Docket No. 2015-1585, 2015-1586
IPR2013-000407 (8,408,598), IPR2013-00411 (8,408,343)
REYNA, TARANTO, CHEN
April 5, 2016
Brief Summary: Board claim construction of ‘343 claim 7 reversed (“We do not see how the claim language can mean anything else without obvious strain. The specification reinforces this reading.”) Other conclusions of obviousness affirmed based in part on expert testimony before the Board.
Summary: Pride Mobility (PM) appealed Board decision that claims of the ‘598 and ‘343 patents relating to power wheel chairs would have been obvious. PM argued the Board misconstrued ‘343 claim 7 which requires “a ‘substantially planar’ mounting plate ‘orientated perpendicular’ to the axis of the claimed wheelchair’s drive wheel” and, as to all the other claims, that it “erred in concluding that a relevant skilled artisan would have been motivated to make the claimed wheelchair by lowering the position of a pivot in a prior-art wheelchair.” The Board cancelled all the claims of the ‘598 and ‘343 patents based in part on Permobil’s expert testimony about lowering the pivot point of a prior art wheelchair (Goertzen) (“a skilled artisan ‘would have known to compensate for the reduction in stability’ in various ways”) and its conclusion that the skilled artisan would have looked to another prior art reference (Hosino) which disclosed “the advantage of using a low pivot point axis” (another prior art reference, Schaffner, was also relied upon). The Board also concluded claim 7 “reads on the substantially planar mounting plate…and drive-wheel axis…of Goertzen” and that it too would have been obvious. Regarding claim construction, the FC panel explained that under Straight Path (FC 2015), it “conduct[s] a review of the Board’s determination of the broadest reasonable interpretation of the claim language” as long as there are “no dispute[s]…about findings or evidence of facts extrinsic to the patent” (also citing Teva, US 2015 and Ethicon, FC 2015). The FC panel found that claim 7 “tells us exactly what the feature of the three-dimensional [mounting] plate is: it is the surface that makes the plate substantially planar” and “[t]he phrase ‘orientated perpendicular to the drive wheel axis’ must be read to mean that the drive-wheel axis is perpendicular to the mounting plate’s substantially planar surface” (“We do not see how the claim language can mean anything else without obvious strain. The specification reinforces this reading.”) And it concluded that while “[t]he pertinent component of Goertzen is substantially planar…it is indisputably not perpendicular to the drive-wheel axis in the ordinary sense required by claim 7”. The Board decision on construction of claim 7 was therefore reversed. The conclusions of obviousness regarding the other claims was affirmed. It concluded “the findings and evidence are sufficient to support the Board’s rejection of Pride Mobility’s argument” “that a relevant skilled artisan would have recognized that obtaining the obstacle-climbing advantage would have come at the cost of introducing instability problems” (e.g., expert testified that the skilled artisan would have “known to compensate” for such problems).