Trials@uspto.gov
`571-272-7822
`
`
`Paper 7
`Date: May 16, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ECOFASTEN SOLAR, LLC and ESDEC, INC.,
`Petitioner,
`v.
`UNIRAC, INC,
`Patent Owner.
`
`IPR2022-00088
`Patent 9,584,062 B2
`
`
`
`
`
`
`
`
`
`Before BARRY L. GROSSMAN, BART A. GERSTENBLITH, and
`ARTHUR M. PESLAK, Administrative Patent Judges.
`GROSSMAN, Administrative Patent Judge.
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`Paper 7
`Date: May 16, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ECOFASTEN SOLAR, LLC and ESDEC, INC.,
`Petitioner,
`v.
`UNIRAC, INC,
`Patent Owner.
`
`IPR2022-00088
`Patent 9,584,062 B2
`
`
`
`
`
`
`
`
`
`Before BARRY L. GROSSMAN, BART A. GERSTENBLITH, and
`ARTHUR M. PESLAK, Administrative Patent Judges.
`GROSSMAN, Administrative Patent Judge.
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`IPR2022-00088
`Patent 9,584,062 B2
`
`
`INTRODUCTION
`I.
`A. Background and Summary
`EcoFasten Solar, LLC, and Esdec, Inc. (collectively, “Petitioner”)
`filed a Petition (Paper 1, “Pet.”) requesting an inter partes review of
`claims 1, 6–12, 14, 17–20, and 26–31 (the “challenged claims”) of U.S.
`Patent No. 9,584,062 B2 (Ex. 1001, “the ’062 patent”). Unirac, Inc. (“Patent
`Owner”) filed a Preliminary Response (Paper 6, “Prelim. Resp.”).
`We have jurisdiction under 35 U.S.C. § 314. Under § 314, an inter
`partes review may not be instituted “unless . . . 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). The Board
`determines whether to institute a trial on behalf of the Director. 37 C.F.R.
`§ 42.4(a). A decision to institute is “a simple yes-or-no institution choice
`respecting a petition, embracing all challenges included in the petition.”
`PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018).
`For the reasons set forth below, we determine that Petitioner has
`demonstrated that there is a reasonable likelihood that at least one of the
`challenged claims is unpatentable. Accordingly, we institute an inter partes
`review of all challenged claims and on all grounds asserted in the Petition.
`B. Real Parties-in-Interest
`Petitioner identifies itself as the real parties-in-interest. Pet. 1.
`Patent Owner identifies itself as the sole real party-in-interest.
`Paper 4, 2.
`
`C. Related Matters
`The parties identify Unirac, Inc. v. EcoFasten Solar, LLC and Esdec,
`Inc., Case No. 1:21-cv-00059-MN (D. Del.), which is a patent infringement
`
`2
`
`
`
`IPR2022-00088
`Patent 9,584,062 B2
`
`litigation filed by Patent Owner against Petitioner, as the sole related matter.
`Pet. 1; Paper 4, 2. We also note that the same parties, and the same
`technology, apparatus or systems for mounting photovoltaic modules to a
`structure, are involved in: Unirac, Inc. v. EcoFasten Solar, LLC and Esdec,
`Inc., Case No. 1:21-cv-00058-MN (D. Del.); IPR2021-01379; IPR2021-
`01566; IPR2022-00087; IPR2022-00088; and IPR2022-00520.
`D. The ’062 patent
`The ’062 patent discloses “mounting photovoltaic modules to a
`structure, such as a roof of a home or other building.” Ex. 1001, 1:6–9.
`According to the ’062 patent, “there is a desire to reduce the complexity of
`such structures” and “there is a need for an improved apparatus for mounting
`photovoltaic modules.” Id. at 1:10–14.
`Figures 1 and 3 from the ’062 patent are reproduced below.
`
`
`Figure 1 is a cross-sectional view of an apparatus for mounting photovoltaic
`modules with a mounted photovoltaic module. Figure 3 is a perspective
`view of the apparatus for mounting photovoltaic modules of Figure 1.
`Ex. 1001, 1:18–19, 29–31.
`
`3
`
`
`
`IPR2022-00088
`Patent 9,584,062 B2
`
`
`As shown in Figures 1 and 3, apparatus 10 includes bracket 100,
`clamp 200, and footer 400 for mounting photovoltaic module 1. Ex. 1001,
`2:7–11. A plurality of attachment mechanisms 300 secure clamp 200 to
`upper portion 110B of bracket 100. Id. at 2:11–12, 35–37.
`Bracket 100 in its lower portion 110A defines slots 112A and 112B on
`opposing sides. Id. at 2:13–15. Slots 112A and 112B extend along an entire
`longitudinal length L of bracket 100. Id. at 2:15–16. Bracket 100 includes
`first ledge 120 on first side 110C and second ledge 122 on second, opposing
`side 110D. Id. at 2:18–20.
`Clamp 200 includes two opposing legs 210, 212 where extension
`member 140 of the bracket 100 is disposed between thereof. Id. at 2:31–34.
`Clamp 200 also includes first wing 220 on first side 200A and second wing
`222 on second side 200B. Id. at 2:40–42. Wings 220, 222 cooperate with
`ledges 120, 122 of bracket 100, respectively, to secure multiple photovoltaic
`modules 1, 2 on first side 110C of bracket 100 and first side 200A of clamp
`200 (photovoltaic module 2 is not shown in Figures 1 and 3 but is shown in
`Figure 10 below). Id. at 2:43–45, 3:49–54. Footer 400 is variably
`positionable on bracket 100 along either slot 112A or 112B. Id. at 2:50–51.
`Footer 400 is generally L-shaped with first, upright leg 401 and
`second, flat leg 402 in which first, upright leg 401 extends perpendicularly
`to the surface on which footer 400 is mounted and second, flat leg 402
`extends parallel to the surface on which footer 400 is mounted. Id. at 2:52–
`57. First, upright leg 401 contains at least one aperture, through which
`securement mechanism 410, which may be a bolt and a nut, extends. Id. at
`2:57–59. As the shaft of the bolt extends through the aperture of first,
`upright leg 401 and a nut, or other structure, of securement mechanism 410
`
`4
`
`
`
`IPR2022-00088
`Patent 9,584,062 B2
`
`is disposed within slot 112A of bracket 100, or slot 112B onto the end of the
`shaft of the bolt for securement of footer 400. Id. at 2:63–3:1. Second, flat
`leg 402 of footer 100 also contains an aperture, and “an additional
`securement mechanism, which may be a lag bolt, extends through the
`aperture and into a roof structure, e.g., a rafter, to secure” flat leg 402, and
`thus footer 400, to the roof structure. Id. at 3:3–7.
`The ’062 patent discloses that securement mechanisms 300 are
`threaded into respective apertures in clamp 200 and extension member 140
`of bracket 100 to lower clamp 200 with respect to bracket 100, and thus,
`clamp photovoltaic modules 1, 2 between first ledge 120 of bracket 100 and
`first wing 220 of clamp 200. Id. at 3:57–62.
`Apparatus 10 can be in a shorter form, lengthwise, as apparatus 10A
`shown in Figure 9. Id. at 4:50–60. In this configuration, apparatus 10A is
`only used to mount at most two photovoltaic modules in the N-S direction at
`the E-W ends of the photovoltaic array as depicted in Figure 10 below. Id.
`at 4:64–66.
`Figure 10 from the ’062 patent is reproduced below.
`
`
`Figure 10 is a top view of the apparatus of Figures 1 and 3 as used to mount
`photovoltaic modules. Ex. 1001, 1:54–55.
`
`5
`
`
`
`IPR2022-00088
`Patent 9,584,062 B2
`
`
`As shown in Figure 10, on opposing, second side 110D of bracket 100
`and opposing, second side 200B of clamp 200, third photovoltaic module 3
`and fourth photovoltaic module 4 are mountable between second ledge 122
`of bracket 100 and second wing 222 of clamp 200, such that third
`photovoltaic module 3 is positioned adjacent to fourth photovoltaic module
`4. Ex. 1001, 4:9–19. Thus, apparatus 10 can be disposed between four
`photovoltaic modules of an array of photovoltaic modules. Id. at 4:20–24.
`As indicated above, apparatus 10A can be disposed between only two
`photovoltaic modules of the array of photovoltaic modules shown in
`Figure 10. Id. at 4:50–60, 64–66.
`E. Illustrative Claims
`The ’062 patent has 19 challenged claims, with claims 1, 28, 29, and
`31 as the only independent claims.
`Independent claims 1, 28, and 31 are directed to an apparatus for
`mounting photovoltaic modules. Claims 6–12, 14, 17–20, 26, and 27
`depend, directly or indirectly, from claim 1. Independent claims 1, 28, and
`31 each specifically include a “bracket,” a “clamp,” and a “footer.”
`Claim 29 is directed to a system for mounting an array of photovoltaic
`modules. Claim 30 depends directly from claim 29. Independent claim 29,
`unlike claims 1, 28, and 31, does not specifically claim a “bracket,” “clamp,”
`or “footer.” Instead claim 29 includes “a first mounting apparatus,” and a
`“second mounting apparatus”
`Independent claims 1 and 29 are illustrative and are reproduced below
`with bracketed labels employed by Petitioner to facilitate analysis and
`discussion.
`
`6
`
`
`
`IPR2022-00088
`Patent 9,584,062 B2
`
`
`1. [1P] An apparatus for mounting photovoltaic modules,
`comprising:
`[1.1] a bracket, wherein the bracket defines a slot in a lower
`portion of the bracket and wherein the slot extends along a
`longitudinal length of the bracket;
`[1.2] a clamp securable to the bracket on an upper portion of the
`bracket;
`[1.3] wherein a first photovoltaic module and a second
`photovoltaic module are mountable on a first side of the bracket
`and a first side of the clamp, wherein the first photovoltaic
`module is adjacent to the second photovoltaic module, and
`wherein only a respective end portion of the first photovoltaic
`module and the second photovoltaic module is mountable in the
`first side of the bracket and the first side of the clamp; and
`[1.4] a footer, wherein the footer is variably positionable on the
`bracket along the slot.
`
`
`29. [29P] A system for mounting an array of photovoltaic modules
`comprising:
`[29.1] a first mounting apparatus, wherein:
`a first photovoltaic module and a second photovoltaic
`module are mountable on a first side of the first
`mounting apparatus, wherein the first photovoltaic
`module is adjacent to the second photovoltaic module,
`and wherein only a respective first end portion of the
`first photovoltaic module and the second photovoltaic
`module is mountable on the first side of the first
`mounting apparatus; and
`[29.2] a
`third photovoltaic module and a fourth
`photovoltaic module are mountable on a second side of
`the first mounting apparatus, wherein
`the
`third
`photovoltaic module
`is adjacent
`to
`the
`fourth
`photovoltaic module, and wherein only a respective first
`end portion of the third photovoltaic module and the
`fourth photo voltaic module is mountable on the second
`side of the first mounting apparatus; and
`
`7
`
`
`
`IPR2022-00088
`Patent 9,584,062 B2
`
`
`[29.3] a second mounting apparatus, wherein:
`the first photovoltaic module and a fifth photovoltaic
`module are mountable on a first side of the second
`mounting apparatus, wherein the first photovoltaic
`module is adjacent to the fifth photovoltaic module, and
`wherein only a second end portion of the first
`photovoltaic module and only a first end portion of the
`fifth photovoltaic module are mountable on the first side
`of the second mounting apparatus; and
`[29.4]
`the
`third photovoltaic module and a sixth
`photovoltaic module are mountable on a second side of
`the second mounting apparatus, wherein the third
`photovoltaic module
`is adjacent
`to
`the sixth
`photovoltaic module, and wherein only a second end
`portion of the third photovoltaic module and only a first
`end portion of the sixth photovoltaic module are
`mountable on the second side of the second mounting
`apparatus.
`Ex. 1001, 7:35–10:63; see Pet. 63–80, 107–08 (bracketed numbers added by
`Petitioner).
`
`F. Discretionary Denial Under 35 U.S.C. § 314(a)
`Patent Owner contends that the Board should deny institution under
`35 U.S.C. § 314(a) to avoid inefficient duplication of effort with the district
`court in Unirac, Inc. v. EcoFasten Solar, LLC; Esdec, Inc., Case No. 1:21-
`cv-00059, filed on January 20, 2021, in the U.S. District Court for the
`District of Delaware. Patent Owner refers to this case as the “Parallel
`Litigation.” E.g., Prelim. Resp. 1–2.
`Petitioner does not address the issue of discretionary denial under
`35 U.S.C. § 314(a) in the Petition. Petitioner did not request authorization to
`file a preliminary reply to Patent Owner’s argument and evidence.
`
`8
`
`
`
`IPR2022-00088
`Patent 9,584,062 B2
`
`
`Applicable Precedent
`Institution of an inter partes review is discretionary. See 35 U.S.C.
`§314(a) (authorizing institution of an inter partes review under particular
`circumstances, but not requiring institution under any circumstances);
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he
`agency’s decision to deny a petition is a matter committed to the Patent
`Office’s discretion.”); SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018)
`(“[Section] 314(a) invests the Director with discretion on the question
`whether to institute review . . . .” (emphasis omitted)); Harmonic Inc. v. Avid
`Tech., Inc., 815 F.3d at 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is
`permitted, but never compelled, to institute an IPR proceeding.”).
`In exercising that discretion, the Board may consider the advanced
`state of a related district court proceeding, among other considerations, as a
`“factor that weighs in favor of denying the Petition under § 314(a).” NHK
`Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 at 20 (PTAB
`Sept. 12, 2018) (precedential); Apple, Inc. v. Fintiv, Inc., IPR2020-00019,
`Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (the “Fintiv Order”).
`The precedential Fintiv Order identifies several non-exclusive factors
`to consider in analyzing § 314(a) issues, with the goal of balancing
`efficiency, fairness, and patent quality. See Fintiv Order, Paper 11 at 5–6.
`These factors include: 1) whether a stay exists or is likely to be granted if a
`proceeding is instituted; 2) proximity of the court’s trial date to the Board’s
`projected statutory deadline; 3) investment in the parallel proceeding by the
`court and parties; 4) overlap between issues raised in the petition and in the
`parallel proceeding; 5) whether the petitioner and the defendant in the
`parallel proceeding are the same party; and 6) other circumstances and
`
`9
`
`
`
`IPR2022-00088
`Patent 9,584,062 B2
`
`considerations that impact the Board’s exercise of discretion, including the
`merits. Id.
`
`Analysis
`With this background, we consider each of the factors set forth in the
`precedential Fintiv Order.
`Factor 1: whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted.
`“A district court stay of the litigation pending resolution of the PTAB
`trial allays concerns about inefficiency and duplication of efforts. This fact
`has strongly weighed against exercising the authority to deny institution
`under NHK.” Fintiv Order, Paper 11 at 6 (citations omitted).
`The complaint in the Parallel Litigation was filed on January 20,
`2021. Ex. 3001. The complaint alleges infringement of two patents, the
`’062 patent involved in the proceeding before us and U.S. Patent No.
`9,160,273 (the “’273 patent”) involved in the related, pending IPR
`proceeding, IPR2022-00520. Count I alleges infringement of the ’273
`patent. Id. ¶¶ 45–53. Count II alleges infringement of the ’062 patent.
`Id. ¶¶ 54–62.
`We have not been directed to any evidence that a stay has been
`requested by either party or that the Court has entered or considered a stay in
`the Parallel Litigation. We decline to speculate based on the record in this
`case as to whether the Delaware District Court will grant a stay if we
`institute this IPR. We determine that the facts underlying this factor do not
`weigh in favor of or against exercising our discretion to deny institution.
`
`10
`
`
`
`IPR2022-00088
`Patent 9,584,062 B2
`
`
`Factor 2: proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision
`If the court’s trial date is earlier than the projected statutory deadline,
`the Board generally has weighed this fact in favor of exercising authority to
`deny institution under NHK. Fintiv Order, Paper 11 at 9. If the court’s trial
`date is at or around the same time as the projected statutory deadline or even
`significantly after the projected statutory deadline, the decision whether to
`institute will likely implicate other factors discussed herein, such as the
`resources that have been invested in the parallel proceeding. Id.
`If we institute an IPR proceeding in the case before us, a final written
`decision likely will be due on or before May 17, 2023.
`Trial is scheduled to commence in the Parallel Litigation on
`December 5, 2022. See Ex. 2001, 15 (setting a “3 to 5 day” jury trial
`beginning December 5, 2022); see also Ex. 2003, 3 (extending certain due
`dates but maintaining a December 5, 2022, trial date); Ex. 3004, 2
`(extending certain due dates but maintaining a December 5, 2022, trial date).
`If not delayed, and not considering post-trial motions, this trial will conclude
`about five months before any final decision in this IPR proceeding. This
`fact weighs in favor of exercising our discretion to deny institution in this
`proceeding. NHK, Paper 8 at 20; Fintiv Order, Paper 11 at 5–6.
`Factor 3: investment in the parallel proceeding by the court and the
`parties
`“The Board also has considered the amount and type of work already
`completed in the parallel litigation by the court and the parties at the time of
`the institution decision.” Fintiv Order, Paper 11 at 9.
`In the Parallel Litigation, at the time of institution, on or before
`May 17, 2022, significant work will have been completed. Ex. 3004. Final
`
`11
`
`
`
`IPR2022-00088
`Patent 9,584,062 B2
`
`invalidity and validity contentions will have been completed; fact discovery
`will have been completed; expert reports will have been completed; and
`claim construction briefs will have been completed. Id. at 2. Shortly after
`institution, on May 26, 2022, expert discovery will end. Id. A claim
`construction hearing is scheduled for June 7, 2022. Ex. 3002. Dispositive
`motions, the final significant substantive filings that remain prior to trial,
`will be completed by July 28, 2022. Id. at 2.
`Based on the record before us, within approximately two months after
`the institution decision in this IPR proceeding, and before the deadline for a
`patent owner response, all pre-trial preparation will have been completed.
`Ex. 3004. The record before us does not quantify this investment in terms of
`time, effort (e.g., documents produced; depositions taken; interrogatories
`answered; etc.), or dollars.
`We also note and consider that the Parallel Litigation was filed on
`January 20, 2021. Ex. 3001. Petitioner did not file its Petition until
`November 10, 2021.
`Thus, this third Fintiv factor weighs in favor of exercising our
`discretion to deny institution to prevent duplication of work by the Board
`and the district court on any similar issues that may exist. Fintiv Order,
`Paper 11 at 10.
`Factor 4: overlap between issues raised in the Petition and in the
`parallel proceeding
`“[I]f the petition includes the same or substantially the same claims,
`grounds, arguments, and evidence as presented in the parallel proceeding,
`this fact has favored denial.” Fintiv Order, Paper 11 at 12 (citations
`omitted). “Conversely, if the petition includes materially different grounds,
`
`12
`
`
`
`IPR2022-00088
`Patent 9,584,062 B2
`
`arguments, and/or evidence than those presented in the district court, this
`fact has tended to weigh against exercising discretion to deny institution
`under NHK.” Id. at 12–13 (citations omitted); see also Sotera Wireless, Inc.
`v. Masimo Corp., IPR2020-01019, Paper 12 at 18–19 (Dec. 1, 2020)
`(precedential) (“Petitioner’s stipulation here mitigates any concerns of
`duplicative efforts between the district court and the Board, as well as
`concerns of potentially conflicting decisions.”). We have not been directed
`to any evidence of a Sotera or other stipulation to eliminate potential overlap
`of issues.
`Overlap of Claims
`In the IPR proceeding before us, Petitioner challenges claims 1, 6–12,
`14, 17–20, and 26–31 of the ’062 patent. In the Parallel Litigation, Patent
`Owner asserts that claims 1, 7–10, 28, 29, and 31 of the ’062 patent are at
`issue. Prelim. Resp. 38. Patent Owner, however, provides no evidence in
`support of this assertion. In its District Court complaint, Patent Owner
`alleges infringement of “at least claim 1 of the ’062 Patent.” Ex. 3001 ¶ 55.
`Even accepting Patent Owner’s assertion that “claims 1, 7–10, 28–29,
`and 31 of the ’062 Patent” are at issue in the Parallel Litigation (Prelim.
`Resp. 38) as true, the eighteen claims challenged in the IPR proceeding are
`more extensive than the eight claims at issue in the Parallel Litigation. This
`fact weighs against exercising our discretion to deny institution. Facebook,
`Inc. v. Blackberry Ltd., IPR2019-00899, Paper 15 at 12 (Oct. 8, 2019)
`(finding the fact that the district court proceeding will not be evaluating the
`validity of claims involved in the IPR proceedings weighs against exercising
`discretion to deny institution).
`
`13
`
`
`
`IPR2022-00088
`Patent 9,584,062 B2
`
`
`Overlap of References and Grounds
`We have not been directed to evidence that there is any overlap
`between the asserted grounds in this IPR proceeding and the invalidity
`contentions in the Parallel Litigation.
`Based on the limited record before us, the record does not establish
`that there is an overlap of prior art or grounds between this IPR proceeding
`and the Parallel Litigation that might weigh in favor of discretionary denial.
`Accordingly, we determine that the facts underlying this factor weigh
`against exercising our discretion to deny institution.
`Factor 5: whether Petitioner and the defendant in the parallel
`proceeding are the same party
`This factor suggests that “[i]f a petitioner is unrelated to a defendant
`in an earlier court proceeding, the Board has weighed this fact against
`exercising discretion to deny institution under NHK.” Fintiv Order, Paper 11
`at 13–14. Here, Petitioner is a party in the Parallel Litigation. The fact that
`Petitioner is the same as the defendant in the Parallel Litigation weighs in
`favor of exercising our discretion to deny institution.
`Factor 6: other circumstances that impact the Board’s exercise of
`discretion, including the merits
`Based on our review of the arguments and evidence on the merits, as
`discussed below, we determine that Petitioner has demonstrated a reasonable
`likelihood that it would prevail in this IPR proceeding on at least one claim.
`Accordingly, this preliminary determination on the merits is a neutral
`factor in exercising discretion.
`Holistic Analysis of Fintiv Order Factors
`As noted in the Fintiv Order, we take “a holistic view of whether
`efficiency and integrity of the system are best served by denying or
`
`14
`
`
`
`IPR2022-00088
`Patent 9,584,062 B2
`
`instituting review.” Fintiv Order, Paper 11 at 6. We recognize the advanced
`state of the Parallel Litigation. We also recognize that both proceedings
`involve the ’062 patent and the same parties. There is no evidence in the
`record before us, however, of any overlap in the invalidity or unpatentability
`evidence, arguments, or issues between this IPR proceeding and the Parallel
`Litigation. Accordingly, based on the evidence of record in this IPR
`proceeding and the analysis above, we determine that efficiency and
`integrity of the system are best served by not exercising our discretion to
`deny institution based on the Parallel Litigation.
`We now turn to the merits of Petitioner’s two Grounds of asserted
`unpatentability.
`
`G. Prior Art and Asserted Grounds
`Petitioner asserts that one or more of the challenged claims would
`have been obvious on the following two grounds:
`Claim(s) Challenged
`35 U.S.C. §1
`Reference(s)/Basis
`1, 6–12, 14, 17–20,
`103
`Wildes,2 Wildes II3
`26–31
`1, 6–12, 14, 17, 18,
`20, 26–31
`
`Wentworth4
`
`103
`
`
`1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 296–07 (2011), took effect on September 16, 2011. The changes
`to 35 U.S.C. §§ 102 and 103 in the AIA do not apply to any patent
`application filed before March 16, 2013. Because the application for the
`patent at issue in this proceeding has an effective filing date of October 16,
`2014, which is after March 16, 2013, we refer to the AIA version of the
`statute.
`2 US Appl. No. 62/014,054, filed June 18, 2014 (Ex. 1010, “Wildes”).
`3 US Appl. No. 61/904,049, filed Nov. 14, 2013 (Ex. 1009, “Wildes II”).
`4 US 8,938,932 B1, iss. Jan. 27, 2015 (Ex. 1004, “Wentworth”).
`
`15
`
`
`
`IPR2022-00088
`Patent 9,584,062 B2
`
`
`II. ANALYSIS
`A. Legal Standards
`Petitioner has the burden of proof. Harmonic Inc. v. Avid Tech., Inc.,
`815 F.3d 1356, 1363 (Fed. Cir. 2016) (“In an IPR, the petitioner has the
`burden from the onset to show with particularity why the patent it challenges
`is unpatentable.”).
`Section 103 forbids issuance of a patent when “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). The question of obviousness is resolved on the basis of underlying
`factual determinations, including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) when available, evidence
`such as commercial success, long felt but unsolved needs, and failure of
`others. 5 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966); see KSR,
`550 U.S. at 407 (“While the sequence of these questions might be reordered
`in any particular case, the [Graham] factors continue to define the inquiry
`that controls.”). The Court in Graham explained that these factual inquiries
`promote “uniformity and definiteness,” for “[w]hat is obvious is not a
`question upon which there is likely to be uniformity of thought in every
`given factual context.” 383 U.S. at 18.
`
`
`5 Patent Owner does not direct us to any objective evidence of non-
`obviousness in its Preliminary Response.
`
`16
`
`
`
`IPR2022-00088
`Patent 9,584,062 B2
`
`
`The Supreme Court made clear that we apply “an expansive and
`flexible approach” to the question of obviousness. KSR, 550 U.S. at 415.
`Whether a patent claiming the combination of prior art elements would have
`been obvious is determined by whether the improvement is more than the
`predictable use of prior art elements according to their established functions.
`Id. at 417. To support this conclusion, however, it is not enough to show
`merely that the prior art includes separate references covering each separate
`limitation in a challenged claim. Unigene Labs., Inc. v. Apotex, Inc., 655
`F.3d 1352, 1360 (Fed. Cir. 2011). Rather, obviousness additionally requires
`that a person of ordinary skill at the time of the invention “would have
`selected and combined those prior art elements in the normal course of
`research and development to yield the claimed invention.” Id.; see also
`Orexo AB v. Actavis Elizabeth LLC, 903 F.3d 1265, 1273 (Fed. Cir. 2018)
`(“The question is not whether the various references separately taught
`components of the [claimed] formulation, but whether the prior art suggested
`the selection and combination achieved by the [patent] inventors.”).
`In determining whether there would have been a motivation to
`combine prior art references to arrive at the claimed invention, it is
`insufficient to simply conclude the combination would have been obvious
`without identifying any reason why a person of skill in the art would have
`made the combination. Metalcraft of Mayville, Inc. v. Toro Co., 848 F.3d
`1358, 1366 (Fed. Cir. 2017).
`Moreover, in determining the differences between the prior art and the
`claims, the question under 35 U.S.C. § 103 is not whether the differences
`themselves would have been obvious, but whether the claimed invention as a
`whole would have been obvious. Litton Indus. Prods., Inc. v. Solid State
`
`17
`
`
`
`IPR2022-00088
`Patent 9,584,062 B2
`
`Sys. Corp., 755 F.2d 158, 164 (Fed. Cir. 1985) (“It is elementary that the
`claimed invention must be considered as a whole in deciding the question of
`obviousness.”); see also Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530,
`1537 (Fed. Cir. 1983) (“[T]he question under 35 U.S.C. § 103 is not whether
`the differences themselves would have been obvious. Consideration of
`differences, like each of the findings set forth in Graham, is but an aid in
`reaching the ultimate determination of whether the claimed invention as a
`whole would have been obvious.”).
`As a factfinder, we also must be aware “of the distortion caused by
`hindsight bias and must be cautious of arguments reliant upon ex post
`reasoning.” KSR, 550 U.S. at 421.
`Applying these general principles, we consider the evidence and
`arguments of the parties.
`B. Level of Ordinary Skill in the Art
`The level of skill in the art is “a prism or lens” through which we view
`the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d
`1350, 1355 (Fed. Cir. 2001). “This reference point prevents . . . factfinders
`from using their own insight or, worse yet, hindsight, to gauge obviousness.”
`Id.
`
`Factors pertinent to a determination of the level of ordinary skill in the
`art include: (1) educational level of the inventor; (2) type of problems
`encountered in the art; (3) prior art solutions to those problems; (4) rapidity
`with which innovations are made; (5) sophistication of the technology; and
`(6) educational level of workers active in the field. Env’t Designs, Ltd. v.
`Union Oil Co., 713 F.2d 693, 696–97 (Fed. Cir. 1983) (citing Orthopedic
`Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 1381–82 (Fed.
`
`18
`
`
`
`IPR2022-00088
`Patent 9,584,062 B2
`
`Cir. 1983)). Not all such factors may be present in every case, and one or
`more of these or other factors may predominate in a particular case. Id.
`Moreover, these factors are not exhaustive but are merely a guide to
`determining the level of ordinary skill in the art. Daiichi Sankyo Co. v.
`Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). In determining a level
`of ordinary skill, we also may look to the prior art, which may reflect an
`appropriate skill level. Okajima, 261 F.3d at 1355.
`Petitioner asserts that a person of ordinary skill in the art at the
`relevant time would have had “at least a bachelor’s degree in mechanical
`engineering, structural engineering, or similar technical field, with at least
`three years of relevant (metal fabrication, aluminum extrusion, architectural
`glass structural) product design experience.” Pet. 12 (citing Ex. 1003 ¶ 46).
`Petitioner also states that “[a]n increase in experience could compensate for
`less education.” Id. Patent Owner does not propose a level of ordinary skill,
`nor does Patent Owner comment on Petitioner’s proposed level of ordinary
`skill. For purposes of this Decision, based on the references of record, we
`adopt Petitioner’s undisputed definition.
`C. Claim Construction
`We construe each claim “using the same claim construction standard
`that would be used to construe the claim in a civil action under 35 U.S.C.
`[§] 282(b).” 37 C.F.R. § 42.100(b) (2019). Under this standard, claim terms
`are generally given their ordinary and customary meaning as would have
`been understood by a person of ordinary skill in the art at the time of the
`invention and in the context of the entire patent disclosure. Phillips v. AWH
`Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc) (“We have
`
`19
`
`
`
`IPR2022-00088
`Patent 9,584,062 B2
`
`frequently stated that the words of a claim ‘are generally given their ordinary
`and customary meaning.’” (citations omitted)).
`Petitioner does not propose any specific construction and states that
`“all terms of the Challenged Patent should be given their plain and ordinary
`meaning as understood by a person of ordinary skill in the art at the time of
`the alleged invention (‘POSITA’) in light of the patent’s specification.” Pet.
`12–13. Patent Owner asserts that “the claim terms be given their plain and
`ordinary meaning.” Prelim. Resp. 7.
`Claims are construed only to the extent necessary to resolve a dispute.
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999). We determine we need not define expressly, for purposes of this
`Decision, any claim terms. However, if there is any implicit claim
`construction determination in this Decision, it is a preliminary
`determination. The parties are not precluded from arguing their proposed
`constructions of the claims during trial. Indeed, this Decision puts
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
