Paper Entered: March 17, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD

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1 Paper Entered: March 17, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD PRIDE SOLUTIONS, LLC, Petitioner, v. NOT DEAD YET MANUFACTURING, INC., Patent Owner. Before JENNIFER S. BISK, RAMA G. ELLURU, and GREGG I. ANDERSON, Administrative Patent Judges. ANDERSON, Administrative Patent Judge. DECISION Denying Institution of Inter Partes Review 37 C.F.R

2 I. INTRODUCTION On September 26, 2013, Pride Solutions LLC ( Petitioner ) filed a petition requesting an inter partes review of claims 1 and 2 of U.S. Patent No. 8,418,432 B2 (Ex. 1001, the 432 Patent ). Paper 1 ( Pet. ). The patent owner, Not Dead Yet Manufacturing, Inc. ( Patent Owner ), filed a preliminary response. Paper 11 ( Prelim. Resp. ). We have jurisdiction under 35 U.S.C The standard for instituting an inter partes review is set forth in 35 U.S.C. 314(a), which provides as follows: THRESHOLD The Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition. For the reasons that follow, the Board declines to institute an inter partes review of claims 1 and 2 of the 432 Patent. A. Related Proceedings The 432 Patent is asserted in the following district court case: Not Dead Yet Mfg., Inc. d/b/a NDY MFG, Inc. v. Pride Solutions, LLC, No. 1:13- cv (N.D. Ill.). Pet. 7. B. The 432 Patent The 432 Patent describes a quick connect/disconnect for a stalk stomper. A stalk stomper is an agricultural tool attached to a combine or tractor. Ex. 1001, 1:6-10. The stalk stomper travels over stubble from harvested crops, forcing stubble left after harvest to the ground, reducing the likelihood that stubble punctures the tires of the combine or tractor. Id. at 1:

3 Figure 6 of the 432 Patent is reproduced below. Figure 6 is a perspective view of tool bar assembly 12 attached to a combine (not shown) and stalk stomper assembly 10. In the embodiment shown, the stalk stomper assembly is not connected to the tool bar assembly. Ex. 1001, 3:3-5. The stock stomper assembly includes plate member 26 having cross bar 29 formed at one end. Ex. 1001, 3: Retention means in the form of stop 27 are provided on the bottom surface of the plate member. Id. at 4:2-4. The tool bar assembly includes tool bar 40 and bracket 42. Ex. 1001, 3: The bracket includes spaced-apart arms 24 having recesses 46 formed therein. Id. at 3:28-30; 3: Recesses 46 are in front of holes 48 formed in the arms of the bracket. Id. at 3: Both the recesses and holes are transversely aligned. Id. at 3:67 4:2. Pin 31 is provided for insertion into the holes. Id. at 4:4-5. To connect the stalk stomper to the bracket, cross bar 29 engages recesses 46, defining a pivot point. Ex. 1001, 4: Plate member 26 3

4 pivots about the pivot point, mating to the bracket at a position where the plate is above the holes. Id. at 4: Pin 31 is inserted in the holes, connecting the stock stomper assembly to the tool bar assembly. Id. The inserted pin engages stop 27 (L-shaped bracket in Figure 6), preventing the cross bar from disengaging from the recesses or any longitudinal movement that would disconnect the stock stomper assembly from the tool bar assembly. Id. at 4: C. Exemplary Claims Claims 1 and 2, the only challenged claims, are reproduced below: 1. A quick connect/disconnect coupling for securing a stalk stomper to a tool bar assembly on a combine corn head without the need for tools, the tool bar assembly comprising a bracket having a pair of spaced-apart arm members depending therefrom, each having a recess therein, the recesses being generally transversely aligned, and a pair of holes in the bracket spaced from the recesses, and a pair of holes in the bracket spaced from the recesses, the pair of holes being generally transversely aligned, and a pin adapted to be received in the holes, the stalk stomper being provided with a plate member having a cross bar adapted to be received in the recesses in the depending arm members on the tool bar assembly and a retention means on the plate member, whereby, to connect the stalk stomper to the tool bar assembly, the cross bar is engaged in the recesses and the stalk stomper is pivoted so that the plate member is above the pair of holes and the pin can be inserted into the transversely aligned holes to connect the stalk stomper to the tool bar assembly, the pin engaging the retention means so as to prevent longitudinal movement of the stalk stomper with respect to the tool bar assembly in operation to prevent the cross bar from disengaging from the recesses in use, and to disconnect the stalk stomper from the tool bar assembly, the pin is removed from the transversely aligned holes and the cross bar is removed from engagement with the recesses in the arm members. 2. A quick connect/disconnect coupling as in claim 1, wherein the pair of holes in the bracket are spaced rearwardly from the said recesses. 4

5 D. Prior Art Relied Upon Petitioner relies upon the following prior art references. Reference Title Date Exhibit Lankota Lankota, INC., LAN SS600C 2, Jun. 18, 2009 Ex Installation Instructions, Stalk Stomper Attachment for John Deere 600 Series Corn Heads Brown US 5,634,736 Jun. 3, 1997 Ex Montgomery US 3,874,533 Apr. 1, 1975 Ex Wolfe US 2,935,802 May 10, 1960 Ex Pierson US 7,658,058 B2 Feb. 9, 2010 Ex Fo US 2006/ A1 Nov. 2, 2006 Ex E. The Alleged Grounds of Unpatentability Petitioner alleges the following grounds of unpatentability. Claims Grounds References 1 and 2 103(a) Brown and Lankota 1 and 2 103(a) Lankota and Montgomery 1 and 2 103(a) Fo and Pierson 1 and 2 103(a) Wolfe and Admitted Prior Art ( APA ) 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 (b); 5

6 Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). Retention Means Petitioner argues the term retention means is not a proper meansplus-function element as permitted under 35 U.S.C. 112, 6. Pet. 19. Petitioner notes the specification and Figure 6 of the 432 Patent depict the retention means as an L-shaped bracket (27) attached to the bottom of the angled plate member 26. Id. at 20 (citing Ex. 1001, Fig. 6). Petitioner concludes retention means should be construed as a mechanism that retains something. Id. at 21. Patent Owner likewise does not argue that retention means should be interpreted based on a means-plus-function analysis under 112, 6. Rather, referring to the claim language, Patent Owner contends that the claimed pin engages the retention means to prevent longitudinal movement of the stalk stomper relative to the tool bar assembly to prevent the cross bar from disengaging from the recesses. Prelim. Resp. 13 (citing Ex. 1001, 5:6-10). Patent Owner proposes that retention means should be interpreted as a structure attached to or formed with the plate that engages a pin to preclude longitudinal movement of the stalk stomper relative to the bracket. Prelim. Resp. 14. We do not adopt either party s proposed construction of retention means. Contrary to both parties stated positions, we determine that retention means should be construed as a means-plus-function term under 112, 6, for the following reasons. Claim limitations that use the word means create a presumption that the limitation should be interpreted pursuant to 112, 6. Personalized 6

7 Media Commc ns v. Int l Trade Comm n, 161 F.3d 696, 703 (Fed. Cir. 1998). The presumption of means-plus-function treatment is rebutted where a claim recites a function, but then goes on to elaborate sufficient structure, material, or acts within the claim itself to perform entirely the recited function. Sage Prods., Inc. v. Devon Indus., Inc., 126 F.3d 1420, (Fed. Cir. 1997). Sufficient structure exists when the claim language specifies the exact structure that performs the functions in question without need to resort to other portions of the specification or extrinsic evidence for an adequate understanding of the structure. TriMed, Inc. v. Stryker Corp., 514 F.3d 1256, (Fed. Cir. 2008). Because the limitation retention means uses the term means, there is a presumption that the limitation should be interpreted pursuant to 112, 6. To determine whether that presumption is rebutted, we review the claim language to ascertain whether the claim recites function and also recites structure to perform entirely that function. See Sage Prods., 126 F.3d at Based on the record before us, we determine that the function required by retention means is retaining something. Petitioner acknowledges that retention means retain something. Pet. 20. Patent Owner also appears to agree, based on their proposed definition, that the retention means preclude longitudinal movement in other words, retaining. Prelim. Resp. 14. The specification further supports this interpretation. Specifically, the specification describes retention means as performing the function of retaining. The pin 31 will engage retention means on the plate member 26 for preventing the cross bar from disengaging from the recesses in use. Ex. 1001, 3:33-35 (emphasis added). In addition, later in the specification 7

8 appears the following: The pin 31 will engage the retention stop 27 to preclude longitudinal movement of the stalk stomper 10 with respect to the depending arms 24 to prevent the cross bar or transverse bar 29 from disengaging from the recesses 46 in use. Id. at 4: The whereby clause of claim 1 further specifies the function of retention means by stating the following: the pin engaging the retention means so as to prevent longitudinal movement of the stalk stomper with respect to the tool bar assembly in operation to prevent the cross bar from disengaging from the recesses in use... (emphasis added). See Tex. Instruments Inc. v. U.S. Int l Trade Comm n, 988 F.2d 1165, 1172 (Fed. Cir. 1993) (stating a whereby clause adds substance to the claim and does not merely state the result of the limitations in the claim when it specifies a function.). Accordingly, we determine that retention means requires the function of retaining something. The claim language, however, does not recite the structure for performing entirely the function of retaining. The claim recites that the retention means is on the plate member (emphasis added). Further, as recited in the whereby clause, a pin is described as engaging the retention means so as to prevent longitudinal movement of the stalk stomper with respect to the tool bar assembly in operation to prevent the cross bar from disengaging from the recesses in use (emphasis added). However, the claim language does not specify the exact structure of the retention means, as required to rebut the presumption. TriMed, 514 F.3d Thus, the presumption that retention means should be interpreted pursuant to 112, 6 is not rebutted. 8

9 Under a 112, 6, analysis, we must look to the specification to ascertain the structure that corresponds to retention means. The specification states: Provided on the angle plate member 26 are retention means 27, which may be a retention block or retention stop. Ex. 1001, 4:2-4. The structure described is shown in Figure 6 of the 432 Patent, reproduced above. Petitioner acknowledges Figure 6 of the 432 Patent depicts the retention means as an L-shaped bracket (27) attached to the bottom of the angled plate member 26. Pet. 20. We, therefore, determine retention means is a means-plus-function term that includes a retention block or a retention stop in the form of an L-shaped bracket. B. Obviousness over the Cited Prior Art As noted in the table above, Petitioner contends that claims 1 and 2 of the 432 Patent are obvious under 35 U.S.C. 103(a) over various combinations of the prior art references. Pet As detailed above, Petitioner alleges retention means should not be construed as a meansplus-function term under 112, 6. Petitioner, therefore, does not provide any evidence of how the prior art references should be applied if retention means is construed as a means-plus-function term. Nor is the evidence provided by Petitioner sufficient to show a reasonable likelihood that it will prevail on at least one of the challenged claims. Thus, for the reasons that follow, we deny institution on any of the grounds asserted. A structural analysis is required when means-plus-function limitations are at issue; a functional analysis alone will not suffice. Such a structural analysis is required whether a claim is asserted in an infringement action or alleged to be unpatentable based on the prior art. See In re Donaldson Co., 9

10 16 F.3d 1189, 1193 (Fed. Cir. 1994) (en banc) ( [W]e hold that paragraph six applies regardless of the context in which the interpretation of meansplus-function language arises, i.e., whether as part of a patentability determination in the PTO or as part of a validity or infringement determination in a court. ). The structural analysis must demonstrate that the corresponding structure or an equivalent structure is present in the prior art. Fresenius USA, Inc. v. Baxter Int l, Inc., 582 F.3d 1288, 1299 (Fed. Cir. 2009) (citing Donaldson, 16 F.3d at 1193). Petitioner must show in its petition that there is a reasonable likelihood that it would prevail with respect to at least 1 of the claims challenged in the petition. 35 U.S.C To this end, the petition must specify where each element of the claim is found in the prior art patents or printed publications relied upon, and it must include... a detailed explanation of the significance of the evidence including material facts. 37 C.F.R (b)(4), 42.22(a)(2); see 35 U.S.C. 312(a)(3). Petitioner does produce evidence on the retention means limitation in the four grounds of unpatentability asserted. Petitioner relies on the linkages of the activation device in Brown for the retention means limitation. Pet (citing Ex. 1004, Fig. 1). In Montgomery, Petitioner cites to two sets of lugs and pin 25 passing through openings 30 as retention means. Pet (citing Ex. 1005, Figs. 4-6; 2:58 3:5; 3:56-63). Petitioner alleges the claimed retention means is met in Fo s teaching of base 17, master pin 7, and fixing means 13. Pet (citing Ex. 1008, Figs. 7, 8, 10; 58). The last ground asserted relies on Wolfe and its teaching of two spring-loaded pins inserted into attachment apertures to attach a farm implement to a tractor. Pet (citing Ex. 1006, Figs. 2, 7; 4:13-15, 17-23). 10

11 Petitioner s evidence, however, is insufficient. None of the evidence submitted equates to a retention block or a retention stop in the form of an L- shaped bracket, as we have construed retention means. The structure encompassed by a 112, 6 limitation includes corresponding structure, material, or acts described in the specification and equivalents thereof. Petitioner, however, has not submitted evidence of interchangeability that might support equivalent structure. See Chiuminatta Concrete Concepts, Inc. v. Cardinal Indus., Inc., 145 F.3d 1303, 1309 (Fed. Cir. 1998) ( The question of known interchangeability is not whether both structures serve the same function, but whether it was known that one structure was an equivalent of another. ). Petitioner has not presented evidence, or argument, that the grounds alleged are shown in any of the prior art cited when retention means is properly construed as a means-plusfunction term. The record is, thus, devoid of evidence on the critical issue of equivalent structure. Accordingly, Petitioner has not made a sufficient showing that there is a reasonable likelihood that it would prevail with respect to claims 1 and 2 on the grounds that those claims are obvious over any of the cited prior art. III. CONCLUSION For the foregoing reasons, we determine that the information presented in the petition fails to establish a reasonable likelihood that Petitioner would prevail on showing the unpatentability of claims 1 and 2 of the 432 Patent. 11

12 Accordingly, it is ORDER ORDERED the petition challenging the patentability of claims 1 and 2 of the 432 Patent is denied. 12

13 For PETITIONER: Craige Thompson THOMPSON PATENT LAW OFFICES PC Tawfiq Ali ALI LAW PRACTICE LLC For PATENT OWNER: Joseph M. Kuo Anita M. Cepuritis OLSON & CEPURITIS, LTD. 13