thronsonm@dicksteinshapiro.com
`Daifuku.IPR@dicksteinshapiro.com
`202-420-4742
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`Paper No. 36
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`
`
`DAIFUKU CO., LTD. AND DAIFUKU AMERICA CORP.,
`Petitioner,
`
`v.
`
`MURATA MACHINERY, LTD.,
`Patent Owner
`__________
`
`
`
`Case IPR2015-00088
`Patent 7,165,927
`__________
`
`
`
`
`
`PETITIONER’S REPLY TO
`PATENT OWNER’S RESPONSE
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`Public Version – Redacted
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`TABLE OF CONTENTS
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`PATENT OWNER’S PROPOSED, NARROW CONSTRUCTION FOR
`
`SUMMARY OF REPLY ARGUMENTS ......................................................... 1
`I.
`II.
`DEPENDENT CLAIMS 31 AND 35 SHOULD NOT BE ADOPTED .......... 3
`III. COMBINING JPAP ’213 AND ’237 WOULD HAVE BEEN OBVIOUS .... 5
`A. KSR Applies to the Facts of This Case ................................................... 5
`B.
`The Prior Art Provides Explicit Motivation to Combine ..................... 7
`C. Combining the Prior Art Would Not Have Destroyed JPAP ’213’s
`Basic Principle of Operation ................................................................. 13
`D. Claims 31 and 35 Are Unpatentable ..................................................... 16
`IV. SECONDARY CONSIDERATIONS “EVIDENCE” DOES NOT
`OVERCOME STRONG PRIMA FACIE CASE OF OBVIOUSNESS ...... 17
`A.
`In General ............................................................................................... 17
`B.
`Patent Owner’s Product ........................................................................ 18
`C.
`Patent Owner’s Allegations of Praise Have No Merit ........................ 23
`V. CONCLUSION ................................................................................................. 24
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`Dr. Bottoms Was Not Fully Informed; Petitioner Did Not Copy
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`i
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`Public Version – Redacted
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`TABLE OF AUTHORITIES
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`Page(s)
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`CASES
`AVX Corp. v. Greatbatch, Ltd., IPR2014-00697, Paper 57
`(P.T.A.B. Oct. 21, 2015) .................................................................................... 12, 15
`
`Belden Inc. v. Berk-Tek LLC, 610 Fed. App’x 997 (Fed. Cir. 2015) ........................... 12
`
`Cable Elec. Prods., Inc. v. Genmark, Inc., 770 F.2d 1015 (Fed. Cir. 1985)
`(overruled on other grounds by Midwest Indus., Inc. v. Karavan
`Trailers, Inc., 175 F.3d 1356 (Fed. Cir. 1999)) ....................................................... 17
`
`Dow Chem. Co. v. Halliburton Oil Well Cementing Co., 324 U.S. 320
`(1945) ....................................................................................................................... 17
`
`Ecolochem, Inc. v. S. Cal. Edison Co., 227 F.3d 1361 (Fed. Cir. 2000) ...................... 17
`
`Ex parte Black & Decker Inc., No. 2010-009727, 2011 WL 533566
`(B.P.A.I. Feb. 15, 2011) ........................................................................................... 15
`
`Geo M. Martin Co. v. Alliance Mach. Sys. Int’l LLC, 618 F.3d 1294
`(Fed. Cir. 2010) ........................................................................................................ 17
`
`In re Beattie, 974 F.2d 1309 (Fed. Cir. 1992) .............................................................. 15
`
`In re Fulton, 391 F.3d 1195 (Fed. Cir. 2004) ............................................................... 15
`
`In re Gordon, 733 F.2d 900 (Fed Cir. 1984) ................................................................ 13
`
`In re Mouttet, 686 F.3d 1322 (Fed. Cir. 2012) ............................................................. 15
`
`In re Ochiai, 71 F.3d 1565 (Fed. Cir. 1995) ................................................................. 12
`
`In re Ratti, 270 F.2d 810 (C.C.P.A. 1959) .................................................................... 13
`
`Jungersen v. Ostby & Barton Co., 335 U.S. 560 (1949) .............................................. 17
`
`Kinetic Techs., Inc. v. Skyworks Solutions, Inc., IPR2014-00529,
`Paper 8 (P.T.A.B. Sept. 23, 2014) ........................................................................... 11
`
`ii
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`Public Version – Redacted
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`KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007) ................................. 1, 2, 5
`
`Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157
`(Fed. Cir. 2007) ........................................................................................................ 18
`
`Mintz v. Dietz & Watson, Inc., 679 F.3d 1372 (Fed. Cir. 2012) ................................... 12
`
`New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290
`(Fed. Cir. 2002) ........................................................................................................ 19
`
`Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324 (Fed. Cir. 2009) ................ 13
`
`PharmaStem Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d 1342
`(Fed. Cir. 2007) ........................................................................................................ 24
`
`Rothman v. Target Corp., 556 F.3d 1310 (Fed. Cir. 2009) .......................................... 18
`
`Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356
`(Fed. Cir. 2008) .......................................................................................................... 7
`
`SuperGuide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870
`(Fed. Cir. 2004) .......................................................................................................... 4
`
`STATUTES
`
`35 U.S.C. § 119(e)(1) .................................................................................................... 19
`
`REGULATIONS
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`37 C.F.R. § 1.83(a) .......................................................................................................... 5
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`37 C.F.R. § 42.51(b)(1) ................................................................................................. 20
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`iii
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`EXHIBIT LIST
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`
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`Exhibit No.
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`Exhibit Name
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`1038
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`1039
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`1040
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`1041
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`1042
`
`High-Speed Trans-Sort [HSTS] Development Plan, Rev. 2,
`Sept. 25, 2002.
`
`Declaration of Shuzo Nishino.
`
`Second Declaration of Dr. Robert H. Sturges.
`
`Cleanway CLW-08 Maintenance Manual, Version 1.02,
`Feb. 20, 2012.
`
`U.S. Patent Application Publication No. 2003/0075415,
`Apr. 24, 2003.
`
`1043
`
`Certified Deposition Transcript of Dr. Wilmer R. Bottoms.
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`iv
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`Public Version – Redacted
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`I.
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`SUMMARY OF REPLY ARGUMENTS
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`All of the limitations of the challenged claims, construed according to the
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`Board’s Decision to Institute, are fully met by JPAP ’213 and/or the combined
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`teachings of JPAP ’213 and ’237. Patent Owner does not identify any limitation of
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`claims 1, 2, 5, 11-16, 19, 20, 25-30, 32-34, and 36 that it would allege is missing
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`from the prior art. Patent Owner argues that the Board was mistaken with respect
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`to the meaning of dependent claims 31 and 35; however, that argument is based on
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`inapposite case law, and it is contradicted by the intrinsic evidence.
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`Concerning the obviousness of the claimed invention, Patent Owner pays
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`little to no attention to the actual teachings of the prior art documents, especially
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`those of JPAP ’237. Patent Owner concedes that JPAP ’237 teaches a laterally
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`extending arm which moves a gripper to the side of a transport system. Paper 25,
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`at 24, 28-29. Beyond that, however, Patent Owner does not cite or refer to any
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`portion of the text or drawings of JPAP ’237.
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`Patent Owner essentially ignores Petitioner’s first obviousness argument,
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`even though the prior art facts of this inter partes review are like those that were
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`before the Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398
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`(2007). Instead of dealing with the specific teachings of the prior art documents,
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`Patent Owner focuses on whether the primary reference (JPAP ’213) satisfies some
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`formulaic, motivation-related requirement. The argument seems to be that
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`JPAP ’213 must describe an explicit motivation for combination with the
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`secondary reference (JPAP ’237). The argument is based on an incorrect
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`understanding of the law (KSR), and it is contrary to the evidence of record in any
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`event. JPAP ’213 does indeed expressly contemplate the combination, and Patent
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`Owner’s expert admitted as much on cross examination.
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`Patent Owner’s allegations with respect to secondary considerations should
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`not overcome the strong prima facie case of obviousness that is of record, and
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`Patent Owner’s allegations are directly contradicted by the evidence. Petitioner
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`did not and would not copy its competitor’s product. The information that was
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`given to Patent Owner’s expert was incomplete. Indeed, the thing which Patent
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`Owner alleges was copied – a hoist vehicle with lateral-translating capability – was
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`developed by Petitioner before the effective filing date of the ’927 patent.
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`Moreover, there are important structural and functional differences between
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`the Daifuku CLW-08 product and
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`. The differences
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`are readily apparent from evidence that was in Patent Owner’s and Patent Owner’s
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`expert’s possession. The evidence plainly contradicts the narrative that Petitioner
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`somehow copied
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`. It appears Patent Owner first fabricated its
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`narrative about copying and then tried to locate snippets of documents and
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`testimony that might tend to support that story, and Patent Owner did not provide
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`the contradictory evidence to the Board.
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`II.
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`PATENT OWNER’S PROPOSED, NARROW CONSTRUCTION FOR
`DEPENDENT CLAIMS 31 AND 35 SHOULD NOT BE ADOPTED
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`Claim 31 is directed to a system. The claim (dependent on claim 27) recites
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`a system comprising a “translating stage,” and recites that “the translating stage is
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`configured to move the gripper portion from a first position proximate to [an]
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`overhead hoist transport subsystem to a selected one of a second position and a
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`third position, and wherein the second and third positions are disposed on opposite
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`sides of the overhead hoist transport subsystem.”
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`Patent Owner argues that the claim language quoted above implies a
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`“choice.” That argument, however, is circular and does not reach the outcome
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`desired by Patent Owner. To the extent the word “selected” implies a choice, it is
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`a choice as to how the “system” is configured. The claim says that “the translating
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`stage is configured to move the gripper portion . . . to a selected one of a second
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`position and a third position.” The claim does not say that the translating stage is
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`configured to move the gripper portion to a second position and a third position.
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`Patent Owner argues that the word “and” in claim 31 “impl[ies] that the
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`intent of the language is to require the ability to go to both the second position and
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`the third position.” It is more likely, however, that if the intent was to require the
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`translating stage to be configured to move the gripper portion to both the second
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`and third positions, the claim would have said so. Patent Owner demonstrated its
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`ability to make its intention clear, for example, in claim 1, which says that “the
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`3
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`translating stage is configured to move the gripper portion laterally from a first
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`position . . . to a second position.” Ex. 1001 8:61-65.
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`SuperGuide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870 (Fed. Cir.
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`2004), cited on page 6 of Patent Owner’s Response, did not involve claim
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`construction under the “broadest reasonable interpretation” standard, and it had
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`nothing to do with claim language of the type recited in claim 31 of the ’927
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`patent.1 SuperGuide has no applicability to the claim construction issues in this
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`proceeding.
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`Further, Patent Owner conflates the “on opposite sides” language of claim
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`31 with the issue of how the translating stage is configured. The phrase “on
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`opposite sides” just refers to positions. The claim refers to “positions” on opposite
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`sides of the overhead hoist transport subsystem. It does not say that the translating
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`stage must be configured to move the gripper portion to both those positions.
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`Patent Owner’s proposed claim construction is inconsistent with the
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`drawings of the ’927 patent. The drawings are expected to “show every feature of
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`1 Unlike claims 31 and 35, the claims in SuperGuide did not contain the phrase “a
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`selected one.” And unlike claims 31 and 35, the claims in SuperGuide recited
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`separate categories (program times, services, types) that were independent and
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`different in kind from each other. See 358 F.3d at 884, 886 n.9. Claims 31 and 35
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`refer, if anything, to a single category – “positions.”
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`4
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`Public Version – Redacted
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`the invention specified in the claims.” 37 C.F.R. § 1.83(a). The drawings of
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`the ’927 patent, however, do not show a translating stage that is configured to
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`move a gripper portion to opposite second and third positions. The specification of
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`the ’927 patent, Ex. 1001 7:29-32, says, in connection with Figs. 5a and 5b, that a
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`“translating stage is configured to allow [an] overhead hoist to pick/place a cassette
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`pod to either side of [an] overhead transport vehicle 705.” The drawings, however,
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`do not show a translating stage which is configured to move a gripper portion to
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`opposite second and third positions, nor does the ’927 patent describe how to make
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`such a translating stage. Ex. 1028 ¶ 31 (“patent does not show or describe
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`anywhere how the laterally translating stage should be constructed”).
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`The language of method claim 35 is similar to that of claim 31. Patent
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`Owner does not assert any difference in meaning. Patent Owner’s proposed
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`construction for the language of claims 31 and 35 is not in accordance with the
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`“broadest reasonable interpretation” standard that applies to this proceeding. The
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`broader interpretation is reasonable and more in line with the intrinsic evidence,
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`and it is supported by the extrinsic evidence as well. Id. ¶¶ 262, 271.
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`III. COMBINING JPAP ’213 AND ’237 WOULD HAVE BEEN OBVIOUS
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`A.
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`KSR Applies to the Facts of This Case
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`Petitioner has shown how the principles of KSR apply to the facts of this
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`proceeding. See Paper 6 at 11-12 (explaining that “[s]ubject matter that is no more
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`Public Version – Redacted
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`than a combination of old elements, which unites the old elements with no change
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`in their respective functions, is not patentable”); id. at 15-19 (discussing prior art
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`elements of JPAP ’213); id. at 36 (referring to earlier discussion); id. at 36-38
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`(discussing prior art elements of JPAP ’237); id. at 39-49 (including claim charts,
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`detailing how claimed subject matter is no more than combination of old elements,
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`united with no change in respective functions).
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`Petitioner has established that (1) JPAP ’213 needs a device to move a
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`cassette pod laterally relative to a hoist vehicle, Paper 6 at 18:1-8, and that
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`(2) JPAP ’237, in essentially the same context, teaches a device for moving a
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`cassette pod laterally relative to a hoist vehicle. Id. at 39:6-8. In JPAP ’213,
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`lateral movement is provided by a table 11. In JPAP ’237, lateral movement is
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`provided by a translating stage 42, id., a known device for providing lateral
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`movement. See id. at 11:6-13.2
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`The evidence shows it would have been obvious to apply the teachings of
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`JPAP ’237 to JPAP ’213.3 The evidence is not just that the teachings could have
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`2 The prior art publications are both directed to semiconductor manufacturing. See
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`Paper 6 at 16. Patent Owner’s expert admits that JPAP ’213 is directed to
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`semiconductor manufacturing. Ex. 1043 at 103:6-10, 103:25-104:7.
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`3 The record evidence includes the documents themselves and the testimony of Dr.
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`Sturges, an expert on semiconductor AMHS systems. Ex. 1034 at 27:24-28:10.
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`Public Version – Redacted
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`been combined, but that it would have been obvious to do so. Paper 6 at 39:9-17.
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`Tellingly, Patent Owner does not argue that the prior art combination “yields
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`anything ‘more than one would expect from such an arrangement.’” See Sundance,
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`Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1366-68 (Fed. Cir. 2008)
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`(reversing district court holding that claims were nonobvious; noting that patentee
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`did not argue that “combination of [two prior art references] yields anything ‘more
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`than one would expect from such an arrangement’” (citing Sakraida v. AG Pro,
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`425 U.S. 273, 282 (1976))).
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`B.
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`The Prior Art Provides Explicit Motivation to Combine
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`JPAP ’213 shows a swinging table 11 (Fig. 1) for transferring a cassette pod
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`to and from a position lateral to a rail-mounted vehicle 3. In addition, JPAP ’213
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`expressly contemplates that the vehicle may be configured to do the work of
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`laterally transferring the pod. According to JPAP ’213 ¶ 7, “a retaining unit
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`transfer means used for transferring articles between the article retaining unit and
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`the moving body is provided on the side of the moving body.”4 Ex. 1005 at 6.
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`4 Patent Owner argues that “on the side of the moving body” should be interpreted
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`as “on the moving body side,” Paper 25 at 18, but does not explain why that
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`argument has any relevance to this proceeding. The translation that was filed with
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`Ex. 1005 is correct. Ex. 1035 at 32:19-23.
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`According to JPAP ’213 ¶ 7, “[f]or this type of article conveyance facility,
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`since the number of article retaining units is usually bigger than the number of
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`moving bodies, the number of transfer means needed may be reduced compared to
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`the case when the transfer means is provided on the side of the article retaining unit.
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`The entire apparatus can be simplified.” Id. In other words, according to
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`JPAP ’213, when there are more shelves than vehicles, transfer mechanisms should
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`be with the vehicles, not the shelves, so “[t]he entire apparatus can be simplified.”
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`The concept that is described in JPAP ’213 ¶ 7 is understood by both experts
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`in this proceeding. Patent Owner’s expert testified as follows: “It [¶ 7 of
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`JPAP ’213] suggests that if the mechanism were on the moving body side through
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`a mechanism that’s not defined here, that you would need fewer transfer means. In
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`the case of it being on the article retaining side, then every article retaining unit has
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`to have a mechanism, and what they’re explaining correctly is that if it’s on the
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`moving body side, then perhaps every article doesn’t have to have one.” Ex. 1043
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`at 109:7-14.
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`Despite the testimony of its expert, Patent Owner argues that JPAP ’213 ¶ 7
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`should be understood in a very narrow way as just describing the structure that is
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`shown in Fig. 1. One of ordinary skill, however, would not have read the
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`document so narrowly. See Ex. 1028 ¶ 142-44. The document provides elsewhere
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`a detailed description of the structure shown in Fig. 1, with reference characters
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`Public Version – Redacted
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`connecting the text to the drawings. The document also describes in detail the
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`lateral transfer means that is shown in Figs. 12 and 18, connected to vehicle 4.5
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`However, the detailed description portion of JPAP ’213 begins at ¶ 16 (Ex. 1005 at
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`9). In contrast to the detailed, drawings-connected description that appears in ¶ 16
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`through the end of the document, ¶ 7 of JPAP ’213 is written more broadly
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`(aligned with a set of claims and without reference characters) and should be
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`understood as being more conceptual (generic) in terms of what it is describing.
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`Again, that is how both experts understand the document. See Ex. 1043 at 109:7-
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`14; Ex. 1028 ¶ 142-44.
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`Patent Owner’s argument that Fig. 1 of JPAP ’213 already has all the
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`elements of ¶ 7 appears to rely exclusively on Japanese Intellectual Property High
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`Court Decisions in Japanese proceedings. The Decisions seemingly inquire into
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`whether certain inventions are patentable under Japanese law, and analyze
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`documents in that legal context. Of course, the Japanese Decisions are not binding
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`in this inter partes review. The patent laws of Japan are different from the laws
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`5 As for Patent Owner’s argument that there is nothing to suggest lateral
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`movement in ¶ 7, that interpretation is surprising in view of the fact that it is
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`discussing overhead shelves that are laterally adjacent to the rail. Indeed, Patent
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`Owner’s expert states that this is a “basic principle of operation.” Ex. 2013 ¶ 132.
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`that apply to this inter partes review; therefore, the Japanese Decisions are not
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`persuasive authority.
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`The July 2015 Japanese Decision (Ex. 2017) was preceded by a decision
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`(May 2015) in a co-pending, ex parte Japanese proceeding. Petitioner was not
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`allowed to participate in the ex parte proceeding. See Ex. 2018 at 2. As a result,
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`the May 2015 Decision did not have the benefit of Petitioner’s explanation of its
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`own prior art document. The May 2015 Decision was based entirely on
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`representations made by Murata. The May 2015 Decision was then relied upon in
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`the July 2015 Decision. Thus, the Japanese proceedings stand in stark contrast to
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`the procedural posture in this inter partes review.
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`Further, Patent Owner has selectively quoted and mischaracterized the
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`Japanese Decisions. The block quotes that appear on pages 17 and 27 of Patent
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`Owner’s Response, Paper 25, are taken from the court’s statement of Murata’s
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`arguments. It is what Murata argued to the court, not what the court decided. The
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`quotes were taken from “Section 3. Revokation [sic] Reasons Asserted by the
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`Plaintiff [Murata],” Ex. 2018 at 7-16, whereas “Section 5. Judgment of the Court”
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`begins on page 24 of the Decision. Id. at 25. Patent Owner’s obvious
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`misunderstanding and inability to fairly represent the Japanese Decisions to the
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`Board underscore why the foreign law materials should be given no weight in this
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`inter partes review.6
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`Patent Owner seeks to have the Board rely on conclusory statements – at
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`least some of which come directly from Murata – to conclude that there is no
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`motivation to combine the JPAP ’213 Fig. 1 embodiment with other embodiments
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`and/or JPAP ’237. Patent Owner fails to address the fact that any mechanical
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`engineer would have understood that the number of moving mechanisms should
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`always be reduced when possible. See Ex. 1005 ¶ 7; Ex. 1028 ¶ 142-44. Patent
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`Owner also fails to reconcile its arguments with its own expert’s views.
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`Dr. Sturges has explained how and why the prior art expressly contemplates
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`associating a lateral transfer mechanism – such as the lateral stage 42 taught by
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`JPAP ’237 – with the moving body of Fig. 1 of JPAP ’213,7 which would allow for
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`vertical movement to a load port and lateral movement to adjacent overhead
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`6 Besides the problems noted in the main text about selective quotation and
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`improper mischaracterization, the single-spaced, not properly indented “quotes”
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`are not even accurate. For some reason, Patent Owner changed the word “gripper”
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`to “holder.” Compare Ex. 2018 at 16, with Paper 25 at 27.
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`7 The Board’s decision in Kinetic Techs., Inc. v. Skyworks Solutions, Inc.,
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`IPR2014-00529, Paper 8 (P.T.A.B. Sept. 23, 2014), does not apply here because
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`Dr. Sturges provided the how, what and why of the proposed combination.
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`11
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`storage shelves. Ex. 1028 ¶¶ 222-26.8 When the prior art is fully and properly
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`understood, it is clear that it would have been obvious to combine JPAP ’213
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`and ’237.
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`The cases cited by Patent Owner on pages 21-22 of its Response are readily
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`distinguishable. The “per se rule[] of obviousness” that was at issue (and rejected)
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`in In re Ochiai, 71 F.3d 1565 (Fed. Cir. 1995), involved determining the
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`obviousness of a chemical process by determining whether it is a process for
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`making a composition. Id. at 1571-72. The circumstances and holding of In re
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`Ochiai are essentially unrelated to the facts of this proceeding. In Mintz v. Dietz &
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`Watson, Inc., 679 F.3d 1372 (Fed. Cir. 2012), the district court’s attribution of
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`knowledge to one of ordinary skill in the art was improper because it was without
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`“any record support.” Id. at 1377. In contrast to the situation in Mintz, the
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`8 Dr. Sturges is the only expert in this proceeding with a background in
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`mechanical and industrial engineering. His field is in robotics; he is well
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`credentialed to opine on whether it would have been obvious to modify and/or
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`combine the mechanical AMHS shown in JPAP ’213 and ’237. See AVX Corp. v.
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`Greatbatch, Ltd., IPR2014-00697, Paper 57, at 24 (P.T.A.B. Oct. 21, 2015) (noting
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`declarant’s expertise and experience need not match perfectly those of person of
`
`ordinary skill). In any event, expert testimony is not always required. Belden Inc.
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`v. Berk-Tek LLC, 610 Fed. App’x 997, 1003 (Fed. Cir. 2015).
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`information that is relied upon to show obviousness in this proceeding is fully
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`documented in the prior art evidence. In Perfect Web Techs., Inc. v. InfoUSA, Inc.,
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`587 F.3d 1324 (Fed. Cir. 2009), the court concluded that all of the claims before it
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`were obvious.
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`C.
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`Combining the Prior Art Would Not Have Destroyed
`JPAP ’213’s Basic Principle of Operation
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`Patent Owner contends that the proposed combination of JPAP ’213
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`and ’237 should “fail” because it “would change the principle of operation and be
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`detrimental to the system of JPAP ’213.” Paper 25 at 23. The cases Patent Owner
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`relies on at page 25 of its Response are not on point. In re Gordon, 733 F.2d 900
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`(Fed Cir. 1984), and In re Ratti, 270 F.2d 810 (C.C.P.A. 1959), did not involve the
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`issue of whether a modification would have changed the “principle of operation”
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`or would have been “detrimental” to a primary reference. In Gordon, the proposed
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`modification would have made the reference completely inoperable. 733 F.2d at
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`902. In Ratti, the proposed modification would have “require[d] a substantial
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`reconstruction and redesign of the elements” of the primary reference, “as well as a
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`change in the basic principles under which [the reference] was designed to operate.”
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`270 F.2d at 813 (emphasis added). In contrast, the combination of JPAP ’213
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`and ’237 would not have rendered JPAP ’213 inoperable, nor would it have
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`changed the basic principles under which it was designed to operate.
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`In any event, contrary to Patent Owner’s arguments, the combination of
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`JPAP ’213 and ’237 would neither undermine nor change the “principle of
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`operation” of JPAP ’213 because JPAP ’213 does not require lateral shelves on
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`both sides of the rail. Patent Owner’s narrow reading of JPAP ’213 is undermined
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`by other embodiments of JPAP ’213 that depict, for example, a single shelf located
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`directly below the path of a rail-mounted vehicle (Figs. 16-17).9 Thus, Patent
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`Owner’s suggestion that JPAP ’213’s “principle of operation” is limited to
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`installation of shelves on both sides of the rail is contradicted by the evidence.
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`Moreover, there is no support in the record for Patent Owner’s premise that
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`the combination of JPAP ’213 and ’237 would “effectively reduce[] the utilized
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`overhead storage by fifty percent.” It would have been obvious to provide
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`JPAP ’213 with the laterally translating stage 42 taught by JPAP ’237, so that the
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`vehicle 3 moves pods B from a hoisted, central position to a lateral position on a
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`table 11. Paper 6 at 39:9-17.
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`The swinging shelf 11 on the other side of the vehicle 3 would not have to
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`be changed, nor would it have been necessary to change the functional relationship
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`between the swinging shelf and the hoist vehicle of JPAP ’213. Patent Owner’s
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`arguments are “premised on an unreasonably limited view of how one with
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`9 Figs. 5 and 6 show a turntable between two overhead rails; the turntable is
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`accessible by rail-mounted vehicles on either side of the turntable.
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`ordinary skill in the art would have approached combining the teachings.” See Ex
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`parte Black & Decker Inc., No. 2010-009727, 2011 WL 533566, at *4 (B.P.A.I.
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`Feb. 15, 2011).
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`Moreover, even if there would have been some detriment to the combination
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`of JPAP ’213 and ’237 – a premise which is not conceded – that would not
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`preclude obviousness under the facts in this proceeding. A proposed modification
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`does not have to be an “improvement” to be obvious. Rather, advantages and/or
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`disadvantages of a proposed modification are factors to consider in the obviousness
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`analysis. See In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012) (“[J]ust because
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`better alternatives exist in the prior art does not mean that an inferior combination
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`is inapt for obviousness purposes.”). “‘[T]he question is whether there is
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`something in the prior art as a whole to suggest the desirability, and thus the
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`obviousness, of making the combination,’ not whether there is something in the
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`prior art as a whole to suggest that the combination is the most desirable
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`combination available.” In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004)
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`(quoting In re Beattie, 974 F.2d 1309, 1311 (Fed. Cir. 1992) (alteration added by
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`court) (emphasis in original)); see also AVX Corp. v. Greatbatch, Ltd., IPR2014-
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`00697, Paper 57, at 16 (P.T.A.B. Oct. 21, 2015) (“Modifying a known device,
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`using a known method, to achieve a predictable result, is obvious, even if one is
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`willing to accept a known loss in performance others sought to avoid.”). Here,
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`even assuming there would have been some detriment to the proposed combination
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`– a premise which is not conceded – a person skilled in the art would weigh the
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`benefits of having a lateral translating stage, including the potential elimination of
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`at least some swinging table mechanisms, against the potential loss of storage
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`space and conclude that the benefits gained would have outweighed any benefits
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`lost.10
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`D.
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`Claims 31 and 35 Are Unpatentable
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`Patent Owner’s arguments that the combination of JPAP ’213 and ’237
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`would not disclose all limitations of claims 31 and 35 are premised on improper
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`claim constructions that rely exclusively on an improperly narrow reading of the
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`claims. Because the claim construction arguments are improper for the reasons
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`discussed above, Patent Owner’s arguments concerning the obviousness of the
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`dependent claims should not be accepted.
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`10 Moreover, it would have been obvious to combine or modify JPAP ’213 with
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`JPAP ’237 and to further modify JPAP ’237’s OHT to access shelves on both sides
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`of JPAP ’213. See Ex. 1028 ¶ 225 and ¶ 262.
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`IV. SECONDARY CONSIDERATIONS “EVIDENCE” DOES NOT
`OVERCOME STRONG PRIMA FACIE CASE OF OBVIOUSNESS
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`A.
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`In General
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`Before addressing Patent Owner’s false narrative regarding alleged copying
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`of its product, which Petitioner certainly did not do (as the factual evidence shows),
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`Petitioner respectfully submits that Patent Owner’s secondary considerations
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`arguments lack any merit because, as the Supreme Court held long ago,
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`“[secondary] considerations are relevant only in a close case where all other proof
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`leaves the question of invention in doubt.” Dow Chem. Co. v. Halliburton Oil Well
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`Cementing Co., 324 U.S. 320, 330 (1945); see also Jungersen v. Ostby & Barton
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`Co., 335 U.S. 560, 567 (1949) (“Where . . . invention is plainly lacking,
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`commercial success cannot fill the void.”).
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`Particularly with respect to alleged copying, which is at the core of Patent
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`Owner’s secondary considerations arguments, a showing of copying is at most
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`“‘equivocal evidence of non-obviousness.’” Geo M. Martin Co. v. Alliance Mach.
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`Sys. Int’l LLC, 618 F.3d 1294,