Final Written Decision IPR2013-00358

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Takeaway: The Board found that the relevant time period for resolving the level of ordinary skill in the art when conducting an obviousness determination was the earliest filing date to which the patent claims at issue were entitled.

In its Final Written Decision, the Board found that Petitioner had not shown by a preponderance of the evidence that any of challenged claims 1, 13, or 25 of the ‘561 patent were unpatentable.  In particular, the Board found that Petitioner had not shown that the subject matter of claims 1 and 25 was unpatentable under 35 U.S.C. § 103 over Angros and Picken; or that the subject matter of claim 13 was unpatentable under 35 U.S.C. § 103 over Angros, Picken, and Baumann.  Further, the Board dismissed Petitioner’s Motion to Exclude and also dismissed Petitioner’s and Patent Owner’s objections to each other’s demonstrative exhibits to be used at the oral hearing.

The ‘561 patent relates to refrigerator shelving having a top hydrophobic surface arranged in a spill containment pattern designed to act as a barrier to prevent spilled liquid from spilling onto other surfaces.  The Board had construed certain claim terms in its Decision to Institute which it elected to maintain, especially since these were not challenged by either party.  The Board then went on to construe the claim term “spill” as meaning “an accidental or unintentional release of liquid.”

As for the obviousness challenge to claims 1 and 25 in view of Angros and Picken, the Board agreed with Patent Owner that Angros was not analogous art.  Among other things, the Board concluded that Angros described an analytic plate for a microscope slide or a diagnostic plate having a containment border for containing a liquid, whereas Picken disclosed a shelf assembly for use in a refrigerator.  Consistent with this conclusion, the Board found that a person of ordinary skill in the art would not have been motivated to combine Angros and Picken in the manner proposed by Petitioner.  The Board also concluded that even if Angros did qualify as prior art, Petitioner had not shown that the combination of Angros with Picken would have rendered claims 1 and 25 obvious.

At issue in the obviousness determinations for this proceeding was the effective filing date for the subject ‘561 patent.  Petitioner had alleged that the challenged claims were not entitled to the benefit of the filing dates of the ‘273 and ‘540 provisional applications, because of written description insufficiencies.  But the Board instead found that the subject ‘561 patent was supported by the earlier ‘273 provisional application.  Thus, according to the Board, the relevant time period for resolving the level of ordinary skill in the art for obviousness determination purposes was the filing date of the ‘273 provisional application.

The Board discussed the level of ordinary skill in the art at the time of the filing of the provisional ‘273 application, concluding that “a person of ordinary skill in the art at the time of the claimed invention [i.e., as of the filing date of the ‘273 provisional application] would have had a degree in mechanical engineering or a similar discipline, and at least three years of work experience with refrigerator shelf assemblies.”  The Board said that “under this standard, Petitioner’s witness, Mr. Schechter, does not qualify as a person of ordinary skill in the art” because “he has only worked as an engineer designing and manufacturing shelf assemblies since December 2011,” meaning that “Mr. Schechter had less than two years of experience when he signed his declaration on June 14, 2013.”  The Board also said that “Mr. Schechter was not a person of ordinary skill in the art at the time of the invention of the ‘561 patent [i.e., as of the filing date of the ‘273 provisional application].”  Thus, the Board indicated that it would “accord the testimony of Mr. Schechter regarding the alleged obviousness of the claims less weight because he was not a person of ordinary skill in the art at the time of the invention disclosed in the ‘561 patent.”

As for the obviousness challenge to claim 13 in view of Angros, Picken, and Baumann, the Board stated that because Angros was non-analogous art, it could not be used in combination with the other references (including Baumann) to support a showing of obviousness.  Accordingly, the Board determined that Petitioner had not sufficiently shown that claim 13 was unpatentable as obvious over Angros, Picken, and Baumann.

Patent Owner had proffered a secondary considerations argument, contending that “objective indicia of nonobviousness indicate that the claimed subject matter would not have been obvious.”  Nonetheless, the Board took the position that because it found Angros to be non-analogous and not combinable with the other references, the Board did not need to address Patent Owner’s evidence regarding secondary considerations of non-obviousness.

Finally, Petitioner had moved to exclude various items of evidence submitted by Patent Owner during this proceeding, contending that they were either confidential or public.  The Board dismissed Petitioner’s Motion to Exclude as moot because all of the evidence sought to be excluded related to Patent Owner’s assertions of secondary considerations of nonobviousness, and thus related to an issue that the Board did not need to reach.

SCHOTT Gemtron Corporation v. SSW Holding Company, Inc., IPR2013-00358
Paper 106: Final Written Decision
Dated: August 20, 2014
Patent: 8,286,561 B2
Before: Justin T. Arbes, Philip J. Hoffman, and Georgianna W. Braden
Written by: Braden