Takeaway: An attempt to antedate a reference by showing an earlier conception of the invention may fail where the relied-upon inventor testimony does not allege conception of all of the limitations of the claim in question.

In its Final Written Decision, the Board found that each of challenged claims 1-5 and 7-9 is unpatentable. Particularly, the Board concluded that Petitioner had proven by a preponderance of the evidence that claims 1-5 and 7-9 would have been obvious over each of two combinations of references: (1) the combination of Bajic, Nelson, and Knoll ’113, and (2) the combination of Bajic, Nelson, and Pfahler.

The ‘517 patent relates to an automated vehicle seat insert designed to provide temperature and ventilation control to a person sitting in the seat. In conducting its analysis, the Board construed the claim term “duct” to mean “an opening extending through a cushion” and construed the claim term “cavity” to mean “an inset.”

As for the first combination of references, Patent Owner had argued that Knoll ‘113 was not prior art under 35 U.S.C. § 102(e) as Petitioner had alleged. Patent Owner’s basis for this argument was its assertion that inventors for the ‘517 patent had conceived of the invention prior to the alleged § 102(e) prior art date of Knoll ‘113, which was January 30, 2006.

In particular, Patent Owner had asserted that “the ‘517 patent claim elements allegedly present in Knoll ’113 . . . were conceived by the ’517 patent inventors at least five days earlier, on January 25, 2006” and that “embodiments were diligently reduced to practice at least as early as February 28, 2006.” Patent Owner attempted to support this position by relying upon “declarations from two of the four named inventors, Marinko Lazanja and Ed Marlovits” allegedly corroborated by “the testimony of four non-inventor witnesses: Tim Normand and Margaret Krzywinski, who worked with the Inventors in 2005–2006; Scott Chapple, the Inventors’ patent attorney; and Michael Gutierrez, a specialist in electronically stored information forensics.”

The Board‘s analysis of these positions determined that there was not “sufficient evidence that, prior to January 30, 2006, the Inventors conceived of a seat cushion having a duct extending through it and within which one or more air movers are configured to fit.” In particular, the Board concluded that arguably the inventors had not even alleged such conception, finding “significant the absence of a clear statement regarding the conception of [mounting the fans within ducts cut into the seat foam], particularly when compared with the affirmative statements made regarding the conception of other limitations in claim 1.” Thus, the Board was “not persuaded that [Patent Owner had] met its burden of coming forward with evidence that the Inventors conceived of a seat cushion having a duct extending through it and within which one or more air movers are configured to fit prior to January 30, 2006” and “because [Patent Owner had] not come forward with sufficient evidence to rebut [Petitioner’s] showing that Knoll ’113 predates the earliest filing date on the face of the ’517 patent, [the Board was] persuaded that [Petitioner had] has met its overall burden to demonstrate that Knoll ’113 constitutes prior art to the ’517 patent.”

As for the second combination of references, the Board agreed with Petitioner that Petitioner had shown by a preponderance of the evidence that claims 1-5 and 7-9 would have been obvious over Bajic, Nelson, and Pfahler. In doing so, the Board found that the combination of Bajic and Pfahler would have been obvious even though it “may have presented disadvantages[.]” Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the motivating benefit comes at the expense of another benefit . . . should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another.”).

IGB Automotive Ltd. and I.G. Bauerhin GmbH v. Gentherm GmbH, IPR2014-00664
Paper 29: Final Written Decision
Dated: September 28, 2015
Patent: 8,360,517 B2
Before: Josiah C. Cocks, Benjamin D. M. Wood, and Richard E. Rice
Written by: Wood
Related proceedings: W.E.T. Automotive Systems, Ltd. v. IGB Automotive Ltd., Civ. No. 2:13-CV-11536-AJT-PJK (E.D. Mich.)