Takeaway: Final Written Decision in which half of the challenged claims survived. Motions to Amend should propose only a one for one substitution of claims and must address the patentability of the substitute claims over any prior art known by Patent Owner.
In the Final Written Decision, the Board held that claims 1-10, 13 and 14 of the ’364 Patent are unpatentable, but Petitioner was not able to show that claims 11, 12, and 15-24 are unpatentable. The Board also denied Patent Owner’s Motion to Amend.
The ’364 Patent relates to the refurbishing of lamp surfaces of a vehicle so as to remove surface wear and scratches. It includes 24 claims, all of which the Board instituted review of. The prior art involved in the review included a U.S. Patent Application (“Kuta”), a U.S. Patent (“Butt”), and forum posts from a website (“Eastwood”). The Board instituted trial on claims 1-24 as being unpatentable under 35 U.S.C. § 103(a) as obvious over Kuta and Butt, and on claims 1-24 as being unpatentable under 35 U.S.C. § 103(a) as obvious over Kuta and Eastwood.
The Board began with construing the claims using the “broadest reasonable construction in light of the specification of the patent in which it appears.” Because neither of the parties contended that the inventors gave any terms a special meaning, the Board gave all terms their ordinary meaning as understood by a person of ordinary skill in the art. The Board then specifically held that certain terms must be given the broader meanings requested by LKQ.
The Board then addressed Clearlamp’s specific arguments that Kuta, which is part of the combination required for both grounds of unpatentability, does not disclose certain features of the independent claims 1 and 13. Particularly, the Board was not persuaded by Clearlamp’s argument that Kuta teaches away from an approach of removing the lamp to refinish it as a quality measure because it values the efficiency and cost-effectiveness of refinishing a lamp on a vehicle in a particular consumer market or industry it targets. The Board was also not persuaded that the prior art did not disclose the claims as construed by Clearlamp, and stated that even if the claims were construed that narrowly, Kuta in combination with Eastwood or Butt would render the claims obvious. The Board then rejected Clearlamp’s argument that a limitation was absent because it was economically detrimental, stating that obviousness does not require that a particular approach be the most beneficial or the most advantageous.
The Board then turned to a limitation of claims 11 and 15. For this limitation, LKQ relied upon a description in the ’364 Patent as an admission of prior art. Clearlamp disputed this, and the Board found that there is no indication that the statement was an admission of prior art as to the disputed limitation. Therefore, because claims 12 and 16-24 ultimately depend from claims 11 and 15, the Board found that LKQ had not shown unpatentability of claims 11, 12, and 15-24.
The Board then reviewed secondary considerations of nonobviousness in connection with claims 1-10, 13, and 14. Clearlamp contended that it was presenting evidence of copying of others and commercial success. The Board first noted, citing to Federal Circuit precedent, that secondary considerations of nonobviousness cannot overcome a strong prima facie case of obviousness, and the Board found that here the prima facie case of obviousness is strong because the recited features were well known in the art. The Board found that Clearlamp’s evidence of copying based upon a meeting between the inventors and representatives of LKQ was lacking. The Board further found that Clearlamp’s commercial success evidence based upon the sale of headlamps by LKQ was insufficient because existence of sales alone does not shed light on the underlying reason for those sales and there was no data to indicate what the sales mean in the overall market.
Turning to the Motion to Amend, Clearlamp moved to substitute claims 25-48 for claims 1-24 contingent upon the Board finding that claims 1-24 are unpatentable. However, Clearlamp did not propose a one for one substitution of the claims, as required by 37 C.F.R. § 42.121, and instead proposed multiple alternative claims. At oral argument, Clearlamp specified which claims the Board should consider as substitutions for claims 1 and 13, and the Board only considered those claims. The Board then stated that Clearlamp has the burden to show patentability of the proposed claims over prior art in general, not just the prior art applied to the original patent claims. The Board found that Clearlamp had not met its burden because it only discussed patentability of the new limitations in regards to the prior art discussed in the review and that, even if that were enough, the new limitations were still covered by that prior art. Further, for one new limitation, LKQ found an additional reference that disclosed that limitation.
LKQ Corp. v. Clearlamp, LLC, IPR2013-00020
Paper 73: Final Written Decision
Dated: March 27, 2014
Before: Sally C. Medley, Kevin F. Turner, and Josiah C. Cocks
Written by: Cocks