Shaw Industries Group, Inc. v. Automated Creel Systems, Inc.
In a final written decision for two consolidated inter partes review (IPR) proceedings, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB, the Board) ruled that some of the challenged claims were patentable and some were unpatentable, finding that two proposed reference combinations did not render obvious certain of the claims because a person having ordinary skill in the art would not have been motivated to combine the references. Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., Case Nos. IPR2013-00132 and IPR2013-00584 (PTAB, July 24, 2014) (Arbes, APJ).
The patent at issue is directed to a system for providing an uninterrupted stream of stranded material such as yarn to a machine for subsequent processing. Specifically, the patent describes a mechanism for providing a “pre-configured supply of materials, carried on movable carts, or cartridges” for loading onto a stranded material creel. The dependent claims at issue describe systems having two types of bobbin transfer capabilities: across-frame and same-side.
The petitioner Shaw Industries presented two obviousness combinations: Munnekehoff with Ligon and Barmag with Ligon. The primary references, Munnekehoff and Barmag, each disclosed across-frame bobbin transfer arrangements with multiple 90-degree turns to guide the threaded material to the desired textile machine. Ligon disclosed both types of claimed bobbin transfer arrangements. However, Ligon taught that multiple sharp turns within a material path will increase the chances of material breakage. Accordingly, Ligon disclosed a reduced-bend material path that is generally in-line. Because the two primary references shared similar across-frame arrangements, the Board applied the same analysis to both combinations.
Shaw argued that “common sense” would drive a skilled artisan to combine the same-side arrangement of Ligon with the across-frame arrangement of the primary references. The Board disagreed, citing two reasons. First, the Board explained that short of a complete redesign, the combination would result in an inoperable assembly due to entanglement. Despite Shaw’s objection, the Board relied in part on the entanglement testimony of the inventor to reach this conclusion because it did not conflict with evidence in the record. Second, the Board explained that Ligon expressly discourages the type of sharp turns present in the primary references, and a skilled artisan would not have been motivated to combine them.
Shaw bolstered its “common sense” argument with two proposed redesigns. The Board found that the references did not disclose the addition of a new guide tube, which was Shaw’s first proposed design change, or reversing the rotation of bobbins after one sequence, which was Shaw’s second proposed design change. In any event, the Board noted that Shaw’s proposed design changes were not admissible because Shaw presented them for the first time in a reply brief.
As to the motivation to combine, the Board concluded that the primary references use multiple sharp turns for guiding thread and that Ligon “discourages the use of sharp turns.” Because Ligon’s teachings against the use of sharp turns were deemed to be its “primary objective,” the Board concluded that a skilled artisan would not be motivated to combine the references based on other secondary aspects of Ligon.