Final Written Decision Finding All Claims Unpatentable Over Evidence of Secondary Considerations IPR2014-00758


Takeaway: Evidence credibly showing almost 20 years of effort in solving a problem solved by the invention was outweighed by the evidence of obviousness presented in the Petition.

In its Final Written Decision, the Board concluded that Petitioner had shown that claims 1-14 of the ’343 patent are unpatentable, and the Board granted Petitioner’s Motion to Seal. The ’343 patent generally relates to grain carts for receiving grain from a combine.

The Board began its analysis with claim construction, noting that it interprets “patent claim language in an inter partes review by ascribing to that language its broadest reasonable meaning in light of the specification of the patent.” In doing so, the Board determined that all of the claim terms should be given their plain and ordinary meaning. Petitioner had asserted that both “askewed” and “oriented oblique” should be construed as “turned or slanted.” The Board determined that the asserted construction was incorrect for both terms. Instead, the Board determined that “askewed” should be given its plain meaning of “out of line,” and “oriented oblique” should be given its plain meaning of being oriented “neither perpendicular nor parallel.”

The Board then turned to the prior art grounds of unpatentability, and specifically reasons for making the combination of the prior art asserted by Petitioner. Petitioner argued that the prior art references provide express motivation for their combination. Petitioner relied on expert witness, Mr. Kucklick, for his testimony that “a person of ordinary skill in the art would have been motivated by the expressed teachings of these references to combine Grieshop, Christianson, and Parker to use an askewed hinge to orient the upper conveyor section in a diagonally stored position and achieve extended conveyor length without interfering with transportability or storage.”

Patent Owner argued that neither the Petition nor Mr. Kucklick’s Declaration provided sufficient fact-based analysis to support the proposed combination of references, and specifically that Petitioner was relying on improper hindsight, because of the many differences between the references. Patent Owner also contended that Grieshop teaches away from Christianson because Christianson’s tubes are on the rear and would not be visible during actuation or folding. Patent Owner also relied on expert, Mr. Smith.

The Board was more persuaded by Mr. Kucklick’s testimony, finding that the references were in the same field of endeavor and would commend themselves to the attention of the skilled artisan, and the Board was not persuaded that Grieshop and Christianson are “completely” or “entirely” different, as urged by Mr. Smith. For example, the Board agreed with Petitioner that single auger and dual auger carts are well known alternatives, and thus one of ordinary skill in the art would look to both in modifying either. With regard to Patent Owner’s hindsight argument, the Board agreed with Petitioner that although there would be engineering challenges in modifying the machinery as proposed by Petitioner, those challenges would be within the ordinary level of skill in the art.

The Board then analyzed secondary considerations asserted by Patent Owner. Patent Owner argued that the cited references and Petitioner’s expert’s statements revealed “that there was a long-felt need for the claimed invention of the ’343 patent, specifically a single auger, front folding grain cart having an auger system that maximized upward, laterally outward reach and forward reach.” Petitioner argued that the Grieshop patent discouraged parties from developing the front fold area, because of its claim scope. Accordingly, the Board concluded that “weighing the evidence of the length of time bearing on the ‘long-felt need’ factor of secondary indicia of non-obivousness is, at best, neutral.”

Patent Owner also pointed to Petitioner’s own attempts to patent the front folding cart with extended reach and Petitioner’s advertisement of X-TREME grain carts that include a statement that “‘[s]ince the first Unverferth corner-auger grain cart introduction in 1988, we’ve been stretching our imaginations to develop a single, corner-auger front-fold design with the greatest, forward, outward and upward reach,’” as allegedly providing nexus to the claims of the ’343 patent. The Board was not persuaded because Patent Owner failed to explain how the hinge described in Petitioner’s patent application would fall within the claimed subject matter.

Patent Owner also provided evidence of 20 years of effort to develop the invention. The Board found the evidence credible, including statements by the inventor, but concluded that it did not overcome the evidence of obviousness presented with the Petition. Accordingly, the Board was persuaded that Petitioner had established that the subject matter of claims 1-14 were unpatentable over the combination of references asserted in the Petition.

Unverferth Manufacturing Co., Inc. v. J&M Manufacturing Co., Inc., IPR2014-00758
Paper 26: Final Written Decision
Dated: August 31, 2015
Patent 8,585,343 B2
Before: James T. Moore, Hyun J. Jung, and Miriam L. Quinn
Written by: Moore