Final Written Decision Requiring Translation Affidavit for Foreign Document Submitted During Prosecution IPR2014-00283


Takeaway: A translation of a foreign document submitted during prosecution, and qualifying as a record of the Office under § 42.61(b), does not obviate the requirement of an affidavit attesting to the accuracy of the foreign document under § 42.63(b).

In its Final Written Decision, the Board found that Petitioner had shown by a preponderance of the evidence that claim 17 is unpatentable but that Petitioner did not prove that claim 26 is unpatentable. The Board also denied-in-part and dismissed-in-part the parties’ Motions to Exclude Evidence.

Petitioner had challenged several claims of the ’192 patent, but the Board only instituted inter partes review of independent claim 17 as anticipated by Tachikawa and independent claim 26 as obvious over Tachikawa and Todd. The ’192 patent relates to “flat spring drives or motors, which are useful in numerous applications and, in particular, relates to the application of such flat spring drives in window cover systems.”

Addressing claim construction, the Board stated that a claim in an unexpired patent “shall be given its broadest reasonable construction in light of the specification of the patent in which it appears.” With regard to “inherent inertia” recited in claim 17, Petitioner argued that this term should be construed to have the ordinary meaning of the word “inertia.” Patent Owner argued Petitioner was ignoring the word “inherent” and suggested that a person of ordinary skill in the art would understand the claim term “without the need for formal construction.” Reviewing the specification, the Board found that “inertia” was used consistent with the definition of the claim term that was proposed by Petitioner and that “the word ‘inherent’ does not contribute any additional meaning to the term, or change the way it would be understood by one of ordinary skill in the art.”

The Board then turned to the parties’ Motions to Exclude. Patent Owner had sought to exclude Exhibit 1002, consisting of the Tachikawa Japanese application and a purported English translation on the basis that it is admissible under 37 C.F.R. § 42.61 because Petitioner did not file an affidavit attesting to the translation’s accuracy, in violation of 37 C.F.R. § 42.6(b). Petitioner did not dispute that an affidavit was not filed but argued that certification was not necessary for admissibility under 37 C.F.R. § 42.61(b) because Patent Owner itself had filed Exhibit 1002 during prosecution of a patent application related to the ’192 patent, making Exhibit 1002 an official record of the Office. The Board, agreeing with Patent Owner, held that “§ 42.61(b) ‘does not obviate the requirement of an affidavit attesting to the accuracy of a foreign document under § 42.63(b).’” Nevertheless, considering the totality of the circumstances, the Board waived its rules to allow Petitioner five days from the date of the oral argument to file such an affidavit. Petitioner filed the affidavit, and the Board denied the motion as to Exhibit 1002.

The Board dismissed as moot Patent Owner’s Motion as to the remaining exhibits because the Board did not rely upon those exhibits in its decision.

Petitioner had sought to exclude Exhibit 2006, the Corey Declaration, as being allegedly inadmissible. The Board denied the Motion as to this exhibit, indicating that it had considered Mr. Corey’s Declaration with respect to his disagreement with Petitioner’s construction of “inherent inertia.” In particular, the Board accorded the testimony no weight because “Mr. Corey did not elaborate on it—nor did he offer an alternative construction of the term.” The Board dismissed as moot Petitioner’s Motion regarding exhibits the Board did not rely upon.

The Board then addressed the instituted grounds. With regard to anticipation of claim 17, Patent Owner argued that Tachikawa fails to disclose the limitation concerning “inherent inertia.” However, the Board agreed with Petitioner and credited Petitioner’s expert testimony that Tachikawa disclosed such a feature, and in particular that “there are three factors that cause the blinds to ‘stop at the midway position’ (i.e. maintain the position of the cover): 1) the spring torque described above, 2) the inherent inertia necessarily present in all mechanical systems, and 3) the friction that is also inherently present in mechanical systems.”

With respect to the alleged obviousness of claim 26, the Board found that Petitioner failed to prove unpatentability by a preponderance of the evidence. Petitioner had pointed to elements of claim 26 as being allegedly disclosed in Tachikawa and Todd and argued “that it would have been obvious to modify Tachikawa’s window cover system with a plurality of spring drives ‘depending on the weight and size of a window cover.’” The Board found this unpersuasive. In particular, the Board noted that “Petitioner does not explain how one of ordinary skill in the art would go about combining the elements, or what modifications one of ordinary skill in the art necessarily would have made in order to combine the elements.” The Board also indicated that Petitioner had not pointed to evidence “establishing that modifying Tachikawa to have a plurality of spring drives would have been routine for one of ordinary skill in the art.” Further, the Board refused to consider the Carlson and Foley Declarations, which were submitted with Petitioner’s Reply, to the extent they allegedly bolstered the obviousness challenge because “there is no apparent reason this information could not have been developed in the Petition.”

Therefore, the Board found that Petitioner established by a preponderance of the evidence that claim 17 is unpatentable, but that Petitioner had failed to prove that claim 26 is unpatentable.

Normal Int’l, Inc. v. Andrew J. Testamentary Trust et al., IPR2014-00283
Paper 52: Final Written Decision
Dated: June 18, 2015
Patent: 6,283,192 B1
Before: Toni R. Scheiner, Linda M. Gaudette, and Jacqueline Wright Bonilla
Written by: Scheiner
Related Matters: Hunter Douglas, Inc. v. Nien Made Enterprise Co., 1:13-cv-01412-MSK-MJW (D. Col. May 31, 2013)