Gamon Plus, Inc.

Patent Trials and Appeals Board

Jul 23, 2020

IPR2017-00087 (P.T.A.B. Jul. 23, 2020)

Trials@uspto.gov Paper 96
571-272-7822 Entered: July 23, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
CAMPBELL SOUP COMPANY,
CAMPBELL SALES COMPANY, and
TRINITY MANUFACTURING, LLC,
Petitioner,
v.
GAMON PLUS, INC.,
Patent Owner.
____________

IPR2017-00087
Patent 8,827,111 B2
____________

Before GRACE KARAFFA OBERMANN, BART A. GERSTENBLITH,
and ROBERT L. KINDER, Administrative Patent Judges.

GERSTENBLITH, Administrative Patent Judge.

JUDGMENT
Final Written Decision on Remand
Determining No Challenged Claims Unpatentable
Granting Patent Owner’s Motion for Leave to
Request Certificate of Correction
35 U.S.C. §§ 144, 318; 37 C.F.R. § 42.20

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I. INTRODUCTION
Background
Campbell Soup Company, Campbell Sales Company, and Trinity
Manufacturing, LLC (collectively, “Petitioner”) filed a Petition (Paper 2,
“Pet.”) requesting institution of inter partes review of claims 1–35 of U.S.
Patent No. 8,827,111 B2 (Ex. 1001, “the ’111 patent”). We instituted inter
partes review of claims 1–16, 27, 28, and 32–35. Paper 12, 52 (“Inst.
Dec.”). We did not institute inter partes review of claims 17–26 and 29–31.
See, e.g., id. at 51–52. In its Patent Owner Response (Paper 15), Patent
Owner requested that claims 1–16 be cancelled.
In addition to the papers noted above, Petitioner filed a Motion to
Exclude Evidence (Paper 44), Patent Owner filed an Opposition to
Petitioner’s Motion to Exclude Evidence (Paper 52), and Petitioner filed a
Reply in support of its Motion (Paper 59). Patent Owner filed a Motion for
Observations on Cross-Examination of Steven C. Visser (Paper 45), and
Petitioner filed a Response to Patent Owner’s Observations (Paper 51). A
first oral argument was held on January 23, 2018, the transcript of which is
in the record (Paper 72).
After trial, in a first Final Written Decision (Papers 73, 75, “Final
Dec.”),1 we (1) granted in part Petitioner’s Motion to Exclude by giving no
weight to certain testimony from paragraph 20 of Paper 16, (2) granted
Patent Owner’s request to cancel claims 1–16, and (3) determined that
Petitioner had not established, by a preponderance of the evidence, that

1 Paper 73 is a confidential version of our first Final Written Decision and
Paper 75 is the public version. Citations are to the public version.
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claims 27, 28, and 32–35 of the ’111 patent are unpatentable. Final Dec. 3,
71–72.
Petitioner appealed our first Final Written Decision to the U.S. Court
of Appeals for the Federal Circuit. The Federal Circuit affirmed,
“determin[ing] that claims 27, 28, and 32–35 of the ’111 patent are not
unpatentable over the instituted grounds,” but remanded “for the Board to
consider whether non-instituted claims 17–26 and 29–31 are unpatentable
and whether claims 27, 28, [and] 32–35 are unpatentable based on the non-
instituted grounds” in light of SAS Institute v. Iancu, 138 S. Ct. 1348 (2018).
Campbell Soup Co. v. Gamon Plus, Inc., No. 2018-2099, 2019 WL
5152396, at *6 (Fed. Cir. Oct. 15, 2019).
On December 20, 2019, we issued an order modifying our Institution
Decision in accordance with the Federal Circuit’s direction. Paper 84
(“Order”). Specifically, we modified our Institution Decision to include
each of the grounds challenging claims 17–26 and 29–31 and the non-
instituted grounds challenging claims 27, 28, and 32–35. Id. at 3. We
included the following chart indicating the 15 grounds to be addressed in
this post-remand phase of the proceeding:2

2 The chart has been modified to include footnotes citing each reference.
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Ground3 Claim(s) Challenged 35 U.S.C. § References/Basis
2a4 17–20, 25, 26 103(a) Weichselbaum,5 Nesso6
2b 18, 19 103(a) Weichselbaum, Nesso, Rogers7
3a8 21, 22, 24 103(a) Weichselbaum, Nesso, Mellion9
3b 24 103(a) Weichselbaum, Nesso, Mellion, Schwimmer10
4 23 103(a) Weichselbaum, Nesso, Luster11
5 27, 28, 33, 34 103(a) Weichselbaum, Nesso, Rogers
6a12 29 103(a) Weichselbaum, Nesso, Luster
6b 29 103(a) Weichselbaum, Nesso, Luster, Rogers
7a13 30 103(a) Weichselbaum, Nesso, Luster, Knott14
7b 30 103(a) Weichselbaum, Nesso, Luster, Knott, Rogers
8a15 31 103(a) Weichselbaum, Nesso, Luster, Mellion
8b 31 103(a) Weichselbaum, Nesso, Luster, Schwimmer
8c 31 103(a) Weichselbaum, Nesso, Luster, Mellion, Rogers
8d 31 103(a) Weichselbaum, Nesso, Luster, Schwimmer, Rogers
9 32, 35 103(a) Weichselbaum, Nesso, Mellion, Rogers
Order 4–5.

3 In our Institution Decision, we remarked that “Petitioner includes nine
numbered grounds, many of which include several alternative combinations
of references.” Inst. Dec. 5 n.3. For each ground that has one or more
alternatives, we identify those alternatives in our chart above with a
sub-letter designation, e.g., Grounds 2a and 2b.
4 Petitioner’s ground states: “Claims 17–20, 25 and 26 are obvious under 35
U.S.C. § 103 over Weichselbaum in view of Nesso. Alternatively, claims 18
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Thereafter, Patent Owner filed a Merits Response on Remand
(Paper 85, “PO Remand Resp.”), Petitioner filed a Reply to Patent Owner’s
Merits Response on Remand (Paper 87, “Pet. Remand Reply”), and Patent

and 19 are obvious over Weichselbaum in view of Nesso and further in view
of Rogers.” Pet. iii, 24–25.
5 U.S. Patent No. 2,382,191, issued August 14, 1945 (Ex. 1023,
“Weichselbaum”).
6 European Patent Application Publication No. 0490693 A2, published
June 17, 1992 (Ex. 1020, “Nesso”). This reference identifies James
Roderick Oattes as the named inventor and “NESSO (ENGINEERS)
LIMITED” as the applicant. Ex. 1020, 1. The parties refer to this reference
as “Nesso,” and we do the same for consistency.
7 U.S. Patent No. 3,304,141, issued February 14, 1967 (Ex. 1024,
“Rogers”).
8 Petitioner’s ground states: “Claims 21 and 22 are obvious under 35 U.S.C.
§ 103 over Weichselbaum in view of Nesso and further in view of Mellion,
and claim 24 is obvious from the same combination or further in view of
Schwimmer.” Pet. iii, 45.
9 U.S. Patent No. 3,395,809, issued August 6, 1968 (Ex. 1021,
“Mellion”).
10 U.S. Patent No. 5,462,198, issued October 31, 1995 (Ex. 1027,
“Schwimmer”).
11 U.S. Patent No. 514,948, issued February 20, 1894 (Ex. 1030,
“Luster”).
12 Petitioner’s ground states: “Claim 29 is obvious under 35 U.S.C. § 103
over Weichselbaum in view of Nesso, and further in view of Luster alone or
with Rogers.” Pet. iii, 63.
13 Petitioner’s ground states: “Claim 30 is obvious under 35 U.S.C. § 103
over Weichselbaum in view of Nesso, and further in view of Luster and
Knott alone or with Rogers.” Pet. iii, 65.
14 U.S. Patent No. Des. 178,248, issued July 10, 1956 (Ex. 1029,
“Knott”).
15 Petitioner’s ground states: “Claim 31 is obvious under 35 U.S.C. § 103
over Weichselbaum in view of Nesso, further in view of Luster and Mellion
or Schwimmer alone, or with Rogers.” Pet. iii, 67.

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Owner filed a Sur-reply (Paper 88, “PO Remand Sur-reply”). Patent Owner
also filed a Motion for Leave to Request Certificate of Correction, which
Petitioner did not oppose. Paper 91 (“Motion for Leave”). A second oral
hearing was held on May 7, 2020, and a copy of the transcript is in the
record. Paper 94 (“Tr.”).
During the second oral hearing, Petitioner explained that it no longer
sought to assert 14 of the 15 grounds from the Petition that were identified
for the remand phase of this proceeding. See Tr. 6:16–7:17 (Petitioner
confirming that it seeks to maintain only Ground 2A, limited to claims 17,
20, 25, and 26); see also Pet. Remand Reply 1–2 & n.2 (explaining
Petitioner’s initial identification of grounds it sought to maintain, which
Petitioner then modified at the oral hearing). We advised the parties to meet
and confer and discuss whether they could resolve their dispute pertaining to
the grounds that Petitioner did not intend to pursue. See Tr. 6:16–13:15
(discussing the grounds Petitioner did not intend to pursue).
In response, the parties filed a Joint Stipulation on June 1, 2020,
which states: “The parties stipulate that claims 18, 19, 21–24 and 27–35 of
U.S. Patent No. 8,827,111 patent [sic] have not been proven to be
unpatentable on the grounds set forth in the Petition (Paper 1).” Paper 95.
Thus, the stipulation resolves each ground that was to be addressed on
remand, with the exception of one. The one ground remaining is that
identified in our chart, above, as Ground 2a. The claims challenged in that
ground, however, have changed because the parties’ stipulation includes
claims 18 and 19.
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We accept the parties’ stipulation regarding the claims addressed
therein. Thus, the sole ground that remains to be resolved in the remand
phase of this trial is:
Ground Claims Challenged 35 U.S.C. § References/Basis
2a16 17, 20, 25, 26 103(a)17 Weichselbaum, Nesso
We have jurisdiction pursuant to 35 U.S.C. § 6. This Decision is a
Final Written Decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73 as to
the patentability of claims 17–35 at issue on remand. 35 U.S.C. § 316(e)
(2012); 37 C.F.R. § 42.1(d) (2016). Petitioner bears the burden of proving
unpatentability of the challenged claims, and the burden of persuasion never
shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc.,
800 F.3d 1375, 1378 (Fed. Cir. 2015). To prevail, Petitioner must prove
unpatentability by a preponderance of the evidence. See 35 U.S.C. § 316(e);
37 C.F.R. § 42.1(d).
Having reviewed the arguments and the supporting evidence, we
determine that Petitioner has not shown, by a preponderance of the evidence,
that challenged claims 17, 20, 25, and 26 of the ’111 patent are unpatentable.
Additionally, we accept the parties’ stipulation that Petitioner has not shown,
by a preponderance of the evidence, that challenged claims 18, 19, 21–24,
and 27–35 of the ’111 patent are unpatentable.

16 Although we maintain the designation of “Ground 2a,” the ground now
challenges fewer claims than originally identified in the Petition and
described in our Order modifying our Institution Decision.
17 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. Given that the application from which the ’111 patent issued was
filed before this date, the pre-AIA version of § 103 applies.
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Related Proceedings
The parties indicate that the ’111 patent is asserted in Gamon Plus,
Inc., et al. v. Campbell Soup Co., et al., No. 15-cv-8940-CRN-YBK
(N.D. Ill.). Pet. 1–2; Paper 7, 1. Petitioner indicates that U.S. Patent
Application No. 14/861,017 claims priority to the application that issued as
the ’111 patent and may be affected by a decision in this proceeding. Pet. 2.
Real Parties in Interest
The Petition identifies “Campbell Soup Company,” “Campbell Sales
Company,” and “Trinity Manufacturing, L.L.C.” as real parties in interest.
Pet. 1. Patent Owner identifies “Gamon Plus, Inc.” and “Gamon
International, Inc.” as real parties in interest (collectively, “Gamon”).
Paper 7, 1.
Declarations
Petitioner relies upon two declarations by Mr. Steven Visser, one filed
with the Petition and dated October 14, 2016 (Ex. 1002, the “Visser
Declaration”), and another filed with Petitioner’s Reply dated October 13,
2017 (Ex. 1065, the “Visser Reply Declaration”). Patent Owner relies upon
two declarations by Mr. Terry Johnson, a first declaration dated July 12,
2017 (Paper 16, the “Johnson Declaration”), and a supplemental declaration,
dated August 2, 2017 (Paper 53, “the “Johnson Supplemental
Declaration”).18

18 Paper 16 is identified erroneously in the record as “EXHIBIT 2001
Declaration of Terry Johnson.” Patent Owner, however, did not file an
exhibit 2001 in this case. Paper 53 is Bates stamped erroneously with the
phrase “Gamon Exhibit no. 2027.” Paper 53, 1. Exhibit 2027 appears to be
a copy of Exhibit 1065 marked during Mr. Visser’s deposition as
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The ’111 Patent
The ’111 patent is directed to “dispenser racks and displays” and “to a
compact, easy to assemble, easy to load and unload multiple chute dispenser
with an integrated display.” Ex. 1001, 1:15–18. The dispenser includes “[a]
set of panels having chutes therebetween. The chutes being defined by
curvilinear rails on such panels. The curvilinear rails having stops thereon
for stopping the products for viewing.” Id. at 1:58–61.
Figures 1 and 2 of the ’111 patent are shown below:

Figure 1 of the ’111 patent “is a side view of a panel” (id. at 1:66–67), and
Figure 2 is “an edge on view of a panel” (id. at 2:1–2). As shown, panel 10
is the “main element of the multi-chute gravity feed dispenser display” and
“is generally formed as a vertical upright panel.” Id. at 4:8–10. Panel 10 is
“preferably configured to be used in connection with conventional store
shelving in place at a retailer.” Id. at 4:9–10.
The ’111 patent explains:
The panel 10 includes at least one set of rails 20 which
are formed as ribs extending normal to a side 12 of the panel 10
to cooperatively define a plurality of chutes 22, 24 for product

“Exhibit 2.” See Ex. 2027, 1. Therefore, we cite to each of Mr. Johnson’s
declarations by the paper number under which it was filed.
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which have a boustrophedonic or C-shaped configuration. A
first rail 26 is disposed in the generally medial portion of the
side 12 inclined to the horizontal, angled generally
downwardly, and having a linear configuration. The second
rail 28 is disposed about the first rail 26 and has a curvilinear
configuration which is substantially C-shaped. The first and
second rails 26 and 28 each having a minimum incline to the
horizontal such that product is capable of continuous movement
along such rails in response to a normal gravitational force, and
where as shown in FIG. 1, can be a substantially slight angle.
A first product travel stop or stop 30 is formed at a lowest
extent of the second rail 28 as an enlarged portion thereof. The
first stop 30 engages the product to prevent unwanted further
movement down chute 22 and positions the product for viewing
and selection by a customer. A third rail 32 has a curvilinear
configuration which is substantially L-shaped and has a second
stop 34, formed as an enlarged portion thereof at a lower end
adjacent first stop 30, and prevents further downward motion
down chute 24.
Ex. 1001, 4:19–41.
Figure 3A of the ’111 patent is shown below:

Figure 3A of the ’111 patent “is a side perspective view of a display
module.” Id. at 2:3–4. The ’111 patent explains:
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FIG. 3A shows a pair of panels, a display module 16 . . .
connected by a pair of retention pins to define a
dispenser module 16, one or more such dispenser modules 16
making up a multi-chute gravity feed dispenser display. The
chutes 22, 24 are defined between adjacent pairs of panels 10
and are of a width slightly greater than the width of products 90
and which allow the products to be stored and dispensed
therefrom.
Id. at 5:9–17.
Figure 6A of the ’111 patent is shown below:

Figure 6A of the ’111 patent “is a side view of both a display module with a
loading magazine in a loading position.” Id. at 2:26–27. The ’111 patent
explains that “[w]hen loaded, the new product 92 simply rolls into the
chute 22 or 24 whichever is empty and available.” Id. at 7:43–44.
The ’111 patent describes, as an advantage of the invention, “the
return area or replace stall 110 which is defined between the first and second
stops 30 and 34 and a cradle member or ear 112 formed on the panel 10.”
Id. at 7:49–52. In particular, “[t]he replace stall 110 is further defined as an
area in which a product 90 may be replaced if the consumer decides not to
purchase.” Id. at 7:52–54. Figure 6A shows the location of product 90, in
replace stall 110, after being replaced by a consumer. Id. at 7:55–56.
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Illustrative Claim
Claim 17 is the sole independent claim remaining in this proceeding.
Claims 20 and 25 depend from claim 17, and claim 26 depends from
claim 25. Ex. 1001, 18:66 (claim 20), 19:27 (claim 25), 19:32 (claim 26).
Claim 17 is illustrative of the claimed subject matter and is reproduced
below:
17. A display rack comprising:
a plurality of generally cylindrical products all having
substantially equal diameters;
first and second product support structures defining
respectively first and second chutes configured for the products
to pass therethrough, each chute having a respective forward-
facing product loading opening in a generally vertically
disposed forward side of the display rack and configured to
receive the products loaded into the chutes through the forward
side, and a respective dispensing opening below the product
loading opening such that the cylindrical products when placed
in the product loading opening proceed by force of gravity
through the associated chute to the dispensing opening;
the loading and dispensing openings of the second chute
being situated between the loading and dispensing openings of
the first chute;
a door supported for movement between a substantially
vertical closed position wherein said door covers the product
loading openings of both of the chutes and an open position
wherein the door does not cover the product loading openings
and the cylindrical products can be loaded into the chutes, said
door in said closed position having a forwardly disposed face
capable of holding a product label or advertising;
wherein the chutes each have a stop structure supported
adjacent the respective dispensing opening and blocking
movement of the products in the chute beyond said stop
structure such that the products must be elevated above the stop
structure to be removed from the dispensing opening of the
chute; and
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wherein the stop structure of the second chute is below a
portion of the second product support structure adjacent the
loading opening of the second chute and stops the products in
the second chute rearward of the loading opening of the second
chute, said second chute having a clearance space above the
stop structure thereof such that a forwardmost one of the
products resting thereagainst can be elevated by a user above
the stop structure and removed from the second chute; and
the stop structure of said second chute being disposed
above the dispensing opening of said first chute a vertical
distance and offset rearwardly from the stop structure of said
first chute a horizontal distance greater than the diameter of the
products such that a forwardmost product of the products in the
first chute can only be properly removed from the first chute, by
lifting said forwardmost product up to a level wherein the
forwardmost product is at least in part horizontally forward of
the dispensing opening of the second chute.
Id. at 17:54–18:36.
Development of the ’111 Patent and the Parties’ Interactions
The history of Mr. Johnson’s development of the ’111 patent and the
past interactions between the parties, which are relevant to, inter alia, Patent
Owner’s arguments pertaining to objective indica of nonobviousness, are
detailed in our first Final Written Decision. Final Dec. 10–15. For the
reasons explained below, we do not need to reach the issues described
therein and, therefore, do not repeat expressly those findings here.
Nonetheless, we incorporate that discussion herein for completeness.
II. ANALYSIS
Level of Ordinary Skill in the Art
Petitioner contends that a person of ordinary skill in the art, as of the
earliest priority date of the claims, would have had either: “(1) a Bachelor’s
Degree in Industrial Design and at least 1-2 years of experience in designing
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gravity feed display dispensers, or (2) 5-10 years of experience in designing
gravity feed display dispensers.” Pet. 7 (citing Ex. 1002 ¶ 36). Patent
Owner did not propose an explicit level of ordinary skill in the art in its
Response. Consistent with the level of ordinary skill in the art 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), in our first Final Written Decision
we adopted Petitioner’s unopposed position as to the level of ordinary skill
in the art. Final Dec. 18.
On appeal, the Federal Circuit did not disturb our finding as to the
level of ordinary skill in the art. See generally Campbell Soup Co., 2019
WL 5152396. The record on remand has not changed with respect to our
consideration of this issue and, therefore, we maintain and reiterate that one
of ordinary skill in the art would have had (1) a Bachelor’s Degree in
Industrial Design and at least 1–2 years of experience in designing gravity
feed display dispensers, or (2) 5–10 years of experience in designing gravity
feed display dispensers.
Claim Construction
In an inter partes review based on a petition filed prior to
November 13, 2018, claim terms in an unexpired patent are construed
according to their broadest reasonable interpretation in light of the
specification of the patent in which they appear. See 37 C.F.R. § 42.100(b)
(2016);19 Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46

19 A recent amendment to this rule does not apply here because the Petition
was filed before November 13, 2018. See Changes to the Claim
Construction Standard for Interpreting Claims in Trial Proceedings Before
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(2016). There is a presumption that claim terms are given their ordinary and
customary meaning, as would be understood by a person of ordinary skill in
the art in the context of the specification. See In re Translogic Tech. Inc.,
504 F.3d 1249, 1257 (Fed. Cir. 2007). Nonetheless, if the specification
“reveal[s] a special definition given to a claim term by the patentee that
differs from the meaning it would otherwise possess[,] . . . the inventor’s
lexicography governs.” Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed.
Cir. 2005) (en banc) (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d
1359, 1366 (Fed. Cir. 2002)). Another exception to the general rule that
claim terms are given their ordinary and customary meaning is “when the
patentee disavows the full scope of a claim term either in the specification or
during prosecution.” Uship Intellectual Props., LLC v. United States, 714
F.3d 1311, 1313 (Fed. Cir. 2013) (quoting Thorner v. Sony Comput. Entm’t
Am., LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)).
Additionally, only terms that are in controversy need to be construed,
and these need be construed only to the extent necessary to resolve the
controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
803 (Fed. Cir. 1999) (holding that “only those terms need be construed that
are in controversy, and only to the extent necessary to resolve the
controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean
Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs.
in the context of an inter partes review).

the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018)
(amending 37 C.F.R. § 42.100(b) effective Nov. 13, 2018) (now codified at
37 C.F.R. pt. 42 (2019)).
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In our first Final Written Decision, we stated the following:
In our Institution Decision, we construed several claim
terms recited in claims 1–17. Inst. Dec. 13–20. Patent Owner
requests cancellation of claims 1–16 and we did not institute
inter partes review of claim 17. Thus, none of the claim terms
we construed previously are at issue in the trial. Additionally,
Patent Owner’s Response and Sur-Reply and Petitioner’s Reply
do not request that we construe any additional claim terms.
Accordingly, we need not construe expressly any claim terms to
resolve the controversy before us. See Vivid Techs., 200 F.3d at
803.
Final Dec. 15. Thus, we did not construe any claim terms expressly in our
first Final Written Decision.
In our Institution Decision, however, we discussed a phrase from
claim 17 that is of critical importance on remand. In particular, the parties
disputed, and continue to dispute, the construction of the phrase “the stop
structure of said second chute being . . . offset rearwardly from the stop
structure of said first chute a horizontal distance greater than the diameter of
the products.” See Inst. Dec. 19–20. The phrase appears in the following
clause of claim 17:
the stop structure of said second chute being disposed
above the dispensing opening of said first chute a vertical
distance and offset rearwardly from the stop structure of said
first chute a horizontal distance greater than the diameter of
the products such that a forwardmost product of the products in
the first chute can only be properly removed from the first
chute, by lifting said forwardmost product up to a level wherein
the forwardmost product is at least in part horizontally forward
of the dispensing opening of the second chute.
Ex. 1001, 18:27–36 (emphases added).
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In our Institution Decision, we stated the following:
Petitioner contends that we should construe the phrase to
mean “at least a portion of the stop structure of the second chute
is offset by a distance greater than the diameter of the
cylindrical products[] from at least a portion of the stop
structure of the first chute.” Pet. 6–7 (citing Ex. 1002 ¶ 43).
Petitioner contends that the ’111 patent specification does not
define this phrase. Id. at 6.
Patent Owner disagrees with Petitioner’s construction
and contends that Petitioner provides “no justification for . . .
rewording the claim, except a bare assertion that the ‘111 patent
specification ‘does not define’ the term.” Prelim. Resp. 19.
Patent Owner proposes that we construe the phrase “a
horizontal distance” to mean “with a horizontal space between
them,” to clarify the structural relationship between the stop
structures of the respective chutes. Id. at 23.
Neither party explains persuasively why this claim phrase
or any of the terms recited therein require construction. The
meaning of each term as well as the entire phrase is clear, and,
thus, does not require explicit construction. Nonetheless, we
note that Petitioner fails to provide any support for its
construction, which diverts from the express claim language in
several respects,[ ] and we, therefore, decline to adopt it.
Inst. Dec. 19–20 (footnote omitted). In the footnote omitted from the
quotation above, we further stated: “Petitioner’s construction, at a
minimum, seeks to add the phrase ‘a portion of’ before each recitation of a
‘stop structure’ and seeks to omit the terms ‘rearwardly’ and ‘horizontal’
without providing any justification for the omissions.” Id. at 20 n.11 (citing
Pet. 6–7).
In addressing Petitioner’s challenge based on the combination of
Weichselbaum and Nesso (i.e., the ground we consider here), we found that
“Petitioner’s position appears to be based on its claim construction, which
we rejected.” Inst. Dec. 29 (citing our discussion of this claim phrase in
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Section II.C. of the Institution Decision). We further stated that “[w]e
decline to rewrite the claim to require only ‘at least a portion’ of the stop
structure of the second chute to be offset a horizontal distance greater than
the diameter of the products.’” Id.
In its Patent Owner Response on Remand, Patent Owner agrees with
our findings from the Institution Decision, noting that we “rejected
Petitioner[’s] argued construction.” PO Remand Resp. 10.
In its Reply on Remand, Petitioner contests our construction of this
phrase. Pet. Remand Reply 5–7. Petitioner acknowledges that the
’111 patent “does not define this claim limitation.” Id. at 5. Petitioner,
however, contends that we erred in our construction because it results in
“claim 17 and dependent claim 18 . . . be[ing] identical in scope,” which
runs afoul of the doctrine of claim differentiation. Id. at 5–6. In accordance
with the doctrine of claim differentiation, Petitioner asserts that independent
claim 17 must be broader than claim 18, which depends therefrom. Id.
Claim 18 recites:
The display rack of claim 17 wherein the horizontal
distance that the stop structure of the second chute is offset
rearwardly from the stop structure of the first chute is sufficient
that one of the products removed by a user from the rack can be
replaced on the rack supported with the replaced product resting
directly on a rearward portion of said forwardmost product in
the first chute.
Ex. 1001, 18:37–43. Petitioner asserts that “[c]laim 18 thus differs from
claim 17 only in its further recitation that the horizontal distance by which
the stop structure of the second chute is ‘offset rearwardly’ from the stop
structure of the first chute (as recited in claim 17) is ‘sufficient’ to replace a
product.” Pet. Remand Reply 6.
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Petitioner contends that its proposed construction of the “offset
rearwardly” limitation of claim 17 “includes within its scope a rearward
offset that does not leave sufficient horizontal space to return a can.” Id. at
7. In so doing, Petitioner asserts “[t]hat breadth of scope is necessary to
differentiate independent claim 17 from the narrower dependent claim 18, as
the law requires.” Id. Petitioner thus encourages us to adopt its proposed
construction. Id.
Patent Owner contends that “[c]laim 17 defines a display rack with a
return position in language that is in some ways broader than the language of
its dependent claim 18.” PO Remand Sur-reply 9. Patent Owner explains
the following:
Claim 17 expresses the feature in terms that indicate a
mathematical limit of an offset permitting return of one
cylindrical product to rest on another one. The definition of the
stop structure placement defined in claim 17 would encompass
a display rack in which the rearward stop structure offset is only
a very small additional distance, e.g., one micron, greater than
the product diameter. That configuration might not provide for
a return except in the case of mathematically perfect or very
high-tolerance circularly cylindrical products resting on the
forwardmost cylindrical article below. In normal real-world
can displays, however, the natural production variations in
dimensions of the cans would mean that the offset distance
would preferably be slightly greater to ensure that the replaced
product would really be “resting directly on a rearward portion”
of the forward product, making the functional requirement
slightly narrower. In addition, the shape and exact vertical
location of the upper stop structure might permit or prevent a
return position, depending on a number of parameters.
Id.
We begin our analysis with the language of claim 17, which states:
“the stop structure of said second chute being . . . offset rearwardly from the
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stop structure of said first chute a horizontal distance greater than the
diameter of the products.” Ex. 1001, 18:27–31. Petitioner proposes that we
construe this phrase to mean “at least a portion of the stop structure of the
second chute is offset by a distance greater than the diameter of the
cylindrical products[] from at least a portion of the stop structure of the first
chute.” Pet. 6–7 (emphases added) (footnote omitted) (citing Ex. 1002
¶ 43). As noted above, in our Institution Decision, we stated that
“Petitioner’s construction, at a minimum, seeks to add the phrase ‘a portion
of’ before each recitation of a ‘stop structure’ and seeks to omit the terms
‘rearwardly’ and ‘horizontal’ without providing any justification for the
omissions.” Inst. Dec. 20 n.11 (citing Pet. 6–7).
The claim language does not include the terms “at least a portion of”
as proposed by Petitioner. Rather, the claim states that the stop structure of
the second chute is “offset rearwardly from” the stop structure of the first
chute a horizontal distance greater than the diameter of the products. In this
context, we agree with Patent Owner that the most reasonable interpretation
of one structure being “offset rearwardly from” another structure is that the
offset, i.e., the distance between the structures (their separation), is measured
from the rear of the first stop structure to the front of the second stop
structure.
Turning to the Specification, we find that there is no intrinsic evidence
supporting Petitioner’s proposed construction—the Specification does not
define the phrase to include “at least a portion of,” the Specification does not
use the phrase in the same or another context that suggests we should read
“at least a portion of” into the claim, and none of the embodiments or figures
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support Petitioner’s argument that the phrase should be construed to include
“at least a portion of.” And, Petitioner does not contend otherwise.
Additionally, neither party relies upon the prosecution history of the
’111 patent, and we do not find anything particularly helpful therein on this
issue. See generally Exs. 1004–1014.
In the Petition, the sole support for Petitioner’s construction is
extrinsic evidence—a citation to Mr. Visser’s testimony. See Pet. 6–7
(citing Ex. 1002 ¶ 43). Mr. Visser states:
There is nothing in the ‘111 patent specification that defines
this claim limitation. Accordingly, in my opinion, a [person of
ordinary skill in the art] would understand this term to mean “at
least a portion of the stop structure of the second chute is offset
by a distance greater than the diameter of the cylindrical
products from at least a portion of the stop structure of the first
chute.”
Ex. 1002 ¶ 43. As reflected above, Mr. Visser does not explain why he
believes “at least a portion of” should be read into the claim simply because
the Specification does not define the “offset rearwardly” phrase. Mr. Visser
also does not cite to any intrinsic evidence to support his construction.
Unsupported testimony is entitled to little or no weight and here, in light of
the absence of any reason provided, we give it none. See Patent Trial and
Appeal Board Consolidated Trial Practice Guide (Nov. 2019) at 40–41,
available at https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf
(citing Rohm & Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir.
1997)).
In all of the briefing submitted in this proceeding, the sole reason
provided by Petitioner for twice reading “at least a portion of” into claim 17
is the doctrine of claim differentiation. See Tr. 17:11–18:9 (confirming
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claim differentiation as the sole basis for Petitioner’s position). We do not
find that argument persuasive because we do not find that this issue presents
a question of claim differentiation.
“The concept of claim differentiation . . . states that claims should be
presumed to cover different inventions. This means that an interpretation of
a claim should be avoided if it would make the claim read like another one.”
Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533, 1538 (Fed. Cir. 1991)
(quoting Autogiro Co. of Am. v. United States, 384 F.2d 391, 404 (Ct.
Cl. 1967)). “Claim differentiation[, however,] is a guide, not a rigid rule. If
a claim will bear only one interpretation, similarity will have to be
tolerated.” Id. (quoting Autogiro, 384 F.2d at 404). In accordance with the
doctrine, limitations stated in dependent claims “should ordinarily not be
read into independent” claims. Dow Chem. Co. v. United States, 226 F.3d
1334, 1341 (Fed. Cir. 2000); see Phillips, 415 F.3d at 1314–15 (“[T]he
presence of a dependent claim that adds a particular limitation gives rise to a
presumption that the limitation in question is not present in the independent
claim.”) (citation omitted); Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d
898, 910 (Fed. Cir. 2004) (same).
The doctrine, however, “cannot broaden claims beyond their correct
scope.” Dow Chem., 226 F.3d at 1341 (citing Multiform Desiccants, Inc. v.
Medzam, Ltd., 133 F.3d 1473, 1480 (Fed. Cir. 1998)). As explained in
Liebel-Flarsheim, “where the limitation that is sought to be ‘read into’ an
independent claim already appears in a dependent claim, the doctrine of
claim differentiation is at its strongest.” Liebel-Flarsheim, 358 F.3d at 910
(citation omitted).
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In the circumstances before us, it is Petitioner’s proposed construction
that seeks to “read” language into claim 17 (i.e., add language to the
independent claim), not Patent Owner’s construction or our preliminary
construction from the Institution Decision. In particular, Petitioner seeks to
“read” the phrase “at least a portion of” into claim 17 in two instances. This
is not the typical circumstance in which claim differentiation arises. Rather,
as explained in the case law cited and quoted above, the doctrine of claim
differentiation is most commonly applied to avoid adding limitations to
independent claims where those limitations are expressly recited in
dependent claims. This circumstance is not present here.
Claim 18 further limits the horizontal distance of the offset stop
structures of claim 17 by reciting that the horizontal distance “is sufficient
that one of the products removed by a user from the rack can be replaced on
the rack supported with the replaced product resting directly on a rearward
portion of said forward most product in the first chute.” Our construction of
claim 17 does not read this, fairly large, limitation of claim 18 into claim 17,
as would be contrary to the presumption provided by the doctrine of claim
differentiation. Rather, the scope of claims 17 and 18 depend, at least in
part, on not just the horizontal distance, but also the size of the products.20
Importantly, even if Petitioner were correct that the meaning of
claim 18 fails to distinguish over claim 17, Petitioner fails to provide any
support for its proposed solution—reading “at least a portion of” into
claim 17, twice. In particular, Petitioner does not explain how it arrives at
adding “at least a portion of” into the claim when that phrase does not

20 Claim 17 expressly recites “a plurality of generally cylindrical products all
having substantially equal diameters.” Ex. 1001, 17:55–56.
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appear in the ’111 patent. Petitioner does not contend that such meaning
was intended by the patentee or provide any reason as to why one of
ordinary skill in the art would have understood claim 17 to include that
unwritten phrase.
To the extent an explanation of claim scope is provided, it is provided
by Patent Owner. Patent Owner explains that claim 17 covers the
circumstance where the offset distance is only marginally greater than the
product diameter—e.g., one micron greater. PO Remand Sur-reply 9. In
that circumstance, Patent Owner contends that although the offset would
read on claim 17, it would not read on claim 18 because a replaced can could
not rest directly on a rearward portion of the forwardmost product in the first
chute, as recited by claim 18. Id. Additionally, Patent Owner contends that
“the shape and exact vertical location of the upper stop structure might
permit or prevent a return position, depending on a number of parameters.”
Id. In other words, there are other possibilities to consider before reading
limitations into claim 17 that do not have intrinsic or extrinsic support.
We are not in the business of rewriting claims. Our primary problem
with Petitioner’s proposed construction is that it lacks any support in the
record. Patent Owner provides a reasonable explanation as to how to view
the claims that results in a difference in scope. To the extent that our
construction is perceived as rendering the same scope for claims 17 and 18,
we find that the claims present the unusual situation where a dependent
claim does not narrow the claim from which it depends. Even in that
circumstance, however, we do not believe there is any basis to read “at least
a portion of” into claim 17, when that phrase lacks support in the intrinsic
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and extrinsic evidence in the record before us. Rather, we find that
circumstance to be the result of poor claim drafting.
Accordingly, we maintain and reaffirm our preliminary determination
that “at least a portion of” should not be read into the meaning of the “offset
rearwardly” limitation of claim 17. See Inst. Dec. 29. Rather, the phrase
should be understood according to its plain and ordinary meaning. Further,
for the reasons discussed above, one of ordinary skill in the art would
understand that the horizontal distance recited in this limitation is measured
from the end of the first stop structure to the beginning of the second stop
structure, as that is the horizontal distance by which the structures are offset.
Legal Standards – Obviousness
The U.S. Supreme Court set forth the framework for applying the
statutory language of 35 U.S.C. § 103 in Graham v. John Deere Co. of
Kansas City, 383 U.S. 1, 17–18 (1966):
Under § 103, the scope and content of the prior art are to be
determined; differences between the prior art and the claims at
issue are to be ascertained; and the level of ordinary skill in the
pertinent art resolved. Against this background, the
obviousness or nonobviousness of the subject matter is
determined. Such secondary considerations as commercial
success, long felt but unsolved needs, failure of others, etc.,
might be utilized to give light to the circumstances surrounding
the origin of the subject matter sought to be patented.
As explained by the Supreme Court in KSR International Co. v. Teleflex
Inc.:
Often, it will be necessary for a court to look to interrelated
teachings of multiple patents; the effects of demands known to
the design community or present in the marketplace; and the
background knowledge possessed by a person having ordinary
skill in the art, all in order to determine whether there was an
apparent reason to combine the known elements in the fashion
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claimed by the patent at issue. To facilitate review, this
analysis should be made explicit.
550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.”)).
“Whether an ordinarily skilled artisan would have been motivated to
modify the teachings of a reference is a question of fact.” WBIP, LLC v.
Kohler Co., 829 F.3d 1317, 1327 (Fed. Cir. 2016). “[W]here a party argues
a skilled artisan would have been motivated to combine references, it must
show the artisan ‘would have had a reasonable expectation of success from
doing so.’” Arctic Cat Inc. v. Bombardier Recreational Prods. Inc., 876
F.3d 1350, 1360–61 (Fed. Cir. 2017) (quoting In re Cyclobenzaprine
Hydrochloride Extended-Release Capsule Patent Litig., 676 F.3d 1063,
1068–69 (Fed. Cir. 2012)).
Level of Ordinary Skill in the Art
As discussed above, we find that one of ordinary skill in the art at the
time of the invention would have had (1) a Bachelor’s Degree in Industrial
Design and at least 1–2 years of experience in designing gravity feed display
dispensers, or (2) 5–10 years of experience in designing gravity feed display
dispensers. See supra § II.A.
Scope and Content of the Prior Art
a) Weichselbaum
Weichselbaum is directed to “a dispensing device and more
particularly to a device for dispensing cylindrical objects such, for example,
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as canned goods.” Ex. 1023, 1:1–4.21 Weichselbaum teaches that the
dispenser is “so dimensioned as to fit normally between shelves of
customary height in a grocery store or the like.” Id. at 1:15–18.
Weichselbaum’s Figure 3 is shown below:

Weichselbaum’s Figure 3 “is a sectional view taken along the line 3—3 of
Figure 2 as viewed in the direction of the arrows.” Id. at 2:5–7.
Weichselbaum explains:
The dispensing device . . . is comprised of a pair of side
walls 11 and rear wall 12, a shelf 13, inclined forwardly
downwardly from rear wall 12, serving as a base therefor. . . . A
second shelf 15 is secured between side walls 11 in parallel
relation to base shelf 13 but terminates at a point 16 spaced
from rear wall 12 by a distance slightly in excess of the
diameter of an individual can. . . . A third shelf 18 is also
positioned between side walls 11 but is inclined downwardly
toward rear wall 12 thereof in a direction opposite to the angle

21 Weichselbaum contains three pages of text, each page containing two
columns. Ex. 1023. Citations are to the column and line numbers of the
reference.
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of inclination of shelves 13 and 15, and terminates at a point 19
spaced from rear wall 12 . . . .
Side walls 11 are provided with aligned notches 25
adjacent but positioned above shelf 15, a stop member 26 being
positioned between the side walls at the end of the shelf and
extending upwardly to the bottoms of notches 25, thus
providing a recessed aperture through which the can at the end
of shelf 15 adjacent stop member 26 may be readily grasped for
removal. . . .
A stop 28 of a height substantially equal to the height of
portions 27 is positioned adjacent the end of shelf 13 to prevent
the cans from rolling out of the receptacle.
Id. at 2:13–3:1.
b) Nesso
Nesso is directed to “a compact refrigerated dispenser for dispensing
cooled articles, such as soft drink cans.” Ex. 1020, 1:1–3. Figure 4 of Nesso
is shown below:

Figure 4 “is a cross-sectional side view” of an embodiment of Nesso’s
dispenser. Id. at 2:8–9. Figure 4 shows, inter alia, two chutes, 40 and 42,
which are filled by inserting cans through entrances 44 and 46. Id. at 3:25–
29. Cans are dispensed by removing them from apertures 14 and 16. Id. at
3:37–38.
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Differences Between the Prior Art and the Claims;
Motivation to Modify
Petitioner asserts that the combined teachings of Weichselbaum and
Nesso would have rendered the subject matter of claims 17, 20, 25, and 26
obvious to one of ordinary skill in the art at the time of the invention.
Pet. 24–45; see Paper 95 (narrowing the claims for which this challenge is
maintained).
a) Claim 17
Petitioner provides a claim chart indicating where each limitation of
claim 17 allegedly is taught in Weichselbaum, Nesso, or both. Pet. 28–31.
In particular, Petitioner relies upon Weichselbaum as disclosing most of the
elements of the claim, but acknowledges that Weichselbaum “does not have
a second upper chute having a second loading opening, and it does not have
a door movable between an open position wherein the loading openings are
exposed and a closed position wherein the door covers the loading
openings.” Id. at 31–32. Instead, Petitioner relies upon Nesso as disclosing
those elements of the claim. Id.
Petitioner contends that one of ordinary skill in the art would have
been motivated to “add a second upper chute section to Weichselbaum to
allow for two different canned products to be dispensed and/or to increase
the capacity of the dispenser using roughly the same amount of shelf space.”
Id. at 32 (citing Ex. 1002 ¶ 168). Additionally, Petitioner asserts that one of
ordinary skill in the art would have been motivated “to include a hinged door
covering the loading openings as that would allow a retailer to include
labeling advertising the products being sold.” Id. (citing Ex. 1002 ¶ 169).
Patent Owner raises several arguments in response to Petitioner’s
challenge. We focus on Patent Owner’s arguments directed to the “offset
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rearwardly” limitation of the claims. See, e.g., PO Remand Resp. 26–33.
Patent Owner reiterates its argument from the Preliminary Response that
Petitioner relies upon Figure 3 of Weichselbaum as disclosing the stop
structures’ locations, but that Figure 3 fails to teach the “offset rearwardly”
limitation because the offset in Weichselbaum is not greater than the
diameter of the products. Id. at 28–29.
No new evidence has been presented on this issue on remand and the
parties’ arguments are essentially the same as those presented prior to our
Institution Decision. In our Institution Decision, we stated the following:
Claim 17 recites, inter alia, “the stop structure of said
second chute being . . . offset rearwardly from the stop structure
of said first chute a horizontal distance greater than the diameter
of the products.” Ex. 1001, 18:27–31. The Petition attributes
this limitation to Weichselbaum in the following manner:
“Fig. 3; the stop structure (26) of the second (upper) chute is
offset rearwardly from the stop structure (28) of the first (lower)
chute a horizontal distance greater than the diameter of the
products.” Pet. 31. Petitioner’s position appears to be based on
its claim construction, which we rejected. See supra
Section II.C. (discussing the construction of the phrase “the
stop structure of said second chute being . . . offset rearwardly
from the stop structure of said first chute a horizontal distance
greater than the diameter of the products”). We decline to
rewrite the claim to require only “at least a portion” of the stop
structure of the second chute to be offset a horizontal distance
greater than the diameter of the products.
Additionally, Figure 3, as discussed by Patent Owner,
does not, on its face, appear to satisfy the offset requirement
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recited in the claim. Weichselbaum’s Figure 3, annotated by
Patent Owner, is reproduced below:

Patent Owner annotated Figure 3 of Weichselbaum to identify
the horizontal distance of the offset between the two stop
structures. Prelim. Resp. 25.[22]
Patent drawings not designated as being drawn to scale
cannot be relied upon to define precise proportions of elements
if the specification is completely silent on the issue.
Hockerson-Halberstadt, Inc. v. Avia Grp. Int’l, Inc., 222 F.3d
951, 956 (Fed. Cir. 2000). Nonetheless, Petitioner bases its
argument on Figure 3, unmodified. Pet. 31. Petitioner bears
the burden to show that it is likely to prevail in its challenge to
the claims. In light of Petitioner’s focus on Figure 3, Patent
Owner is entitled to rely upon the same figure to rebut
Petitioner’s position. Here, Patent Owner has done so
successfully. In light of the lack of any argument or
explanation by Petitioner as to how Figure 3 teaches this

22 Patent Owner reproduces the same annotated version of Weichselbaum’s
Figure 3 in its Response on Remand. See PO Remand Resp. 33.
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element of the claim, we determine that Petitioner’s assertion is
not supported sufficiently for purposes of this Decision.
Inst. Dec. 29–30.
Petitioner has not provided any persuasive reason as to why we should
disturb our preliminary findings with respect to whether Weichselbaum
teaches the “offset rearwardly” limitation of claim 17. See Pet. Remand
Reply 17 & n.8 (Petitioner reiterates its reliance on Weichselbaum’s
Figure 3 even though not drawn to scale). In particular, the only argument
raised by Petitioner as to how Weichselbaum allegedly teaches the “offset
rearwardly” limitation of claim 17 is dependent upon Petitioner’s proposed
construction, which we do not adopt. See Pet. Remand Reply 17 (arguing
only based on Petitioner’s proposed construction). Patent Owner’s
annotation, reproduced above, however, demonstrates that Weichselbaum’s
Figure 3 does not teach “the stop structure of said second chute being . . .
offset rearwardly from the stop structure of said first chute a horizontal
distance greater than the diameter of the products,” as recited in claim 17.
Therefore, we find that Petitioner has not shown by a preponderance of the
evidence that Weichselbaum teaches the “offset rearwardly” limitation.
Additionally, we find that Petitioner has not set forth any argument or
evidence that a person of ordinary skill in the art would have modified
Weichselbaum to meet the “offset rearwardly” claim limitation. Nor does
Petitioner rely upon Nesso to meet this claim limitation. See Pet. 31
(mapping the “offset rearwardly” limitation in its chart to Weichselbaum,
Figure 3). At the oral hearing, counsel for Petitioner confirmed that its
challenge to claim 17, in the Petition, is based upon its proposed claim
construction and that it does not assert that the combination of
Weichselbaum and Nesso would have rendered claim 17 obvious under the
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construction we adopted preliminarily in our Institution Decision, and which
we have reaffirmed here. Tr. 27:18–28:23.
Accordingly, on the full record before us, we determine that Petitioner
has not shown that the combination of Weichselbaum and Nesso teaches the
rearward offset limitation recited by claim 17, and that Petitioner has not
shown that one of ordinary skill in the art would have had a reason to modify
Weichselbaum to meet this limitation of claim 17.
b) Claims 20, 25, and 26
Claims 20, 25, and 26 depend from claim 17. With respect to these
dependent claims, Petitioner relies upon Weichselbaum to the same extent
discussed above and does not rely upon Nesso as teaching the “offset
rearwardly” limitation of the stop structures. See Pet. 41–43 (claim 20), 43–
44 (claim 25), 45 (claim 26). Accordingly, we find that the deficiency
identified above regarding claim 17 applies equally to dependent claims 20,
25, and 26.
Objective Indicia of Nonobviousness
The parties raise arguments regarding objective indicia of
nonobviousness. PO Remand Resp. 38–48; Pet. Remand Reply 20–23; PO
Remand Sur-reply 1–10. As noted above, however, Petitioner (1) fails to
establish that the combination of Weichselbaum and Nesso teaches the
“offset rearwardly” limitation recited in the claims, and (2) does not argue
that it would have been obvious to modify the rearward offset of
Weichselbaum. Therefore, we need not determine whether Patent Owner
has established that the objective indicia of nonobviousness support its
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arguments for patentability of claims 17, 20, 25, and 26 in order to reach a
determination as to the balance of the evidence before us.23
Weighing the Graham Factors
“Once all relevant facts are found, the ultimate legal determination [of
obviousness] involves the weighing of the fact findings to conclude whether
the claimed combination would have been obvious to an ordinary artisan.”
Arctic Cat, 876 F.3d at 1361. In weighing the facts here, we determine that
the level of skill in the art does not favor either Petitioner’s or Patent
Owner’s case. Neither party argues that the level of skill is either so high or
low as to weigh in favor of their arguments as opposed to the other’s; nor do
the parties argue that the level of skill specifically impacts our legal
determination of obviousness in any specific manner.
Turning to our findings regarding the scope and content of the prior
art and the differences between the prior art and the claimed invention, we
determine that they weigh in favor of Patent Owner. Although the scope and
content of the prior art are in some ways similar to the claimed invention, we
determine that Petitioner has not shown sufficiently that the combination of
Weichselbaum and Nesso teaches the “offset rearwardly” limitation of

23 In our first Final Written Decision, we found (1) that Patent Owner’s
evidence “provide[s] a strong showing of commercial success of the
commercial embodiment of claim 27 of the ’111 patent” (Final Dec. 62) and
(2) that Patent Owner “established that Petitioner copied Patent Owner’s
display racks” (id. at 64). We then determined that “[o]n balance . . . based
on the complete record before us, Patent Owner’s evidence of
non-obviousness outweighs Petitioner’s evidence of obviousness.” Id. at 65.
The Federal Circuit confirmed that our findings regarding secondary
considerations were supported by substantial evidence. Campbell Soup Co.,
2019 WL 5152396, at *5.
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claim 17 and the challenged claims that depend therefrom. Thus, the scope
and content of the prior art and differences between the prior art and the
claims at issue weigh in favor of Patent Owner on the record before us.
Accordingly, regardless of whether objective indicia support patentability,
on balance, we determine that Petitioner fails to establish that claims 17, 20,
25, and 26 would have been obvious to one of ordinary skill in the art at the
time of the invention. Accordingly, we determine that Petitioner has not
demonstrated, by a preponderance of the evidence, that claims 17, 20, 25,
and 26 of the ’111 patent are unpatentable.
Patent Owner’s Motion for Leave
Patent Owner seeks leave to file a certificate of correction to correct
two alleged errors: (1) to change the dependency of claim 20 from claim 17
to claim 19 and (2) to change the dependency of claim 21 from claim 18 to
claim 20. Motion for Leave 2. Patent Owner contends that the changes
proposed are to correct printing errors. Id. Patent Owner represents that
“[t]he correction should not be prejudicial to any party to the present IPR,
and, in fact, may be postponed until after a Final Written Decision.” Id.
Patent Owner also represents that Petitioner does not contest the Motion for
Leave. Id. at 3.
We have exclusive jurisdiction over the challenged patent during an
inter partes review proceeding and may determine the manner in which
review of a request for certificate of correction pursuant to 35 U.S.C. § 255
and 37 C.F.R. § 1.323 is to proceed. See 35 U.S.C. § 255 (giving the
Director authority to determine the manner in which an inter partes review
and any other proceeding or matter involving the patent may proceed); 37
C.F.R. § 42.3(a) (granting the Board “exclusive jurisdiction within the
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Office over every involved application and patent during the proceeding, as
the Board may order”).
Claim 20 is included in Ground 2a and is not part of the stipulation
between the parties. If claim 20 depended from claim 19, instead of
claim 17, it is likely that the parties may have included claim 20 within their
stipulation as they have with other claims that depend from claim 19, e.g.,
claim 23.24 See Motion for Leave 3 (referring to the challenges withdrawn
in Petitioner’s Reply on Remand).
We do not control the process by which a certificate of correction is
reviewed, nor do we control the speed by which that process occurs. Thus,
to keep the record as clear as possible, we did not rule on Patent Owner’s
Motion for Leave prior to issuing this Final Written Decision. At this time,
however, we see no reason to delay Patent Owner from filing its request for
correction. Accordingly, Patent Owner’s Motion for Leave is granted.25

24 Petitioner explained during the second oral hearing that it sought to
withdraw its challenge to claim 23 because it depends from claim 18.
Tr. 7:1–9. Claim 19 depends from claim 18. Therefore, any claims that
depend from claim 19, which would include claim 20 if corrected, also
depend from claim 18.
25 We do not express any opinion on the merits of the errors alleged by
Patent Owner or the future request for correction. Patent Owner should
reference this Decision in its request.
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III. SUMMARY
For the reasons discussed above, Petitioner has not shown, by a
preponderance of the evidence, that claims 17, 20, 25, and 25 would have
been obvious over the combination of Weichselbaum and Nesso.
Additionally, we accept the parties’ stipulation that Petitioner has not shown,
by a preponderance of the evidence, that claims 18, 19, 21–24, and 27–35 of
the ’111 patent are unpatentable. The chart below summarizes our
conclusions and the parties’ stipulation.

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Patent 8,827,111 B2

38
Claim(s) 35 U.S.C. § References/Basis
Claims
Shown
Unpatentable
Claims Not
Shown
Unpatentable
17–20, 25, 26 103(a) Weichselbaum, Nesso 17–20, 25, 26
18, 19 103(a) Weichselbaum, Nesso, Rogers 18, 19
21, 22, 24 103(a) Weichselbaum, Nesso, Mellion
21, 22, 24
24 103(a) Weichselbaum, Nesso, Mellion, Schwimmer
24
23 103(a) Weichselbaum, Nesso, Luster
23
27, 28, 33, 34 103(a) Weichselbaum, Nesso, Rogers
27, 28, 33, 34
29 103(a) Weichselbaum, Nesso, Luster
29
29 103(a) Weichselbaum, Nesso, Luster, Rogers
29
30 103(a) Weichselbaum, Nesso, Luster, Knott
30
30 103(a) Weichselbaum, Nesso, Luster, Knott, Rogers
30
31 103(a) Weichselbaum, Nesso, Luster, Mellion
31
31 103(a) Weichselbaum, Nesso, Luster, Schwimmer
31
31 103(a)
Weichselbaum, Nesso,
Luster, Mellion,
Rogers

31
31 103(a)
Weichselbaum, Nesso,
Luster, Schwimmer,
Rogers

31
32, 35 103(a) Weichselbaum, Nesso, Mellion, Rogers
32, 35
Overall
Outcome
17–35

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39
IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 17–35 of U.S. Patent No. 8,827,111 B2 have
not been shown to be unpatentable;
FURTHER ORDERED that Patent Owner’s Motion for Leave to
Request Certificate of Correction is granted; and
FURTHER ORDERED that, because this a Final Written Decision,
parties to this proceeding seeking judicial review of this Decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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40
For PETITIONER ENTITIES CAMPBELL SOUP COMPANY and
CAMPBELL SALES COMPANY CAMPBELL:

Steven E. Jedlinkski
HOLLAND & KNIGHT LLP
steven.jedlinksi@hklaw.com

For PETITIONER ENTITY TRINITY MANUFACTURING, LLC:

Martin B. Pavane
Darren Mogil
COZEN O’CONNOR
mpavane@cozen.com
dmogil@cozen.com

For PATENT OWNER:

Andrew L. Tiajoloff,
TIAJOLOFF & KELLY LLP
atiajoloff@tkiplaw.com