Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 7
`Entered: November 2, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`H&S MANUFACTURING COMPANY, INC.,
`Petitioner,
`
`v.
`
`OXBO INTERNATIONAL CORPORATION,
`Patent Owner.
`____________
`
`
`
`
`
`Case IPR2016-00950
`Patent 8,166,739 B2
`____________
`
`
`Before PHILLIP J. KAUFFMAN, JAMES A. TARTAL, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`Paper 7
`Entered: November 2, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`H&S MANUFACTURING COMPANY, INC.,
`Petitioner,
`
`v.
`
`OXBO INTERNATIONAL CORPORATION,
`Patent Owner.
`____________
`
`
`
`
`
`Case IPR2016-00950
`Patent 8,166,739 B2
`____________
`
`
`Before PHILLIP J. KAUFFMAN, JAMES A. TARTAL, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`IPR2016-00950
`Patent 8,166,739 B2
`
`
`Petitioner, H&S Manufacturing Company, Inc., filed a Petition
`requesting an inter partes review of claim 1 of U.S. Patent No. 8,166,739 B2
`(“the ’739 patent”). Paper 2 (“Pet.”). Patent Owner, Oxbo International
`Corporation, filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). We
`have jurisdiction under 35 U.S.C. § 314(a), which provides that an inter
`partes review may not be instituted “unless . . . the information presented in
`the petition . . . shows that there is a reasonable likelihood that the petitioner
`would prevail with respect to at least 1 of the claims challenged in the
`petition.”
`Upon consideration of the Petition and the Preliminary Response, we
`conclude the information presented shows there is a reasonable likelihood
`that Petitioner would prevail in showing the unpatentability of claim 1 of the
`’739 patent. Accordingly, we authorize an inter partes review to be
`instituted as to claim 1 of the ’739 patent. Our factual findings and
`conclusions at this stage of the proceeding are based on the evidentiary
`record developed thus far (prior to Patent Owner’s Response). This is not a
`final decision as to patentability of claims for which inter partes review is
`instituted. Our final decision will be based on the record, as fully developed
`during trial.
`
`I.
`BACKGROUND
`The ’739 Patent (Ex. 1003)
`A.
`The ’739 patent, titled “Windrow Merging Apparatus,” issued May 1,
`2012, from U.S. Application No. 12/925,405, filed October 19, 2010.
`Ex. 1003. The ’739 patent describes a windrow merger apparatus used “to
`merge cut hay, and/or windrows into larger windrows for harvesting or
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`baling.” Id. at 2:42–44. According to Patent Owner, the ’739 patent
`“improved windrow merger technology by providing a windrow merger with
`three pickup assemblies each having a pickup head and transverse belt
`conveyor that can move cut hay to either the left or the right.” Prelim.
`Resp. 6.
`Figure 1 of the ’739 patent is reproduced below:
`
`
`
`Figure 1 illustrates merger apparatus 100 with three pickup and transfer
`assemblies (104, 106, and 108) supported on framework 101, including
`folding arms 102 that provide for movement of outer assemblies 104 and
`108. Ex. 1003, 4:40–52. “Each pickup and transfer assembly 104, 106 and
`108 includes a head unit, designated 124, 126 and 128 respectively.” Id. at
`4:67–5:2. Each “pickup and transfer assembly” is also referred to as a
`“pickup assembly.” Id. at 5:22–25. “The heads 124, 126 and 128 pick up
`and deliver the crop rearward to corresponding conveyors 134, 136 and
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`138.” Id. at 5:2–4. “The folding arm 102 is actuated by a linkage 118 to
`facilitate movement of the pivoting assemblies 104, 106 and 108 between a
`use position to a storage position.” Id. at 4:65–67.
`Figure 5 of the ’739 patent is reproduced below:
`
`
`
`Figure 5 illustrates the merger shown in Figure 1 with two heads in a folded
`position. Ex. 1003, 4:1–2. “The pickup and transfer assemblies 104 and 108
`fold rearward and inward to minimize the overall width and height of the
`merger 100.” Id. at 5:63–65. “[T]he merger 100 may have both pickup
`assemblies 104 and 108 raised simultaneously while the center pickup and
`transfer assembly 106 remains lowered in an operating position.” Id. at
`5:46–49. Additionally, all three pickup and transfer assemblies may be
`raised for transporting the merger on public roads when not operating to
`collect material. Id. at 5:58–63.
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`
`Challenged Claim
`B.
`Claim 1, the only claim of the ’739 patent, provides as follows:
`1. A windrow merger apparatus configured for travel
`in a first direction comprising:
`a frame;
`a first pickup assembly supported by the frame, the first
`pickup assembly including a first belt conveyor
`arranged
`to convey material
`in a direction
`transverse to the first direction of travel and driven
`by a first motor;
`a second pickup assembly supported by the frame, the
`second pickup assembly including a second belt
`conveyor arranged to convey material in a direction
`transverse to the first direction of travel and driven
`by a second motor; and
`a third pickup assembly supported by the frame, the
`third pickup assembly including a third belt
`conveyor arranged to convey material in a direction
`transverse to the first direction of travel and driven
`by a third motor;
`wherein at least two of the pickup assemblies are
`foldable between an extended position and a
`retracted position, each of the first, second, and
`third pickup assemblies being aligned side by side
`when each of the pickup assemblies is positioned in
`the extended position such that the first, second, and
`third pickup assemblies provide an unobstructed
`continuous line of material pickup;
`each of the first, second and third belt conveyors being
`operable in either direction independently of the
`other belt conveyors.
`Ex. 1003, 10:36–61.
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`
`Related Proceedings
`C.
`The parties state that the ’739 patent is a subject of the following civil
`action: Oxbo Int’l Corp. v. H&S Mfgr’g Co., No. 15-292-jdp (W.D. Wis.
`2015). Pet. 2; Paper 5, 2.
`D.
`Asserted Grounds of Unpatentability
`Petitioner contends that claim 1 is unpatentable based on the
`following grounds:
`Reference[s]
`Declementi,1 Honey,2 and Lohrentz3
`Schnittjer4 and Zhavoronkin5
`Zhavoronkin and CA Honey6
`Dow,7 van der Lely,8 and von Allwörden9
`
`Basis Challenged Claim
`§ 103
`1
`§ 103
`1
`§ 103
`1
`§ 103
`1
`
`
`
`II. ANALYSIS
`Claim Construction
`A.
`The Board interprets a claim using the “broadest reasonable
`construction in light of the specification of the patent in which it appears.”
`37 C.F.R. § 42.100(b). We presume a claim term carries its “ordinary and
`
`
`1 EP Patent Application 0 789 990 A1 (Ex. 1015, “Declementi”).
`2 U.S. Patent No. 5,031,394 issued July 16, 1991 (Ex 1017, “Honey”).
`3 U.S. Patent No. 6,415,590 B1 issued Jul. 9, 2002 (Ex. 1016,” Lohrentz”).
`4 U.S. Patent No. 4,932,196 issued Jun. 12, 1990 (Ex. 1011, “Schnittjer”).
`5 U.S.S.R. Inventor’s Certificate No. SU 835359A1 published June 7, 1981
`(Ex. 1012, “Zhavoronkin”).
`6 Canadian Patent No. 1151431B (Ex. 1018, “CA Honey”).
`7 U.S. Patent No. 6,205,757 B1 issued Mar. 27, 2001 (Ex. 1013, “Dow”).
`8 U.S. Patent No. 3,468,107 issued Sep. 23, 1969 (Ex. 1014, “van der Lely”).
`9 U.S. Patent No. 5,911,625 issued Jun. 15, 1999 (Ex. 1020, “von
`Allwörden”).
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`customary meaning,” which is “the meaning that the term would have to a
`person of ordinary skill in the art in question” at the time of the invention.
`In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). A
`patentee may, however, act as their own lexicographer and give a term a
`particular meaning in the Specification, but must do so with “reasonable
`clarity, deliberateness, and precision.” In re Paulsen, 30 F.3d 1475, 1480
`(Fed. Cir. 1994). Only terms which are in controversy need to be construed,
`and then only to the extent necessary to resolve the controversy. Vivid
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`1.
`“continuous line of material pickup”
`Claim 1 recites “each of the pickup assemblies is positioned in the
`extended position such that the first, second, and third pickup assemblies
`provide an unobstructed continuous line of material pickup.” Petitioner
`contends that “‘a continuous line of material pickup’ is: ‘a pickup face
`uninterrupted by gaps.’” Pet. 8 (citing Ex. 1009 ¶¶ 34–35). Patent Owner
`argues that “the claims require the pickup assemblies be aligned such that
`they pickup material continuously along the width of the merger,” and that
`introducing “gaps” to the meaning of the term “adds unnecessary vagueness
`to an otherwise definite phrase.” Prelim. Resp. 13–14. We agree with
`Patent Owner, and, for purposes of this decision, we determine no express
`construction is necessary for “continuous line of material pickup.”
`2.
`“conveyor”
`Claim 1 recites “the first pickup assembly including a first belt
`conveyor arranged to convey material in a direction transverse to the first
`direction of travel and driven by a first motor.” Petitioner contends that
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`“conveyor” should be construed to mean “an apparatus that moves material.”
`Pet. 8. Petitioner provides no explanation for its proposed construction and
`relies only on the conclusory opinion of Mr. Shirley that “[a] conveyor is
`understood by a person of ordinary skill in the art to mean an apparatus that
`moves material.” Ex. 1009 ¶ 32. Mr. Shirley further states that conveyors
`come in various styles including augers and continuous belts. Id. at ¶ 34.
`Patent Owner argues that Petitioner’s proposed construction is
`unreasonably broad and, given that the claim term is more fully “belt
`conveyor,” unnecessary. Prelim. Resp. 12. Patent Owner further contends
`that the only mechanism described in the specification of the ’739 patent as a
`conveyor is a belt conveyor. Id. We agree that Petitioner’s proposed
`construction, devoid of any discussion of the specification of the ’739 patent,
`is unreasonably broad and unsupported. For purposes of this decision, we
`determine no express construction is necessary for “conveyor” or any other
`claim term, and apply the ordinary and customary meaning of each term.
`B. Obviousness over Declementi, Honey, and Lohrentz
`Petitioner contends claim 1 would have been obvious over
`Declementi, Honey, and Lohrentz. Pet. 32–43. Petitioner contends in a
`claim chart that each of the features of claim 1 is disclosed by Declementi
`and Honey. Id. at 33–35. Petitioner further argues that “[t]o the extent that
`the preamble of claim [1], reciting a windrow merger apparatus, is
`considered limiting, reference is made to Lohrentz, which teaches that
`harvesters, such as that of Declementi, are capable of being used for
`producing and merging windrows.” Id. at 36 (citing Ex. 1009 ¶¶ 128–130;
`Ex. 1016, 1:5–9).
`
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`
`Declementi relates to a head assembly to be mounted to a combine-
`harvester machine that can be folded to reduce the size during transportation.
`Ex. 1015, 1:3–8.
`Figure 1 of Declementi is reproduced below.
`
`
`
`Declementi Figure 1 illustrates head assembly 1, including “an auger 3, a
`pickup reel 5 . . . , and a cutting blade 7.” Id. at 4:25–30. Petitioner
`contends that Declementi’s auger corresponds to the first, second, and third
`conveyors of claim 1. Pet. 34–35. According to Petitioner, Declementi
`“discloses each pickup assembly includes a conveyor, in the form of an
`auger divided into three parts corresponding to the three pickup assemblies.”
`Id. at 37. Specifically, Petitioner relies on the disclosure of Declementi that
`“the auger 3 can be folded into three parts, namely a central stationary part
`17 and two lateral parts 19.” Id. at 34 (quoting Ex. 1015, 4:42–44).
`Petitioner offers no additional explanation in support of its contention that
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`each of the three auger sections of Declementi corresponds to one of the
`three conveyors recited in claim 1. See Pet. 37–38; see also Ex. 1009
`¶¶ 107–111.
`Patent Owner argues that Petitioner has failed to show that
`Declementi discloses three conveyors, as opposed to a single conveyor made
`up of three parts. Patent Owner explains:
`However, Declementi only teaches a single auger and not
`multiple augers. Declementi discloses an auger (3) made up of a
`central stationary part 17 and two lateral parts 19. (EX1015, col.
`4:42–44.) A single motor couples to a shaft portion 25 at one
`end of the auger and causes the auger to rotate. (Id. at col. 4:56–
`59.) When the three parts 17 and 19 of the auger 3 are aligned,
`rotational motion is transmitted from the motor to the three auger
`parts. (Id. at col. 5:17–22.) However, when the two lateral parts
`19 are raised, and the shafts 31 and 35 connecting the three parts
`are disengaged, the auger is not subjected to any rotation. (Id. at
`col. 5:22–24.) Therefore, the central portion 17 cannot be used
`without lowering and operating the two lateral parts 19.
`In other words, the auger in Declementi is divided into
`three sections that are only functional when connected.
`Declementi does not refer to three different augers; instead,
`Declementi references the three portions of a single auger.
`Prelim. Resp. 61. We agree with Patent Owner that Petitioner has not
`sufficiently shown that Declementi discloses the three conveyors of claim 1.
`
`Petitioner, however, further contends that Honey also discloses first,
`second, and third belt conveyors driven by first, second, and third motors,
`respectively. Pet. 33–35 (citing Ex. 1017, 4:27–28). Honey relates to a
`swather mounting structure for attaching an elongated swather head to a
`tractor. Ex. 1017, 1:7–9.
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`
`
`Figure 1 of Honey is reproduced below.
`
`
`Honey Figure 1 illustrates a structure 10 which mounts a swather 11 on a
`tractor 12. Ex. 1017, 3:43–45. “A power driven sickle bar 32 extends the
`full length of the head 20 along the front edge of the table 26 so that the
`standing crop is engaged and directed against the sickle bar and after being
`cut by the sickle bar, the crop falls unto the table 26.” Id. at 4:33–37.
`Swather table 26 is “formed by the upper flights of three belt conveyors 27,
`28 and 29 having individual drives.” Id. at 4:26–27. The three conveyors
`11
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`may be set to all move to the right or to the left to form a windrow on either
`side. Id. at 37–45. “By running conveyor 27 towards the left, conveyor 29
`towards the right, and conveyor 28 in either direction, say towards the left,
`two windrows can be formed behind the head just inside opposite ends of the
`head, the one at the left being larger because it is fed from two conveyors,
`namely conveyors 27 and 28.” Id. at 45–50.
`With respect to replacing the auger of Declementi with belt
`conveyors, Petitioner suggests that “selection of a type of conveyor is a
`simple matter of design choice.” Pet. 38. Petitioner also contends that
`multiple rationales support modifying Declementi to include the three belt
`conveyors with independent motors disclosed by Honey. Id. at 38–42.
`Petitioner asserts that a person of ordinary skill would have been motivated
`to use Honey’s belt conveyors, which are operable in either direction
`independently, in Declementi: (1) “to increase the operating capabilities of
`the device such as to allow the device’s operator greater capabilities in
`quickly navigating obstructions and/or irregularities encountered in the farm
`field, and quickly clearing the conveyors of tangled crops” (id. at 39 (citing
`Ex. 1009, ¶¶ 119–121, 126–127)); (2) “to provide the device with additional
`options for discharging the material being picked up and moved (id. (citing
`Ex. 1009, ¶¶ 119, 122, 125)); and to increase “the operating capabilities of
`the machine . . . and . . . the versatility of the apparatus to deliver various
`windrow configurations (id. at 40 (citing ¶¶ 119–121,125–127).
`Patent Owner argues that none of the asserted references discloses a
`“windrow merger.” PO Resp. 58. Patent Owner, however, then recognizes
`that Lohrentz discloses a harvester “capable of producing a pair of windrow
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`(double windrows) on top of one another, side-by-side, or merged into one
`large windrow.” Id. at 58 (quoting Ex. 1016, 1:5–9). We are not persuaded
`on the present record by Patent Owner’s unsupported attorney argument that
`a person of ordinary skill “would not consider using Lohrentz to form or
`merge windrows of cut crop because the harvester of Lohrentz would re-cut,
`shred and damage the already-cut crop.” See id. at 59. Moreover, we also
`are not persuaded on the present record that the scope of claim 1 should be
`limited only to an apparatus that forms or merges windrows of “cut crop,” as
`Patent Owner implies, because Patent Owner has not shown that the claim
`language contains such a limitation.
`We also are not persuaded on the present record by Patent Owner’s
`attorney argument that Declementi fails to disclose a pickup assembly
`because it uses a reel to urge crops toward a cutting head, after which, the
`crops fall into an area to be engaged by an auger, rather than tines as
`described in the specification of the ’739 patent. Prelim. Resp. 59–60.
`Patent Owner does not show sufficiently that the claimed “pickup assembly”
`should be limited to an apparatus with tines or that the cutting and collecting
`apparatus of Declementi is outside of the scope of the broadest reasonable
`interpretation of “pickup assembly.”
`Finally, we are not persuaded on the present record by Patent Owner’s
`contention that a person of ordinary skill would not combine the asserted
`references absent hindsight. See Prelim. Resp. 60–61. To the extent Patent
`Owner argues that the multiple motor belt conveyors of Honey could not be
`applied to Declementi’s single motor auger, we are not persuaded because
`Patent Owner has not sufficiently addressed what the combined teachings of
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`those references would have suggested to those of ordinary skill in the art.
`“The test for obviousness is not whether the features of a secondary
`reference may be bodily incorporated into the structure of the primary
`reference. . . . [r]ather, the test is what the combined teachings of those
`references would have suggested to those of ordinary skill in the art.” In re
`Keller, 642 F.2d 413, 425, (CCPA 1981); see also In re Sneed, 710 F.2d
`1544, 1550, (Fed. Cir. 1983) (“[I]t is not necessary that the inventions of the
`references be physically combinable to render obvious the invention under
`review.”); In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining the
`teachings of references does not involve an ability to combine their specific
`structures.”).
`We have considered each of the arguments raised by Patent Owner
`against the rationale for combining the asserted references (e.g., Prelim.
`Resp. 63 (“Declementi would not be improved by bidirectional operation of
`its conveying augers. . . . “Declementi is also entirely inconsistent with
`independent operation of its auger sections”)) and are not persuaded on the
`present record that Petitioner’s contentions are insufficient at this stage of
`the proceeding. See Prelim. Resp. 61–63. Based on the information
`presented, Petitioner has demonstrated a reasonable likelihood that it would
`prevail in showing claim 1 is unpatentable as obvious over Declementi,
`Honey, and Lohrentz.
`
`
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`
`C. Obviousness over Schnittjer and Zhavoronkin
`Petitioner contends claim 1 would have been obvious over Schnittjer
`and Zhavoronkin. Pet. 11–21.
`Figures 1 and 2 of Schnittjer are reproduced below.
`
`
`
`
`Schnittjer Figures 1 and 2 illustrate an “apparatus for turning, mixing and
`aerating windrows of compost to convert the waste material comprising the
`compost into a useable material.” Ex. 1011, Abstract, 2:5–9. The apparatus
`includes center elevating conveyor 20 and table 24 and side elevating
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`conveyors 22 with tables 26. Id. at 2:34–40. “[T]he table 24 for the center
`conveyor 20 is higher than the tables 26 for the side conveyors 22.” Id. at
`2:41–43. Positioned directly behind and slightly below side conveyors 22
`are transverse conveyors 52. Id. at 3:36–46. “[C]onveyors 52 are driven so
`as to carry material inwardly where it is discharged in the area directly
`behind the center conveyor 20.” Id. at 3:43–45. “The material at the outside
`edges of the windrow will be carried upwardly by the side conveyors 22 and
`deposited on the transverse conveyors 52 which will carry the materially
`inwardly toward the center and deposit it on the ground forming the lower
`part of the core for the new window.” Id. at 4:18–23. “The material carried
`upwardly by the center conveyor 20 will then be deposited directly on top of
`the material already deposited by the side conveyors.” Id. at 4:24–26. “The
`apparatus thus provides maximum mixing, reduction of particle size and
`aeration while providing positive control of the material by moving outside
`edges of the existing windrow inwardly and on the bottom of the new
`windrow while the core of the existing windrow is then deposited on top.”
`Id. at 4:44–49.
`Petitioner contends that the two side conveyors 22 and transverse
`conveyors 52 of Schnittjer correspond to two of the three pickup assemblies,
`including belt conveyors, recited by claim 1. Pet. 12–14. Petitioner also
`contends that center conveyor 20 of Schnittjer corresponds to a portion of an
`additional pickup assembly, but also acknowledges that Schnittjer does not
`disclose a transverse belt conveyor associated with center conveyor 20.
`Pet. 13. For the transverse belt conveyor missing from Schnittjer, Petitioner
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`relies on Zhavoronkin as disclosing an intermediate conveyor 17 as part of a
`hay making machine. Id. (citing Ex. 1012, 3:3–4, Fig. 4).10
`Figures 3 and 4 of Zhavoronkin are reproduced below.
`
`Zhavoronkin Figures 3 and 4 illustrate a hay making machine with two
`sections mounted to a tractor at hitch (or hinge) 2. Ex. 1012, 1:14–18.
`Pickup devices 9 are made in the form of longitudinal conveyors with teeth,
`
`
`
`
`10 After acknowledging, for example, that Zhavoronkin does not disclose the
`first belt conveyor driven by a first motor feature of the ’739 patent in its
`claim chart, Petitioner then includes a “but see” citation to multiple
`paragraphs of Mr. Shirley’s declaration with no explanation in the chart.
`Pet. 13. Such efforts to incorporate arguments by reference from one
`document (the declaration) to another document (the Petition) constitute an
`improper circumvention of the limit on the length of a petition and are
`expressly prohibited by rule. 37 C.F.R. § 42.6; see also 37 C.F.R. § 42.24
`(regarding word count and page limits). Accordingly, we give such implicit
`arguments no weight.
`
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`behind which are transverse conveyors 11 and 12. Id. at 1:21–22. Figure 3
`shows the machine raking two hay swaths with conveyors 11 and 12
`operating from right to left. Id. at 1:14–15. Conveyors 11 and 12 may also
`be operated in directions opposite to one another to form a single hay swath
`behind the tractor. Id. at 1:13–14. Figure 4 shows the machine with an
`additional intermediate short conveyor 17 behind hitch (hinge) 2 such that a
`single hay swath is formed on the left. Id. at 1:15–16, 2:3–4. The
`intermediate short conveyor 17 is operated without a corresponding pickup
`device. Patent Owner further explains that:
`Zhavoronkin discloses precisely the alignment problem
`inventors of
`the ’739 patent sought
`to overcome.
`the
`Specifically, prior windrow mergers with “multiple heads . . .
`typically formed a gap between adjacent pickup heads so that
`some material may be missed in the field as the merger advances.
`Motors and other drive equipment have typically been positioned
`at the ends of heads providing an obstruction between the ends
`of the heads, requiring a gap between the end row of tines
`adjacent the heads.” (Ex. 1003, col. 2:4–11.) Moreover,
`Zhavoronkin does not suggest three pickup assemblies in any
`alignment because its configuration of two side sections with an
`intermediate short conveyor discloses at most two pickup
`assemblies.
`Prelim. Resp. at 37.
`In support of the asserted combination Petitioner argues that:
`One of ordinary skill in the art would have been capable
`of, and motivated to, modify the second pickup assembly of
`Schnittjer to include a transverse belt conveyor as taught by
`Zhavoronkin and driven by an independent motor, and configure
`the first, second, and third belt conveyors being operable in either
`direction independently of the other belt conveyors to provide the
`device with additional options for discharging the material being
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`picked up and moved as taught by Zhavoronkin, to arrive at claim
`1 of the ’739 patent.
`Pet. 19 (citing Ex. 1009 ¶¶ 60, 64). Petitioner offers no additional
`explanation for this asserted rationale, which we find not sufficient to
`support the asserted combination of Schnittjer and Zhavoronkin. As
`explained above, the apparatus of Schnittjer operates to mix and combine
`material into a windrow behind its center conveyor 20. On its face, adding a
`transverse conveyor behind center conveyor 20 of Schnittjer, as Petitioner
`proposes, would preclude the apparatus from operating as intended.
`Petitioner provides no sufficient explanation for why Schnittjer would be
`modified as proposed for the purported benefit of “provid[ing] the device
`with additional options for discharging the material being picked up and
`moved,” (id.) when the modification would prevent the apparatus from
`discharging the material as intended. See also Prelim. Resp. 38 (arguing that
`“adding a middle belt conveyor would eliminate the device’s ability to invert
`the compost core on top of that side material, thereby rendering the
`combined apparatus inoperable for its intended purpose.”).
`Petitioner further argues that the asserted combination “would merely
`involve combining prior art elements according to known methods to yield
`predictable results,” “would have been predictable for at least the reason that
`Schnittjer already discloses pickup assemblies having transverse conveyors,”
`and “would merely involve the use of a known technique to improve a
`similar device in the same way.” Pet. 20. Petitioner identifies no testimony
`from Mr. Shirley in support of the additional arguments. We are not
`persuaded that the additional generic arguments offered by Petitioner in
`support of the asserted combination are sufficient in this case because
`19
`
`
`
`IPR2016-00950
`Patent 8,166,739 B2
`
`Petitioner has not shown that its proposed modification of Schnittjer would
`still permit Schnittjer to operate as intended. Petitioner has identified no
`persuasive predictable result or improvement corresponding to its asserted
`combination. Accordingly, the information presented by Petitioner does not
`show a reasonable likelihood that Petitioner would prevail in showing claim
`1 of the ’739 patent would have been obvious over Schnittjer and
`Zhavoronkin.
`D. Obviousness over Zhavoronkin and CA Honey
`Petitioner contends that claim 1 would have been obvious over
`Zhavoronkin and CA Honey. Pet. 43–53. CA Honey describes a “self-
`propelled swather having a tractor unit with a central cutting head and two
`side cutting heads.” Ex. 1018, Abstract.
`Figure 1 of CA Honey is reproduced below.
`
`
`
`20
`
`
`
`IPR2016-00950
`Patent 8,166,739 B2
`
`CA Honey Figure 1 illustrates swather 10 with central cutting head 12 and
`conveying means 24 behind cutting means 17. Id. at 3:6–7, 3:26–30, 4:8–
`12.11 The swather also includes side heads 13 and 14 with conveyor means
`75 and 76 immediately behind the front edge cutting means 57 and 67. Id. at
`5:2–16.
`Petitioner states that “Zhavoronkin and CA Honey, in combination,
`teach or suggest each and every limitation of claim 1.” Pet. 43. Petitioner
`argues that “[s]ince Zhavoronkin discloses four pickup assemblies,
`Zhavoronkin discloses first, second and third pickup assemblies.” Pet. 47
`(citing Ex. 1009 ¶¶ 137–143). We are not persuaded by Petitioner’s
`argument because a pickup assembly must include a belt conveyor.
`Zhavoronkin discloses four pickup heads associated with two belt
`conveyors. See Pet. 52; Ex. 1012, Fig. 4. Accordingly, Zhavoronkin may
`disclose, at most, two pickup assemblies as described in the ’488 patent.
` Petitioner also acknowledges that “Zhavoronkin does not expressly
`disclose the pickup assemblies being aligned side by side.” Id. at 47.
`Petitioner also does not contend that CA Honey discloses pickup assemblies
`aligned side by side, and Figure 1 of CA Honey makes clear its assemblies
`are not aligned side by side. See Pet. 45–46. Having failed to identify any
`reference that teaches or suggests the “aligned side by side” feature of the
`’739 patent, Petitioner’s obviousness analysis based on Zhavoronkin and CA
`Honey is fundamentally flawed. Petitioner identifies a variety of reasons
`why the “aligned side by side” arrangement of the ’739 patent is beneficial.
`It increases the amount of crops picked up, speeds up the harvest process,
`
`
`11 Citations to CA Honey are to the original pagination and line number.
`21
`
`
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`IPR2016-00950
`Patent 8,166,739 B2
`
`improves visibility and operability “by placing the three pickup assemblies
`aligned side by side,” allows for bigger windrows, and reduces the amount
`of time required. Pet. 51.
`Identifying all of the benefits of the ’739 patent does not make it
`obvious, nor does it support a modification in a manner undisclosed by any
`of the asserted references. Counter to its contentions with respect to
`Zhavoronkin and CA Honey, Petitioner has not shown that the challenged
`claim of the ’739 patent would have been obvious on any of the asserted
`generic bases, including that it “would have been predictable” or would
`“merely involve the use of a known technique to improve a similar device in
`the same way.” Pet. 49–53. First, we agree with Patent Owner that
`Petitioner has not clearly identified the known technique it refers to or any
`known modification. See Prelim. Resp. 68. Suggesting that a person of
`ordinary skill would simply add “a pickup assembly to Zhavoronkin as
`taught by CA Honey and associating the added pickup assembly with the
`existing middle conveyor disclosed by Zhavoronkin such that the pickup
`assemblies were aligned side by side” (Pet. 49) is the epitome of a hindsight
`analysis. See In re Gorman, 933 F.2d 982, 987 (Fed. Cir. 1991) (“It is
`impermissible [to use] . . . applicant’s structure as a template and select[]
`elements from references to fill the gaps.” (citing Interconnect Planning
`Corp. v. Feil, 774 F.2d 1132, 1143 (Fed. Cir.1985))). Mr. Shirley’s
`conclusory statement that aligning the pickup assemblies “would be within
`the grasp of a person of ordinary skill in the art” does not persuade us
`because Petitioner has not identified any disclosure of the “aligned side by
`
`22
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`IPR2016-00950
`Patent 8,166,739 B2
`
`side” feature in either of the asserted references. See Ex. 1009 ¶ 147.12 The
`only apparent source of the missing disclosure of the “aligned side by side”
`feature is the ’739 patent itself.
`Petitioner has not sufficiently identified either how each of the
`elements of claim 1 was disclosed in Zhavoronkin and CA Honey or a
`persuasive rationale in support of the combination of the two references.
`Accordingly, the information presented by Petitioner does not show a
`reasonable likelihood that Petitioner would prevail in showing claim 1 of the
`’739 patent would have been obvious over Zhavoronkin and CA Honey.
`E. Obviousness over Dow, van der Lely, and von Allwörden
`Petitioner contends claim 1 would have been obvious over Dow, van
`der Lely, and von Allwörden. Pet. 22–31.
`Dow discloses a windrow gathering machine, including first and
`second combined pickup and conveyor units pivotally mounted on skewed
`axes on opposite sides of the main frame. Ex. 1013, Abstract.
`
`
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