Handi Quilter, Inc. and Tacony Corp. v. Bernina International AG, Denying Institution of Inter Partes Review IPR2014-00270
Thursday, June 19, 2014

Takeaway: When making an obviousness argument, the petitioner must not only explain that the two references could have been combined, but must explain why a person of ordinary skill would have combined them.

In its Decision, the Board denied institution of inter partes review on any of the challenged claims (8, 9, 11, 14-16, 22, and 32) of the ’446 patent. The ’446 patent relates to a method and apparatus for stitching together two or more fabric layers, as in quilting.  In denying institution, the Board adopted the claim constructions set forth in its decision instituting inter partes review in IPR2013-00364, which also dealt with the ’446 patent.

The Board first discussed anticipation of the challenged claims by Watabe. The Board noted that dependent claims 8, 14, 15, and 22 include limitations directed to a light source or energy source as part of a detector.  Petitioner relied upon expert testimony to assert that one of ordinary skill would have understood that at least one embodiment of the motion detector of Watabe includes a light source.  However, the Board agreed with Patent Owner that Petitioner did not sufficiently demonstrate that the light source limitation is inherent in Watabe because both of Petitioner’s theories of inherency were premised on mere possibility and Petitioner’s expert did not provide any underlying factual support for the assertions upon which he based his conclusions.

Turning to dependent claims 9, 11, 16, and 32, the Board noted that those claims include limitations directed to detecting or measuring movement in multiple, orthogonal directions. Petitioner again relied upon expert testimony for the assertion that a person of ordinary skill would understand that at least one embodiment of the motion detector of Watabe functions to detect and measure movement in multiple, orthogonal directions.  The Board once again agreed with Patent Owner that Petitioner had not demonstrated that the limitation is inherent to the disclosure of Watabe because some theories were premised on a mere possibility and Petitioner’s expert again did not provide any underlying factual support for the assertions upon which he based his conclusions.

The Board then discussed Petitioner’s allegations that the challenged claims are obvious over Watabe alone. Specifically, Petitioner asserted that a person of ordinary skill in the art would have found it obvious to modify Watabe to incorporate image correlation technology that was well known and in use at the time because a person of ordinary skill would have knowledge of the required components and algorithms for image correlation and would have been able to modify Watabe to include these features, and a person of ordinary skill would have had few choices for motion detection using optical sensors and every motion detector during the relevant time period included features meeting both the light source and measuring movement limitations.  The Board was not persuaded by either argument.  The Board noted that while Petitioner argued that a person of ordinary skill could have modified Watabe, the Petitioner did not explain why a person of ordinary skill would do so.  Also, the Board was not persuaded by the broad, unsubstantiated assertion that during the relevant time period every motion detector would have included features meeting the requisite limitations.

Lastly, the Board examined Petitioner’s argument that the challenged claims are obvious over Watabe in view of Gordon. The Board stated that Petitioner did not provide persuasive rationale for why a person of ordinary skill would modify Watabe to incorporate Gordon.  The Board stated that Petitioner’s arguments once again focused on explaining that a person of ordinary skill could have modified Watabe to include Gordon, but did not explain why a person of ordinary skill would do so.  The Board also noted that the expert testimony supporting Petitioner’s arguments was not persuasive for the reasons stated above.

Handi Quilter, Inc. and Tacony Corp. v. Bernina International AG, IPR2014-00270 Paper 9: Decision Denying Institution of Inter Partes Review
Dated: June 16, 2014
Patent 6,883,446 B2
Before: Fred E. McKelvey, Jennifer S. Bisk, and Michael J. Fitzpatrick
Written by: Bisk
Related Proceedings: IPR2013-00364; Bernina International AG v. Handi Quilter, Inc., No. 2:12-cv-07079-JD (E.D. Pa.); Bernina International AG v. Tacony Corporation, No. 2:13-cv-01787-JD (E.D. Pa.)

 

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