Takeaway: Any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.

In its Final Written Decision, the Board found that Petitioner had shown by a preponderance of the evidence that claims 16 and 17 of the ’417 Patent are unpatentable. At the same time, the Board found that Petitioner had not proved by a preponderance of the evidence that claims 7 and 10 of the ’417 Patent are unpatentable.

Petitioner had requested inter partes review of claims 1, 2, 4, 5, 7, 10, 12–14, 16, and 17 of the ’417 patent. Patent Owner then disclaimed claims 1, 2, 4, 5, and 12-14. Thus, the Board instituted trial for claims 7, 10, 16, and 17.

The ’417 patent is directed to a vegetation cutter in the form of a string trimmer. A motor is supported within a housing of the device by a mounting plate, “without the need for a plurality of ribs to be formed on interior surfaces of the housing of the string trimmer.”

The Board began with a claim construction analysis. Petitioner had argued that the claim term “fixedly secured” should be interpreted to mean “securely placed or fastened.” The Board found this proposal to be inconsistent with the plain meaning of the word “fixedly” as interpreted in light of the specification, and instead interpreted “fixedly secured” to mean “fastened such that relative movement is prevented.” The Board also construed other claim terms, including “groove,” “without the need for direct contact,” “without contacting,” and “bracket member.” The Board determined that the preamble of claim 16 – “A method for assembling an outdoor power tool” – was not a limitation.

As for Petitioner’s asserted ground that claims 7 and 10 are unpatentable under 35 U.S.C. § 103(a) as obvious over Laverick and Mack, the Board concluded that Petitioner had not adequately shown that the combination of Laverick and Mack included the “fixedly secured” claim limitations. In doing so, the Board noted that “Petitioner acknowledged having no evidence to support its position, but argued that ‘common sense’ was sufficient ‘in lieu of expert testimony’ under KSR.”

Regarding Petitioner’s contention that claims 16 and 17 are unpatentable under 35 U.S.C. § 103(a) as obvious over Mack, the Board first of all concluded that Mack was analogous art. The Board then addressed Patent Owner’s argument that Mack fails to disclose or suggest a method for assembling an outdoor power tool. Ultimately, the Board was not persuaded by Patent Owner’s position on this issue, finding that “claim 16 is not limited to a method for assembling an outdoor power tool” (because this recitation was set forth in the claim preamble, which during claim construction the Board found to be non-limiting).

Positec USA, Inc. and RW Direct, Inc. v. Black & Decker Inc., IPR2013-00502
Paper 35: Final Written Decision
Dated: January 29, 2015
Patent: 5,544,417
Before: Brian J. McNamara, Richard E. Rice, and Carl M. DeFranco
Written by: Rice