Docket No. 2017-1235, -1288 (IPR2015-01039)
MOORE, REYNA, TARANTO
May 9, 2018
Brief summary: PTAB decision of obviousness of certain claims affirmed; decision of non-obviousness of claim 11 reversed based on revised claim construction.
Summary: Valmont appealed final PTAB decision in an IPR that certain claims of US 7,003,357 related to “remotely monitoring and controlling irrigation equipment using handheld devices” are unpatentable as obvious. Lindsay cross-appealed the PTAB’s decision that claim 11 was not obvious. The FC panel reviewed the PTAB’s legal conclusions de novo (obviousness) and its underlying factual findings for substantial evidence (Rambus, FC 2013; KSR, US 2007). The PTAB found the claims would have been obvious in view of the “Scott”, “Pyotsia”, and/or “Abts” (for three claims) references, as “a person of ordinary skill in the art would have been motivated to combine the two references because the handheld devices in Pyotsia provided greater portability and mobility thatn the laptop computers in Scott” with a reasonable expectation of success. Valmont argued there was insufficient motivation to combine the references but the FC panel disagreed because, in part, expert testimony showed “a consistent desire and goal of shrinking hardware and software to squeeze the most functionality out of the smallest hardware package available” (“substantial evidence”). The FC panel also agreed with the PTAB’s obviousness conclusion further including of the Abts reference “that discloses a system for controlling and monitoring agricultural field equipment” (“the specific type of radio links of claims 4 and 5”). Thus, these obviousness determinations were affirmed. Regarding the PTAB’s non-obviousness determination for claim 11, Valmont argued that Lindsay’s second expert declaration was an “improper addition of new evidence” but the PTAB disagreed since that evidence was “limited to arguments responsive to Valmont’s patent owner response, as required under 37 C.F.R. § 42.23(b)” (37 CFR § 42.23(b)). The FC panel disagreed, citing Belden (FC 2015), Altaire (FC 2018), and Genzyme Ther. (FC 2016), and concluding “the Board did not violate its rules or due process requirements” in allowing the second declaration. The FC panel also found that Valmont had “notice and opportunity to respond” and did so by cross-examining Lindsay’s expert, filing obervations with the Board, and addressing that evidence at oral argument before the Board. Valmont also argued Lindsay’s IPR petition was deficient but the FC panel rejected this argument under Cuozzo (US 2016; cannot challenge PTO determination of a “‘reasonable likelihood’ of success” under § 314(d)). The FC panel agreed with Lindsay in its challenge to the PTAB’s finding that claim 11 would not have been obvious because, e.g., it disagreed with the construction of “shape” under the “broadest reasonable construction standard” applicable to unexpired patents (consulting a dictionary and the specification and reviewing Valmont’s testimony). And based on its construction, the FC panel reversed the PTAB’s decision of non-obviousness.