Page 1
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`2014 WL 4181969 (Patent Tr. & App. Bd.)
`
`Patent Trial and Appeal Board
`Patent and Trademark Office (P.T.O.)
`
`*1 SCHOTT GEMTRON CORPORATION, PETITIONER,
`v.
`SSW HOLDING COMPANY, INC., PATENT OWNER.
`
`Case IPR2013-00358
`Patent 8,286,561 B2
`
`August 20, 2014
`
`For PETITIONER:
`Marshall J. Schmitt
`
`Gilberto E. Espinoza
`MICHAEL BEST & FRIEDRICH LLP
`mjschmitt@michaelbest.com
`geespinoza@michaelbest.com
`
`Oliver A. Zitzmann
`SCHOTT CORPORATION
`oliver.zitzmann@us.schott.com
`PATENT OWNER:
`
`Michael P. Furmanek
`
`Jennifer Burnette
`
`Michael R. Weiner
`MARSHALL, GERSTEIN & BORUN LLP
`mfurmanek@marshallip.com
`jburnette@marshallip.com
`mweiner@marshallip.com
`
`Nathaniel L. Dilger
`ONE LLP
`ndilger@onellp.com
`
`Before JUSTIN T. ARBES, PHILIP J. HOFFMANN, and GEORGIANNA W. BRADEN
`Administrative Patent Judges
`BRADEN
`Administrative Patent Judge
`
`© 2014 Thomson Reuters. No Claim to Orig. US Gov. Works.
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`KOLCRAFT EXHIBIT 2007-1
`Artsana USA, Inc. v. Kolcraft Enterprises, Inc.
`IPR2014-01053
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`Page 2
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`FINAL WRITTEN DECISION
`
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`I. INTRODUCTION
`
`A. Background
`
`SCHOTT Gemtron Corporation (“Petitioner”) filed an Amended Petition (Paper 5, “Pet.”) requesting inter partes review
`of claims 1, 13, and 25 of U.S. Patent No. 8,286,561 B2 (Ex. 1001, “the '561 patent”) pursuant to 35 U.S.C. §§ 311-19.
`SSW Holding Company, Inc. (“Patent Owner”) filed a Preliminary Response (Paper 12, “Prelim. Resp.”). On November
`4, 2013, we instituted this inter partes review of claims 1, 13, and 25 on two grounds of unpatentability alleged in the Pe-
`tition. Paper 14 (“Dec. to Inst.”). After institution of review, Patent Owner filed a Response (Paper 46, “PO Resp.”) to
`the Petition. Petitioner filed a Reply (Paper 62 (confidential); Paper 63 (public)) (“Reply”) to Patent Owner's Response.
`
`Counsel for both Petitioner and Patent Owner were present and presented argument at an oral hearing held on June 23,
`2014. [FN1]
`
`The Board has jurisdiction under 35 U.S.C. § 6(c). In this final written decision, issued pursuant to 35 U.S.C. § 318(a)
`and 37 C.F.R. § 42.73, we determine Petitioner has not proven by a preponderance of the evidence that claims 1, 13, and
`25 of the '561 patent are unpatentable.
`
`B. The '561 Patent
`
`*2 The '561 patent describes shelving, such as shelving adapted for use in refrigerators and having a top surface with a
`hydrophobic surface arranged in a spill containment pattern. Ex. 1001, col. 1, ll. 15-18; col. 2, ll. 1-4. The spill contain-
`ment pattern is intended to act as a barrier to prevent spilled liquid from spilling onto other surfaces. Id. at col. 11, ll.
`28-37. An example of a spill containment pattern is shown in Figure 3 of the '561 patent, reproduced below:
`
`Figure 3 illustrates a preferred embodiment that includes shelving with a spill containment pattern consisting of a hydro-
`phobic surface in the pattern of a frame-like border. Id. at col. 2, ll. 26-30; col. 3, ll. 43-45. The border defines the
`boundaries of a single non-hydrophobic spill containment area therein. Id. at col. 3, ll. 39-46.
`
`C. Challenged Claims
`
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`KOLCRAFT EXHIBIT 2007-2
`Artsana USA, Inc. v. Kolcraft Enterprises, Inc.
`IPR2014-01053
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`Challenged claims 1, 13, and 25 are reproduced below.
`1. A shelf assembly comprising:
`a shelf panel having a generally flat top surface which is capable of supporting articles which may be placed on
`said shelf panel;
`a hydrophobic surface applied in a spill containment pattern on said top surface;
`wherein the majority of the surface area of said top surface of the shelf panel is not hydrophobic, thereby provid-
`ing one or more non-hydrophobic central portions bounded by said spill containment pattern of said hydrophobic
`surface.
`13. The shelf assembly of claim 1, wherein the hydrophobic surface comprises:
`a ceramic frit layer adjacent to and bonded to the top surface of said shelf panel; and
`a hydrophobic compound coated over the ceramic frit layer.
`25. A method of manufacturing a shelf capable of containing liquid spills thereon comprising:
`providing a panel having a generally flat top surface which is capable of supporting articles which may be
`placed on said panel;
`applying a hydrophobic surface arranged in a spill containment pattern generally in the plane of said top surface;
`leaving the majority of the surface area of said top surface of the panel non-hydrophobic, thereby providing one
`or more non-hydrophobic central portions bounded by the spill containment pattern of the hydrophobic surface.
`
`D. Prior Art References Alleged to Support Unpatentability
`
`The following table summarizes the prior art references asserted in the instituted grounds:
`
`Name
`Angros
`Baumann
`Picken
`
`Description
`US 5,948,685
`US 6,872,441 B2
`International Publ. No. WO
`2006/044641 A2
`E. Alleged Grounds of Unpatentability Instituted for Trial
`
`Date
`Sept. 7, 1999
`Mar. 29, 2005
`Apr. 27, 2006
`
`Exhibit
`Ex. 1005
`Ex. 1007
`Ex. 1009
`
`*3 The following table summarizes the challenges to patentability that were instituted for inter partes review:
`
`Reference(s)
`Angros and Picken
`Angros, Picken, and Baumann
`
`Basis
`§ 103(a)
`§ 103(a)
`
`Claim(s) Challenged
`1, 25
`13
`
`II. ANALYSIS
`
`A. Claim Interpretation
`
`1. Prior Construed Claim Terms
`In the Decision to Institute, we interpreted various claim terms of the ' 561 patent as follows:
`
`Term(s)
`“shelf panel”
`
`Interpretation
`“a piece of material positioned horizontally at a dis-
`tance above some other surface to hold objects”
`
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`“generally in the plane of said top surface”
`
`“majority of the surface area of said top surface of the
`shelf panel is not hydrophobic”
`
`“leaving the majority of the surface area of said top
`surface of the panel non-hydrophobic”
`
`“all or a portion of the hydrophobic surface extending a
`small distance above the level of the top surface of the
`shelf panel that is not readily noticeable to the naked
`eye”
`“the surface area of the non-hydrophobic portion is
`greater than the surface area of the hydrophobic por-
`tion”
`“the surface area of the non-hydrophobic portion is
`greater than the surface area of the hydrophobic por-
`tion”
`
`*4 See Dec. to Inst. 6-9. During the course of the trial, neither party challenged our construction of the claim terms. Thus,
`we see no reason to alter the constructions set forth in the Decision to Institute and we incorporate our previous analysis
`for purposes of this decision.
`
`2. Presently Construed Claim Term: “spill”
`Claim 1 recites a “hydrophobic surface applied in a spill containment pattern.”Claim 25 recites a “method of manufactur-
`ing a shelf capable of containing liquid spills thereon,” comprising “applying a hydrophobic surface arranged in a spill
`containment pattern.”Although the Petition and Patent Owner's Response do not set forth a formal construction for the
`claim term ““spill,” given the arguments presented by the parties, we now determine that a construction is necessary. In
`its Preliminary Response, Patent Owner argued that the plain meaning of “spill” is “an accidental or unintentional release
`of liquid.” Prelim. Resp. 15. According to Patent Owner, its position is supported by a dictionary definition of “spill,”
`which is “to cause or allow esp[ecially] accidentally or unintentionally to fall, flow, or run so as to be lost or wasted.” Id.
`at 15 (citing Merriam-Webster's Collegiate Dictionary 1202 (11th ed. 2006)) (Ex. 2003). Patent Owner contends that its
`proffered “plain meaning is also consistent with the '561 Patent specification, which describes with reference to Fig. 3,
`for example, one type of spill occurring when an open soda can is turned over onto its side on the top surface of the shelf
`panel.” Id. at 15 (citing Ex. 1001, col. 11, ll. 28-49). As Patent Owner explains, “[a] person of ordinary skill in the art
`would understand that this orientation of the opened soda can would be unintentional because it is not generally desirable
`to spill soda in a refrigerator.” Id.
`
`Petitioner, however, argued at the oral hearing that the term “spill” is not limited by the '561 patent to encompass only
`unintended, sudden, unexpected, or violent releases of liquid on a surface. Trans. 10:14-24, 18:9-12. Rather, according to
`Petitioner, “spill” in the context of the '561 patent has a “““very specific meaning,” which is merely “liquid being placed
`on the surface.” Id. at 10:20-21. According to Petitioner, such an interpretation of “spill” is supported by Examples 1-29
`in the '561 patent, which describes the intentional and methodical pouring of liquid onto a surface bounded by hydro-
`phobic material. Id. at 11:1-11; Reply 1-2.
`
`*5 Petitioner's position is unpersuasive. Contrary to Petitioner's characterization, Example 1 in the '561 patent discloses
`only a demonstration of water retention by a shelf with a hydrophobic border. See Ex. 1001, col. 20, ll. 1-9. The patent
`recounts, in Example 1, a test to determine the amount of water retainable on a shelf, within a hydrophobic border,
`without leakage. Id. Thus, Example 1 does not show that the term “spill” merely means liquid placed on a surface. There-
`fore, we construe “spill,” in accordance with its plain meaning and consistent with the specification of the '561 patent, to
`mean “an accidental or unintentional release of liquid.” See Ex. 2003; Ex. 1001, col. 11, ll. 28-49 (describing Figure 3 as
`illustrating “the concept that the hydrophobic surface 1030 will form a spill containment barrier,” and using soda can
`1026 turned on its side as an example for “spilled liquid”).
`
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`B. Claims 1 and 25--Alleged Obviousness over Angros and Picken
`Petitioner alleges that claims 1 and 25 of the '561 patent are unpatentable under 35 U.S.C. § 103(a) over Angros and
`Picken. Pet. 22-23, 33-34. Patent Owner disputes Petitioner's position, arguing that Angros is not analogous art and that a
`person of ordinary skill in the art would not have had reason to combine the references in the manner proposed by Peti-
`tioner. PO Resp. 9-10.
`
`As discussed below, we are persuaded by Patent Owner's arguments. Thus, we determine that Petitioner has not shown
`by a preponderance of the evidence that claims 1 and 25 are unpatentable as obvious over Angros and Picken.
`
`1. Angros's Disclosure
`Angros describes an analytic plate, such as a microscope slide or a diagnostic plate, having a containment border for con-
`taining a liquid. Ex. 1005, Abstract. Angros discloses that the containment border can be a hydrophobic material applied
`to the plate surface in a bordered pattern to confine liquid that is applied to the plate within the area surrounded by the
`border. Id. at col. 1, ll. 45-48. According to Angros, the hydrophobic containment border “is substantially transparent and
`is substantially flush with the surface of the slide or plate[,] and [ ] covers only a portion of the surface of the slide or
`plate.”Id. at col. 1, l. 67-col. 2, l. 3. Figure 1A of Angros is reproduced below:
`
`Figure 1A illustrates microscope slide 10 with containment border 16. Id. at col. 2, ll. 39-45. Containment border 16 sur-
`rounds containment area 18 of the upper surface 12 of slide 10, and prevents spreading, leakage, or migration of liquid
`from containment area 18. Id. at col. 2, ll. 49-58. Figure 1B of Angros is reproduced below:
`
`*6 Figure 1B illustrates a side view of an analytic plate with a containment border, top surface 12, and lower surface 14.
`Angros discloses that “border 16 forms a molecular layer when dry and therefore is substantially flush (level) with the
`upper surface 12 of the slide 10. The border 16 is, therefore, not raised above the upper surface 12 to a degree that is vis-
`ible to the naked eye.”Ex. 1005, col. 3, ll. 3-7.
`
`2. Picken's Disclosure
`Picken describes a shelf assembly for use in a refrigerator. Ex. 1009, Abstract. Figure 1 of Picken is reproduced below:
`
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`Figure 1 illustrates shelf assembly 10 with generally flat shelf panel 12 and a pair of support rails 16. Id. The shelf panel
`may include a curved, turned, or bent edge on the upper surface of the shelf to limit spillage of liquid over the edge of the
`shelf panel. Ex. 1009 ¶ 4. Figure 13 of Picken is reproduced below:
`
`Figure 13 illustrates a shelf panel with forward edge 120 that curves upward to provide a spill-proof edge. Id. ¶ 55. An
`alternative embodiment disclosed by Picken is shown in Figure 17, reproduced below:
`
`Figure 17 illustrates shelf panel 312 that includes an upper form or guard 346--bonded, via adhesive 326, along edge re-
`gion 314 on upper surface 336 of shelf panel 312--to prevent liquid movement. Id. ¶ 57. The shelf panel may include a
`frit layer [FN2] on the upper or lower surfaces of the panel. Id. ¶¶ 6, 57, 71.
`
`3. Level of Ordinary Skill in the Art
`In determining whether an invention would have been obvious at the time it was made, 35 U.S.C. § 103 requires us to re-
`solve the level of ordinary skill in the pertinent art at the time of the invention. Graham v. John Deere, 383 U.S. 1, 17
`(1966).“The importance of determining the level of ordinary skill in the art lies in the necessity of maintaining objectiv-
`ity in the obviousness inquiry.”Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991).“Instead of ascertain-
`ing what was subjectively obvious to the inventor at the time of invention, [we] must ascertain what would have been ob-
`jectively obvious to one of ordinary skill in the art at such time.”Id. Thus, “the level of ordinary skill in the art is a factu-
`al question that must be resolved and considered.”Id.
`
`a. Effective Filing Date of the '561 Patent;
`*7 In order for us to resolve the level of ordinary skill in the pertinent art at the time of the invention, we must determine
`the time of the claimed invention. The '561 patent was filed on September 18, 2009 and is a continuation-in-part of Ap-
`plication No. PCT/US2009/048775, filed on June 2, 2009. The '561 patent claims priority to two provisional applica-
`tions: U.S. Prov. App. No. 61/133,273 (“the '273 provisional”), filed June 27, 2008; and U.S. Prov. App. No. 61/216,540
`
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`(“the '540 provisional”), filed May 18, 2009. Petitioner alleges that none of the claims of the '561 patent are entitled to
`the benefit of the filing dates of the provisional applications to which the '561 patent claims priority, because the written
`descriptions of the provisional applications fail to provide sufficient detail to support the challenged claims. Pet. 8. We
`are not persuaded by Petitioner's contentions. As discussed in detail below, we conclude that the '273 provisional applica-
`tion, which is the earlier filed of the two provisional applications, supports the claim elements recited in claims 1, 13, and
`25. Therefore, the '561 patent is entitled to the June 27, 2008 filing date of the '273 provisional application, and the relev-
`ant time period for resolving the level of ordinary skill in the art is June 27, 2008.
`
`i. Written description support for claims 1 and 13
`Petitioner first contends that neither the '273 provisional nor the '540 provisional provides any explicit description of the
`top surface of the shelf panel, and therefore, the limitation of a “shelf panel having a generally flat top surface,” as re-
`cited in claims 1 and 13, is not supported. Pet. 9-10 (citing Ex. 1002, pg. 33, l. 7--pg. 35, l. 22; Ex. 1003, pg. 35, l. 7-- pg.
`37, l. 22).[FN3] We disagree. Figure 44 of the '273 provisional application is reproduced below:
`
`Figure 44 of the '273 provisional application illustrates a front view of a shelf panel claimed in application
`
`Figure 44 illustrates a front, section view of shelf assembly 1020 and shelf panel 1024 of the claimed invention. Ex.
`1002, Fig. 44. Shelf assembly 1020 is characterized as being treated with a hydrophobic or super hydrophobic material
`around the outer edges of shelf panel 1024. Id. at col. pg. 29, ll. 8-11. The hydrophobic material acts as a barrier for
`spilled liquid and prevents the liquid from spilling downward onto other surfaces. Id.
`
`*8 In contrast, a shelf panel used in the prior art is illustrated in Figure 42 of the '273 provisional application, reproduced
`below:
`
`Figure 42 of the '273 provisional application illustrates a front view of a shelf panel used in the prior art
`
`Figure 42 is a front, section view of shelf assembly 1000 with shelf panel 1006 and plastic rim 1004. Plastic rim 1004 is
`used to encapsulate shelf panel 1006. Id. at pg. 28, ll. 17-21. The '273 provisional application specifically states “the vis-
`ible edge of the shelf panel 1006 is located on its upper surface at the intersection of the perimeter of the plastic rim
`1004, [and] may include a sealed edge 1014.”Id. at pg. 29, ll. 1-6. Using plastic rim 1004 and potentially sealed edge
`1014, an attempt is made to essentially seal spilled liquid from spilling off shelf panel 1006. Id.
`
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`When Figure 44 is compared to Figure 42 of the '273 provisional application, the prior art figure has plastic rim 1004 that
`is used to prevent liquid movement off shelf panel 1006, while the top surface of shelf panel 1024 in Figure 44 does not
`have plastic rim 1004 and appears generally flat. Furthermore, the '273 provisional application states that “the hydro-
`phobic or super hydrophobic surface treatments in accordance with the invention eliminate the need for any formed lips
`or ridges on the surface of the shelf panel” (id. at pg. 31, ll. 15-17), “in accordance with the invention, it should be noted
`that components such as a plastic rim (or even a frame) may be completely unnecessary with the use of the hydrophobic
`surface treatment 1030” (id. at pg. 29, l. 22-30, l. 1), and “[w]ith the use of this surface treatment in accordance with the
`invention, the need for plastic encapsulated material (e.g., the plastic which provides for a spill proof barrier in prior art
`systems) is eliminated” (id. at pg. 10, ll. 7-9). Therefore, we conclude that the '273 provisional application demonstrates
`support for the limitation, “““shelf panel having a generally flat top surface,” as recited in claims 1 and 13.
`
`Petitioner next contends that neither the '273 provisional application nor the '540 provisional application discloses a shelf
`panel where “the majority of the surface area of said top surface of the shelf panel is not hydrophobic,” and therefore, the
`limitation reciting the same in claims 1 and 13 is not supported. Pet. 10-11 (citing Ex. 1002, pg. 33, l. 7--pg. 35, l. 22;
`Ex. 1003, pg. 35, l. 7--pg. 37, l. 22). We disagree. The '273 provisional application states that in one embodiment, “the
`hydrophobic or super hydrophobic surface treatment is employed only around the top surface perimeter edge of the shelf
`panel 1024, for purposes of containing spills and acting as a spill proof barrier.” Ex. 1002, pg. 30, ll. 4-7. This disclosure
`is further supported by the illustration in Figure 43, where the hydrophobic surface treatment, indicated by diagonal hash
`marks, is denoted only around the outer edge of shelf panel 1024. Id. at Fig. 43.
`
`*9 As construed above, the term “majority of the surface area of said top surface of the shelf panel is not hydrophobic”
`means that “the surface area of the non-hydrophobic portion is greater than the surface area of the hydrophobic por-
`tion.”The disclosure that in one embodiment only the outer perimeter edge is hydrophobic indicates that the entire inner
`portion of shelf panel 1024 is not hydrophobic. As the inner portion of shelf panel 1024 appears to be a greater amount
`compared to the perimeter edge of shelf panel 1024, we conclude there is disclosure in the '273 provisional application
`that the majority of the surface area of said top surface of the shelf panel is not hydrophobic. Therefore, the '273 provi-
`sional application supports said limitation in claims 1 and 13.
`
`We have reviewed the '273 provisional application and conclude that it provides written description support for all other
`limitations of claims 1 and 13.
`
`ii. LWritten description support for claim 25
`Petitioner contends that neither the '273 provisional application nor the ' 540 provisional application discloses any of the
`steps for manufacturing a shelf as recited in claim 25. Pet. 11. We disagree. The '273 provisional application discloses:
`(1) multiple examples of applying a hydrophobic surface treatment (Ex. 1002, pg. 10, ll. 1-4); (2) examples of spill con-
`tainment patterns (id. at pg. 9, ll. 16-23); (3) panels with generally flat top surfaces (id. at pg. 29, ll. 8-11, Fig. 44); (4)
`the construction of shelving assemblies (id. at pg. 11, l. 10--pg. 12, l. 9); and (5) leaving the majority of the surface on a
`top surface of a panel non-hydrophobic so that one or more non-hydrophobic portions are bounded by hydrophobic sur-
`faces (id. at pg. 9, ll. 16-23; Figs. 43, 44).
`
`Petitioner lastly contends that neither provisional application discloses what is meant by “generally in the plane” of the
`top surface as recited in claim 25. Pet. 11-12. We disagree. The '273 provisional application discloses that hydrophobic
`or super hydrophobic surface treatments in accordance with the invention eliminate the need for any formed lips or
`ridges on the surface of the shelf panel and that the relative amount of usable shelf space is increased by eliminating the
`space taken up by plastic encapsulation, sealants, adhesives, and formed lips and ridges. (Ex. 1002, pg. 31, ll. 15-19.)
`This disclosure indicates that the hydrophobic treatment does not create a lip or ridge that would use shelf space. Further-
`
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`more, Figure 44 of the '273 provisional application illustrates a front, section view of shelf assembly 1020 and shelf pan-
`el 1024 of the claimed invention. Id. at Fig. 44. Shelf assembly 1020 has a hydrophobic surface treatment around the out-
`er edges of shelf panel 1024. Id. at pg. 29, ll. 8-11. The hydrophobic material is not visible in Figure 44. Therefore, we
`conclude that the '273 provisional application teaches what is meant by “generally in the plane” of the top surface as re-
`cited in claim 25.
`
`*10 We have reviewed the '273 provisional application and conclude that it provides written description support for all
`other limitations of claim 25.
`
`b. Determination of the Level of Ordinary Skill in the Art
`Having determined the appropriate time of the invention (June 27, 2008), we turn to determining the level of ordinary
`skill in the art at that time. Petitioner's witness, Mr. Chris B. Schechter, submitted a declaration in support of the Petition.
`Pet. 15 (citing Ex. 1010). In his declaration, Mr. Schechter testified that a person of ordinary skill in the art relevant to
`the '561 patent “would have at least a bachelor's degree in mechanical engineering and at least four years of experience
`designing and manufacturing shelf assemblies or equivalent education and training.” Ex. 1010 ¶ 4. Patent Owner's wit-
`ness, Mr. Richard Bruce Mills, defined a person of ordinary skill in the art relevant to the '561 patent to be a person with
`at least an associate's or bachelor's degree and three years of experience working with shelf assemblies, and having fa-
`miliarity with “encapsulated spill containing refrigerator shelves.” Ex. 2022 ¶ 8. Based on our review of the '561 patent,
`the types of problems and solutions described in the '561 patent and cited prior art, and the testimony of the parties' de-
`clarants, we conclude that a person of ordinary skill in the art at the time of the claimed invention (i.e., as of June 27,
`2008, as discussed above in Section II.B.3.a.) would have had a degree in mechanical engineering or a similar discipline,
`and at least three years of work experience with refrigerator shelf assemblies. See, e.g., Ex. 1001, col. 1, ll. 16-62 (stating
`that the '561 patent relates to “shelving which may be adapted for use with refrigerators,” and describing conventional re-
`frigerator shelf assemblies that use plastic molded parts to encapsulate shelves and silicone sealants to form physical spill
`containment barriers around the perimeter of the refrigerator shelving); Ex. 1010 ¶¶ 1-2 (describing the background of
`Mr. Schechter); Ex. 2022 ¶¶ 3-5 (describing the background of Mr. Mills).
`
`We note that under this standard, Petitioner's witness, Mr. Schechter, does not qualify as a person of ordinary skill in the
`art. Although Mr. Schechter has a Master's of Science degree in Mechanical Engineering, he has only worked as an en-
`gineer designing and manufacturing shelf assemblies since December 2011. Ex. 1010 ¶¶ 1-2. Thus, Mr. Schechter had
`less than two years of experience when he signed his declaration on June 14, 2013. Id. ¶ 36. Furthermore, Mr. Schechter
`was not a person of ordinary skill in the art at the time of the invention of the '561 patent (i.e., June 27, 2008). Indeed, at
`his deposition, Mr. Schechter testified that he does not qualify as one of ordinary skill in the art under the definition in
`his declaration. Ex. 1011, 26:2-13. In this case, we accord the testimony of Mr. Schechter regarding the alleged obvious-
`ness of the claims less weight because he was not a person of ordinary skill in the art at the time of the invention dis-
`closed in the '561 patent.
`
`4. Obviousness Analysis
`*11 To prevail in its challenges to the patentability of the claims, Petitioner must establish facts supporting its challenges
`by a preponderance of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). The primary dispositive fact Petitioner
`must establish is that Angros is analogous art to the claimed invention. A claim is unpatentable under 35 U.S.C. § 103(a)
`if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a
`whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which
`said subject matter pertains. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). A reference qualifies as prior art for
`an obviousness determination under § 103 only when it is analogous to the claimed invention. In re Klein, 647 F.3d
`1343, 1348 (Fed. Cir. 2011); Innovention Toys, LLC v. MGA Entm't, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011); In re Bi-
`
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`gio, 381 F.3d 1320, 1325 (Fed. Cir. 2004); In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992).
`
`A reference is considered analogous prior art: (1) if the reference is from the same field of endeavor as the claimed sub-
`jected matter, regardless of the problem addressed, or (2) if “the reference still is reasonably pertinent to the particular
`problem with which the inventor is involved,” even though the reference is not within the field of the inventor's en-
`deavor. Bigio, 381 F.3d at 1325. The “field of endeavor” test asks if the structure and function of the prior art is such that
`it would be considered by a person of ordinary skill in the art, because of the similarity to the structure and function of
`the claimed invention as disclosed in the application. Id. at 1325-27. It is necessary to apply “common sense” in
`“deciding in which fields a person of ordinary skill would reasonably be expected to look for a solution to the problem
`facing the inventor.”Id. at 1326 (citations and quotation marks omitted). As to the “reasonably pertinent” test:
`A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor's endeavor,
`it is one which, because of the matter with which it deals, logically would have commended itself to an inventor's at-
`tention in considering his problem. Thus, the purposes of both the invention and the prior art are important in de-
`termining whether the reference is reasonably pertinent to the problem the invention attempts to solve. If a reference
`disclosure has the same purpose as the claimed invention, the reference relates to the same problem, and that fact
`supports use of that reference in an obviousness rejection. An inventor may well have been motivated to consider the
`reference when making his invention. If it is directed to a different purpose, the inventor would accordingly have had
`less motivation or occasion to consider it.
`*12 In re Clay, 966 F.2d at 659.
`
`The parties do not dispute that Angros' disclosure regarding microscope slides is not in the same “field of endeavor” as
`the '561 patent, which relates to refrigerator shelves. Pet. 21-22; PO Resp. 16; Reply 1; Trans. 23:8-15, 32:10-14.
`
`Rather, Petitioner contends Angros is analogous art to the claimed invention, because “Angros is reasonably pertinent to
`the problem faced by the Applicants of the '561 patent.” Pet. 22. Specifically, Petitioner states that “[t]he problem faced
`by the Angros inventors was the same as the problem faced by [Patent Owner], namely, how to contain a liquid in a pre-
`determined area using a structure that is thin and does not extend significantly above the top surface of the panel.”Id.
`
`Patent Owner disputes that Angros is reasonably pertinent to the problem addressed by the claimed invention, because
`Angros does not teach containing ““spills.” PO Resp. 16. According to Patent Owner, the problem faced by the inventors
`of the '561 patent was not simply how to contain liquids in a predetermined area-it was how to maximize the available
`storage space on shelves while containing accidental and unpredictable spills. Id. (citing Ex. 2022 ¶ 30(b)) (emphasis ad-
`ded). Mr. Mills, a former employee of Whirlpool Corporation and witness for Patent Owner, testified that “the hydro-
`phobic border in Angros is not being used to contain spills or to otherwise provide a spill resistant barrier, which is the
`problem being addressed by the [']561 patent.” Ex. 2022 ¶ 30(b).
`
`Petitioner, however, argues that the term “spill” is not limited by the '561 patent to encompass only unintended, sudden,
`unexpected, or violent releases of liquid on a surface. Trans. 10:14-24, 18:9-12. Petitioner's argument is unpersuasive in
`light of our claim construction of the term “““spill.” As discussed above in Section II.A.2, we construed “spill” to mean
`““an accidental or unintentional release of liquid.”
`
`Petitioner further argues “Patent Owner is trying to read too much into the concept of spill,” because the '561 patent does
`not claim “spill containment.” Reply 1-2; Trans. 18:9-23. Although the claims do not recite a limitation for maximizing
`shelf space, the claims do require a “spill containment” pattern. Such a requirement indicates the claims are directed not
`merely to liquid containment, but to “spill containment.” Angros, however, is directed to the containment of miniscule
`amounts of liquids that are intentionally placed on a microscope slide. Petitioner's argument regarding a “““spill” encom-
`
`© 2014 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`KOLCRAFT EXHIBIT 2007-10
`Artsana USA, Inc. v. Kolcraft Enterprises, Inc.
`IPR2014-01053
`
`

`

`Page 11
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`passing a “slowly and carefully” poured liquid (Reply 1-2) fails to address sufficiently Patent Owner's argument that the
`problem pertinent to the inventors of the '561 patent is “not simply how to contain liquids in a predetermined area -- it
`was how to maximize the available storage space . . . while containing accidental and unpredictable spills.” PO Resp.
`16-17 (emphasis added).
`
`*13 Patent Owner's position is supported by the testimony of Mr. Mills as well as the disclosure of the '561 patent itself.
`See, e.g., Ex. 2022 ¶¶ 26-33; Ex. 1001, Abstract (“a method for containing spills on shelving and the like”); col. 1, l.
`24-col. 2, l. 14 (describing prior art shelves and the objects of the disclosed “method for containing spills on shelving and
`the like”); col. 11, ll. 44-49 (“[C]omponents such as a plastic rim (or even a frame) may be completely un