Paper 7 Tel: Entered: February 3, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE

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1 Paper 7 Tel: Entered: February 3, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD ARCTIC CAT, INC., Petitioner, v. POLARIS INDUSTRIES, INC., Patent Owner. Case IPR Before KARL D. EASTHOM, PHILLIP J. KAUFFMAN, and MICHAEL W. KIM, Administrative Patent Judges. KAUFFMAN, Administrative Patent Judge. DECISION Institution of Inter Partes Review 37 C.F.R

2 I. INTRODUCTION Introduction Arctic Cat, Inc. ( Petitioner ) filed a Petition (Paper 2, Pet. ) requesting inter partes review of claims 24 36, 38, 41, 42, 45, 46, 88 97, and of U.S. Patent No. 8,827,028 B2 (Ex. 1002, the 028 patent ). 1 Pet. 1. Polaris Industries Inc. ( Patent Owner ) filed a Preliminary Response (Paper 6, Prelim. Resp. ) to the Petition. Upon consideration of the Petition and the Preliminary Response, for the reasons explained below, Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one of the challenged claims. We institute an inter partes review of claims 88, 90 97, and of the 028 patent. We do not institute a review of claims 24 36, 38, 41, 42, 45, 46, and 89. Related Proceedings The parties indicate that the 028 patent is at issue in Polaris Industries Inc., et al. v. Arctic Cat Inc., et al., No. 1:14-cv-3412 (D. Minn. 2014). Pet. 1; Paper 5, 2. The 028 patent is the also subject of another Petition by this Petitioner (inter partes review ). Pet. 1; Paper 5, 2. 1 The Petition states at one point that claim 37 is challenged, but no ground of unpatentability is asserted against claim 37. See Pet 2 (including claim 37), 28 (addressing claims 36 and 38). 2

3 The 028 Patent The 028 patent relates to trail compliant side-by-side all terrain vehicles (ATVs). Ex. 1002, 1:5 8. As background, the 028 patent describes that recreational interest in ATVs has increased. Id. at 1: In particular, ATVs in which the driver and passenger are seated beside each other on laterally spaced apart seats, so called side-by-side ATVs, have grown in popularity because such seating permits the passenger to share the driver s viewpoint and riding experience. Id. at 1: Most side-by-side ATVs are at least 54 inches wide, and consequently their use on most state and national park trials is unacceptable or impractical because those parks have an established maximum ATV width of about 50 inches. Id. at 1: The 028 patent describes an ATV embodiment having an overall width C of about 50 inches. Id. at 4:32 43, Figs. 3, 4. The 028 patent describes that other embodiments may be constructed to other suitable widths, however the present invention contemplates ATVs having a trail compliant width or [sic] less than about 54 inches. Id. at 4: An illustrative embodiment of side-by-side ATV 10 includes the following: frame 15, a pair of laterally spaced-apart seating surfaces, an engine (modular engine assembly 34) coupled to transmission 136, a pair of front wheels (front tires 22a and wheels 24a), and a pair of rear wheels (rear tires 22b and wheels 24b). Id. at 3:45 56; 6:5 8, Figs. 1, 2, 9, 15. Figure 1 follows. 3

4 Figure 1 is a perspective view of an embodiment of a side-by-side ATV. Id. at 2: Evidence and Asserted Grounds of Unpatentability Petitioner asserts that the challenged claims are unpatentable under 35 U.S.C. 103(a) on the following grounds (Pet. 2 3): Claims Challenged References(s) 24 33, 35, 36, 38, 41, 42, 45, 46 Nechushtan 2 and Furuhashi 3 34 Nechushtan, Furuhashi, and Kraus 4 88, 89, 94, 97, 99 Nechushtan and Hill 5 90, 93, 95 Nechushtan, Hill, and Furuhashi 91, 92 Nechushtan, Hill, and Hart 6 96 Nechushtan, Hill, and Nash 7 98, 100 Nechushtan, Hill, and Fujimori Nechushtan, Hill, and Kraus 2 U.S. Patent No. 5,954,364 issued Sept. 21, 1999 (Ex. 1008). 3 U.S. Patent No. 5,327,989 issued July 12, 1994 (Ex. 1009). 4 U.S. Patent No. 4,693,134 issued Sept. 15, 1987 (Ex. 1012). 5 U.S. Patent No. 3,407,893 issued Oct. 29, 1968 (Ex. 1010). 6 Hart s Hunter, Dirt Wheels Magazine, Dec (Ex.1004). 7 U.S. Patent Publication No. 2004/ published Oct. 7, 2004 (Ex. 1011). 8 U.S. Patent No. 7,270,336 issued Sept. 18, 2007 (Ex. 1013). 4

5 35 U.S.C. 325(d) Patent Owner contends that the Petition should be denied based on 35 U.S.C. 325(d) because Nechushtan is cumulative of Enokimoto and Hypes, which were lead references during prosecution. Prelim. Resp. 9 (citing the Office Actions provided at Exhibits 2006 and 2007). None of the combinations asserted in prosecution are the same as the combinations presented here. See Ex. 2006, 2 11; Ex. 2007, Consequently, both the prior art and arguments presented here differ from those previously considered, and we decline to exercise our discretion to deny this Petition based on 35 U.S.C. 325(d). 9 We refer to the native page numbers of these Exhibits. 5

6 Illustrative Claims II. CLAIMED SUBJECT MATTER Of the challenged claims, 24 and 88 are independent, and are reproduced below: 24. An all-terrain vehicle including: a frame, comprising a front frame portion, a mid frame portion and a rear frame portion; a pair of laterally spaced-apart seating surfaces supported by the mid frame portion; an engine supported by the rear frame portion and the engine being positioned longitudinally behind the pair of laterally spaced-apart seating surfaces; a transmission coupled to the engine; a pair of front wheels operably coupled to the front frame portion, and drivingly coupled to the transmission; a pair of rear wheels operably coupled to the rear frame portion and drivingly coupled to the transmission; and a rear axle assembly supported by the rear frame portion to drivingly couple the rear wheels; the rear frame portion supporting the engine, transmission, and rear axle assembly, rearward of the laterally spaced-apart seating surfaces, the rear frame portion comprising a lower rear frame portion and an upper rear frame portion, the lower rear frame portion at least partially extending under the engine, transmission and rear axle assembly, and the upper rear frame portion at least partially extending over the engine, transmission and rear axle assembly, the upper rear frame portion including an outer portion and a removable inner portion, the inner portion being removably coupled to the outer portion. 6

7 88. An all-terrain vehicle including: a frame, comprising a front frame portion, a mid frame portion, and a rear frame portion; an engine supported by the rear frame portion; a transmission coupled to the engine; a pair of front wheels operably coupled to the front frame portion, and driven by the transmission; a pair of rear wheels operably coupled to the rear frame portion, and driven by the transmission; a pair of laterally spaced-apart seating surfaces supported by the mid frame portion; the engine being positioned longitudinally behind the pair of laterally spaced-apart seating surfaces; a utility bed positioned over the engine and rearward of the pair of laterally spaced-apart seating surfaces; the rear frame portion comprising a lower rear frame portion and an upper rear frame portion, the upper rear frame portion supporting the utility bed and the lower rear frame portion supporting at least one of the engine and transmission rearward of the pair of laterally spaced-apart seating surfaces; a front axle assembly supported by the front frame portion and a front drive shaft coupling the transmission to the front axle assembly to drive the front wheels, the front drive shaft extending longitudinally while remaining laterally intermediate innermost sides of the laterally spaced apart seating surfaces; a rear axle assembly supported by the rear frame portion and coupled to the transmission to drive the rear wheels; and a passenger compartment intermediate the front and rear wheels, comprising a front panel, a floorboard rearward of the front panel, a base portion positioned under the seating surfaces 7

8 and a protective panel positioned rearward of the seating surfaces and forward of the engine. Claims 25 38, 41, 42, 45, and 46 depend, directly or indirectly, from independent claim 24. Claims and depend, directly or indirectly, from independent claim 88. Claim Interpretation 10 The Board interprets claims of an unexpired patent using the broadest reasonable construction. See 37 C.F.R (b); Office Patent Trial Practice Guide, 77 Fed. Reg , (Aug. 14, 2012); see also In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, (Fed. Cir. 2015), cert. granted, Cuozzo Speed Techs. LLC v. Lee, 84 U.S.L.W (U.S. 2016). Based upon the record to this point in the proceeding, we provide the following preliminary claim constructions. 1. FRONT, MID, AND REAR FRAME PORTIONS Independent claim 88 requires the frame to have a front, mid, and rear portion. Petitioner contends that Patent Owner has previously maintained that the claimed frame portions (i.e., front, mid and rear) mean, the three portions of the frame, the mid frame portion supporting the seating area, the front frame portion being in front of the mid frame portion, and the rear frame portion being behind the mid frame portion. Pet. 3 4 (citing Ex. 10 Petitioner construes vertical member as recited in claim 27; however, we need not construe this term as we address claim 27 on another basis. See Pet. 4. 8

9 1003, Ex. A, 1 2). 11 Our review of those Exhibits, however, indicates that Patent Owner actually asserted that the front, mid, and rear frame portions should be given their plain and ordinary meaning, and the quote identified by Petitioner is Patent Owner s alternative construction. See Ex. 1003, Ex. A, 4. Patent Owner s Preliminary Response does not provide an explicit construction of these claim terms. After reviewing the record, we determine that these terms should be given their plain and ordinary meaning. 2. PASSENGER COMPARTMENT Claim 88 requires a passenger compartment comprising: a front panel, a floorboard, a base portion, and a protective panel. The floorboard is positioned rearward of the front panel, and the base portion is positioned under the seating surfaces. Petitioner does not provide an explicit construction of this limitation. See Pet Patent Owner does not provide an explicit construction, but presents an argument that implies a claim interpretation. See Prelim. Resp Specifically, Patent Owner argues that Nechushtan discloses a single, flat horizontal panel, which cannot be a floorboard and a base portion as claimed because these claim elements must be distinct. Id. (citing Ex. 11 Patent Owner s claim construction is found at pages 4 5 of Exhibit A, not pages 1 2. Petitioner s quote of Patent Owner s claim construction is inaccurate in that Petitioner quotes the material as a single sentence when the material actually was punctuated as three sentences. The quote is otherwise correct. Compare Pet. 4, with Ex. 1003, Ex. A, 4. Petitioner s listing of Patent Owner s support for the claim construction is inaccurate. Compare Pet. 4, with Ex. 1003, Ex. A, 4. 9

10 1002, 4:48 51, Fig. 5). The implication is that claim 88 requires the floorboard and the base portion to be distinct. For the reasons that follow, we disagree. The Specification describes that ATV 10 can include base 41 coupled to lower seating surfaces 20, and below base 41, foot well area 40 comprised of floorboard 42 and side panels 46. Ex. 1002, 4:47 52, Fig. 5. This description is not a lexicographical definition of either floorboard or base portion. Rather, this description is simply an example. Claim 88 is broader than this example; for instance, claim 88 does not require that the floorboard be below base 41 or include side panels 46. Consequently, this example from the Specification is not imported into claim 88. See, e.g., E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003); Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). Contrary to Patent Owner s argument, under the broadest reasonable construction, nothing in claim 88 requires that the floorboard and base portion are distinct elements. 3. SEATING SURFACES AND FRONT DRIVE SHAFT Claim 88 requires a pair of laterally spaced apart seating surfaces, and a front drive shaft that extends longitudinally while remaining intermediate the inner most side of the laterally spaced apart seating surfaces. The 028 patent depicts, in plan view, lower seating surfaces 20a, 20b as spaced apart along a line orthogonal to the longitudinal axis 66. Ex. 1001, 2:18 19, 30 31, Figs. 4, 9. The Specification describes the direction orthogonal to the longitudinal centerline as lateral. Id. at 4:67 5:3 (referring to guard 50 preventing lateral movement of a passenger), Fig

11 Consequently, claim 88 requires the seating surfaces to be laterally spaced apart in that, in plan view, there is some distance between the seating surfaces along a line orthogonal to the longitudinal axis of the vehicle. The Specification does not provide a lexicographical definition of the claim phrase inner most side, or any of the terms in that phrase. Inner and outer, in light of the Specification, are relative terms describing the position of an element with respect to the centerline of the vehicle. See, e.g., id. at 5:63 6:1, Fig. 14 ( inner rails 72 are depicted closer to the longitudinal centerline of the vehicle than outer tubes 70); see also id. at 5:24 26, Fig. 9 (describing that longitudinal axis 66 defines the longitudinal centerline of ATV 10). Side can have two meanings: a surface or part of a surface. 12 Considering side as the surface of each seating surface, then inner most side would mean the side, among a plurality of sides, that is closest to the vehicle centerline. Such interpretation is unreasonable because each seating surface has only one inner side (as opposed to a plurality of inner sides). Considering side as a part of a surface, then the inner most side of each seating surface is the part of the seating surface closest to the vehicle centerline. Then, in the full context of the claim, the front drive shaft must remain intermediate the inner most side of the seating surfaces, in that the shaft is intermediate the part of each seating surface closest to the centerline of the vehicle. In parity with this interpretation, the Specification describes that front drive shaft 146 extends outward from transmission 136 towards 12 See Exhibit 3003, page 3, WEBSTER S NEW UNIVERSAL UNABRIDGED DICTIONARY (Deluxe 2d ed. 1983) ( side, n., def. 5). 11

12 the front of ATV 10, and front drive shaft 146 is depicted intermediate the part of seating surfaces 20a and 20b closest to the centerline. Ex. 1001, 7:40 42, Figs. 9 (front driveshaft not labeled), 19. An annotated version of Figure 9 of the 028 patent follows. Annotated Figure 9 is a bottom plan view of ATV 10 with a line added to indicate the point that the front drive shaft extends longitudinally intermediate of the part of seating surfaces 20a, 20b closest to the centerline of ATV 10. Id. at 2:12 13, Claim 88 requires a pair of seating surfaces some distance apart along a line orthogonal to the longitudinal axis of the vehicle, and requires that the 12

13 front drive shaft remain intermediate of the part of each of the seating surfaces closest to the vehicle centerline. 13 III. PATENTABILITY 14 Obviousness over Nechushtan and Furuhashi Petitioner contends that claims 24 33, 35, 36, 38, 41, 42, 45, and 46 are unpatentable under 35 U.S.C. 103(a) over Nechushtan and Furuhashi. Independent claim 24 is directed to an all-terrain vehicle that includes a frame having an upper rear frame portion comprised of an inner portion removably coupled to an outer portion. Regarding this limitation, Petitioner contends that Nechushtan discloses an inner portion of the upper rear frame portion that is removably coupled, via flanges, to an outer portion of the upper rear frame portion. Pet In support of this contention, Petitioner provides two annotated versions of Nechushtan s Figure 2, which are reproduced below. 13 These requirements are from a plan view perspective. 14 We note that Patent Owner makes some general comments regarding secondary considerations (e.g., market success and industry acclaim). See Prelim. Resp Considerations of secondary concerns is premature at this point of the proceedings. We expect that these issues will be developed further and considered when appropriate. 13

14 14

15 The top version of Figure 2 is a plan view of Nechushtan s space frame with annotations identifying the allegedly corresponding elements of the limitation at issue. See Pet. 21; Ex. 1008, 2:40 41; Fig. 2. The bottom version of Figure 2 is an enlarged view of the rear frame area rotated 90 degrees and having annotations identifying the alleged flanges. Id. Patent Owner contends that Petitioner has not demonstrated adequately the obviousness of this aspect of claim 24. Prelim. Resp For the reasons that follow, we agree. Petitioner has not established adequately that the elements of Nechushtan identified are flanges. Petitioner only cites to Figure 2 of Nechushtan and does not identify any portion of Nechushtan that describes those elements as flanges. See Pet As Patent Owner correctly points out, Nechushtan does not describe the identified elements as flanges. See Prelim. Resp. 17; Ex In the absence of a supporting description in the reference, Petitioner should have explained adequately why the elements identified correspond to flanges as claimed. See 37 C.F.R , 42.22, (b)(4) (5) (it is Petitioner s burden to identify specific portions of the evidence that support the challenge and to explain the relevance of that evidence). Petitioner has failed to do so. For example, Petitioner could have, but does not, explain that the elements identified are flanges because they are depicted with a 15

16 circumference greater than the tube that they surround. See Ex. 1008, Fig Rather, Petitioner concludes, without a supporting explanation, that these elements identified are flanges. See Pet. 21 (citing Ex. 1008, Fig. 2; Ex ). Likewise, the Davis Declaration presents the conclusion that the elements identified are flanges without a supporting explanation. Ex (providing the same annotated version of Nechushtan s Figure 2 found in the Petition). Even if the identified elements are flanges, Petitioner has not explained sufficiently how such flanges removably couple the inner portion of the upper rear frame portion to the outer portion. See Pet. 21 (citing Ex , 92). The cited portion of the Davis Declaration simply echoes the Petition, presenting the conclusion that a person of ordinary skill would understand such flanges permit removal of the inner frame portion from the outer frame portion, but not explaining why this is the case, nor providing the underlying facts or data for such a conclusion. See Ex ; see also 37 C.F.R (a) (expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight). As Patent Owner correctly points out, flanges may be welded rather than removably attached. Prelim. Resp. 18. Further, flanges have purposes other than facilitating attachment, such as strengthening. See Ex Flange: a projecting flat rim, collar or rib used to strengthen an object, to guide it, to keep it in place, to facilitate attachment to another object or for other purposes. Oxford English Dictionary, n. def. 2, Ex

17 In sum, Petitioner has not established persuasively that the elements identified are flanges, nor established persuasively that if these elements are flanges, they removably couple the associated frame portions. Alternatively, Petitioner concludes a person of ordinary skill in the art would have modified Nechushtan s inner frame portion to be removably coupled to the outer frame portion in order to facilitate removal of the engine. Pet This argument is based on several underlying contentions regarding the reference. Specifically, Petitioner contends that Nechushtan teaches that frame portions can be affixed in a variety of ways, to include removable ways, such as tube stubs or pins. Id. at 22. Further, Petitioner contends that Nechushtan teaches a variety of frame configurations. Id. We analyze these contentions in turn. Regarding tube stubs, Petitioner identifies a disclosure that left and right rear tubes 57a and 57b extend upwardly from pipe support 55 at points generally adjacent to tube stubs 52. See Pet. 22 (citing Ex. 1008, 3:34 35, Fig. 2). We are unpersuaded, however, that this disclosure conveys that tube stubs 52 make any portion of Nechushtan s frame 10 removable. Elsewhere, Nechushtan describes that rearward diagonal tubes 65 are connected to rear tube 45, and tube stubs 52 are depicted around rear tube 45 at that intersection. Id. at 3:58 63, Fig 2. Neither this disclosure, nor any other disclosure in Nechushtan, discribes or suggests that tube stubs 52 removably couple frame portions. Regarding pins, Petitioner identifies a disclosure in Nechushtan that front roll bar 122 may be pivoted from the position shown in Figure 1 to a raised position secured by removable left upper and lower pins 125a and 126a. Pet. 22 (citing Ex. 1008, 5:48 55). As Patent Owner correctly 17

18 observes, this disclosure conveys that front roll bar 122 is pivotable, not that this portion of the frame is removably coupled. 16 See Prelim. Resp. 18. The Davis Declaration states that Nechushtan discloses a variety of ways to affix frame portions to include welding, pins, and tube stubs. See Ex (cited at Pet. 22). Petitioner has not explained adequately how welding as disclosed by Nechushtan corresponds to removably coupling as claimed. Additionally, as explained above, Nechushtan s disclosures regarding pins and tube stubs do not suggest removable coupling. Consequently, Dr. Davis s opinion is not persuasive because it is based on mischaracterizations of Nechushtan. Petitioner s contention that Nechushtan discloses a variety of frame configurations is also not persuasive. See Pet. 22 (citing Ex ). Even accepting as true that the reference discloses a variety of frame configurations does not explain sufficiently how a person of ordinary skill in the art would have been led to modify the inner portion of Nechushtan s upper rear frame portion to be removably coupled to the outer portion. Petitioner s mischaracterizations of Nechushtan discussed above also undermine Petitioner s rationale for the modification of Nechushtan. See Pet Specifically, Petitioner contends that Nechushtan provides a suggestion for using removably coupled frame portions, but as detailed above, Nechushtan contains no such suggestion, and for that reason, Petitioner s rationale lacks a factual underpinning. See KSR Int l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) ( [R]ejections on obviousness 16 Petitioner s citations to Ex. 1008, 2:59 60 and 6:59 66 (see Pet. 22) also do not provide support for Petitioner s contentions. 18

19 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. ) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Accordingly, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing in establishing that claim 24 is unpatentable under 35 U.S.C. 103(a) over Nechushtan and Furuhashi. Claims 25 33, 35, 36, 38, 41, 42, 45, 46 depend from claim 24, and consequently Petitioner has failed to demonstrated a reasonable likelihood of prevailing in establishing that these claims are unpatentable. Obviousness over Nechushtan, Furuhashi, and Kraus Petitioner contends that claim 34 is unpatentable under 35 U.S.C. 103(a) over Nechushtan, Furuhashi, and Kraus. Pet Claim 34 depends from claim 24. Petitioner relies on Kraus for the limitation added by claim 34 and not to correct the deficiencies of the Nechushtan and Furuhashi combination discussed above. Consequently, this ground of unpatentability is deficient for the reasons discussed in the analysis of independent claim 24 above. See Prelim. Resp (arguing for claim 34 based upon dependency from claim 24). Obviousness over Nechushtan and Hill Petitioner contends that claims 88, 89, 94, 97, and 99 are unpatentable under 35 U.S.C. 103(a) over Nechushtan and Hill. Pet

20 1. CLAIM 88 Petitioner specifically alleges where each element of claim 88 is found in the prior art, with citations by exhibit number to the specific portion of the evidence that supports the challenge, and cites to appropriate portions of the Declaration of Dr. Gregory W. Davis (Ex. 1001, the Davis Declaration ). Pet For example, Petitioner provides an annotated version of Nechushtan s Figure 2, identifying basket portion 152 as corresponding to an engine supported by the rear frame portion as claimed. Id. at 37 (citing Ex. 1008, 6:43 47, Fig. 2; Ex , 146). Petitioner also explains why a person of ordinary skill in the art would have made the proposed modifications. See Pet In particular, Petitioner contends that Hill discloses a front drive shaft (drive shaft in the form of propeller shaft 15) between side-by-side seats, and provides an annotated version of Hill s Figure 2 as shown below. 17 Petitioner s annotated version of Hill s Figure 2 is a plan view of Hill s racing vehicle shown in Figure 1. Pet ; Ex. 1010, 2:44 47, Fig. 1. In this Figure, Petitioner identifies the lower seat surfaces as corresponding to the claimed seating surfaces. 18 Hill s front driveshaft 17 Parenthetical is Hill s nomenclature. 18 Petitioner uses arrows to identify the Hill s lower seat surfaces, but not the upper seat surfaces. 20

21 extends longitudinally intermediate of the part of the seating surfaces closest to the centerline of the vehicle as required by claim 88. a) UTILITY BED Claim 88 recites a utility bed positioned over the engine and rearward of the pair of laterally spaced-apart seating surfaces. Ex. 1002, 18: Regarding this limitation, Petitioner provides annotated versions of Nechushtan s Figures 1 and 2, which follow. The top figure is an annotated version of Figure 2, a plan view of Nechushtan s space frame, with the tubes identified as supporting the utility bed darkened in. See Pet. 41; Ex. 1008, 2:40 41, Fig. 2. The bottom figure is an annotated version of Figure 1, a front perspective view of a vehicle 21

22 incorporating Nechushtan s space frame, with an annotation identifying the alleged utility bed. Pet. 42; Ex. 1008, 2:38 39, Fig. 1. Patent Owner argues that Nechushtan s Figure 1 only shows a flat rear body panel, and argues that Petitioner s assertion lacks support or a citation. Prelim. Resp. 30 (referring to Pet , and Ex ). Patent Owner asserts that Nechushtan s spare tire is mounted vertically rather than on the alleged utility bed, suggesting the utility bed is not capable of carrying spare parts such as tires. Id. at 31. As an initial matter, the fact that Nechushtan s spare tire is mounted vertically rather than on the alleged utility bed reveals little or nothing about the capabilities of the utility bed. See Ex. 1008, Fig. 1. There are numerous reasons the spare tire may be mounted vertically that have nothing to do with the capabilities of the alleged utility bed. Further, Patent Owner s argument suggests that a utility bed as claimed must be capable of carrying a spare tire or other spare parts. Claim 88 contains no such limitation. For example, claim 88 does not specify any item or weight of items the bed must be capable of supporting. The Specification does not contain a lexicographical definition of a utility bed or utility. In fact, the phrase utility bed is not found in the 028 patent outside of the claims. The record does not reflect, and Patent Owner does not argue, that a utility bed is a term of art. An ordinary meaning of utility is useful, and we discern nothing in the 028 patent inconsistent with this ordinary meaning. 19 Claim 88 requires a useful bed. Petitioner s identified 19 Utility: the fact, character, or quality of being useful or serviceable fitness for some desirable purpose or valuable end; usefulness, serviceableness, Oxford English Dictionary, n. def. 1.a., Ex

23 portion of Nechushtan appears to disclose such a useful bed, in that it is capable of carrying some items. Consequently, Patent Owner s argument is not persuasive because it is not commensurate in scope with claim 88. For purposes of this Decision, Petitioner s explanation and annotated Figures demonstrate sufficiently that Nechushtan s discloses a useful bed as claimed. b) PASSENGER COMPARTMENT Claim 88 requires a passenger compartment intermediate the front and rear wheels, comprising a front panel, a floorboard rearward of the front panel, a base portion positioned under the seating surfaces, and a protective panel positioned rearward of the seating surfaces and forward of the engine. Petitioner relies on Nechushtan as disclosing this limitation, and provides the following annotated version of Figure 1 of Nechushtan. Pet The Figure is a front perspective view of a vehicle incorporating a space frame as claimed by Nechushtan, with annotations by Petitioner identifying the various portions of the passenger compartment. See Pet. 47; Ex. 1008, 2:38 39; Fig

24 Patent Owner argues that Petitioner has not demonstrated that Nechushtan discloses a floorboard and a base portion as claimed because claim 88 requires these elements to be distinct. Prelim. Resp As explained in our claim construction above, this contention is not commensurate in scope with claim 88, and for that reason this argument is not persuasive. On the record before us, Petitioner has demonstrated a reasonable likelihood of prevailing in the contention that claim 88 is unpatentable over Nechushtan and Hill. 2. CLAIM 89 Claim 89 depends from claim 88 and further limits the laterally spaced apart seating surfaces to be defined by a pair of bucket seats. Ex. 1002, 18: Petitioner identifies that Hill discloses bucket seats, but does not address the positional relationship between the upper seating surfaces and the front drive shaft. Pet. 48 (Ex. 1008, Fig. 1; Ex ). Although Hill s front driveshaft (propeller shaft 15) extends laterally intermediate the innermost sides of the lower seating surfaces, it does not so extend with regard to the upper seating surfaces. See Pet. 45; see also Prelim. Resp (contending that Petitioner ignores Hill s upper seat surfaces). An enlarged portion of Hill s Figure 2 follows. 24

25 This Figure is a plan view of Hill s racing vehicle and depicts that propeller shaft 15 does not remain intermediate of the part of the seating surfaces closest to the vehicle centerline, because propeller shaft 15 and the outline of the upper seating surface partially overlap. Ex. 1010, 2:44 47; Fig On the record before us, Petitioner has not demonstrated a reasonable likelihood of prevailing in the contention that claim 89 is unpatentable over Nechushtan and Hill. 3. CLAIMS 94, 97, AND 99 Claims 94, 97, and 99 depend from independent claim 88. Petitioner specifically alleges where each element of these claims is found in the prior art, with citations by exhibit number to the specific portion of the evidence that supports the challenge, and cites to appropriate portions of the Davis Declaration. See Pet Petitioner also explains why a person of ordinary skill in the art would have made the proposed modifications. Id. 20 Reference numeral 10 was removed for clarity. 25

26 We have reviewed Petitioner s positions, and they are persuasive. Patent Owner argues for these claims based upon their dependency from claim 88. Prelim. Resp. 39. Such arguments are unpersuasive for the reasons given in the analysis of claim 88 above. 4. CONCLUSION On the record before us, Petitioner has demonstrated a reasonable likelihood of prevailing in the contention that claims 88, 94, 97, and 99 are unpatentable over Nechushtan and Hill, but has not made a sufficient showing with regard to claim 89. Obviousness over Nechushtan, Hill, and Furuhashi 1. CLAIMS 90 AND 95 Claims 90 depends from claim 88 and requires a fuel tank positioned below one of the seating surfaces. Claim 95 depends from independent claim 88 and adds a shift lever. Petitioner specifically alleges where each element of these claims is found in the prior art, with citations by exhibit number to the specific portion of the evidence that supports the challenge, and cites to appropriate portions of the Davis Declaration. See Pet , Petitioner also explains why a person of ordinary skill in the art would have made the proposed modifications. Id. We have reviewed Petitioner s positions, and they are persuasive. Patent Owner argues for these claims based upon their dependency from claim 88. Prelim. Resp. 41. Such argument is unpersuasive for the reasons given in the analysis of claim 88 above. 26

27 2. CLAIM 93 Claim 93 depends from independent claim 88 and recites, further comprising a battery positioned below one of the seating surfaces. Petitioner contends that Furuhashi discloses battery 16 arranged at the right side of engine 12. Pet. 51. Petitioner reasons that adding a battery, such as Furuhashi s, would have been obvious because it is necessary for operation of the vehicle. Id. at 52. Petitioner asserts that placing that battery below one of the seating surfaces would have been obvious for weight distribution, stability, and space allocation, particularly given that a fuel tank is positioned below the other seating surface as required by claim 90. Id. at (citing Ex ). Patent Owner argues that neither Nechushtan nor Hill discloses a battery positioned as claimed, and that Petitioner s reliance on Furuhashi is misplaced because Furuhashi also does not make such disclosure. Prelim. Resp. 40. Patent Owner s argument is not responsive to the ground of unpatentability asserted by Petitioner because Petitioner does not rely upon Furuhashi for the position of the battery. Rather, as noted above, Petitioner reasons that a person of ordinary skill in the art would have so positioned the battery for weight distribution, stability, and space allocation. At this juncture, we determine that Petitioner s position is persuasive. Petitioner has demonstrated a reasonable likelihood of prevailing in establishing that claim 93 is unpatentable over Nechushtan, Hill, and Furuhashi. 27

28 3. CONCLUSION On the record before us, Petitioner has demonstrated a reasonable likelihood of prevailing in the contention that claims 90, 93, and 95 are unpatentable over Nechushtan, Hill, and Furuhashi. Obviousness over Nechushtan, Hill, and Hart Claims 91 and 92 depend from independent claim 88. Petitioner specifically alleges where each element of these claims is found in the prior art, with citations by exhibit number to the specific portion of the evidence that supports the challenge, and cites to appropriate portions of the Davis Declaration. See Pet Petitioner also explains why a person of ordinary skill in the art would have made the proposed modifications. Id. We have reviewed Petitioner s positions, and they are persuasive. Patent Owner argues for these claims based upon their dependency from claim 88. Prelim. Resp. 41. Such argument is unpersuasive for the reasons given in the analysis of claim 88 above. On the record before us, Petitioner has demonstrated a reasonable likelihood of prevailing in the contention that claims 91 and 92 are unpatentable over Nechushtan, Hill, and Hart. Obviousness over Nechushtan, Hill, and Nash Claim 96 depends from independent claim 88. Petitioner specifically alleges where each element of this claim is found in the prior art, with citations by exhibit number to the specific portion of the evidence that supports the challenge, and cites to appropriate portions of the Davis Declaration. See Pet Petitioner also explains why a person of 28

29 ordinary skill in the art would have made the proposed modification. Id. We have reviewed Petitioner s positions, and they are persuasive. Patent Owner argues for claim 96 based upon dependency from claim 88. Prelim. Resp. 42. Such argument is unpersuasive for the reasons given in the analysis of claim 88 above. On the record before us, Petitioner has demonstrated a reasonable likelihood of prevailing in the contention that claim 96 is unpatentable over Nechushtan, Hill, and Nash. Obviousness over Nechushtan, Hill, and Fujimori Claims 98 and 100 depend from independent claim 88. Petitioner specifically alleges where each element of these claims is found in the prior art with citations by exhibit number to the specific portion of the evidence that supports the challenge, and cites to appropriate portions of the Davis Declaration. See Pet Petitioner also explains why a person of ordinary skill in the art would have made the proposed modifications. Id We have reviewed Petitioner s positions, and they are persuasive. Patent Owner argues for these claims based upon their dependency from claim 88. Prelim. Resp. 42. Such argument is unpersuasive for the reasons given in the analysis of claim 88 above. On the record before us, Petitioner has demonstrated a reasonable likelihood of prevailing in the contention that claims 98 and 100 are unpatentable over Nechushtan, Hill, and Fujimori. 29

30 Obviousness over Nechushtan, Hill, and Kraus Claim 101 depends from independent claim 88, and adds that the power to weight ratio is equal to at least 0.045/1 horsepower/pound. Petitioner contends that it was well known that engine and vehicle size can be modified to provide additional horsepower per pound, as shown by Kraus. Pet. 59 (citing Ex , 174). Patent Owner argues for claim 101 based upon dependency from claim 88. Prelim. Resp. 43(incorporating argument at 27 29). Such argument is unpersuasive for the reasons given in the analysis of claim 88 above. Patent Owner also argues that Petitioner s expert testimony is conclusory, unsupported, and wrong for two reasons: one, Kraus teaches away, and two, Kraus s power to weight ratio is over nine 21 times larger than the preferred embodiment of the 028 patent. Id. at 43, (citing Ex. 1012, 4:63 65; 5:20 21). We address these contentions in turn. Kraus discloses a high-powered vehicle drive train. Ex. 1012, [54]. The first portion of Kraus cited by Petitioner describes that the drive train was specifically developed for a race car with an engine of 750 Horsepower at 9000 revolutions per minute and a weight of 1500 pounds. Id. at 4: In context, the second cited portion describes that race car transmissions are generally highly stressed with a short life, but Kraus s Constantly Variable Drive (CVD) provides a variable transmission ratio that adjusts to the most 21 Patent Owner refers to Kraus as both nine times higher than the preferred embodiment, and as eleven times higher than the claimed ratio. See Prelim. Resp. 28,

31 suitable ratio for operating conditions, and thereby provides a relatively long transmission life. Id. at 1:41 42; 5: Kraus s teachings relate to the drivetrain of race cars, but Kraus does not state that these teachings are inapplicable to other vehicles. Nor does Kraus criticize, discredit or otherwise discourage a person of ordinary skill in the art from varying the power to weight ratio of other vehicles. Consequently, Patent Owner s teaching away contention is not persuasive. Regarding Kraus s power to weight ratio, Patent Owner argues that no reasonable person of ordinary skill in the art would consider modifying an ATV based on Kraus s specialized race car teachings providing for a power to weight ratio of more than eleven times higher than the claimed ratio. 22 Prelim. Resp. 29. This contention is unpersuasive because it mischaracterizes Petitioner s asserted ground of unpatentability. Petitioner does not propose to modify the combination to have a power to weight ratio equal to that of Kraus. Rather, Petitioner contends that it was well known that engine and vehicle size can be modified to provide additional horsepower per pound, as shown by Kraus. Patent Owner has not persuasively addressed such contention. At this juncture, we determine that Petitioner s position is persuasive. On the record before us, Petitioner has demonstrated a reasonable likelihood of prevailing in the contention that claim 101 is unpatentable over Nechushtan, Hill, and Kraus. 22 It is unclear how a reasonable person of ordinary skill in the art differs from a person of ordinary skill in the art. We note that Patent Owner did not contend that Kraus is nonanalogous art. 31

32 IV. CONCLUSION For the foregoing reasons, we determine that Petitioner has demonstrated that the information presented in the Petition and in the Preliminary Response shows that there is a reasonable likelihood that Petitioner would prevail in proving the unpatentability of claims 88, 90 97, and of the 028 patent. Petitioner has not made such a demonstration regarding the following: (1) claims 24 33, 35, 36, 38, 41, 42, 45, and 46 as unpatentable under 35 U.S.C. 103(a) over Nechushtan and Furuhashi; (2) claim 34 as unpatentable under 35 U.S.C. 103(a) over Nechushtan, Furuhashi, and Kraus; and (3) claim 89 as unpatentable under 35 U.S.C. 103(a) over Nechushtan and Hill. At this stage of the proceeding, the Board has not made a final determination as to the patentability of any challenged claim or any underlying factual and legal issues. 32

33 VI. ORDER For the reasons given, it is: ORDERED that inter partes review is instituted with respect to the following grounds of unpatentability: (1) claims 88, 94, 97, and 99 as unpatentable under 35 U.S.C. 103(a) over Nechushtan and Hill; (2) claims 90, 93, and 95 as unpatentable under 35 U.S.C. 103(a) over Nechushtan, Hill, and Furuhashi; (3) claims 91 and 92 as unpatentable under 35 U.S.C. 103(a) over Nechushtan, Hill, and Hart; (4) claim 96 as unpatentable under 35 U.S.C. 103(a) over Nechushtan, Hill, and Nash; (5) claims 98 and 100 as unpatentable under 35 U.S.C. 103(a) over Nechushtan, Hill, and Fujimori; (6) claim 101 as unpatentable under 35 U.S.C. 103(a) over Nechushtan, Hill, and Kraus; FURTHER ORDERED that no other ground of unpatentability is authorized for this inter partes review; and FURTHER ORDERED that pursuant to 35 U.S.C. 314(a), inter partes review of the 028 patent is hereby instituted commencing on the entry date of this Order, and pursuant to 35 U.S.C. 314(c) and 37 C.F.R. 42.4, notice is hereby given of the institution of a trial. 33

34 PETITIONER: MICHAEL T. HAWKINS DOROTHY P. WHELAN PATENT OWNER: DENNIS BREMER 34