FLIR Detection Inc.

Patent Trials and Appeals Board

Mar 9, 2021

IPR2019-01549 (P.T.A.B. Mar. 9, 2021)

Trials@uspto.gov Paper 29
571-272-7822 Entered: March 9, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

FOSTER-MILLER INC.,
Petitioner,

v.

FLIR DETECTION INC.,
Patent Owner.
____________

Case IPR2019-01549
Patent 6,431,296 B1

Before MEREDITH C. PETRAVICK, BARRY L. GROSSMAN, and
RICHARD H. MARSCHALL, Administrative Patent Judges.

PETRAVICK, Administrative Patent Judge.

FINAL WRITTEN DECISION
Determining All Claims Unpatentable
35 U.S.C. § 318(a)
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I. INTRODUCTION
Foster-Miller Inc. (“Petitioner”) filed a petition for inter partes review
of claims 1–9 of U.S. Patent No. 6,431,296 B2 (Ex. 1001, the “’296 patent”).
Paper 1 (“Pet.”). Flir Detection Inc. (“Patent Owner”) did not file a
preliminary response.
On March 11, 2020, we instituted trial. Paper 10 (“Inst. Dec.”).
Patent Owner filed a Response. Paper 15 (“PO Resp.”). Petitioner filed a
Reply. Paper 18 (“Pet. Reply”). Patent Owner filed a Sur-reply. Paper 23
(“PO Sur-reply”). We held oral argument on November 18, 2020, and a
transcript appears in the record. Paper 28 (“Tr.”).
We have jurisdiction to conduct this inter partes review under
35 U.S.C. § 6. This Final Written Decision is issued pursuant to 35 U.S.C.
§ 318(a) and 37 C.F.R. § 42.73. For the reasons discussed herein, we
determine that Petitioner has shown, by a preponderance of the evidence,
that claims 1–9 of the ’296 patent are unpatentable.
Related Matters
The Petitioner indicates that the ’296 patent is involved in the
following case filed in the United States District Court for the District of
Delaware on December 28, 2018: Endeavor Robotics, Inc., v. QinetiQ
North America, Inc. and Foster-Miller Inc., Case No. 1:18-cv-02071-MN.
Pet. 73. Patent Owner, however, indicates that there are no related matters.
Paper 6, 2.
The ’296 Patent
The ’296 patent is titled “Robotic Platform” and issued on August 13,
2002. Ex. 1001, codes (45), (54). The ’296 patent discloses a robot 100. Id.
at 4:20–21. Figure 3a of the ’296 patent is reproduced below.
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Figure 3a depicts robot 100 in a fully extended position. Id. at 3:59–60, 5:1–
3. Robot 100 has main tracks 110 on main body 140 and forward tracks
120 on forward arms 130. Id. at 5:1–4.
The ’296 patent discloses that robot 100 can perform multiple
maneuvers, including stair climbing and self righting. Id. at 8:65–67.
Figure 11 of the ’296 patent is reproduced below.

Figure 11 depicts a “schematic side view of a stair climbing maneuver.” Id.
at 4:6. The ’296 patent describes robot 100 climbing stairs as follows:
Referring to FIG. 11, robot 100 can raise arms 130 in
order to mount an obstacle, such as a stair 1010, in its path. To
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mount the first step of staircase 1110, robot 100 raises its arms
130 and drives forward to raise its main tracks 110 onto the first
stair. The robot then assumes a fully extended mode thereby
extending its wheelbase to increase it[s] stability and to provide
as smooth a ride a[s] possible up the stairs. Soft cleats 350 (not
shown in FIG. 11) provide mechanical locking with the stair
edge needed to drive the robot up the stairs.

Id. at 9:62–10:3.
Figures 8a–c of the ’296 patent are reproduced in sequence below.

Figures 8a–c depict the maneuver to achieve an upright position. Id. at 4:1–
2.
Referring to FIG. 8a, robot 100 begins in a stowed position, and
then using articulator drive motor 372 . . . applies a torque to
the arms. Since the center of gravity is within arc of the arms . .
. , the main body is raised (FIG. 8b) until it reaches a high
position (FIG. 8c) which is short of the point at which the robot
would topple.
Id. at 9:34–39.

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Figures 10a–b of the ’296 patent is reproduced below.

Figures 10a–b depict a self-righting maneuver. Id. at 4:4–5. The ’296
patent describes robot 100 self-righting or inverting as follows:
In this maneuver, in order to invert itself, the robot begins in a
stowed mode and raises itself as it does when attaining the
upright mobility mode (FIGS. 8a–c). However, rather than
stopping in the upright position shown in FIG. 10a rotation is
continued past the vertical point and the robot falls over
(FIG.10b), thereby completing the inversion.
Id. at 9:55–61.

Challenged Claims
Petitioner challenges all claims, claims 1–9, of the ’296 patent. Pet. 3.
Claims 1 and 8 are independent. Ex. 1001, 12:49–62, 14:3–16. Independent
claim 1 recites:
1. A method for operating an articulated tracked vehicle having
a main tracked chassis and a pivoting forward arm to climb a
series of stairs having a rise in elevation at a first stair and at
each subsequent stair, comprising:
pivoting the arm to raise the arm higher than the rise of the
first stair;
approaching the first stair until the arm contacts the first stair;
driving the main tracks to propel the vehicle until the main
tracks contacts the first stair;
pivoting the arm to extend the tracked base of the vehicle; and
driving the main tracks to ascend the series of stairs.
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Id. at 12:49–62. Claims 2–7 depend directly or indirectly from claim 1. Id.
at 12:63–14:2.
Independent claim 8 recites:
8. A method for inverting an articulated tracked vehicle having
a main tracked chassis and a pivoting arm, comprising:
supporting the vehicle on the main tracks in a first vertical
orientation;
pivoting the arm to support the vehicle on the pivoting arm,
further pivoting the arm to pass the main chassis past a stable
point, and
supporting the vehicle on the main tracks in a second vertical
orientation, the second vertical orientation being inverted
with respect to the first orientation.
Id. at 14:3–16. Claim 9 depends from claim 8. Id. at 14:17–20.

The Asserted Grounds
Petitioner challenges claims 1–9 of the ’296 patent on the following
grounds:
Claims Challenged 35 U.S.C. § Reference(s)/Basis
1–7 1031 Jensen2
1–9 103 Iwamoto3
1, 6, 7 103 Clement4 and Jensen
Pet. 5. Petitioner relies on the Declaration of Dr. John Martens (Ex. 1003).

1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103, effective March 16,
2013. Because the application from which the ’296 patent issued was filed
before this date, the pre-AIA version of § 103 applies.
2 U.S. Patent No. 3,869,011, issued Mar. 4, 1975 (Ex. 1005) (“Jensen”).
3 U.S. Patent No. 4,483,407, issued Nov. 20, 1984 (Ex. 1006) (“Iwamoto”).
4 U.S. Patent No. 4,709,773, issued Dec. 1, 1987 (Ex. 1007) (“Clement”).
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Patent Owner relies on the Declaration of Dr. Robert H. Sturgs Jr. (Ex.
2001).

II. ANALYSIS
Claim Construction
“[I]n an inter partes review proceeding, a claim of a patent . . . shall
be construed using the same claim construction standard that would be used
to construe the claim in a civil action under 35 U.S.C. § 282(b), including
construing the claim in accordance with the ordinary and customary
meaning of such claim as understood by one of ordinary skill in the art and
the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b). In
applying a district court-type claim construction, we are guided by the
principle that the words of a claim “are generally given their ordinary and
customary meaning,” as understood by a person of ordinary skill in the art at
the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13
(Fed. Cir. 2005) (en banc) (citation omitted). “In determining the meaning
of the disputed claim limitation, we look principally to the intrinsic evidence
of record, examining the claim language itself, the written description, and
the prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic
Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips,
415 F.3d at 1312–17). There is a “heavy presumption,” however, that a
claim term carries its ordinary and customary meaning. CCS Fitness, Inc. v.
Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (citation omitted).
We are also guided by the principle that we only construe claim terms
if, and to the extent that, it is necessary for the purpose of the proceeding,
here, to determine whether to institute an inter partes review. See, e.g.,
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Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011)
(“[C]laim terms need only be construed ‘to the extent necessary to resolve
the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
200 F.3d 795, 803 (Fed. Cir. 1999)).
Petitioner asserts, “[t]here are no claim terms requiring construction,
and all claims should be given their plain and ordinary meaning.” Pet. 15.
Similarly, Patent Owner provides no explicit constructions of any claim
elements and states that “claims are generally given their ordinary and
customary meaning from the perspective of a person of ordinary skill in the
art at the time of the invention.” PO Resp. 6–7. We agree that no explicit
constructions are necessary and give claim terms their plain and ordinary
meaning.

Legal Standards
A patent claim is unpatentable as obvious if the differences between
the claimed subject matter and the prior art are such that the subject matter,
as a whole, would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject matter pertains.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations
including: (1) the scope and content of the prior art; (2) any differences
between the claimed subject matter and the prior art; (3) the level of ordinary
skill in the art; and (4) objective evidence of nonobviousness.5 Graham v.
John Deere Co., 383 U.S. 1, 17–18 (1966).

5 The record contains no objective evidence of nonobviousness or any
related arguments for us to consider.
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Level of Skill in the Art
With regard to the level of ordinary skill in the art, Petitioner contends
a person of ordinary skill in the art [“POSITA”] for the ’296
patent would have a bachelor’s degree in electrical engineering,
computer engineering, mechanical engineering, computer
science, physics, or a related field, and four years of experience
(or the academic equivalent) in the field of robotics. Additional
graduate education could substitute for professional experience
and vice-versa.
Pet. 15 (citing Ex. 1003 ¶ 33). According to Patent Owner, “[a]n
appropriate definition of POSITA would be a person with a bachelor’s
degree in mechanical engineering or physics and four years of experience (or
the academic equivalent) in the field of robotics.” PO Resp. 6 (citing Ex.
2001 ¶ 24).
The difference between the definitions is that Petitioner’s definition
includes “someone who does not have a substantial academic training or
experience in mechanical engineering or physics” (PO Resp. 6), such as an
electrical engineer, computer engineer, or computer scientist. Dr. Sturges
testifies:
Electrical engineering, computer engineering, and computer
science might be relevant in connection with certain control
systems for remotely navigating a robotic vehicle, but they
would not cover the kinematic and dynamic principles required
to fully appreciate the inventions recited in the claims of the
’296 patent.
Ex. 2001 ¶ 25.
The difference between Petitioner and Patent Owner’s
definitions of a POSITA, however, do not affect our determinations in
the analysis below, measured under either standard. We also
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determine that the level of ordinary skill in the art is reflected by the
prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355
(Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir.
1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).

Obviousness Based on Jensen
Overview of Jensen
Jensen is titled “Stair Climbing Tracked Vehicle.” Ex. 1005, code
(54). Figure 2 of Jensen is reproduced below.

Figure 2 depicts a side elevation of vehicle 20 adjusted for normal horizontal
travel. Id. at 3:21–23. Vehicle 20 has main tracks 22, 22’ and auxiliary
tracks 32, 32’, pivotally attached to the front of main tracks 22, 22’. Id. at
4:14–17, 4:32–36, Fig. 1.
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Figure 8 of Jensen is reproduced below.

Figure 8 depicts vehicle 20 “in the initial stages of climbing a staircase.” Id.
at 3:40–41.
The vehicle 20 is driven to the staircase, again facing forwardly,
but this time arriving at the bottom. The elbow linkage 70
(pivoted from should stanchion 75) is released dropping the
auxiliary tracks 32, 32’ down onto the first stair riser. In the
illustrated embodiment, the auxiliary tracks are locked in this
position. The vehicle is then driven forwards in this attitude
until the main tracks 22. 22’ assume the included position. The
auxiliary tracks 32, 32’ are then dropped manually (or have
dropped by gravity, if ratchets are used in linkage 70) the rest of
the way and locked in the aligned positon illustrated in FIG.
14b.
Id. at 7:17–29.
Figure 6 of Jensen is reproduced below.

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Figure 6 depicts vehicle 20 “traveling down a staircase.” Id. at 3:36–37.
“The ascent up the staircase is quite similar.” Id. at 7:17.

Analysis of Claim 1
Preamble - A method for operating an articulated tracked vehicle having a
main tracked chassis and a pivoting forward arm to climb a series of stairs
having a rise in elevation at a first stair and at each subsequent stair

Petitioner contends that Jensen discloses the preamble of claim 1. Pet.
18 (citing Ex. 1005, Abstract, 1:52–2:8, 4:14–45, 5:44–6:51, 7:17, Fig. 6).
We agree with Petitioner. Jensen discloses stair-climbing vehicle 20, having
main tracks 22, 22’ and auxiliary tracks 32, 32’, pivotally attached to the
front of main tracks 22, 22’. Id. at 4:14–17, 4:32–36. Ex. 1005, Abstract,
1:1–6, 1:52–58:8, 4:14–45. Jensen’s Figure 8 depicts vehicle 20 “traveling
down a staircase” and “[t]he ascent up the staircase is quite similar.” Id. at
3:36–37, 7:17. Patent Owner does not dispute that Jensen discloses the
preamble.

“pivoting the arm to raise the arm higher than the rise of the first stair”
Petitioner contends that Jensen discloses claim 1’s step of “pivoting
the arm to raise the arm higher than the rise of the first stair.” See Pet. 19–
20 (citing Ex. 1005, 3:41–42, 7:11–16, 7:19–22, Fig. 2, 3, 8; Ex. 1003 ¶ 48).
We agree with Petitioner. Figure 8 of Jensen, reproduced above, shows
auxiliary arm 32 higher than the rise of the first stair and dropped onto the
first stair riser. See Ex. 1005, Fig. 8; see also id. at 7:19–22. Dr. Martens
testifies “[i]n order to be dropped down, the arm must start above the riser.”
Ex. 1003 ¶ 48. Jensen discloses a mechanism for pivoting the auxiliary
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track to a raised position. See Ex. 1005, 7:7–16. Patent Owner does not
dispute that Jensen discloses this claim step.

“approaching the first stair until the arm contacts the first stair”
Petitioner contends that Jensen discloses claim 1’s step of
“approaching the first stair until the arm contacts the first stair.” See Pet. 21
(citing Ex. 1005, Fig. 8). The Petition states: “Jensen discloses ‘approaching
the first stair until the arm contacts the first stair’ because Jensen’s Fig. 8 . . .
shows that the vehicle has approached the first stair until the forward arm 32
contacts the first stair.” Pet. 21; see also Pet. Reply 2–3. The Petition states
that Jensen’s “vehicle 20 drives to the staircase and arrives at the bottom of
the staircase where the elbow linkage 70 releases and drops the auxiliary
tracks 32 onto the first stair rise.” Id. at 17 (citing Ex. 1005, 7:17–22).
We agree with Petitioner. Jensen’s Figure 8 depicts vehicle 20 “in the
initial stages of climbing a staircase.” Ex. 1005, 3:40–41. With respect to
ascending the staircase, Jensen states:
The vehicle 20 is driven to the staircase, again facing forwardly,
but this time arriving at the bottom. The elbow linkage 70
(pivoted from shoulder stanchion 75) is released dropping the
auxiliary tracks 32, 32’ down onto the first stair riser.
Id. at 7:17–22. Jensen, thus, discloses vehicle 20 approaching the first stair
until the arm contacts the first stair because Jensen discloses dropping
auxiliary tracks 32, 32’ down onto the first stair riser. See Ex. 1005, 7:19–
21, Fig. 8.
Patent Owner disputes Jensen discloses this claimed step because
Jensen does not disclose continuously driving the main tracks of the vehicle
until the arm contacts the first stair riser. See PO Resp. 10; PO Sur-reply 4.
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For example, Patent Owner argues, “claim 1 requires the vehicle, not just the
arm, to approach the first stair until the arm contacts the first stair.” PO Sur-
reply 4. Patent Owner’s implies that “approaching” requires continuously
driving the main tracks. But, the language of claim 1 does not recite what
component of the vehicle performs the approaching. Ex. 1001, 12:49–62.
Claim 1 does not preclude the vehicle approaching the first stair by dropping
the arm on the first stair. See id.; see also Pet. Reply 3. Patent Owner’s
arguments, thus, are unpersuasive.
Patent Owner contends:
Petitioner never suggested in its Petition, not on pages 21–22
or elsewhere, that the “approaching” step is met by, or would
have been obvious in view of, the lowering of Jensen’s
auxiliary tracks 32, 32’ alone. Now, for the first time,
Petitioner argues that the step is met by the lowering of the
tracks “alone.” Reply at 3. If that was always Petitioner’s
argument, it should have been made in the Petition
and argues that “Petitioner’s new argument should be disregarded.” PO Sur-
Reply 1. But, Petitioner’s argument was made in the Petition. See Pet. 17,
21; see also Inst. Dec. 11–12 (“we agree that Jensen discloses vehicle 20
approaching the first stair until the arm contacts the first stair because Jensen
discloses dropping auxiliary tracks 32, 32’ down onto the first stair riser”).

“driving the main tracks to propel the vehicle until the main tracks contacts
the first stair”
Petitioner contends that Jensen discloses claim 1’s step of driving the
main tracks to propel the vehicle until the main tracks contact the first stair.
See Pet. 23–24 (citing Ex. 1005, 2:16–21, 7:23–29, Fig. 6, 8; Ex. 1003
¶¶ 52–53). We agree with Petitioner. Jensen discloses vehicle 20 driving
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forward until the main tracks assume the “inclined position” and after
reaching the inclined positon, the auxiliary arms are dropped and locked in
the “aligned position” where the vehicle is in an aligned positioned. Ex.
1005, 7:23–31. Jensen discloses that the main tracks are driven. Id. at 2:16–
21 (explaining that the main tracks are independently driven). Dr. Martens
testifies this “implies that the ‘inclined position’ is only reached when the
main tracks contact the first stair.” Ex. 1003 ¶ 52. Patent Owner does not
dispute that Jensen discloses this claim step.

“pivoting the arm to extend the tracked base of the vehicle”
Petitioner contends that Jensen discloses claim 1’s step of pivoting the
arm to extend the tracked based of the vehicle. See Pet. 25 (citing Ex. 1005,
7:23–29, Figs. 6, 14b; Ex. 1003 ¶ 54). We agree with Petitioner. Jensen
discloses dropping the auxiliary arms and locking them into the aligned
position with the main tracks. Ex. 1005, 7:23–31; Ex. 1005, 7:23–29; see id.
at Figs. 6, 14b. Dr. Martens testifies: “Therefore, when the arm is lowered,
the tracked based of the vehicle is extended.” Ex. 1003 ¶ 54. Patent Owner
does not dispute that Jensen discloses this claim step.

“driving the main tracks to ascend the series of stairs”
Petitioner contends that Jensen discloses claim 1’s step of driving the
main tracks to ascend the series of stairs. See Pet. 25–26 (citing Ex. 1005,
2:16–21, 6:37–40, 7:17–29, 7:33–34, Fig. 6; Ex. 1003 ¶ 55). We agree with
Petitioner. Jensen’s Fig. 6 shows the vehicle traveling along the stairs in a
descent, and Jensen states that the “ascent up the stairs is quite similar.” Ex.
1005, 6:37–40, 7:17; see also id. at 7:29–30 (“[u]pon arriving at the top of
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the stairs . . .” ), 7:33–34 (“[t]he vehicle continues to ascend the staircase 66
(as shown in FIG. 10)”). During the ascent, the auxiliary tracks are aligned
with the main tracks. Id. at 7:17–29, Fig. 6. Jensen discloses that the main
tracks are driven. Id. at 2:16–21 (explaining that the main tracks are
independently driven). Dr. Martens testifies, “[t]he vehicle could not reach
the top of the stairs unless driven forward by the main tracks (in conjunction
with the auxiliary tracks on the pivoting arm).” Ex. 1003 ¶ 55. Patent
Owner does not dispute that Jensen discloses this claim step.

Conclusion as to Obviousness Based on Jensen
For the reasons discussed above, Petitioner has shown that claim 1 is
unpatentable over Jensen. Based on the arguments and evidence presented
in the Petition, we determine Petitioner has sufficiently shown that
dependent claims 2–7 are also unpatentable over Jensen. Pet. 43–53.
Patent Owner makes no other arguments specific to dependent claims 2–7.
See PO Resp. 17–18. Petitioner has demonstrated by a preponderance of the
evidence Jensen renders independent claim 1, and claims 2–7, dependent
therefrom, unpatentable.

Obviousness Based on Iwamoto
Overview of Iwamoto
Iwamoto is titled “Variable Configuration Track Laying Vehicle” and
discloses a remote-controlled vehicle with endless tracks “suited for going
up stairs.” Ex. 1006, code (54), 1:8–10. Figures 4–8 of Iwamoto are
reproduced in sequence below.
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Figures 4–8 depicts a first embodiment of vehicle 1 ascending stair S. Id. at
2:15–17, 3:20. First arms 7 swing to lift auxiliary wheels 5. Id. at 3:21–25,
Fig. 5. When driving wheel 2 is on stair S, first arms 7 swing backward, as
shown by the sold lines in Fig. 6, to move auxiliary wheels 5 rearward to
cause endless tracks 6 to contact the floor surface to prevent the vehicle from
rolling down. Id. at 3:25–31. Driving wheels 2 or secondary wheels 3 then
move vehicle 10 up stairs S and first arms 7 pivot so that the tread surfaces
of endless tracks 6 lay substantially in an inclined common plane. Id. at
3:32–37. At the uppermost step of stairs S, first arms 7 swing downwardly
so that vehicle 10 drives stably on the flat floor. Id. at 3:37–41.
Iwamoto also disclose a second embodiment of the vehicle used to
inspect various indoor equipment. Id. at 4:20–25; Figs. 11–20. Figure 13 of
Iwamoto is reproduced below.
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Figure 13 depicts a second embodiment of the vehicle. Id. at 4:21–24. In
this embodiment, the vehicle has a manipulator M and a TV camera T. Id. at
4:24–25. Auxiliary wheel 105 is supported by supporting means 107, which
comprises first arm 108 and second arm 109, and is movable along an
ellipse. Id. at 30–43.
Figures 18–20 of Iwamoto are reproduced side-by-side below.

Figures 18–20 depict the second embodiment of the vehicle in different
positions. Id. at 2:41–42. “[T]he configuration of each endless track 106
can be varied as desired by moving the auxiliary wheel 105 with respect to
the driving wheel 102 and the secondary wheel 103 through pivotal
movement of the first and second arms 108 and 109.” Id. at 6:26–32.
Figure 18 depicts auxiliary wheel 105 in a position below vehicle body 101
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to permit stable ascending or descending of stairs, while vehicle body 101 is
kept substantially horizontal. Id. at 6:34–40. Figure 19 depicts vehicle body
101 forwardly declined to facilitate work done in front of vehicle body 1010.
Id. at 6:40–43. Figure 20 depicts an accidental fall of the vehicle. Id. at
6:4–44. To return to normal position, auxiliary wheel 105 moves in the
direction shown by arrow C so that vehicle body 101 rotates about driving
wheel 102 in the direction shown by arrow D. Id. at 6:43–49.
Iwamoto discloses that auxiliary wheels 105 moves along an elliptic
path that can be used for “superior running performance, mobility and
position controllability of the posture of the vehicle.” Id. at 4:61–63, 6:50–
58. Figure 14 of Iwamoto is reproduced below.

Figure 14 illustrates “the principle of movement of the auxiliary wheels.”
Id. at 2:29–31, 4:61–63.
Analysis of Claim 1
The preamble of claim 1 sets for “an articulated tracked vehicle
having a main tracked chassis and a pivoting forward arm.” The body of
claim 1 recites steps of “pivoting the arm to raise the arm higher than the rise
of the first stair” and “approaching the first stair until the arm contacts the
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first stair.” The “pivoting forward arm” of the preamble provides antecedent
basis for “the arm” recited in the steps.
Patent Owner argues that Iwamoto does not disclose, “approaching
the first stair until the arm contacts the first stair” as required by claim 1
because the alleged arm of Iwamoto changes depending on the orientation
or configuration of the vehicle. PO Resp. 24 (citing Ex. 2005, 63:5–9);
PO Sur-Reply 11–12.
With respect to claim 1’s step of “approaching the first stair until the
arm contacts the first stair,” Petitioner equates the claimed “pivoting forward
arm” to first arm 7, second arm 8, auxiliary wheel 5, and the portion of track
between driving wheel 2 and auxiliary wheel 5 in Iwamoto. See e.g., Pet.
Reply 17 (citing Ex. 1021 ¶ 17). For example, Petitioner annotates
Iwamoto’s Figures 4 and 5 to show the pivoting forward arm. Pet. 17.
Annotated Figures 4 and 5 are reproduced below.

Annotated Figures 4 and 5 depict first arm 7, second arm 8, auxiliary wheel
5, and the portion of track between driving wheel 2 and auxiliary wheel 5
colored in red.
With respect to claim 1’s step of “approaching the first stair until the
arm contacts the first stair,” the Petition states:
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Iwamoto discloses a vehicle approaching the first stair until the
arm contacts the first stair because it discloses that the pivoting
arms are swung back “when the driving wheels 2 have gotten
on the first step” as shown in Fig. 6.” [Ex. 1006], 3:25–28, Fig.
6. Therefore, to maneuver from the configuration shown in Fig.
5 to the one in Fig. 6, the vehicle approaches the first stair until
the arm contacts the first stair. Ex. 1003, ¶ 72.
Pet. 39. The Petition relies upon Iwamoto’s Figures 5 and 6 to show the arm
contacting the first stair. Id. at 39–40. Annotated Figure 5 and Iwamoto’s
Figure 6 are reproduced below.

Annotated Figure 5 and Figure 6 depict the vehicle ascending the stairs. Id.
at 3:20–37. The portion of track between driving wheel 2 and auxiliary
wheel 5 in Annotated Figure 5 must rotate in order for the vehicle to arrive
at the position shown in Figure 6, where driving wheel 2 is on the first step.
Petitioner does not sufficiently explain whether the portion of track between
driving wheel 2 and auxiliary wheel 5, colored red in Annotated Figure 5,
would contact the first stair after the vehicle has moved forward to the
position showing in Figure 6, after it has approached the stair.
Further, we note that in Figure 6, first arm 7, second arm 8, and
auxiliary wheel 5 (i.e., the alleged pivoting arm) are no longer forward.
Iwamoto states, “when the driving wheels 2 have gotten on the first step as
shown in FIG. 6, the first arms 7 are swung to the position shown by solid
lines in FIG. 6 so that the auxiliary wheels 5 are moved rearwardly to cause
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the endless track 6 to contact with the floor surface.” Id. at 3:25–31.
Petitioner does not explain adequately how the portions of the “arm” it
identifies in Iwamoto’s Figure 5 would remain in those positions at the point
when that arm contacts the stair.

Conclusion as to Obviousness Based on Iwamoto for Claims 1–7
Petitioner fails to demonstrate by a preponderance of the evidence that
Iwamoto renders independent claim 1, and claims 2–7, dependent therefrom,
unpatentable.

Analysis of Claim 8
“A method for inverting an articulated tracked vehicle having a main
tracked chassis and a pivoting arm”
Petitioner contends:
Iwamoto discloses a method for inverting an articulated vehicle
because it discloses a variable configuration tracked vehicle
capable of controlling its position as desired to “hav[e] superior
running performance to clear obstacles.” [Ex. 1006,] 1:52–58,
Figs. 18–20. Iwamoto discloses that the auxiliary wheel moves
along an “elliptic path” that can be used for “superior running
performance, mobility and position controllability of the
posture of the vehicle.” Id., 4:61–63, 6:50–58.
Pet. 53.
We agree with Petitioner. With respect to its second embodiment
(Figs. 11–13), Iwamoto discloses that “the position of the vehicle can be
controlled as desired” by moving the auxiliary wheel 105 with respect to
driving wheel 102 and secondary wheel 103.” Ex. 1006, 6:26–34. For
example, Iwamoto describes moving auxiliary wheel 105 in a counter-
clockwise direction to turn or rotate the vehicle about driving wheel 102 to
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return the vehicle to a normal positon after it has fallen. Id. at 6:43–49, Fig.
20. Iwamoto discloses auxiliary wheel 105 may be moved along an elliptic
path by supporting means 107 (first arm 108 and second arm 109). See id. at
4:30–42, 4:61–63, 6:50–58, Fig. 14. As shown in our discussion of the steps
below, moving auxiliary wheel 105 counter-clockwise through the elliptical
path would result in inverting the vehicle.
Petitioner further contends that “[t]his inversion method depends upon
vehicle not being equipped with the manipulator M disclosed by Iwamoto.”
Pet. 59. Patent Owner argues that Iwamoto’s vehicle “does not and cannot
invert itself because the manipulator M, TV camera T . . . would be in the
way” and that Petitioner fails to explain how or why a POSITA would have
removed the vehicle payload (i.e., manipulator M or TV camera T). PO
Resp. 26, 29–33; see also PO Sur-Reply 13–17.
Patent Owner’s argument is not persuasive. We agree with Petitioner,
“[a] POSITA would know that different vehicle may have different purposes
and thus different payload.” Pet. Reply 22 (citing Ex. 1021 ¶ 21). For
example, manipulator M and TV camera T are not needed for stairclimbing.
Ex. 1003 ¶ 100. We note that Iwamoto’s claims do not require a camera or
manipulator. See Ex. 1006, 6:60–8:35 (claims 1–8).

“supporting the vehicle on the main tracks in a first vertical orientation”
Petitioner contends that Iwamoto discloses supporting the vehicle on
the main tracks in a first vertical orientation. Pet. 53–54 (citing Ex. 1006,
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Fig. 4; Ex. 1003 ¶ 93). We agree with Petitioner. Iwamoto’s Figure 4, with
annotations added by Petitioner,6 is reproduced below.

Annotated Figure 4 shows Iwamoto’s vehicle in a first orientation. Patent
Owner does not dispute that Iwamoto discloses this claim step.

“pivoting the arm to support the vehicle on the pivoting arm”
Petitioner contends that Iwamoto discloses pivoting the arm to support
the vehicle on the pivoting arm. Pet. 54–55 (citing Ex. 1006, Fig. 19; Ex.
1003 ¶ 93). Petitioner states:
For example, Iwamoto’s Fig. 19 . . . demonstrates the vehicle
pivoting the arm to support the vehicle on the pivoting arm. Id.
To reach this configuration, the vehicle begins in the first
vertical orientation, and the pivoting arm 7 (107) is then moved
downwards (in a counterclockwise direction as viewed in Fig.
19) . . . . In this configuration, the vehicle is held up by the
pivoting arm, the end of which contacts the underlying surface.
Pet. 54–55.
We agree with Petitioner. Moving auxiliary wheel 105 counter-
clockwise along the ellipse would include a position where supporting

6 The Petition relies upon Iwamoto’s second embodiment (Ex. 1006, Figs.
11–20) as disclosing the method of claim 8. But, the Petition includes
annotated figures from the first embodiment to illustrate various
configurations that either embodiment can form. See Pet. Reply 22.
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means 107 supports the vehicle. Ex. 1006, Fig. 14; Ex. 1003 ¶ 94.
Iwamoto’s Figure 19, with annotations added by Petitioner, is reproduced
below.

Annotated Figure 19 shows Iwamoto’s vehicle supported on supporting
means 107.
Patent Owner disagrees and argues:
Iwamoto does not disclose or suggest anywhere in the
specification or the figures pivoting first or second arms 7
(108), 8 (109) to contact the underlying surface to support the
vehicle on those arms. [Ex. 2001, ¶ 63]. Rather, first and
second arms are located on either the interior or exterior side of
the vehicle’s tracks. Ex. 1006 at 14 (6:20–22); id. at 3 (Fig. 3),
8 (Fig. 13).
PO Resp. 27–29;PO Sur-Reply 12–13.
Patent Owner’s argument is unpersuavise. The plain langue of claim
8 does not require the pivoting arm to support the vehicle by contacting the
underlying surface. See Ex. 1001, 14:3–16. Iwamoto’s supporting means
107 (i.e., first arm 108 and second arm 109) support the vehicle because
forces are applied to the vehicle through auxiliary wheel 105 and supporting
means 107. See Ex. 1021 ¶ 19 (testimony of Dr. Martens); Ex. 1022,
144:12–16 (testmony of Dr. Sturges that if supporting mean 107 was
removed, the vehicle would fall).
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“further pivoting the arm to pass the main chassis past a stable point”
Petitioner contends that Iwamoto discloses further pivoting the arm to
pass the main chassis past a stable point. Pet. 55–58 (citing Ex. 1006, Figs.
4–8, 18, 19; Ex. 1003 ¶¶ 96, 99). Petitioner states:
Iwamoto discloses this element by explicitly showing that the
pivoting arm 7 (107) may be moved continuously through 360
degrees of motion, as shown in Iwamoto’s Fig. 14. [Ex. 1003, ¶
93]. This 360–degree range of motion allows the pivoting arm
to adopt any orientation with respect to the main section
between wheels 2 (102) and 3 (103). Id.
* * *
Accordingly, it would have been obvious to a [POSITA] that a
downward motion of the arm used to reach the orientation
shown in Fig. 19 could be sustained. Ex. 1003, ¶ 99. In this
case, the vehicle would continue to be supported on the
pivoting arm, and wheel 2 (102) would continue to tilt upwards
as the arm moves further. Id. The base of support between the
pivoting arm and wheel 3 (103) continues to narrow as the arm
pivots further. Id. When the arm pivots far enough, wheel 2
(102) moves through a vertical orientation, i.e. directly over
wheel 3 (103), and the vehicle’s center of mass moves outside
of the base of support. Id. At this point, the main section of the
vehicle passes the point of stability. Id.
Pet. 55–58.
We agree with Petitioner. Further pivoting supporting means 107
along the ellipse from the configuration shown in Iwamoto’s Figure 19 will
pass body 101 past a stable point. Ex. 1003 ¶¶ 95–98. Patent Owner does
not dispute that Iwamoto discloses this claim step.

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“supporting the vehicle on the main tracks in a second vertical orientation,
the second vertical orientation being inverted with respect to the first
orientation”
Petitioner contends that Iwamoto discloses supporting the vehicle on
the main tracks in a second vertical orientation, the second vertical
orientation inverted with respect to the first orientation. Pet. 58–59 (citing
Ex. 1006, Fig. 14; Ex. 1003 ¶¶ 99–100). The Petition states:
Once the vehicle passes the stable point, as discussed in the
previous section, the pivoting arm would be pointing to the left
of wheel 3 (103) and would be raised. . . . The arm could thus
continue to be moved downwards (counter-clockwise) until the
vehicle adopted a planar configuration with the pivoting arm to
the left of wheel 3 (103) and with wheel 2 (102) to the right of
wheel 3 (103) as shown in Fig (5) above. Ex. 1003, ¶ 99.
Pet. 58–59.
We agree with Petitioner. Once the vehicle passes the stable point,
supporting means 107 is raised and points to the left of secondary wheel
103. Ex. 1003 ¶ 99. Supporting means 107 could continue to be moved
counter-clockwise until the vehicle adopted a planar configuration with
supporting means 107 to the left of wheel 103 and with driving wheel 102 to
the right of secondary wheel 103. Id.
Patent Owner argues that the arms in Iwamoto’s two embodiment are
in different locations and “arms 7, 8 [of the first embodiment] would be in
the way” of inverting the vehicle. PO Resp. 29, 31–32. Patent Owner further
argues that Petitioner fails to explain why a POSITA could combine two
different embodiments to modify the location the arms. Id.
Patent Owner’s argument is unpersuasive. The Petition does not
combine Iwamoto’s two embodiments. See Pet. 53–59; Ex. 1021 ¶ 22.
Petitioner explains, “[t]he Petition uses figures from the first embodiment to
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show the various configurations that either embodiment can form.” See Pet
Reply 22–23; see also Ex. 1006, 6:26–30 (“As in the case of the first
embodiment described before, the configuration . . . can be varied . . .”).
Dr. Martens testifies that “created images 1 and 5 using the other pictures,
the other embodiments” to make it easier for the reader to follow. Ex. 2005:
67:3–4; Ex. 1021 ¶ 22.
Patent Owner also argues that Iwamoto’s Figure 14 fails to provide a
360-degree motion and that it cannot be imposed on any other embodiments.
PO Resp. 33–34.
Patent Owner’s argument is again unpersuasive. To the contrary,
Iwamoto discloses that the auxiliary wheel moves along the elliptic path
shown in Figure 14 meaning the arm has a 360-degree motion. Ex. 1006,
4:61–63. Figure 14 shows the position of Point P on the ellipse and the
center of the 360-degree rotation. Ex. 1021 ¶ 24.

Conclusion as to Obviousness Based on Iwamoto for Claims 8 and 9
Based on the arguments and evidence presented in the Petition, we
determine Petitioner has sufficiently shown that dependent claim 9 is also
unpatentable over Iwamoto. Pet. 59–60. Patent Owner makes no other
arguments specific to dependent claim 9. See PO Resp. 34.
Petitioner has demonstrated by a preponderance of the evidence that
Iwamoto renders independent claim 8, and claim 9, dependent therefrom,
unpatentable.

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Obviousness Based on Clements and Jensen
Overview of Clements
Clement is titled “variable geometry tracked vehicle” and discloses a
tracked vehicle designed to “move up or down staircases having several
flights of stairs.” Ex. 1007, code (54), 1:9–13. Clement’s Figure 2 is
reproduced below.

Figure 2 depicts a side view of tracked vehicle 10. Id. at 4:31. Vehicle 10
has a front tracked body 12a, a rear tracked body 12b, and a non-tracked
body 14. Id. at 4:43–49.
Clement’s Figure 4 is reproduced below.

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Figure 4 depicts different rise sequences on a step. Id. at 4:35–36, 6:39–44.
Approaching step E, the front tracked body 12a is raised as shown by arrow
F1 and the non-tracked body 14 pivots backwards with respect to axis XX’.
Id. at 6:45–48, Fig. 4a. Front tracked body 12a and rear tracked body 12b
then reverse pivot, as shown by arrow F2, to align the two tracks. Id. at
6:49–55, Fig. 4b. Non-tracked body 14 then tilts forward, as shown by
arrow F3 and brings the front tracked body 12a above step E. Id. at 6:56–59,
Fig. 4c. Engines 26a and 26b drive the tracked bodies and front tracked
body 12a and rear tracked body 12b are re-aligned, advancing tracked
vehicle 10 on step E. Id. at 6:60–64, Fig. 4d.

Analysis of Claim 1
Preamble - A method for operating an articulated tracked vehicle having a
main tracked chassis and a pivoting forward arm to climb a series of stairs
having a rise in elevation at a first stair and at each subsequent stair

Petitioner contends that Clement discloses the preamble of claim 1.
Pet. 63 (citing Ex. 1007, 3:6–22, 3:23–32). We agree with Petitioner.
Clement discloses vehicle 10, having two tracked bodies 12a, 12b and
capable of “clearing a flight of stairs.” Ex. 1007, 3:6–32, 4:43–45, Fig. 4.
Patent Owner does not dispute that Clement discloses the preamble.

“pivoting the arm to raise the arm higher than the rise of the first stair”
Petitioner contends that Clement discloses claim 1’s step of “pivoting
the arm to raise the arm higher than the rise of the first stair.” See Pet. 63–
64 (citing Ex. 1007, 6:45–48, Fig. 4a); Pet. Reply 8–9 (citing Ex. 1022,
161:5–9). We agree with Petitioner.
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Clement states: “It is [] possible to see in FIG. 4 that on approaching
step E, the front tracked body 12a can be raised (arrow F1).” Ex. 1007,
6:45–48. Clement’s Figure 4a, with a portion enlarged and Petitioner’s
annotations, is reproduced below. Pet. Reply 9.

The enlarged portion of annotated Figure 4a of Clement shows the upper
face of front tracked body 12a raised higher than the rise of the first stair.
Ex. 1022, 161:5–9 (testimony of Patent Owner’s expert Dr. Sturges).
Patent Owner disputes that Clement discloses this limitation. PO
Resp. 35–37; PO Sur-reply 17–18. Patent Owner argues that Clement does
not disclose this limitation because Clement does not disclose raising the
bottom vertical portion of tracked body 12a above the stair riser. Id. Patent
Owner states:
[W]hen the leading tracked body 12a of Clement is rotated
upward to climb step E, it is not raised higher than the rise of
step E. . . . Rather, as shown in Figure 4a . . . , a vertical portion
of tracked body 12a contacts a vertical surface of the rise of
step E.
PO Resp. 36 (citations omitted).
Nothing in claim 1, however, requires raising the bottom vertical
portion of tracked body 12a above the stair riser. Claim 1 simply recites
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“pivoting the arm to raise the arm higher than the rise of the first stair.” Ex.
1001, 12:53–54. Thus, Patent Owner’s argument is unpersuasive.

“approaching the first stair until the arm contacts the first stair”
Petitioner contends that Clement discloses claim 1’s step of
“approaching the first stair until the arm contacts the first stair.” See Pet. 65
(citing Ex. 1007, 6:49–55, Figs. 4a, 4b). We agree with Petitioner. As
Petitioner states: “To get to the position shown in Fig. 4b, which shows the
arm in contact with the first stair, from the one in Fig. 4a, the vehicle must
approach the first stair.” Id.; see Ex. 1007, Figs. 4a, 4b; see also id. at 6:49–
50 (describing that “the front part of the tracked body 12a bears on step E”).
Patent Owner does not dispute that Clement discloses this claim step.

“driving the main tracks to propel the vehicle until the main tracks contacts
the first stair”
Petitioner contends that Clement discloses claim 1’s step of “driving
the main tracks to propel the vehicle until the main tracks contacts the first
stair.” See Pet. 65–66 (citing Ex. 1007, 6:60–63, Fig. 4d). We agree with
Petitioner. Clement’s Figures 4d shows the rear tracked body 12b
contacting step E, and in describing Figure 4d, Clement states, “the actuation
of the tracked with the aid of engine 26a, 26b, as well as the restoration of
the alignment of the two tracked bodies 12a, 12b enables the vehicle to
continue its advance on step E.” Ex. 1007, 6:60–63, Fig. 4d. Patent Owner
does not dispute that Jensen discloses this limitation.

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“pivoting the arm to extend the tracked base of the vehicle”
Petitioner contends that Clement discloses claim 1’s step of “pivoting
the arm to extend the tracked base” of the vehicle. Pet. 68 (citing Ex. 1007,
Fig. 4b; Ex. 1003 ¶ 110). We agree with Petitioner. Clement’s Figure 4b,
reproduced above, depicts front tracked body 12a and rear tracked body 12b
aligned with one another. Ex. 1007, 6:49–52, Fig. 4b. Dr. Martens testifies
that the configuration shown in Figure 4b “demonstrates that by pivoting the
arm, the tracked base extend[s] in a planar configuration.” Ex. 1003 ¶ 110.
Patent Owner does not dispute that Clement discloses this claim step.

“driving the main tracks to ascend the series of stairs”
Petitioner contends that the combination of Clement and Jensen
teaches claim 1’s step of “driving the main tracks to ascend the series of
stairs.” Pet. 69 (citing Ex. 1005, 6:37–40, 7:17–40; Ex. 1007, 3:28–32; Ex.
1003 ¶ 110); see also Pet. 66–67 (citing Ex. 1003 ¶¶ 106, 107, 109).
We agree with Petitioner. Clement’s Figure 4 depicts vehicle 10
ascending one step at a time and Clement does not explicitly describe
ascending a series of stairs. See Pet. 66, Ex. 1003 ¶ 106, Ex. 1007, 4:35–36,
6:43–44. But, Clement suggests using vehicle 10 to ascend a flight or series
of stairs. Ex. 1007, 3:30–31 (“when clearing a flight of stairs or when
clearing the final step”), 4:21–23 (“mainly the clearing of staircases with
several flights of stairs”).
As shown in Clement’s Figure 4b, Clement’s vehicle’s front tracked
body 12a can be aligned with rear tracked body 12b to form a planar
configuration when climbing stairs. Ex. 1007, 6:49–52, Fig. 4b. Jensen’s
vehicle has a similar structure to Clement’s vehicle. Ex. 1003 ¶ 6. Similar
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to Clement, Jensen discloses dropping its auxiliary arms and locking them
into the aligned or planar configuration to extend the main tracks when
climbing stairs. Ex. 1005, 7:23–31, Figs 6, Fig. 14; Ex. 1007, Fig. 4b; Ex.
1003 ¶ 54. Unlike Clement’s vehicle, Jensen’s vehicle is scaled so that its
length spans several steps to ascends a series of stairs at one time by driving
its main tracks. See Ex. 1005, 6:37–40, 7:17, 7:29–30, 7:33–34, Fig. 6, Fig.
10; Ex. 1003 ¶¶ 55, 112.
We are persuaded by Petitioner that a POSITA would have been
motivated to modify Clement to ascend multiple steps at once “because both
vehicles have the same planar configuration [that can be] used to climb a
series of stairs” and ascending multiple steps at a time is more efficient than
ascending one step at a time. Pet. 70; Ex. 1003 ¶¶ 106, 111.
Patent Owner disagrees that a POSITA would have been motivated to
combine Clement and Jensen. PO Resp. 39–42; PO Sur-Reply 19–22. First,
Patent Owner argues that Clement and Jensen “describe different vehicles
that work fundamentally differently.” PO Resp. 40–41. Pointing to
Clement’s Figure 4c, Patent Owner argues
[f]or each step, the non-tracked body 14 must tilt forward until
the lower face of the front tracked body 12a contacts the top of
the step being climbed. Ex. 1007 at 4 (Fig. 4c), 7 (6:56–59).
Without this forward movement of non-tracked body 14, the
vehicle in Clement could not climb step E. See id. at 7 (6:56–
59); Ex. 2001, ¶ 93.
PO Resp. 40–41.
But, Clement discloses that its front tracked body 12a can be aligned
with rear tracked body 12b to form a planar configuration when climbing
stairs. Ex. 1007, 6:49–52, Fig. 4b. We agree with Petitioner that “scaling
Clement’s vehicle to allow it to climb multiple steps at a time would allow it
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to maintain the planar configuration of Fig. 4b.” Pet. Reply 12 (citing Ex.
1021 ¶ 28); see also Ex. 2005, 54:24–55:6 (testimony of Dr. Martens that
Jensen’s Fig. 6 suggests to a POSITA to scale the vehicle to span several
steps).
Second, Patent Owner argues that Clement “teaches away from
scaling up the vehicle by explicitly identifying one disadvantage of prior art
vehicle was their length, which contributed to their lack of maneuverabiltiy.”
PO Resp. 42 (citing Ex. 1007, 1:58–64). Clement states:
[O]n increasing the vehicle length, so that it can remain stable
on the nosings of stairs, said increase in the overall dimensions
of the vehicle is prejudicial when it arrives on landings, which
makes it necessary to perform a half or quarter turn on the spot
in a space which can be extremely limited.
Ex. 1007, 1:58–64.
We do not find this statement to be a sufficient teaching away. See In
re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (“teaching away” requires a
POSITA to be discouraged from pursuing the solution in question). Clement
statement concerns the tradeoff of increasing stability by increasing vehicle
length and concerns vehicles without pivoting arms, like “conventional
military assault tanks.” Ex. 1007, 1:31–35. A POSITA less concerned with
size and maneuverability and more concerned with speed and simplicity
would still be motivated to scale up Clement’s vehicle, based on the desired
function. Ex. 1021 ¶ 29.

Conclusion as to Obviousness Based on Clements and Jensen
Based on the arguments and evidence presented in the Petition, we
determine Petitioner has sufficiently shown that dependent claims 6 and 7
are also unpatentable over Clements and Jensen. Pet. 71–72. Patent Owner
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makes no other arguments specific to dependent claims 6 and 7. See PO
Resp. 39.
Petitioner has demonstrated by a preponderance of the evidence that
the combination of Clements and Jensen renders independent claim 1, and
claims 6 and 7, dependent therefrom, unpatentable.

Constitutional Challenge
Patent Owner argues the Board should dismiss this inter partes review
proceeding because Administrative Patent Judges (“APJs”) are
unconstitutionally appointed. PO Resp. 43–44 (citing Lucia v. SEC, 138 S.
Ct. 2044, 2049 (2018); Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320
(Fed. Cir. 2019)); PO Sur-reply 22–24. Patent Owner argues that although
the Federal Circuit attempted to cure this constitutional defect in Arthrex by
severing Title 5’s removal protections, the solution is insufficient because
IPR proceedings are formal adjudications under the Administrative
Procedures Act. PO Resp. 43–44. Under 5 U.S.C. § 556(b), Patent Owner
argues, formal adjudications must be conducted by administrative law
judges appointed under 5 U.S.C. § 3105 and such judges may be removed
only for good cause. PO Resp. 44–45 (citing 5 U.S.C. § 7521). Because
APJs are now removable, Patent Owner argues they lack the authority to
preside over formal adjudications such as the present proceeding, and thus,
Patent Owner requests the Board to dismiss this proceeding pending review
of the Arthrex decision. Id. at 45.
We decline to consider Patent Owner’s constitutional challenge. The
Federal Circuit has addressed this issue in Arthrex, 941 F.3d at 1325, 1337–
38 (“This as-applied severance . . . cures the constitutional violation.”); see
also Arthrex, Inc. v. Smith & Nephew, Inc., 953 F.3d 760, 764 (Fed. Cir.
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2020) (Moore, J., concurring in denial of rehearing) (“Because the APJs
were constitutionally appointed as of the implementation of the severance,
inter partes review decisions going forward were no longer rendered by
unconstitutional panels.”).

III. CONCLUSION7
For the foregoing reasons, we conclude that Petitioner has established
by a preponderance of the evidence that claims 1–9 are unpatentable.

IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1–9 of the ’296 patent are unpatentable.
In summary:

77 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
Claims

35
U.S.C.
§
Reference(s)/Basis Claims
Shown
Unpatentable
Claims
Not shown
Unpatentable
1, 3, 5, 7 103 Jensen 1–7
1–9 103 Iwamoto 8, 9 1–7
1, 6, 7 103 Clement and
Jensen
1, 6, 7
Overall
Outcome
1–9
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PETITIONER:

Lionel M. Lavenue
Cory C. Bell
Razi Safi
FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER, LLP
lionel.lavenue@finnegan.com
cory.bell@finnegan.com
razi.safi@finnegan.com

Kirk Teska
IANDIORIO TESKA & COLEMAN, LLP
kirk@itclaw.com

PATENT OWNER:

Mark J. Thronson
Dipu A. Doshi
Megan R. Wood
BLANK ROME LLP
mthronson@blankrome.com
ddoshi@blankrome.com
mwood@blankrome.com