Takeaway: In a motion to amend, there is no requirement for a patent owner to analyze expressly every individual reference cited during prosecution of the challenged patent. A patent owner can group references together according to their particular teachings without having to present on each and every reference giving rise to that same teaching.

In its Final Written Decision, the Board found that the challenged claims (1-5) of the ’897 Patent are unpatentable, and granted Patent Owner’s Motion to Amend to add substitute claims 6-10. The ’897 Patent is drawn to a method of handling a wheel of a motor vehicle while the vehicle is elevated on a hydraulic lift or hoist for repair by a service technician.

The Board began with claim construction, stating that both the terms of the original claims and the substitute claims are construed in light of their broadest reasonable interpretation. Regarding original claims 1-5, the Board maintained its earlier construction that the claims do not require a narrow construction where the wheel must be removed from the vehicle before being placed on the support arm. The Board noted that the substitute claims introduce new terminology. First, the substitute claims use the term “hanging” instead of “placing,” and the Board adopted the dictionary definition of “hanging.” Additionally, Patent Owner argued that the transitional phrase “consisting essentially of” should be construed as equivalent to “comprising.” The Board agreed with the caveat that any additional unlisted steps do not have a material effect on the basic and novel characteristics of the claimed method.

Regarding the original claims, the Board noted that it its Decision on Institution, it found Petitioner’s analysis of the prior art persuasive. Patent Owner did not rebut this analysis and elected not to file a Patent Owner Response. During oral argument, Patent Owner conceded that the original claims are not patentable. Therefore, the Board found that the original claims are unpatentable.

The Board then reviewed the Motion to Amend. Petitioner first argued that the Motion to Amend does not comply with the requirements of 37 C.F.R. § 42.121 because the proposed amendment enlarges the scope of the claims and lacks adequate written description support in the specification. Petitioner argued that substitute claim 9, which amends claim 4, is broader than claim 4 because it deletes the requirement that the individual “does not have to bend significantly at the waist to guide the wheel over the hanger.” However, the Board noted that this limitation is in the independent claim, therefore, the amendment does not enlarge the claim scope. Petitioner also argued that Patent Owner failed to provide written description support for its use of the term “human” in the proposed claims, because the specification only refers to a “worker.” The Board noted that the specification refers to an “individual,” and that the original claims refer to a “person” and an “individual.” Therefore, the Board was not persuaded that the proposed amendments lack written description support.

Next, the Board turned to the merits of whether Patent Owner had met its burden of establishing patentability of the proposed substitute claims over the prior art. The Board focused on the prior art of record, and noted specifically that there is no requirement for a patent owner to analyze expressly every individual reference cited during prosecution of the challenged patent. A patent owner can group references together according to their particular teachings without having to present on each and every reference giving rise to that same teaching. The Board specifically found that Patent Owner complied with its duty of candor in addressing relevant prior art in this case by grouping together Conrad, Marion, and Wuethrich. Therefore, the Board found that the arguments focus on three prior art references – Komorita, Heidle, and Conrad.

Patent Owner acknowledged that, when viewed individually, the steps recited by substitute claim 6 were known in the art. However, Patent Owner argued the claimed method as a whole is patentable because the combination of the recited steps would have run counter to the prevailing wisdom at the time of the invention. The Board acknowledged the simplicity of the invention, but found relevant the purpose of the claimed method, which entails the removal and replacement of a wheel on an elevated vehicle without requiring the person handling the wheel to bend over. The Board noted that neither Conrad, Marion, Anderson, or Wuthrich recognizes a desire to reduce bending over, as required by the claimed method.

Regarding Komorita, the Board was persuaded by Patent Owner’s argument that Komorita teaches placing the wheel in a cradle, not hanging the wheel on the support arm. The Board also was not persuaded that a skilled artisan would have been led to modify Komorita with a known tire hanger.

The Board also agreed with Patent Owner that Heidle teaches neither the sequential “order” of the steps recite din claim 6, nor the steps of “carrying the wheel to the support arm, wherein the human carries the entire weight of the wheel.”

Shinn Fu Company of America, Inc. and Shinn Fu Corporation v. The Tire Hanger Corporation, IPR2015-00208

Paper 24: Final Written Decision

Dated: April 22, 2016 Patent 6,681,897 B2

Before: William V. Saindon, Barry L. Grossman, and Carl M. DeFranco

Written by: DeFranco

Related Proceeding: The Tire Hanger Corporation v. My Car Guy Concierge Services Inc. dba Hoist Hanger, No. 5:14-cv-00549 (C.D. Cal.)