Trials@uspto.gov
`571-272-7822
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`i
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`Paper 14
`Entered: March 17, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`PRIDE SOLUTIONS, LLC,
`Petitioner,
`
`Vv.
`
`NOT DEAD YET MANUFACTURING,INC.,
`Patent Owner.
`
`Case IPR2013-00627
`Patent 8,418,432 B2
`
`Before JENNIFER S. BISK, RAMA G. ELLURU,and
`GREGGI. ANDERSON,Administrative Patent Judges.
`
`ANDERSON,Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 CFR. § 42.108
`
`

`

`Case IPR2013-00627
`Patent 8,418,432 B2
`
`I. INTRODUCTION
`
`On September 26, 2013, Pride Solutions LLC (“Petitioner”) filed a
`petition requesting an inter partes review of claims 1 and 2 of U.S. Patent
`
`No. 8,418,432 B2 (Ex. 1001, “the °432 Patent’). Paper 1 (“‘Pet.”). The
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`patent owner, Not Dead Yet Manufacturing, Inc. (“Patent Owner’), filed a
`preliminary response. Paper 11 (“Prelim. Resp.”). We have jurisdiction
`
`.
`under 35 U.S.C. § 314.
`The standard forinstituting an inter partes review is set forth in
`35 U.S.C. § 314(a), which provides as follows:
`|
`THRESHOLD- The Director may not authorize an inter
`partes review to be instituted unless the Director determines
`that the information presented in the petition filed under section
`311 and any responsefiled under section 313 showsthat there
`is a reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition.
`
`For the reasons that follow, the Board declinesto institute an inter
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`partes review of claims 1 and 2 of the °432 Patent.
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`A. Related Proceedings
`
`The °432 Patent is asserted in the following district court case: Not
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`Dead Yet Mfg., Inc. d/b/a NDY MFG,Inc. v. Pride Solutions, LLC, No. 1:13-
`cv-03418 (N.D.Ill.). Pet. 7.
`.
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`B. The ’432 Patent
`
`The °432 Patent describes a quick connect/disconnectfor a stalk
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`stomper. A stalk stomperis an agricultural tool attached to acombine or
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`tractor. Ex. 1001, 1:6-10. The stalk stomper travels over stubble from
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`harvested crops, forcing stubble left after harvest to the ground, reducing the.
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`likelihood that stubble puncturesthe tires of the combineor tractor. Jd. at
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`1:16-20.
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`

`

`Case IPR2013-00627
`Patent 8,418,432 B2
`
`Figure 6 of the ’432 Patent is reproduced below.
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`Figure 6 is a perspective view of tool bar assembly 12 attached to a combine
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`(not shown)andstalk stomper assembly 10. In the embodiment shown,the ©
`stalk stomper assembly is not connectedto the tool bar assembly. Ex. 1001,
`3:3-5,
`|
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`The stock stomper assembly includes plate member26 having cross
`bar 29 formed at one end. Ex. 100 1, 3:28-29. Retention meansin the form
`of stop 27 are provided on the bottom surface ofthe plate member. Jd. at
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`4:2-4,
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`|
`The tool bar assembly includes tool bar 40 and bracket 42. Ex. 1001,
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`3:61-62. The bracket includes spaced-apart arms 24 having recesses 46
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`formed therein.
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`/d. at 3:28-30; 3:66-67. Recesses 46 are in front of holes 48
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`formed in the armsof the bracket. Jd. at 3:66-67. Both the recesses and
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`holes are transversely aligned. Jd. at 3:67-4:2. Pin 31 is provided for
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`insertion into the holes. /d. at 4:4-5.
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`To connect the stalk stomperto the bracket, cross bar 29 engages
`recesses 46, defining a pivot point. Ex. 1001, 4:15-16. Plate member 26
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`

`

`Case IPR2013-00627
`Patent 8,418,432 B2
`
`pivots about the pivot point, mating to the bracket at a position where the
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`plate is above the holes.
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`/d. at 4:17-21. Pin 31 is inserted in the holes,
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`connecting the stock stomper assembly to the tool bar assembly. Jd. The
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`inserted pin engages stop 27 (L-shaped bracketin Figure 6), preventing the
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`cross bar from disengaging from the recesses or any longitudinal movement
`that would disconnect the stock stomper assembly from the tool bar
`assembly. Jd. at 4:21-25.
`
`C. Exemplary Claims
`
`Claims 1 and 2, the only challenged claims, are reproduced below:
`
`1. A quick connect/disconnect coupling for securing.a stalk stomper
`to a tool bar assembly on a combine corn head without the needfortools, the
`tool bar assembly comprising a bracket havinga pair of spaced-apart arm
`members depending therefrom, each having a recess therein, the recesses
`being generally transversely aligned, and a pair of holes in the bracket
`spaced from the recesses, andapair of holes in the bracket spaced from the
`recesses, the pair of holes being generally transversely aligned, and a pin
`adapted to be receivedin the holes, the stalk stomper being provided with a
`plate memberhavinga cross bar adaptedto be received in the recesses in the
`depending arm membersonthe tool bar assembly anda retention means on
`the plate member, whereby, to connect the stalk stomperto the tool bar
`assembly, the cross bar is engaged in the recesses and the stalk stomperis
`pivoted so that the plate memberis abovethe pair of holes and the pin can
`be inserted into the transversely aligned holes to connect the stalk stomperto
`the tool bar assembly, the pin engaging the retention meansso as to prevent
`longitudinal movementof the stalk stomper with respect to the tool bar
`assembly in operation to prevent the cross bar from disengaging from the
`recesses in use, and to disconnect the stalk stomper from the tool bar
`assembly, the pin is removed from the transversely aligned holes and the
`_ cross bar is removed from engagement with the recesses in the arm
`members.
`
`2. A quick connect/disconnect coupling as in claim 1, wherein the
`pair of holes in the bracket are spaced rearwardly from the said recesses.
`
`

`

`Case IPR2013-00627
`Patent 8,418,432 B2
`
`D. Prior Art Relied Upon
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`
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`‘|Date | Exhibit, .
`Reference._ |:
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`Lankota Jun. 18, 2009|Ex. 1003Lankota, INC., LAN SS600C2,
`
`Installation Instructions, Stalk
`Stomper Attachmentfor John
`Deere® 600 Series Corn Heads
`
`Petitioner relies upon the following prior art references.
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`E. The Alleged Grounds.of Unpatentability ,
`Petitioner alleges the following grounds of unpatentability.
`=
`LAT ee ee
`Nes
`Sea
`Cee a
`ee
`SLL as Oe
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`Il. ANALYSIS.
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`A. Claim Construction ©
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`In an inter partes review, claim terms in an unexpired patent are
`interpreted according to their broadest reasonable construction in light ofthe
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
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`

`

`Case IPR2013-00627
`Patent 8,418,432 B2
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`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14,
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`2012).
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`“Retention Means”
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`Petitioner argues the term “retention means”is not a proper means-
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`plus-function element as permitted under 35 U.S.C. § 112,96. Pet. 19.
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`Petitioner notes the specification and Figure 6 of the ’432 Patent depict the
`“retention means”as “an L-shaped bracket (27) attached to the bottom ofthe
`angled plate member26.” /d. at 20 (citing Ex. 1001, Fig. 6). Petitioner
`concludes “retention means” should be construed as a “mechanism that
`
`|
`.
`retains something.” Id. at 21.
`Patent Ownerlikewise does not argue that “retention means” should
`be interpreted based on a means-plus-function analysis under § 112, 4 6.
`Rather, referring to the claim language, Patent Owner contendsthat the
`claimed pin “engages the retention means to prevent longitudinal movement
`- of the stalk stomperrelative to the tool bar assembly to prevent the cross bar
`from disengagingfrom the recesses.” Prelim. Resp. 13 (citing Ex. 1001,
`5:6-10). Patent Owner proposesthat “retention means” should be
`interpreted as “a structure attached to or formed with the plate that engages a
`pin to preclude longitudinal movementofthe stalk stomperrelative to the
`bracket.” Prelim. Resp. 14.
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`|
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`We do not adopt either party’s proposed construction of “retention
`
`means.” Contrary to both parties’ stated positions, we determine that
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`“retention means”should be construed as a means-plus-function term under
`§ 112, 6, for the following reasons.
`Claim limitations that use the word “means” create a presumption that
`
`- the limitation should be interpreted pursuant to § 112,96. Personalized
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`

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`Case IPR2013-00627
`Patent 8,418,432 B2
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`Media Commc’nsv. Int’l Trade Comm’n, 161 F.3d 696, 703 (Fed.Cir.
`1998). The presumption of means-plus-function treatmentis rebutted
`“where a claim recites a function, but then goes on to elaborate sufficient
`
`structure, material, or acts within the claim itself to perform entirely the
`recited function.” Sage Prods., Inc. v. Devon Indus., Inc., 126 F.3d 1420,
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`1427-28 (Fed. Cir. 1997). “Sufficient structure exists when the claim
`language specifies the exact structure that performs the functions in question
`‘without needto resort to other portions of the specification or extrinsic
`evidence for an adequate understanding ofthe structure.” TriMed, Inc. v.
`Stryker Corp., 514 F.3d 1256, 1259-60 (Fed. Cir. 2008).
`
`Becausethe limitation “retention means” uses the term “means,” there
`
`is a presumption that the limitation should be interpreted pursuant to § 112,
`16. To determine whether that presumption is rebutted, we review the claim
`language to ascertain whetherthe claim recites function andalsorecites
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`structure to perform entirely that function. See Sage Prods., 126 F.3d at
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`1427-28.
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`Based on the record before us, we determine that the function required
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`by “retention means”is retaining something. Petitioner.acknowledgesthat
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`“retention means”retain something. Pet. 20. Patent Owneralso appears to
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`agree, based on their proposed definition, that the retention means “preclude
`longitudinal movement”—in other words, retaining. Prelim. Resp. 14. The
`specification further supports this interpretation. Specifically, the
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`specification describes “retention means”as performingthe function of
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`retaining. “The pin 31 will engage retention means on the plate member 26
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`for preventing the cross barfrom disengaging from the recesses in use.” Ex.
`1001, 3:33-35 (emphasis added). In addition, later in the specification
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`7
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`Case IPR2013-00627
`' Patent 8,418,432 B2
`
`appears the following: “The pin 31 will engage the retention stop 27 to
`preclude longitudinal movementof the stalk stomper 10 with respectto the
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`depending arms 24 to preventthe cross bar or transverse bar 29 from
`disengaging from the recesses 46 in use.” Id. at 4:21-25. The “whereby”
`clause of claim 1 further specifies the function of “retention means” by
`stating the following: “the pin engaging the retention meansso as to prevent
`longitudinal movementofthe stalk stomper with respectto the tool bar
`assembly in operation to prevent the cross bar from disengaging from the
`recesses in use...” (emphasis added). See Tex. Instruments Inc. v. US.
`
`Int’l Trade Comm’n, 988 F.2d 1165, 1172 (Fed. Cir. 1993) (stating a
`“whereby” clause adds substanceto the claim and does not merely state the
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`result of the limitations in the claim whenit specifies a function.).
`Accordingly, we determine that “retention means”requires the function of
`- retaining something.
`The claim language, however, does not recite the structure for
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`performing entirely the function of retaining. The claim recites that the
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`“retention means”is “on the plate member” (emphasis added). Further, as
`recited in the whereby clause, a pin is described as “engaging the retention
`meansso as to prevent longitudinal movementofthe stalk stomper with
`
`respect to the tool bar assembly in operation to prevent the cross bar from
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`disengaging from the recesses in use” (emphasis added). However, the
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`claim language does not specify the exact structure of the “retention means,”
`as required to rebut the presumption. TriMed, 514 F.3d 1259-60. Thus, the
`presumption that “retention means” should be interpreted pursuantto § 112,
`{ 6 is not rebutted.
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`

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`Case IPR2013-00627
`Patent 8,418,432 B2
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`Under a § 112, | 6, analysis, we mustlook to the specification to
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`ascertain the structure that correspondsto “retention means.” The
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`specification states: “Provided on the angle plate member26 are retention
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`means 27, which may bearetention block or retention stop.” Ex. 1001, 4:2-
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`4, The structure described is shownin Figure 6 of the ’432 Patent,
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`reproduced above. Petitioner acknowledgesFigure 6 of the ’432 Patent
`- depicts the “retention means”as “an L-shaped bracket (27) attached to the
`bottom of the angled plate member26.” Pet. 20.
`We, therefore, determine “retention means”is a means-plus-function
`term that includesa retention blockora retention stop in the form of an
`L-shapedbracket.
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`B. Obviousness over the Cited Prior Art
`
`As notedin the table above, Petitioner contends that claims 1 and 2 of
`the °432 Patent are obvious under 35 U.S.C. § 103(a) over various
`combinationsofthe prior art references. Pet. 24-56. As detailed above,
`Petitioner alleges “retention means” should not be construed as a means-
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`plus-function term under § 112, § 6. Petitioner, therefore, does not provide,
`any evidence ofhow thepriorart references should be applied if“retention
`- means”is construed as a means-plus-function term. Noris the evidence
`providedby Petitioner sufficient to show a reasonablelikelihoodthat it will
`prevail onat least one of the challenged claims. Thus, for the reasons that
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`follow, we deny institution on any of the groundsasserted.
`A structural analysis is required when means-plus-function limitations
`are at issue; a functional analysis alone will not suffice. Such a structural
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`analysis is required whethera claim is asserted in an infringement action or
`alleged to be unpatentable based on the prior art. See In re Donaldson Co.,
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`9
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`Case IPR2013-00627
`Patent 8,418,432 B2
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`16 F.3d 1189, 1193 (Fed. Cir. 1994) (en banc) (“[W]e hold that paragraph
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`six applies regardless of the context in which the interpretation of means-
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`plus-function languagearises, i.e., whether as part of a patentability
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`determination in the PTO oras part of a validity or infringement
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`determination in a court.”). The structural analysis must demonstrate that
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`the correspondingstructure or an equivalent structure is present in the prior
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`art. Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1299 (Fed. Cir.
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`2009) (citing Donaldson, 16 F.3d at 1193).
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`Petitioner must showinits petition that there is a reasonable
`likelihood that it would prevail with respectto at least 1 of the claims
`challenged in the petition. 35 U.S.C. § 311. To this end, the petition “must
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`specify where each element of the claimis found in the prior art patents or
`printed publications relied upon,” and it “must include .
`.
`. a detailed
`explanation ofthe significance of the evidence including material facts.” 37
`C.F.R. §§ 42.104(b)(4), 42.22(a)(2); see 35 US.C. § 312(a)(3).
`Petitioner does produce evidence on the retention meanslimitation in
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`the four grounds of unpatentability asserted. Petitioner relies on the linkages
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`of the activation device in Brownfor the retention meanslimitation. Pet. 29-
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`30 (citing Ex. 1004, Fig. 1). In Montgomery,Petitioner cites to two sets of
`lugs and pin 25 passing through openings 30 as retention means. Pet. 38-40
`(citing Ex. 1005, Figs. 4-6; 2:58—3:5; 3:56-63). Petitioner alleges the
`claimed retention means is met in Fo’s teaching of base 17, master pin 7,
`and fixing means 13. Pet. 45-47(citing Ex. 1008, Figs. 7, 8, 10; 58). The
`last groundasserted relies on Wolfe and its teaching of twospring-loaded
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`pins inserted into attachmentapertures to attach a farm implementto a
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`tractor. Pet. 54-56 (citing Ex. 1006, Figs. 2, 7; 4:13-15, 17-23).
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`10
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`

`

`Case IPR2013-00627
`Patent 8,418,432 B2
`
`Petitioner’s evidence, however,is insufficient. None ofthe evidence
`submitted equates to a retention block or a retention stop in the form of an L-
`
`shaped bracket, as we have construed “retention means.”
`
`The structure encompassed by a 112, § 6 limitation includes
`“corresponding structure, material, or acts describedin the specification and
`equivalents thereof.” Petitioner, however, has not submitted evidence of
`interchangeability that might support equivalent structure. See Chiuminatta
`Concrete Concepts, Inc. v. Cardinal Indus., Inc., 145 F.3d 1303, 1309 (Fed.
`Cir. 1998) ( “The question of knowninterchangeability is not whether both
`structures serve the same function, but whether it was known that one
`structure was an equivalent of another.”). Petitioner has not presented
`evidence, or argument, that the grounds alleged are shownin anyofthe prior
`art cited when “retention means” is properly construed as a means-plus-
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`function term. The record is, thus, devoid of evidence onthecritical issue of
`
`. equivalentstructure.
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`Accordingly, Petitioner has not made a sufficient showingthat there is
`a reasonablelikelihoodthatit would prevail with respect to claims 1 and 2
`on the groundsthat those claims are obvious over any ofthe cited priorart.
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`.
`HI. CONCLUSION
`For the foregoing reasons, we determine that the information
`presented in the petition fails to establish a reasonablelikelihood that
`Petitioner would prevail on showing the unpatentability of claims 1 and 2 of
`
`the ’432 Patent.
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`11
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`Case IPR2013-00627
`Patent 8,418,432 B2
`
`Accordingly,it is
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`ORDER
`
`ORDEREDthepetition challenging the patentability of claims 1 and 2
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`of the °432 Patent is denied.
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`12
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`

`

`Case IPR2013-00627
`Patent 8,418,432 B2
`
`For PETITIONER:
`
`Craige Thompson
`THOMPSON PATENT LAW OFFICES PC
`craige@thompsonpatentlaw:com
`Tawfig Ali
`ALI LAW PRACTICE LLC
`tali@alilawpractice.com
`
`For PATENT OWNER:
`
`Joseph M. Kuo-
`Anita M. Cepuritis
`OLSON & CEPURITIS, LTD.
`jkuo@olsonip.com
`acepuritis@olsonip.com
`
`13
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