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In a recent Inter Partes Review Final Decision, the Patent Trial and Appeals Board (PTAB) held that claims 1 -13 and 16-18 of U.S. Patent No. 7,544,094 were unpatentable over a reference in view of common knowledge of a “creative” skilled artisan. The PTAB’s analysis focused not only on what the reference taught but also the inferences that may have been drawn by a person of ordinary skill in the art having creativity. PCT International, Inc. v. Amphenol Corporation, (IPR2013-00229, Paper No. 30, September 11, 2014).
The ’094 patent relates to connector assemblies with a sleeve for facilitating gripping and mating of a connector to its counterpart connector. (Paper No. 30 at page 3). One of the references relied on for obviousness grounds proffered by the petitioner, Burris, is directed to a coaxial connector torque aid, in the form of a tubular grip element installed over a conventional coaxial connector to facilitate tightening of the connector onto an equipment port by hand. (Paper No. 30 at pg. 18). The parties did not dispute that the Burris reference discloses each and every element of claims 1 and 10 of the ‘094 patent except for the recited retaining member which is “configured to substantially prevent axial movement of the electrical connector.” However, the petitioner asserted that this would have been obvious in view of the Burris reference’s rib, which serves to increase the wall thickness (i.e. the strength of tubular grip element), and prevent the collapse of tubular grip element against the connector body as a user rotates tubular grip element.
The patent owner, on the other hand, disputed that Burris’ rib either retains or prevents axial movement of the electrical connector and disputed that it would have been obvious to modify Burris to use a retaining member. Specifically, the patent owner argued i) a person of ordinary skill in the art would not consider Burris’ rib as corresponding to a “retaining member,” ii) placing the rib inside the tubular grip as a retaining member is a product of hindsight, and iii) a person of ordinary skill in the art would not be motivated to modify Burris because the tubular grip is press-fit onto the nut, and thus, adding a retaining member would render superfluous the press-fit engagement. Paper No. 30 at pages 22-24.
In response to the patent owner’s above arguments, the PTAB found that even though the function of the rib structure disclosed in Burris is to provide support, not to retain the electrical connector or prevent axial movement, the Burris reference does teach providing a structure in the inner bore of a sleeve. Because the problem of losing connector parts and user safety concerns with regards to lost connector parts were well known, it would have been in the course of creative application of known techniques and mechanical elements to arrive at a tubular grip that included a retaining member for retaining the electrical connector or for preventing axial movement. As an example to support this conclusion, PTAB referred to another reference, Smith, that included a flange inside a sleeve as a retaining member. (Paper No. 30 at pgs. 21 and 22)
When obviousness is at issue in a Patent Office trial (i.e., IPR, CBM, PGR), the PTAB is willing to consider challenges known to a “creative” artisan at the time of invention as a reason to modify the prior art. This decision shows that, consistent with KSR v. Teleflex, the PTAB is open to finding obviousness even without an explicit reason to modify the prior art.