Takeaway: In a motion to amend, it is not the petitioner’s burden to prove that the proposed claims are anticipated by or rendered obvious by the prior art.  Instead, it is the patent owner’s burden to show persuasive evidence that the proposed claims are not anticipated by or rendered obvious by the prior art.

In its Final Written Decision, the Board found that claims 1, 4-16, 18, and 20-22 of the ’536 are unpatenable, Petitioner had not shown that claims 2, 3, 17, or 19 are unpatentable, and denied Patent Owner’s Motion to Amend and Motion to Exclude. The ’536 Patent relates to injection molding machines that inject, under pressure, injectable molding material into a mold cavity.

The Board began with claim construction, stating that the terms of the patent are given their broadest reasonable construction in light of the specification. The Board first construed “lock member” and “complementary lock member,” adopting the construction from the Decision to Institute.  The Board then construed “rod that is movable between a clamped position and a released position by a clamp assembly,” noting that the parties dispute whether the entire rod must be movable axially or whether mere stretching of the rod suffices.  The Board, reviewing the specification and dictionary definitions, determined that the limitation is not limited, as Patent Owner suggested, to a rod that is displaced axially in its entirety when it transitions from an initial state that contains a gap between lock member teeth to a final state.  The Board agreed with Petitioner that the broadest reasonable construction of the limitation includes other types of movement by the rod, including stretching.  Next, the Board construed “relatively lower flex zone” and “relatively higher flex zone,” adopting its construction from the Decision to Institute over the objection of Patent Owner.  The Board then construed “engage within/proximate to a relatively lower flex zone” consistently with the construction from the Decision to Institute.  Finally, the Board construed “biased,” agreeing with Petitioner that the term is not limited to being carried out by a spring.

The Board then turned to the grounds of unpatentability focusing first on the grounds based on Glaesener and Choi. Petitioner argued that Glaesener and Choi can be considered as a single prior art reference under 35 U.S.C. § 102(b) because Glaesener expressly incorporates Choi.  In the Decision to Institute, the Board agreed and Patent Owner disputes this fact.  The Board found it unnecessary to reach the question in this Decision because it found that even when considered as one reference, Glaesener and Choi do not teach all the recited claim limitations of claims 1-7, 12, and 17-20.  Specifically, the Board found that Petitioner did not provide adequate evidence to support the conclusion that the relied upon elements of Choi’s device secures the tie-bar nuts of Glaesener to rear wall 16 of Glaesener’s platen.  Therefore, the Board was not persuaded that Petitioner had met its burden to show that the various portions of Choi and Glaesener that were relied upon are combined in the same way as recited in the challenged claims, noting that the Federal Circuit has warned against treating claims as separate parts without considering the part-to-part relationship set forth in the claims.

The Board then reviewed Petitioner’s assertion that claims 8-11, 13-16, 21, and 22 are obvious over Glaesener and Choi. Petitioner asserted that while neither Glaesener nor Choi expressly discloses where the relatively lower flex zone is located in terms of the portions of the clock recited by the challenged claims, one of ordinary skill in the art would have had a reason to modify Glaesener and Choi as such.  However, the Board agreed with Patent Owner that Petitioner did not meet its burden of showing that a person of ordinary skill in the art would have modified Choi based on the disclosure of Glaesener to result in the subject matter of the challenged claims because the evidence supplied by Petitioner does not support the logical leap made by Petitioner.  The Board specifically found Petitioner’s rationale faulty because unknown properties of the prior art may not be relied upon to provide the rationale for modifying or combining the prior art to reach the claimed subject matter.

Next, the Board examined whether claims 1, 4-16, 18, and 20-22 are anticipated by Arend. Patent Owner first argued that Arend does not disclose the movable rod limitation as recited by claim 1, but the Board was not persuaded by this argument because it was based on Patent Owner’s erroneous construction of the limitation.  Patent Owner then argued that Arend does not disclose the relatively higher flex zone recited in claim 1.  Again, the Board was not persuaded because Patent Owner’s argument was based on its erroneous construction of “relatively higher flex zone.”  The Board also agreed with Petitioner’s expert’s conclusion that Arend inherently discloses relatively higher flex zones.  For the same reasons, the Board was also persuaded that Arend inherently discloses “relatively lower flex zones.”  Finally, the Board found that all of the other limitations in claims 1, 4-16, 18, and 20-22 are disclosed by Arend.

The Board then reviewed Patent Owner’s Motion to amend claims 1, 12, and 18 with amended claims 23, 34, and 40. Regarding claim 23, Petitioner argued that the proposed claim is anticipated by Arend.  The Board was not persuaded by Patent Owner’s arguments to the contrary.  The Board noted that the evidence of record may not rise to the level of showing required to prove inherent disclosure for anticipation, but that is not Petitioner’s burden.  Instead, it is Patent Owner’s burden to show that it is entitled to the relief requested – entry of proposed claim 23 – and Patent Owner did not point to persuasive evidence that a person of ordinary skill in the art would not realize that the rod in Arend has some axial movement.  The Board also found that Patent Owner had not met its burden with regard to claim 34 for the same reasons.  As to claim 40, Petitioner argued that it is indefinite because it identifies the same portion of the claimed platen is both “the relatively lower flex zone” and the “highest flex zone,” which is physically impossible.  Patent Owner did not address this in its Reply and stated at oral argument that one of ordinary skill in the art would have understood that the claim is talking about two different zones, but the Board found that Patent Owner did not point to any persuasive evidence that this is the case.  The Board further stated that even if it did not find the claim indefinite, Patent Owner still had not met its burden to show patentability over prior art, specifically that a person of ordinary skill would not find the claim obvious.

Finally, the Board addressed Patent Owner’s Motion to Exclude certain portions of testimony by Petitioner’s expert witness as unreliable under Daubert and Federal Rule of Evidence 702.  The Board found that Petitioner had met its threshold level of reliability and that Patent Owner did not offer credible evidence to support its assertion that Petitioner’s expert did not have sufficient knowledge of his methodology.

Athena Automation Ltd. v. Husky Injection Molding Systems Ltd., IPR2013-00290
Paper 45: Final Written Decision
Dated: October 23, 2014
Patent 7,670,536 B2
Before: Jennifer S. Bisk, Michael J. Fitzpatrick, and Georgianna W. Braden
Written by: Bisk
Related Proceedings: IPR2013-00167; IPR2013-00169