Permobil, Inc.v.Pride Mobility Products Corporation

Patent Trial and Appeal Board

Dec 31, 2014

13656833 (P.T.A.B. Dec. 31, 2014)

Trials@uspto.gov Paper 51
571-272-7822 Entered: December 31, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

PERMOBIL, INC.,
Petitioner,

v.

PRIDE MOBILITY PRODUCTS CORPORATION,
Patent Owner.

Case IPR2013-00411
Patent 8,408,343 B2

Before BRIAN J. McNAMARA, JAMES B. ARPIN, and
MATTHEW R. CLEMENTS, Administrative Patent Judges.

CLEMENTS, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

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I. INTRODUCTION
Permobil Inc. (“Petitioner”) filed a Petition requesting inter partes
review of claims 1–10 (the “challenged claims”) of U.S. Patent No.
8,408,343 B2 (Ex. 1001, “the ’343 patent”). Paper 5 (“Pet.”). Pride
Mobility Products Corporation (“Patent Owner”) filed a Preliminary
Response. Paper 11 (“Prelim. Resp.”). On January 2, 2014, we granted an
inter partes review for all challenged claims on certain grounds of
unpatentability alleged in the Petition. Paper 12 (“Dec. to Inst.”).
After institution of trial, Patent Owner filed a Patent Owner Response
(Paper 22, “PO Resp.”) to which Petitioner filed a Reply (Paper 26, “Pet.
Reply”).
Oral hearing was held on July 31, 2014.1
The Board has jurisdiction under 35 U.S.C. § 6(c). This Final Written
Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
Petitioner has shown, by a preponderance of the evidence, that claims
1–10 of the ’343 patent are unpatentable.
A. Related Proceedings
Petitioner indicates that the ’343 patent is asserted against Petitioner
in Pride Mobility Products Corp. v. Permobil, Inc., Case No. 2:13-cv-
01999-LDD (E.D. Pa.). Pet. 1; Paper 49. Petitioner also has filed another
petition for inter partes review, IPR2013-00407, of claims 1–13 of a related
patent, U.S. Patent No. 8,408,598 B2.

1 A transcript of the oral hearing is included in the record as Paper 50
(“Tr.”).
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B. The ’343 Patent
The ’343 patent relates to powered wheelchair configurations that are
capable of assisting in curb-climbing. Ex. 1001, col. 1, ll. 19–21.
Wheelchairs with casters disposed on forward-extending arms coupled to the
frame at a pivot were known in the prior art. Id. at col. 1, ll. 43–45.
Wheelchairs also are known in the prior art as having pivoting front caster
arms that raise or are biased upwardly in response to wheelchair acceleration
or motor torque to enhance the capability of the wheelchair to climb curbs.
Id. at col. 1, ll. 45–50. Still, there was a general need for wheelchair
configurations that are simple and inexpensive, yet effective in climbing
obstacles, such as curbs. Id. at col. 2, ll. 10–12. To address this need, the
’343 patent discloses a wheelchair having a combination of stability and
curb-climbing capabilities. Id. at col. 2, ll. 16–18.
Figures 3A and 4B are reproduced below:

Figures 3A and 4B depict a perspective view of an embodiment of the
wheelchair with portions of the chair assembly and cover removed (Figure
3A) and a side view of the wheelchair with the drive wheel and a portion of
the mounting plate removed (Figure 4B). The Specification states that, in
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Figure 3A, frame assembly 12 comprises frame structure 24, which includes
central support 25a, rear support 25b, T-shaped support 25c, a pair of pivot
supports 25d, and footrest support 25e. Id. at col. 5, ll. 50–55. Wheelchair
10 includes a pair of drive assemblies 16 and pivot assemblies 18. Id. at col.
7, ll. 51–53.
Drive assembly 16 includes a pair of drives 50, each of which
includes motor 52, gearbox 54, and mounting plate 56. Id. at col. 7, ll. 60–
62. Each one of the drive assemblies is connected to one of a pair of drive
wheels 58. Id. at col. 7, ll. 62–63. Drive assembly 16 is coupled pivotally to
frame assembly 12 by pivot 29 between frame structure 24 and mounting
plate 56. Id. at col. 7, ll. 63–65. Each drive 50 is affixed rigidly to mounting
plate 56. Id. at col. 8, l. 27.
Pivot assembly 18 includes a front arm, such as caster arm 60, swivel
bearing 62, caster support 64, and caster wheel 66. Id. at col. 8, ll. 58–60.
Caster arm 60 is coupled rigidly to drive 50 via mounting plate 56. Id. at
col. 8, ll. 60–61.
C. Illustrative Claim
Of the challenged claims, claim 1 is independent. Claims 2–10
depend, directly or indirectly, from claim 1. Claim 1 is illustrative and is
reproduced below:
1. A wheelchair comprising:
a frame;
a drive wheel defining a drive wheel axis a mounting
plate pivotally coupled to the frame at a pivot axis, the pivot
axis being positioned forward of the drive wheel axis; a
mounting plate pivotally coupled to the frame at a pivot axis,
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the pivot axis being positioned forward of the drive wheel axis;
a drive operatively coupled to the drive wheel and affixed
to the mounting plate;
a forward-extending front arm rigidly extending from the
mounting plate such that the mounting plate, drive, and front
arm are together configured to pivot about the pivot axis;
a front wheel rotatably coupled to the front arm, the front
wheel defining a front wheel axis, wherein a vertical position of
the pivot axis with respect to the ground plane is spaced from
and positioned relatively below a line drawn between the drive
wheel axis and the front wheel axis when the drive wheels and
front wheels are on level ground, whereby motor torque biases
the front wheel.
D. Prior Art Supporting the Instituted Challenges
The following prior art references were asserted in the instituted
grounds:
Goertzen WO 02/34190 A2 May 2, 2002 Ex. 1003
Hosino US 6,454,286 B1 Sept. 24, 2002 Ex. 1005
Mulhern ’420 US 2003/0205420 Nov. 6, 2003
(filed May 6, 2002)
Ex. 1006
E. The Instituted Challenges of Unpatentability
The following table summarizes the challenges to patentability on
which we instituted inter partes review:
Reference[s] Basis Claims challenged
Goertzen & Hosino § 103 1–10
Goertzen & Mulhern ’420 § 103 1 and 4–10
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II. ANALYSIS
A. Claim Construction
In an inter partes review, claim terms in an unexpired patent are
interpreted according to their broadest reasonable construction in light of the
specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14,
2012). Also, claim terms are given their ordinary and customary meaning,
as would be understood by one of ordinary skill in the art in the context of
the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257
(Fed. Cir. 2007).
1. “a forward-extending front arm rigidly extending from the mounting
plate”(claim 1)
In the Decision to Institute, we concluded that no express construction
of “a forward-extending front arm rigidly extending from the mounting
plate” was necessary. Dec. to Inst. 7–8. Neither party contests that
conclusion, and nothing since our Decision to Institute indicates it should be
changed. We maintain our conclusion that no express construction of “a
forward-extending front arm rigidly extending from the mounting plate” is
necessary.
2. “a front wheel rotatably coupled to the front arm”(claim 1)
In the Decision to Institute, we concluded that no express construction
of “a front wheel rotatably coupled to the front arm” was necessary. Dec. to
Inst. 8. Neither party contests that conclusion, and nothing since our
Decision to Institute indicates it should be changed. We maintain our
conclusion that no express construction of “a front wheel rotatably coupled
to the front arm” is necessary.
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3. “oriented perpendicular to the drive wheel axis”(claim 7)
In the Decision to Institute, we construed “oriented perpendicular to
the drive wheel axis” to encompass not only the orientation of mounting
plate 56 relative to drive wheel axis A-DW, but also the orientation of motor
80 relative to drive wheel axis 24, as depicted in Figure 9 of U.S. Patent No.
6,129,165 B1 (“the ’165 patent”), which is referenced in the Specification of
the ’343 patent. Dec. to Inst. 8–10.
Patent Owner argues that this phrase encompasses only the orientation
of mounting plate 56 relative to the drive wheel axis, as depicted in Figures
3A, 3B, 4A, 4B, 7A, and 7B of the ’343 patent. PO Resp. 53–54.
We are not persuaded by Patent Owner’s argument. Figure 3B is
reproduced below:

Figures 3B depicts mounting plate 56 relative to drive wheel axis A-DW.
However, the ’343 patent also discloses that:
for conventional configurations having a motor that is
perpendicular to the drive wheel axis (and requiring a right
angle gearbox, which is not shown in the figures), the motor
swings about the gearbox output shaft to impart motion to the
front caster arm, as for example shown in U.S. Pat. No.
6,129,165.
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Ex. 1001, col. 9, ll. 20–25 (emphasis added). Figure 9 of the ’165 patent is
reproduced below:

Figure 9 depicts a side view of a power wheelchair according to the ’165
patent. The ’343 Patent describes motor 80 of Figure 9 as “perpendicular to
the drive wheel axis” 24. As can be seen by a comparison of the figures,
motor 80 of Figure 9 of the ’165 patent is oriented differently from mounting
plate 56 of Figure 3B of the ’343 patent. Thus, the ’343 patent uses
“perpendicular to the drive wheel axis” to refer to orientations other than the
orientation of mounting plate 56 in Figure 3B.
Patent Owner contends that the ’343 patent’s description of the motor
in the ’165 patent as “perpendicular” is not relevant because it relates to the
motor of a different patent, not the motor mount of the ’343 patent. PO
Resp. 55. We disagree. As an instance of the word “perpendicular” in the
’343 patent, it reflects directly on the meaning ascribed to that term by the
drafters of the ’343 patent.
Patent Owner also contends that the orientation of motor 80 of the
’165 patent is not relevant because the motor is not “substantially planar,” as
claim 7 requires of the recited “mounting plate.” PO Resp. 56. Whether
motor 80 is “substantially planar,” however, is irrelevant to whether the ’343
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patent uses the phrase “perpendicular to the drive wheel axis,” as recited in
claim 7, to encompass the orientation of motor 80 in the ’165 patent. It
clearly does.
Finally, Patent Owner addresses the construction proposed by
Petitioner. PO Resp. 57–58. Because we did not adopt Petitioner’s
proposed construction, we need not reach these arguments.
Accordingly, we maintain our construction of “oriented perpendicular
to the drive wheel axis” as broad enough to encompass not only the
orientation of mounting plate 56 relative to drive wheel axis A-DW, but also
the orientation of motor 80 relative to drive wheel axis 24, as depicted in
Figure 9 of the ’165 patent.
B. The Level of Ordinary Skill in the Art
“The person of ordinary skill in the art is a hypothetical person who is
presumed to know the relevant prior art.” In re GPAC Inc., 57 F.3d 1573,
1579 (Fed. Cir. 1995). This person is of ordinary creativity, not merely an
automaton, and is capable of combining teachings of the prior art. KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 420–21 (2007). The prior art itself can
reflect the appropriate level of skill in the art. Okajima v. Bourdeau, 261
F.3d. 1350, 1355 (Fed. Cir. 2001). In addition, judges on the Board are
“persons of scientific competence in the fields in which they work,” and our
findings are “informed by [our] scientific knowledge, as to the meaning of
prior art references to persons of ordinary skill in the art.” In re Berg, 320
F.3d 1310, 1315 (Fed. Cir. 2003).
In the Petition, Petitioner does not set forth its contention on the level
of the ordinary skill in the art. Patent Owner proffers the testimony
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contained in the Declaration of Mr. Neal Curran (“Curran Declaration”) on
the determination of the level of skill in the art appropriate for the ’343
patent. PO Resp. 27–29 (citing Ex. 2003 (Curran Decl.) ¶¶ 37–41). That
testimony concludes that a person of ordinary skill in the art relevant to the
’343 patent would have three years, or more, experience designing,
developing, and testing obstacle-traversing (and curb-climbing) systems and
suspensions for power wheelchairs. PO Resp. 27.
Petitioner disputes Mr. Curran’s opinion regarding the training and
experience that one of ordinary skill in the art relevant to the ’343 patent
would have had. Pet. Reply 11–13. Petitioner asserts that a person of
ordinary skill in the art would have had an undergraduate degree in
mechanical engineering and (1) if (s)he had pursued post-graduate studies, at
least one year of experience designing, developing, and testing wheelchairs;
or (2) if she had not pursued post-graduate studies, at least three years of
experience designing, developing, and testing power wheelchairs. Id. at 11
(citing Ex. 1017 ¶ 13 (Second Declaration of Dr. W. Mark Richter)).
We are not persuaded that the level of ordinary skill in the art required
at least three years of experience specific to obstacle-traversing and curb-
climbing systems and suspensions, as Patent Owner contends. The problems
identified by Patent Owner and the skills required—e.g., “analysis of the
various forces and moments,” “understanding of moment arms,”
“understand[ing] the effects on moments and forces,” (PO Resp. 28–29)—
are within the ordinary skill of a person with an undergraduate degree in
mechanical engineering. Moreover, we note that the named inventor of the
’343 patent—James Mulhern—testified, in a related reexamination, that a
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person of ordinary skill in the art would have had only “a B.S. in mechanical
engineering or equivalent, or at least 3 years of experience in the field of
designing powered wheelchairs for personal mobility.” Ex. 1026 ¶ 10
(emphasis added).
Based on our review of the technology claimed in the ’343 patent and
the description of the powered wheelchair set forth in the specification, we
determine that a person of ordinary skill in the art would have had either (1)
an undergraduate degree in mechanical engineering or an equivalent degree;
or (2) at least three years of experience designing powered wheelchairs for
personal mobility.
C. Claims 1–10 – Obviousness over Goertzen & Hosino
Petitioner argues that claims 1–10 are unpatentable under 35 U.S.C.
§ 103(a) as obvious over Goertzen and Hosino. Pet. 34–39, 45–60. In
support of this ground of unpatentability, Petitioner provides detailed
explanations as to how each claim limitation is met by Goertzen and Hosino,
and relies upon the Declaration of Dr. W. Mark Richter (Ex. 1008). Id.
Patent Owner counters that (1) Petitioner cannot meet its burden
because it failed to set forth the level of skill in the art; (2) Petitioner does
not articulate any reason why a person of ordinary skill in the art would have
combined Goertzen with Hosino; (3) choosing a pivot location below the
axis-to-axis line would not have been a routine design choice; and (4)
objective considerations demonstrate the nonobviousness of the claims of
the ’343 patent. PO Resp. 7–52. As support, Patent Owner proffers the
Curran Declaration. Id. (citing Ex. 2003).
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Upon consideration of the parties’ contentions and supporting
evidence, we determine that Petitioner has demonstrated, by a
preponderance of the evidence, that claims 1–10 are obvious over the
combination of Goertzen and Hosino.
Goertzen (Exhibit 1003)
Goertzen describes a curb-climbing wheelchair having pivotal arm
assemblies including pivot arms. Ex. 1003, Abstract. The pivotal arm
assemblies include at least one front caster and have the ability to rotate or
pivot. Id. The pivot arms rotate or pivot in response to moments generated
by accelerating or decelerating the wheelchair, thereby raising or lowering
the front casters through the rotational movement of the pivot arms. Id. By
raising or lowering the front casters, curb-like obstacles may be traversed in
a low-impact manner. Id. Figure 3 of Goertzen is reproduced below:

Figure 3 depicts suspension and drive components of wheelchair 100. Id. at
7, ll. 3–26, Fig. 3,. As depicted in Figure 3, wheelchair 100 comprises frame
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142, a pair of drive wheels 102 and 104, drive motor 136 coupled to pivot
arm 132 through gearbox assembly 309 and mounting plate 308, drive motor
138 coupled to pivot arm 134 through a gearbox assembly and mounting
plate, and front casters 106 and 108. Id. at6, ll. 3–15, 7, ll. 3–26, Fig. 3.
Figures 5A and 5B of Goertzen are reproduced below:

Figures 5A and 5B depict the curb-climbing capability of wheelchair 100.
As depicted in Figure 5A, wheelchair 100 approaches curb 502 of
approximately two to four inches in height. Id. at 10, ll. 5–6. As depicted in
Figure 5B, drive motors 136 and 138 are torqued, such as by the passenger
directing the wheelchair to accelerate, to cause pivot arms 132 and 134 to
pivot about pin 330 and to raise front casters 106 and 108 off the ground. Id.
at 10, ll. 11–20.
Hosino (Exhibit 1005)
Hosino describes a traveling device, such as an electric-powered
wheelchair, in which each wheel moves in conformity with uneven ground
to allow comfortable driving thereon. Ex. 1005, col. 1, ll. 51–55. The
traveling device comprises a truck member, acting as a platform and having
a loop frame, a pair of front and rear casters, and a pair of left and right
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driving wheels. Id. at col. 1, ll. 57–62. The loop frame consists of a pair of
side frame parts, each side frame part having a front section and a rear
section divided by a bendable portion at which the side frame part is able to
bend upwards and downwards. Id. at col. 1, ll. 63–67. Each bendable
portion is located lower than a rotation axis of the driving wheel and as high
as a rotation center of the front caster, such that the casters are able to ride
over a projection in uneven ground. Id. at col. 2, ll. 36–44. Figure 1 of
Hosino is reproduced below:

Figure 1 depicts a perspective view of the traveling device according to a
first embodiment. Id. at Fig. 1. As depicted in Figure 1, loop frame 2
consists of front half-frame 2a and rear half-frame 2b. Front half-frame 2a
has a pair of rear-end portions connected by a pivot to front-end portions of
rear half-frame 2b to form bendable portion 5. Id. at col. 3, l. 64–col. 4, l. 5.
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Figure 9 of Hosino is reproduced below:

Figure 9 depicts the action of the traveling device when front caster 3a rides
over projection 18 in uneven ground. Id. at Fig. 9. This structure facilitates
travel over uneven ground because bendable portion 5 is located in a
relatively low position. Id. at col. 4, ll. 13–15. In a preferred embodiment,
bending portion 5 is positioned as high as the center of the front caster. Id.
at col. 4, ll. 18–23.
Figure 11 is reproduced below:

Figure 11 is a partially elongated view for explaining an action of the front
caster. Id at Fig. 11. As shown in Figure 11 of Hosino, when point O1 of
bendable portion 5 is as high as point O2, front caster 3a moves upward and
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rearward, which enables smoother travel over uneven ground, e.g.,
projection 18. Id. at col. 7, ll. 6–9.
Analysis of Petitioner’s Contentions
Petitioner has demonstrated, by a preponderance of the evidence, that
claims 1–10 are obvious over the combination of Goertzen and Hosino.
Based on the record before us, we find that the following limitations
of independent claim 1 are met by the following elements of Goertzen:
Independent Claim 1 Goertzen
a frame frame 142
a drive wheel drive wheel 102 or 104
a mounting plate mounting plate 308
a drive drive motor 136 or 138
a forward-extending front arm pivot arm 132 or 134
a front wheel front caster 106 or 108
In addition, claim 1 recites “whereby motor torque biases the front
wheels.” Goertzen discloses that, “from preferably a standstill position,
drive motors 136 and 138 are ‘torqued’ so as to cause pivot arms 132 and
134 to pivot about, for example, pin or bolt 330 and raise front casters 106
and 108 off the ground.” Ex. 1003, 10, ll. 11–22, Fig. 5B;.
Petitioner acknowledges that Goertzen does not disclose that “a
vertical position of the pivot axis with respect to the ground plane is spaced
from and positioned relatively below a line drawn between the drive wheel
axis and the front wheel axis when the drive wheels and front wheels are on
level ground,” as recited in independent claim 1. Pet. 38. Petitioner’s
Declarant, Dr. Richter, concludes, however, that:
It would have been obvious for one of ordinary skill in the art to
position the pivot axis in the Goertzen wheelchair below a line
connecting the front wheel axis and the drive wheel axis. A
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person of skill in the art would recognize that there are a limited
number of design choices for the vertical position of the pivot
axis – above the line, at the line, or below the line – and
choosing one of these three options would be a routine design
choice to a person of ordinary skill in the art. Doing so would
be nothing more than a combination of known elements used
for their known purpose and yielding predictable results.
Therefore, claim 1 is unpatentable over Goertzen in view of any
one of the Low Pivot References.
Ex. 1008 ¶ 56 (emphasis added). We find that there is sufficient evidence
supporting the reasoning of the above-quoted analysis of Dr. Richter. See
Ex. 1008 ¶¶ 49-56.
Petitioner has shown that each of these limitations is taught or
suggested by the combination of Goertzen and Hosino. We further
determine that Petitioner has demonstrated that each of the additional
limitations recited in claims 2–10 is taught or suggested by the combination
of Goertzen and Hosino, as set forth in the Petition (Pet. 47–60).
Dr. Richter’s Qualifications to Opine on the Reason to Combine
Patent Owner contends that the reason to combine articulated by Dr.
Richter is insufficient because (1) Dr. Richter is not a skilled artisan; (2) Dr.
Richter misunderstands the law of obviousness; and (3) Dr. Richter’s
testimony should be disregarded because he did not articulate whether and
how a person of ordinary skill in the art would compensate for the effect on
stability of the proposed modification to Goertzen. PO Resp. 12–25.
We are not persuaded by Patent Owner’s argument that Dr. Richter is
not a person of ordinary skill in the art because, as discussed above, we do
not agree that such a person would have to have had three years of
experience specific to curb-climbing systems. PO Resp. 12–14. Dr. Richter
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has a B.S., M.S., and Ph.D. in mechanical engineering, and has been
involved in the development of wheelchairs, including power wheelchairs,
since 1995. Ex. 1008 ¶¶ 2–9. Accordingly, we find that Dr. Richter is, at
least, a person of ordinary skill in the art, and, therefore, is qualified to
testify from the perspective of one of ordinary skill in the relevant art at the
time of the invention.
We also are not persuaded by Patent Owner’s argument that Dr.
Richter’s testimony cannot be accepted because he “has never heard of
‘hindsight,’” and misunderstands obviousness. PO Resp. 14–16. Dr.
Richter’s understanding of the law of obviousness is not determinative. We
rely on Dr. Richter’s testimony as to the facts of what a person of ordinary
skill in the art would have known and understood at the time of the claimed
invention, but not as to the ultimate legal conclusion of obviousness.
Finally, Patent Owner argues that Dr. Richter’s testimony should not
be considered because he did not, in his Declarations, address the effect on
stability of lowering the pivot. PO Resp. 16–19. The deposition testimony,
however, does not support the notion that Dr. Richter ignored stability. Dr.
Richter testified that lowering the pivot in Goertzen is safe only “[i]f done
properly . . . .” PO Resp. 19 (quoting Ex. 2004, 27:6–28:20); see also Ex.
1012, 28:21–29:12 (testifying that “[i]f done properly, [lowering the pivot]
should have no – no adverse effect on [tipping over]” (emphasis added)). To
the extent there was any doubt, Dr. Richter later testified that “there is no
way in the world I would drop a pivot just because it has better obstacle
climbing characteristics without taking into account its effect on stability.”
Ex. 2004, 158:15–19. Accordingly, we do not agree with Patent Owner that
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Dr. Richter did not recognize initially the effect on stability of lowering the
pivot of Goertzen.
Patent Owner also faults Dr. Richter for not analyzing declines or
deceleration, or doing any of the engineering that, according to him, would
be necessary to compensate for the reduced stability caused by a lower pivot.
PO Resp. 19–23. The question before us, however, is not whether Dr.
Richter did the engineering necessary to combine the prior art into a
functional prototype, but whether doing so would have been within the
ability of a person of ordinary skill in the art at the time of the claimed
invention. In that regard, we credit Dr. Richter’s testimony that a person of
ordinary skill in the art would have known how to change various other
parameters in order to achieve a stable version of the claimed invention. Ex.
2004, 185:23–186:14. Patent Owner asserts that the proposed modification
is anything but routine (PO Resp. 23–25), but does not explain why such
calculations would not have been within the ability of a person of ordinary
skill in the art.
For the foregoing reasons, we find that Petitioner has articulated
sufficiently a reason with rational underpinnings for for combining the
teachings of Goertzen and Hosino to achieve the wheelchair recited in the
challenged claims.
Whether a POSITA Could Compensate for Reduced Stability
Patent Owner contends that a person of ordinary skill in the art would
not have considered moving Goertzen’s pivot below the axis-to-axis line to
be a routine design choice because doing so would reduce stability. PO
Resp. 26–27, 37–38. As support, Patent Owner analyzes a hypothetical
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version of Goertzen in which the pivot has been lowered, and finds that the
hypothetical chair is unstable because it is more prone to tip forward when
descending a curb and when decelerating on a decline. PO Resp. 38–45.
Compensating for this decreased stability, according to Patent Owner, would
be “extremely difficult, if not impossible.” PO Resp. 46 (citing Ex. 2003
(Curran Decl.) ¶¶ 103–110).
Petitioner counters that (1) Mr. Curran’s analysis is based improperly
upon the patent drawings; (2) a person of ordinary skill in the art would have
known to make routine adjustments to compensate for the reduction in
stability caused by lowering the pivot; and (3) Goertzen suggests several
such adjustments. Pet. Reply 2–9.
We are persuaded that a person of ordinary skill in the art at the time
of the claimed invention would have known how to compensate for the
reduction in stability caused by lowering the pivot. As Petitioner points out,
Goertzen teaches three design options for increasing stability. Pet. Reply 7–
9. Patent Owner’s expert, Mr. Curran, addresses only two of the three
options. Ex. 2003 ¶¶ 106–109. Moreover, Petitioner’s Declarant, Dr.
Richter, testifies as to other ways in which a person of ordinary skill in the
art would have known to compensate for the reduction in stability caused by
lowering the pivot. Ex. 1012, 182:6–190:20. Mr. Curran does not explain
adequately why those techniques would not have been known to a person of
ordinary skill in the art.
For the foregoing reasons, we find that Petitioner has shown that a
person of ordinary skill in the art would have known how to compensate for
the reduction in stability caused by lowering the pivot of Goertzen.
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Physical combinability of Goertzen and Hosino
Patent Owner argues that a person of ordinary skill in the art would
not have looked to Hosino to modify Goertzen because (1) the size of the
caster wheels in Goertzen already would be higher than the obstacles at issue
in Hosino; (2) Goertzen is directed to curb-climbing, whereas Hosino is
directed to keeping its caster on the ground at all times for stability; and (3)
Hosino does not include an arm that is pivotably mounted to the frame. PO
Resp. 46–49.
Petitioner counters that (1) physical combinability of prior art
references is irrelevant; and (2) the claims of the ’343 patent are silent as to
obstacle size and caster wheel size. Pet. Reply 4–5, 9.
We are not persuaded by Patent Owner’s argument that a person of
ordinary skill in the art would not look to Hosino to modify Goertzen due to
the physical differences and the different uses for the respective chairs. The
principle taught in Hosino—that low pivot point enables a front caster wheel
to move “rear upward” and thereby more easily rise up and overcome the
obstacle—applies equally to Goertzen, regardless of the differences in front
caster wheel size, and nature of the obstacle being overcome.
For the foregoing reasons, we find that Petitioner has shown
adequately that a person of ordinary skill in the art would have looked to
Hosino to modify Goertzen.
Secondary Considerations of Nonobviousness
Patent Owner asserts that Invacare’s TDX SI and Petitioner’s M-
Series wheelchairs are a copy of the product of the ’343 patent (its Jazzy
Select 6 wheelchair). PO Resp. 49–52. To support its allegations, Patent
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Owner submits a Declaration of Mr. Scott Meuser (Ex. 2006), its chairman
and CEO, and relies upon an infringement analysis by Mr. Curran (Ex. 2003
¶¶ 123, 124). None of the evidence submitted by Patent Owner, however,
demonstrates that Invacare or Petitioner was aware of the ’343 patent prior
to developing its product, or that Invacare or Petitioner developed its product
by copying the ’343 patent.
Claim 7
Claim 7 recites “wherein the mounting plate is substantially planar
and is oriented perpendicular to the drive wheel axis.” Petitioner asserts that
in Goertzen, as depicted in Figure 3, “mounting plate 308 is substantially
planar and is oriented perpendicular to the drive wheel axis 311.” Pet. 54
(citing Ex. 1003, 7, ll. 6–12, Fig. 3). Patent Owner contends, however, that
Goertzen’s mounting plate 308 is parallel—not perpendicular—to drive
wheel axis 311. PO Resp. 58. Patent Owner’s argument is based upon a
claim construction that, for the reasons discussed above, we decline to adopt.
Figure 3 of Goertzen is reproduced below:
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Figure 3 depicts mounting plate 308 in the same orientation with respect to
the drive wheel axis as motor 80 of the ’165 patent, which the ’343 patent
describes as “perpendicular to the drive wheel axis.” See Ex. 1001, col. 9, ll.
20–25. Thus, we are persuaded that mounting plate 308 is “oriented
perpendicular to the drive wheel axis,” as recited in claim 7.
Conclusion
For the foregoing reasons, we determine that Petitioner has
demonstrated, by a preponderance of the evidence, that claims 1–10 are
unpatentable under 35 U.S.C. § 103(a) as obvious over Goertzen and
Hosino.
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D. Claims 1 and 4–10 – Obviousness over Goertzen and Mulhern ’420
Petitioner contends that claims 1 and 4–10 are unpatentable under
35 U.S.C. § 103(a) as obvious over the combination of Goertzen and
Mulhern ’420. Pet. 34–39, 45–60. In support of this asserted ground of
unpatentability, Petitioner provides detailed explanations as to how each
claim limitation is met by Goertzen and Mulhern ’420, and again relies upon
the Declaration of Dr. Richter. Pet. 34–39 (citing Ex. 1008 ¶¶ 49–56).
Patent Owner does not argue the patentability of claims 1 and 4–10
separately.
Upon consideration of the parties’ contentions and supporting
evidence, we determine that Petitioner has demonstrated, by a
preponderance of the evidence, that claims 1 and 4–10 are obvious over
Goertzen and Mulhern ’420.
Mulhern ’420 (Exhibit 1005)
Mulhern ’420 describes front anti-tip wheels for powered wheelchairs.
Ex. 1006 ¶ 1. Specifically, Mulhern ’420 describes a wheelchair having one
or more anti-tip wheels and a supporting structure for maintaining the anti-
tip wheels in a position very near the ground, when desired, thereby
eliminating the uncomfortable sensation of a partial tip for the user. Id. ¶ 4.
Figures 1 and 2A of Mulhern ’420 are reproduced below:
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Figures 1 and 2A depict a right-side view of a wheelchair according to a first
embodiment (Figure 1), and a side-view of an anti-tip wheel assembly with
anti-tip wheels in a neutral position (Figure 2). As depicted in Figure 1,
wheelchair 10 has forwardly-extending arm 24 that is pivotally connected to
frame 60 by bolt 32. Id. ¶ 22. Wheel 22 is coupled rotatably to forwardly-
extending arm 24 by pin 30. Id. Drive wheels 62 are connected rotatably to
frame 60. Id. ¶ 20. Pivot point 32 is located below a line drawn between the
axis of front wheel 22 and the axis of drive wheels 62.
Petitioner’s Contentions
Petitioner has demonstrated, by a preponderance of the evidence, that
claims 1 and 4–10 are obvious over Goertzen and Mulhern ’420.
Petitioner acknowledges that wheels 22 of Mulhern ’420 are not
always “in contact with the surface,” as recited in claim 1. Pet. 30–31. Dr.
Richter states that:
Mulhern ’420 further explains that front wheel 22 can be
lowered to the ground: “Anti-tip wheels assembly 20 further
comprises a mechanism for lowering arm 24 and wheel 22. …
In this embodiment, the lowering mechanism is capable of
holding wheel 22 in a near ground position …. As used herein,
near ground position is understood to include a ground
engaging position wherein the wheel 22 is in contact with the
ground.” See id. ¶ [0024] (Ex. 1006). A person of skill in the
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art would understand that when the front wheel depicted in
Figure 1 is lowered to the ground, the front arm pivot point
would remain below a line drawn between the front wheel axis
and the drive wheel axis.
Ex. 1008 ¶ 42. We are persuaded by the reasoning in the above-quoted
analysis of Dr. Richter.
Physical combinability of Goertzen and Mulhern ’420
Patent Owner argues that a person of ordinary skill in the art would
not have looked to Mulhern ’420 to modify Goertzen because Goertzen
requires its arm to pivot upwards whereas Mulhern ’420 prevents its arm
from pivoting upward when it is held in the near ground position by cam 56.
PO Resp. 49.
Petitioner counters that (1) physical combinability of prior art
references is irrelevant; and (2) the claims of the ’343 patent are silent as to
obstacle size and caster wheel size. Pet. Reply 4–5, 9.
We are not persuaded by Patent Owner’s argument that a person of
ordinary skill in the art would not look to Mulhern ’420 to modify Goertzen
due to the operation of cam 56 in Mulhern ’420. A person of ordinary skill
in the art would recognize that Mulhern ’420 does not prevent its arm from
pivoting upward when it is not held in the near ground position by cam 56.
We find that Petitioner has adequately shown that a person of ordinary
skill in the art would have looked to Mulhern ’420 to modify Goertzen.
Conclusion
For the foregoing reasons, we determine that Petitioner has
demonstrated, by a preponderance of the evidence, that claims 1 and 4–10
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are unpatentable under 35 U.S.C. § 103(a) as obvious over the combination
of Goertzen and Mulhern ’420.
E. Petitioner’s Motion to Exclude Evidence
Petitioner filed a Motion to Exclude Evidence (Paper 35), to which
Patent Owner responded (Paper 43). Petitioner filed a Reply in Support of
its Motion to Exclude. Paper 47. Petitioner’s Motion to Exclude Evidence
seeks to exclude (1) paragraphs 3–6, 12, 13, 21–23, 25–30, and 32–40 of the
Declaration of Scott Meuser (Ex. 2006); and (2) paragraphs 122–124 of the
Declaration of Neal Curran (Ex. 2003). Paper 35, 1. As movant, Petitioner
has the burden of proof to establish that it is entitled to the requested relief.
See 37 C.F.R. § 42.20(c).
We decline to assess the merits of Petitioner’s Motion to Exclude
Evidence. As discussed above, even without excluding the identified
evidence, we have concluded that Petitioner has demonstrated, by a
preponderance, of the evidence that the challenged claims are unpatentable.
Accordingly, Petitioner’s Motion to Exclude Evidence is denied.
F. Patent Owner’s Motion to Exclude Evidence
Patent Owner also filed a Motion to Exclude Evidence (Paper 36), to
which Petitioner responded (Paper 45). Patent Owner filed a Reply in
Support of its Motion to Exclude. Paper 46. Patent Owner’s Motion to
Exclude Evidence seeks to exclude the testimony of Dr. Richter on the
grounds that he is not an expert under Federal Rule of Evidence 702. Paper
36. As movant, Petitioner has the burden of proof to establish that it is
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entitled to the requested relief. See 37 C.F.R. § 42.20(c). For the reasons
stated below, Petitioner’s Motion to Exclude is denied.
Patent Owner’s motion is predicated on a definition of the level of
ordinary skill in the art that we declined to adopt, as discussed above. Based
on the level of ordinary skill in the art that we determined above, Dr. Richter
is a person of greater than ordinary skill.
Patent Owner also argues that Petitioner improperly needs the
evidence regarding the level of skill in the art relied upon in the Reply to
make out a prima facie case for the Petition. Patent Owner, however, cites
no case law to support that proposition. Petitioner asserts that the Board has
routinely found claims to be obvious without identifying a specific level of
ordinary skill in the art. Paper 45, 8–9, n.6. We are not persuaded that
Petitioner failed to make a sufficientcase of obviousness because the Petition
lacked an explicit contention in the Petition regarding the level of ordinary
skill in the art.
III. CONCLUSION
Petitioner has shown, by a preponderance of the evidence, that claims
1–10 of the ’343 patent are unpatentable based on the following grounds of
unpatentability:

Reference[s] Basis Claims challenged
Goertzen & Hosino § 103 1–10
Goertzen & Mulhern ’420 § 103 1 and 4–10

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IV. ORDER
In consideration of the foregoing, it is
ORDERED that claims 1–10 of the ’343 patent are held unpatentable;
FURTHER ORDERED that Petitioner’s Motion to Exclude is denied;
FURTHER ORDERED that Patent Owner’s Motion to Exclude is
denied; and
FURTHER ORDERED that, because this is a Final Written Decision,
the parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.
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For PETITIONER:

David Cavanaugh
David.Cavanaugh@wilmerhale.com

Owen Allen
Owen.Allen@wilmerhale.com

For PATENT OWNER:

Gray Levin
glevin@bakerlaw.com

Jake Soumis
jsoumis@bakerlaw.com

Daniel Goettle
dgoettle@bakerlaw.com