Takeaway: A petitioner must show that references are analogous art to be usable in an obviousness challenge by showing that the reference is either in the field of endeavor of the challenged patent or reasonably pertinent to the problem of the challenged patent such that the reference logically would have commended itself to an inventor’s attention in considering his problem.
In its Final Written Decision, the Board found that Petitioner had shown by a preponderance of the evidence that claims 1, 3, 6-9, 12-16, 20, and 21 of the ’949 patent are unpatentable as anticipated, but had not demonstrated that claims 2, 4, 10, 11 ,17, and 25 are unpatentable. The ’949 patent relates to “a variable movement headrest arrangement for providing support to the head of an occupant of a vehicle upon vehicle impact.”
The Board began its analysis with claim construction, stating that the ’949 patent is unexpired, and that it would be given the broadest reasonable construction in light of the specification. The parties only disputed the meaning of “first manner” and “second manner” in each of the four independent claims requiring that the headrest moves “in a first manner and a second manner.” In its decision on institution, the Board found that Petitioner’s proposed interpretation of the terms as referring to movement in “any two different ways” was appropriate, and rejected Patent Owner’s attempt to limit the phrase to mean “[a]t least one of the first forward velocity and first trajectory of the first manner is different than one of the second forward velocity and second trajectory of the second manner.” The Board rejected Patent Owner’s proposed construction, because it attempted to incorporate limitations of preferred embodiments. After institution, Patent Owner argued that movement in “a first and a second manner” refers to movement “in a first trajectory and a second trajectory.” Petitioner argued that because “trajectory” is recited in dependent claim 10, “a first manner and a second manner” must be interpreted more broadly. The Board agreed with Petitioner, and maintained its construction from the institution decision.
The Board then turned to the individual challenges of claims 1-4, 6-17, 20, 21, and 25 on the grounds that those claims may be anticipated or obvious in light of various prior art references including: Nakano, Kage, Wiklund, and Seitzer. The Board explained that all limitations of the claims other than those that Patent Owner identified in its Response as being novel over the prior art, contain unrebutted arguments and evidence against them, and thus the Board adopted Petitioner’s factual contentions set forth in the Petition and the Reply with regard to those limitations. Accordingly, the Board did not address the uncontested limitations in this decision.
In the Institution Decision, the Board had preliminarily determined that Petitioner had established a reasonable likelihood of showing that Nakano anticipates claims 1, 3, 6-11, 20, and 21, but was not persuaded by a preponderance of the evidence that Nakano anticipates claims 10 and 11. Patent Owner argued that Nakano fails to anticipate some or all of claims 1, 3, 6-11, 20, and 21, because: (1) Nakano fails to describe a headrest that moves in a first and second manner as those terms were interpreted by Patent Owner; (2) Nakano’s guide pins 65 and guide holes 66 do not “cause the headrest to be moved in a first and a second manner” as those terms were interpreted by Patent Owner; (3) Nakano’s frame brackets 35 and the combination of holders 36 with their extension do not cause the headrest to be “moved in a first manner and a second manner” as those terms were interpreted by Patent Owner; (4) Nakano fails to describe a follower that extends laterally and slidingly engages the guideway as required in claims 20 and 21; and (5) Nakano fails to describe a headrest that moves more slowly toward the occupant’s head during its movement in a second manner than while moving in a first manner as required in claims 10 and 11. The Board was not persuaded by arguments 1-3 because they relied upon a construction of first manner and second manner that the Board determined was too narrow, and the Board had determined that Petitioner had shown that Nakano expressly discussed movement in two different directions. The Board was also not persuaded by argument 4, but was persuaded by argument 5 with regard to claims 10 and 11.
Experts for Petitioner and Patent Owner each provided kinematic models of the movement of Nakano’s headrest based on an analysis of Nakano’s illustrations as evidence of how Nakano’s headrest moves. The two models substantially agreed on the path through which Nakano’s headrest moves. Petitioner argued that such modeling is often used in the art, but Patent Owner argued that these models cannot be relied on, because the accuracy of the models depends upon using drawings that are to scale, whereas the patent drawings are not. The Board agreed with Patent Owner noting that it may not rely on evidence based solely upon patent illustrations to establish precise proportions of a disclosed structure. Accordingly, the Board was not persuaded that Petitioner can rely upon any of the modeling performed by either expert as persuasive evidence of the path through which Nakano’s headrest would move. Also, the Board was persuaded by Patent Owner that Nakano’s express description was insufficient to establish whether the first forward velocity of the headrest is greater than the second forward velocity.
Patent Owner made arguments with respect to anticipation grounds based on Kage and Wiklund similar to arguments 1-4 with respect to Nakano. For similar reasons, the Board was also not persuaded by these arguments and found that Petitioner had shown by a preponderance of the evidence that claims were anticipated by each of Kage and Wiklund. However, the Board did not find claims 4 and 17 were anticipated by Wiklund. Patent Owner had argued that because of the uncertainties about the internal structure of support 24, Wiklund fails to describe either explicitly or inherently the required two sequential types of contact between the claimed follower and guide member. Accordingly, the Board found Petitioner’s expert’s testimony on this issue to be speculation that is insufficient to demonstrate that Wiklund explicitly or inherently describes the type of contact between the follower and guide member that is required in claims 4 and 17.
Regarding the obviousness challenge of claims 2 and 25 based on Wiklund and Seitzer, the Board determined that Petitioner had failed to demonstrate by a preponderance of the evidence that the combination renders claims 2 and 25 unpatentable as obvious. Patent Owner had argued that the combination failed to describe all of the elements of the claims and that Seitzer is not “analogous art.” The Board noted that there is a two-pronged test to determine whether a prior art reference is “analogous art”: “(1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” The appropriate field of endeavor is determined by referring to the specification of the patent at issue “including the embodiments, function, and structure of the claimed invention,” and is reasonably pertinent if, “because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.”
Patent Owner contended that testimony by both parties established that Seitzer is directed to “manufacturing machinery,” which is a different field of endeavor than the field of active head restraint systems. Petitioner failed to proffer any evidence or argument to establish that Seitzer is directed to the same field of endeavor as the ’949 patent. Accordingly, the Board agreed with Patent Owner and turned to the second prong. Patent Owner argued that because Seitzer is directed to machinery used in manufacturing processes, it would not have commended itself to the attention of an inventor considering the problem of moving an active head restraint in a particular manner. Petitioner attempted to characterize the “problem” as “supporting the head of an occupant ‘in a reliable, accurate, and quick manner,’” and then argue that Seitzer describes using “mechanical cams” as the “best option” for applications that demand “accuracy, durability and speed.” However, the Board did not see where in the ’949 patent that such a “problem” was described, and was not persuaded that a skilled artisan concerned with designing an active head restraint system would look to Seitzer for information about controlling movement of a headrest. Thus, the Board was not persuaded that Seitzer was analogous art. The Board was also persuaded by Patent Owner that, even if Wiklund and Seitzer could be combined, the combination failed to suggest each and every feature of claims 2 and 25.
NHK Seating of America, Inc. v. Lear Corporation, IPR2014-01079
Paper 30: Final Written Decision
Dated: January 12, 2016
Patent: 6,631,949 B2
Before: Neil T. Powell, Mitchell G. Weatherly, and Carl M. DeFranco
Written by: Weatherly
Related Proceedings: Lear Corporation v. NHK Seating of America, Inc., No. 2:13-cv-12937-SJM-RSW (E.D. Mich.)