Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 7
`Entered: March 9, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`HOLT’S CIGAR HOLDINGS,INC.,
`Petitioner,
`
`Vv.
`
`BOVEDAINC.,
`Patent Owner.
`
`Case IPR2015-01844
`Patent 5,936,178
`
`Before BRIAN J. MCNAMARA,HYUN J. JUNG,and
`CHRISTOPHER M.KAISER,Administrative Patent Judges.
`
`KAISER, Administrative Patent Judge.
`
`DECISION
`DenyingInstitution of Inter Partes Review
`37 CFR. § 42.108
`
`
`Tel: 571-272-7822
`
`Paper 7
`Entered: March 9, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`HOLT’S CIGAR HOLDINGS,INC.,
`Petitioner,
`
`Vv.
`
`BOVEDAINC.,
`Patent Owner.
`
`Case IPR2015-01844
`Patent 5,936,178
`
`Before BRIAN J. MCNAMARA,HYUN J. JUNG,and
`CHRISTOPHER M.KAISER,Administrative Patent Judges.
`
`KAISER, Administrative Patent Judge.
`
`DECISION
`DenyingInstitution of Inter Partes Review
`37 CFR. § 42.108
`
`
`
`IPR2015-01844
`Patent 5,936,178
`
`INTRODUCTION
`
`A. Background
`Holt’s Cigar Holdings, Inc. (“Petitioner”) filed a Petition (Paper2,
`
`“Pet.””) requesting an inter partes review ofclaims 12, 13, 15, 19-21, 24-26,
`
`and 31-34 of US. Patent No. 5,936,178 (Ex. 1001, “the ’178 patent’).
`
`Boveda,Inc. (“Patent Owner”)filed a Preliminary Response.' Paper 5
`
`(Prelim. Resp.”).
`
`Wehaveauthority to determine whetherto institute an inter partes
`
`review. 35 U.S.C. § 314(b); 37 C.F.R.:§ 42.4(a). The standard for
`
`instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which
`
`provides that an inter partes review maynotbeinstituted “unless the
`
`Director determines .. . there is a reasonable likelihood that the petitioner
`
`would prevail with respectto at least 1 of the claims challenged in the
`petition.”
`
`After considering the Petition and the Preliminary Response, we
`
`determinethat Petitioner has not demonstrated a reasonable likelihoodthatit
`
`would prevail in showing that any ofthe claimsit challenges are
`
`unpatentable. Accordingly, we do notinstitute inter partes review.
`
`' Patent Owner’s Preliminary Response was accompanied by a motion °
`seeking acceptance of the Preliminary Response becauseit was filed by
`electronic mail. Paper 6. The submission via electronic mail occurred
`because the Patent Review Processing System was unavailable on the date
`whenthe Preliminary Response was due. Jd. at 1. Patent Owner’s motion
`meets the requirements of 37 C.F.R. § 42.6(b)(2), which governsthe
`acceptance of submissions made by meansother than electronicfiling.
`Accordingly, we grant the motion and accept Patent Owner’s filing via
`electronic mail.
`
`
`
`IPR2015-01844
`Patent 5,936,178
`
`B. Related Matters
`
`Neither party has identified any related matters involving the ’178
`
`patent. Pet. 1; Paper 4. We note that a related patent, U.S. Patent No.
`
`6,921,026, is being challenged in IPR2015-01845.
`
`C. The Asserted Grounds of Unpatentability
`
`Petitioner contendsthat claims 12, 13, 15, 19-21, 24—26, and 31-34
`
`of the °178 patent are unpatentable under 35 U.S.C. § 103 based on the
`following grounds (Pet. 8-56):?
`
`Basis?
`
`Challenged Claims‘
`
`Statutory
`Ground
`§ 103
`
`
`
`
`
`12, 13, 19, 20, 24-26
`
`St. Charles,
`Tolman,
`Spruill, and
`Harrison
`§ 103 St. Charles and|31, 32, 34
`Harrison
`
`
`
`? Petitioner also provides a declaration from Fernando J. Muzzio, Ph.D. Ex.
`1003 (“the Muzzio Declaration” or “Muzzio Decl.”).
`3 St. Charles, U.K. Patent Application Publication No. GB 2 222 816 A,
`published Mar. 21, 1990 (Ex. 1005) (“St. Charles”); Harrisonet al.,
`European Patent Application Publication No. 0 212 913 A2, published Mar.
`4, 1987 (Ex. 1006) (“Harrison”); Tolman et al., U.S. Patent No. 5,130,018,
`issued July 14, 1992 (Ex. 1007) (“Tolman”); Spruill et al., U.S. Patent No.
`5,035,731, issued July 30, 1991 (Ex. 1008) (“Spruill’’); Klett, U.S. Patent
`No. 5,773,105, issued June 30, 1998 (Ex. 1009) (“Klett”); Dobson,Jr. et al.,
`U.S. Patent No. 4,822,500, issued Apr. 18, 1989 (Ex. 1010) (“Dobson”).
`* The list of challenged claimsin the Petition, Pet. 2-3, omits certain claims
`for which detailed arguments are presented, Pet. 8-56, and includes some
`claims with no detailed arguments. In reciting the claims challenged on each
`ground, werely on the detailed arguments Petitioner presents rather than on
`the list of claims.
`
`
`
`IPR2015-01844
`Patent 5,936,178
`
`Statutory
`Ground
`§ 103
`
`§ 103
`
`St. Charles,
`Tolman,
`Spruill,
`Harrison, and
`Klett
`St. Charles,
`
`
`
`Tolman,
`
`Challenged Claims‘
`
`15, 20, 21, 33
`
`12, 19, 24-26
`
`Spruill, and
`Dobson
`§ 103 St. Charles and|31, 34
`Dobson
`
`
`
`D. The ’178 Patent
`
`The ’178 patent relates to humidity control devices that can maintain a
`
`desired humidity level. Specifically, the ’178 patent describes a humidity
`
`control device that includes
`
`a case with a plurality of openings, a polymeric pouch having
`walls sufficiently thin to permit migration of water through the
`film in the form of water vapor and yet thick enough to prevent
`the escape ofliquid water, and a solution including an organic
`or an inorganic solute (e.g., salt or sugar), vegetable gum and
`water.
`‘
`
`Ex. 1001, 5:43-49. The ’178 patent describes the saturated solution as
`
`“contain[ing] excess solute(e.g., salt or sugar crystals) and [as] preferably
`
`made moreviscous with a thickening agent.” Jd. at 5:50—52. “The case may
`
`be of any suitable size and shape,”id. at 5:55, and the ’178 patent describes
`
`using the humidity control device in various spaces, such as “a violin case,”
`
`id. at 5:56, “a piano,”id. at 5:65, “a bulk package of tobacco products or
`
`confections,” id. at 5:65—66, and a “case .. . for use in conjunction with a
`
`bass violin,” id. at 6:5—6.
`
`
`
`IPR2015-01844
`Patent 5,936,178
`
`E. Illustrative Claim
`
`Ofthe challenged claims in the ’178 patent, claims 12, 19, and 31 are
`
`independent. Claim 12 is illustrative and recites:
`
`12. A humidity control device for maintaining a desired
`humidity,
`
`said device including a protective case, a water vapor
`permeable pouchanda thickened saturated salt solution,
`
`said case comprising wall means defining an enclosure, said
`wall meansincluding a plurality of openings through which
`water vapor may freely move,
`said pouch being formed ofa thin wall polymerfilm through
`which water vapor maypass,
`said thickened saturated salt solution comprising water, salt and
`a thickening agent, said thickening agent being present in an
`amountsufficient to thicken the salt solution,
`
`said salt solution being contained within the polymeric pouch
`and sealed from escape from the pouch,
`said pouch containing the thickenedsalt solution, said pouch
`being contained within the protective case to protect the pouch
`from rupture.
`
`Ex. 1001, 9:43—57 (paragraphing added forclarity).
`
`A. Claim Construction
`
`ANALYSIS
`
`In an inter partes review, we construe claim terms in an unexpired
`
`patent according to their broadest reasonable constructionin light of the
`
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b); Jn
`
`re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1275—79 (Fed. Cir. 2015),
`
`cert. granted sub nom. Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 890
`
`
`
`IPR2015-01844
`Patent 5,936,178
`
`(mem.) (2016).° Claim termsalso are given their ordinary and customary
`
`meaning, as would be understood by one of ordinary skill in the art in the
`
`context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
`
`1257 (Fed. Cir. 2007). Petitioner proposes constructions for “wall means”
`
`and “amountsufficient to thicken the salt solution.” Pet. 4. Patent Owner
`
`disputes both of these proposed constructions. Prelim. Resp. 10-14. In
`
`addition, Patent Ownernotes several terms that it contends do not require
`
`construction and for which Petitioner did not propose a construction. Jd. at
`
`15-17. Although there are two terms—‘“wall means” and “amountsufficient
`
`to thicken the salt solution”——whose meaningsthe parties dispute, neither of
`
`these terms needs to be construed expressly in order to resolve the present
`
`dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
`
`(Fed. Cir. 1999) (“only those terms need be construed that are in
`controversy, and only to the extent necessary to resolve the controversy”).
`
`Accordingly, there are no terms that we need to construe expressly.
`
`B. Asserted Obviousness over St. Charles, Tolman, Spruill, and
`Harrison
`
`Petitioner argues that claims 12, 13, 19, 20, and 24—26 are
`
`unpatentable under 35 U.S.C. § 103(a) as obvious over the combination of
`
`St. Charles, Tolman, Spruill, and Harrison. Pet. 8-28. Relying on the
`
`testimony of Dr. Muzzio, Petitioner explains how these references allegedly
`
`teach all the limitations of these claims and argues that a person of ordinary
`
`skill in the art would have combinedthese references. Id.
`
`> We note that neither party proposes any different claim-construction
`standard. Pet. 3; Prelim. Resp.9.
`
`
`
`IPR2015-01844
`Patent 5,936,178
`
`I. St. Charles
`
`St. Charles is directed to a “storage package for storing moisture-
`
`laden articles such as cigarettes,” including “a moisture control vehicle”that
`
`is “treated with a saturated salt solution .. . to maintain moisture equilibrium
`
`over an extended time period.” Ex. 1005, at [57]. St. Charles teaches a
`
`moisture control vehicle “in the form of a pouch,” in which a “gel, paste,
`
`liquid or powder form”of the humidifying agent is placed, so as “to allow
`
`water vapourto pass readily [through the pouch] but not liquid.” Jd. at 10.
`
`The pouchesin St. Charles can be madeofcellulose acetate film, dialysis
`
`tubing, nylon, or ethylene vinyl acetate copolymers. Jd. St. Charles teaches
`
`that “small semi-rigid containers . .. could work as well as pouches.” Jd.
`
`2. Tolman
`
`Tolmanis directed to a “tethered container of desiccant and a
`
`surrounding protective cage for entry into an enclosed spaceto extract
`
`moisture.” Ex. 1007, at [57]. Tolman particularly is directed to removing
`
`moisture from “confined spaces in which are stored nonaqueousfluids, such
`
`as gasoline and oil.” Jd. at 2:34—35. In particular, Tolman teaches
`
`“protect[ing] the desiccant container .
`
`.
`
`. from damageorrupture duringits
`
`entry into, presencein, or extraction from the confined space from which
`
`moisture is to be extracted.” Jd. at 2:39-43; see also id. at 5:53-61,
`
`Figs. 2, 3 (describing protective cage for desiccant container).
`
`3. Spruill
`Spruill is directed to an “insert for inclusion in a substantially sealed
`
`container to control the relative humidity within the container.” Ex. 1008, at
`
`[57]. Spruill’s insert is “a packet at least part of the surface of which is a
`
`membranecapable of passing water vapor and which contains a buffering
`
`
`
`IPR2015-01844
`Patent 5,936,178
`
`substance whichis a saturated salt solution selected according to the desired
`
`relative humidity.” Jd. Spruill teaches that the packet may be “made by heat
`
`sealing a polylaminated foil layer 12 and a microporousor water vapor-
`
`permeable membrane13 around their edges.” Jd. at 4:67—5:2. Spruill’s
`membrane “should allow the passage of water vapor while containing the
`humidity controlling solution itself’ and “can either be inherently water
`
`vapor-permeable”or “can be impermeable but microporous.” Jd. at 5:9-18.
`
`4. Harrison
`
`Harrison is directed to “[a]queous compositions containing an organic
`
`peroxyacid .
`
`.
`
`. for bleaching/washingor disinfection.” Ex. 1006,at [57].
`
`According to Harrison, these compositions can “suffer from loss of available
`
`oxygen... during storage.” Jd. Accordingly, Harrison teaches “employing
`
`the [peroxyacid] in particulate form and incorporating in the aqueous phase a
`
`water-soluble potassium salt of a non-reducing acid.” Jd. Harrison teaches
`
`placing the resulting composition “in pouches, sachets or bottles.” Jd. at
`
`6:16-17. Harrison also teaches “incorporating into the composition a small
`
`amountof one or more water-soluble or insoluble thickener[s] whereby the
`
`phaseis thickened to a viscousfluid, in whichthe solid particles can be
`
`suspended.” Jd. at 4:35-5:1.
`
`5. Analysis of Obviousness of Claims 12, 13, 19, 20, and 24-26
`Petitioner asserts that each of the limitations of claim 12 is taught or
`
`suggested by at least one of the St. Charles, Tolman, Spruill, and Harrison
`
`references. Pet. 8-18. Patent Owner does not dispute the teaching of the
`
`limitations of claim 12 in the prior-art references, except for the limitation
`
`requiring a “protective case,” which Patent Ownerarguesis not taught in St.
`
`Charles, Spruill, or Harrison. Prelim. Resp. 26-28. Patent Owner concedes
`
`
`
`IPR2015-01844
`Patent 5,936,178
`
`that Tolmanteachesa protective case but argues that the person of ordinary
`
`skill in the art would not have combined Tolman’s case with the teachings of
`
`the other references. Jd. at 28. Finally, Patent Owner argues that Harrisonis
`
`not analogousart to the ’178 patent. Jd. at 32.
`
`Onthis last point, we are persuaded that Petitioner has not shown
`
`sufficiently that Harrison is analogousto the ’178 patent. “To be considered
`
`within the prior art for purposes of the obviousness analysis, a reference
`
`must be .. . from the same field of endeavoror .
`
`.
`
`. reasonably pertinent to
`
`the particular problem the inventoris trying to solve.” Circuit Check Inc. v.
`
`OXInc., 795 F.3d 1331, 1335 (Fed. Cir. 2015). Petitioner does not argue
`
`either that Harrison is in the same field of endeavoras the ’178 patent or that
`
`it is reasonably pertinent to the problem solved by the ’178 patent’s inventor.
`
`Petitioner’s only argumentis that Harrison is “in the same field of endeavor”
`
`as St. Charles. Pet. 9. Even assumingthat Petitioner meant that Harrisonis
`
`in the samefield of endeavoras the ’178 patent, we are not persuadedthis is
`
`true. Harrison is directed to the preservation of bleaching solutions from
`
`chemical degradation during storage. Ex. 1005, at [57]. To place this
`
`reference in the samefield as the ’178 patent, whichis directed to devices
`
`for controlling the humidity in enclosures such as musical instrument cases
`
`and tobacco product packages, would require a broad definition of “field of
`
`endeavor”that Petitioner has supported insufficiently with arguments or
`
`evidence.
`
`Asto the secondpart of the analogous-art test, Petitioner offers no
`
`argument that Harrison is reasonably pertinent to the problem solved by the
`
`inventor of the ?178 patent. It therefore is unclear why Harrison would have
`
`been commendedto the attention of a person of ordinary skill in the art
`
`
`
`IPR2015-01844
`Patent 5,936,178
`
`trying to solve the problem of controlling humidity. It may betrue, as
`
`Petitioner suggests, Pet. 10, that, in solving the problem of humidity control,
`
`the inventor of the ’178 patent would have beeninspired to thicken an
`
`aqueoussolution for several reasons and that Harrison teaches or suggests
`
`thickening an aqueoussolution. But this does not mean that a reference
`
`about the degradation of peroxyacid solutions “logically would have
`
`commendeditself to an inventor’s attention in considering” the problem of
`humidity control. See In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992).
`Without any evidence or argument explaining why it would have doneso,
`
`we are not persuaded that a person of ordinary skill in the art would have
`
`looked to Harrison. Accordingly, Petitioner cannot show obviousness by
`
`relying on Harrison.
`
`For this asserted ground, Petitioner relies on Harrison to show the
`
`obviousness of each claim. In claim 12, Petitioner relies on Harrison to
`
`teach the recited “thickening agent.” Pet. 9 (relying on St. Charles to teach a
`
`“thickened salt solution” but on Harrison to teach a “thickener’’), 15-16
`
`(same). The sameis true for independent claim 19. Jd. at 21, 24—25.
`
`Accordingly, Petitioner has not presented sufficient evidence of obviousness
`
`of either claim 12 or claim 19 to permit us to determine that Petitioner has a
`
`reasonable likelihood of prevailing in showing the unpatentability of those
`
`claims. Because claims 13, 20, and 24-26 depend from claims 12 and 19,
`
`Ex. 1001, 9:58-60, 10:28—29, 10:40—49, Petitioner also has not
`
`demonstrated a reasonable likelihood of prevailing as to those claims.
`
`C. Asserted Obviousness over St. Charles and Harrison
`
`Petitioner asserts that claims 31, 32, and 34 are obvious over the
`
`combination of St. Charles and Harrison. Pet. 28-34. Petitioner relies on
`
`10
`
`
`
`IPR2015-01844
`Patent 5,936,178
`
`Harrison to show the obviousness of claim 31. Jd. at 29, 31-32. As
`
`discussed above, Petitioner has not shownsufficiently that Harrison is
`
`analogousart to the °178 patent. Accordingly, Petitioner has not
`
`demonstrated a reasonable likelihood of prevailing in showing the
`
`obviousness of claim 31. Claims 32 and 34 depend from claim 31, and
`
`Petitioner relies on Harrison to teach the additional limitation of claim 34.
`
`Ex. 1001, 11:10—15, 12:3-6; Pet. 33-34. Thus, Petitioner has not
`
`demonstrated a reasonable likelihood of prevailing in showing the
`
`obviousness of these claims.
`
`D. Asserted Obviousness over St. Charles, Harrison, Spruill, Tolman,
`and Klett
`
`Petitioner asserts that claims 15, 20, 21, and 33 are obvious over the
`
`combination of St. Charles, Harrison, Spruill, Tolman, and Klett. Pet. 34—
`
`38. We are not persuadedthat Petitioner has demonstrated a reasonable
`
`likelihood of prevailing in showing the obviousness of these claims, each of
`
`which depends from claims 12, 19, or 31. Petitioner relies on Harrison to
`
`teach the limitations of these independent claims. Jd. As discussed above,
`
`Harrison is not analogousart to the ’178 patent.
`
`E. Asserted Obviousness over St. Charles, Spruill, Tolman, and
`Dobson
`
`Petitioner argues that claims 12, 19, and 24—26 are obvious over the
`
`combination of St. Charles, Spruill, Tolman, and Dobson. Pet. 38-51.
`
`1. Dobson
`
`Dobsonteaches “well treating fluids for use in the drilling and
`
`servicing of wells in subterranean formations.” Ex. 1010, 1:7-9. These
`
`fluids are “saturated brine fluids having suspendedtherein one or more water
`
`soluble salts which are insoluble in the saturated brine.” Jd. at 1:9-11.
`
`11
`
`
`
`IPR2015-01844
`Patent 5,936,178
`
`Dobsonteaches using “an additive to maintain the salt particles in
`
`suspension” andspecifically teaches “[x]Janthan gum”as an additive that can
`
`“form a viscousfluid.” Jd. at 4:14—17, 4:52—-54.
`
`2. Analysis of Obviousness of Claims 12, 19, and 24-26
`
`Petitioner asserts that each of the limitations of claim 12 is taught or
`
`suggested byat least one of the St. Charles, Tolman, Spruill, and Dobson
`
`references. Pet. 8-18. Patent Ownerdoesnot dispute the teaching of the
`
`limitations of claim 12 in the prior-art references, except for the limitation
`
`requiring a “protective case,” which Patent Ownerarguesis not taughtin St.
`
`Charles or Spruill. Prelim. Resp. 26—28. Patent Owner concedesthat
`
`Tolmanteachesa protective case but argues that the person of ordinary skill
`
`in the art would not have combined Tolman’s case with the teachings of the
`
`other references. Jd. at 28. Finally, Patent Owner argues that Dobsonis not
`
`analogousart to the °178 patent. Jd. at 33-34.
`
`On this last point, we are persuaded that Petitioner has not shown
`sufficiently that Dobson is analogous to the ?178 patent. As noted above,
`
`“Tt]o be considered within the prior art for purposes of the obviousness
`
`analysis, a reference must be .
`
`.
`
`. from the same field of endeavoror.. .
`
`reasonably pertinent to the particular problem the inventoris trying to
`
`solve.” Circuit Check, 795 F.3d at 1335. Petitioner does not argue either
`
`that Dobson is in the same field of endeavoras the ’178 patentorthat it is
`
`reasonably pertinent to the problem solved by the ’178 patent’s inventor.
`
`Petitioner’s only argumentis that Dobsonis “in the same field of endeavor”
`
`as St. Charles. Pet. 40. Even assumingthat Petitioner meant that Dobsonis
`
`in the samefield of endeavoras the ’178 patent, we are not persuadedthis is
`
`true. Dobsonis directed to “well treating fluids for use in the drilling and
`
`12
`
`
`
`IPR2015-01844
`Patent 5,936,178
`
`servicing of wells in subterranean formations,” which fluids “are useful in
`
`various well drilling, workover, and completion operations.” Ex. 1010, 1:7—
`
`13. To place this reference in the samefield as the ’178 patent, whichis
`
`directed to devices for controlling the humidity in enclosures such as
`
`musical instrument cases and tobacco product packages, would require a
`
`broad definition of “field of endeavor”that Petitioner has supported
`
`insufficiently with arguments or evidence.
`
`Asto the secondpart of the analogous-art test, Petitioner offers no
`
`argument that Dobsonis reasonably pertinent to the problem solved by the
`
`inventor of the ’178 patent. It therefore is unclear why Dobson would have
`
`been commendedto the attention of a person of ordinary skill in the art
`
`trying to solve the problem of controlling humidity. It may be true, as
`
`Petitioner suggests, Pet. 39-40,that, in solving the problem of humidity
`
`control, the inventor of the ’178 patent would have been inspired to thicken
`
`an aqueoussolution for several reasons and that Dobsonteachesor suggests
`
`thickening an aqueoussolution. But this does not mean that a reference
`
`about improvingthe efficacy of well drilling and workoverfluids “logically
`
`would have commendeditself to an inventor’s attention in considering” the
`
`problem of humidity control. See Clay, 966 F.2d at 659. Without any
`
`evidence or.argumentexplaining whyit would have doneso, we are not
`
`persuadedthat a person of ordinary skill in the art would have looked to
`
`Dobson. Accordingly, Petitioner cannot show obviousnessby relying on
`
`Dobson.
`
`Forthis asserted ground, Petitioner relies on Dobson to show the
`
`obviousness of each claim. In claim 12, Petitioner relies on Dobson to teach
`the recited “thickeningagent.” Pet. 39-40 (relying on St. Charles to teach a
`
`13
`
`
`
`IPR2015-01844
`Patent 5,936,178
`
`“thickened salt solution” but on Dobsonto teach a “thickener”), 43 (same).
`
`The sameis true for independent claim 19. Jd. at 45, 48-49. Accordingly,
`
`Petitioner has not presented sufficient evidence of obviousnessofeither
`
`claim 12 or claim 19 to permit us to determine that Petitioner has a
`
`reasonable likelihood of prevailing in showing the unpatentability of those
`claims. Because claims 24-26 depend from claim 19, Ex. 1001, 10:40-49,
`Petitioner also has not demonstrated a reasonablelikelihood of prevailing as
`
`to those claims.
`
`F. Asserted Obviousness over St. Charles and Dobson
`
`Petitioner argues that claims 31 and 34 are obvious overthe
`
`combination of St. Charles and Dobson. Pet. 51-56. Petitioner relies on
`
`Dobsonto show the obviousness of claim 31. Jd. at 52, 55. As discussed
`
`above, Petitioner has not shownsufficiently that Dobson is analogousart to
`
`the ’178 patent. Accordingly, Petitioner has not demonstrated a reasonable
`
`likelihood of prevailing in showing the obviousness of claim 31. Claim 34
`
`dependsfrom claim 31, and Petitioner relies on Dobsonto teach the
`
`additional limitation of claim 34. Ex. 1001, 12:3-6; Pet. 56. Thus,
`
`Petitioner has not demonstrated a reasonable likelihood of prevailing in
`
`showing the obviousnessofthis claim.
`
`CONCLUSION
`
`Uponconsideration of the Petition and the Preliminary Response, we
`
`determine that Petitioner has not demonstrated a reasonable likelihoodthat it
`
`would prevail in showing that any ofthe claimsit challenges are
`
`unpatentable. Accordingly, we do notinstitute inter partes review of any of
`
`the challenged claims on any ofthe asserted grounds.
`
`14
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`
`IPR2015-01844
`Patent 5,936,178
`
`It is hereby
`
`ORDER
`
`ORDEREDthat Patent Owner’s motion for acceptanceofits filing via
`
`electronic mail is granted; and
`
`FURTHER ORDEREDthatthe Petition is denied as to all challenged
`
`claims, and notrialis instituted.
`
`15
`
`
`
`IPR2015-01844
`Patent 5,936,178
`
`PETITIONER:
`
`Janet M. MacLeod
`Ryan N. Miller
`FOX ROTHSCHILD LLP
`jmacleod@foxrothschild.comrmiller@foxrothschild.com
`
`PATENT OWNER:
`
`Michelle E. Dawson
`Jeffrey R. Stone
`WINTHROP & WEINSTINE,P.A.
`patent@winthrop.com
`
`16
`
`
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