Takeaway: An obviousness inquiry does not ask whether the references could be physically combined, but rather whether the claimed inventions are rendered obvious by the teachings of the prior art as a whole.
In its Final Written Decision, the Board found that all challenged claims (1-9) of the ’666 Patent are unpatentable. The ’666 Patent relates to a slide-out or retractable room for mobile living quarters.
The Board began with claim construction, stating that terms are interpreted according to their broadest reasonable interpretation in light of the specification. Petitioner did not propose any specific constructions, and Patent Owner only proposed that “engagement member mounted on a sidewall” “requires that the component providing for engagement must, after mounting, be disposed on a sidewall of the slide out room rather than below the floor of the slide out room.” The Board found that Patent Owner did not provide any evidence to support this interpretation, and construed “engagement member mounted on a sidewall” to mean that the engagement member is fixed securely to a sidewall.
The Board then reviewed the asserted grounds of unpatentability, beginning with obviousness based on Kunz and Nebel. The Board found that the principle disagreement between the parties regarding claim 1 is whether it would have been obvious, based on the disclosure in Nebel, to reposition the engagement member of Kunz from the floor to a sidewall. Petitioner argued that this would have been a simple rotation of the Kunz assembly that yields predictable results and provides improved stability, as suggested by Nebel.
Patent Owner argued that this challenge rests on the hindsight argument that it would have been obvious to move the Kunz slide units to the side wall, and that Petitioner failed to provide a plausible reason why a person of ordinary skill would ever move the Kunz side wall because Kunz itself discussed stability. The Board found that, even if the Kunz system provides improved stability, a person of ordinary skill in the art would have had reason to apply the disclosure of Nebel to further improve stability.
Patent Owner also argued that the challenges of the proposed combination resulting from “pigeon toeing,” “thick walls,” and synchronization show that the references teach away from the proposed modification. However, the Board found that these complexities are not discussed in the ’666 Patent as significant issues, and that Patent Owner’s declarant stated that “pigeon toeing is common in almost any slide out room.” The Board further noted that the obviousness inquiry does not ask whether the references could be physically combined, but rather whether the claimed inventions are rendered obvious by the teachings of the prior art as a whole.
The Board then addressed the level of ordinary skill in the art. The parties disagree on whether a bachelor of science degree is required.. The Board determined that the asserted prior art reflects the level of skill, and patentability does not depend on which parties’ definition is used.
Turning to claims 2-5, 8, and 9, which depend directly or indirectly from claim 1, the Board noted that Patent Owner did not provide any further arguments addressing the merits of these claims, therefore, the Board found they are also obvious.
Finally, the Board addressed claims 6 and 7, which are also dependent on claim 1, and the argument that these claims are obvious based on Kunz, Nebel, and Huffman. Patent Owner argued that Petitioner added Huffman to its proposed combination without articulating any reason for doing so and basing it entirely on hindsight. The Board weighed the evidence provided by both sides, including expert testimony, and determined that the proposed combination was well within the skill and creativity of a person of ordinary skill.
AL-KO Kober, LLC v. Lippert Components Manufacturing, Inc., IPR2014-00313
Paper 28: Final Written Decision
Dated: June 3, 2015
Patent 8,573,666 B2
Before: Michael J. Fitzpatrick, Barry L. Grossman, and Christopher L. Crumbley
Written by: Grossman
Related Proceeding: Lipper Components Manufacturing, Inc. v. AL-KO Kober LLC, No. 3:13-cv-697 (N.D. Ind.)