Unverferth Manufacturing Co., Inc.v.J. & M. Manufacturing Co., Inc.

Patent Trial and Appeal Board

Dec 9, 2015

13200694 (P.T.A.B. Dec. 9, 2015)

Trials@uspto.gov Paper 31
Tel: 571-272-7822 Entered: December 9, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

UNVERFERTH MANUFACTURING CO., INC.,
Petitioner,

v.

J&M MANUFACTURING CO., INC.,
Patent Owner.
____________

Case IPR2014-00758
Patent 8,585,343 B2
____________

Before JAMES T. MOORE, HYUN J. JUNG, and MIRIAM L. QUINN,
Administrative Patent Judges.
MOORE, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
37 C.F.R. § 42.108

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I. BACKGROUND
A. Introduction
On May 15, 2014, Unverferth Manufacturing Co., Inc. (“Petitioner”),
filed a Petition under 35 U.S.C. §§ 311–319 for inter partes review of claims
1–14 of U.S. Patent No. 8,585,343 B2 (“the ’343 Patent”). Paper 1 (“the
’758 Petition,” “Petition,” or “Pet.”). J&M Manufacturing Co., Inc. (“Patent
Owner”) filed a Preliminary Response (“Prelim. Resp.”) on August 22,
2014. Paper 6. We granted the ’758 Petition as to certain challenges to the
patentability of claims 1–14, and declined to institute an additional challenge
to those same claims on October 28, 2014. Paper 7 (“’758 Decision”).
Patent Owner filed a Corrected Response, Paper 17 (“PO Resp.”), and
Petitioner filed a reply, Paper 20 (“Reply”).
Oral argument was conducted on July 15, 2015, and a Transcript of
the proceeding is of record. Paper 25.
On August 31, 2014 we entered a final written decision determining
that the Petitioner has met its burden of showing that claims 1–14 were
unpatentable. Paper 26 (“Dec.”).
Patent Owner seeks rehearing of that final written decision in a timely
request filed September 30, 2015. Paper 28 (“Req. Reh’g.”).
In a Request for Rehearing, the dissatisfied party must identify,
specifically, all matters the party believes the Board misapprehended or
overlooked, and the place where each matter was addressed previously.
37 C.F.R. § 42.71(d).

We grant the Rehearing Request to the extent that we have carefully
reconsidered the matters raised. We deny the relief requested in all other
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respects and do not modify our previous decision except to expand upon the
issues now raised by Patent Owner as stated herein.
B. The Request for Rehearing
Patent Owner requests rehearing on the basis that “the Board
misapprehended or overlooked evidence of long-felt need.” Req. Reh’g. 1.
Among those items which Patent Owner points to are the following
(paraphrased):
1) Petitioner’s Patent applications on a single auger, front folding
grain cart similar to the one described and claimed in the ’343 Patent. Id.
2) Petitioner’s extended reach grain carts compared to the claims of
the ’343 Patent. Id. 3.
3) The nexus between the evidence offered regarding Petitioner’s
efforts to develop its own extended reach grain carts and the claims of the
’343 Patent. Id. 7.
4) Petitioner’s X-TREME grain carts having additional features
beyond those claimed in the ’343 Patent does not destroy the nexus. Id. 9.
5) There had been a need for at least 20 years for extended reach in a
single auger, front folding grain cart. Id. 12.
6) Petitioner believed its invention to be new and non-obvious
when it filed Petitioner’s Patent Applications. Petitioner then changed its
position to say that the invention was obvious after learning about the Patent
Owner’s Patent and the ensuing litigation. Id. 12–13.
We address these issues below as indicated.

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C. Petitioner’s Patent Applications (1, 6)
Petitioner filed its own Patent Applications on a single auger, front
folding grain cart. Req. Reh’g. 1.
Exhibits 2008–2010 reflect those filings.
We look at Ex. 2008 first, which was filed February 13, 2009 as
Provisional Application 61/152,251. Ex. 2008 p. 11. The Application
describes the field of invention as “a folding auger with a compound angle
joint for a grain cart and to grain carts having folding augers.” Id. [0001].
The description further describes the foldable auger assembly as follows:
[0005] One aspect of the present invention provides a foldable
auger assembly having an upper auger portion, a lower auger
portion, a discharge portion, and a compound angle joint. When
in an operating position, the upper auger portion and the lower
auger portion are offset from each other by an operating offset
angle. When in a transport position, the upper auger portion is
offset from each other by a transport offset angle.
Id. [0005].
The operating angle is illustrated as follows in Figure 4:

Figure 4 is a side photographic view of an extended auger
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We are told by Patent Owner that the “hinge structure claimed in the
’343 Patent clearly covers the hinge structure of Petitioner’s grain carts
disclosed in Petitioner’s Provisional Patent Application Serial Nos.
61/152,251 (“the ’251 Application”; Ex. 2008)” Req. Reh’g 3.
This conclusory statement presumes that the Board should have
undertaken to make a comparison on an element-by-element basis in its final
written decision when the Patent Owner did not undertake such an analysis
in its Response. The principal recitation of this analysis in the Response was
contained in a footnote on page 47 which stated:
5 Although Petitioner’s provisional applications described a
hinge assembly having a slightly different structure than the
hinge assembly described in the ’343 Patent, the overall design
of a single auger, front folding grain cart, in which the upper
auger conveyor section folded diagonally downwardly across
the front of the container was the same. See, e.g., Ex. 2008, Fig.
2(a); U.S. Patent Application Publication No. 2010/0209223,
Ex. 2010, claim 1 ((claiming priority to U.S. Provisional
Application Nos. 61/152,521 and 61/228,284); see also Ex.
2006, ¶111.

Paper 17 p. 47.
Patent owner now provides additional pages of analysis in the
Request, pages 3–8. We cannot be said to have overlooked that which was
not before us. It is, therefore, not without foundation for the Decision to
have stated that “[w]e are not provided with any persuasive explanation
about how the hinge would fall within the claimed subject matter.” Dec. 35.
Despite this, we exercise our discretion to treat the issues now more
expansively briefed and raised by Patent Owner.
Even assuming arguendo that the subject matter of Provisional Patent
Application 61/152,251 falls within the scope of the ’343 Patent, the
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existence of the offset operating angle noted above and illustrated in Figure
4 is not adequately addressed in the Response or the Request for Rehearing.
Patent Owner asserts that in 2010 “Petitioner thought its ‘invention’ to
be patentable.” Req. Reh’g fn 1. But we are not shown it is the same
“invention” as that claimed in the ’343 Patent. It may be that the Petitioner
sought to protect a distinct species of offset hinges, where the operating
angle is offset. That it would fall within the scope of the ’343 Patent would
not necessarily compel patentability of the generic claims.
Exhibit 2009 is Provisional Application 61/228,284, filed July 24,
2009. It likewise recites the same offset angle as does the ’251 Application.
“When in the operating position, the upper auger assembly portion can be
offset from the lower auger assembly portion by an operating offset angle.”
Ex. 2009 [0005]. It further describes a particular type of joint and bearing:
When connected, the lower auger coupling functions to
transfer rotational energy to the upper auger coupling. A
U-joint connects the lower auger coupling to a lower
auger axis in such a way as to allow an angle between the
lower auger coupling and the lower auger axis. A bearing
hanger keeps the lower coupling at a constant angle
relative to the lower auger axis.

Id. [0008].
Again, even assuming that the underlying joint falls within the scope
of the ’343 Patent, the filing of a Provisional Application which contains
potentially patentably distinct material, and whose independent claims 1 and
20 recite that material, does not weigh heavily towards patentability. Ex.
2009 p. 15, 20.
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Exhibit 2010 is a nonprovisional Application 12/700,372 filed
February 4, 2010. We reproduce Figure 5 of that application below:

Figure 5 is a side view of an extended auger assembly
This application does contain claims which lack a positive recitation
of the offset operating angle and do closely track the ’343 Patent claims.
See, e.g, claim 1. Ex. 2010 p. 15–16. The question then presented by this
fact is what weight to give to a separately prosecuted application of
Petitioner with similar claims which application was ultimately abandoned
in favor of continuing applications without that same claim scope?
We give this fact slight weight on the patentability side. The fact that
a set of inventors in conjunction with their patent attorney may have
believed the broader claims to be patentable to them at one point in time is
of some, but frankly little, moment.
Patent Owner makes the assertion that “Petitioner undoubtedly would
have continued to argue to the United States Patent and Trademark Office
during prosecution that claim 1 of the ’223 Publication was novel and not
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obvious.” Req. Reh’g. 8–9. Perhaps, but as the ’223 Publication was
abandoned, this assertion is speculation of counsel.
D. Petitioner’s Grain Carts and Nexus (2, 3, 4)
Petitioner’s advertising materials contained the statement, “All X-
TREME grain carts feature a patent-pending auger that allows the upper
portion to store diagonally along the front of the cart for extreme auger
reach.” Req. Reh’g 3–4. Because of this statement, Patent Owner concludes
that “Petitioner’s Patent Applications cover the commercial embodiments of
Petitioner’s X-TREME grain carts.” Id.
Patent Owner then conducts an analysis of the Petitioner’s
Applications and concludes that each of the independent claims of the ’343
Patent clearly read on the hinge design of the grain carts disclosed in
Petitioner’s Patent Applications. Id. 7. As noted above, Patent Owner’s
analysis was not previously presented, and thus, we could not have
overlooked or misapprehended this analysis.
The flaw in this reasoning is that the Patent Owner never actually
compares the Unverforth grain carts in Exhibits 2010–2013 to the claims of
the ’343 Patent. The critical paragraph in Patent Owner’s Request for
Rehearing is reproduced below:
Although the hinge structure of the embodiments shown in the
’343 Patent is “slightly different” (specifically with respect to
the hinge plates) than the hinge structure of Petitioner’s X-
TREME grain carts, the relevant inquiry is whether the claims
of the ’343 Patent cover the hinge structure of Petitioner’s X-
TREME grain carts. E.g., Demaco Corp v. F. Von Langsdorff
Licensing, Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988). As
established above, the claims of the ’343 Patent clearly cover
the hinge structure of Petitioner’s X-TREME grain carts. As
such, the requisite nexus exists between the evidence offered
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regarding Petitioner’s efforts to develop its own extended reach
grain carts and the claims of the ‘343 Patent.

Req. Reh’g 7.
We agree that part of the relevant inquiry is whether the grain carts
fall within the claims of the ’343 Patent. And we have diligently looked
through the briefs and record for a comparison of the grain carts with the
elements of the ’343 Patent claims.
But we are unable to find a convincing comparison which does not
rely solely upon the three abandoned applications as the foundation of the
comparison. The grain carts do not ipso facto fall within the ’343 Patent
claims because Petitioner’s advertising of the grain carts stated “patent
pending.” Further, Patent Owner does not identify where the comparison
was presented in the record, and we, therefore, could not have
misapprehended or overlooked something not adequately explained
previously.
Patent Owner’s strongest point, in our view, is the specific argument
which states:
Petitioner’s own advertising emphasizes that the ability to
achieve “extreme reach” is specifically related to the diagonal
fold feature. Exs. 2011-2013 (“All X-TREME grain carts
feature a patent-pending auger that allows the upper portion to
store diagonally along the front of the cart for extreme auger
reach.”). Therefore, the feature for which there was a long-felt
need was a result of the diagonal fold of the upper auger
conveyor section of Petitioner’s X-TREME grain carts; these
advertising materials do not credit this feature to the laterally
angled upper auger section or the U-joint coupling.

Req. Reh’g 9–10 (footnote omitted).
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We agree with the Patent Owner that the diagonal front storing of the
upper auger is highlighted in the advertising. However, the diagonal front
fold feature was undoubtedly in the prior art as evidenced by Ex. 1004. See
Dec. 29. This somewhat diminishes the weight of this evidence.
E. Long Felt Need (5)
A long-standing standard for giving weight to this type of evidence is
precisely articulated in In re Allen, 324 F.2d 993, 997 (CCPA 1963) (while
appellant’s arguments imply that there may be been an unsolved problem in
the art, an allegation to this effect is not evidence of unobviousness unless it
is shown, as was not done here, that the widespread efforts of skilled
workers having knowledge of the prior art had failed to find a solution to
the problem (citing Toledo Pressed Steel Co. v. Standard Parts, Inc.,
307 U.S. 350, 356 (1939) (it does not appear that those trying to solve the
problem were familiar with the relevant prior art)).
Patent Owner asserts that “the Board should have given weight to the
evidence of long-felt need based upon Petitioner’s efforts to develop and
patent its own extended reach grain carts.” Req. Reh’g 11.
More specifically, Patent Owner contends that Petitioner’s advertising
materials acknowledge the long-felt need for a single, corner-auger front-
fold design with the greatest, forward, outward and upward reach.
Petitioner’s advertisements are said to state: “Since the first Unverferth
corner-auger grain cart introduction in 1988, we’ve been stretching our
imaginations to develop a single, corner-auger front-fold design with the
greatest, forward, outward and upward reach.” Req. Reh’g. 11, citing Ex.
2011 at 2; Ex. 2012 at 2; Ex. 2013; Ex. 2014.
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Patent Owner is of the view that this advertising of Petitioner
acknowledges that there was a long-felt need—of approximately 20 years—
for the present invention, having the advantages that its X-TREME grain
carts provide the “[g]reatest outward, upward and forward reach of any
front-folding grain cart” (Ex. 2011), and that they have “more outward,
upward and forward reach than any other front-folding single auger grain
cart!” with an “auger design that allows the upper portion to store diagonally
along the front of the cart for extreme auger reach.” Req. Reh’g 11, citing
Ex. 2015.
Accordingly, Patent Owner concludes that despite Petitioner’s
knowledge since 1988 of the need for a single auger, front folding grain cart
with maximized reach, it took approximately 20 years for the Petitioner to
develop its product. Req. Reh’g 11–12. The Patent Owner also observes
that the Board’s failure to address the existing diagonal folding dual auger
carts from 1986 demonstrates that the Board failed to ascribe adequate
weight to the Patent Owner’s evidence of long-felt need. Id.
In assessing the relevant evidence, we note that while the Petitioner’s
advertising contains some advertising rhetoric and hyperbole, Patent Owner
is correct that it does pertain to a front-fold grain cart with extended reach.
We also accept the evidence that there were companies working on
improving the grain cart, as evidenced by both the Petitioner’s and Patent
Owner’s patent applications and efforts testified to by Patent Owner’s
witness Smith in his Declaration (Ex. 2006, ¶¶ 110, 115–120). We give this
evidence some weight of motivation to improve the grain cart, and need for
an improved grain cart, even absent a detailed comparison with the elements
of the claimed subject matter showing nexus.
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However, when compared against the evidence of record, including
the known front-fold grain cart (Ex. 1004), and the offset hinge (Ex. 1003)
used in the grain cart in a side-fold manner (Ex. 1007), we remain of the
opinion that all of the evidence of record establishes the obviousness of the
claimed subject matter.
Accordingly, while we have reheard the case on the issues raised by
the Patent Owner, we decline to modify our decision other than to add this
additional analysis addressing the Patent Owner’s expanded analysis of the
evidence of secondary considerations.

II. ORDER
It is ORDERED that:
The Request for Rehearing is GRANTED in that we have carefully
reconsidered the decision, but DENIED in all other respects.
This is a final decision. 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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PETITIONER:
Joseph A. Hynds
Jason Shapiro
ROTHWELL, FIGG, ERNST & MANBECK
jhynds@rothwellfigg.com
jshapiro@rothwellfigg.com

PATENT OWNER:
J. Robert Chambers
Lisa M. A. Nolan
WOOD, HERRON & EVANS, LLP
bchambers@whe-law.com
lnolan@whe-law.com