Takeaway: A motion to amend must explain the patentability of the proposed substitute claims over the prior art for which trial was instituted.

In its Final Written Decision, the Board determined that Petitioner had shown by a preponderance of the evidence that claims 1-10 of U.S. Patent No. 6,443,094 are unpatentable and also denied Patent Owner’s contingent Motion to Amend.

The ’094 patent generally relates to an apparatus for automatically sanitizing the udder of a cow after it has been milked. The system is implemented on a circular, rotating milking parlor.

The Board began its analysis with claim construction. In its Decision, the Board expressly interpreted only those terms that it determined required analysis to resolve arguments related to the patentability of the challenged claims. The remaining claim terms were “accorded their ordinary and customary meaning as would be understood by one of ordinary skill at the time of the invention.” In this case, the Board considered the proper interpretation for the terms “stalls passing by said cleaning location” and “a plurality of milking stalls arranged on a moving platform.” With respect to the first term, the Board rejected Patent Owner’s argument that “passing by” requires continuous movement. For the second term, the Board agreed with Petitioner that this phrase from the preamble provided a structural limitation in claim 1.

The Board then considered Petitioner’s arguments concerning anticipation and obviousness. The Board generally rejected Patent Owner’s arguments with respect to both anticipation and obviousness of the challenged claims. With respect to obviousness and level of ordinary skill in the art, however, the Board concluded that it “need not resolve the parties’ dispute over the level of ordinary skill because [its] obviousness determination would be the same under either standard.” After reviewing all of the challenged claims, the Board concluded that Petitioner had established unpatentability by a preponderance of the evidence.

Finally, the Board denied Patent Owner’s Motion to Amend. In the Motion to Amend, Patent Owner proposed substitute claims that required “said stalls passing by said cleaning location in continuous motion throughout the milking cycle.” Patent Owner’s motion “does not address the patentability of the proposed claims over the prior art for which trial was instituted. . . .,” and the Board concluded that the “failure to address the art of record is fatal to its motion.”

Accordingly, the Board ordered that claims 1-10 of the ’094 patent were unpatentable and Patent Owner’s Motion to Amend was denied.

Delaval Int’l AB v. Lely Patent N.V., IPR2013-00575
Paper 42: Final Written Decision
Dated: February 20, 2015
Patent: 6,443,094 C2
Before: Toni R. Scheiner, Benjamin D.M. Wood, and Scott E. Kamholz
Written by: Wood
Related Proceedings: Daritech, Inc. v. Green Source Automation, LLC, Case No. 1:11-cv-156 (C.D. Cal. Jan. 27, 2011); 90/011,755 and 90/012,285; U.S. Appl. No. 14/476,979.