure 1 includes “a housing with a bore
and groove therein, a retainer for defining a spring cavity, a circular radial
canted coil spring disposed in the cavity and a pin having a tapered end with
a body diameter sized for sliding engagement with the bore inside surface.”
Id. at 2:49–53. Specifically, Figure 1 shows connector 10, including housing
12 having bore 14, with groove 16 disposed on inside surface 18. Id. at
3:33–35. Groove 16 “establishes a release angle, or surface, 22 between a
housing groove bottom 24 and the bore inside surface 18.” Id. at 3:35–37.
Pin 34 includes circumferential pin groove 48 having load angle, or surface,
46. Id. at 3:44–45.
IPR2014-00572
Patent 8,297,662 B2

4

D. Illustrative Claim
Of the challenged claims, claims 1, 10, and 19 are independent.
Claims 2–9 depend, directly or indirectly, from claim 1, and claims 11–16
depend, directly or indirectly, from claim 10. Claim 1 is reproduced below:
1. A connector having an insertion force that differs from
a disconnection force comprising:
a pin comprising an elongated body defining a pin
longitudinal axis, a pin insertion end comprising a tapered
surface relative to the pin longitudinal axis, and a pin groove
disposed about said elongated body, said pin groove comprising
two tapered surfaces that converge in a direction of the pin
longitudinal axis;
a housing comprising a housing bore having the pin
disposed, at least in part, therein by moving the pin in a first
direction relative to the housing to latch the pin to the housing;
said housing bore comprising a lengthwise housing axis, a
housing groove disposed on an inside surface of said housing
bore and comprising a groove bottom surface being generally
parallel to the length-wise housing axis; said housing bore
being structured to permit disconnection of the pin from the
housing when moving the pin in a second direction relative to
the housing, which is opposite the first direction;
a canted coil spring comprising a plurality of coils each
comprising a major axis, a minor axis, and a wire diameter
sized to cooperate with the pin groove and the housing groove
to permit latching and unlatching located in the pin groove and
the housing groove with the plurality of coils contacting both
tapered surfaces of the pin groove;
wherein the tapered surface of the pin insertion end lifts
the plurality of coils during insertion of the pin in the first
direction into the housing bore, said movement in the first
direction produces a connect force; and
wherein at least one of the two tapered surfaces of the pin
groove abuts and lifts the plurality of coils during disconnection
of the pin from the housing by moving the pin in the second
direction, said movement in the second direction produces a
disconnect force.
IPR2014-00572
Patent 8,297,662 B2

5

Ex. 1001, 7:6–40.
E. Asserted Grounds of Unpatentability
We instituted the instant inter partes review on the following grounds:
1. Whether claims 1–3, 5–11, 13–16, and 19 are unpatentable under
35 U.S.C. § 102(b) as anticipated by Guertin (US Patent No.
5,433,247, issued July 18, 1995 (Ex. 1002));
2. Whether claims 4 and 12 are unpatentable under 35 U.S.C.
§ 103(a) as obvious over Guertin and Poon (US Patent Application
Publication No. 2002/0122690 A1, published September 5, 2002
(Ex. 1005);
3. Whether claims 1–6, 8–14, and 19 are unpatentable under
35 U.S.C. § 102(e) as anticipated by Poon; and
4. Whether claims 7, 15, and 16 are unpatentable under 35 U.S.C.
§ 103(a) as obvious over Poon.
Dec. 18.
II. ANALYSIS
For the challenged claims, Petitioner must prove unpatentability by a
preponderance of the evidence. 35 U.S.C. § 316(e). We begin with a claim
construction analysis, and then follow with specific analysis of the prior art.
A. Claim Construction
In an inter partes review, “[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); In re Cuozzo Speed
Techs., LLC, 778 F.3d 1271, 1279–83 (Fed. Cir. 2015). In determining the
broadest reasonable construction, we presume that claim terms carry their
IPR2014-00572
Patent 8,297,662 B2

6

ordinary and customary meaning. See In re Translogic Tech., Inc., 504 F.3d
1249, 1257 (Fed. Cir. 2007). Only those terms which are in controversy
need to be construed, and only to the extent necessary to resolve the
controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
(Fed. Cir. 1999). In the Decision to Institute, we determined that no term
needed express interpretation. Dec. 6. Neither party has proposed
additional claim constructions following the Decision to Institute.
Therefore, we see no reason to change our initial position that no term in this
case needs express interpretation.
B. Grounds Based Solely on Poon
i. Poon as Prior Art
Under 35 U.S.C. § 102(e),1 a person shall be entitled to a patent unless
“the invention was described in . . . an application for a patent, published
under section 122(b), by another filed in the United States before the
invention by the applicant for patent” (emphasis added). An application
issued to the same inventive entity cannot be prior art under section 102(e).
See Riverwood Int’l Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1355–56
(Fed. Cir. 2003); In re Mathews, 408 F.2d 1393, 1396 (CCPA 1969); In re
Facius, 408 F.2d 1396, 1407 (CCPA 1969); In re Land, 368 F.2d 866, 878
(CCPA 1966). An applicant may overcome a reference by showing that the
relevant disclosure is a description of the applicant’s own work. In re

1 The application that issued as the ’662 patent was filed on April 16, 2012,
and claims priority to an application filed on November 19, 2002. Ex. 1001,
cover page. Accordingly, the versions of §§ 102 and 103 in effect before the
Leahy-Smith America Invents Act (AIA) apply to the claims of the ’662
patent. See AIA, Public Law 112-29, § 3, 125 Stat. 288.
IPR2014-00572
Patent 8,297,662 B2

7

Costello, 717 F.2d 1346, 1349 (Fed. Cir. 1983). What is significant is not
merely the differences in the listed inventors, but whether the portions of the
reference relied on as prior art represent the work of a common inventive
entity. See In re DeBaun, 687 F.2d 459, 462 (CCPA 1982). The issue is
whether all the evidence, including the references, truly shows knowledge
by another prior to the time appellants made their invention or whether it
shows the contrary. See Land, 368 F.2d at 878.
Regarding the relative burdens of proof in this proceeding, it is an
established concept that there are two distinct burdens of proof: a
burden of persuasion and a burden of production. See Dynamic
Drinkware, LLC v Nat’l Graphics, Inc., No. 2015-1214, 2015 WL 5166366
at *2 (Fed. Cir. Sept. 4, 2015) (citing Tech. Licensing Corp. v. Videotek,
Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)). As noted by the court:
The burden of persuasion “is the ultimate burden assigned to
a party who must prove something to a specified degree of
certainty,” such as by a preponderance of the evidence or by
clear and convincing e vidence. In an inter partes review, the
burden of persuasion is on the petitioner to prove
“unpatentability by a preponderance of the evidence,”
35 U.S.C. § 316(e), and that burden never shifts to the patentee.
A second and distinct burden, the burden of
production, or the burden of going forward with evidence, is
a shifting burden, “the allocation of which depends on where
in the process of trial the issue arises.” The burden of
production may entail “producing additional evidence and
presenting persuasive argument based on new evidence or
evidence already of record.”
Id. at *2–3 (citations omitted). Though Dynamic Drinkware concerned a
question of which party bears the burden of proving that a patent is entitled
to claim priority to an earlier application, the same reasoning applies to the
IPR2014-00572
Patent 8,297,662 B2

8

question of who must prove whether a reference is “by another.” Thus,
Petitioner always bears the ultimate burden of persuasion, but Patent Owner
bears the burden of production on the issue of whether the Poon reference is
“by another.”
The ’662 patent names Peter J. Balsells as the sole inventor. The
Poon reference (Ex. 1005) names Daniel Poon and Peter J. Balsells as joint
inventors. The ’662 patent claims priority to a provisional application filed
November 21, 2001. Poon claims priority to a provisional application filed
March 5, 2001.
In our Decision to Institute, we determined that, at that stage of the
proceeding, Patent Owner failed to show that the subject matter illustrated in
Figures 11–20 of Poon was Mr. Balsells’s work alone, and thus, not § 102(e)
prior art. Dec. 11–12. We left open the possibility that Patent Owner could
introduce additional evidence at trial to support its argument that Poon is not
§ 102(e) prior art. Id. at 12. At trial, Patent Owner argues that Figures 11–
20 of Poon, upon which Petitioner relies, are not “by another” and, therefore,
are not prior art under 35 U.S.C. § 102(e).
Patent Owner presents evidence that “Mr. Balsells declares that he is
the sole inventor of the subject matter illustrated in Figures 11–20 of the
Poon reference.” PO Resp. 12 (citing Ex. 2006). Patent Owner also
provides a Declaration executed by Mr. Poon, in which Mr. Poon declares
“that he contributed to inventive subject matter with regard to Figures 1–10,
but had nothing to do with the subject matter illustrated in Figures 11–20 of
the Poon reference.” Id. (citing Ex. 2002).2

2 At oral hearing, Patent Owner argued that Petitioner applied an incorrect
“collaboration” standard to its analysis (citing In re DeBaun, 687 F.2d 459
IPR2014-00572
Patent 8,297,662 B2

9

Petitioner argues that Poon and Balsells are joint inventors of the
Poon reference, and thus, the Poon reference is presumptively “by another.”
Pet. Reply 1 (citing MPEP 2136.04(I)). Petitioner argues that “joint
inventorship only requires a minimal amount of collaboration such as
working under common direction or building on a relevant report.” Id. at 3
(citing 35 U.S.C. § 116; Kimberly-Clark Corp. v. Procter & Gamble Distrib.
Co., 973 F.2d 911, 917 (Fed. Cir. 1992)). Specifically, Petitioner argues that
Figures 11–20 of Poon are prior art because Mr. Poon and Mr. Balsells
admit in their declarations and depositions that they collaborated together to
produce the subject matter of Figures 11–20. Id. at 2–4 (citing Exhibits
1010–1012 as evidence of collaboration). Petitioner also argues that Figures
11–20 of Poon are prior art because Mr. Poon and Mr. Balsells admit in their
depositions that Figures 11–20 contain contributions from both inventors.
Id. at 4.
Petitioner presents the testimony of Mr. Poon, who states that he
developed the “basic concept” of Figures 1–9, gave his work to Mr. Balsells,
and interacted with Mr. Balsells to clarify and explain his work. Id. at 2–3
(citing Ex. 2002 ¶ 3). Mr. Poon states, for example, that he conceived of the
basic concept of an axial spring with clearance around the axial spring,
which structural elements are present in Figures 11 and 13. Id. at 4 (citing
Ex. 1015, 139:9–140:12). Petitioner also presents the testimony of Mr.
Balsells, who states that Mr. Poon’s work laid the foundation that served as a
catalyst for Mr. Balsells’ improvements, and that Mr. Balsells “appended”

(CCPA 1982). This argument, however, was not raised in the Patent Owner
Response. Accordingly, although we are cognizant of the cited case law, we
do not consider arguments presented for the first time at oral hearing.
IPR2014-00572
Patent 8,297,662 B2

10

Mr. Poon’s work to generate Figures 11–20. Id. at 3 (citing Ex. 2006 ¶ 3;
Ex. 1013, 51:5–7, 52:18–21). Petitioner states that, when Mr. Poon and Mr.
Balsells were asked to use different colors to highlight structural features in
Figure 13 that they considered to be each other’s contributions, “both
inventors highlighted the axial canted coil spring and the housing groove
depth to indicate Mr. Poon’s contributions, and both highlighted the tapered
surfaces in the housing groove to indicate Mr. Balsells’ contribution” as
shown below:

Id. at 4.
Mr. Balsells testified that “I put angles to [Poon’s] design to make the
thing work better.” Ex. 1013, 53:13–14. Petitioner argues that “at the end
of the day Mr. Balsells testified himself: I was just adding to what Mr. Poon
invented. I was just appending my work to his. I was inspired by him.”
Tr. 66:12–15.
At oral hearing, in response to the question of whether Mr. Balsells
could have applied for his own patent in his own name on the subject matter
of Figures 11 through 20, Patent Owner’s counsel stated that “because of
those contributions by Mr. Poon, in fact, no, [Mr. Balsells] cannot have filed
11 through 20 on his own. He would have had to contribute that to Mr.
Poon’s contribution.” Tr. 33:21–24. Patent Owner’s counsel also stated
IPR2014-00572
Patent 8,297,662 B2

11

that, looking at the invention as a whole, “all of the inventions in the Poon
reference are all by the combination of both Poon and Mr. Balsells.”
Tr. 34:18–20.
We are not persuaded that the subject matter of Figures 11–20 of the
Poon reference are “by another.” Mr. Poon and Mr. Balsells were joint
inventors under the standards highlighted by the court in Kimberly-Clark.
They exhibited elements of joint behavior: they worked at the same
company, under common direction, at the same physical location. Mr. Poon
and Mr. Balsells exchanged notes and drafts leading to the final invention
described in the Poon reference. The inventors worked on the same subject
matter and made contributions to the inventive thought and to the final
result. Monsanto Co. v. Kamp, 269 F.Supp. 818, 824 (D.D.C. 1967). The
collaborative nature of the invention is apparent in the evidence presented by
Petitioner, in which Mr. Poon and Mr. Balsells could not avoid
acknowledging the elements of their common contributions to the invention
claimed in the Poon reference.
To the extent that the burden of production shifted to Patent Owner,
Patent Owner presented evidence in support of its arguments that Poon and
Balsells were not joint inventors of the Poon reference. Weighing all the
evidence before us, however, we are persuaded that the record as a whole
supports Petitioner’s argument that Poon is prior art under 35 U.S.C.
§ 102(e).
ii. Anticipation and Obviousness Grounds Based on Poon
We instituted inter partes review to determine whether claims 1–6, 8–
14, and 19 are unpatentable under 35 U.S.C. § 102(e) as anticipated by
IPR2014-00572
Patent 8,297,662 B2

12

Poon; and whether claims 7, 15, and 16 are unpatentable under 35 U.S.C.
§ 103(a) as obvious over Poon.
Poon discloses a “circular canted coil spring assembled in a housing
groove and a shaft with a groove in which the spring is positioned in a
manner such that when the shaft is moved axially against the housing the
spring is compressed axially against the groove.” Ex. 1005 ¶ 5. The
structure of the invention “results in a disconnect force which is greater than
the connect force.” Id. at ¶ 9.
Petitioner refers to Poon’s Figure 13 to argue that Poon teaches
detachable connector 150 having a housing with groove 154 with one or
more tapered sidewalls 156, 158 extending from a groove bottom. Pet. 24–
25. Petitioner further argues that pin/piston 162 having groove 154 with
tapered surfaces 164, 166 can be inserted into the housing 152 until the
spring 160 rests between housing groove 154 and the piston groove. Id.
at 25. As reproduced below, Petitioner provides an annotated version of
Poon’s Figure 13:

IPR2014-00572
Patent 8,297,662 B2

13

Figure 13 depicts an embodiment of Poon showing housing 152,
groove 154, and angled sidewalls 156, 158. Ex. 1005 ¶ 68; Pet. 24.
Petitioner argues that Poon discloses every element of claims 1 and 19,
relying in whole or in part on the structure shown in Figure 13 in support of
its arguments. Pet. 24–28, 29–32.
With respect to claim 10, Petitioner relies on Poon’s Figure 16 to
disclose certain limitations such as the housing groove’s tapered surface and
a sidewall extending therefrom. Pet. 34. Specifically, Petitioner points to
left sidewall of groove 234, noting in its annotations that the left sidewall
comprises a tapered sidewall and a perpendicular sidewall. Petitioner’s
annotated Figure 16 is reproduced below:

Figure 16 is “is a cross sectional view of yet another embodiment of the
present invention in which the piston includes two contact retaining walls
defining a tapered groove.” Ex. 1005 ¶ 39.
Petitioner also challenges claims 7, 15, and 16 as unpatentable under
35 U.S.C. § 103(a) over Poon in view of an obvious design choice to
IPR2014-00572
Patent 8,297,662 B2

14

combine the features of Figures 13 and 16 of Poon. Pet. 36–38. Petitioner
argues that Figure 16 of Poon is an embodiment with a housing groove
having a groove bottom surface, a tapered release surface, a side wall
extending from the tapered release surface, and a side wall extending from
the groove bottom surface. Id. at 37. As such, Petitioner argues that the
embodiments found in claims 7, 15, and 16 merely combine known
elements, such as the tapered surface extending from a groove bottom
surface in Figure 13, and perpendicular sidewalls shown in Figure 16. Id.
at 38. Patent Owner did not contest whether combining Poon’s
embodiments would be a mere design choice. Poon discloses a wide range
of designs for the housing groove, including designs containing and
combining the various elements identified by Petitioner, which supports the
argument that the elements could be combined as a matter of design choice.
Patent Owner argues, with respect to the anticipation and obviousness
grounds based on Poon alone, that the subject matter of Poon’s Figures 13,
16, and 18 is not prior art to the ’662 patent, and thus, these two grounds
must fail. PO Resp. 13. Patent Owner agreed that it has not made any
substantive arguments on the point of whether Poon anticipates the
challenged claims. Tr. 60:7–13. Patent Owner, however, did not expressly
concede that Poon anticipates. Id. at 60:22–25.
Petitioner responds that Patent Owner “failed to present any
arguments as to how the claims-at-issue differ from the Poon Reference.”
Pet. Reply 6. Petitioner, referring back to its Petition, maintains that Figure
13 teaches every limitation of claims 1–6, 8–14, and 19, and that the
combination of Figures 13 and 16 teach all the limitations of claims 7, 15,
and 16. Id.
IPR2014-00572
Patent 8,297,662 B2

15

Upon review of the complete record, we find that Petitioner has
established, by a preponderance of the evidence, that claims 1–6, 8–14, and
19 are unpatentable under 35 U.S.C. § 102(e) as anticipated by Poon; and
that claims 7, 15, and 16 are unpatentable under 35 U.S.C. § 103(a) as
obvious over Poon. We have reviewed the arguments presented in the
Petition and the supporting evidence regarding the anticipation of claims 1–
6, 8–14, and 19, and the obviousness of claims 7, 15, and 16, the substance
of which was not disputed by Patent Owner in its Response. Patent Owner,
in its Response, relies solely on its arguments and evidence concerning
whether Poon is prior art, and relies on its conclusion that Poon is not prior
art to argue that the anticipation and obviousness grounds based on Poon
must fail. See generally PO Resp. In the Scheduling Order, we cautioned
Patent Owner that any arguments for patentability not raised in the Response
would be deemed waived. Paper 11, 3.
We find a preponderance of the evidence establishes that Poon
expressly discloses each and every element of claims 1–6, 8–14, and 19, and
that claims 7, 15, and 16 are obvious in view of Poon. We conclude that
claims 1–6, 8–14, and 19 are unpatentable as anticipated by Poon, and that
claims 7, 15, and 16 are unpatentable as obvious over Poon.
IPR2014-00572
Patent 8,297,662 B2

16

C. Anticipation by Guertin
We instituted inter partes review to determine whether claims 1–3, 5–
11, 13–16, and 19 are unpatentable under 35 U.S.C. § 102(b) as anticipated
by Guertin; and whether claims 4 and 12 are unpatentable under 35 U.S.C.
§ 103(a) as obvious over Guertin and Poon.
Guertin discloses “breakaway couplings for use with a coaxial fuel
supply and vapor recovery hose.” Ex. 1002, 1:7–8. Guertin’s Figure 1,
depicted below, illustrates an exemplary embodiment.

Figure 1 depicts an axial section of a coaxial breakaway coupling
shown in its coupled position. Id. at 2:56–58. This embodiment includes
coaxial breakaway coupling 10 with interfitting sections 12 and 14. Id.
at 3:6–7. Annular canted coil spring 76 is confined within groove 73 and is
expanded slightly by end portion 42 of valve body 16 until spring 76 snaps
into external groove 43 within valve body 16 when coupling sections 12 and
14 are pressed axially together to a connected or coupled position. Id.
at 3:61–68.
Guertin’s canted coil spring 76 and the “tapered surfaces of the
grooves 73 and 43 are selected to provide for separation of the coupling
IPR2014-00572
Patent 8,297,662 B2

17

sections 12 and 14 with a predetermined tension force and the recoupling of
the sections with a substantially lower axial or compression force.” Id.
at 4:1–5. Petitioner provides an annotated detail of Guertin’s Figure 1,
reproduced below, illustrating elements 43, 73, and 76:

Annotated Figure 1 depicts a segment of an axial section of a coaxial
breakaway coupling shown in its coupled position. Pet. 8.
Figure 6 of Guertin is depicted below, for comparison:

Figure 6 is “an axial section of a modified coaxial breakaway coupling
similar to the coupling shown in FIG. 1 and integrated with a swivel
IPR2014-00572
Patent 8,297,662 B2

18

coupling in accordance with another embodiment of the invention.”
Ex. 1002, 2:67–3:2. Guertin states that in Figure 6, the “coaxial breakaway
coupling 150 is constructed substantially the same as the coupling 10 except
with a shorter length. Accordingly, the same reference numbers are used to
identify the same corresponding parts or components.” Id. at 5:11–15.
Details of Figure 1 and Figure 6 highlighted by the parties are shown
below.

“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co., 814 F.2d 628, 631 (Fed.
Cir. 1987). The elements must be arranged as required by the claim, but this
is not an ipsissimis verbis test. In re Bond, 910 F.2d 831, 832 (Fed. Cir.
1990). “[U]nless a reference discloses within the four corners of the
document not only all of the limitations claimed but also all of the
limitations arranged or combined in the same way as recited in the claim, it
cannot be said to prove prior invention of the thing claimed, and thus, cannot
anticipate under 35 U.S.C. § 102.” Net MoneyIN, Inc. v. VeriSign, Inc., 545
F.3d 1359, 1371 (Fed. Cir. 2008).
IPR2014-00572
Patent 8,297,662 B2

19

Regarding the Figures of Guertin, Patent Owner argues, first, that
Guertin’s Figure 1 embodiment does not show all the limitations as arranged
in the independent claims. PO Resp. 22. Patent Owner argues, second, that
Guertin’s Figure 6 embodiment does not show all the limitations as arranged
in the independent claims. Id. at 26. Patent Owner argues: “If anything, the
clearer figure of Guertin, Figure 1, should be used and not the smudged and
unclear Figure 6.” Id. at 30. Finally, Patent Owner argues that the couplers
depicted in Guertin’s Figure 1 and Figure 6 are different and cannot be
combined to anticipate any claims. Id. at 31. In sum, Patent Owner argues
that Figure 1 fails to show several claimed features; Figure 6 is blurred,
smudged, unclear, and fails to show with particularity all the claimed
structural features and how they are put together, and thus, “neither the
Figure 1 embodiment nor the Figure 6 embodiment teaches all of the
limitations of any of independent claims 1, 10 and 19.” Id. at 34, 36.
Patent Owner argues that, although an enabling picture may be used to
reject claims, the picture must show all the claimed structural features and
how they are put together. PO Resp. 17 (citing MPEP §2121.04; Jockmus v.
Leviton, 28 F.2d 812 (2d Cir. 1928)). Patent Owner also argues that
drawings and pictures can anticipate claims if they clearly show the structure
claimed, but that “Guertin’s drawings clearly show features that depart from
the claimed connectors and/or are blurred and smeared by ink or by poor
reproduction, among other things, and therefore do not clearly show all of
the claimed limitations.” Id. at 18 (citing MPEP § 2125).
Regarding the specification of Guertin, Patent Owner states that
Guertin is “completely silent regarding the geometry of the external groove
43 and internal grooves 73 other than a passing statement that they have
IPR2014-00572
Patent 8,297,662 B2

20

“tapered surfaces”, and does not disclose how the two grooves 43, 73 allow
separation of the two couplings 12, 14.” Id. at 21. Patent Owner notes that
Guertin dedicates “only a single paragraph to describing the coupling
structure that holds sections 12 and 14 together.” Id. at 20.
Petitioner argues: “The detailed description in Guertin explicitly
establishes a direct link between coupling 10 (in Figure 1) and coupling 150
(in Figure 6): ‘Referring to FIG. 6, a coaxial breakway coupling 150 is
constructed substantially the same as the coupling 10 except with a shorter
length.’” Pet. Reply 7 (quoting Ex. 1002, 5:11–13). Petitioner takes issue
with the case law cited by Patent Owner in support of its position, noting
that in this case, unlike in Net MoneyIn, there are no separate, independently
functioning protocols. Id. at 8. Petitioner relies on the Declaration of David
Imler to support its assertion that coupling 10 and coupling 150 have
identical geometries. Id. at 7–8, 10 (citing Ex. 1017 ¶¶ 26–27). Petitioner
urges the Board to “look to the commercial versions of couplings 10 and 150
to identify their inherent features.” Id. at 10 (citing In re Baxter, 656 F.2d
679 (CCPA 1981)). Petitioner asks us to credit the testimony of its experts
Imler, Cook, and Pratt (Exs. 1017, 1018, 1019) but not the testimony of Mr.
Poon (Exs. 1015, 2002, 2007), who Petitioner argues only focused on
Guertin’s Figure 6 “on its face,” or the testimony of Mr. McCarthy
(Ex. 2008). Id. at 11–15.
The Guertin specification states that the coupling 150 in Figure 6 is
“constructed substantially the same as the coupling 10 [in Figure 1] except
with a shorter length. Accordingly, the same reference numbers are used to
identify the same corresponding parts or components.” Ex. 1002, 5:12–15.
The language “substantially the same” does not address, specifically, what
IPR2014-00572
Patent 8,297,662 B2

21

elements are identical between Figure 1 and Figure 6. The language “except
with a shorter length,” however, indicates that the portions of Figure 1 that
are not concerned with making the length shorter remain unchanged in
Figure 6. Guertin discusses specifically which structures of Figure 1 are
replaced by different structures in Figure 6 to obtain the shorter length; these
do not include pin groove 43 or housing groove 73. Id. at 5:15–21.
Guertin’s specification further states that “spring 76 snaps into the
external groove 43 within the valve body 16, as shown in FIG. 1, when the
coupling sections 12 and 14 are pressed axially together to a connected or
coupled position.” Ex. 1002, 3:64–68. The “snaps into” language indicates
that spring 76 is seated in pin groove 43. Patent Owner does not argue
persuasively that there is any other interpretation to this language, other than
“I guess you could say, it snaps partially in.” Tr. 47:14–15. Thus, Guertin’s
specification alone discloses that spring 76 snaps into pin groove 43, which
has tapered surfaces to provide for separation of the coupling sections 12
and 14 with a predetermined tension force and the recoupling of the sections
with a substantially lower axial or compression force.
Guertin’s Figure 1 is clear, but does not show the coil seated in the pin
groove. Figure 1 shows that the pin groove has tapered sidewalls. Figure 2,
in which pin groove 43 is called out, also shows that pin groove 43 has
tapered sidewalls. Figure 6 is not as clear as Figure 1 in its depiction of the
sidewalls of pin groove 43, but pin groove 43 also is partially obscured by
spring 76. Figure 1 is in a different position (fully engaged) than Figure 6
(not completely engaged), which Patent Owner agrees is the case. PO Resp.
32. Petitioner’s expert Mr. Imler further testified that, based on his
experience in manufacturing the breakaway couplings described in Guertin,
IPR2014-00572
Patent 8,297,662 B2

22

any variations among Figure 1, 2, and 6 “are the product of inaccuracies in
the drawings.” Imler Decl. ¶ 27 (cited in Pet. Reply 7–8); see In re Baxter
Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991) (“[E]xtrinsic evidence
may be considered when it is used to explain, but not expand, the meaning
of a reference.”).
We are not persuaded by Patent Owner’s arguments. Based on the
current record, we do not see anything in the disclosure of Guertin, nor does
Patent Owner point to anything in the disclosure of Guertin, that confirms or
demonstrates that the pin grooves of Figure 1 and Figure 6 are separate and
unrelated embodiments. Nor is there any indication in Guertin that, apart
from the shorter length and the swivel connection, that Figures 1 and 6
describe embodiments that are unrelated to each other. Rather, as discussed
above, Figures 1 and 6 describe the structure of the canted coil spring system
portion of Guertin, with features common to all of the embodiments
disclosed in Guertin. Based on the current record, Figures 1 and 6 are more
reasonably understood as describing a single embodiment of the canted coil
spring system portion of Guertin. See Groupon, Inc., v. Blue Calypso, LLC,
Case CBM2013-00034, slip. op. at 38–39 (PTAB Dec. 17, 2014) (Paper 45)
(distinguishing Net MoneyIN, 545 F.3d 1359, which relied on In re Arkley,
455 F.2d 586 (CCPA 1972)); see also Wm. Wrigley Jr. Co. v. Cadbury
Adams USA LLC, 683 F.3d 1356, 1361 (Fed. Cir. 2012) (distinguishing Net
MoneyIN).
Additionally, the language of claim 1 and claim 10 only requires that
the spring be “sized to cooperate with the pin groove and the housing groove
to permit latching and unlatching located in the pin groove and the housing
groove with the plurality of coils contacting both tapered surfaces of the pin
IPR2014-00572
Patent 8,297,662 B2

23

groove.” Claims 1 and 10 do not say when the plurality of coils need to be
contacting both tapered surfaces of the pin groove. The contact of coils with
both tapered surfaces of the pin groove is indicated by the “snaps into”
language, and is shown in Figure 6. Claim 19 states that the spring is “sized
to cooperate with the pin groove and the housing groove to permit latching
and unlatching located in both the pin groove and the housing groove with
the plurality of coils simultaneously contacting the two tapered surfaces of
the pin groove and the tapered surface of the housing groove.” This too is
indicated by the “snaps into” language and Figure 6. As Guertin’s Figure 6
depiction shows the plurality of coils contacting both tapered surfaces of the
pin groove at a different stage in the process, there are not necessarily
inconsistencies within Guertin’s disclosure relating to the plurality of coils
contacting both tapered surfaces of the pin groove. We further credit Mr.
Imler’s testimony that a person of ordinary skill in the art would “understand
from Guertin that the pin groove in Figure 6 has two tapered surfaces,” and
“that Figure 6 depicts a canted coil spring in contact with the two tapered
surfaces of the pin groove.” Ex. 1017 ¶ 38.
We determine that Petitioner has demonstrated, by a preponderance of
the evidence, that claims 1–3, 5–11, 13–16, and 19 are anticipated by
Guertin.
D. Obviousness over Guertin and Poon
Regarding its argument that claims 4 and 12 as unpatentable under
35 U.S.C. § 103 over Guertin in view of Poon, Petitioner states that “Guertin
does not explicitly disclose a canted coil spring spaced from the tapered
surface or housing groove.” Pet. 23. Petitioner argues, however, that it
would have been obvious “as a mere design choice to increase the depth of
IPR2014-00572
Patent 8,297,662 B2

24

groove 73 or decrease the diameter of the canted coil spring 76 in Guertin to
provide a space between the canted coil spring and tapered surface or bottom
surface of a housing groove in view of Poon.” Id. Patent Owner did not
contest whether combining Guertin’s and Poon’s teachings would be a mere
design choice. The shape of Guertin’s housing groove is similar to the shape
of certain of Poon’s housing grooves, such as those shown in Figures 1 and
12. Poon additionally discloses a wide range of designs for the housing
groove, which supports the argument that the size of the elements identified
by Petitioner could be increased or decreased as a matter of design choice.
Patent Owner states that “since the present proceeding concerns only the law
of anticipation, Patent Owner directs the present discussion to arguments
showing that Guertin cannot anticipate the claims.” PO Resp. 36 n.1. After
review of the record, we are persuaded that Petitioner has shown that claims
4 and 12 would have been obvious over Guertin and Poon.
E. Motions to Exclude
i. Petitioner’s Motion to Exclude
Petitioner filed a Motion to Exclude (Paper 40, “Pet. Mot. to Excl.”),
to which Patent Owner responded (Paper 45, “Resp. to Pet. Mot. to Excl.”)
and to which Petitioner filed a Reply (Paper 48, “Reply on Pet. Mot. to
Excl.”). Petitioner’s Motion seeks to exclude Exhibits 2018 and 2019,
which are photographs of couplers shown to expert David Imler during his
deposition. Pet. Mot. to Excl. 2. Petitioner objects to Exhibits 2018 and
2019 because Patent Owner “failed to lay a foundation for the couplers,
failed to authenticate the couplers, and failed to properly serve the couplers.”
Id. Petitioner also alleges that the Exhibits 2018 and 2019 should be
excluded as outside the proper scope of Mr. Imler’s cross-examination. Id.
IPR2014-00572
Patent 8,297,662 B2

25

at 3. Petitioner’s Motion also seeks to exclude Exhibit 2020, which is
identified as Catlow Assembly Drawing No. C1000S, because “(1) the
Catlow Assembly Drawing exceeds the scope of the cross-examination, (2)
the Catlow Assembly Drawing is irrelevant, and (3) the Catlow Assembly
Drawing cannot be authenticated.” Id. at 5.
Patent Owner argues that Exhibit 2020 is directly within the scope of
Mr. Imler’s Declaration because it shows his testimony to be untrue, and
relevant because it shows a main basis for Mr. Imler’s opinion was untrue;
Patent Owner further argues Mr. Imler is a person having direct knowledge
of Catlow’s products and drawings, and confirmed that Exhibit 2020
depicted Catlow’s breakaway couplings. Resp. to Pet. Mot. to Excl. 2–7.
With respect to Exhibits 2018 and 2019, Patent Owner argues that (1) Mr.
Imler is a person having direct knowledge of Catlow’s products and
drawings, and confirmed that Exhibits 2018 and 2019 were Catlow’s
breakaway couplings; (2) Exhibits 2018 and 2019 are directly within the
scope of Mr. Imler’s Declaration; and (3) Patent Owner sufficiently served
the couplers depicted in Exhibits 2018 and 2019 to opposing counsel, and
opposing counsel was able to handle and inspect the couplers. Id. at 9–15.
The moving party has the burden of proof to establish that it is entitled
to the requested relief. 37 C.F.R. § 42.20(c). We are unpersuaded that the
Exhibits at issue should be excluded. Petitioner’s objections to Exhibits
2018, 2019, and 2020 are directed more to the weight that the information
disclosed therein should be afforded, than to its admissibility. It is within
our discretion to assign the appropriate weight to be accorded to the
information in Exhibits 2018, 2019, and 2020. The Board, sitting as a non-
jury tribunal with administrative expertise, is well-positioned to determine
IPR2014-00572
Patent 8,297,662 B2

26

and assign appropriate weight to evidence presented. Gnosis S.P.A. v. S.
Ala. Med. Sci. Found., IPR2013-00118, slip op. at 43 (PTAB June 20, 2014)
(Paper 64); see also Donnelly Garment Co. v. NLRB, 123 F.2d 215, 224 (8th
Cir. 1941) (“One who is capable of ruling accurately upon the admissibility
of evidence is equally capable of sifting it accurately after it has been
received.”). We, thus, decline to exclude Exhibits 2018, 2019, and 2020,
and deny Petitioner’s Motion.
ii. Patent Owner’s Motion to Exclude
Patent Owner filed a Motion to Exclude (Paper 38, “PO Mot. to Excl.”),
to which Petitioner responded (Paper 44, “Resp. to PO Mot. to Excl.”) and to
which Patent Owner filed a Reply (Paper 45, “Reply on PO Mot. to Excl.”).
Patent Owner’s Motion seeks to exclude Exhibit 1016 (U.S. Patent No.
5,570,719 to Richards) and the portions of Paper 31, Exhibit 1014, Exhibit
1017, Exhibit 1018, and Exhibit 1019 that refer to or discuss Exhibit 1016.
PO Mot. to Excl. 1.
Petitioner argues that Patent Owner’s Motion is an improper sur-reply.
Resp. to PO Mot. to Excl. 1. Petitioner further argues that Exhibit 1016 was
properly cited as extrinsic evidence for anticipatory purposes. Id. at 2.
We have concluded that the challenged claims are unpatentable without
relying upon Exhibit 1016 or on any portions of Exhibit 1016 in the papers
and Exhibits indicated by Patent Owner. We, therefore, need not decide the
Motion to Exclude as to this Exhibit; it is dismissed as moot.
III. SUMMARY
Petitioner has demonstrated, by a preponderance of the evidence, that
claims 1–3, 5–11, 13–16, and 19 are unpatentable under 35 U.S.C. § 102(b)
as anticipated by Guertin; that claims 4 and 12 are unpatentable under
IPR2014-00572
Patent 8,297,662 B2

27

35 U.S.C. § 103(a) as obvious over Guertin and Poon; that claims 1–6, 8–14,
and 19 are unpatentable under 35 U.S.C. § 102(e) as anticipated by Poon;
and that claims 7, 15, and 16 are unpatentable under 35 U.S.C. § 103(a) as
obvious over Poon. This is a Final Written Decision of the Board under 35
U.S.C. § 318(a).
IV. ORDER
For the reasons given, it is
ORDERED that Petitioner’s Motion to Exclude is denied;
FURTHER ORDERED that Patent Owner’s Motion to Exclude is
dismissed;
FURTHER ORDERED that claims 1–16 and 19 of the ’662 patent are
unpatentable; and
FURTHER ORDERED that parties to the proceeding seeking judicial
review of this Final Written Decision must comply with the notice and
service requirements of 37 C.F.R. § 90.2.

IPR2014-00572
Patent 8,297,662 B2

28

FOR PETITIONER:

John van loben Sels
Joseph Andelin
Mei Tsang
FISH & TSANG LLP
jvanlobensels@fishiplaw.com
jandelin@fishiplaw.com
mtsang@fishiplaw.com

FOR PATENT OWNER:

Tom H. Dao
Glen L. Nuttall
KLEIN, O’NEILL & SINGH, LLP
tdao@koslaw.com
gnuttall@,koslaw.com