Athena Automation Ltd. v. Husky Injection Molding System Ltd.

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Trials@uspto.gov 	Paper 18
Tel: 571-272-7822 	Entered: October 25, 2013
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
ATHENA AUTOMATION LTD.
Petitioner
v.
HUSKY INJECTION MOLDING SYSTEMS LTD.
Patent Owner
Case IPR2013-00290
Patent 7,670,536 B2
Before JENNIFER S. BISK, MICHAEL J. FITZPATRICK, and
GEORGIANNA W. BRADEN, Administrative Patent Judges.
BISK, Administrative Patent Judge.
DECISION
Institution of Inter Partes Review
37 C.F.R. § 42.108
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I. 	INTRODUCTION
A. Background
Athena Automation Ltd. (“Athena” or “Petitioner”) filed a petition (Paper 3)
(“Pet.”) to institute an inter partes review of claims 1-22 (the “challenged claims”)
of U.S. Patent 7,670,536 B2 (the “’536 Patent”). 35 U.S.C. § 311. Husky
Injection Molding Systems Ltd. (“Husky” or “Patent Owner”) filed a Preliminary
Response. Paper 8 (“Prelim. Resp.”). We conclude that, under 35 U.S.C. § 314(a),
there is a reasonable likelihood that it would prevail with respect to at least one of
the challenged claims.
Athena contends that the challenged claims are unpatentable under
35 U.S.C. §§ 102 and 103 based on the following specific grounds (Pet. 10-11)1:
Reference[s] 	Basis 	Claims challenged
Glaesener 	§ 102 	1-7, 12, and 17-20
Glaesener 2 § 103 	1-22
Arend 	§ 102 	1, 4-16, 18, and 20-22
Arend and Glaesener 	§ 103 	1, 4-16, 18, and 20-22
Quéré 	§§ 102 and/or 103 	1-3, 8-19, 21, and 22
Quéré and Glaesener 	§ 103 	1-3, 8-19, 21, and 22
1 The petition relies on the following references: U.S. Patent Application
2004/0208950 (Ex. 1002) (“Glaesener”); U.S. Patent 5,753,153 (Ex. 1003)
(“Choi”); U.S. Patent 5,417,913 (Ex. 1004) (“Arend”); U.S. Patent 2,916,768 (Ex.
1005) (“Quéré”). The petition also relies on the Declaration of Carsten Link (Ex.
1006).
2 The petition states that claims 1-22 are obvious under Glaesener combined with
Choi. Pet. 10. However, because we determine that Glaesener incorporates Choi
by reference, we refer to Glaesener by itself instead of referring to Glaesener
combined with Choi.
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For the reasons described below, we institute an inter partes review of
claims 1-22 based on the following grounds: (1) claims 1-7, 12, and 17-20 as
anticipated by Glaesener; (2) claims 8-11, 13-16, 21, and 22 as obvious over
Glaesener; and (3) claims 1, 4-16, 18, and 20-22 as anticipated by Arend.
We do not institute an inter partes review based on any of the other
proposed grounds.
B. Related Proceedings
Athena filed two other petitions for inter partes review involving patents
owned by Husky—Case No. IPR2013-00167 and Case No. IPR2013-00169. The
Board instituted a review in both cases on July 30, 2013. Like the ’536 Patent, the
patents involved in those proceedings (U.S. 5,620,723 and U.S. 5,624,695,
respectively) are related to injection molding machines, but claim different subject
matter.
C. The ’536 Patent
The ’536 Patent is titled “Molding-System Clamp” and relates to injection
molding machines that inject, under pressure, injectable molding material into a
mold cavity. Ex. 1001, col. 8, ll. 8-10, 37-42, 63-66. The mold cavity is created
by two halves of a mold, each mounted on a platen, closed against each other. Id.
at col. 9, ll. 20-24, 57-61. Once closed, the mold is held in that position by a clamp
assembly, and the two platens are secured by a lock mechanism. Id. at col. 8, ll.
37-42; col. 9, ll. 29-31; Figs. 2A, 2B.
The lock mechanism includes both a lock member associated with a rod and
a complementary lock member associated with a platen. Id. at Abstract. Once the
two members of the locking mechanism are engaged (locked), clamp actuators
apply a clamping force to keep the mold closed as it receives molding material
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under pressure. Id. at col. 8, ll. 39-42. This clamping force causes uneven load
stresses on the platen. Id. at col. 13, ll. 42-45. Thus, some portions, or zones, of
the platen receive less load stress in comparison to the stress experienced by other
zones. Id. The uneven stress causes the platen to bend, or flex, more at some
zones (relatively higher flex zones) relative to others (relatively lower flex zones).
Id. Accordingly, the ’536 Patent discloses engaging the two lock members at a
position that is proximate to a relatively lower flex zone of the platen resulting in
reduced wear associated with the teeth of the locking mechanisms. Id. at col. 13,
ll. 55-67.
Figure 2A of the ’536 Patent, reproduced below, depicts the clamp assembly
of the molding system according to one embodiment in which the clamp assembly
is placed in a mold opened position.
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Figure 2A of the ’536 Patent, above, illustrates a clamp assembly 102 in the
mold opened position. Ex. 1001, col. 7, ll. 29-31. The clamp assembly 102
includes (i) a stationary platen 120, (ii) a movable platen 122, (iii) platen stroke
actuators 123, (iv) clamp actuators 128, (v) rods 121, and (vi) tie-bar lock
mechanisms 130.
Figure 8A of the ’536 Patent, reproduced below, depicts a clamp actuator
128, also referred to as a clamp.
Figure 8A, above, illustrates clamp 128 of the clamp assembly 102.
Ex. 1001, col. 7, ll. 51-52. The clamp 128 is actuated so that a clamping force 506
is applied to the rod 121. Id. at col. 13, ll. 12-13.
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Figure 8D of the ’536 Patent, reproduced below, depicts the lock in which
the clamp 128 is actuated.
Figure 8D, above, illustrates the end view of the lock 130 in which the lock
is placed in the locked condition. Id. at col. 13, ll. 32-33. Rod 121 transmits the
clamping force 506 across the teeth 238 and 248. Id. at ll. 38-40. Then the
clamping force is transferred to the platens 122 and 120 and ultimately to mold
140. Id. at ll. 40-42. The location of relative stress zones (514, 516) will depend
on the structural supports of platen 122. Id. at ll. 48-54. When the lock
mechanism is actuated, teeth 238 and 248 become aligned at a position that is
located proximate to a relatively lower flex zone 514. Id. at ll. 55-60.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A lock of a molding system having a rod and a platen, the lock
comprising:
a lock member associated with the rod that is movable between a
clamped position and a released position by a clamp
assembly; and
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a complementary lock member associated with the platen; the lock
member and the complementary lock member cooperatively
operable to move between a lockable condition and an
unlockable condition; wherein
the complementary lock member is engagable with the lock
member within a relatively lower flex zone of the platen;
the relatively lower flex zone of the platen being a portion of the
platen adjacent to the rod and having a flex that is lower
relative to a relatively higher flex zone of the platen also
adjacent to the rod.
D. Claim Construction
As a step in our analysis for determining whether to institute a trial, we
determine the meaning of the claims. Consistent with the statute and the
legislative history of the Leahy-Smith America Invents Act (“AIA”), the Board
interprets claims using the broadest reasonable construction. See Office Patent
Trial Practice Guide, 77 Fed. Reg. 48756, 48766 (Aug. 14, 2012); 37 C.F.R.
§ 42.100(b). Athena submits proposed constructions for several claim terms. Pet.
11-23. Husky did not address claim construction in the Preliminary Response.
To determine whether there is a reasonable likelihood Petitioner will prevail,
we analyze those claim terms relevant to our determination below.
1. Lock Member
All the challenged claims require a “lock member.” The specification
describes “a lock member associated with the rod, the lock member includes: (i) a
row of rod-interrupted teeth extending from the rod; and (ii) a rod groove
extending along the row of rod-interrupted teeth.” Ex. 1001, col. 6, ll. 16-19.
Athena asserts that the definition of “lock member” at least includes a tooth
structure associated with the rod. Pet. 11. We agree. For purposes of this
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decision, we construe the term “lock member” to encompass a mechanism made up
of at least one tooth structure.
2. Complementary Lock Member
All the challenged claims require a “complementary lock member.” The
specification describes “a complementary lock member including: (i) a row of
sleeve-interrupted teeth extending from a sleeve, the sleeve coupled to the platen;
and (ii) a sleeve groove extending along the row of sleeve-interrupted teeth, the
row of rod-interrupted teeth of the lock member is rotatably engagable with the
row of sleeve-interrupted teeth of the complementary lock member.” Ex. 1001,
col. 6, ll. 19-24. Athena asserts that the definition of “complementary lock
member” at least includes a tooth structure that is engagable with the tooth
structure of the lock member. Pet. 12. We agree. For purposes of this decision,
we construe the term “complementary lock member” to encompass a mechanism
made up of at least one tooth structure that is engagable with the tooth structure of
the corresponding lock member.
3. Relatively Higher Flex Zone
All the challenged claims require “a relatively higher flex zone of the
platen.” The specification defines “relatively higher flex zone” solely in terms of
how such zone relates to a “relatively lower flex zone” and vice versa. Ex. 1001,
col. 13, ll. 45-48; col. 13, l. 63 – col. 14, l. 3; col. 16, ll. 24-27; Fig. 8C, 8D. The
specification, however, does give some guidance as to the meaning of the word
“relatively.” For example, element 516 of Figure 8D (see above) is identified as a
“relatively higher flex zone” of platen 122. Ex. 1001, col. 13, ll. 45-48; Fig. 8D.
In addition, the specification states that the “location of these zones will depend on
the structural supports associated with the platen 122.” Id. at col. 13, ll. 48-49.
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Because zone 516 lacks support structure compared to zone 514, it will flex more
than zone 514. Id. at ll. 49-51.
Athena asserts that, although the presence of reinforcing structure may affect
the manner in which the platen flexes, such reinforcing structure should not be read
into the claim interpretation. Pet. 18. We agree that the plain and ordinary
meaning of the term “relatively higher flex zone” is a measurable physical
characteristic that does not depend necessarily upon the presence of reinforcing
structure.
Athena also asserts that because the only platen zone identified as a
“relatively higher flex zone,” zone 516 of Figure 8D, is located farthest from the
stiffening ribs 231 in the corner of the platen 122, “a person of ordinary skill would
infer that zone 516 . . . is the highest flex zone in the platen adjacent to the tie rod
121.” Pet. 18-19 (citing Ex. 1006 ¶ 21). Athena asserts that a construction
consistent with this understanding would also lead to the broadest reasonable
construction of the entire claim because the term “relatively higher flex zone” is
used only as a reference point in the challenged claims—“the relatively lower flex
zone being a portion of the platen adjacent to the rod and having a flex that is
lower relative to a relatively higher flex zone.” On the other hand, Athena
concedes that the claim language itself does not require that the “relatively higher
flex zone” be the highest flex zone. Pet. 19.
We agree with Athena that, when viewed in the context of the entire claim,
the term “relatively higher flex zone” is used only as a reference point for
identifying a “relatively lower flex zone.” However, we do not agree that the term
“relatively higher flex zone” need be defined as the highest flex zone in order to
produce the broadest reasonable construction of the entire claim. The broadest
reasonable construction of “relatively higher flex zone” includes all flex zones that
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have a flex higher than the flex of any other portion of the platen. Thus, for
purposes of this decision, we construe the term “relatively higher flex zone of a
platen” to mean that portion of the platen that exhibits a higher flex, compared to
the flex in any other portion of the platen, in response to the application of a
clamping force on the platen.
4. Relatively Lower Flex Zone
All the challenged claims require “a relatively lower flex zone of the platen.”
As described above, the specification defines “relatively lower flex zone” solely in
terms of how it relates to the “relatively higher flex zone.” Ex. 1001, col. 13,
ll. 45-48; col. 13, l. 63 – col. 14, l. 3; col. 16, ll. 24-27; Fig. 8C, 8D. Consistent
with our construction of the term “relatively higher flex zone,” for purposes of this
decision, we construe the term “relatively lower flex zone of a platen” to mean that
portion of the platen that exhibits a lower flex, compared to the flex in any other
portion of the platen, in response to the application of a clamping force on the
platen.
5. Complementary Lock Member and the Lock Member Engage
Within/Proximate To a Relatively Lower Flex Zone of the Platen
(“the engagement limitations”)
All the challenged claims contain an engagement limitation. Independent
claim 1 requires “wherein the complementary lock member is engagable with the
lock member within a relatively lower flex zone of the platen.”3 Athena asserts
that “engage” in the context of this limitation takes its plain and ordinary meaning
3 Independent claim 12 requires “the complementary lock member being engagable
with the lock member within a relatively lower flex zone of the platen,” and
independent claim 18 requires “engaging a lock member associated with the rod
with a complementary lock member associated with the platen at a position located
proximate to a relatively lower flex zone of the platen.”
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of “interlock” or “mesh.” Pet. 21 (citing dictionary definition 1.c4 of “engage” at
http://www.merriam-webster.com). Athena, thus, concludes that the limitation
includes the tooth structure of the complementary lock member interlocking or
meshing with the tooth structure of the lock member within, or proximate to, a
“relatively lower flex zone.” Id. We agree that “engage” should be construed
using the plain and ordinary meaning and that Athena’s proposed definition is
reasonable.
Further, Athena asserts that this limitation does not require that all the tooth
structures engage within, or proximate to, a relatively lower flex zone of the platen.
Pet. 21. Instead, according to Athena, it is sufficient that some engagable portions
of the complementary lock member and the lock member engage within or
proximate to a relatively lower flex zone, even if they also engage in other areas.
Id. Athena bases this argument on the statement in the ’536 Patent that “the
complementary lock member 512 is lockably engaged with the lock member 510 at
a position that is proximate, at least in part, to the [relatively lower flex] zone 514
of the platen 122 so as to reduce wear of the lock members 510, 512 once the
clamping force 506 has been applied to the rod 121.” Ex. 1001, col. 14, ll. 11-16
(emphasis added). Athena adds that none of the claims uses the terms
“exclusively” or “only” to modify the phrase “within” or “proximate to a relatively
lower flex zone.” Thus, according to Athena, the broadest reasonable construction
of the engagement limitations does not require engagement to be exclusively
within or proximate to a relatively lower flex zone of the platen.
4 We note that there does not appear to be a definition 1.c of “engage.” Definition
2.c of “engage” is “to interlock with: mesh; also: to cause (mechanical parts) to
mesh <engage the clutch>.” M ERRIAM -W EBSTER DICTIONARY ,
http://www.merriamwebster.com/dictionary/engage (last visited Oct. 3, 2013).
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We agree with Athena that the broadest reasonable construction of the
engagement limitations, for purposes of this decision, includes the situation in
which the complementary lock member and the lock member are capable of
interlocking or meshing at least in part within or proximate to a relatively lower
flex zone of the platen.
II. ANALYSIS
A. Assignor Estoppel
The only argument that Husky asserts in its Preliminary Response is that
Athena is barred from bringing this Petition by the doctrine of assignor estoppel.
Prelim. Resp. 1. Husky contends that Mr. Robert Schad, one of the named
inventors of the ’536 Patent, is the founder, co-owner, President, Chief Executive
Officer, and one of two directors on the Board of Directors of Petitioner Athena
and is, therefore, in privity with Athena. Id. Thus, according to Husky, Athena is
estopped from challenging the patentability of the ’536 Patent under the doctrine of
assignor estoppel. Id. The Federal Circuit has explained,
[A]ssignor estoppel is an equitable doctrine that prohibits an assignor
of a patent or patent application, or one in privity with him, from
attacking the validity of that patent when he is sued for infringement
by the assignee. . . . Assignor estoppel is thus a defense to certain
claims of patent infringement.
Semiconductor Energy Laboratory Co., Ltd. v. Nagata, 706 F.3d 1365, 1369 (Fed.
Cir. 2013) (emphasis added) (citations omitted).
Under the AIA, “a person who is not the owner of a patent may file with the
Office a petition to institute an inter partes review of the patent.” 35 U.S.C.
§ 311(a) (emphasis added). Consequently, under the statute, an assignor of a
patent, who is no longer an owner of the patent at the time of filing, may file a
petition requesting inter partes review. This statute presents a clear expression of
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Congress’s broad grant of the ability to challenge the patentability of patents
through inter partes review. In contrast to § 311(a), in International Trade
Commission (ITC) investigations involving patent disputes brought under
19 U.S.C. § 1337(c), Congress provided explicitly that “[a]ll legal and equitable
defenses may be presented in all cases.” From this statutory mandate, the ITC
concluded that it must consider the defense of assignor estoppel in cases in which a
patent owner may seek to have infringing goods excluded from the United States.
See Lannom Mfg. Co. v. Int’l Trade Comm’n, 799 F.2d 1572, 1579 (Fed. Cir.
1986). Congress issued no similar statutory mandate to the Office in connection
with AIA post-grant reviews.
Husky concedes that the Patent Office does not apply assignor estoppel in
reexamination proceedings, but argues that assignor estoppel should be available to
patent owners in inter partes review proceedings based on the adjudicative nature
of the proceedings. Prelim. Resp. 15-25. However, none of Husky’s arguments
addresses the language of § 311(a).
Because we are not persuaded that assignor estoppel, an equitable doctrine,
provides an exception to the statutory mandate that any person who is not the
owner of a patent may file a petition for an inter partes review, we decline to deny
this Petition based on the doctrine of assignor estoppel.
B. Grounds based on Glaesener (Ex. 1002)
1. Overview of Glaesener
Athena asserts that Glaesener qualifies as prior art under 35 U.S.C. § 102(b)
because it issued on October 21, 2004, more than one year prior to the ’536
Patent’s earliest filing date of February 5, 2007. Pet. 23. Glaesener describes an
injection molding machine with a platen having reinforcing ribs that cause the
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edges of the platen to bend less than they otherwise would when subjected to
clamping forces. Ex. 1002, Abstract; ¶ 40.
Figure 5 of Glaesener is reproduced below.
Figure 5, above, is an enlarged perspective view of a corner of platen 50.
Ex. 1002 ¶ 33. Platen 50 includes “pairs of angled/inclined but straight ribs [40]
located on at least two opposed sides of the platen.” Id. ¶ 38. According to
Glaesener, this configuration of ribs 40 is desirable to ensure an even distribution
of load to the platen during clamping. Id. Each angled rib 40 may be
complemented by an angled support gusset 42 that extends laterally outwardly
from each angled rib and provides greater support of the platen edge. Id. ¶ 42.
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2. Incorporation of Choi (Ex. 1003)
Athena asserts that Glaesener and Choi can be considered together as a
single prior art reference under 35 U.S.C. § 102(b) because Glaesener expressly
incorporates Choi by reference. Pet. 32 (citing Ex. 1002 ¶¶ 35, 49). Glaesener
refers to Choi, specifically, by stating that “tie-bar nuts can be secured to the rear
wall 16 by any appropriate mechanism, such as the pineapple and toothed-ring
mechanism described in U.S. Pat. No. 5,753,153 [i.e., Choi].” Ex. 1002 ¶ 35.
Subsequently, Glaesener states that “[a]ll cross-referenced patents and
application[s] referred to in this specification are hereby incorporated by
reference.” Id. ¶ 49.
We are persuaded that the broad language used in Glaesener incorporates the
Choi specification by reference. See Harari v. Lee, 656 F.3d 1331, 1334-35 (Fed.
Cir. 2011) (holding that referenced application disclosures were incorporated by
“the broad and unequivocal language: ‘The disclosures of the two applications are
hereby incorporate[d] by reference.’”). Because a document incorporated by
reference “becomes effectively part of the host document as if it were explicitly
contained therein,” Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316,
1329 (Fed. Cir. 2001), we agree Choi constitutes part of Glaesener for purposes of
the anticipation analysis in this decision.
Choi discloses a clamping device for positioning and sustaining engagement
of a movable mold platen on a carrier device relative to another platen. Ex. 1003,
Abstract. Figure 3A of Choi is reproduced below.
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Figure 3A, above, is a cross-sectional view of the clamping assembly
disclosed in Choi. Ex. 1003, col. 4, ll. 3-5. Tie bar 20a extends between the
corners of moveable platen 14 and a fixed platen 12 (not shown above). Id. at
ll. 63-67. Tie bar 20a includes an elongated end section with four strips 39 of teeth
38 on its outer surface. Id. at col. 5, ll. 42-53. Clamping assembly 22 includes
piston 44 having an inner surface with four strips 49 of teeth 48, which are adapted
to engage teeth 38. Id. at l. 59 - col. 6, l. 1. A portion of Figure 4 of Choi is
reproduced below.
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The portion of Figure 4 of Choi, above, is the lower section of an end view
of the injection molding machine showing the clamping assemblies and rotational
mechanism. Ex. 1003, col. 4, ll. 6-9. The dotted lines in Figure 4 indicate
movement of a rotational mechanism 68 that synchronously rotates the pistons 44
of the clamping assemblies 22 to bring the strips 49 of teeth 48 into alignment with
the strips 39 of teeth 38 prior to the application of a clamping force on the platens
12 and 14. Id. at col. 7, l. 53 – col. 8, l. 9.
3. Anticipation by Glaesener
Athena asserts that Glaesener anticipates claims 1-7, 12, and 17-20. Pet.
32-41. As such, Athena contends that Glaesener discloses all the limitations of the
challenged claims. In particular, according to Athena, platen 50 corresponds to
platen 122 disclosed in the ’536 Patent. In addition, according to Athena, Choi,
incorporated in Glaesener, discloses the claimed lock members and rod because
Glaesener states that the “tie bars 22, 24 may be coupled to the rear wall 16 of the
platen 50 by tie bar nuts 26, 28” and “‘[t]he tie bar nuts can be secured to the rear
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wall 16 by any appropriate mechanism, such as the pineapple and toothed-ring
mechanism described in [Choi].’” Pet. 25, 36 (quoting Ex. 1002 ¶ 35).
Specifically, Athena asserts that Choi’s teeth 38 corresponds to the claimed lock
member, Choi’s teeth 48 corresponds to the claimed complementary lock member,
and Choi’s tie bar 20 corresponds to the claimed rod. Id.
Athena does not assert that Glaesener explicitly describes the engagement
limitations. Instead, Athena appears to base its argument on the theory of
inherency, without actually stating outright that these limitations are inherent in the
reference. See Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631
(Fed. Cir. 1987) (“A claim is anticipated only if each and every element as set forth
in the claim is found, either expressly or inherently described, in a single prior art
reference.”). Athena asserts Glaesener teaches that “the portions of the platen 50
adjacent each bore 14 that coincide with ribs 40 and gussets 42 experience a
relatively lower flex than portions of the platen 50 that do not coincide with the
ribs 40 and gussets 42 during clamping.” Pet. 25 (citing Ex. 1006 ¶ 27). Thus,
according to Athena, “to the extent the disclosure of the ’536 patent supports the
conclusion that the platen 122 . . . would have a relatively higher flex zone and
relatively lower flex zones adjacent the tie rod bore, the ribs 40 and gussets
disclosed in Glaesener would result in the same relatively higher flex zone.” Pet.
32-33 (citing Ex. 1006 ¶ 27). Athena’s expert testifies that these results were
verified using finite element analysis. Pet. 33-35 (citing Ex. 1006 ¶¶ 44-55).
Further, Athena asserts, supported by testimony of its expert, that Choi’s teeth 38
and teeth 48 “are engagable in a relatively lower flex zone of Glaesener’s platen
50.” Pet. 35 (citing Ex. 1006 ¶ 53). Athena, thus, appears to argue that Glaesener
inherently includes the engagement limitation.
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We are persuaded that there is a reasonable likelihood that the engagement
limitations are inherent in Glaesener. “To serve as an anticipation when the
reference is silent about the asserted inherent characteristic, such gap in the
reference may be filled with recourse to extrinsic evidence.” Continental Can Co.
USA v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991). “Under the
principles of inherency, if the prior art necessarily functions in accordance with, or
includes, the claims limitations, it anticipates.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375-76 (Fed. Cir. 2005) (quoting In re Cruciferous Sprout
Litigation, 301 F.3d 1343, 1349 (Fed. Cir. 2002)) (internal quotation marks
omitted). Although Athena has not stated, in so many words, that the engagement
limitations necessarily are present in Glaesener, Athena nevertheless has provided
sufficient evidence to show that this is the case for at least one of the embodiments
described by Glaesener. See Ex. 1006 ¶ 53.
Thus, we are persuaded that there is a reasonable likelihood that Athena will
prevail on anticipation by Glaesener of claims 1-7, 12, and 17-20.
4. Obviousness Over Glaesener
Athena argues that, in the alternative, claims 1-7, 12, and 17-20 are
unpatentable as obvious in view of Glaesener. Pet. 41-42. Because we find
reasonable Athena’s contentions that Glaesener anticipates claims 1-7, 12, and 17
20, we need not reach Athena’s alternative obviousness basis for those claims.
Athena also argues that dependent claims 8-11, 13-16, 21, and 22 would
have been obvious over Glaesener. Pet. 42-44. These claims depend from
independent claims 1, 12, or 18, and specify that the location of the relatively
lower flex zone of the platen “is nominally located approximately” based on
various clock positions in relation to the rod.
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Athena asserts that skilled artisans knew that “platen distortion or flexure
caused by clamping forces could cause undesirable wear between contacting
parts.” Pet. 43 (citing Glaesener ¶¶ 6, 8). Athena further asserts that this known
problem, and Glaesener’s provided solution of stiffening ribs and gussets adjacent
the tie bar “to reduce loading in the region of the tie-bar support” (Ex. 1002 ¶ 45),
would have suggested the further improvement of rotating Choi’s tie bars and
piston to place them in the claimed clock positions. Pet. 43. According to Athena,
this orientation would engage lock members only within relatively lower flex zones
and, therefore, would reduce stress and wear on all the lock members. Pet. 43-44.
Thus, a person of ordinary skill would have had a reason to make such
modification. We are persuaded that this rationale for changing the orientation of
Choi’s tie bars is reasonable.
Therefore, we are persuaded that there is a reasonable likelihood that Athena
will prevail on obviousness over Glaesener of dependent claims 8-11, 13-16, 21,
and 22.
C. Grounds based on Arend (Ex. 1004)
1. Overview of Arend
Athena asserts that Arend qualifies as prior art under 35 U.S.C. § 102(b)
because it issued on May 23, 1995, more than one year prior to the ’536 Patent’s
earliest priority date of February 5, 2007. Pet. 28. Arend describes an injection
molding machine with multiple platens containing mold parts that are united
during the molding process and separated to release the molded product. Ex. 1004,
col. 1, ll. 7-12. Arend’s mold halves are connected by tie rods, which prevent the
mold halves from separating during the molding process by locking the rods to the
platen during molding. Id. at col. 1, ll. 6-12; col. 3, ll. 13-22. Figure 13,
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reproduced below, is an enlarged detail view of the platen lock cam nut structure
illustrating a tie rod entering the associated platen. Id. at col. 4, ll. 58-60.
Figure 13, above, illustrates tie rod 22 associated with platen 16 and cam nut
134 with traverse end 142 that may directly abut against the platen surface 131. Id.
at col. 7, ll. 50-66. Yoke 144 rotates the cam nut 134. Id. at ll. 66-69.
Figure 14, reproduced below, is a sectional view of the tie rod end. Id. at
col. 4, ll. 61-62. Figure 15, also reproduced below, is a sectional view of the lock
cam nut. Id. at col. 4, ll. 63-64.
Figure 14, above, illustrates a section of tie rod 22 threaded at 122. Id. at
col. 7, ll. 44-49. Figure 15, above, illustrates a section of the lock cam nut 134
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with circular bore 136, thread segments 138, and notches 140 between the cam
thread portions. Id. at ll. 50-62. During the molding cycle, tie rod 22 is received
within lock cam nut 134 at a time such that (i) the cam nut threads 138 align with
the tie rod notches 124, (ii) the tie rod thread segments 122 align with the cam nut
notches 140, and (iii) the two sets of thread segments engage. Id. at col. 8, l. 67 –
col. 9, l. 21. The tie rod locks release upon completion of the molding cycle. Id. at
col. 9, ll. 47-55.
2. Anticipation by Arend
Athena asserts that Arend anticipates claims 1, 4-16, 18, and 20-22. Pet.
44-50. Athena argues that Arend discloses a generally flat platen without
structural supports. Pet. 44. Athena argues that Arend explicitly discloses each
claim limitation except the engagement limitations, which are inherent. Pet. 44-46.
Athena equates rod 22 of Arend to the claimed rod, platen 16 to the claimed platen,
thread segments 122 to the claimed lock member, and thread segments 138 to the
claimed complementary lock member.
In addition, according to Athena’s expert, finite element analysis confirms
that “a generally flat platen such as the platen 16 disclosed in Arend . . . inherently
experiences a non-uniform distribution of flex in zones adjacent to an affixed tie
rod in response to a clamping force applied to the platen, with the highest flex zone
being in the region of the platen’s corners.” Ex. 1006 ¶ 56. Further, Athena’s
expert testifies that “each of Arend’s three corresponding rows of thread segments
122, 138 (i.e., teeth) on the tie rod 22 and the cam nut 134, respectively, are
engageable within or proximate to a relatively lower flex zone LFZ of Arend’s
platen 16 relative to a relatively higher flex zone HFZ.” Id. ¶ 62.
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We are persuaded that there is a reasonable likelihood that the engagement
limitations are inherent in Arend. Again, although Athena has not stated, in so
many words, that the engagable limitations are necessarily present in Arend,
Athena nevertheless has provided sufficient evidence to show that this is the case
for at least one of the embodiments described by Arend. See Ex. 1006 ¶¶ 56-64.
Thus, we are persuaded that there is a reasonable likelihood that Athena will
prevail on anticipation by Arend of claims 1, 4-16, 18, and 20-22.
3. Obviousness Over Arend Combined with Glaesener
Athena asserts that Arend combined with Glaesener renders obvious claims
1, 4-16, 18, and 20-22. Pet. 51-52. Specifically, Athena asserts that “it would
have been obvious to one of skill in the art at the time of the invention to have
substituted Glaesener’s platen 50 for the platen 16 disclosed in Arend” because
Glaesener states that the tie bars may be secured by “‘any appropriate
mechanism.’” Pet. 51 (quoting Ex. 1002 ¶ 35). Athena also asserts that Glaesener
expressly discloses the problem of wear between contacting parts due to flexure
adjacent to the tie bars and provides the rationale for combining its platen with a
lock and clamping structure such as disclosed by Arend. Pet. 51-52 (citing
Glaesener ¶¶ 6, 8, 40, 45).
Further, Athena asserts that the substitution would result in Arend’s
complementary lock member and lock member being engagable only within
relatively lower flex zones of Glaesener’s platen 50, which occur in the areas of
Glaesener’s platen 50 proximate the rib 40 and/or gusset 42. Pet. 51-52; Ex. 1006
¶ 51. Athena, however, does not explain this assertion, nor does Athena point to
any persuasive expert testimony confirming that a combination of Arend’s locking
mechanism with Glaesener’s platen would result in the engagement limitation.
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Thus, on this record, we are not persuaded that there is a reasonable
likelihood that Athena will prevail on obviousness over Arend combined with
Glaesener of claims 1, 4-16, 18, and 20-22.
D. Grounds based on Quéré (Ex. 1005)
1. Overview of Quéré
Athena asserts that Quéré qualifies as prior art under 35 U.S.C. § 102(b)
because it issued on December 15, 1959, more than one year prior to the ’536
Patent’s February 5, 2007 filing date. Pet. 30. Quéré describes a “Locking Device
for Injection Molding Machines.” Ex. 1005. The injection molding machine
described by Quéré includes two platens, one stationary and one moveable, each
with a mold half. Id. at col. 3, ll. 15-31. A preferred embodiment of the machine
has coupling members consisting of “clutching claws cooperating with coupling
sleeves” that are “adapted to rotate with respect to each other.” Id. at col. 1,
ll. 62-69. Figure 5 of Quéré is reproduced below.
Figure 5, above, shows the injection molding machine during the initiation
of the opening of the mold sections 10 and 11. Id. at col. 4, ll. 6-8. The coupling
rods 5 have clutching claws 6 at their free ends and coupling sleeves 8 engaged
with the claws.
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2. Anticipation by Quéré
Athena asserts that Quéré anticipates claims 1-3, 8-19, 21, and 22. Pet.
52-57. Athena argues that Quéré, similar to Arend, discloses a generally flat platen
without structural supports. Pet. 52. Athena equates rod 5 of Quéré to the claimed
rod, platen 7 to the claimed platen, claws 6 to the claimed lock member, and claws
C (not identified with a reference numeral in the figures of Quéré, but identified by
the letter “C” in Athena’s annotated Figure 5) to the claimed complementary lock
member. Athena’s annotated version of Quéré’s Figure 5 is reproduced below.
Annotated Figure 5 above, labels as “Claws C” the “inward-extending
claws” that Athena equates to the complementary lock member. Pet. 31 (citing
Ex. 1005, col. 3, ll. 36-40).
Athena argues that Quéré explicitly discloses each claim limitation except
(i) the engagement limitations, which are inherent, and (ii) the number of coupling
rods and corresponding coupling sleeves. Pet. 52-54. Regarding the number of
coupling rods and sleeves, Athena asserts that a person of ordinary skill in the art
would understand that Quéré teaches both a two and four rod arrangement. Pet. 53
(citing Ex. 1006 ¶ 40). It is unclear if Athena is asserting that this limitation is
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inherently present in Quéré or would have been obvious to a person of ordinary
skill in the art. However, we need not resolve this issue because we are not
persuaded that Quéré explicitly discloses “inward-extending claws C.”
Athena equates “inward-extending claws C” to the claimed complementary
lock member. The only supporting evidence in Quéré pointed to by Athena is
Figures 1-6, which do not label the claws, and the following language: “By means
of a worm drive 9 the coupling sleeves 8 can be rotated in such a manner that they
allow the claws 6 of the coupling rods to pass, whereupon these claws can be
locked by a rotary movement of the sleeve 8 by means of worm drive 9 in opposite
direction.” Ex. 1005, col. 3, ll. 36-40; Pet. 31 (citing Ex. 1006 ¶ 39).
We are not persuaded that the cited language supports Athena’s assertion.
Nor are we persuaded that the drawings are detailed enough to be relied upon for
the disclosure of the complementary lock member limitation. This is true
especially given Athena’s expert’s statement that “the drawings [in Quéré] appear
to contain an error in that they show the teeth 6 of coupling rods 5 rotating but no
mechanism to cause such rotation is shown or described.” Ex. 1006 ¶ 39.
Thus, we are not persuaded that Athena will prevail on anticipation by Quéré
of claims 1-3, 8-19, 21, and 22.
3. Obviousness Over Quéré
Athena argues that, in the alternative, claims 1-3, 8-19, 21, and 22 are
unpatentable as obvious in view of Quéré. Pet. 53. According to Athena, if we are
not persuaded that Quéré is an anticipatory reference given the lack of explicit
disclosure of the number of rods, the use of four rods would have been obvious to a
person of skill in the art. Pet. 53. However, Athena does not explain why a person
of ordinary skill in the art would have found the challenged claims obvious given
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the deficiency in the disclosure of Quéré related to the complementary lock
member limitation as described above.
Thus, we are not persuaded that there is a reasonable likelihood that Athena
will prevail on obviousness over Quéré of claims 1-3, 8-19, 21, and 22.
4. Obviousness Over Quéré combined with Glaesener
Athena asserts that Quéré combined with Glaesener renders obvious claims
1-3, 8-19, 21, and 22. Pet. 58-59. Specifically, Athena asserts that “[i]t would
have been obvious to one of skill in the art at the time of the invention to have
substituted Glaesener’s platen 50 for Quéré’s platen 7, satisfying the engagement
limitations” because Glaesener states that the tie bars may be secured by “‘any
appropriate mechanism.’” Pet. 58 (quoting Ex. 1002 ¶ 35).
However, Athena does not explain why a person of ordinary skill in the art
would have found the challenged claims obvious given the deficiency in the
disclosure of Quéré related to the complementary lock member as described above.
Thus, we are not persuaded that there is a reasonable likelihood that Athena
will prevail on obviousness over Quéré combined with Glaesener of claims 1-3, 8
19, 21, and 22.
III. 	CONCLUSION
We institute an inter partes review of claims 1-22 of the ’536 Patent on the
following grounds: (1) claims 1-7, 12, and 17-20 as anticipated by Glaesener;
(2) claims 8-11, 13-16, 21, and 22 as obvious over Glaesener; and (3) claims 1,
4-16, 18, and 20-22 as anticipated by Arend. The Board has not made a final
determination on the patentability of the challenged claims.
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IV. 	ORDER
For the reasons given, it is
ORDERED that the Petition is granted as to claims 1-22.
FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), an inter
partes review of the ʼ536 Patent is hereby instituted commencing on the entry date
of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4, notice is
hereby given of the institution of a trial.
FURTHER ORDERED that the trial is limited to the grounds listed in
the Conclusion. No other grounds are authorized for claims 1-22.
FURTHER ORDERED that an initial conference call with the Board
is scheduled for 2 PM Eastern Time on November 21, 2013. The parties are
directed to the Office Trial Practice Guide, 77 Fed. Reg. 48756, 48765-66 (Aug.
14, 2012) for guidance in preparing for the initial conference call, and should come
prepared to discuss any proposed changes to the Scheduling Order entered
herewith and any motions the parties anticipate filing during the trial.
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PETITIONER:
Marshall J. Schmitt
Martin L. Stern
Gilberto E. Espinoza
Edward J. Evans
Michael Best & Friedrich LLP
mjschmitt@micihalebest.com
mlstern@micihalebest.com
geespinoza@micihalebest.com
ejevans@micihalebest.com
PATENT OWNER:
Matthew Cutler
Bryan Wheelock
Douglas Robinson
Harness, Dickey & Pierce, PLC
mcutler@hdp.com
bwheelock@hdp.com
drobinson@hdp.com
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