`Trials@uspto.gov
`Tel: 571-272-7822
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` Paper 17
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` Entered: July 1, 2013
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`REDLINE DETECTION, LLC
`Petitioner
`
`v.
`
`STAR ENVIROTECH, INC.
`Patent Owner
`_______________
`
`Case IPR2013-00106
`Patent 6,526,808 B1
`_______________
`
`
`Before SALLY C. MEDLEY, JENNIFER S. BISK, and JAMES B. ARPIN,
`Administrative Patent Judges.
`
`ARPIN, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
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`Case IPR2013-00106
`Patent 6,526,808 B1
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`I.
`
`INTRODUCTION
`
`Redline Detection, LLC (“Petitioner”) filed a petition to institute an inter
`
`partes review of claims 9 and 10 of Patent No. US 6,526,808 B1 (Ex. 1001; the
`“’808 Patent”) (Paper 8; “Pet.”). Star Envirotech, Inc. (“Patent Owner”) has filed a
`patent owner preliminary response (Paper 13; “Prel. Resp.”). We have jurisdiction
`under 35 U.S.C. § 314.
`The standard for instituting an inter partes review is set forth in 35 U.S.C.
`§ 314(a) which provides as follows:
`THRESHOLD -- The Director may not authorize an inter partes
`review to be instituted unless the Director determines that the
`information presented in the petition filed under section 311 and any
`response filed under section 313 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 petition and patent owner preliminary response,
`we determine that the information presented in the petition establishes that there is
`a reasonable likelihood that Petitioner would prevail with respect to claims 9 and
`10 of the ’808 Patent. Accordingly, pursuant to 35 U.S.C. § 314, we authorize an
`inter partes review to be instituted as to claims 9 and 10 of the ’808 Patent.
`A.
`Related Proceedings
`The ʼ808 Patent is involved in concurrent district court litigation. On
`October 25, 2012, Patent Owner filed an action against Petitioner and Kenneth A.
`Pieroni, a named inventor on the ’808 Patent, for infringement of the ʼ808 Patent
`and other asserted claims, Star EnviroTech, Inc. v. Redline Detection, LLC et al.,
`SACV12-1861-DOC (C.D. Cal.). See Pet. 1. On April 13, 2013, the U.S. District
`Court for the Central District of California stayed this litigation pending the
`outcome of the U.S. Patent and Trademark Office’s (the “Office’s”) proceedings in
`
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`regard to this Petition. Ex. 2004 (Civil Minutes - General).
`
`The ’808 Patent
`B.
`The ’808 Patent relates to methods for generating smoke for use in a
`volatile, potentially explosive environment. ’808 Patent, col. 6, ll. 44-67. In
`particular, the ’808 Patent describes methods for generating smoke, in which a
`flammable fluid is vaporized into smoke in an inert environment created within a
`closed smoke producing chamber. Id. at col. 2, ll. 8-13; col. 6, ll. 54-57.
`A system, suitable for use in performing such methods, is illustrated in
`Figure 1, and Figure 1 is reproduced below:
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`In Figure 1, a schematic of a smoke and clean air generating apparatus 1 for
`verifying the presence and detecting the location of leaks in a fluid system under
`test is depicted. ’808 Patent, col. 2, ll. 62-65. Apparatus 1 comprises a sealed
`chamber 6 containing a non-toxic oil supply 8. Id. at col. 3, ll. 25-27. An air inlet
`tube 10 projects upwardly from the bottom of chamber 6 and extends above the
`level of oil supply 8. Id. at ll. 27-28. Chamber 6 further comprises a resistor
`heating grid (e.g., a coil) 14, as well as a fluid baffle 18 having a smoke outlet
`orifice 20. Id. at ll. 32-33, 35-36. Both heating grid 14 and baffle 18 extend
`laterally across chamber 6, and baffle 18 is disposed above heating grid 14. Id. at
`ll. 32-40.
`In an embodiment, air from an air compressor 25 may be delivered via air
`inlet tube 10 at a sufficient rate to cause some of the oil from oil supply 8 to be
`drawn through an oil inlet orifice 12 into inlet tube 10. Id. at ll. 41-46. The
`mixture of compressed air and oil then is blown upwardly and outwardly from inlet
`tube 10 towards and into contact with heated grid 14. Id. at ll. 46-50. Upon
`contacting heated grid 14, the oil is vaporized instantaneously into smoke, and the
`rising smoke passes through orifice 20 in baffle 18 and is taken up by a smoke
`outlet line 2. Id. at ll. 50-52. Smoke from outlet line 2 may be conveyed via a
`smoke supply line 4 to a system undergoing testing. Id. at ll. 52-56.
`In another embodiment,
`gases other than air may be supplied to the air inlet tube 10 of
`apparatus 1 to cause a mixture of such gas and oil to be blown towards
`the heating grid 14. . . . As an alternative to pressurized air, carbon
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`dioxide or nitrogen gas from a pressure and flow regulated tank or
`bottle 60 can be used because of their non-flammable and inert
`characteristics. . . . Moreover, producing smoke with nitrogen gas
`rather than air would enable a variety of high pressure systems . . . to
`be tested at high operating temperatures but without the inherent risks
`of explosion.
`
`
`Id. at col. 6, ll. 46-67 (emphases added). Thus, the ’808 Patent describes at least
`two embodiments: one in which smoke is produced using pressurized air and
`another in which smoke is produced using another gas, such as carbon dioxide or
`nitrogen, instead of air.
`
`C. Exemplary Claims
`Of the challenged claims, claim 9 is independent; and claim 10 depends
`directly from independent claim 9. Claim 9 was amended and claim 10 was added
`during a first reexamination of the ’808 Patent (Ex. 1001 (Ex Parte Reexamination
`Certificate No. US 6,526,808 C1)) and their patentability later was confirmed
`during a second reexamination of the ’808 Patent (Ex. 1001 (Ex Parte
`Reexamination Certificate No. US 6,526,808 C2)). Because only these two claims
`are presented for inter partes review in the petition, claims 9 and 10 are reproduced
`below to demonstrate the claimed subject matter (emphases showing material
`added in italics and deleted in brackets during reexamination):
`9.
`A method for generating smoke for use at a volatile, potentially
`explosive environment, said method comprising the steps of:
`
`
`locating a heating element within a closed smoke producing
`chamber, said smoke producing chamber having a gas inlet and a
`smoke outlet;
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`delivering a flammable fluid to said heating element within the
`closed smoke producing chamber;
`
`energizing said heating element for vaporizing into smoke [and]
`within the closed smoke producing chamber the flammable fluid that
`is delivered thereto;
`
`
`blowing a supply of non-combustible gas under pressure into
`the closed smoke producing chamber by way of said gas inlet thereof
`for (1) creating an inert environment within said chamber so as to
`prevent ignition and thereby avoid the possibility of an explosion
`when said flammable fluid is vaporized into smoke by said heating
`element and (2) for carrying the smoke to the volatile potentially
`[hazardous] explosive environment by way of the smoke outlet of the
`closed smoke producing chamber, said volatile potentially explosive
`environment being a closed system undergoing testing for leaks; and
`
`connecting the smoke outlet of said closed smoke producing
`chamber to the closed system undergoing testing, said supply of non-
`combustible gas for creating an inert environment within the closed
`system to which the smoke is carried, said inert environment with the
`closed system preventing ignition within the closed system during the
`testing thereof;
`
`wherein the closed system to be tested for leaks at the volatile,
`potentially explosive environment is the evaporative system of a motor
`vehicle including a fuel tank, further comprising delivering smoke
`from the smoke outlet of said smoke producing chamber to the fuel
`tank.
`
`10. The method for generating smoke recited by Claim 9,
`comprising the additional step of regulating the pressure at which the
`smoke is carried by said non-combustible gas from said closed smoke
`producing chamber to the closed system undergoing testing.
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`D. Prior Art Relied Upon
`Petitioner relies upon the following prior art references:
`
`Dec. 1, 1981
`Apr. 28, 1992
`
`July 19, 1950
`July 28, 1971
`
`(Ex. 1012)
`(Ex. 1005)
`
`(Ex. 1010)
`(Ex. 1008)
`
`GB 640,266
`GB 1,240,867
`
`Swiatosz US 4,303,397
`Gilliam
`US 5,107,698
`Pauley1
`Stoyle 2
`
`Emi-Tech, Inc., VACUTEC® Operating and Maintenance Instructions
`(1995) (hereinafter “VACUTEC”) (Ex. 1006)
`
` “Research and Testing,” AIRCRAFT ENGINEERING AND AEROSPACE
`TECHNOLOGY, Vol. 41, Issue 1, pg. 44 (Jan. 1969) (hereinafter the
`“AE Article”) (Ex. 1007)
`
`T. Dunnington, “High Temperature Smoke Training – the Way Forward,”
`INDUSTRIAL FIRE JOURNAL, 56 (Dec. 1995-Jan. 1996) (hereinafter the
`“IJF Article”) (Ex. 1009)
`
`Entertainment Services & Technology Association, Introduction to Modern
`Atmospheric Effects (2nd ed. 1998) (hereinafter the “ESTA Article”)
`(Ex. 1011)
`
`
`1 Petitioner refers to this reference as “GB ‘266” in the petition (Pet. 4), and Patent
`Owner refers to this reference as “the Pauley Patent” in the patent owner
`preliminary response (Prel. Resp. 15). In this decision, we refer to this reference
`simply as “Pauley.”
`2 Petitioner refers to this reference as “GB ‘867” in the petition (Pet. 4), and Patent
`Owner refers to this reference as “the Stoyle Patent” in the patent owner
`preliminary response (Prel. Resp. 15). In this decision, we refer to this reference
`simply as “Stoyle.”
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`Applications For The Smoke Generator, http://www.smokemachines.com
`(January 28, 1999) (hereinafter the “1999 Website”) (Ex. 1013)
`
`E.
`
`The Asserted Grounds
`
`Petitioner alleges that the challenged claims are unpatentable under 35
`U.S.C. § 103(a) based upon the listed prior art references in various combinations.
`The specific grounds are detailed in the table below:
`
`Grounds Claims
`
`Statutory Basis
`
`Applied References
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`9 and 10 35 U.S.C. § 103(a) Gilliam and the AE Article
`
`9 and 10 35 U.S.C. § 103(a) Gilliam and Stoyle
`
`9 and 10 35 U.S.C. § 103(a) Gilliam, the IJF Article, and Swiatosz
`
`9 and 10 35 U.S.C. § 103(a) Gilliam, the IJF Article, and the 1999
`Website
`
`9 and 10 35 U.S.C. § 103(a) Gilliam, Pauley, and the 1999 Website
`
`9 and 10 35 U.S.C. § 103(a) Gilliam, the ESTA Article, and the 1999
`Website
`
`9 and 10 35 U.S.C. § 103(a) VACUTEC, Gilliam, and the AE Article
`
`9 and 10 35 U.S.C. § 103(a) VACUTEC, Gilliam, Stoyle, and the AE
`Article
`
`9 and 10 35 U.S.C. § 103(a) VACUTEC, Gilliam, the IJF Article,
`and Swiatosz
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`10
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`9 and 10 35 U.S.C. § 103(a) VACUTEC, Gilliam, Pauley, and the
`1999 Website
`
`11
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`12
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`9 and 10 35 U.S.C. § 103(a) VACUTEC, Gilliam, IJF Article, and
`the 1999 Website
`
`9 and 10 35 U.S.C. § 103(a) VACUTEC, Gilliam, the ESTA Article,
`and the 1999 Website
`
`II. ANALYSIS
`
`Claim Construction
`A.
`As a first step in our analysis for determining whether to institute a trial, we
`interpret the claims. In an inter partes review, claim terms in an unexpired patent
`are given their broadest reasonable interpretation in light of the specification of the
`patent in which they appear. 37 C.F.R. § 42.100(b); see Office Patent Trial Practice
`Guide, 77 Fed. Reg. 48756, 48766 (Aug. 14, 2012). Under the broadest reasonable
`interpretation standard, claim terms are presumed to be given their ordinary and
`customary meaning as understood by one of ordinary skill in the art at the time of
`the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en
`banc). An inventor may rebut that presumption by providing a definition of the
`term in the specification with reasonable clarity, deliberateness, and precision. In
`re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In this regard, however, we are
`careful not to read a particular embodiment appearing in the written description
`into the claim if the claim language is broader than the embodiment. In re Van
`Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
`With the exception of the terms: “flammable fluid” and “locating,”
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`Petitioner proposes that we adopt the broadest reasonable interpretation of the
`claim terms in view of the Specification. Pet. 7-8. Additionally, Petitioner
`provides express interpretations for these contested claim terms. Id. at 16-19.
`Patent Owner contends that the interpretation of neither term is necessary to the
`evaluation of Petitioner’s challenge to claims 9 and 10. Prel. Resp. 36-37. In
`particular, the Patent Owner suggests that Petitioner is seeking to obtain an
`“advisory claim construction” from the Board for later use in co-pending district
`court litigation. Id. at 36. Nevertheless, we interpret the claims solely for the
`purpose of determining whether to institute inter partes review, and we here
`interpret expressly the claim terms: “flammable fluid” and “locating,” for which
`Petitioner proposes meanings other than their ordinary and customary meanings, as
`well as the claim terms: “closed,” “smoke,” and “inert environment,” in order to
`determine whether to institute a trial.
`1.
`“Flammable Fluid”
`Independent claim 9 recites the step of “delivering a flammable fluid to said
`heating element within the closed smoke producing chamber” (emphasis added).
`The Specification does not define, or even recite, the term: “flammable fluid.”
`Instead, the ’808 Patent generally describes vaporizing oil, such as a non-toxic oil,
`in a closed smoke producing chamber to produce smoke. ’808 Patent, col. 3, ll. 25-
`27. A pertinent definition of the word: “flammable” is “easily set on fire;
`combustible.” RANDOM HOUSE WEBSTER’S COLLEGE DICTIONARY, 497 (2nd
`Random House ed. 1999); see also MCGRAW-HILL DICTIONARY OF SCIENTIFIC
`AND TECHNICAL TERMS, 727 (4th ed. 1988) (“[o]f material, capable of supporting
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`combustion”). Further, a pertinent definition of the word: “combustible” is
`“capable of catching fire and burning.” RANDOM HOUSE WEBSTER’S COLLEGE
`DICTIONARY at 263. Similarly, a pertinent definition of the word: “fluid” is “a
`substance, as a liquid or gas, that is capable of flowing and that changes shape at a
`steady shape when acted upon by a force.” Id. at 504.
`Petitioner contends that accepted definitions of the word “flammable,” at the
`time the ‘808 Patent was filed, referred to fluids with flash points below 141ºF
`(60ºC). Pet. 18. Petitioner further contends that the Specification incorporates the
`disclosure of U.S. Patent Application No. 09/020,841by reference and that this
`application describes a preferred embodiment of a smoke generating apparatus,
`which uses Citgo POA 46 oil, having a flash point of 468ºF (242ºC), to generate
`smoke. Id. at 17 (citing ’808 Patent, col. 1, ll. 18-21). Consequently, Petitioner
`contends that the ’808 Patent “encompasses the preferred smoke generating fluid
`with its 468ºF flash point” and that “the claim term ‘flammable fluid’ should
`include any fluid with a flash point of at least 468ºF or lower.” Id. at 17-18.
`Nevertheless, Petitioner fails to demonstrate where Patent Owner adopted the use
`of the preferred oil of the incorporated reference. Thus, we are not persuaded that
`the Petitioner’s proposed construction of this claim term is appropriate. Instead,
`for purposes of this decision, we conclude that the broadest reasonable
`interpretation of the term: “flammable fluid” is a fluid, including a liquid or gas
`(e.g., an oil), capable of catching fire and burning.
`2.
`“Locating”
`Independent claim 9 recites the step of “locating a heating element within a
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`closed smoke producing chamber . . .” (emphasis added). The Specification does
`not define the term: “locating.” A pertinent definition of the word: “to locate” is
`“to identify or discover the place or location of” or “to establish in a position,
`situation or locality.” RANDOM HOUSE WEBSTER’S COLLEGE DICTIONARY at 778.
`Petitioner contends that the term: “locating” should refer to “forming, placing, or
`positioning” an element, rather than merely “identifying” that element’s location.
`Pet. 19. We do not adopt Petitioner’s proposed definition of the term “locating”
`because Petitioner has not shown where in the Specification there is support for a
`definition of the term other than its plain and ordinary meaning. Nor has Petitioner
`directed us to evidence in the form of a declaration from one of ordinary skill in the
`art in support of the proposed definition. Therefore, for purposes of this decision,
`we conclude that the broadest reasonable interpretation of the term: “locating” is to
`establish an element in a position, situation or locality.
`3.
`“Closed”
`Independent claim 9 recites the step of “delivering a flammable fluid to said
`heating element within the closed smoke producing chamber” and “connecting the
`smoke outlet of said closed smoke producing chamber to the closed system
`undergoing testing . . .” (emphases added). Although the Specification does not
`define the term: “closed,” the Specification identifies “a sealed chamber 6,” as an
`embodiment of the “closed smoke producing chamber” (emphasis added).
`’808 Patent, col. 3, ll. 25-27. A pertinent definition of the word: “to close” is “to
`stop or obstruct the entrances, apertures, or gaps in.” RANDOM HOUSE WEBSTER’S
`COLLEGE DICTIONARY at 249. Therefore, for purposes of this decision and
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`consistent with the Specification, we conclude that the broadest reasonable
`interpretation of the term: “closed” is an adjective describing a chamber or other
`container the entrances, apertures, or gaps of which have been stopped or
`obstructed, e.g., sealed.
`4.
`“Smoke”
`Independent claim 9 recites the step of “energizing said heating element for
`vaporizing into smoke within the closed smoke producing chamber the flammable
`fluid that is delivered thereto” (emphases added). A pertinent definition of the
`word: “smoke” is the visible vapor and gases given off by a burning substance,
`esp. the mixture of gases and suspended carbon particles resulting from the
`combustion of wood or other organic matter . . . something resembling this, as a
`vapor or mist.” RANDOM HOUSE WEBSTER’S COLLEGE DICTIONARY at 1237; but see
`ESTA Article at 22 (“Smoke: small, solid particles dispersed in air that reduce
`visibility and reflect light.”); cf. ESTA Article at 21 (defining “Fog” and “Mist”).
`The Specification also describes that “the droplets of oil that are blown towards
`heating grid 14 from oil supply 8 will be vaporized into smoke within chamber 6.”
` ’808 Patent, col. 4, ll. 43-45 (emphasis added). Claim terms are construed
`consistently with the disclosure provided in the Specification. See Phillips, 415
`F.3d at 1316 (“the specification necessarily informs the proper construction of the
`claims”). We interpret the term: “smoke” as a vapor or mist produced by blowing
`a flammable liquid against a heating element.
`5.
`“Inert Environment”
`
`Independent claim 9 recites the step of “creating an inert environment within
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`said chamber so as to prevent ignition and thereby avoid the possibility of an
`explosion when said flammable fluid is vaporized into smoke by said heating
`element” (emphases added). The Specification does not define the term: “inert
`environment.” A pertinent definition of the word: “inert” is “[l]acking an activity,
`reactivity, or effect.” MCGRAW-HILL DICTIONARY OF SCIENTIFIC AND TECHNICAL
`TERMS at 956. According to claim 9, the “inert environment” achieves two results:
`(1) it prevents ignition and (2) it avoids the possibility of an explosion, when
`flammable fluid is vaporized by the heating element. The Specification explains
`that these “non-flammable and inert characteristics” may be achieved by the use of
`carbon dioxide or nitrogen gas, instead of pressurized air, to blow the flammable
`liquid against the heating element. See ‘808 Patent, col. 6, ll. 54-57. As noted
`above, claim terms are construed consistently with the disclosure provided in the
`Specification. See Phillips, 415 F.3d at 1316. Therefore, we interpret the term:
`“inert environment” as an environment formed within the closed smoke producing
`chamber and comprising a non-combustible gas, such as carbon dioxide or
`nitrogen, in which a vapor or mist of flammable fluid is suspended, in such a
`manner that the flammable fluid cannot ignite or explode.
`
`III. DECISION ON PETITION
`For the reasons described below, we institute an inter partes review of each
`of claims 9 and 10 based on unpatentability due to obviousness over Gilliam and
`Stoyle or over Gilliam, Pauley, and the 1999 Website. We deny as redundant
`institution based on alleged unpatentability due to obviousness over Gilliam in
`combination with one of the AE Article, the IJF Article, and the ESTA Article,
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`alone or in combination with Swiatosz or the 1999 Website. We also deny, as
`redundant, institution based on alleged unpatentability due to obviousness over
`Gilliam and VACUTEC in combination with one or more of the other applied
`references. See Pet. 23 (“VACUTEC teaches the use of the smoke machine of the
`Gilliam Patent . . .. The Gilliam Patent thus is used to supply any details of the
`construction not found in the VACUTEC reference.”), 25 (“[Stoyle] was filed in
`1968 and is the ‘patent applied for’ in the 1969 AE Article”); 26 (IFJ Article
`describing the ViCount smoke system of the AE Article).
`a.
`Assignor Estoppel
`Patent Owner contends that Kenneth Alan Pieroni, a named inventor and
`assignor of the ’808 Patent, is the founder and a current officer of Petitioner. Prel.
`Resp. 3-4. Patent Owner further contends that Mr. Pieroni is in privity with
`Petitioner. Id. at 2-4. Therefore, Patent Owner contends that Petitioner should be
`barred from pursuing an inter partes review of the ‘808 Patent under the equitable
`doctrine of assignor estoppel. Id. at 4-6 (citing 37 C.F.R. § 42.101(c)).
`As the Federal Circuit has explained,
`Assignor estoppel is an equitable doctrine that prevents one who has
`assigned the rights to a patent (or patent application) from later
`contending that what was assigned is a nullity. The estoppel also
`operates to bar other parties in privity with the assignor, such as a
`corporation founded by the assignor. . . . The estoppel historically has
`applied to invalidity challenges based on “novelty, utility, patentable
`invention, anticipatory matter, and the state of the art.”
`
`Diamond Scientific Co. v. Ambico, Inc., 848 F.2d 1220, 1224 (Fed. Cir. 1988)
`(citation omitted)(emphasis added). To the extent that the Board has the authority
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`to act in equity to deny a trial based on assignor estoppel,3 application of assignor
`estoppel requires a balancing of equities among the parties. Carroll Touch, Inc. v.
`Electro Mech. Sys., Inc., 15 F.3d 1573, 1579 (Fed. Cir. 1993).
`We are not persuaded that Patent Owner’s contentions alone support a
`finding of assignor estoppel. Further, because the claims at issue in the present
`petition have been amended during the course of two, ex parte reexaminations; it is
`clear that the claims at issue are not the same claims of the ’808 Patent that the
`named inventors assigned to Patent Owner. Consequently, the claims at issue were
`amended without the participation or approval of Mr. Pieroni. See Q.G. Prods.,
`Inc. v. Shorty, Inc., 992 F.2d 1211, 1212-1213 (Fed Cir. 1993) (citing
`Westinghouse Elec. & Mfg. v. Formica Insulation Co., 266 U.S. 342, 351 (1924)).
`Thus, even accepting the contentions presented by Patent Owner as true, Patent
`Owner has not shown sufficient grounds for barring the institution of a trial on the
`basis of assignor estoppel.
`b.
`35 U.S.C. § 325(d)
`Patent Owner asserts that each of the references relied upon by Petitioner in
`
`the petition for inter partes review either was considered by the Office during the
`examination of the claims for which review is sought or that, to the extent that the
`applied references themselves were not considered previously, the references are
`cumulative with respect to previously considered references. Prel. Resp. 25-38
`(citing 35 U.S.C. § 325(d)). Therefore, Patent Owner concludes that the Board
`should not institute a trial on any of the proposed grounds for review.
`
`3 Patent Owner contends that the Board has this authority. See Prel. Resp. 5-6.
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`Although Gilliam has been considered previously with respect to the claims
`at issue, Petitioner presents different arguments regarding new combinations of
`references and new supporting evidence, that were not before the Office. As such,
`we decline to deny the proposed grounds of review under 35 U.S.C. § 325(d).
`IV. GROUNDS FOR REVIEW
`
`Failure to Establish the Level of Ordinary Skill
`A.
`Initially, we note that Patent Owner opposes the proposed combination of
`the applied references and argues that Petitioner fails to establish the level of
`ordinary skill in the art in support of the combination of the teachings of the
`applied references. We are not persuaded by Patent Owner’s arguments.
`Patent Owner argues that Petitioner fails to offer testimony or other evidence
`to establish the level of ordinary skill in the relevant art. Prel. Resp. 8.
`Nevertheless, Patent Owner does not argue that the combinations of the teachings
`of Gilliam and Stoyle or of Gilliam, Pauley, and the 1999 Website are beyond the
`level of skill of a person of ordinary skill in the relevant art; nor does Patent Owner
`suggest a required level of skill of a person of ordinary skill in the relevant art.
`Patent Owner acknowledges that “the level of skill in the art might be gleaned from
`the prior art itself.” Id. at 9 (citing Litton Indust. Prods. V. Solid State Sys. Corp.,
`755 F.2d 158, 163-164 (Fed. Cir. 1985)). As the Federal Circuit has explained,
`
`While it is always preferable for the factfinder below to specify the
`level of skill it has found to apply to the invention at issue, the
`absence of specific findings on the level of skill in the art does not
`give rise to reversible error “where the prior art itself reflects an
`appropriate level and a need for testimony is not shown.”
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`Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (finding that the
`Board was not required to set forth express findings as to level of skill in art and
`quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158,163 (Fed.
`Circ. 1985)(emphasis added)). Here, we find that, for purposes of this decision, the
`prior art adequately reflects an appropriate level of skill and that Patent Owner
`does not demonstrate a need for testimony or other evidence to establish the level
`of skill of a person of ordinary skill in the relevant art.
`B.
`Gilliam and Stoyle
`Petitioner argues that independent claim 9 and dependent claim 10 are
`unpatentable under 35 U.S.C. § 103(a) over Gilliam and Stoyle. Pet. 34-44.
`Petitioner argues that Gilliam teaches all of the limitations of claims 9 and 10 of the
`’808 Patent, “except [that Gilliam uses] air instead of inert gas to generate smoke and
`carry that smoke to systems being tested.” Pet. 20. Thus, Petitioner argues that “but
`for the use of an inert gas, the Gilliam Patent discloses the claimed invention.” Id. at
`23. We agree with Petitioner. Petitioner relies on Stoyle for disclosing the use of an
`inert gas.
`Figure 3 of Gilliam (Ex. 1005) is reproduced below.
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`Figure 3 depicts a front, cut-away view of a smoke generating apparatus for use
`in detecting leaks. Gilliam, col. 4, l. 67-col. 5, l. 4. Referring to Figure 3, Gilliam
`describes a smoke generating assembly 35 that comprises an air pump 15 which
`introduced pressurized air into a chamber 30. Id. at col. 6, ll. 20-41. A smoke-
`producing fluid is introduced into chamber 30 via a filler port 6, and air generated by
`pump 15 circulates the smoke-producing fluid within chamber 30. Id. at ll. 22-23, 58-
`60. When the smoke-producing fluid comes in contact with a ceramic heating element
`11, the smoke-producing fluid vaporizes within chamber 30. Id. at col. 6, ll. 34-36.
`Smoke generated within chamber 30 then is conveyed via conduit 22 to a particular
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`automotive system for leak testing. Id. at col. 8, ll. 8-13.
`Smoke from assembly 35 may be “sealably communicated” to a vacuum system
`in an internal combustion engine to visibly identify “leaks of any and all sizes,
`regardless of their location” in an internal combustion engine and “in virtually any
`closed vacuum system in the automobile.” Id. at col. 3, ll. 7-11, 15-19, 48-52.
`Referring to Figure 5 (not reproduced here), assembly 35 further may comprise a
`“spark-arrestor 3 which is disposed at the remote end of conduit 22 as an interface
`with the vehicles engine.” Id. at col. 7, ll. 51-53. “[S]park-arrestor 3 prevents sparks
`or even flames from entering a vehicle's engine, thereby causing an explosion. Flames
`could be generated, for example, if a flammable fluid mixture was inadvertently
`created in chamber [30].” Id. at ll. 55-59 (emphasis added). Thus, Gilliam cautions
`against the potential risk of explosion if flammable smoke, generated within chamber
`30 of assembly 35, is introduced into portions of an automobile, such as a fuel tank,
`for testing. See Pet. 24, 45. We agree with Petitioner that Gilliam discloses
`substantially all of the limitations of independent claim 9, except the use of an inert
`gas. Patent Owner does not appear to dispute this conclusion. See Prel. Resp. 12-15.
`Figure 3 of Stoyle (Ex. 1008) is reproduced below.
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`Figure 3 depicts a longitudinal sectional view of the apparatus for heating mixtures of
`carbon dioxide and oil to produce a smoke or mist. Stoyle, 2:60-67. Stoyle describes
`that a smoke or mist for testing ventilation systems, or for theatrical effects, may be
`generated by heating a mixture of oil and carbon dioxide. Id. at 1:11-17. Referring to
`Figure 3, the mixture of oil and carbon dioxide is forced from a fluid inlet means 14
`(not shown) into a space 7 between a plug 11 and a bore 12, which eventually joins
`with an outlet means 10. Id. at 2:86-93, 2:99-108; see Pet. 38, 40, 42. Stoyle
`describes that the mixture of oil and carbon dioxide “emerges [from outlet means 10]
`in the form of a mist or smoke.” Id. at 2:107-8. We agree with Petitioner that Stoyle
`discloses the use of an inert gas to produce smoke. See Pet. 41-42.
`Patent Owner argues that Stoyle teaches an apparatus that generates smoke only
`after the mixture of heated oil and carbon dioxide gas leaves the apparatus and,
`therefore, does not disclose “producing smoke in an inert environment within a closed
`smoke-producing chamber.” Prel. Resp. 19, 22. In particular, Stoyle describes that
`the mixture “emerges in the form of a mist or smoke.” Id. (citing Stoyle, 2:104-109).
`Nevertheless, Petitioner relies on Gilliam, not Stoyle, to teach or suggest where the
`smoke is generated. Pet. 38-40. Petitioner relies on Stoyle to teach or suggest the
`combination of a flammable fluid with a non-combustible gas, e.g., carbon dioxide
`gas. Id. at 41-42. Further, although Stoyle describes that the mixture “emerges” from
`outlet means 10 in the form of a mist or smoke, Stoyle is silent on where the mist or
`smoke is generated. Patent Owner argues that Stoyle teaches that t
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