Case: 17-2307
`
`Document: 46
`
`Page:1_
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`Filed: 07/19/2018
`
`Appeal No. 2017-2307
`
`In the
`Gnited States Court of Appeals
`for the Federal Circuit
`
`
`
`AMERICAN VEHICULAR SCIENCESLLC,
`
`V.
`
`UNIFIED PATENTSINC.,
`
`Appellant,
`
`Appellee.
`
`Appeal from the United States Patent and Trademark Office,
`Patent Trial and Appeal Board in No. IPR2016-00364.
`
`PETITION FOR REHEARING EN BANC
`OF APPELLANT AMERICAN VEHICULAR SCIENCES LLC
`
`ROBERT P. GREENSPOON
`FLACHSBART & GREENSPOON, LLC
`333 North Michigan Avenue
`27th Floor
`Chicago,Illinois 60601
`(312) 551-9500
`
`GREGORY J. GONSALVES
`THE GONSALVES LAW FIRM
`2216 Beacon Lane
`Falls Church, Virginia 22043
`(571) 419-7252
`
`Attorneys for Appellant
`American Vehicular Sciences LLC
`
`g COUNSELPRESS « (866) 703-9373
`
`PRINTEDON RECYCLEDPAPER &S
`
`
`
`Document: 46
`
`Page:1_
`
`Filed: 07/19/2018
`
`Appeal No. 2017-2307
`
`In the
`Gnited States Court of Appeals
`for the Federal Circuit
`
`
`
`AMERICAN VEHICULAR SCIENCESLLC,
`
`V.
`
`UNIFIED PATENTSINC.,
`
`Appellant,
`
`Appellee.
`
`Appeal from the United States Patent and Trademark Office,
`Patent Trial and Appeal Board in No. IPR2016-00364.
`
`PETITION FOR REHEARING EN BANC
`OF APPELLANT AMERICAN VEHICULAR SCIENCES LLC
`
`ROBERT P. GREENSPOON
`FLACHSBART & GREENSPOON, LLC
`333 North Michigan Avenue
`27th Floor
`Chicago,Illinois 60601
`(312) 551-9500
`
`GREGORY J. GONSALVES
`THE GONSALVES LAW FIRM
`2216 Beacon Lane
`Falls Church, Virginia 22043
`(571) 419-7252
`
`Attorneys for Appellant
`American Vehicular Sciences LLC
`
`g COUNSELPRESS « (866) 703-9373
`
`PRINTEDON RECYCLEDPAPER &S
`
`
`
`Case: 17-2307
`
`FORM9. Certificate of Interest
`
` Document:46
`
`Page:2_
`
`Filed: 07/19/2018
`
`Form 9
`Rev. 10/17
`
`Counsel]for the:
`0 (petitioner)@(appellant) ( (respondent) O (appellee) 0 (amicus) 0) (nameofparty)
`
`CERTIFICATE OF INTEREST
`
`UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
`American Vehicular Sciences, LLC | Unified Patents, Inc.
`Case No. 17-2307
`
`McNeely, Hare & War LLP: Christopher Casieri
`
`American Vehicular Sciences, LLC
`certifies the following (use “None”if applicable; use extra sheets if necessary):
`
`1. Full Nameof Party
`Represented by me
`
`American Vehicular Sciences, LLC
`
`2. Nameof Real Party in interest
`(Please only include anyreal party
`in interest NOTidentified in
`Question 3) represented by meis:
`None
`
`3. Parent corporations and
`publicly held companies
`that own 10% or more of
`stock in the part
`Acacia Research Group, LLC
`
`4. The namesof all law firms and the partnersor associates that appeared for the party or amicus now
`represented by me in the trial court or agency or are expected to appear in this court (and who havenot
`or will not enter an appearancein this case) are:
`
`
`
`
`
`Case: 17-2307 Page:3_Filed: 07/19/2018Document:46
`
`
`
`5. The title and number of any case knownto counsel to be pendingin this or any other court or agency
`that will directly affect or be directly affected by this court’s decision in the pending appeal. See Fed. Cir.
`R. 47. 4(a)(5) and 47.5(b). (The parties should attach continuation pages as necessary).
`* American Vehicular Sciences LLC v. Hyundai Motor Co., Case No. 5:16-cv-11529-JEL-APP (E.D. Mich., filed Apr. 28, 2016);
`* American Vehicular Sciences LLC v. Nissan Motor Co., Case No. 5:16-cv-11530-JEL-APP (E.D. Mich., filed Apr. 28, 2016):
`« American Vehicular Sciences LLC v. Toyota Motor Corp., Case No. 5:16-cv-11531-JEL-APP (E.D. Mich., filed Apr. 28, 2016);
`* American Vehicular Sciences LLC v. American Honda Motor Co., Case No. 5:16-cv-11532-JEL-APP (E.D. Mich., filed Apr. 28, 2016);
`* Prosecution of Application Serial No. 14/721,136filed on May 26, 2015 which is currently pending, and which claimspriority to the
`patent currently at issue;
`* Toyoda Gosei Co., Ltd. v. American Vehicular Sciences LLC, No. IPR2016-017390;
`* Takata Corporation v. American Vehicular Sciences LLC, No. IPR2016-01794.
`» American Vehicular Sciences LLC v. Autoliv ASP, Inc., Case No, 18-1977 (Fed. Cir.)
`* American Vehicular Sciences LLC v. Autoliv ASP, Inc., Case No. 18-1978 (Fed.Cir.)
`
`ce. Counsel of Record (via ECF)
`
`FORM9. Certificate of Interest
`
`Form 9
`Rev. 10/17
`
`7/19/2018
`Date
`
`Please Note: All questions must be answered
`
`s/Robert P. Greenspoon
`Signature of counsel
`Robert P. Greenspoon
`Printed nameof counsel
`
`ResetFields
`
`
`
`Case: 17-2307
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`Document:46
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`Page:4
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`Filed: 07/19/2018
`
`TABLE OF CONTENTS
`
`CERTIFICATE OF INTEREST 1.0... cece cecccsecsesesseseenseesssesseecsaceesseeesseesensansesssensags i
`
`TABLE OF AUTHORITIES ..0...cec cece ccescsscnscssesesesseseecnsscsssesascssseesessonssesesoseseneees iV
`
`I.
`
`STATEMENTOF COUNSEL... ccccscessessscesscsscescscessessessssceresessesssesseesseees 1
`
`Il.
`
`ARGUMENT FOR REHEARING EN BANC Wuiceccscccscteesteeseessseretsereeeenees 2
`
`I.
`
`THE PRESENT DECISION RESULTS FROM THISSPLIT... 6
`
`IV. HEAR-WEAR AND ORMCO EXEMPLIFY THE COMPETING AND
`IRRECONSILABLE APPROACHES TO OBVIOUSNESS WITHIN
`THIS COURT... ee seseeceseeerseeesssessnecensesvesseeesssseseseaecssessaeesessseeessesorseersnees 9
`
`V.
`
`FOLLOWING AN APPROACH TO OBVIOUSNESS THAT OBVIATES
`THE NEED FOR CONTEMPORANEOUS DOCUMENTARY EVIDENCE
`PUTS THIS COURT INTO CONFLICT WITH GRAHAM... ccccccscessceees 10
`
`VI.
`
`THE NO-OPINION AFFIRMANCE DOES NOT DETRACT FROM THE
`NEED FOR EN BANC REVIEW. ..00..ccccessessesescessceeeseceeseaeeacensereeeneneeseeeraes 13
`
`VIL. CONCLUSION... ccseccscsscsssccnsesssersssesssecssscsseesesssssassassessesenessescsesvees 16
`
`ill
`
`
`
`
`
`Case: 17-2307 Page:5_Filed: 07/19/2018Document:46
`
`
`
`TABLE OF AUTHORITIES
`
`Arendi S.A.R.L. v. Apple Inc.,
`832 F.3d 1355 (Fed. Cir. 2016)... eeeeescecesseeenereeesseecesaaeesseeseeeesaeeessaeeeeneeees 2,3
`
`Graham v. John Deere Co. ofKansas City,
`383 U.S. 1 (1966)... eecceseensesseesseesseceeececeessceesceseeesesesseasersenessseeenes 1,11, 12, 13
`
`Hotchkiss v. Greenwood,
`11 How. 248 (1851) uo... eeeceeesecessccssecessnscesneversnegtanseseseesesaecssseseesesaeeeseseeeegs 11,12
`
`In re Bayne,
`527 F. App’ 847 (Fed. Cir. 2013) occ eeeeescssecseeseeeeeeeveceesasseesesaeeseessaeeaceneeeaees 3
`
`In re Kotzab,
`217 F.3d 1365 (Fed. Cir. 2000)........ccccccsesessseccsseeeeseecesneeceseecaeecsaeeessenesesecersnes 1,2
`
`In re Laskowsky,
`871 F.2d 115 (Fed. Cir, 1989)... ecsccsccessseecereecessseresseasessssseeecsseesesseeessaesens 3,4
`
`In re Stepan,
`868 F.3d 1342 (Fed. Cir. 2017)............. poceeeteeessneessseeeesseeessaceesatesaeesesceeeesseeeessees 6, 13
`
`In re Urbanski,
`809 F.3d 1237 (Fed. Cir. 2016)... eee cecceseeseesseeseecsesssecesessesasesssessenseorssensones 3,4
`
`K/S HIMPPv. Hear-Wear Techs., LLC,
`751 F.3d 1362 (Fed. Cir. 2014)... cisssesccsccssecssecsessecsseescessneescesseresesserseeaeeaespassim
`
`KSR Int’! Co. v. Teleflex Inc.,
`550 U.S. 398 (2007).......cccescccssseccsenssecesesesenseeeestanaeeceieesecesseessnsesevensneeesaespassim
`
`Lighting Rallast Control v. Philips Electronics,
`744 F.3d 1272 (Fed. Cir. 2014)... ccsccscsssseesessererecseessseesesssecsssenecesesnecseneeaesensees 15
`
`Oil States Energy Svcs. v. Greene’s Energy Group,
`137 S. Ct. 2239 (2018)... ee esescesersecneesseeeeessseesecssacssersssesseseeseassesssnseasesseraseas 14
`
`Ormco Corp. v. Align Tech., Inc.,
`463 F.3d 1299 (Fed. Cir. 2006)... ccscccescssessssesesssssseessseensiessssessenseeess 3, 4,9, 10
`
`iv
`
`
`
`Case: 17-2307
`
`Document:46
`
`Page:6
`
`Filed: 07/19/2018
`
`Perfect Web Techs., Inc. v. InfoUSA, Inc.,
`587 F.3d 1324 (Fed. Cir, 2009)... ccecccssscessseccsececesseessaneecsseceeeeesseeeesanesseeeenee 3,4
`
`Rule
`
`35 USC. § 103 ee eecceseecesesseeseeeseessersssesssersesessevesassssesseceessenseesessseessasenssesasesesees 1
`
`
`
`Case: 17-2307
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`Document:46
`
`Page:7
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`Filed: 07/19/2018
`
`I.
`
`STATEMENT OF COUNSEL
`
`Based on myprofessional judgment, I believe the panel decision is contrary
`
`to the following precedents of the Supreme Court and the Federal Circuit: KSR Int’
`
`Co. v. Teleflex Inc., 550 U.S. 398 (2007); Graham v. John Deere Co. ofKansas City,
`
`383 U.S. 1 (1966); K/S HIMPP v. Hear-Wear Techs., LLC, 751 F.3d 1362 (Fed. Cir.
`
`2014); In re Kotzab, 217 F.3d 1365 (Fed. Cir. 2000). Consideration by the full Court
`
`is therefore necessary to secure and maintain uniformity of the Court’s decisions.
`
`Also, I believe this Petition raises one or more precedent-setting questions of
`
`exceptional importance, arising thousands of times per year in patent examination
`
`and litigation:
`
`Whether a decisionmaker may hold a claimed invention obvious under
`35 U.S.C. § 103 over prior art that does not disclose a limitation in the
`claim, when no contemporaneous documentary evidence suggests the
`desirability of modifying the prior art to be the claimed invention.
`
`/s/ Robert P. Greenspoon
`ATTORNEY OF RECORD
`FOR APPELLANT/ PETITIONER
`
`
`
`Case: 17-2307
`
`Document:46
`
`Page:8 _ Filed: 07/19/2018
`
`Il.
`
`ARGUMENT FOR REHEARING EN BANC
`
`Federal Circuit jurisprudence concerning single-reference obviousnessis in
`
`conflict. This is a recurring and importantissue badly in need of en banc resolution.
`
`The intractable conflict in controlling precedent has created confusion over the
`
`proper disposition of thousands
`
`(if not hundreds of thousands) of patent
`
`determinations every year.
`
`Disputes frequently recur both in patent examination and litigation over
`
`whethera single prior art reference that fails to disclose a particular claim limitation
`
`would have rendered the claimed invention obvious. Panels of this Court have
`
`struggled with how to resolve such allegations. The following pre- and post-KSR
`
`decisions reject that a single reference made an invention obvious:
`
`e ArendiS.A.R.L. v. Apple Inc., 832 F.3d 1355 (Fed. Cir. 2016) (O’Malley, C.J.,
`
`author, with Linn and Moore, C.J.)
`
`e K/S HIMPP v. Hear-Wear Techs., LLC, 751 F.3d 1362 (Fed. Cir. 2014)
`
`(Lourie, C.J., author, with Wallach, C.J.) (dissent by Dyk, C.J.), cert denied,
`
`135 S. Ct. 1439 (2015)
`
`e
`
`Inre Kotzab, 217 F.3d 1365 (Fed. Cir. 2000) (Linn, C.J., author, with Lourie
`
`and Gajarsa, C.J.) (reference teaching one sensor per valve did not render
`
`obvious claims for one sensor for multiple valves, despite “simplicity” of
`
`proposed modification extending a sensor to multiple valves)
`
`
`
`
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`Case: 17-2307 Page:9_Filed: 07/19/2018Document: 46
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`
`
`e
`
`Inre Laskowsky, 871 F.2d 115 (Fed. Cir. 1989) (Newman, C.J., author, with
`
`Archer and Michel, C.J.) (reciting and applying legal standard that, for
`
`obviousnessoversingle reference, prior art must “suggest|] the desirability of
`
`the modification”).'
`
`The following pre- and post-KSR decisions,in contrast, agree that a single reference
`
`made an invention obvious:
`
`e
`
`In re Bayne, 527 F. App’x 847 (Fed. Cir. 2013) (Dyk, Bryson and Wallach,
`
`C.J., per curiam)
`
`e Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324 (Fed. Cir. 2009)
`
`(Linn, C.J., author, with Dyk and Prost, C.J.)
`
`e Qrmca Corp. v. Align Tech., Inc., 463 F.3d 1299 (Fed. Cir. 2006) (Dyk, C.J.,
`
`author, with Schall and Gajarsa, C.J.)
`
`It is difficult if not impossible to reconcile these decisions to distill a unitary
`
`legal standard. On the one hand, the K/S HIMPP v. Hear-Wear decision (hereafter,
`
`Hear-Wear, cited favorably in the later Arendi decision) held 2-1 that a
`
`decisionmaker may not hold a claimed invention obvious over a single prior art
`
`reference that
`
`fails
`
`to disclose a core structural claim limitation, unless
`
`1 The following post-KSR decision recites with approval the legal standard that prior
`art must teach the desirability of modifying the single reference to be the claimed
`invention, but finds such desirability evidence on the record of that case: In re
`Urbanski, 809 F.3d 1237 (Fed. Cir. 2016) (Lourie, C.J., author, with Bryson and
`Chen, C.J.).
`
`
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`Case: 17-2307
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`Document: 46
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`Page:10_
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`contemporaneous documentary evidence suggested that a POSITA would have
`
`modified the reference with the missing item. Hear-Wear, 751 F.3d at 1366. Other
`
`cases state the sameprinciple slightly differently: that the prior art must suggest the
`
`desirability of the modification. Jn re Laskowsky, 871 F.2d at 117; see also In re
`
`Urbanski, 809 F.3d at 1243-44 (reaffirming need for contemporaneous“desirability
`
`of the modification” evidence).
`
`Put simply, under this line of authority favoring patentees, “common sense”
`
`to achieve the claimed invention must have a documentary basis in the record,lest a
`
`decisionmaker use impermissible hindsight
`
`reasoning. These holdings
`
`take
`
`inspiration from Supreme Court directives in KSR to avoid hindsight. They also
`
`distinguish decisions whereall of the claim limitations existed in a proposed multi-
`
`reference combination. E.g., Hear-Wear, 751 F.3d at 1366.
`
`On the other hand, the dissent’s view in Hear-Wearprevailed in the Bayne,
`
`Perfect Web and Ormco decisions. In those decisions, obviousness over a single
`
`reference did not
`
`turn on the presence or absence of documentary evidence
`
`suggesting the modification. There, judicial common sense and reasoning held full
`
`sway. These holdings take inspiration from Supreme Court directives in KSR that
`
`courts should look to the knowledge, creativity and commonsensethat an ordinarily
`
`skilled artisan would have brought to bear when considering combinations or
`
`modifications. See KSR, 550 U.S. at 415-22.
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`Petitioner believes that Hear-Wearcorrectly decided the question. Hear-Wear
`
`considered and rejected the argument
`
`(presented in dissent)
`
`that
`
`requiring
`
`documentary evidence conflicted with KSR.
`
`The requirement that evidence on the record is necessary to support the
`“plurality of prongs” limitation is not inconsistent with KSR’s caution
`against the ‘““overemphasis on the importance of publishedarticles and
`the explicit content of issued patents.” KSR, 550 U.S. at 419. In KSR,
`the Supreme Court criticized a rigid approach to determining
`obviousness based onthe disclosures of individual prior art references
`that were already on the record, with little recourse to the knowledge,
`creativity, and commonsensethat an ordinarily skilled artisan would
`have
`brought
`to
`bear when
`considering
`combinations
`or
`modifications. Jd. at 415-22. But the present case does not present a
`question whether the Board declined to consider the commonsensethat
`an ordinarily skilled artisan would have brought
`to bear when
`combining or modifying references.
`
`Instead, it is about whether the Board declined to accept a conclusory
`assertion from a third party about general knowledgein the art without
`evidence on the record, particularly where it is an important structural
`limitation that
`is not
`evidently and indisputably within the
`common knowledgeofthose skilled in the art. Cf Randall Mfg. v. Rea,
`733 F.3d
`1355,
`1362-63 (Fed. Cir. 2013) (Board's
`failure to
`consider evidence of the knowledgeof oneofskill in the art was plainly
`prejudicial).
`
`Hear-Wear, 751 F.3d at 1365-66. The Supreme Court denied the later-filed petition
`
`for a writ of certiorari.
`
`Whether or not the Hear-Wear majority interpreted KSR correctly, or its
`
`dissent did, this Court’s decisions have resulted in a sharp, well defined split among
`
`Federal Circuit panels and judges. Single-reference obviousnesspresents a recurring
`
`issue — perhaps oneof the most recurring issues in all of patent law. Uniformity in
`
`
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`Case: 17-2307
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`Filed: 07/19/2018
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`the applicable legal standard, and certainty in adjudications, is imperative and of
`
`national importance. The full Court should convene to bring about such uniformity,
`
`andlift the fog that currently obscuresthis area of patent law.
`
`A second split decision after Hear-Wear shows that confusion over legal
`
`standards persists. See In re Stepan, 868 F.3d 1342 (Fed. Cir. 2017) (Moore, C.J.,
`
`author, with O’Malley, C.J.) (dissent by Lourie, C.J.). In Stepan, the panel majority
`
`vacated and remandedafter holding that the Board failed to explain “why it would
`
`have been routine optimization to arrive at the claimed invention” based on single
`
`reference. Jd. at 1346. The majority compared the Board’s error to those where“the
`
`Board found claimed inventions would have been ‘intuitive’ or ‘commonsense. . .
`
`.” Id. The dissent did “not disagree” with the majority’s critique over the Board “not
`
`explaining itself adequately,” but would have affirmed anyway becausethepriorart
`
`“almost anticipates claim 1,” based on “a reference we can plainly see.” Jd. at 1349-
`
`50. The Judges of this Court therefore continue to disagree over the level of record
`support needed to establish single-reference obviousness, and the permissible
`
`latitude ofjudicial analysis during appellate review.
`
`Il. THE PRESENT DECISION RESULTS FROM THIS SPLIT
`
`The present decision squarely presents this issue.
`
`The patent held invalid in this appeal discloses and claims (among other
`
`things) an automotiveside curtain airbag. The relevant claim limitation discusses a
`
`
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`Page:13
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`single side airbag “extending” from the front passenger row to the rear passenger
`
`row. (Appx186, claim 1). The asserted prior art does not disclose a side curtain
`
`airbag. Appellee / Respondent (Unified Patents) admitted in proceedings below that
`
`its primary reference — a prior art patent to Leising — did not disclose a side curtain
`
`airbag. (Appx222). It
`(Appx659, Fig. 2).
`
`instead discloses a side airbag solely for the front seat.
`
`Unified Patents completed its proofs using a “motivation” reference — a prior
`
`art patent to Lau — that also did not disclose a side curtain airbag extending across
`
`two rows. (See Appellee Br. 28). Lau instead disclosed a front seat side airbag and
`
`a back seat side airbag, each below the window line. (Appx672, col. 2, Il. 61-63;
`
`Appx669, Fig. 1). In this Court, Unified Patents conceded that the Lau reference was
`
`simply “an example of a reference that supplied motivation .. .
`
`, because Lau
`
`specifically indicates that the vehicle’s airbags should also protect passengersin the
`
`second row ofseating.” (Appellee Br. 28). As such, Unified Patents concedesthatit
`
`presented a single reference modification theory. That was also plain because the
`
`two references, if actually combined, did not include a side curtain airbag —i.e., did
`
`not include a single airbag “extending” from one seat row to another, in the words
`
`of the patent claims underreview.
`
`At oral argumentin this Court, membersof the panelstated a belief that KSR
`
`permits free use of “common sense” during appellate review, even without
`
`
`
`
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`Case: 17-2307 Page:14_Filed: 07/19/2018Document: 46
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`
`
`documentary evidence. The panel made statements suggesting that it did not believe
`
`that documentary evidence was necessary to hold that a POSITA would have
`
`modified the single reference to achieve the claimed invention.” One memberalso
`
`queried whether Lau constitutes the required documentary evidence.? But counsel
`
`pointed out that Lau undisputedly disclosed a secondairbagforthe rear.* Lau thus
`
`did not itself teach toward the claimed invention which requires “extending” the
`
`front airbag to the rear to result in a single side curtain airbag.’ Thus the decision
`
`affirming obviousness imposed no documentary evidence requirement on Appellee
`
`/ Respondent for its proposed modification adding the missing limitation into the
`
`obviousnessreference, giving no effect to warnings in KSR — repeated in Hear-Wear
`
`— against hindsight.
`
`2(E.g., Oral Argument Recording at 1:47, “I don’t know, I’m not clcar on what
`you’re saying. We don’t need a specific suggestion for motivation to combineright,
`wasn’t that what KSR wasall about, that you don’t need an express statement of
`that?’’).
`
`2(Oral Argument Recording at 5:42, “But why aren’t the prior art references that
`evidence that you say is lacking? ... Whyis it that a POSITA can’t comeandjust
`use commonsenseto say I’m going to extendthis airbag in the front to the back”).
`
`4(Oral Argument Recording at 8:39, “But what that meansis that there’s a magnetic
`pull to the skilled artisan to go put Lau’s technology,if you’re going to do anything
`with the combination, put Lau’s technologyin the rear seat.”).
`
`5(Oral Argument Recording,at 20:25, “That motivation or suggestion hasto lead to
`the claimed invention; it has to suggest and achieve the claimed invention. And that’s
`Kinetic Concepts, and all the cases after that such as Nuvasive.”).
`
`
`
`
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`Case: 17-2307 Page:15_Filed: 07/19/2018Document: 46
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`
`
`IV. HEAR-WEAR AND ORMCO EXEMPLIFY THE COMPETING AND
`IRRECONCILABLE APPROACHES TO OBVIOUSNESS WITHIN
`THIS COURT
`
`Review of the facts and outcomes in two of the Court’s decisions mentioned
`
`above — Hear-Wear and Ormco — reveals how clear and irreconcilable this Court’s
`
`competing approaches have become.
`
`In Hear-Wear, a requester in inter partes reexamination challenged the
`
`decision of the Board holding a hearing aid patent nonobvious. The invention
`
`included modules joined by a connector. Hear-Wear, 751 F.3d at 1363. The claims
`
`required the connector to contain a multi-pronged plug. Jd. No documentary
`
`evidence existed in the record of multi-pronged plugs. /d. at 1365. This Court
`
`rejected the appellant’s attempt to invoke undocumented “basic knowledge” or
`
`“commonsense” to modify a single prior art reference, and thus secure a reversal.
`
`Id. at 1366 (“[T]he Board cannot accept general conclusions about what is ‘basic
`
`knowledge’ or ‘common sense’ as a replacement for core factual findings in a
`
`determination of patentability.”).
`
`Yet in Ormco, a general conclusion about “basic knowledge” wonthe day.
`
`There, an infringer challenged a district court decision holding an orthodontic kit
`
`patent nonobvious. Ormco, 463 F.3d at 1302-03. The central claim limitation
`
`discussed on appeal required a particular way of packaging the kit, not shownin the
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`prior art. In finding the invention not “patentably distinct” from a single prior art
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`reference, this Court relied upon “the well-knownpractice of packaging items in the
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`manner most convenientto the purchaser.”Jd. at 1309. The decision did not mention
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`any documentary evidenceof such “well-knownpractice.” As a result, a patent claim
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`reciting that three orthodontic appliances “are provided in a single package to the
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`patient” would have been obvious notwithstanding the absence of documentary
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`evidence of such a three-in-one configuration. Jd.
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`Patent examiners, Board judges,litigants and the lower courts are now lost at
`
`sea when it comes to single-reference obviousness determinations. In a particular
`
`case, one cannot predict whether the obviousness decision will turn on the principles
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`announced in Hear-Wear
`
`(i.e.,
`
`forbidding reliance on uncorroborated basic
`
`knowledge or common sense to comeup with core structural limitations in a claim)
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`or in Ormco (i.e., inviting reliance on uncorroborated basic knowledge and well-
`
`knownpractices). An en banc determination will resolve the conflict.
`
`V.
`
`FOLLOWING AN APPROACH TO OBVIOUSNESS THAT
`OBVIATES
`THE
`NEED
`FOR
`CONTEMPORANEOUS
`DOCUMENTARY EVIDENCE
`PUTS
`THIS COURT
`INTO
`CONFLICT WITH GRAHAM
`
`The Hear-Wearpanel discussed whythe “flexible approach” to determining
`
`obviousness required by the Supreme Court’s KSR decision does not weaken the
`
`requirement of documentary evidence when dealing with a single-reference
`
`modification theory. “In contradistinction to KSR, this case involves the lack of
`
`evidence ofa specific claim limitation, whereas KSR related to the combinability of
`
`10
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`
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`
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`references wherethe claim limitations were in evidence.” Hear-Wear, 751 F.3d at
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`1366. The same holdstrue in this case — the single side airbag limitation “extending”
`
`across two seating rows undisputedly did not exist
`
`in the prior art, and no
`
`documentation existed that it was “basic knowledge” or “commonsense” to make
`
`that modification.
`
`To believe that KSR allowed such free and untethered invocation of “basic
`
`knowledge” or “commonsense”(either through uncorroborated expert testimony,
`
`or through the application of bare judicial reasoning) would conflict with other
`Supreme Court authority. In Graham v. John DeereCo. ofKansasCity, the Supreme
`
`Court held that,
`
`in enacting Section 103 of the Patent Act of 1952, Congress
`
`incorporated the Court’s prior framework for determining patentability laid out in
`
`Hotchkiss v. Greenwood, 52 U.S. 248 (1851). Graham, 383 U.S. at 1, 10-17 (1966).
`
`Hotchkiss,
`
`in turn, ruled an invention unpatentable because it involved a mere
`
`substitution of old materials (potters clay for metal in a doorknob). Hotchkiss, 52
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`U.S. at 265-67. But the Court took special care to note that patentability might be
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`“successfully urged” if the facts were otherwise — i.e., if one of the claim limitations
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`were not in the prior art evidence.Jd. at 265 (noting a knob of a “new composition,”
`
`not potters clay, might have been “the proper subject of a patent”). The Hotchkiss
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`framework,
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`reinvigorated in Graham,
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`is thus evidentiary, not speculative or
`
`inferential.
`
`11
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`The Hotchkiss framework“required a comparison between the subject matter
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`of the patent, or patent application, and the backgroundskill of the calling.” Jd. at 12
`
`(emphasis added). Consequently, Graham names the “backgroundskill” as the
`
`baseline for “comparison.” Graham leaves no room for such “background skill” to
`
`be divined from a set of undocumented assumptions. Graham instead goes on to
`
`confirm that “[i]t has been from this comparison that patentability was in each case
`
`determined.” Jd. (emphasis added). Performing this comparison will, in every case,
`
`solve the “inherent problem” of “develop[ing] some means of weeding out those
`
`inventions which would not be disclosed or devised but for the inducementof a
`
`patent.” Jd. at 11. A fortiori, a “comparison” presupposes evidence of the two things
`
`being compared. Otherwise, Graham would have spoken in terms of inductive
`
`reasoning or judicial logic. Graham, 383 U.S. at 12 (emphasis added).
`
`How Graham resolved specific obviousness disputes
`
`confirms
`
`the
`
`documentary approach. For oneof the patents-in-suit (the ’798 patent), the argued
`
`distinction overthefirst item of prior art was merely “interchanging” of twoparts (a
`
`“shank” and a “hinge plate”) already disclosed in the prior art reference. Jd. at 23.
`
`Such “interchanging” supplied an argued advantage(‘“flexing” over an entire length
`
`of a part) that was not a claim limitation, and not a significant feature at all. /d. at
`
`25. The argued distinction over a second item ofpriorart also failed, because “all of
`
`the elements in the ’798 patent are present in the Glencoe structure,” only with
`
`12
`
`
`
`
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`Case: 17-2307 Page:19_Filed: 07/19/2018Document:46
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`
`
`reversal of two structures in a way that did not change the underlying mechanical
`
`operation. /d. at 26. Thus analysis by the Supreme Court remained tethered to
`
`documentary evidence of claim limitationsin the priorart.
`
`Analysis in Graham ofthe other patent-in-suit (the Scoggin patent) likewise
`
`relied on documentary evidenceforall claim limitations. The Supreme Court noted
`
`that the claimed features the applicant described, during prosecution, as missing
`
`from the file wrapper prior art nonetheless existed within a newpriorart reference
`
`(Livingston) that the examiner had not considered. /d. at 36. This analysis of Scoggin
`
`also remained tethered to documentary evidence ofclaim limitationsin thepriorart.
`
`Thus, in each analysis of obviousness within Graham, the Supreme Court
`
`focused on claim limitations in the documentary evidence (albeit with flexibility to
`
`consider how those limitations might be “interchanged”or “reversed” by an ordinary
`
`mechanic). In no instance did the Court invoke basic knowledge, commonsense, or
`
`well-knownpractices to supply a core structure claim limitation otherwise missing
`
`from the art. To do so now conflicts with both Graham and KSR.
`
`VI. THE NO-OPINION AFFIRMANCE DOES NOT DETRACT FROM
`THE NEED FOR EN BANC REVIEW
`
`While it is customary for this Court to deny rehearing of non-precedential
`
`decisions, that should not dissuade this Court from grantingthis Petition.
`
`First, the issue has fully percolated. This Court has already renderedatleast
`
`two split panel decisions on this legal issue — the Hear-Wear and Stepan decisions.
`
`13
`
`
`
`
`
`Case: 17-2307 Page:20_Filed: 07/19/2018Document:46
`
`
`
`This Court has not yet had the opportunity to conveneas a full court to resolve the
`
`conflict presented in those cases.
`
`Second, the Rule 36 affirmance of this case shows that even when this Court
`
`_ squarely faces the conflict in its own precedents, it may choose not to issue a
`
`precedential opinion. There is little chance of further development of the issue in
`
`future precedential panel opinions. Meanwhile, this leaves lower tribunals free to
`
`expand or contract
`
`the scenarios leading to obviousness, without dispositive
`
`guidance from this Court. For example, if undocumented “common sense” can
`
`bridge the gap of one core claim limitation, why not two claim limitations? Why not
`
`all of them? Why require prior art documentary evidenceat all, if a hired-gun expert
`
`can simply point to a patent claim and recite uncorroborated testimony that a
`
`POSITA would have come up with it? The state of the law as it now exists
`
`encourages uncertainty in patent examination andlitigation.
`
`Third, some of the most important petitioned patent issues of recent memory
`
`received post-panel
`
`review in the context of no-opinion or nonprecedential
`
`decisions. In such cases, the need for review already pre-existed the underlying
`
`Federal Circuit
`
`judgment. This
`
`includes Supreme Court
`
`review of
`
`the
`
`constitutionality of America Invents Act tribunals (Oi/ States Energy Svcs. v.
`
`Greene’s Energy Group, 137 S. Ct. 2239 (2018) (cert granted after Fed. Cir. Rule
`
`36 affirmance)), Supreme Court review of“inflexible” obviousness legal standards
`
`14
`
`
`
`
`
`Case: 17-2307 Page:21_Filed: 07/19/2018Document: 46
`
`
`
`(KSR Intern. Co.
`
`v. Teleflex Inc., 550 U.S. 398 (2007)
`
`(cert granted on
`
`nonprecedential opinion)), and this Court’s analysis of the standard of review for
`
`district court claim construction decisions (Lighting Ballast Control v. Philips
`
`Electronics, 744 F.3d 1272 (Fed. Cir. 2014) (granting en banc review after
`
`nonprecedential panel opinion)). Federal Rule of Appellate Procedure 35 also
`
`provides that
`
`the Court may hear any matter initially en banc. Thus, a full
`
`precedential panel decision (or any opinionatall, for that matter) has never been a
`
`prerequisite for en banc review.
`
`Finally, this issue is of immense importance to innovators, to the economy,
`
`and to the cause ofcertainty in the administrative and judicial enforcement the patent
`
`laws. Every existing and newly-filed patent application has the potential to draw a
`
`single reference obviousnessrejection. Every issued patent is vulnerable to attack in
`
`America Invents Act tribunals using such theories. How much authority does this
`Court wish to lodge in such tribunals to render patent claims obvious without
`
`corroborative record support? The Court should grant en banc review now,in this
`
`case, to answer such questions and ensure the stable and uniform administration of
`
`the patent laws for future cases.
`
`15
`
`
`
`Case: 17-2307
`
`Document: 46
`
`Page: 22
`
`Filed: 07/19/2018
`
`VII. CONCLUSION
`
`For the foregoing reasons, Petitioner respectfully requests that this Court take
`
`up the issue of single reference obviousness en banc, to resolve conflicting legal
`
`standards overits adjudication and appellate treatment.
`
`Dated: July 19, 2018
`
`Respectfully submitted,
`
`/s/ Robert P_ Greenspoon
`Robert P. Greenspoon
`FLACHSBART & GREENSPOON, LLC
`333 N. Michigan Ave., 27th Floor
`Chicago, IL 60601-3901
`Telephone: (312) 551-9500
`
`Gregory J. Gonsalves
`THE GONSALVES LAW FIRM
`2216 Beacon Lane
`Falls Church, Virginia 22043
`(571) 419-7252
`
`Counselfor Appellant
`American Vehicular Sciences LLC
`
`
`
`
`
`Case: 17-2307 Page: 23_Filed: 07/19/2018Document:46
`
`
`
`ADDENDUM
`
`
`
`Case: 17-2307 Doowment:461 Pageye24 Aled: OF19/2018
`
`NOTE: This disposition is nonprecedential.
`
`Gnited States Court of Appeals
`for the federal Circuit
`
`AMERICAN VEHICULAR SCIENCES LLC,
`Appellant
`
`Vv.
`
`UNIFIED PATENTSINC.,
`Appellee
`
`2017-2307
`
`Appeal from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in No. IPR2016-
`00364.
`
`JUDGMENT
`
`ROBERT GREENSPOON, Flachsbart & Greenspoon, LLC,
`Chicago, IL, argued for appellant. Also represented by
`GREGORY J. GONSALVES, Gonsalves Law Firm, Falls
`Church, VA.
`
`DAVID LANGDON CAVANAUGH, Wilmer Cutler Picker-
`ing Hale and Dorr LLP, Washington, DC, argued for
`appellee. Also represented by GREGORY H. LANTIER,
`ANURADHA SIVARAM,
`JONATHAN RUDOLPH KOMINEK
`STROUD, DANIEL V. WILLIAMS.
`
`|
`
`
`
`Case: 17-2307
`
`Doowment:46-1 Paggye22
`
` Alledt: Ob19/2018
`
`THIS CAUSE having been heard and considered,it is
`
`ORDERED and ADJUDGED:
`
`PER CURIAM (PROST, Chief Judge, NEWMAN and
`REYNA, Circuit Judges).
`
`AFFIRMED. See Fed. Cir. R. 36.
`
`ENTERED BY ORDER OF THE COURT
`
`
`June 19, 2018
`Date
`
`/s/ Peter R. Marksteiner
`Peter R. Marksteiner
`Clerk of Court
`
`
`
`
`
`Case: 17-2307 Page:26_Filed: 07/19/2018Document:46
`
`
`
`CERTIFICATE OF SERVICE
`
`I, Rose E. Olejniczak, being duly sworn according to law and being over the
`
`age of 18, upon myoath deposesandstatesthat:
`
`Counsel Press was retained by FLACHSBART & GREENSPOON, LLC, Attorneys
`for American Vehicular Sciences LLC,to print this document. I am an employee of
`
`Counsel Press.
`
`On July 19, 2018, FLAC
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