Takeaway: A prior art reference in a separate field of endeavor will be found to be non-analogous art unless it is pertinent to the entire problem being solved by the challenged patent.

In its Final Written Decision, the Board concluded that Petitioner had not shown by a preponderance of the evidence that any of the challenged claims of the ’561 patent are unpatentable. Also, the Board dismissed Petitioner’s Motion to Exclude.

Petitioner had challenged claims 2-4, 7-10, 14-18, 22, 23, 26, 27, 29, 30, 33-40, 42-45, 48-51, 54-59, 63, and 64 of the ’561 patent, which relates to shelving that may be used in refrigerators. Such shelving has “a top surface with a hydrophobic surface arranged in a spill containment pattern . . . intended to act as a barrier to prevent spilled liquid from spilling onto other surfaces.”

At least some of the challenged claims depend from independent claim 1, which although not challenged in the instant proceeding, was found to be unpatentable at the request of Petitioner in related IPR2013-00358. The grounds of unpatentability for which trial was instituted in the instant were obviousness under 35 U.S.C. § 103(a) in view of Angros and Picken; and obviousness under 35 U.S.C. § 103(a) in view of Angros, Picken, and Baumann.

Beginning with claim construction, the Board in this proceeding adopted the interpretations that had been used for the claim terms “shelf panel” and “majority of the surface area of said top surface of the shelf panel is not hydrophobic” in related IPR2013-00358. The Board also interpreted “generally in the plane of said top surface” and “leaving the majority of the surface area of said top surface of the panel non-hydrophobic.” All other claim terms were given their ordinary and customary meaning.

The Board next considered the effective filing date of the challenged claims of the ’561 patent. Petitioner had asserted that the challenged claims of the ’561 patent could not claim priority to either of the ’561 patent’s provisional applications “because the written descriptions of the provisional applications fail to provide sufficient detail to support the challenged claims.” The Board disagreed, finding that “the ’561 patent is entitled to the June 27, 2008 filing date of the ’273 provisional application, and the relevant time period for resolving the level of ordinary skill in the art is June 27, 2008.”

The Board then found that Patent Owner’s declarant, Mr. Mills, was one skilled in the art because, among other qualifications, he had at least three years of experience working with shelf assemblies. Noting that Petitioner’s witness, Mr. Schechter, had less than two years of experience at the time he signed his declaration, the Board found that Mr. Schechter was not a person of ordinary skill in the art by June 27, 2008 (i.e., at the time of the invention of the ’561 patent), the Board said that it would “accord the testimony of Mr. Schechter regarding the alleged obviousness of the claims less weight.”

In finding that Petitioner had not shown by a preponderance of the evidence that the challenged claims are unpatentable under 35 U.S.C. § 103(a) as having been obvious view of Angros and Picken, the Board concluded that “Petitioner has not carried its burden to show that Angros is analogous art, because Petitioner has not shown Angros to be pertinent to the entire problem faced by the inventors of the ’561 patent.” In this regard, Angros relates to microscopic slides whereas the challenged claims relate to shelf assemblies of the type used in a refrigerator. As stated by the Board, “Petitioner has not shown that Angros qualifies as prior art under 35 U.S.C. § 103 or that, even if it did, it renders the claims unpatentable in combination with Picken.”

The Board was similarly not persuaded by the obviousness ground based on Angros, Picken, and Baumann. As summarized by the Board, “Petitioner has not shown Angros to be reasonably pertinent to the problem addressed by the challenged claims” and this “deficiency defeats Petitioner’s obviousness challenge as to claims 14-18, 22, 26, 27, 29, 30, 54-59, and 63 and is not remedied by the combination of Angros, Picken, and Baumann.”

The Board did not need to reach Patent Owner’s evidence as to secondary considerations of non-obviousness in view of the fact that it did not find Angros to be analogous or combinable with the other asserted prior art references. Because all of the evidence that Petitioner had sought to exclude related to secondary considerations of non-obviousness, the Board dismissed Petitioner’s Motion to Exclude as moot.

SCHOTT Gemtron Corporation v. SSW Holding Company, Inc., IPR2014-00367
Paper 62: Final Written Decision
Dated: May 26, 2015
Patent: 8,286,561 B2
Before: Justin T. Arbes, Philip J. Hoffmann, and Georgiana W. Braden
Written by: Braden
Related Proceedings: SSW Holding Co., Inc. v. Schott Gemtron Corp., No. 3:12-cv-00661 (W.D. Ky.); IPR2013-00358 (finding claims 1, 13, and 25 of the subject ’561 patent to be unpatentable; now on appeal)