Takeaway: A petitioner’s stated rationale to combine certain prior art may be found unpersuasive where the purported motivation is predicated on solving a problem already addressed by the same prior art.
In its Decision, the Board denied institution of inter partes review of claims 1-3 of the ‘502 patent. The ‘502 patent is titled “Vehicle Arresting Blocks, Beds And Methods” and “relates to arresting the forward motion of vehicles, such as aircraft overrunning a runway.”
The Board first addressed claim construction under the broadest reasonable construction in light of the specification. However, for purposes of its decision, the Board gave “all claim terms their ordinary and customary meaning as would be understood by a skilled artisan in light of the Specification of the ’502 patent.”
The Board gave an overview of the prior art: “Gwynne describes examples of foam arresters that are ‘suitable for airfields where overrun hazards exist, for arresting aircraft safely without overstressing undercarriage units due to the foam drag loads.’” “Brubaker ’917 relates to ‘structures which will absorb the impact energy of a moving object [and, specifically,] directed to use of ceramic foams . . . as energy absorbing materials, to cover rigid members, such as highway structures.’” “Angley ’025 ‘relates to . . . cellular concrete arresting bed systems to safely decelerate an aircraft which runs off the end of a runway.’”
The Board next turned to obviousness over Gwynne and Brubaker ‘917. Petitioner acknowledged “that Gwynne does not disclose ceramic foam,” but asserts that “a person of ordinary skill in the art would have reason to substitute [Gwynne’s] urea formaldehyde foam for [Brubaker ‘917’s] ceramic foam” “to increase the durability and useful life of the vehicle arresting unit of Gwynne . . . [as] it was desirable to design and manufacture a vehicle arresting unit with materials that were resistant to water absorption.” The Board was not persuaded, concluding “that Petitioner has not demonstrated that the proposed modification of Gwynne—which replaces Gwynne’s urea formaldehyde foam with Brubaker ’917’s ceramic foam—is supported by adequate reasoning based on rational underpinnings.” In particular, Petitioner’s proposed rationale, “ignores the fact that Gwynne’s arrester already has a weatherproofing seal, which addresses the problem of water intrusion.” And Petitioner “does not explain adequately why a skilled artisan would maintain Gwynne’s weatherproofing seal as a part of a structure while also incorporating Brubaker ’917’s water insoluble ceramic foam.” Thus, because the Board was “not persuaded that water intrusion is a problem in Gwynne’s arrester system, [the Board was] not persuaded by Petitioner’s proffered rationale that a person of ordinary skill in the art would replace Gwynne’s urea formaldehyde foam with ceramic foam.”
The Board next addressed obviousness over Angley ‘025 and Brubaker ‘917. Patent Owner argued that Petitioner’s motivation for modifying Angley ’025 “runs completely counter to the teachings of Angley ’025, as Angley ’025 itself teaches persons skilled in the art how to achieve uniform material characteristics for cellular arresting beds.” The Board agreed:
[P]etitioner has not presented persuasive reasoning for replacing Angley ’025’s pre-cast cellular concrete blocks with Brubaker ’917’s ceramic foam that is based on rational underpinnings. KSR, 550 U.S. at 418. Petitioner’s proffered reasoning—to improve Angley ’025’s supposed non-uniformity problem—relies on Angley ’025’s discussion of non-uniformity that existed in previous cellular concrete productions. . . . As pointed out by Patent Owner, Angley ’025’s disclosure is directed to correcting thisprevious non-uniformity problem through the use of pre-cast cellular concrete blocks, which allow for strict quality control of the material uniformity. . . . Therefore, Petitioner’s stated rationale for combining Brubaker ’917 and Angley ’025 is predicated on solving a problem already addressed by Angley ʼ025.
Thus, the Board denied institution of inter partes review.
Runway Safe LLC v. Engineered Arresting Systems, IPR2015-01921
Paper 9: Decision Denying Institution of Inter Partes Review
Dated: February 29, 2016
Patent: 7,597,502 B2
Before: Josiah C. Cocks, Thomas L. Giannetti, and Michael L. Woods
Written by: Woods