Final Written Decision IPR2013-00167

Finding All Challenged Claims (21-37) Unpatentable and Denying Motion to Amend
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Takeaway: Assignor estoppel does not provide an exception to the statutory mandate under 35 U.S.C. § 311(a) that any person who is not the owner of a patent may file a petition for an inter partes review.

In its Final Written Decision, the Board determined that all of the challenged claims (21-37) of the ’723 Patent are unpatentable, and denied Patent Owner’s Motion to Amend. The ’723 Patent relates to injection molding machines in which at least one stationary platen includes a first mold half and at least one platen that is moveable toward the stationary platen includes a second mold half.

Patent Owner argued that Petitioner was barred from challenging the ’723 Patent by assignor estoppel. Specifically, Patent Owner contended that one of the named inventors of the ’723 Patent is the named founder, co-owner, President, Chief Executive Officer, and one of two directors on the Board of Directors of Petitioner and is, therefore, in privity with Petitioner. Accordingly, Patent Owner contended that Petitioner is estopped from challenging the patentability of the ’723 Patent under the doctrine of assignor estoppel. However, the Board determined that assignor estoppel is not a basis for denying a petition requesting an inter partes review, because the Board was not persuaded that assignor estoppel, an equitable doctrine, provides an exception to the statutory mandate under 35 U.S.C. § 311(a) that any person who is not the owner of a patent may file a petition for an inter partes review. Thus, the Board declined to dismiss this inter partes review based on the doctrine of assignor estoppel.

The Board followed the claim constructions adopted in the Decision to Institute, because the Board and the parties all agreed that the analysis of patentability was the same regardless of whether Patent Owner’s or Petitioner’s proposed constructions were adopted.

The Board then turned to the grounds of unpatentability. With regard to claims 21-32 and 34-37, the Board had previously determined in its Decision to Institute that, based on the Petition, it was reasonably likely that Petitioner would prevail in showing that claims 21-32 and 34-37 are unpatentable. Patent Owner only addressed claim 33 in its Response. Further, Patent Owner agreed during the oral hearing that only claim 33 was being argued. Therefore, the Board found that the preponderance of the evidence, including the findings of fact and reasoning set forth in the Decision to Institute, indicated that claims 21-32 and 34-37 were unpatentable

Claim 33 depends from claim 32, which depends from claim 21. Patent Owner only addressed the bore limitation of claim 33, arguing that the references do not disclose this limitation because the pressure cylinder is located externally from the block, not within the block. However, the Board agreed with Petitioner that a person of ordinary skill in the art would have found it obvious to locate the bore within the block, based on the references.

The Board then discussed Patent Owner’s Motion to Amend. Patent Owner proposed amended claims 38-54 in a contingent request, but during the oral argument, Patent Owner stated that it is only interested in pursuing proposed claim 50, which was a proposed substitute for claim 33.

It is Patent Owner’s burden to show patentability over the prior art in general. However, Patent Owner did not assert, or direct the Board to evidence, that the claimed injection molding machine was novel over other machines other than the references cited in the Petition. Thus, the Board found that Patent Owner has not met the burden it undertook by putting forth proposed amended claims. Further, the Board was not persuaded that the proposed amended claim was patentable over the references cited in the Petition.

Athena Automation Ltd. v. Husky Injection Molding Systems Ltd., IPR2013-00167
Paper 51: Final Written Decision
Dated: June 23, 2014
Patent 5,620,723
Before: Jennifer S. Bisk, Michael J. Fitzpatrick, and Georgianna W. Braden
Written by: Bisk
Related Proceedings: IPR2013-00169; IPR2013-00290