Takeaway: The Board was persuaded in a Request for Rehearing that it had misapprehended the significance of an argument in the Petition, and based on its reconsideration, instituted a trial.

In its Decision, the Board granted Petitioner’s Request for Rehearing of the Board’s decision denying institution of inter partes review on all of the challenged claims (8, 9, 11, 14-16, 22, and 32) of the ’446 patent. Petitioner had alleged in its Petition that the relevant claims are obvious over Watabe and Gordon. Petitioner had also relied upon an Agilent Brochure. In its Decision on Institution, the Board adopted the claim constructions set forth in its decision instituting inter partes review in IPR2013-00364, which also dealt with the ’446 patent. Representative claims 8 and 9 in this hearing further limit the “detector means” of independent claim 1, which was found to be anticipated by Watabe in IPR2013-00364. In its Decision on Institution, the Board found that Petitioner had only argued that a person of ordinary skill in the art could have modified Watabe, not why one of ordinary skill would have done so. 

The difference between claims 8 and 9 and Watabe is that Watabe does not explicitly describe the specific detectors called for by those claims. The record established that those specific detectors were known, and Patent Owner did not argue that Gordon failed to describe the detector. Petitioner argued that the Gordon optical sensor could easily have been substituted for the Watabe optical sensor, with the result being the same. Patent Owner argued that Watabe and Gordon cannot be combined, because it is non-analogous art.

The Board found that Watabe and the ’446 solve essentially the same problem. To solve its identified problem, Watabe uses a sensor that Patent Owner refers to as a detector. Watabe establishes characteristics for the detector, but leaves it to those skilled in the art to use an appropriate detector. The Board found in its decision to grant the Request for Rehearing that the detectors in the Agilent Brochure and in Gordon would have been recognized by one skilled in the art as being suitable for use as the Watabe sensor, and thus the facts fit within the framework set out by KSR that it is obvious to combine known elements according to known methods. At this stage in the proceeding, there is no evidence that Patent Owner’s combination leads to an unpredictable result or that the Patent Owner’s combination performs any new function compared to the Watabe apparatus. Thus, the Board determined that the combination of references put forth by Petitioner in its Petition was enough to establish a reasonable likelihood of obviousness based on the current record.

The Board fully considered Patent Owner’s argument that a person having ordinary skill in the art “would not look to Gordon,” but determined that this argument is undermined by Supreme Court patent jurisprudence and that Watabe refers one of ordinary skill in the art to the use of sensors and leaves it to that person to determine which sensor would be appropriate.

In the Request for Rehearing, Petitioner explained that the Non-Institution Decision overlooked Petitioner’s argument that Watabe itself, even without the support of expert testimony, provides sufficient rationale to show a reasonable likelihood that a person of ordinary skill in the art would have found it obvious to combine the teachings of Watabe and Gordon. The Board agreed that it had misapprehended the significance of this argument in the Petition. Finally, the Board determined that Petitioner had established aprima facie case of obviousness, and that although the case could be overcome, when Patent Owner has an opportunity to present evidence, the decision whether to institute is made before Patent Owner has that opportunity.

Handi Quilter, Inc. and Tacony Corp. v. Bernina International AG, IPR2014-00270
Paper 17: Decision Granting Request for Rehearing and to Institute Inter PartesReview
Dated: December 30, 2014
Patent 6,883,446 B2 
Before: Fred E. McKelvey, Jennifer S. Bisk, and Michael J. Fitzpatrick
Written by: Per Curiam
Related Proceedings: IPR2013-00364; Bernina International AG v. Handi Quilter, Inc., No. 2:12-cv-07079-JD (E.D. Pa.); Bernina International AG v. Tacony Corporation, No. 2:13-cv-01787-JD (E.D. Pa.)