Docket No. 2016-2250 (IPR2015-00208)
PROST, REYNA, TARANTO
July 3, 2017
Brief Summary: Board decision holding claims patentable vacated for a lack of a proper analysis of Shinn Fu’s obviousness arguments.
Summary: Shinn Fu appeled PTAB IPR decision granting Tire Hanger’s motion to amend the claims of US 6,681,897 and holding the claims patentable. The ‘897 patent “generally relates to apparatuses and methods for handling and supporting vehicle wheels that hae been temporarily removed from a vehicle positioned on a lift or hoist” (for, e.g., wheel repair). Shinn Fu successfully petitioned for IPR of ‘897 claims 1-5 on anticipation and obviousness grounds (based on the “Heidle”, “OSHA” and “Komorita” references). Tire Hanger filed a motion to amend, cancelling claims 1-5 and substituting claims 6-10 (“thus waiving any arguments in defense of patentability of” claims 1-5), which was granted. The FC panel opinion explained that “[i]n broad terms, aside from specifying the order in which to perform the recited steps, these amendments added human involvement to steps that an apparatus or other structure could have otherwise performed.” With it submission, Tire Hanger submitted “arguments in favor of patentability for the newly presented claims…in view of the prior art upon which the USPTO based its institution decision and recently discovered prior art references not of record.” And “Shin Fu opposed and presented arguments of unpatentability with regard to the references Tire Hanger identified in its motion and two additional” US patents (“Curran” and “Conrad”). The PTAB’s decision was reached “after characterizing the focus of the parties’ arguments as being limited only to the Komorita, Heidle, and Conrad references.” The issue here was “whether the Board erred in not adequately addressing Shin Fu’s arguments in opposition to Tire Hanger’s motion to amend…based on ‘the prior art combination of Curran and Conrad as taught by Komorita or Heidle” (“Specifically, Shin Fu contends that the Board did not address its proposed combination that included the addition of Conrad’s tire hanger to a simple lift described in the prior art.”) The FC panel agreed with Shin Fu, finding “the Board’s failure here [to be] arbitrary and capricious” (In re Lee, FC 2002; Motor Vehicle Mfrs., US 1983). The FC panel explained that while Shinn Fu, e.g., “described various prior art references and, more importantly here, the particular manner in which to combine them” (“Shinn Fu provided the specific motivation to combine by adding these features together”), while “the Board addressed the prior art references by removing elements from individual references to achieve the resulting combination and found no motivation to combine the references” and ignored “Shinn Fu’s additive combination of the Curran, Conrad, Komorita/Heidle references…even after describing Shinn Fu’s proposed combination as ‘the centerpiece of [its] argument’”. The FC panel found the Board’s failure to “provide any analysis” left it “no meaningful way to review the Board’s patentability determination” (Pers. Web. Techs., FC 2017; In re NuVasive, FC 2016). Thus, the Board decision was vacated and remanded for consideration of Shinn Fu’s arguments.