throbber
Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 17
`Date: January 13, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`YITA LLC,
`Petitioner,
`v.
`MACNEIL IP LLC,
`Patent Owner.
`
`IPR2020-01138
`Patent 8,382,186 B2
`
`
`
`
`
`
`
`
`
`Before MITCHELL G. WEATHERLY, MICHAEL L. WOODS, and
`ARTHUR M. PESLAK, Administrative Patent Judges.
`WEATHERLY, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`I. INTRODUCTION
`
`A. BACKGROUND
`Yita LLC (“Petitioner”) filed a petition (Paper 3, “Pet.”) to institute an
`inter partes review of claims 1–7 (the “challenged claims”) of U.S. Patent
`No. 8,382,186 B2 (Ex. 1001, “the ’186 patent”). 35 U.S.C. § 311. MacNeil
`IP LLC (“Patent Owner”) timely filed a Preliminary Response. Paper 11
`
`

`

`IPR2020-01138
`Patent 8,382,186 B2
`(“Prelim. Resp.”). With our prior authorization, Petitioner filed a Reply to
`the Preliminary Response, Paper 15 (“Reply”), and Patent Owner filed a
`Sur-reply in response to the Reply, Paper 16 (“Sur-reply”).
`Institution of an inter partes review is authorized by statute when “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.” 35 U.S.C. § 314(a).
`Petitioner challenges the patentability of claims 1–7 as being obvious
`in view of U.S. Patent No. 7,444,748 B2, which issued November 4, 2008
`(Ex. 1004, “MacNeil”). Pet. 37–92. Generally, Patent Owner contends that
`the Petition should be denied because MacNeil is not prior art to the claims
`of the ’186 patent. For the reasons expressed below, we agree and decline to
`institute inter partes review.
`B. RELATED PROCEEDINGS
`The parties identify the following matters as related:
`• MacNeil Auto. Prods. Ltd. et al. v. Yita LLC et al., No. 2:20-cv-
`00278 (WDWA);
`• MacNeil Auto. Prods. Ltd. et al. v. Jinrong (SH) Auto. Accessory
`Dev. Co., Ltd. et al., No. 2:20-cv-00856 (WDWA);
`• IPR2020-01139, which also seeks review of the ’186 patent; and
`• IPR2020-01140, which seeks review of the related U.S. Patent No.
`8,833,834 B2 (the “’834 patent”); and
`• IPR2020-01142, which also seeks review of the ’834 patent.
`Pet. 93; Paper 6, 2.
`
`2
`
`

`

`IPR2020-01138
`Patent 8,382,186 B2
`C. REAL PARTIES-IN-INTEREST
`Petitioner identifies itself, Jinrong (SH) Automotive Development
`Co., Ltd., ShenTian (SH) Industrial Development Co., Ltd, and Hong Kong
`Yita International Trade Company Limited as the real parties-in-interest.
`Pet. 93. Patent Owner identifies itself, MacNeil Automotive Products
`Limited, and WeatherTech Direct, LLC as the real parties-in-interest.
`Paper 6, 2.
`D. THE ’186 PATENT
`The ’186 patent is titled “Vehicle Floor Tray.” Ex. 1001, code (54).
`The Specification describes a vehicle floor tray that is thermoformed from a
`polymer sheet of uniform thickness. Id. at code (57). The Specification
`explains a need for a removable floor tray that fits precisely within a
`vehicle’s foot well so that it’s more likely to remain in position during
`vehicle operation, thereby minimizing the chance that it occludes the gas,
`brake, or clutch pedal. See id. at 1:29–35, 2:4–8.
`Figure 1, reproduced at
`right, illustrates vehicle floor
`tray (or cover) 100 that is
`designed to protect a vehicle’s
`floor and lower sides of the
`foot well. See id. at 6:24–25.
`Floor tray 100 includes floor
`(or central panel) 102 with
`channels 104 disposed in
`forward region 106 of the
`panel. Id. at 6:27–31.
`
`3
`
`

`

`IPR2020-01138
`Patent 8,382,186 B2
`Representative Claim 1, which is the only independent claim among
`the challenged claims, recites:
`1. A vehicle floor tray thermoformed from a sheet of
`thermoplastic polymeric material of substantially uniform
`thickness, comprising:
`[a] a central panel substantially conforming to a floor of a vehicle
`foot well,
`[b] the central panel of the floor tray having at least one
`longitudinally disposed lateral side and at least one
`transversely disposed lateral side;
`[c] a first panel integrally formed with the central panel of the
`floor tray, upwardly extending from the transversely disposed
`lateral side of the central panel of the floor tray, and closely
`conforming to a first foot well wall,
`[d] the first panel of the floor tray joined to the central panel
`of the floor tray by a curved transition;
`[e] a second panel integrally formed with the central panel of the
`floor tray and the first panel, upwardly extending from the
`longitudinally disposed lateral side of the central panel of the
`floor tray, and closely conforming to a second foot well wall,
`[f] the second panel of the floor tray joined to the central panel
`of the floor tray and to the first panel of the floor tray by
`curved transitions;
`[g] a reservoir disposed in the central panel of the floor tray;
`[h] a plurality of upstanding, hollow, elongate baffles disposed
`in the reservoir,
`[i] each of the baffles having at least two ends remote from
`each other,
`[j] the central panel, the first panel, the second panel, the
`reservoir and the baffles each having a thickness from a
`point on the upper surface to a closest point on the bottom
`surface thereof, said thicknesses, as a result of the tray
`being thermoformed from the sheet of thermoplastic
`
`4
`
`

`

`IPR2020-01138
`Patent 8,382,186 B2
`
`polymeric material of substantially uniform thickness,
`being substantially uniform throughout the tray;
`[k] the baffles each having a width, in any horizontal direction,
`of more than two times its thickness,
`[l] the baffles adapted to elevate the shoe or foot of the
`occupant above fluid collected in the reservoir, and further
`adapted to impede lateral movement, induced by a change
`in vehicle speed or direction, of fluid collected in the
`reservoir,
`[m] any portion of the reservoir connected to a remote portion of
`the reservoir by a path formed around ends of the baffles.
`Id. at 19:35–20:24 (emphasis added with certain line breaks and Petitioner’s
`labels added to aid discussion). Element 1j, which is italicized above, plays
`a central role in analyzing the dispositive issue for determining whether to
`institute review.
`
`II. DISCUSSION
`Under 35 U.S.C. § 311(b), “[a] petitioner in an inter partes review
`may request to cancel as unpatentable 1 or more claims of a patent only on a
`ground that could be raised under section 102 or 103 and only on the basis
`of prior art consisting of patents or printed publications” (emphasis added).
`The ’186 patent issued from U.S. Application 13/595,703, which was
`filed August 27, 2012 (the “’703 application”). Ex. 1001, code (22).
`Petitioner argues that the claims of the ’186 patent are not entitled to priority
`to any of the identified priority applications because none of those
`applications provide written description support for element 1j. Pet. 1,
`29–36. If true, MacNeil would be prior art under 35 U.S.C. § 102(b)
`because MacNeil issued more than one year before the filing date of the
`’703 application. Therefore, we must determine whether written description
`
`5
`
`

`

`IPR2020-01138
`Patent 8,382,186 B2
`support for element 1j exists in the applications to which the ’186 patent
`claims priority to decide whether MacNeil is prior art for those claims. For
`the reasons that follow, we determine that all the priority applications
`provide written description support for the claims of the ’186 patent,
`resulting in MacNeil not being prior art to those claims.
`A. PROSECUTION HISTORY AND PRIORITY CHAIN OF THE ’186 PATENT
`The ’186 patent issued from the
`’703 application, which was filed
`August 27, 2012. Ex. 1001, code (22).
`Petitioner submits the diagram
`reproduced at right (Pet. 29), which
`summarizes the asserted chain of
`priority for the ’703 application. The
`figure illustrates the alleged priority
`chain of the ’186 patent comprising
`three applications starting with U.S.
`Patent Application No. 10,976,441,
`which was filed October 29, 2004 (the
`“’441 application”). See Ex. 1001, code
`(60) (confirming the same). The
`’186 patent identifies all the priority applications as either a division
`application or continuation application of each prior application in the chain
`and the Specification fully incorporates by reference the “disclosures and
`drawings” of each of the priority applications. Id. at 1:5–12.
`MacNeil, which is not shown in the priority chain, is a continuation-
`in-part of the ’441 application. See Ex. 1004, code (63). MacNeil first
`
`6
`
`

`

`IPR2020-01138
`Patent 8,382,186 B2
`published on May 4, 2006. Id. at code (65). If the challenged claims are
`entitled to priority dating to October 29, 2004, the filing date of the
`’441 application, then MacNeil is not prior art.
`B. PETITIONER’S ARGUMENT
`Petitioner submits that the claims of the ’186 patent are not entitled to
`a priority date earlier than the filing date of the ’703 application, August 27,
`2012. See Pet. 29 (the ’186 patent “is not entitled to a priority date of any of
`its parent applications’ filing dates” (citing Ex. 1003 ¶¶ 93, 107–121)).
`Petitioner’s analysis focuses on an alleged failure in U.S. Application
`No. 12/879,899 (the “’899 application”) to provide written description
`support for element 1j. See id. at 30. Petitioner contends that the first
`application in the priority chain to disclose “uniform thickness” after
`thermoforming was the ’703 application, filed August 27, 2012, almost four
`years after MacNeil issued. Id. at 30–31 (citing Ex. 1027, 10; Ex. 1003
`¶ 107; Ex. 1028, 5:8–32).
`In support of its position, Petitioner explains “neither the words nor
`the drawings of ’899 application provide explicit written description of the
`‘thickness . . . being substantially uniform throughout the tray.’” See id.
`at 33 (citing Ex. 1003 ¶ 113). Petitioner also asserts that the parent
`applications do not describe the figures as being drawn to scale. See id.
`at 32–33 (citing Ex. 1003 ¶¶ 111–112). Petitioner concludes that the claims
`of the ’186 patent are “only entitled to the ’186 patent’s filing date, and not
`the priority date of any of the ’186 patent’s parent applications.” Id. at 36.
`C. PATENT OWNER’S ARGUMENT
`Patent Owner submits that the Petition fails, because the sole
`challenge presented by Petitioner relies on MacNeil, which is not prior art to
`
`7
`
`

`

`IPR2020-01138
`Patent 8,382,186 B2
`the claims of the ’186 patent. See Prelim. Resp. 50. Patent Owner explains
`that “the claimed tray features having ‘substantially uniform’ thicknesses . . .
`finds express written description support in each application in the priority
`chain of the ’186 Patent back to the earliest filed ’441 application.” Id.
`Patent Owner further explains that “the ’186 claims are entitled to priority to
`the ’441 application’s October 29, 2004, filing date.” Id.
`We agree.
`D. ANALYSIS
`Petitioner submits that one limitation recited in independent claim 1
`lacks written description support in the priority applications. See Pet. 29–36.
`Specifically, Petitioner submits that the ’899 application (and every
`application preceding it in the priority chain) fails to provide subject matter
`support for element 1j. See id.
`We disagree with Petitioner’s position, however, at least because
`various figures of the ’441 application—which are also present in the
`intervening applications that form a continuous chain of priority between it
`and the ’703 application—provide written description support for the
`claimed feature.
`As to Petitioner’s position that the parent applications fail to provide
`“an explicit or inherent description of the molded floor tray having a
`thickness that is substantially uniform throughout the tray after
`thermoforming,” id. at 30, “drawings alone may provide a ‘written
`description’ of an invention as required by § 112,” Vas-Cath Inc., v.
`Mahurkar, 935 F.2d 1555, 1565 (Fed. Cir. 1991) (emphasis added). Here,
`the figures filed in the ’703 application appear to be identical to the figures
`filed in the ’441 application (compare Ex. 2002, 360–371 (Figs. 1–14), with
`
`8
`
`

`

`IPR2020-01138
`Patent 8,382,186 B2
`Ex. 2009, 119–130 (Figs. 1–14).) and each set of figures show the claimed
`“substantially uniform” thicknesses after the trays have been manufactured,
`or thermoformed.
`As to Petitioner’s position that the figures are not described as being
`drawn to scale (see Pet. 32), even if the “patent drawings are not working
`drawings drawn to scale, things patent drawings show clearly are not to be
`disregarded.” In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972); cited with
`approval in Ex Parte Nobuya Sato & Kazunari Saitou, Appeal No. 2012-
`001276, 2014 WL 1154010, at *2 (PTAB Mar. 20, 2014); see also
`In re Aslanian, 590 F.2d 911, 914 (CCPA 1979) (“[T]he specific disclosure
`of structure in a design patent application may inherently teach functional
`features.”). Here, the drawings of the ’441 application (and the other parent
`applications to the ’186 patent) are drawn with a high level of detail. See,
`e.g., Ex. 2002, 367–371 (Figs. 9–14); see also Ex. 1001, Figs. 9–14
`(depicting the same figures).
`For example, Figures 10–14 of the
`’441 application are drawn with enough detail to depict
`fitment of the trays within one-eighth of an inch between
`the vehicle’s firewall surface and the trays. See, e.g.,
`Ex. 2002, 320. Additionally, the dimensions shown on
`Figures 9–14 demonstrate that the drawings are
`approximately to scale. See id., e.g., 371 (Figure 14,
`reproduced at right in pertinent part, illustrating gap labeled 0.125 that is
`twice the size of gap labeled 0.061). The drawings include sufficient detail
`to support the claimed “substantially uniform” thicknesses.
`
`9
`
`

`

`IPR2020-01138
`Patent 8,382,186 B2
`To further illustrate our point, we reproduce Patent Owner’s annotated
`version of Figure 1 of the ’441 application (Prelim Resp. 56), below:
`
`
`
`Annotated Figure 1 is an isometric view of floor tray 100 that depicts
`first tray wall 132 (green), second tray wall 134 (lime), and third tray
`wall 136 (pink), and central panel 102 (aqua). Id. at 55; see also Ex. 2002,
`312, [0023] (“FIGURE 1 is an isometric view of one embodiment of a
`vehicle floor tray according to the invention.”). The ’441 application
`describes this figure as depicting floor tray or cover 100 for protecting “both
`
`10
`
`

`

`IPR2020-01138
`Patent 8,382,186 B2
`the floor and at least the lower sides of a vehicle foot well.” Ex. 2002, 314,
`[0038].
`We also reproduce Patent Owner’s annotated version of Figure 2 of
`the ’441 application (Prelim. Resp. 57), below:
`
`Annotated Figure 2 depicts a top view of floor tray 100 showing first
`tray wall 132 (green), second tray wall 134 (lime), third tray wall 136 (pink),
`and central panel 102 (blue). Prelim. Resp. 58; see also Ex. 2002, 312,
`[0024] (“FIGURE. 2 is a top view of the floor tray illustrated in
`FIGURE 1”).
`
`
`
`11
`
`

`

`IPR2020-01138
`Patent 8,382,186 B2
`We also reproduce Patent Owner’s annotated version of Figure 3 of
`the ’441 application (Prelim. Resp. 59), below:
`
`
`
`Annotated Figure 3 depicts first tray wall 132 (green), second tray
`wall 134 (lime), and central panel 102 (blue). See Prelim. Resp. 58; see also
`Ex. 2002, 312, [0025] (“FIGURE 3 is an isometric and transverse sectional
`view of the floor tray seen in FIGURES. 1 and 2, the section taken
`substantially along line 3-3 of FIGURE 2.”). In particular, the annotated
`figure depicts a cross-sectional view of first tray wall 132 (green) with its
`“substantially uniform thickness.”
`
`12
`
`

`

`IPR2020-01138
`Patent 8,382,186 B2
`We further reproduce Patent Owner’s annotated Figure 4 of the
`’441 application (Prelim. Resp. 60), below:
`
`
`
`Annotated Figure 4 depicts an isometric, sectional view of floor
`tray 100, including a cross-sectional view of second tray wall 134 (lime) and
`central panel 102 (blue), each depicting their “substantially uniform
`thickness.” Prelim. Resp. 58; see also Ex. 2002, 312, [0026] (“FIGURE 4 is
`an isometric and longitudinal sectional view of the floor tray shown in
`FIGURES 1 and 2, the section taken substantially along line 4-4 of
`FIGURE 2”).
`
`13
`
`

`

`IPR2020-01138
`Patent 8,382,186 B2
`We also reproduce Patent Owner’s annotated Figure 9 of the
`’441 application (Prelim. Resp. 61), below:
`
`
`
`Annotated Figure 9 depicts an isometric and sectional view of first
`tray wall 132 (green), second tray wall 134 (lime), and central panel 102
`(blue). Prelim. Resp. 58; see also Ex. 2002, 313, [0031] (“FIGURE 9 is a
`partly transverse sectional, partly isometric view of both the floor tray
`illustrated in FIGURE 2 and the vehicle well surface illustrated in FIGURE
`8”). In particular, the annotated figure illustrates central panel 102 (blue)
`and first tray wall 132 (green) with “substantially uniform” thicknesses.
`
`14
`
`

`

`IPR2020-01138
`Patent 8,382,186 B2
`We further reproduce Patent Owner’s annotated Figure 10 of the ’441
`application (Prelim. Resp. 62), below:
`
`
`
`Annotated Figure 10 depicts a cross-sectional and isometric view of
`floor tray 100 of second tray wall 134 (lime) and central panel 102 (blue).
`See Prelim. Resp. 58; see also Ex. 2002, 313, [0032] (“FIGURE 10 is a
`partly transverse sectional, partly isometric view of both the floor illustrated
`in FIGURE 2 and the vehicle foot well surface illustrated in FIGURE 8”).
`Specifically, the annotated figure illustrates central panel 102 (blue) and
`second tray wall 134 (lime) with “substantially uniform” thicknesses.
`
`15
`
`

`

`IPR2020-01138
`Patent 8,382,186 B2
`Next, we reproduce Patent Owner’s annotated Figure 12 of the ’441
`application (Prelim. Resp. 63), below:
`
`
`Annotated Figure 12 depicts a part-sectional view of central panel 102
`(blue). See Prelim. Resp. 58; see also Ex. 2002, 313, [0034] (“FIGURE 12
`is a detail of a seat pedestal region of FIGURE 10”). In particular, the
`annotated figure depicts central panel 102 (blue) with a “substantially
`uniform thickness.”
`
`16
`
`

`

`IPR2020-01138
`Patent 8,382,186 B2
`We also reproduce Patent Owner’s annotated Figure 13 of the ’441
`application (Prelim. Resp. 63), below:
`
`
`
`Annotated Figure 13 depicts a partly-cross-sectional, isometric view
`of floor tray 100 with first tray wall 132 (green), second side wall (lime),
`and third tray wall 136 (pink). See Prelim. Resp. 58; see also Ex. 2002, 313,
`[0035] (“FIGURE 13 is a partly longitudinal sectional, partly isometric view
`of both the floor tray illustrated in FIGURE 2 and the vehicle foot well
`surface illustrated in FIGURE 8”). In particular, the annotated figure depicts
`first tray wall 132 (green) and third tray wall 136 (pink) with “substantially
`uniform” thicknesses.
`In summary, we find that Figures 1–4, 9, 10, 12, and 13 of the
`’441 application collectively depict first tray wall 132, second tray wall 134,
`third tray wall 136, and central panel 102 as having the thicknesses as set
`forth in element 1j. See, e.g., Ex. 1001, 20:9–16.
`
`17
`
`

`

`IPR2020-01138
`Patent 8,382,186 B2
`We also note that our understanding is consistent with the patent
`examiner’s understanding during prosecution of the ’899 application, a
`parent to the ’186 patent. See id. at code (60) (identifying the
`’899 application in the priority chain of the ’186 patent).
`During prosecution of the ’899 application, the applicant amended
`then-pending claim 12 “to recite a central panel, a first panel, a second
`panel, a reservoir, and baffles each having a thickness from a point on the
`upper surface to a closest point on the bottom surface that is substantially
`uniform throughout the tray.” Ex. 1022, 209 (emphasis added). The patent
`applicant stated that “support for this amendment is found in Figures 3
`and 4” of the application. Id. Appellant also cited paragraph 51 of the
`specification as providing written description support (id. at 208), which we
`note references Figures 3 and 4 (id. at 21). During a subsequent interview
`with the Examiner, claim 12 was discussed “with respect to the prior art and
`uniform thickness.” Id. at 235 (emphasis added). In the interview summary,
`the “Examiner suggested adding the limitations of claim 13 into claim 12 to
`overcome the Strata prior art.” Id. The interview summary does not
`indicate, however, that the examiner took issue with the “uniform thickness”
`amendment as lacking written description support. See id. Indeed, claim 12
`ultimately issued as claim 1 with a similar requirement that the thickness of
`the formed panel be “substantially uniform throughout the tray.” See id.
`at 237–243 (Notice of Allowance); see also id. at Ex. 3001, 20:24–31.
`In summary, we find that element 1j is supported by the figures of the
`’441 application, and that this finding is consistent with the prosecution of a
`parent application. As such, we are not persuaded by Petitioner’s argument
`that the ’186 patent is not entitled to claim priority to the ’441 application.
`
`18
`
`

`

`IPR2020-01138
`Patent 8,382,186 B2
`For this reason, we are not persuaded that MacNeil is prior art to the claims
`of the ’186 patent, and we do not institute inter partes review.
`III. CONCLUSION
`For the reasons above, we determine that the Petition fails to show
`that MacNeil is prior art to the ’186 patent. We do not institute review of
`any of the challenged claims.
`
`IV. ORDER
`For the reasons given, it is:
`ORDERED that inter partes review is not instituted for any challenge
`to the claims of the ’186 patent set forth in the Petition.
`
`19
`
`

`

`IPR2020-01138
`Patent 8,382,186 B2
`For PETITIONER:
`Mark P. Walters
`John J. Bamert
`LOWE GRAHAM JONES PLLC
`Ralph W. Powers III
`Jason A. Fitzsimmons
`Stephen A. Merrill
`STERNE KESSLER GOLDSTEIN & FOX P.L.L.C.
`walters@lowegrahamjones.com
`tpowers-PTAB@sternekessler.com
`jfitzsimmons-PTAB@sternekessler.com
`smerrill-PTAB@sternekessler.com
`bamert@lowegrahamjones.com
`
`For PATENT OWNER:
`David G. Wille
`Chad C. Walters
`Clarke W. Stavinoha
`BAKER BOTTS L.L.P.
`Jefferson Perkins
`PERKINS IP LAW GROUP LLC
`david.wille@bakerbotts.com
`chad. walters@bakerbotts.com
`clarke.stavinoha@bakerbotts.com
`jperkins@perkinsip.com
`
`20
`
`

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