In IPR2015-00208, Shinn Fu petitioned for IPR of USPN 6,681,897 owned by Tire Hanger. All five claims of the patent were drawn to methods of supporting vehicle wheels removed from a vehicle while on a service lift, wherein the supports would allow technicians to remove and replace the wheels without risking back injury by bending. By all accounts, Shinn Fu mounted a strong attack against all claims in the ‘897 patent, and the PTAB instituted review. Foregoing a dogged defense of the granted claims, Tire Hanger maintained a clear head and responded to the petition by filing a contingent motion to amend the claims rather than a Patent Owner Response. The PTAB acknowledged Tire Hanger’s failure to defend its claims and held claims 1-5 unpatentable. The PTAB also granted Tire Hanger’s motion to amend after finding substitute claims 6-10 no broader than claims 1-5, adequately supported by the application-as-filed, and free of the art of record. Tire Hanger and its counsel, by thinking clearly and demonstrating a willingness to make the hard decisions, turned a lost cause into a winner, emerging from the IPR with claims slightly narrower than originally granted.

Shinn Fu petitioned for IPR of the ‘897 patent, mounting several prior art attacks on all five issued claims. In response, Tire Hanger chose not to file a Patent Owner Response and, thus, claims 1-5 were held unpatentable as a matter of law because Shinn Fu’s facts were admitted for failure to specifically deny them and because Tire Hanger’s lack of response waived any patentability arguments.

Instead of filing a Patent Owner Response, Tire Hanger filed a contingent motion to amend the claims of the ‘897 patent by substituting claims 6-10 for claims 1-5. With respect to substitute claims, the PTAB rules allow substitution of a reasonable number of claims for abandoned claims, but the claims cannot be broadened, the claims must respond to a ground of unpatentability identified in the institution decision, and the burden is on the patentee to establish patentability. Moreover, substitute claims, in contrast to granted claims, can be challenged on non-art grounds, in a manner analogous to European opposition proceedings. See IPR2013-00120. Shinn Fu predictably argued that the substitute claims were broadened over the original claims and argued inadequate written description. In particular, Shinn Fu argued that claim 9, substituted for claim 4, lacked the limitation of wheel removal without the human bending over. The PTAB found that claim 9 depended from substitute claim 6 which contained the limitation in question and, thus, the limitation was imported into claim 9 by claim dependency. See 35 U.S.C. § 112, fourth paragraph (pre-AIA). The PTAB found that the substitute claims contained several new limitations (i.e., performing recited steps in order, having a human carry the entire wheel weight in moving the wheel from the vehicle to the support arm, and hanging the wheel by guiding a hole in the wheel over the support arm and releasing the wheel), in addition to all of the original claim limitations.

[C]laim 6 is proposed as a substitute for original claim 1 and incorporates the same five steps as original claim 1, while adding several new limitations not found in the original claims.

Accordingly, the PTAB concluded that the substitute claims were not broader than the original claims. Shinn Fu’s challenge on written description grounds was also weak in asserting that “human,” recited in the substitute claims, was not described in the application-as-filed, which referred to individuals and workers. The PTAB found that a reasonable interpretation of the specification provided descriptive support for “human.”

The remaining issue was whether Tire Hanger met its burden of showing the patentability of the substitute claims over the prior art. The PTAB recognized that patentee was required to establish patentability over the art of record and any art of which it was aware, but it could group similar art and need not treat each piece of art individually. At issue were a number of references disclosing various styles of support arms for securely mounting vehicle wheels anywhere on a display wall. Thus, Tire Hanger’s treatment of a representative number of duplicative references was found to adequately establish patentability over all art in that group. Tire Hanger conceded that most of the steps of independent claim 6 were disclosed in the prior art, but asserted that the art did not disclose or suggest a human carrying a wheel and hanging it on a support arm without bending. The PTAB focused on the purpose of the claims, i.e., to prevent back injury while removing or replacing wheels from vehicles on lifts (i.e., hoists). None of the collection of references disclosing supports for wall-mounting wheels disclosed or suggested arranging the support to avoid having a human bend to place the wheel on the support. Thus, the claims were not the result of simply slapping a known wheel hanger on an automotive lift and the PTAB was not convinced that it would have been obvious to attach a known wheel hanger on a lift in the claimed arrangement that placed the support on the lift at about the same height as the wheel. One reference (i.e., Komorita) that did disclose a wheel hanger on a lift placed the wheel in a cradle with support under the wheel and was distinguished from the claim-recited hanging of the wheel, consistent with the distinction made in the specification of Tire Hanger’s patent Further, the PTAB found that Komorita’s wheel cradle attached to a lift had additional disclosed advantages (capacity to hold multiple wheels and lug nuts) that would be lost if a hanging arm were substituted for the cradle. Thus, there was no reason to modify the cradle to arrive at the claimed hanging arm. A second reference (i.e., Heidle) involved a mobile gantry that could be used in conjunction with a lift, but the reference taught its advantages as avoiding the need for a human to carry a vehicle wheel and, therefore, didn’t meet the claim limitation requiring a human to carry the wheel between its location on the vehicle and the support arm. In conclusion, the PTAB found the substitute claims were drawn to using a tire hanger on a specific structure (a lift) in a specific manner (arranging the support at about the height of the wheel on the vehicle) for a specific purpose (avoiding requiring the human to bend) and this rose to the level of a novel and non-obvious method in view of the art under consideration. Because substitute claims 7-10 depended from claim 6, they too were patentable. As a consequence, the PTAB held claims 1-5 unpatentable and granted patentee’s motion to substitute claims 6-10.

This case illustrates the value of clear thinking and a willingness to recognize and jettison losing positions in an IPR. Faced with the reality that an IPR had been instituted against all claims in its ‘897 patent, Tire Hanger abandoned those claims in favor of a substitute set of claims that narrowed the claims in relatively insubstantial ways that nonetheless provided a basis for a winning argument of patentability over the art of record. Shinn Fu, the petitioner, had mounted a strong case against the claims in the ‘897 patent, but it fell short in going beyond attacking what claims were in the patent to preparing an attack on what claims could be in the patent, a potentially daunting task.