Takeaway: A petitioner must support an alleged ground of obviousness by some articulated reasoning with some underpinning.

In its Decision, the Board denied institution of inter partes review, finding that Petitioner did not establish a reasonable likelihood of prevailing with respect to any challenged claim.  The ‘054 patent related to “an adsorption drying apparatus [and] an adsorption drying method . . . for drying compressed gases.”  Petitioner relied upon four prior art references – Jonsson, Vertriest, White, and Dunne – as well as the declaration of Dr. Ritter.

The Board first addressed the question of claim construction, noting that unexpired patent claims are given their “broadest reasonable construction in light of the specification of the patent.” As Petitioner indicated, the ‘054 patent expressly defines several claim terms.  Neither Petitioner nor Patent Owner proposed any constructions differing from these definitions, and therefore, the Board determined that any further construction was not necessary.

Turning to the asserted grounds of unpatentability, Petitioner first asserted that claims 1-4, 6, 15, and 17 (of which claims 1 and 15 are independent) are anticipated by Jonsson. First addressing independent claim 1, the Board agreed with Patent Owner that Jonsson fails to teach certain limitations concerning the blower recited in claim 1, finding that Petitioner’s interpretation of Jonsson was incorrect.  The Board disagreed with Petitioner’s arguments regarding claim 15 for the same reasons regarding claim 1.  Therefore, the Board denied institution of claims 1 and 15, and their dependent claims, based on anticipation by Jonsson.

Next, the Board addressed the alleged obviousness of claims 5 and 14 over Jonsson and Vertriest. Claims 5 and 14 depend from claim 1, and Petitioner relied upon Jonsson for disclosing all limitations in claim 1, only relying upon Vertriest for additional limitations found in claims 5 and 14.  Because the Board had found that Jonsson failed to teach all the limitations in claim 1, it denied institution of this ground.

The Board then addressed the alleged obviousness of claims 1-4, 6, 12, 13, 19, and 20 over Jonsson and White. For this ground, Petitioner asserted that if Jonsson is found to not disclose the features found lacking in the anticipation ground based on Jonsson, White addresses the deficiencies.  However, the Board was not persuaded and found that Petitioner did not establish that it would have been obvious to modify Jonsson to include a blower as disclosed in White.  In particular, the Board noted that White uses a blower “to facilitate a step unique to its partial flow system,” and that the system in Jonsson does not include a step similar to that in White.  The Board denied institution of this ground, further noting that the petition must support its obviousness conclusion “by some articulated reasoning with some underpinning.”

The Board next addressed the alleged obviousness of claims 7, 16, and 18 over Jonsson and Dunne. In denying this ground, the Board held that even if it were proper to modify Jonsson’s system in light of Dunne, Petitioner still did not establish a reason “to modify the location and function of Jonsson’s blower so as to yield the claimed invention.”

Finally, with respect to the final two asserted grounds of unpatentability – obviousness of claims 8-11 over Jonsson, White, and Dunne, and obviousness of claims 5 and 14 over Jonsson, White, and Vertriest – the Board denied institution for the same reasons discussed with respect to other grounds relying upon these same references.

Atlas Copco Airpower N.V. v. Kaesar Kompressoren AG, IPR2014-00776
Paper 13: Decision Denying Institution of Inter Partes Review
Dated: November 17, 2014
Patent: 8,349,054 B2
Before: Erica A. Franklin, Christopher L. Crumbley, and Jo-Anne Kokoski
Written by: Franklin