Jacobs Corp.v.Genesis III, Inc.

Patent Trial and Appeal Board

Jan 22, 2015

11150430 (P.T.A.B. Jan. 22, 2015)

Trials@uspto.gov Paper 12
Tel: 571–272–7822 Entered: January 22, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
JACOBS CORP.,
Petitioner,
v.
GENESIS III, INC.,
Patent Owner.
_______________

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Patent 7,140,569 B2
_______________

Before WILLIAM V. SAINDON, SCOTT E. KAMHOLZ, and
MITCHELL G. WEATHERLY, Administrative Patent Judges.

SAINDON, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

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I. INTRODUCTION
Petitioner filed a corrected petition requesting an inter partes review
(Paper 5, “Pet.”) of claims 1–30 of U.S. Patent No. 7,140,569 B2 (Ex. 1001,
“the ’569 patent”). Pet. 2. Patent Owner filed a Preliminary Response.
Paper 9 (“Prelim. Resp.”).
We have jurisdiction under 35 U.S.C. § 314, which provides that
an inter partes review may not be instituted “unless . . . there is a reasonable
likelihood that the petitioner would prevail with respect to at least 1 of the
claims challenged in the petition.” Our Rules place the burden on Petitioner
to show, in its Petition, a reasonable likelihood of prevailing. 37 C.F.R.
§ 42.104(b)(3)–(5). We have reviewed the Petition, Preliminary Response,
and the evidence cited therein. For the reasons discussed below, we
determine that Petitioner has not demonstrated a reasonable likelihood of
prevailing with respect to any of the challenged claims of the ’569 patent.
A. Related Matters
The ’569 patent was involved in two district court actions that were
dismissed: Bakko Bros, Inc.., vs. Black Diamond Hammers, Inc., Case 4:13-
cv-00134 (S.D. Iowa); and Bakko Bros, Inc. vs. Jacobs Corporation, Case
4:13-CV-00070 (S.D. Iowa). Pet. 1; Prelim. Resp. 4. Patent Owner states
that the action involving Petitioner was “voluntarily dismissed without
prejudice by Genesis on May 23, 2013.” Id.
B. The ’569 Patent
The ’569 patent is directed to a hammer mill hammer. Ex. 1001,
Abstr. Specifically, “[t]he hammer is produced through forging versus
casting or rolling as found in the prior art.” Id. at 3:20–21. In addition, the
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hammer optionally includes other strengthening features such as raised
shoulders (see, e.g., id. at 8:5–18; Fig. 5, item 27), a tapered shape (see, e.g.,
id. at 9:54–62, Fig. 11, item 30), and welded edges (see, e.g., id. at 8:24–27,
Fig. 5, item 25).
C. Illustrative Claims
Petitioner challenges all of the claims in the ’569 patent, of which
claims 1, 8, 14, 18, and 23 are independent. Each independent claim
specifies that the hammer is forged, either in the body (claims 8 and 23) or
the preamble (claims 1, 14, and 18) of the claim. Claims 1 and 8 are
reproduced below.
1. An improved metallic based forged hammer for
use in a rotatable hammermill assembly
comprising:
a. a first end for securement within said
hammermill assembly;
b. a rod hole, said rod hole centered in said first
end for engagement with and attachment to said
hammermill assembly;
c. at least one rod hole shoulder surrounds the
perimeter of said rod hole;
d. a second end for contact and delivery of
momentum to material to be comminuted
wherein said second end has a weld hardened
edge; and,
e. a neck connecting said first hammer end to said
second hammer end, wherein said thickness of
said neck is less than the combined thickness of
said rod hole shoulder and said first end of said
hammer.

8. An improved metallic based hammer for use in
a rotatable hammermill assembly comprising:
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a. a first end for securement within said
hammermill assembly;
b. a second end for contact and delivery of force
to material to be comminuted; and,
c. a neck connecting said first end to said second
end, wherein said the thickness of said neck of
said hammer is less than the thickness of either
said first or second ends; and
d. said hammer is forged.

D. Prior Art and Asserted Grounds
Petitioner asserts 13 grounds against the ’569 patent, citing to 7 prior
art references. Pet. 2–5. These grounds are divided into three groups, each
group primarily relying on one of three references: Kachik,
1
Hermann,
2
or
Schillinger.
3
We need only discuss these three references for purposes of
this decision.
II. ANALYSIS
Each claim in the ’569 patent recites that the hammer is forged. For
the reasons set forth below, we determine that Petitioner has failed to
address adequately this term in each of the asserted grounds. First, we
discuss Patent Owner’s time bar argument, then we discuss the asserted
grounds in turn.

1
U.S. Patent No. 4,856,170, issued Aug. 15, 1989 (Ex. 1002).
2
U.S. Patent No. 3,058,676, issued Oct. 16, 1962 (Ex. 1003).
3
U.S. Pub. No. 2004/0017955 A1, published Jan. 29, 2004 (Ex. 1004).
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A. Patent Owner’s 35 U.S.C. § 315(b) Time
Bar Argument
Patent Owner argues that this Petition is time barred under 35 U.S.C.
§ 315(b) on account of the Bakko Bros, Inc. vs. Jacobs Corporation action
listed in Section I.A. above. Prelim. Resp. 1–6. As Patent Owner states,
however, the action involving Petitioner was “voluntarily dismissed without
prejudice by Genesis on May 23, 2013.” Id. at 4. We have held previously
that district court actions voluntarily dismissed without prejudice typically
do not invoke a § 315(b) bar. See, e.g., Cyanotech Corp. v. Bd. of Trs. of the
Univ. of Ill., Case IPR2013-00401, slip op. at 9–12 (PTAB Dec. 19, 2013)
(Paper 17); Clio USA, Inc. v. Procter & Gamble Co., Case IPR2013-00450,
slip op. at 5–8 (PTAB Jan. 9, 2014) (Paper 14); Butamax™ Adv. Biofuels
LLC v. Gevo, Inc., Case IPR2013-00539, slip op. at 6–8 (PTAB Mar. 4,
2014) (Paper 9). We determine, on the facts before us, that Petitioner is not
barred under § 315(b).
B. Grounds Primarily Relying on Kachik
Petitioner asserts that each claim in the ’569 patent is anticipated by
Kachik or obvious in view of Kachik. Pet. 3. Petitioner presents a claim
chart setting forth where it believes each limitation of the claims is found in
the prior art (id. at 28–35) as well as a narrative explanation of the grounds
(id. at 14–18). We briefly discuss the relevant disclosures of Kachik before
turning to Petitioner’s grounds.
1. Kachik
Kachik describes a way to rebuild worn hammer mill hammers. Ex.
1002, 1:6–11. Depending on the use of the hammer, the size and weight of
hammer mill hammers can vary greatly, from 12 pounds to 200 pounds, for
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example. Id. at 1:64–2:2. Consequently, different rebuilding apparatus are
required for different hammer sizes. Id. at 2:35–43. In Figures 4–8, Kachik
depicts a rebuilding apparatus for smaller, forged hammers, such as those
depicted in Figures 1–3, whereas in Figures 11 and 12, Kachik depicts a
rebuilding apparatus for larger hammers, such as that depicted in Figures 9
and 10. Id. at 5:35–58 (describing the Figures); id. at 9:19–25 (describing
the smaller hammers as forged). Kachik emphasizes that the larger hammer
“does not have a configuration similar to the [smaller hammer].” Id. at
9:30–37. Thus, Kachik describes two different hammers (small and large),
but describes only the small hammer as forged.
2. Petitioner’s Analysis Regarding the Term “Forged”
Petitioner’s analysis reads the claim term “forged” on the small
hammer of Kachik, but otherwise reads the claim terms on the large hammer
of Kachik (or on other art). See Pet. 28–35. Using this analysis, Petitioner
asserts that Kachik anticipates independent claims 1, 8, 18, and 23. Id.
Kachik describes the small hammer as being a separate type of hammer from
the large hammer, however. Ex. 1002, 9:30–37 (describing how the larger
hammer “does not have a configuration similar to the [smaller hammer]”).
Petitioner does not address adequately why it is permissible to pick and
choose features from multiple embodiments of Kachik in an anticipation
context. See, e.g., Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359,
1370–71 (Fed. Cir. 2008) (holding that a prior art reference that “includes
multiple, distinct teachings that the artisan might somehow combine to
achieve the claimed invention” is insufficient to show anticipation). In
addition, Petitioner does not address sufficiently why it would have been
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obvious to a person of ordinary skill in the art to combine features from
multiple embodiments of Kachik.
Similarly, with respect to independent claim 14, Petitioner merely
asserts that “Kachik . . . shows a forged free swinging hammer 101.”
Pet. 31. Petitioner does not cite where it finds in Kachik a description of
hammer 101 being forged. Instead, as we discussed above, Kachik states
that small hammer 1 is forged, not hammer 101. Ex. 1002, 6:31–35, 9:19–
25.
3. Conclusion
Petitioner has not addressed sufficiently the “forged” aspect of each
independent claim for the reasons set forth above. Consequently, Petitioner
has failed to show a reasonable likelihood that the subject matter of claims
1–30 is anticipated by Kachik or obvious in view of Kachik alone or in view
of one or more other references.
C. Grounds Primarily Relying on Hermann
Petitioner asserts that claims 1–30 of the ’569 patent are unpatentable
over Hermann in view of one or more other references (one of which
includes Kachik). Pet. 3–5. Petitioner presents a claim chart setting forth
where it believes each limitation of the claims is found in the prior art (id. at
35–42) as well as a narrative explanation of the grounds (id. at 18–23).
1. Claims 1–7 and 14–22
With respect to independent claim 1, Petitioner’s analysis as to the
term “forged” is limited to the following statement: “‘forged’ is in the
preamble.” Pet. 35. With respect to independent claims 14 and 18,
Petitioner does not discuss the term “forged.” Pet. 38, 39. Petitioner does
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not set forth sufficiently an analysis of either: 1) how the prior art describes
a forged hammer; or 2) why Petitioner need not address the term “forged”
found in the claims. Accordingly, Petitioner has not addressed sufficiently
the “forged” aspect of independent claims 1, 14, and 18, or the claims that
depend therefrom.
2. Claims 8–13 and 23–30
With respect to independent claims 8 and 23, Petitioner’s analysis as
to the term “forged” begins by pointing to the word “forged” in Kachik.
Pet. 37, 41 (citing to Ex. 1002, 9:19–25). Petitioner then states, for claim 8,
that “[i]t would be obvious to forge the Hermann hammer by using the
teaching . . . of Kachik to forge Kachik’s hammer.” Id. at 19 (emphasis
removed). Petitioner’s discussion of claim 23 does not discuss the “forged”
aspect of the claim. Id. at 22.
An obviousness analysis requires more than simply showing that each
limitation is found in the prior art. KSR Int'l Co. v. Teleflex, Inc., 550 U.S.
398, 418 (2007) (“a patent composed of several elements is not proved
obvious merely by demonstrating that each of its elements was,
independently, known in the prior art”). Petitioner must also show “whether
there was an apparent reason to combine the known elements in the fashion
claimed by the patent at issue.” Id. (citing In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006)). Petitioner has failed to address this latter, “reason to
combine” portion of the obviousness analysis and instead merely points to a
disclosure of “forged” and baldly concludes that it would have been obvious
to forge the Hermann hammer. E.g., Pet. 19. Accordingly, Petitioner has
not addressed sufficiently the “forged” aspect of independent claims 8 and
23, or the claims that depend therefrom.
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3. Conclusion
Petitioner has not addressed sufficiently the “forged” aspect of each
independent claim for the reasons set forth above. Consequently, Petitioner
has failed to show a reasonable likelihood that the subject matter of claims
1–30 is anticipated by Hermann or obvious over Hermann in view of one or
more other references.
D. Grounds Primarily Relying on Schillinger
Petitioner asserts that claim 1 of the ’569 patent is anticipated by
Schillinger and that claims 2–30 of the ’569 patent are unpatentable over
Schillinger. Pet. 5. Petitioner presents a claim chart setting forth where it
believes each limitation of the claims is found in the prior art (id. at 42–49)
as well as a narrative explanation of the grounds (id. at 23–28).
Petitioner’s assertions with respect to Schillinger are deficient for
reasons analogous to those reasons we determined Petitioner’s assertions
with respect to Hermann were deficient. With respect to independent claims
1, 14, and 18, Petitioner’s analysis does not address sufficiently the “forged”
aspect of the claims. See Pet. 42, 45, 46. With respect to independent
claims 8 and 18, Petitioner’s analysis does not address sufficiently why a
person of ordinary skill in the art would have considered the combination
obvious. See Pet. 24, 26. Accordingly, Petitioner has failed to address
sufficiently the “forged” aspect of each independent claim. Consequently,
Petitioner has failed to show a reasonable likelihood that the subject matter
of claims 1–30 is anticipated or obvious in view of Schillinger alone or in
view of one or more other references.
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III. ORDER
In view of the foregoing, it is hereby:
ORDERED that no inter partes review of the ’569 patent is instituted
and that all grounds set forth in the Petition challenging the ’569 patent are
denied.

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PETITIONER:

Michael O. Sturm
Richard Fix
STURM & FIX LLP
sturm@hsllp.com
fix@hsllp.com

PATENT OWNER:

Jay R. Hamilton
Charles A. Damschen
HAMILTON IP LAW P.C.
Jay@hamiltoniplaw.com
Charlie@hamiltoniplaw.com