In a recent Inter Partes Review Final Decision, the Patent Trial and Appeals Board (PTAB) held that the petitioner had not proven by a preponderance of evidence that instituted claims 1, 13, and 25 of US Patent No. 8,286,561 were unpatentable because the asserted obviousness grounds were based on a reference that is non-analogous art. Schott Gemtron Corp. V. SSW Holding Company, Inc. (IPR2013-00358, Paper No. 106, August 20, 2014). The ‘561 patent is directed to a shelving adapted for use in refrigerators. The shelving has a top surface with a hydrophobic surface designed to prevent liquid from spilling on other surfaces (Paper No. 106 at pgs. 2-3).
The primary reference relied on for obviousness grounds proffered by the petitioner, Angros, is directed to a microscope slide. (Paper No. 106 at pg. 22). The parties did not dispute that the Angros references is from the same field of endeavor as the claimed subject matter, but disagreed as to whether the reference was otherwise “reasonably pertinent to the particular problem with which the inventor is involved.” The petitioner asserted that the particular problem was containing liquid in a predetermined area and that as such Angros is reasonably pertinent to that problem. The patent owner responded that the particular problem is not merely containing liquid but is instead “how to maximize the available storage space on shelves while containing accidental and unpredictable spills“(Paper No. 106 at pg. 20). The patent owner’s expert had testified that the hydrophobic border in Angros is used to containing small amounts of fluid that are intentionally placed on a microscope, a different problem than containing accidental spills (Paper No. 106 at pgs. 21-22). The PTAB agreed with the patent owner and found that the petitioner’s expert did not adequately explain why a person having ordinary skill in the art would have looked to the coating of Angros to act as a spill containment border (Paper No. 106 at pg. 25).
Interestingly, the PTAB gave less weight to the testimony of the petitioner’s expert because the PTAB found that the expert did not qualify as a person of ordinary skill in the art at the time that he signed his declaration. The petitioner had defined a person having ordinary skill as a person with at least a bachelor’s degree in mechanical engineering and four years of experience working with refrigeration shelves, but the petitioner’s expert had less than two years of experience designing shelves at the time that he had signed the declaration (Paper No. 106 at pages 16-18).
When obviousness is at issue in a Patent Office trial (i.e., IPR, CBM, PGR), the PTAB is willing to consider details of the particular problem solved by the claimed invention and evaluate whether the references are reasonably pertinent to that problem. In this case, the patent owner was able to narrowly define the particular problem in a way that made an asserted prior reference less pertinent. And parties should carefully consider any proffered characterization of a person having ordinary skill in the art, as well as their expert’s qualifications.
John M. Bird is a partner in the Washington, DC Office of Sughrue Mion PLLC. His focus is on the protection and enforcement of designs and a wide range of electrical and mechanical technologies, including analytical/measurement systems, medical devices, HVAC systems, printers/copiers, telecommunications systems, data recording mediums, semiconductor fabrication, bearings, welding processes, sports equipment, footwear, and various automobile components, such as tires, transmissions, engines, fuel-injection systems, motors, lamps, steering systems, connectors/wiring, valves, and control/monitoring systems.
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