Indiana Intellectual Property Law News
The Petitioner, Lippert Components, Inc. (“Lippert”), filed a Petition for inter partes review of claims 12 and 13 of Days Corporation’s (“Days”) United States Patent No. 6,619,693 B1 (the “‘693 Patent”) for “Apparatus and
Method for Automatically Leveling an Object”. In addition to filing its Reply and Sur-Reply to the inter partes review, Days also filed a Motion to Amend the ‘693 Patent. Days also filed a Motion to Exclude Evidence prior to the oral hearing. The United States Patent Trial and Appeal Board (the “PTAB”) determined claims 12 and 13 of the ‘693 Patent are unpatentable, denied Days’ Motion to Amend, and dismissed Days’ Motion to Exclude as moot.
The ‘693 Patent “discloses an apparatus for automatically leveling a vehicle, such as a recreational vehicle, that is located on uneven terrain or an out-of-level surface.” The vehicle to be leveled contains four adjustable legs that can be manually lowered and raised to achieve a feeling of true level relative to horizontal in the interior of the vehicle. The leveling process can also be performed automatically with the use of a controller. The person having ordinary skill in the art for the Court’s analysis was found to be a person having “either a bachelor’s degree in engineering, preferably mechanical or electrical, or at least five years of work experience in the field of vehicle leveling systems and related equipment.”
The PTAB interpreted the claims 12 and 13 of the ‘693 Patent using the “broadest reasonable construction in light of the patent’s specification.” See 37 C.F.R. § 42.100(b) (2018). The term “reference level plane”, when referring to a pre-set vehicle orientation plane, may be construed to be a plane in which the vehicle feels at true level to horizontal. In claims 12 and 13, there are two identical “Sensor Limitations”. Those Sensor Limitations are “a sensor . . . to sense pitch and roll of the vehicle relative to a reference level plane,” and “the sensor produces an orientation signal representing the vehicle pitch and roll.” In this case, the PTAB agreed with Lippert in that when construed “under the broadest reasonable construction in light of the ‘693 patent specification, claims 12 and 13 do not require the sensor to be aligned directly along the vehicle’s longitudinal and lateral axes.” The PTAB further stated that “[c]onstruing claims 12 and 13 to be limited to a sensor that must be aligned directly along the vehicle’s longitudinal and lateral axes would improperly incorporate a limitation into the claims from the specification.”
Lippert claimed the ‘693 Patent was anticipated by Uriarte pursuant to 35 U.S.C. § 102(b). Under 35 U.S.C. § 102(b), a patent claim is unpatentable “if each and every limitation is found either expressly or inherently in a single prior art reference.” WhitServe, LLC v. Computer Packages, Inc., 694 F.3d 10, 21 (Fed. Cir. 2012) (quoting Celeritas Techs., Ltd. V. Rockwell Int’l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998). Uriarte discloses “[a] system for automatically leveling a vehicle, such as a recreational vehicle.” While Days claimed that the Uriarte Patent is not enabling, and therefore the ‘693 Patent could not be anticipated by the Uriarte Patent, the Court held it was enabling. The Court further held the Uriarte Patent disclosed each and every limitation of claims 12 and 13 of the ‘693 Patent and as such those claims are unpatentable as anticipated by Uriarte under 35 U.S.C. § 102(b).
Lippert next “asserts claims 12 and 13 of the ‘693 patent are unpatentable under 35 U.S.C. § 103(a) as having been obvious over Uriarte and Fukumoto.” When analyzing obviousness, “[i]f the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains”, the patent claim is unpatentable under 35 U.S.C. § 103. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The Court looks to four factual determinations when determining obviousness. Those determinations include “(1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness, if made available in the record.” See Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). Lippert further asserted “claims 12 and 13 of the ‘693 patent are unpatentable under 35 U.S.C. § 103(a) as having been obvious over Fukumoto and Uriarte.” The Court held the “order of references in an obviousness challenge is irrelevant” and thus claims 12 and 13 are still unpatentable under 35 U.S.C. § 103(a). See, e.g., In re Bush, 296 F.2d 491, 496 (CCPA 1961).
After finding claims 12 and 13 of the ‘693 Patent unpatentable, the Court discussed Days’ Motion to Amend any claim found unpatentable. The Court held that Days did not meet “its burden of production in asserting that proposed claims 15 and 16 have written description support in the original application.” First, Days did not make all arguments for the requested relief in its Motion to Amend. Second, the burden of production may not be met with “mere string citations to an original application’s disclosure without explanation.” The Court further held that proposed claims 15 and 16 are unpatentable as obvious over Uriarte, Hanser, and Amelotte and further unpatentable over Uriarte, Fukumoto, Hanser, and Amelotte.
The decision was from the USPTO, Patent Trial and Appeal Board before Scott A. Daniels, Barry L. Grossman and George R. Hoskins, Administrative Patent Judges, dated September 24, 2019.