Final Written Decision IPR2013-00159

Challenged claims unpatentable and motion to amend denied

LinkedInTwitterFacebookGoogle+Share

Takeaway: Where there are a finite number of predictable solutions and the subject matter of a substitute claim is not the product of innovation, but of ordinary skill and common sense, the claim may be found to have been obvious in light of the prior art.

In its Final Written Decision, the Board found that all challenged claims (1-9, 13, 14, 16, and 19-21) of the ’183 Patent are unpatentable, denied Patent Owner’s Motion to Amend, and granted-in-part and denied-in-part Patent Owner’s Motion to Exclude Evidence. The ’183 Patent relates to self-propelled apparatus for cleaning a submerged surface of a pool or tank and methods for controlling such apparatus.

The Board began with claim construction, stating that the terms must be given their broadest reasonable construction in light of the specification. The Board first addressed the term “a stationary directional discharge conduit,” finding that it means “one or more discharge conduits, each of which is stationary and is oriented in a particular direction” based upon the language of the claims, the specification, and the prosecution history.  The Board then discussed the term “a front portion as defined by the direction of movement of the apparatus when propelled by a water jet.”  The Board rejected Patent Owner’s construction, and found that this term means “the location of the front portion on the apparatus varies with the movement of the apparatus, both over time and depending upon the number and direction of orientation of one or more discharge conduits through which the water jet is discharged.”  The Board next examined the terms “an opposing rear portion” and “adjoining side portions,” finding that the rear and side portions are defined relative to the varying front portion.  The Board then reviewed the term “rotationally-mounted supports coupled proximate the front and rear portions of the housing,” finding that the term depends upon the direction of movement of the apparatus at a given time.  Next, the Board discussed the term “towards the surface beneath the apparatus,” holding that the inclusion of this term in the proposed claims makes the proposed claims more narrow than the original claims.

The Board then turned to the grounds for review, beginning with the ground that claims 1, 2, 13, 14, 16, and 19-21 are anticipated by Myers. Patent Owner specifically disagreed with the Board’s claim construction of “a front portion as defined by the direction of movement of the cleaning apparatus when propelled by a water jet” and with Petitioner’s reading of Myers’s disclosure of the language of claim 21.  The Board referred back to its discussion regarding claim construction to reject Patent Owner’s first argument and was not persuaded by Patent Owner’s arguments that Myers fails to disclose any of the recited elements of claim 21.

The Board next examined the ground that claims 1-5 and 19-21 are obvious over Henkin in view of Myers. Petitioner argued that Henkin discloses substantially all of the limitations of those claims except that it discloses the use of an external, rather than internal, pump, which is disclosed by Myers.  Patent Owner argued that the method recited in claim 21 is distinguishable over Henkin and Myers because Henkin fails to teach the limitation that “said discharged water forming a water jet having a resultant force vector acutely angled towards the surface beneath the apparatus” and that there is no reason to combine Henkin and Myers.  The Board found that Henkin does teach the disputed limitation as does Myers.  The Board also agreed with Petitioner that Henkin provides a reason for combining its teachings with those of Myers and that the combined teachings of Henkin and Myers was neither unpredictable nor beyond the person of ordinary skill.

Next, the Board reviewed the ground that claims 1-9 and 19-21 are obvious over Pansini in view of Myers. Petitioner argued that Pansini discloses substantially all of the limitations of those claims, except that it discloses the use of an external, rather than internal, pump, which was disclosed by Myers.  Patent Owner argued that Pansini does not teach that the angles of its jet nozzles create a resultant force vector directed beneath the cleaning apparatus, Pansini does not teach that the water pump is mounted in the interior of the housing, and that the combination of Pansini and Myers fails to teach the missing limitations of Pansini.  However, the Board was not persuaded by these contentions, citing to the language of KSR stating “[w]hen there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp” in holding that the combined teachings of Pansini and Myers teach the disputed limitations.

The Board then reviewed Patent Owner’s evidence of secondary considerations as to long-felt need, failure of others, and commercial success. Patent Owner’s long-felt need evidence was supported by the declaration of an inventor of the ’183 Patent.  The Board found that Patent Owner failed to show a nexus between the need and the limitations recited in the challenged claims.  Regarding failure of others and commercial success, the Board noted that Patent Owner failed to provide evidence in support of its statements and had only provided information on the number of units sold without showing that these figures are significant in the pool cleaner industry.  Therefore, the Board found that the strong evidence of obviousness outweighs the weak evidence of nonobviousness.

The Board next reviewed Patent Owner’s Motion to Amend. The Board found that the amendments are definite, narrow the scope of the original claims, and do not introduce new subject matter.  However, the Board found that Patent Owner did not demonstrate the patentability of the proposed substitute claims over a ground of unpatentability involving Henkin and Myers.  Therefore, the Motion was denied.

Finally, the Board analyzed Patent Owner’s Motion to Exclude (1) certain paragraphs of the declaration of Petitioner’s declarant Mr. McQueen; and (2) the declaration of Petitioner’s declarant, Dr. Kazerooni. Regarding the declaration of Mr. McQueen, the Board found that Patent Owner’s objections go to the weight of the testimony rather than the admissibility, except for Patent Owner’s objection to a paragraph that refers to studies that were not produced to either Patent Owner or the Board.  As to the declaration of Dr. Kazerooni, the Board found that Patent Owner did not timely object to the declaration as it waited until 21 days after filing to object.

Zodiac Pool Systems, Inc. v. Aqua Products, Inc., IPR2013-00159
Paper 71: Final Written Decision
Dated: August 22, 2014
Patent 8,273,183 B2
Before: Brian J. McNamara, Rama G. Elluru, and James B. Arpin
Written by: Arpin
Related Proceeding: Aqua Products, Inc. v. Zodiac Pool Systems, Inc., No. 1:12-cv-09342-TPG (S.D.N.Y.)