Trials@uspto.gov
`571-272-7822
`
`Paper No. 22
`Entered: March 22, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`AUTOLIV ASP, INC.; NIHON PLAST CO., LTD.;
`NEATON AUTO PRODUCTS MANUFACTURING,INC.;
`TAKATA CORPORATION; TK HOLDINGSINC.;
`TOYODA GOSEI CO., LTD.; HYUNDAI MOBIS CO., LTD.;
`MOBIS ALABAMA,LLC; and MOBIS PARTS AMERICA, LLC,
`Petitioner,
`
`V.
`
`AMERICAN VEHICULARSCIENCES, LLC,
`Patent Owner.
`
`Case IPR2016-01794
`Patent 9,043,093 B2
`
`Before TREVOR M. JEFFERSON, JENNIFER MEYER CHAGNON,and
`SCOTT C. MOORE,Administrative Patent Judges.
`
`CHAGNON, Audmminisirative Patent Judge.
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`571-272-7822
`
`Paper No. 22
`Entered: March 22, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`AUTOLIV ASP, INC.; NIHON PLAST CO., LTD.;
`NEATON AUTO PRODUCTS MANUFACTURING,INC.;
`TAKATA CORPORATION; TK HOLDINGSINC.;
`TOYODA GOSEI CO., LTD.; HYUNDAI MOBIS CO., LTD.;
`MOBIS ALABAMA,LLC; and MOBIS PARTS AMERICA, LLC,
`Petitioner,
`
`V.
`
`AMERICAN VEHICULARSCIENCES, LLC,
`Patent Owner.
`
`Case IPR2016-01794
`Patent 9,043,093 B2
`
`Before TREVOR M. JEFFERSON, JENNIFER MEYER CHAGNON,and
`SCOTT C. MOORE,Administrative Patent Judges.
`
`CHAGNON, Audmminisirative Patent Judge.
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`IPR2016-01794
`Patent 9,043,093 B2
`
`I.
`
`INTRODUCTION
`
`Wehavejurisdiction to hearthis inter partes review under 35 U.S.C.
`§ 6. This Final Written Decisionis issued pursuant to 35 U.S.C. § 318(a)
`and 37 C.F.R. § 42.73. For the reasons discussed herein, we determine that
`Petitioner has shown, by a preponderance of the evidence, that claims 1-44
`
`(“the challenged claims”) of U.S. Patent No. 9,043,093 B2 (Ex. 1001,
`
`“the ’093 patent”) are unpatentable.
`
`A. Procedural History
`
`Toyoda Gosei Co., Ltd.; Autoliv ASP, Inc.; Nihon Plast Co., Ltd.;
`Neaton Auto Products Manutacturing, Inc.; Takata Corporation;
`TK Holdings Inc.; Hyundai Mobis Co., Ltd.; Mobis Alabama, LLC; and
`Mobis Parts America, I.LC (collectively, “Petitioner’)' filed a Petition for
`inter partes review of claims 1-44 (“the challenged claims”) of U.S. Patent
`No. 9,043,093 B2 (Ex. 1001, “the ’093 patent”). Paper 1 (“Pet.”). Petitioner
`provided a Declaration of Stephen W. Rouhana, Ph.D. (Ex. 1003) in support
`ofits positions. American Vehicular Sciences, LLC (“Patent Owner”)filed
`a Preliminary Responscto the Petition (Paper 6 (Prelim. Resp.”)), relying
`on a Declaration of Michael Nranian P.E. (Ex. 2008) in support ofits
`
`positions.
`
`' Petitioner identifies Toyoda Gosei North America Corp.; Autoliv, Inc.; and
`Mobis America,Inc. as additional real parties-in-interest. Pet. 1.
`
`
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`IPR2016-01794
`Patent 9,043,093 B2
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`Pursuant to 35 U.S.C. § 314(a), on March 23, 2017, we instituted inter
`
`partes review onthe following grounds:
`
`whether claims 1, 10, 17-20, 26, 27, and 36-40 would have
`been obvious under 35 U.S.C. § 103(a) in view of HAland? and
`
`Stiitz?;
`
`whether claims 2 and 3 would have been obvious under
`
`35 U.S.C. § 103(a) in view of HAland,Stiitz, and Faigle‘;
`
`whetherclaims 5 and 7 would have been obvious under
`
`35 U.S.C. § 103(a) in view of HAland, Stiitz, and Kaji°;
`
`whether claim 9 would have been obvious under 35 U.S.C.
`
`§ 103(a) in view of HAland,Stiitz, and Steffens®;
`
`whether claims 11, 28-32, and 41 would have been obvious
`under 35 U.S.C. § 103(a) in view of HAland,Stiitz, and Davis’;
`
`whether claim 16 would have been obvious under 35 U.S.C.
`
`§ 103(a) in view of HAland,Stiitz, and Swann’;
`
`whetherclaims 22, 24, and 25 would have been obvious under
`35 U.S.C. § 103(a) in view of HAland, Stiitz, and Suzuki’;
`
`2 U.S. Patent No. 5,788,270, issued Aug. 4, 1998, filed Feb. 20, 199A
`(Ex. 1008).
`3U.S. Patent No. 5,957,487, issued Sept. 28, 1999, filed Mar. 19, 1997
`(Ex. 1009).
`4U.S. Patent No. 6,176,518, issued Jan. 23, 2001, filed July 26, 1999
`(Ex. 1010).
`° U.S. Patent No. 5,222,761, issued June 29, 1993 (Ex. 1012).
`© U.S. Patent No. 5,524,924, issued June 11, 1996, filed Nov. 15, 1993
`(Ex. 1013).
`7U.S. Patent No. 5,269,561, issued Dec. 14, 1993 (Ex. 1014).
`8 U.S. Patent No. 5,507,890, issued Apr. 16, 1996, filed May 17, 1994
`(Ex. 1016).
`
`
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`IPR2016-01794
`Patent 9,043,093 B2
`
`whether claim 23 would have been obvious under 35 U.S.C.
`
`§ 103(a) in view of HAland, Stiitz, Suzuki, and Marlow’;
`whether claim 21 would have been obvious under 35 U.S.C.
`
`§ 103(a) in view of HAland,Stiitz, and Enders";
`whetherclaims 1, 4, 6, 8, 10, 17-20, 26, 27, and 36-40 would
`have been obvious under 35 U.S.C. § 103(a) in view of HAland and
`
`Daniel”;
`
`whetherclaims 1, 10, 12 -15, 17-20, 26, 27, 33, and 36—40
`would have been obvious under 35 U.S.C. § 103(a) in view of HAland
`
`and Tanase!;
`whether claims 34 and 35 would have been obvious under
`35 U.S.C. § 103(a) in view of HAland, Tanase, and Kaji; and
`
`whether claims 42-44 would have been obvious under
`
`35 U.S.C. § 103(a) in view of HAland.
`See Paper 7 (“Inst, Dec.”). Subsequentto institution, Patent Ownerfiled a
`Patent Owner Response (Paper 10, “PO Resp.”), along with a second
`declaration of Michael Nranian P.E. (Ex. 2018) to support its positions.
`
`Pctitionerfiled a Reply (Paper 13, “Reply’”) to the Patent Owner Response.
`Anoral hearing was held on December6, 2017. A transcript of the
`
`hearing is included in the record. Paper 21 (“Ir.”).
`
`a °
`
`U.S. Patent No. 4,021,058, issued May 3, 1977 (Ex. 1017).
`10 U.S. Patent No. 3,966,225, issued June 29, 1976 (Ex. 1015).
`'' U.S. Patent No. 5,845,935, issued Dec. 8, 1998, filed Mar. 7, 1997
`(Ex. 1019).
`12 U.S. Patent No. 5,540,459, issued July 30, 1996, filed Oct. 5, 1994
`(Ex. 1011).
`13 U.S. Appl. Pub. 2002/0180192, published Dec. 5, 2002, filed May 23,
`2002 (Ex. 1018).
`
`
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`B. Related Proceedings
`
`Theparties indicate that the ’093 patentis the subject of the following
`
`district court proceedings: Am. Vehicular Scis. LLC v. Hyundai Motor Co.,
`
`No. 5:16-cv-11529-JEL-APP (E.D. Mich.); Am. Vehicular Scis. LLC v.
`
`Nissan Motor Co., No. 5:16-cv-11530-JEL-APP (E.D. Mich.); Am.
`
`Vehicular Scis., LLC v. Toyota Motor Corp., No. 5:16-cv-11531-JEL-APP
`
`(E.D. Mich.); and Am. Vehicular Scis., LLC v. Am. Honda MotorCo.,
`
`No. 5:16-cv-11532-JEL-APP (E.D. Mich.). Paper 5, 2; Pet. 1-2.
`
`Claims 1-44 of the ’093 patent also are subject to review in
`
`IPR2016-01790. See Autoliv ASP, Inc. v. Am. Vehicular Scis.,
`
`Case IPR2016-01790 (PTAB Mar.28, 2017) (Paper 16). Claims1, 8, 10,
`
`12, 17-19, 26, 27, and 36 of the ’093 patent previously were determined to
`
`be unpatentable. See Unified Patents Inc. v. Am. VehicularScis.,
`
`Case IPR2016-00364 (PTAB May 19, 2017) (Paper 35) (appeal currently
`
`pending, Fed. (‘ir. Case No, 17-227).
`
`Patent Owneralso identifies pending application No. 14/721,136,
`
`which claimspriority to the "093 patent (Paper 5, 2); according to USPTO
`
`records, this application has been abandoned.
`
`C. The ’093 Patent
`
`The ’093 patentis titled “Single Side Curtain Airbag for Vehicles,”
`
`and wasfiled as U.S. application No. 11/930,330 (‘the °330 application”) on
`
`October 31, 2007. Ex. 1001, at [21], [22], [54]. The ’093 patent claims
`
`priority, via a chain of continuation-in-part and divisional applications, to
`
`
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`Patent 9,043,093 B2
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`U.S. application No. 08/571,247 (“the °247 application”), filed on December
`12, 1995.'* Id. at [60].
`The ’093 patent relates to an airbag system for a vehicle, in which
`“the airbag for the front and rear seats are combined,i.e., the airbag deploys
`along substantially the entire side of the vehicle alongsideboth the front seat
`and therear seat.” Jd. at 65:29-32. According to the ’093 patent, this
`
`arrangement“results in significantly greater protection in side impacts when
`the windowsare broken.” Jd. at 65:32-34. Further, the airbag system of
`
`the ’093 patent utilizes a single gas-providing system with only one inflator
`lu inflate the airbag.
`/d. at 187:3-6. The airbag also includesa plurality of
`compartments in flow communication with each other. See, e.g., id. at
`169:27-33. As described in the ’093 patent, the compartments allow the
`
`airbag to be formed of the desired shape, while minimizingstress
`concentrations, as well as the weight of the airbag. Jd. at 81:14—19.
`
`D. Illustrative Claim
`
`Ofthe challenged claims, claims 1, 22, 26, 29, 36-39, and 41-43 are
`independent. Claims 2-21 and 33-35 depend, directly orindirectly, from
`claim 1; claims 23-25 depend from claim 22; claims 27 and 28 depend from
`claim 26; claims 30-32 depend from claim 29; claim 40 depends from
`
`claim 39; and claim 44 dependsfrom claim 43. Claim 1 of the ’093 patent,
`
`reproduced below,is illustrative of the challenged claims.
`1. An airbag system of a vehicle,
`the airbag system
`comprising:
`two seating
`least
`a single airbag extending across at
`positions of a passenger compartment of a vehicle, the single
`
`\4 As discussed in more detail infra (see Section II.D), the parties dispute the
`priority date to which the claims of the ’093 patentare entitled.
`
`
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`IPR2016-01794
`Patent 9,043,093 B2
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`airbag arranged to deploy into the passenger compartment along
`a lateral side of the vehicle and adjacent each of the at least two
`seating positions;
`a cover interposed between the single airbag and the
`passenger compartment
`to cover the single airbag prior to
`deployment;
`a single gas-providing system that has only one inflator
`that provides gas to inflate the single airbag and which is
`arranged apart from the single airbag; and
`a conduit leading from the single gas-providing system to
`provide gas to inflate the single airbag,
`the conduit being
`arranged to deliver the gas from the single gas-providing
`system into the single aubay;
`the at
`least
`two seating positions comprising a first
`seating position in a first seat row of seats of the vehicle and a
`second seating position in a second seat row of seats ofthe
`vehicle longitudinally displaced from the first seat row ofseats,
`along the lateral side of the vehicle;
`wherein the single airbag has a plurality of compartments
`for receiving the gas, and whereinthe plurality of compartments
`are in flow communication with each other.
`
`Ex. 1001, 186:61—-187:18.
`
`Il. ANALYSIS
`
`A Principles of Law
`
`To prevail in its challenges to the patentability of the claims,
`Petitioner must demonstrate by a preponderance of the evidencethatthe
`
`challenged claims are unpatentable. 35 U.S.C. § 316(e); 37 C.F.R.
`§ 42.1(d). “In an [inter partes review], the petitioner has the burden from
`the onset to show with particularity why the patentit challengesis
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
`
`
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`. the evidence that supports the
`.
`petitions to identify “with particularity .
`groundsfor the challenge to each claim”)). This burden of persuasion never
`shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics,
`
`Inc., 800 F.3d 1375, 1378-79 (Fed. Cir. 2015) (citing Tech. Licensing Corp.
`
`v. Videotek, Inc., 545 F.3d 1316, 1326-27 (Fed. Cir. 2008)) (discussing the
`
`burdens of persuasion and production in inter partes review).
`A claim is unpatentable for obviousnessif, to one of ordinary skill in
`the pertinentart, “the differences between the subject matter soughtto be
`patented andthe priorart are such that the subject matter as a whole would
`have been ubvious at the time the invention was made.” KSR Int'l Co. v.
`
`Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting 35 U.S.C. § 103(a)). The
`question of obviousnessis resolved on the basis of underlying factual
`determinations including:
`(1) the scope and content ofthe priorart; (2) any
`differences between the claimed subject matter andthe priorart; (3) the level
`of ordinary skill in the art; and (4) objective evidence of nonobviousness. IS
`See Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966).
`
`A patentclaim “is not proved obvious merely by demonstrating that
`each of its elements was, independently, known inthe priorart.” KSR,
`550 U.S. at 418. An obviousness determination requires finding “both ‘that
`a skilled artisan would have been motivated to combine the teachings of the
`
`prior art references to achieve the claimed invention, and that the skilled
`artisan would have had a reasonable expectation of success in doing so.””
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367—
`68 (Fed. Cir. 2016) (citation omitted); see KSR, 550 U.S. at 418 (for an
`
`15 Neither party directs our attention to specific objective evidence of
`nonobviousness.
`
`
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`obviousnessanalysis, “it can be important to identify a reason that would
`
`have prompteda personofordinary skill in the relevantfield to combine the
`elements in the way the claimed new invention does”). A motivation to
`
`combine the teachings of two references can be “found explicitly or
`implicitly in market forces; design incentives; the ‘interrelated teachings of
`multiple patents’; ‘any need or problem knowninthe field of endeavoratthe
`time of invention and addressed by the patent’; and the background
`
`knowledge, creativity, and commonsenseofthe person ofordinary skill.”
`Plantronics, Inc. vy. Aliph, Inc., 724 F.3d 1343, 1354 (Fed. Cir. 2013)
`(citation omitted).
`In an inter partes review,Petitioner cannotsatisfy its burden of
`proving obviousness by employing “mere conclusory statements,” but “must
`instead articulate specific reasoning, based on evidence of record” to support
`an obviousness determination. In re Magnum Oil Tools Int'l, Ltd., 829 F.3d
`1364, 1380-81 (Fed. Cir. 2016). The “factual inquiry” into the reasons for
`“combin[ing] references must be thorough and searching, and the need for
`specificity pervades.” Jn re NuVasive, Inc., 842 F.3d 1376, 1381-82 (Fed.
`Cir. 2016) (internal quotationsandcitations omitted). A determination of
`obviousness cannot be reached where the record lacks “cxplanatiun as to
`
`how or why the references would be combined to produce the claimed
`invention.” TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir.
`
`2016); see NuVasive, 842 F.3d at 1382-85; Magnum Oil, 829 F.3d at 1380-
`81. ‘hus, to prevail Petitioner must explain how the prior art would have
`
`rendered the challenged claim unpatentable.
`Atthis final stage, we determine whether a preponderanceofthe
`evidence of the record showsthat the challenged claims would have been
`
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`obvious in view ofthe asserted prior art. We analyze the asserted grounds of
`
`unpatentability in accordance with those principles.
`
`B. Level of Ordinary Skill in the Art
`
`Petitioner asserts that a person of ordinary skill in the art “would have
`
`a degreein a related field of science including physics, mechanical or
`electrical engineering, or equivalent coursework,andat least two years of
`experience in the arca of automotive safety systems with the equivalent of a
`pusl-graduate education, such as a master’s degree or equivalent knowledge
`
`obtained through work experience, and several years of experiencein the
`
`design of veliicle occupant protection systems.” Pet. 21 (citing Ex. 1003
`437). Patent Owner does not address the level of ordinary skill in its Patent
`OwnerResponse, but Mr. Nranian testifies that such a person “would have
`
`at least a Bachelor’s degree in electrical, electronic, mechanical, or
`
`automotive engineering, andat least threc years of experience in the
`integration ofairbag, safety, and vehicle occupant protection devices in
`automotive vehicles, or equivalent knowledge obtained through work
`
`experience in the relevant field.” Ex. 2018 4] 36. We do notdiscern a
`difference between these formulations as applied to the issues in dispute in
`
`this procecding, and the parties do not identify any issue in dispute that
`
`allegedly turns on such a difference.
`For purposesofthis Final Written Decision, and basedon the parties’
`proposed definitions and the complete record now before us, we maintain
`our previously adopted definition of one ofordinary skill in the art: a person
`havingat least a Bachelor’s degree in physics,or electrical, electronic,
`mechanical, or automotive engineering, or equivalent coursework, and
`
`having several years of experience in the design of vehicle occupant
`
`10
`
`
`
`IPR2016-01794
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`protection systems in automotive vehicles, or equivalent knowledge obtained
`through work experience in the relevant field. See Inst. Dec. 15-16.
`The level of ordinary skill in the art in this case further is reflected by the
`
`prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed.
`Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re
`
`Oelrich, 579 F.2d 86, 91 (CCPA 1978).
`
`C. Claim Construction
`
`‘The ’093 patent has expired. See PO Resp. 16; Ex. 1001, at [60];
`
`35 U.S.C. § 154(a)(2). When interpreting claims of an expired patent, our
`analysis is similar to that ot'a district court. In re Rambus, Inc., 694 F.3d 42,
`46 (Fed. Cir. 2012); see also Black & Decker, Inc. v. Positec USA, Inc., RW,
`646 Fed. App. 1019, 1024 (Fed. Cir. 2016) (holding that in an inter partes
`review,“[c]laims of an expired patent are given their ordinary and
`customary meaningin accordance with our opinion in Phillips v. AWH
`Corp,, 415 F.3d 1303 (Fed. Cir. 2005) (en bauc)").!® Specitically, claim
`termsare given their ordinary and customary meaning, as would be
`understood by a person of ordinary skill in the art at the time ofthe
`invention, in light of the language of the claims, the specification, and the
`prosecution history of record. Phillips, 415 F.3d at 1313-17. However,
`there is no presumption ofvalidity, and we do not apply a rule of
`
`construction with an aim to preserve the validity of claims,
`
`Petitioner asserts that “all claim terms should be given their plain and
`
`ordinary meaninginlight of the specification.” Pet. 22. Patent Owner
`proposesconstructions for three claim terms: (1) “single airbag”;
`
`
`
`'6 The parties agree that the Phillips standard of claim construction should be
`applied to the claimsin this proceeding. Pet. 11; PO Resp.16.
`
`11
`
`
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`(2) “a single airbag extending across at least two seating positions of a
`passenger compartmentof a vehicle.. . the at least two seating positions
`comprisinga first seating position in a first seat row of seats of the vehicle
`and a secondseating position in a second seat row ofseats of the vehicle
`longitudinally displaced from the first seat row of seats”; and (3) “‘a plurality
`
`of compartments.” PO Resp. 16-20.
`The parties’ dispute does not require express construction of any
`claim term. See, e.g., See Nidec Motor Corp. v. Zhongshan Broad Ocean
`
`Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe
`
`terms ‘that are in contiuversy, and only to the extent necessary to resolve the
`
`controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`
`200 F.3d 795, 803 (Fed. Cir, 1999)).
`
`D. Effective Filing Date ofthe '093 Patent Claims; Status ofAsserted
`References as Prior Art
`Patent Ownerargues that the asserted references HA land, Stiitz,
`Faigle, Tanase, and Endersarenot available as priorart to the claims of the
`°093 patent. PO Resp. 20 -28. This argument is premised on Patent
`Owner’s contention that the claims of the ’093 patent are entitled to the
`
`earliest filing date to which the 093 patent claims priority—namely,the
`December 12, 1995 filing date of the ’247 application, See id.; see alsoid.
`
`at 28-66 (Patent Ownerarguing the claimsof the 093 patentare entitled to
`a priority date of December !2, 1995). Petitioner, on the other hand, asserts
`that the claims of the ’093 pulentare entitled to a priority date no earlier than
`
`October 27, 2004, the filing date of U.S. application No. 10/974,919
`
`(“the °919 application”). Pet. 10-21. Ifthe claims of the ’093 patent are not
`entitled to the December12, 1995 filing date ofthe "247 application, then
`
`12
`
`
`
`1PR2016-01794
`Patent 9,043,093 B2
`
`HAland,Stiitz, and Enders are available as prior art thereto, because they
`
`were eachfiled prior to the filing date of the next application in the priority
`
`chain (i.e., May 6, 1998). See Ex. 1001, at [60]; Ex. 1008, at [22]; Ex. 1009,
`
`at [22]; Ex. 1019, at [22]. Further, if the claims of the 093 patent are
`entitled only to the October 27, 2004filing date of the °919 application, as
`asserted by Petitioner, then Faigle and Tanasealsoare available as prior art
`
`thereto, because they were filed and published prior to October 27, 2004.
`
`See Ex. 1010, at [22], [45]; Ex. 1018, at [22], [43]. Accordingly, we address
`
`the parties’ arguments regarding thepriority date of the challenged claims,
`hefore addressing [ctitiuner’s substantive challenges to the claims.
`
`Onits face, the ’093 patent claimspriority, via a chain of
`
`continuation-in-part and divisional applications, back to December 12, 1995.
`Ex. 1001, at [60]. A graphical representation of the priority chain of
`the ’093 patent, prepared by Petitioner (Pet. 10), is reproduced below for
`
`convenience.
`
`13
`
`
`
`IPR2016-01794
`Patent 9,043,093 B2
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`p+
`) om
`|
`eat. $,772,238
`*
`app.08/s73,247
`{
`Filed: 12/12/1995
`\
`Issued: 6/30/1998
`|
`Efficient Airbag
`|
`Module
`!
`£
`an -
`
`
`Pat. 6,179,326
`App. 09/073,403
`Filed: 5/6/1998
`issued: 1/30/2001
`Efficient Airbag
`Ss
`ystema
`cp
`
`é
`
`cip
`
`
`Pat. 6,533,316
`
`App.09/767,020
`Flled: 1/23/2001
`~
`tssued: 3/28/2003
`|
`Automotive Electronic
`
`Safety Network
`
`
`
`
`Pat.6,733,036
`|
`App. 09/925,062
`Filed: 6/8/2002
`|
`
`Issued: 5/12/2004
`Automotive Electronic
`Safety Network
`
`
`
`
`Pat. 7,040,653
`App. 10/974,919
`Filed: 10/27/2004
`tsued; 5/3/2006
`Steering Wheel
`Assemblles for Vehicles
`
`ap
`
`inflator System
`
`
`Pat. 6,905,135
`
`
`App. 10/043,SS7
`
`Fited: 1/11/2002
`Issued: 6/14/2005
`
`
`Inflator System
`
`| cp
`
`Put. TABLAS
`App. 11/131,623
`Filed: 5/18/2005
`tssued: 1/27/2009
`
`Pat. 9,043,093
`App. 11/930,330
`Fited: 10/31/2007
`Issued: 5/26/2015
`Single Side Curtain
` Alpbag fun Vebicles
`
`}
`
`1994
`
`1995
`
`1996)
`
`{
`
`1997 }-
`
`1998
`
`1999} -
`
`2002
`
`2003+-
`
`2004
`
`2005
`
`2006
`
`2007
`
` 2008
`
`The above chart provides a graphical representation of the priority chain of
`
`the °093 palent.
`For a claim to be entitled to the priority date of an earlier application
`
`under 35 U.S.C. § 120, each application in the chain leading back to the
`earliest application must provide adequate written descriptionsupport for
`that claim, as required by 35 U.S.C. § 112. Zenon Envt'l, Inc. v. U.S. Filter
`Corp., 506 F.3d 1370, 1378 (Fed. Cir. 2007); see also In re Hogan, 559 F.2d
`595, 609 (CCPA 1977) (“[T]here has to be a continuous chain of copending
`applications each of which satisfies the requirements of § 112 with respect to
`
`14
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`
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`IPR2016-01794
`Patent 9,043,093 B2
`
`the subject matter presently claimed.”). In order to satisfy the written
`
`description requirement, the disclosure of the earlier filed application must
`
`describe the later claimed invention “in sufficient detail that one skilled in
`
`the art can clearly conclude that the inventor invented the claimed invention
`
`as of the filing date sought.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565,
`
`1572 (Fed. Cir. 1997); see also Ariad Pharm., Inc. v. Eli Lilly & Co.,
`
`598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (based on “an objective
`
`inquiry into the four corners of the specification from the perspective of a
`
`person of ordinary skill in the art .
`
`.
`
`.
`
`, the specification must describe an
`
`invention understandable tu that skilled artisan and show that the inventor
`
`actually invented the invention claimed.”). “In other words,the test for
`
`sufficiency is whether the disclosure of the [earlier] application relied upon
`
`reasonably conveysto those skilled in the art that the inventor had
`possession ofthe claimed subject matter” as of the earlier filing date. Ariad,
`598 F.3d at 1351; see alsa Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d
`
`1316, 1331-32 (Fed. Cir. 2008) (“While the earlier application need not
`
`describe the claimed subject mattcr in precisely the same terms as found in
`
`the claimsat issue, the prior application must ‘convey with reasonable
`
`clarity to those skilled in the art that, as of the filing date sought, [the
`
`inventor] was in possession of the invention.’” (internal citations omitted,
`
`emphusis removeu)).
`
`However, “[e]ntitlement to a filing date does not extend to subject
`
`matter whichis not disclosed, but would be obvious over what is expressly
`
`disclosed.” In re Huston, 308 F.3d 1267, 1277 (Fed. Cir. 2002) (quoting
`
`Lockwood, 107 F.3d at 1571-72). “[T]t is the specification itself that must
`
`demonstrate possession. And while the description requirement does not
`
`15
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`
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`IPR2016-01794
`Patent 9,043,093 B2
`
`demandanyparticular form ofdisclosure, .
`
`.
`
`. or that the specification recite
`
`the claimed invention in haec verba, a description that merely renders the
`
`invention obvious doesnotsatisfy the requirement.” Ariad, 598 F.3d at
`
`1352 (citing Carnegie Mellon Univ. v. Hoffmann-La Roche Inc., 541 F.3d
`
`1115, 1122 (Fed. Cir. 2008); Lockwood, 107 F.3d at 1571-72); see also
`
`Tronzo v. Biomet, Inc., 156 F.3d 1154, 1158 (Fed. Cir. 1998) (“For a claim
`
`in a later-filed application to be entitled to the filing date of an earlier
`
`application under 35 U.S.C. § 120 (1994), the earlier application must
`
`comply with the written description requirement of 35 U.S.C. § 112,41
`(1994), ... A disclosure in a parent application that merely renders the
`
`later-claimed invention obviousis not sufficient to meet the written
`
`description requirement; the disclosure must describe the claimed invention
`
`withall its limitations.” (internal citations omitted)).
`Accordingto Petitioner, the earliest disclosure of certain limitations of
`the claims of the *093 patentis in the 919 application, which wasfiled on
`October 27, 2004. Pet. 12-15, 18-21. In particular, Petitioner contends that
`
`the earlier applications (i.e., thosc highlighted in yellow in Petitioner’s
`graphical representation ofthe priority chain, reproduced above) do not
`contain written description supportfor the followinglimitativis:
`(a) either “a single airbag extending across at least two seating
`positions of a passenger compartment of a vehicle” or
`“arranging the single airbag to extendacrossat least two seating
`positions of a passenger
`compartment of the vehicle,”
`(h) “wherein the single airbag has a plurality of compartments
`for
`receiving the gas,” and (c)“wherein the plurality of
`compartments are in flow communication with each other.”
`
`Id. at 12.
`
`16
`
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`IPR2016-01794
`Patent 9,043,093 B2
`
`Patent Ownerarguesthat each of these featuresis, in fact, supported
`
`in the ’247 application and the other applications in the priority chain. See
`PO Resp. 28-66. For the reasons discussed below, we determine that the
`°247 application does not provide sufficient written description support for
`at least the limitation “wherein the plurality of compartments are in flow
`communication with each other” (“the flow communication limitation’).'”
`
`Regarding the flow communication limitation, Patent Ownerasserts,
`relying on testimony from Mr. Nranian,that “there are numerous other
`embodiments that are described in the ‘238 patent [corresponding to the ‘247
`
`application] .. . that do disclose compartments that receive (or are receiving
`gas) indirectly from an inflator, via other compartments.” Jd. at 41-42
`(quoting Ex. 2018 4 93) (alterations by Patent Owner). In support ofthis,
`Patent Ownernotesthat “the ‘247 application (as well as the other
`
`applicationsin the priority chain) explicitly defines the term ‘airbag’ to
`encompassan airhag having a plurality of vuiupartments: *|t]he term
`“airbag” as used herein meanseither the case wherethe airbag module 100
`contains a single airbag, as in must conventional designs, or where the
`airbag module 100 containsaplurality of airbags, or wherethe airbag
`
`module 100 contains a single airhag having a plurality uf compartments
`
`'7 In view of this determination, we need not address whether the ’247
`application includes written description support for the other limitations
`identified by Petitioner—namely,“a single airbag extending acrossatleast
`two seating positions of a passenger compartmentofa vehicle”’/“arranging
`the single airbag to extend acrossat least two seating positions of a
`passenger compartmentof the vehicle” and “wherein the single airbag has a
`plurality of compartments for receiving the gas.”
`
`17
`
`
`
`TPR2016-01794
`Patent 9,043,093 B2
`
`which deploy in concert to protect an occupant.’” Jd. at 40 (quoting
`Ex. 2020!8, 131 (lines 4-7)!*) (emphasis Patent Owner’s).
`
`According to Patent Owner, because the ’247 application “explicitly
`
`define[s] the term ‘airbag’ to include ‘a single airbag having a plurality of
`
`compartments which deploy in concert to protect an occupant’”(id. at 42
`
`(citing Ex. 2020, 131:4-7)), and because “noneof[the original] claims [of
`
`the ’247 application] requires each of the compartmentsin the airbag to be
`
`directly filled by the inflator” (id. (citing Ex. 2020, 51—56)), these claims,
`
`therefore, “describe an airbag having a plurality of compartments in which
`
`someof the compartmentsare necessarily filled with gas from being in flow
`
`communication with neighboring compartments”(id. at 42-43). We
`
`disagree. Although Patent Owneris correct that “none of[the original]
`
`claims [of the ’247 application] requires each of the compartments in the
`
`airbag to be directly filled by the inflator” (id. at 42), Patent Owner’s
`
`conclusion(i.e., that the claims “describe an airbag having a plurality of
`
`compartments in which some of the compartments are necessarily filled with
`
`gas from being in flow communication with neighboring compartments”(id.
`
`at 42-43)) does not necessarily follow. Instead, the claimsare silent as to
`
`'8 Citations to Exhibit 2020, whichis the file history of the ’247 application,
`are to the page numbers added by Patent Ownerin the bottom right-hand
`cornerof the page.
`'’ Patent Ownerprovidescitations to the ’247 application, as well as parallel
`citations to corresponding purtions of the intervening applications. For
`efficiency, we include only the citations to the ’247 application. We note
`that Patent Owner’s citations to the Specification of the ’247 application are
`to a substitute specification, which wasfiled to provide sufficient top
`margins (see Ex. 2020, 101 (Office Action, requiring substitute
`specification), 176-77 (indicating the substitute specification contains no
`new matter)).
`
`18
`
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`IPR2016-01794
`Patent 9,043,093 B2
`
`specifically how the claimed airbag (with or without compartments) is
`
`inflated. The generic description in the Specification that the term “airbag”
`
`includes, amongotherdistinct possibilities, “a single airbag having a
`
`plurality of compartments which deploy in concert to protect an occupant,”
`
`coupled with silence in the claimsas to the specifics of how the claimed
`
`airbagsare inflated is insufficient to support a conclusionthat the original
`
`claims of the ’247 application actually disclose the claimed flow
`
`communication limitation. See Huston, 308 F.3d at 1277 (“Entitlement to a
`
`filing date does not extend to subject matter which is not disclosed, but
`
`would be obvious over what is expressly disclosed.”); see also Ex. 1027,
`
`31:5-11 (Mr. Nranian admitting during cross-examination that an airbag
`
`with a plurality of compartments,“could have plurality of compartmentsin
`
`flow communication with each other or could have a plurality of
`
`compartments that are not inflow communication with each other.”
`
`(emphasis added)); Reply8.
`Patent Owner’s argument during oral hearing that the recitation in
`
`original dependent claim 3 of the °247 application, that the “inflator
`
`means... [has] a length which is more than half the length of said airbag”
`
`(Ex. 2020, 51), indicates that the “inflator mcans” of claim 1 may have a
`length of only half the length ofthe airbag, and thus other compartments of
`the airbag must necessarily be in flow communication in order to be inflated
`(see Tr. 21:2424:6)is similarly unpersuasive.”° First, this argument
`presupposes multiple compartments in the airbag of claim 1, but as Patent
`
`20 Because Patcnt Owner's argumentis not persuasive, we do not address
`Petitioner’s contention that this argument was madeonlyatthe oral hearing,
`and was not included in the Patent Owner Response. See Tr. 29:7-11.
`
`19
`
`
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`IPR2016-01794
`Patent 9,043,093 B2
`
`Owneradmits, “airbag” also includes a single, non-compartmentedairbag,
`
`which would not require any flow communication between compartments in
`
`order to be inflated, even if the inflator meansis only half the length of the
`
`airbag. See, e.g., PO Resp. 40. Second, Patent Owner does notdirect us to
`
`any description of an “inflator means”in the Specification of the ’247
`
`application having a length of half or less than half the length of the airbag,
`
`and we do not discern any. Instead, in discussing the preferred
`
`embodiments, the ’238 patent discloses that nozzle 115 delivering gas from
`
`tube 121 to airbag 110 is defined by “elongate U-shaped nozzle walls 160,”
`whichas seen in Figure 2F extend along, at least a significant portion of, the
`
`length ofairbag 110. See Ex. 2020, 133 (line 7)-134 (line 14), Fig. 2F; see
`
`also id. at 138 (lines 15-17) (“Referring now to FIG.2F, it can be seen that
`
`the nozzle walls 160 are solid and extend in the longitudinal direction of the
`
`tube 121. Similarly, spring shields 155 are connect
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