Takeaway: The equitable doctrine of assignor estoppel is not available as a defense in an inter partes review.

In its Final Written Decision, the Board found that Petitioner failed to show by a preponderance of the evidence that the challenged claims, claims 9 and 10, of the ’808 Patent are unpatentable.   The Board also denied-in-part and otherwise dismissed as moot Petitioner’s Motion to Exclude.  The ’808 Patent relates to methods for generating smoke for use in a volatile, potentially explosive environment, specifically by vaporizing into smoke a flammable fluid in an inert environment created within a closed smoke producing chamber.

The Board began with claim construction, stating that claim terms are interpreted using the broadest reasonable construction in light of the specification. The Board first discussed the term “flammable fluid.”  Noting that the term is not defined or recited in the specification, the Board looked to dictionary definitions to conclude “flammable fluid” is a fluid, including a liquid or gas (e.g., an oil), capable of catching fire and burning.  The Board then adopted the definitions of the terms “locating” and “closed” from the Decision to Institute, noting that neither party challenged those constructions.  Next, the Board construed “smoke,” noting that Petitioner agreed with the construction in the Decision to Institute, but Patent Owner argued that a broader interpretation was necessary.  The Board agreed with Patent Owner, citing to dictionary definitions, and construed the term as visible vapor or mist, e.g., particles or droplets suspended in the atmosphere, or gases.  Finally, the Board construed the term “inert environment” by adopting the construction from the Decision to Institute.

The Board then turned to Patent Owner’s argument that Petitioner was barred from pursuing this case under the equitable doctrine of assignor estoppel. Specifically, Patent Owner contended that Kenneth Alan Pieroni, a named inventor and assignor of the ’808 Patent, is the founder and a current officer of Petitioner and is also in privity with Petitioner.  Therefore, Patent Owner asserted that Petitioner should be barred from pursuing aninter partes review of the ’808 Patent under the equitable doctrine of assignor estoppel.  The Board reviewed the AIA, U.S. Supreme Court and U.S. Court of Appeals for the Federal Circuit decisions, decisions by U.S. district courts, and the Board’s rules to determine that the defense of assignor estoppel is not available in inter partes review.

The Board next examined the obviousness challenges to the claims. First, the Board addressed the level of ordinary skill in the art, noting that Patent Owner argued that Petitioner failed to establish the level of ordinary skill in the art in support of the combination of the teachings of the applied references.  Patent Owner asserted in its expert declaration that the educational experience of the ordinary artisan in the field would range from a high school diploma to one or more years of vocational, technical, or college training in the industrial arts, mechanical engineering, automotive technology, or a related field.  Petitioner challenged this definition by arguing that Patent Owner’s expert is not one of ordinary skill in the art because he lived and worked in Canada for most of his life, and would not know the ordinary skill of a person in the United States.  The Board was not persuaded that there could be a distinction drawn between persons of ordinary skill in the United States and in Canada.  Further, Petitioner did not provide an alternative definition; therefore, the Board adopted Patent Owner’s definition.

The Board then reviewed Petitioner’s challenge to claims 9 and 10 as obvious over Gilliam and Stoyle, and particularly that Gilliam discloses all of the limitations of the claimed invention except for the use of inert gas to generate smoke, which is disclosed in Stoyle. The Board found that Petitioner had not provided sufficient reason supported by rational underpinnings to combine the references to achieve the invention recited in the challenged claims.  Specifically, Petitioner did not support its reasoning for substitution with declaration testimony and its reasoning was effectively rebutted by the declaration of Patent Owner’s expert.

The Board next examined Petitioner’s challenge to claims 9 and 10 as obvious over Gilliam, Pauley, and the 1999 Website. Again, Petitioner argued that Gilliam teaches all of the limitations of claims 9 and 10 of the ’808 Patent except that it uses air instead of inert gas to generate smoke.  Petitioner then relied on Pauley to teach the use of inert gas to produce smoke, and the 1999 Website to teach the use of smoke to test for leaks in a motor vehicle.  However, the Board found that Pauley teaches the use of carbon dioxide or nitrogen gas as a medium for atomizing and producing smoke to reduce, but not necessarily to prevent, risk of ignition, and that the 1999 Website adds little to the asserted combination of Gilliam and Pauley.  The Board again relied on the unrebutted testimony of Patent Owner’s expert to find that there would be no reason to substitute the air used in Gilliam with the inert gas of Pauley.  The Board then noted that Patent Owner presented evidence of secondary considerations, but did not reach the merits of the arguments because it had already found that Petitioner’s obviousness arguments failed.

The Board then turned to Petitioner’s Motion to Exclude various exhibits provided by Patent Owner. As to the exhibits that the Board did not consider, the Board dismissed those challenges as moot.  As to Petitioner’s Motion to Exclude the declaration of Patent Owner’s expert on the basis that he is not one of ordinary skill in the art, for the reasons above, the Board denied that Motion.  Petitioner also sought to exclude certain exhibits as allegedly irrelevant under FRE 403 and hearsay under FRE 801 and 802, but the Board denied the Motion as to these exhibits because Petitioner failed to identify any allegedly improper portions of any of these exhibits with any particularity.

Redline Detection, LLC v. Star Envirotech, Inc., IPR2013-00106
Paper 66: Final Written Decision
Dated: June 30, 2014
Patent 6,526,808 B1
Before: Jennifer S. Bisk, James B. Arpin, and Brian P. Murphy
Written by: Arpin