SATA GmbH & Co. KG v. Anest Iwata Corp.: Final Written Decision Finding Claims Unpatentable and Denying Motion to Amend
Friday, May 23, 2014

Takeaway: In a motion to amend, a patent owner must address both anticipation and obviousness of the proposed claims.

In its Final Written Decision, the Board found that claims 1-14 of the ’387 Patent are unpatentable and denied Patent Owner’s Motion to Amend. The Board also dismissed Patent Owner’s Motion to Exclude Evidence.

The ’387 Patent provides for a low-pressure atomizing spray gun with a particular arrangement of air groves and slits in the paint nozzle that reportedly allows for increased atomization of the paint. Specifically, the current claims of the ’387 Patent as well as the proposed claims recite air groves that begin, or extend from, upstream of the end of an annular slit in the tip portion of the nozzle.

The Board noted that while Patent Owner filed a Preliminary Response, it did not file a Patent Owner Response following institution, instead choosing to request cancellation of the challenged claims and filing a Motion to Amend. Because the Board considered Patent Owner’s arguments in the Preliminary Response and deemed it likely that Petitioner would prevail, and because Patent Owner did not provide any further argument, the Board found that claims 1-14 are unpatentable.  The Board noted that Patent Owner argued in its Motion to Amend that the Decision to Institute was made in error, but the Board did not find those arguments persuasive.  The Board noted in a footnote that while the Motion to Amend requested cancellation of the challenged claims, the Board considered this request contingent on a determination that those claims were unpatentable based upon Patent Owner’s representation at the hearing that the request was contingent.

The Board then turned to the Motion to Amend, stating that Patent Owner has the burden of establishing that it is entitled to the relief requested. The Board also noted that the patent owner takes on the burden of presenting evidence that the proposed claims comply with all sections of the patent statutes, including a showing that the proposed claims are patentable over the prior art in general, not just the prior art relied upon in the petition.

The Board stated that Patent Owner only provided evidence that the proposed claims were not anticipated by the prior art referred to in the Petition, and that Patent Owner did not provide any testimony that it does not know of any other anticipatory art. Based upon that finding alone, the Board denied the Motion to Amend.  The Board continued by stating that Patent Owner also erred by only addressing whether the prior art anticipates the proposed claims and not addressing obviousness.  Patent Owner noted that the Board stated in its Decision to Institute that it was not addressing obviousness, but the Board said that statement was just as to the Decision to Institute, not as to the entire proceeding.  The Board was also not persuaded by Patent Owner’s evidence that the proposed claims are patentable under 35 U.S.C. § 103 because Patent Owner did not provide any testimonial evidence of what one of ordinary skill in the art would have known or understood in order to make a determination of nonobviousness.  The Board was also not persuaded by Patent Owner’s argument that the claims are not anticipated.

Regarding the Motion to Exclude certain exhibits, the Board did not reach those arguments because it did not rely upon those exhibits to reach its decision.

SATA GmbH & Co. KG v. Anest Iwata Corp., IPR2013-00111
Paper 44: Final Written Decision
Dated: May 20, 2014
Patent 6,494,387 B1
Before: Josiah C. Cocks, Deborah Katz, and Jennifer S. Bisk
Written by: Katz

 

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