B/E Aerospace, Incv.MAG Aerospace Industries, LLC

Patent Trial and Appeal Board

Mar 18, 2016

10061681 (P.T.A.B. Mar. 18, 2016)

Trials@uspto.gov Paper 104
Tel: 571-272-7822 Entered: March 18, 2016
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

B/E AEROSPACE, INC.,
Petitioner,

v.

MAG AEROSPACE INDUSTRIES, LLC,
Patent Owner.
___________

IPR2014-01513
Patent 6,536,055 B2
____________

Before JAMESON LEE, JOSIAH C. COCKS, and
PHILLIP J. KAUFFMAN, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
IPR2014-01513
Patent 6,536,055 B2

2
I. INTRODUCTION
A. PROCEDURAL OVERVIEW
Petitioner, B/E Aerospace, Inc., filed a corrected Petition (Paper 22,
“Pet.”) to institute an inter partes review of claims 15, 16, 20, 21, and 24–26
of U.S. Patent No. 6,536,055 B2 (Ex. 1001, “the ’055 patent”). The ’055
patent is titled “Modular Vacuum Toilet with Line Replaceable Units”
(LRUs). Ex. 1001, (54). A significant issue in this case is the proper
interpretation of an LRU as claimed.
Patent Owner, MAG Aerospace Industries, LLC, filed a timely
Preliminary Response (Paper 12, “Prelim. Resp.”).
In the March 26, 2015, Decision to Institute (Paper 24, “Inst. Dec.”),
we instituted trial on claims 15, 16, 20, 21, and 24–26 on the following
grounds:
A. Claims 15, 16, 20, 21, and 24–26 under 35 U.S.C. § 103(a) over
Olin;1
B. Claims 15, 16, 20, 21, and 24–26 under 35 U.S.C. § 103(a) over
Olin and Kendall.2
Subsequently, Patent Owner filed a corrected Patent Owner Response
(Paper 44, “PO Resp.”), and Petitioner filed a Reply (Paper 65, “Pet.
Reply”).3
Patent Owner did not file a motion to amend.

1 Ex. 1021, US 5,909,968 (June 8, 1999).
2 Ex. 1020, US 5,231,706 (Aug. 3, 1993).
3 Redacted versions are at Papers 45 and 66, respectively.
IPR2014-01513
Patent 6,536,055 B2

3
Patent Owner filed a corrected motion for observation on cross-
examination of Mr. Hallmark and a motion for observation on cross–
examination of Dr. Dershowitz. Papers 83, 79.4 Petitioner filed a response
to each. Papers 89, 90. This information was factored into our Decision.
Oral hearing was held on Thursday, November 19, 2015, and a
transcript of the oral hearing is included in the record.5 Paper 99 (“Tr.”).
For the reasons that follow, we determine that Petitioner has shown by
a preponderance of the evidence that claims 15, 16, 20, 21, and 24–26 of the
’055 patent are unpatentable.

B. RELATED PROCEEDINGS
Patent Owner asserted the ’055 patent against Petitioner in MAG
Aerospace Industries Inc. v. B/E Aerospace Inc., Case No. 2:13-cv-06089-
SJO-FFM (C.D. Cal.). Pet. 1; Paper 5, 1
The parties in the case at hand are involved in two other inter partes
proceedings: IPR2014-01510 (challenging U.S. Patent 6,353,942 B1, “the
’942 patent”), and IPR2014-01511 (challenging U.S. Patent 6,536,054 B2,
“the ’054 patent”).6 The ’055 patent (application No. 10/061,681) is a
continuation of the application that became the ’942 patent (application No.

4 Paper 84 is a redacted version of Paper 83.
5 The hearing was held with the hearing for IPR2014-01510 and IPR2014-
01511. Petitioner’s demonstrative exhibits are at Exhibit 1107 (redacted)
and 1108 (unredacted). Patent Owner’s corrected demonstrative exhibits are
at Exhibits 2071.
6 At times each party filed papers that were applicable to all three cases, but
only cited to the papers and exhibits of IPR2014-01510. In this decision we
attempt to cite to the papers and exhibits of the case at hand.
IPR2014-01513
Patent 6,536,055 B2

4
09/713,892). Ex. 1001, (63). The ’054 patent contains similar subject
matter, but is not in a continuity chain leading to either the ’942 patent or the
’055 patent. See IPR2014-01511, Ex. 1001, (63).

II. PRELIMINARY MATTERS
Before addressing claim construction and patentability we provide
additional procedural details, and resolve a Motion to Exclude Evidence by
each party.

A. ADDITIONAL PROCEDURAL DETAILS
On May 5, 2015, Petitioner submitted a motion to submit what would
be Exhibits 1034˗1044 (“the proffered evidence”) as supplemental
information under 37 C.F.R. § 42.123(a), along with a motion to seal these
exhibits. Papers 30, 31. Patent Owner submitted an opposition to each
motion. Papers 32, 33. For a variety of reasons, we denied Petitioner’s
Motion to Submit Supplemental Information and the Motion to Seal was
dismissed as moot.7
On October 2, 2015, at Petitioner’s request, a conference call was held
regarding the proffered evidence. Petitioner asserted that the proffered
evidence demonstrates prior inconsistent statements by several of Patent
Owner’s witnesses in the proceeding at hand, and for that reason Patent
Owner must serve the proffered evidence as routine discovery. See Paper 59
(order), 61 (transcript of call). We directed the parties to attempt in good

7 This decision was entered as Paper 37 in IPR2014-01510, but was
mistakenly not entered in this inter partes review. As stated on the cover of
that order, the decision applies to this inter partes review.
IPR2014-01513
Patent 6,536,055 B2

5
faith to determine what, if any, portion of the proffered evidence
demonstrated inconsistencies as alleged. Paper 59, 4.
The parties were unable to reach agreement, and the Board conducted
a second call on the matter. See Paper 62 (order), Paper 63 (transcript). We
determined that such an order is not a matter of discovery because Petitioner
already had the proffered evidence from the related litigation. Paper 62, 4.
For this, and a variety of other reasons, the Board denied Petitioner’s
request. Id. Petitioner did not file a timely request for reconsideration. See
37 C.F.R. § 42.71(d)(1).
The proffered evidence was later filed with Petitioner’s Reply. Patent
Owner’s Motion to exclude that information is discussed below.

B. PETITIONER’S MOTION TO EXCLUDE EVIDENCE
Petitioner moves to exclude: (1) the unpatentability opinions of Patent
Owner’s declarant, Mr. Anderson (Ex. 2021), and (2) “certain statements” in
Patent Owner’s opposition papers.8 Paper 75, 2–3. Patent Owner filed an
Opposition to the Motion (Paper 87), and Petitioner filed a Reply to the
Opposition (Paper 91). For the reasons that follow, Petitioner’s motion is
denied.
1. Anderson Declaration
The Anderson Declaration was filed with Patent Owner’s Response
on July 14, 2015.

8 This file makes reference to both the Anderson Declaration (Ex. 2021) and
the Anderson Deposition (Ex. 1052).
IPR2014-01513
Patent 6,536,055 B2

6
a) Objections9
Petitioner identifies the following items or actions as including
objections:
(1) e-mail correspondence dated October 2, 2015, to
October 15, 2015 (filed as Ex. 1072 on October 16,
2015);
(2) conference calls with the Board on October 2,
2015, and October 9, 2015 (Papers 61, 63, respectively);
(3) Mr. Anderson’s Deposition (Ex. 1052);10 and
(4) Paper 46 (Petitioner’s Objections to Evidence).
Paper 75, 2.11
Items (1)–(3) do not properly include objections because they were
not timely filed by Petitioner.12 See 37 C.F.R. § 42.64(b)(1).
The fourth item, Paper 46, was timely filed. See Paper 46; PO Resp.
52. In that Paper, Petitioner objected to Exhibits 2019–2043, 2048–2053,
and 2055, and included “general objections” applicable to all of these
Exhibits. Paper 46, 1–2. With regard to the Anderson Declaration (Ex.

9 After May 19, 2015, objections must be filed, not just served. See 37
C.F.R. § 42.64(b)(1), revised 80 Fed. Reg. 28561.
10 Petitioner’s updated exhibit list indicates that this Deposition was served
but not filed. Paper 95, 5. Because this Deposition was not filed in this
case, Petitioner may not rely upon it. See, e.g., Pet. Reply 4, 5, 6.
11 Petitioner’s motion references the papers and exhibits of IPR2014-01510,
we have inserted the paper and reference numbers of the corresponding
papers and exhibits in IPR2014-01513.
12 Although item 3, the Anderson Deposition, was filed, it was filed by
Patent Owner, not Petitioner. After May 19, 2015, objections were filed, not
served. See 37 C.F.R. § 42.64(b)(1), revised 80 Fed. Reg. 28561.
IPR2014-01513
Patent 6,536,055 B2

7
2021) in particular, Petitioner lists the Board rules and Federal Rules of
Evidence that are the grounds for the objection, and states:
This exhibit is irrelevant, cumulative, and/or prejudicial to the
issues on which IPR is progressing. This exhibit does not present
underlying facts or evidence. This exhibit reflects statements
made without personal knowledge. This exhibit reflects opinions
for which the factual bases for those opinions have not been
disclosed, and for which the expert used unreliable analysis and
methods. See also the discussion of objections based on these
rules in Section II.A above [the “general objections”],
incorporated herein by reference.
Id. at 4; see also Paper 91 (repeating this assertion).
Petitioner’s “general objections” apply to the exhibits as a whole
without identifying a particular portion of an exhibit, and in fact, leave it to
the reader as to whether an objection applies to a particular exhibit. See,
e.g., Paper 46, 1–2 (“Petitioner objects to each and every exhibit that . . .”).
We agree with Patent Owner’s characterization that Petitioner submitted
boilerplate objections. Paper 87, 1. Further, Petitioner’s Motion is not based
on an asserted objection. For example, Petitioner’s Motion argues that
Mr. Anderson’s opinions are irrelevant because they are based upon an
incorrect claim construction, but Petitioner did not object on that basis. See
Paper 46, 4; Paper 75, 4–7. Petitioner’s objections did not identify the
grounds for the objection with sufficient particularity to allow Patent Owner
to correct in the form of supplemental evidence. 37 C.F.R. § 42.64(b)(1);
see also Paper 87, 1–5 (Patent Owner arguing Petitioner did not object with
sufficient particularity).
Petitioner contends the objections have sufficient particularity. See
Paper 91, 1–2 (citing Hayward Indus., Inc. v. Pentair Water Pool and Spa,
Inc., Case IPR2013-00287 (PTAB Dec. 17, 2013) (Paper 15) (non-
IPR2014-01513
Patent 6,536,055 B2

8
precedential). This citation is not persuasive because in Hayward no
motions were filed and no determination was made so that the Board’s
comment was an observation and not a ruling. Id.
The lack of an effective objection is sufficient basis to deny
Petitioner’s Motion. See 37 C.F.R. §§ 42.20(c), 42.22, 42.64(c). Despite
this deficiency, we consider the merits of Petitioner’s Motion.
b) Relevance
Petitioner contends that Mr. Anderson’s opinions are based on an
incorrect claim construction, and for that reason are irrelevant under Federal
Rules of Evidence (FREs) 401 and 403. Paper 75, 4–7; Paper 91, 2–4. We
take this as an assertion that the evidence is inadmissible under FRE 402.
Our decision does not involve a jury. For that reason, Petitioner’s
citation to a jury case excluding improper claim construction is not
persuasive. See, e.g., Paper 75, 4 (citing Liquid Dynamics Corp. v. Vaughan
Co., Inc., 449 F.3d 1209, 1224 n.2 (Fed. Cir. 2006)). Further, Petitioner’s
citation to a district court case that excluded an improper claim construction
from consideration on infringement is also unpersuasive. See id. (citing
Chicago Mercantile Exch., Inc. v. Tech. Research Grp., LLC, 782 F. Supp. 2d
667, 673 (N.D. Ill. 2011)). In Chicago Mercantile, the court held that an
expert’s testimony based on an improper claim construction would not be
relevant at trial. Id. Here, in contrast, we construe the claims as part of this
final decision. See Paper 87, 5–7 (correctly noting both that the Board’s
claim construction in an institution decision is preliminary, and unlike most
district court cases, the Board’s final decision addresses claim construction
and patentability). Consequently, evidence regarding claim construction,
such as the Anderson Declaration, remains relevant.
IPR2014-01513
Patent 6,536,055 B2

9
Further, Petitioner does not explain persuasively how the probative
value of the Anderson Declaration is outweighed by any of the dangers of
unfair prejudice enumerated in FRE 403. See Paper 75, 4–7.
c) FRE 702/703
Petitioner contends that the methodology of Mr. Anderson’s analysis
is fundamentally unreliable and should be excluded in support of the Board’s
“gatekeeping” role. Paper 75, 7–9; Paper 91, 4. Petitioner makes several
contentions in support of this argument.
First, Petitioner contends that Mr. Anderson indicated that he did not
write his declaration and that he did not review the Petition prior to filing.
Paper 75, 8 (quoting an unidentified portion of Mr. Anderson’s Deposition at
Exhibit 1052). As mentioned above, Petitioner has indicated that
Mr. Anderson’s Deposition was served but not filed. See Paper 95, 5.
Consequently, Petitioner’s argument is unpersuasive because it is not
supported by evidence in the record.
Second, Petitioner contends that in “concurrent litigation”
Mr. Anderson offered inconsistent testimony regarding claim scope. Paper
75, 8 (referring to Section III of this document, found at pages 9–11). Even
if true, Petitioner has not explained cogently how a prior inconsistency
renders the Anderson Declaration inadmissible.
Petitioner’s assertions do not persuade us that the Anderson
Declaration is unreliable. We note that the policy considerations for
excluding expert testimony, such as those implemented by the gatekeeping
framework established by the Supreme Court in Daubert v. Merrell Dow
Pharms., Inc., 509 U.S. 579 (1993), are less compelling in bench
proceedings such as inter partes reviews than in jury trials. See, e.g., Volk v.
IPR2014-01513
Patent 6,536,055 B2

10
United States, 57 F. Supp. 2d 888, 896 n.5 (N.D. Cal. 1999); In re Bay Area
Material Handling, Inc., No. C 95-1163 VRW, 1995 WL 729300, at *6
(N.D. Cal. Dec. 4, 1995).
Consequently, Petitioner has not demonstrated that the Anderson
Declaration (Ex. 2021) should be excluded. See 37 C.F.R. §§ 42.20(c),
42.22, 42.62(a), 42.64.
2. Statement’s in Patent Owner’s Opposition Papers13
As explained above regarding the proffered evidence, Petitioner
contends that Patent Owner failed to serve as routine discovery information
that is inconsistent with positions Patent Owner has taken in this proceeding.
In this Motion, Petitioner argues that the allegedly inconsistent positions in
the Patent Owner Response should be excluded. Paper 75, 9–11 (providing
two alleged examples, and citing 37 C.F.R. § 42.51(b)(1)(iii)).
a) Objections
As discussed above, only Paper 46 was timely filed as objections.
There, Petitioner presents objections by Exhibit and makes reference to “any
reference to/reliance thereon.” See, e.g., Paper 46, 2 (objecting to Exhibit
2019 and any reference to or reliance thereon). Presumably, Petitioner
meant reliance or reference to the specified Exhibit in Patent Owner’s
Response. Such identification lacks specificity. More importantly, this
Motion seeks to exclude portions of the Patent Owner Response based upon
a failure to provide inconsistent information, but that basis was not identified
as an objection. See Paper 46. Petitioner’s objections did not identify the
grounds for the objection with sufficient particularity to allow Patent Owner

13 Although not explicit, Petitioner is apparently referring to the Patent
Owner Response.
IPR2014-01513
Patent 6,536,055 B2

11
to correct in the form of supplemental evidence. 37 C.F.R. § 42.64(b)(1);
see also Paper 87, 1–5 (Patent Owner arguing Petitioner did not object with
sufficient particularity).
The lack of an effective objection is sufficient basis to deny
Petitioner’s Motion. See 37 C.F.R. §§ 42.20(c), 42.22, 42.64(c). Despite
this deficiency, we consider the merits of Petitioner’s Motion.
b) Alleged Failure to Provide Inconsistent Information
Petitioner’s request to exclude statements by Patent Owner that are
inconsistent with testimony and evidence adduced during the district court
litigation relates to a prior order in this case. Paper 75, 9–11. Specifically,
during a conference call regarding Patent Owner’s allegedly inconsistent
statements, the Board cautioned Patent Owner that, “the solution for
[presenting statements without submitting known inconsistent evidence] can
be that the statement that you initially relied on could be expunged or not
used in your favor.” Id. at 9 (citing Paper 61, 32:22–33:2). Indeed, where a
party advances a position in a proceeding, and that party refuses to serve on
the opposition information within that Party’s knowledge that is relevant,
non-privileged, and inconsistent with that position, the Board may expunge
or not consider that position. See 37 C.F.R. §§ 42.5, 42.51(b). However,
this is not a situation where one party advances a position and withholds
from the other party information that is inconsistent with that position.
Rather, Petitioner had the information; it was obtained in the related
litigation. The following additional circumstances also bear on our
determination.
As explained above, we considered the proffered evidence both as
supplemental information and as routine discovery. We denied Petitioner’s
IPR2014-01513
Patent 6,536,055 B2

12
Motion to Submit Supplemental Information because Petitioner, as the
moving party, did not demonstrate the relevance to any claim subject to a
ground of unpatentability for which trial was instituted.14 We denied
Petitioner’s request that we order Patent Owner to serve the documents as
routine discovery because Petitioner already had the documents from the
related litigation. Paper 62. Petitioner did not avail themselves of the
opportunity to seek reconsideration of either determination, and nothing in
this record calls those determinations into doubt.
Since submittal of Petitioner’s Motion to Exclude, Petitioner
submitted the proffered evidence in conjunction with Petitioner’s Reply in
response to Patent Owner’s Response. Further details are provided in the
analysis of Patent Owner’s Motion to Exclude that evidence.
The record now contains Petitioner’s proffered evidence so that we
may weigh it against Patent Owner’s allegedly inconsistent statements.
Consequently, given these circumstances, Petitioner has not demonstrated
that certain statements in the Patent Owner Response should be excluded.
See 37 C.F.R. §§ 42.20(c), 42.22, 42.62(a), 42.64.

C. PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE
Patent Owner filed a Motion to Exclude: (1) the Dershowitz
Declaration and Reply Declaration, and (2) the Hallmark Declaration and
associated exhibits. Paper 80. Petitioner filed an Opposition to the Motion

14 This decision was entered as Paper 37 in IPR2014-01510, but was
mistakenly not entered in this inter partes review. As stated on the cover of
that order, the decision applies to this inter partes review.
IPR2014-01513
Patent 6,536,055 B2

13
(Paper 88), and Patent Owner filed a Reply to the Opposition (Paper 92).
For the following reasons, Patent Owner’s motion is denied.
1. Declaration & Reply Declaration of Dr. Dershowitz
a) Entire Declarations15
The Dershowitz Declaration (Ex. 1030) was submitted with the
Petition on September 16, 2014. Patent Owner’s objections were timely
served on April 9, 2015, and identified the grounds for each objection with
sufficient particularity.16 See Ex. 2067, 8–10, 20; 37 C.F.R. § 42.64(b)(1).
The Dershowitz Reply Declaration (Ex. 106817) was submitted with
Petitioner’s Reply. Patent Owner’s objections were timely served, and
identified the grounds for each objection with sufficient particularity. Paper
71, 19–21, 26–27; 37 C.F.R. § 42.64(b)(1).
Patent Owner contends that Dr. Dershowitz does not qualify as a
person of ordinary skill in the art, and does not qualify as an expert under
FRE 702. Paper 80, 4–8. Patent Owner makes a variety of assertions
regarding Dr. Dershowitz’s qualifications, including that he lacks hands-on
experience with vacuum toilets, and that, contrary to his representations, his
patents do not relate to vacuum toilets. Id. at 5–7.
Even accepting Patent Owner’s assertions as true, we are not
persuaded that Dr. Dershowitz’s testimony should be excluded. To testify as
an expert under FRE 702, a person need not be a person of ordinary skill in

15 Here we address the objections to the Dershowitz Reply Declaration as a
whole and we address paragraph 56 separately below.
16 As mentioned above, our Decision to Institute was entered on March 26,
2015. Prior to May 19, 2015, objections were served, not filed. See
37 C.F.R. § 42.64(b)(1), revised 80 Fed. Reg. 28561.
17 Exhibit 1073 is a redacted version of Exhibit 1068.
IPR2014-01513
Patent 6,536,055 B2

14
the art, but rather may be “qualified in the pertinent art.” See Paper 88, 7–
12; Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64
(Fed. Cir. 2008); Mytee Prods., Inc. v. Harris Research, Inc., 439 F. App’x
882, 886–87 (Fed. Cir. 2011) (non-precedential) (upholding admission of the
testimony of an expert who “had experience relevant to the field of the
invention,” despite admission that he was not a person of ordinary skill in
the art). Further, there need not be a perfect match between the expert’s
qualifications and the patent at issue. See SEB S.A. v. Montgomery Ward &
Co. Inc., 594 F.3d 1360, 1373 (Fed. Cir. 2010).
As explained below, the challenged claims relate to vacuum toilets.
We agree with Petitioner that Dr. Dershowitz is qualified to provide his
opinions for this case. Paper 88, 2–5. For example, Dr. Dershowitz has a
Bachelor’s, Master’s, and Doctorate Degree in Aeronautics and Astronautics,
each from Massachusetts Institute of Technology. Ex. 1028, 1.
Dr. Dershowitz has experience in aircraft and spacecraft systems, to include
teaching as a certified flight instructor and a commercial airline license. Id.
at 1–2. Dr. Dershowitz has numerous licenses and certifications, to include:
registration as a professional Mechanical Engineer and as an Aeronautical
Engineer. Id. at 1–2. Dr. Dershowitz’s qualifications align with the
challenged subject sufficiently so that his knowledge is helpful in
understanding the evidence and determining facts in issue.
Consequently, Patent Owner has not demonstrated that the entire
Dershowitz Declaration (Ex. 1030) or the Dershowitz Reply Declaration
(Ex. 1068) should be excluded. See 37 C.F.R. §§ 42.20(c), 42.22, 42.62(a),
42.64.
IPR2014-01513
Patent 6,536,055 B2

15
2. Paragraph 56 of the Dershowitz Reply Declaration
Patent Owner seeks to exclude paragraph 56 of the Dershowitz Reply
Declaration (Ex. 1068).18 Paper 80, 8–9. According to Patent Owner,
paragraph 56 is testimony by Dr. Dershowitz regarding “intent, motive, or
state of mind, or evidence by which such state of mind may be inferred” of
the inventors of the ’055 patent, and such testimony by an expert is
inadmissible under the relevancy provisions of FRE 402 and 403. Id. at 8–9.
Patent Owner also contends that this portion of the Reply Declaration should
be excluded under FRE 702 because it simply recites the testimony of others
and is not based on Dr. Dershowitz’s specialized knowledge. Id. at 9.
Patent Owner did not make an effective objection with regard to the
paragraph at issue. Specifically, Patent Owner made general objections
based on FREs 402, 403, 701, 702, and 703, but did not mention paragraph
56, nor testimony regarding state of mind. See Paper 71, 19–21, 26–27.
Consequently, Patent Owner did not provide sufficient particularity to permit
Petitioner to correct in the form of supplemental evidence. See 37 C.F.R.
§ 42.64(b)(1). The lack of an effective objection is sufficient basis to deny
this portion of Patent Owner’s Motion. See 37 C.F.R. §§ 42.20(c), 42.22,
42.64(c). Despite this deficiency, we consider the merits of this portion of
Patent Owner’s Motion.
Patent Owner contends that Dr. Dershowitz’s testimony in paragraph
56 reflects the subjective intent of the inventors. Paper 80, 8–9. We
disagree with this characterization.

18 Exhibit 1073 is a redacted version of Exhibit 1068.
IPR2014-01513
Patent 6,536,055 B2

16
Paragraph 56 does not contain an explicit statement regarding the state
of mind of the inventors of the ’055 patent, nor is such fairly implied. The
only disclosure regarding the inventors is Dr. Dershowitz’s statement that he
reviewed the testimony of the inventors in the underlying litigation and this
testimony further confirms that his opinion that the challenged claims are not
limited to vehicular applications is correct. Ex. 1068 ¶ 56. We agree with
Petitioner that Dr. Dershowitz may identify the basis for his opinion. See
Paper 88, 13. Dr. Dershowitz does not identify the particular inventor
testimony involved, and more importantly, Dr. Dershowitz does not explain
why the inventor’s testimony confirms his opinion.
Patent Owner has not persuaded us that the paragraph at issue
improperly implies the state of mind of any inventor or permits
Dr. Dershowitz to simply repeat the testimony of another. Consequently, we
deny Patent Owner’s Motion to Exclude paragraph 56 of Exhibit 1068 on
this basis as well. See 37 C.F.R. §§ 42.20(c), 42.22, 42.64(c).
3. Hallmark Declaration and Associated Exhibits
Patent Owner seeks to exclude paragraphs 86–102 of the Hallmark
Declaration (Ex. 106919) and Exhibits 1057–1063. Paper 80, 9–10. This
information is the proffered evidence discussed above.
Each of these exhibits was filed on October 16, 2015, in association
with Petitioner’s Reply. Patent Owner timely filed objections to these
Exhibits and identified the grounds for each objection with sufficient
particularity. Paper 71 (filed Oct. 19, 2015), 7–16, 21–22; 37 C.F.R.
§ 42.64(b)(1).

19 A redacted version is filed as Exhibit 1074.
IPR2014-01513
Patent 6,536,055 B2

17
In the evidence at issue, Mr. Hallmark states that he is an expert in
aircraft maintenance and repair. Ex. 1069 ¶ 4. The paragraphs at issue are
titled “VIII. Review of Service Documentation.” Id. at i, 29, ¶¶ 86–102.
Mr. Hallmark explains that Service Bulletins (“SB’s”) are documents
provided by a component manufacturer, such as Patent Owner, describing
maintenance or a particular service task to be performed on a specific
component. Id. ¶ 87. Mr. Hallmark discusses the content of SB’s at Exhibits
1058–1063. Exhibit 1057 is an SB index.
a) Relevance
As discussed above, Patent Owner acknowledges that the SB’s found
at Exhibits 1057–1063 are the same documents that were denied entry as
supplemental information. See Paper 80, 10. According to Patent Owner,
these exhibits are confidential internal documents and therefore do not relate
to any of the prior art at issue nor are they part of the knowledge of one of
ordinary skill in the art. Thus, Patent Owner reasons, these documents are
irrelevant under FRE 402 and 403. Id. at 10–11. Regarding Mr. Hallmark’s
Declaration, Patent Owner contends that Mr. Hallmark did not perform
repairs before the priority date, but did so in 2014 for the District Court
litigation. Id. at 12. Patent Owner also contends that Mr. Hallmark did such
repairs in an office setting rather than on the aircraft. Patent Owner
concludes that for these reasons Mr. Hallmark’s testimony in paragraphs 86–
102 is not relevant under FRE 402 or 403. Id.
Petitioner counters that Exhibits 1057–1063 are relevant to Patent
Owner’s secondary considerations arguments put forth in Patent Owner’s
Response. Paper 88, 13–14. Patent Owner responds by repeating that the
Exhibits at issue are not publications because they are confidential
IPR2014-01513
Patent 6,536,055 B2

18
documents, and therefore are not prior art. Paper 92, 4–5. Patent Owner
does not address Petitioner’s contention that the Exhibits are in response to
and relevant regarding Patent Owner’s secondary considerations argument.
Patent Owner’s silence is significant, because Patent Owner, as the moving
party, has the burden of proof on its motion. See 37 C.F.R. § 42.20(c).
In the Patent Owner Response, Patent Owner contends that the
nonobviousness of the claimed methods is demonstrated by the secondary
considerations of long-felt and unmet need, industry praise, and commercial
success. PO Resp. 43–45. A key factual basis of these assertions is the
contention that:
At the time of the invention of the ’055 Patent, vacuum
toilets, particularly on aircraft, did not include a toilet bowl, rinse
valve, discharge valve, and/or FCU that could be quickly and
easily replaced in the field while the toilet assembly remained
installed.
PO Resp. 45 (citing Anderson Decl., Ex. 2021 ¶ 15, 16, 18; Jones Decl., Ex.
2022 ¶ 25).
The Hallmark Declaration and the SB’s at issue contain evidence that
has a tendency to make Patent Owner’s contention less probable than it
would be without the evidence, and that fact is of consequence in this action
because we must consider the secondary consideration in our obviousness
analysis. See FRE 401. For example, Mr. Hallmark states that Patent
Owner’s SB 79000XX-38-01, dated March 3, 1992 (Ex. 1061), provides
guidance for replacing rinse valves on toilets “in service” (installed on the
aircraft). Ex. 1069 ¶ 92. Indeed, SB 79000XX-38-01, describes a rinse
valve modification for ENVIROVAC toilets used onboard Boeing 767
aircraft that involves replacing the rinse valve. Ex. 1061, 1–2. The SB
instructions for removing and replacing the rinse valve include shutting off
IPR2014-01513
Patent 6,536,055 B2

19
the aircraft water supply to the toilet assembly (step 1), removing and
replacing the rinse valve (step 6), and turning on the aircraft water supply
(step 11). Id. at 5–6. These steps suggest that the toilet is in the aircraft
during the rinse valve replacement process.
Patent Owner does not explain cogently how the probative value of
the evidence at issue is outweighed by one of the dangers of unfair prejudice
enumerated in FRE 403. See Paper 80, 9–10; Paper 92, 4–5.
In light of this, the evidence at issue is relevant to our analysis of
secondary considerations and responds to arguments raised in the Patent
Owner Response. See FRE 401, 402; 37 C.F.R. § 42.23(a).
Patent Owner has not demonstrated that the evidence at issue should
be excluded based on relevancy concerns.
b) Qualifications as an Expert
Paper Owner contends that paragraphs 106–11520 of the Hallmark
Declaration should be excluded because Mr. Hallmark lacks experience with
the design of waste water systems and vacuum toilets. Paper 80, 12–13.
Even accepting Patent Owner’s assertions as true, we are not
persuaded that the Hallmark Declaration should be excluded. As explained
above, to testify as an expert under FRE 702, a person need not be a person
of ordinary skill in the art, but rather may be “qualified in the pertinent art,”
and there need not be a perfect match between the expert’s qualifications and
the patent at issue. Mr. Hallmark’s qualifications align with the challenged
subject sufficiently so that his knowledge would be helpful to understanding
the evidence and determining a fact in issue. For example, we note that

20 Paragraphs 106–115 are found in Section X, pp. 40–45.
IPR2014-01513
Patent 6,536,055 B2

20
Mr. Hallmark has nearly 30 years of experience as a line maintenance
technician, manager, director, and consultant. Paper 88, 5 (citing Ex. 1069
¶¶ 3–14).
Patent Owner has not demonstrated that the evidence at issue should
be excluded. See 37 C.F.R. §§ 42.20(c), 42.22, 42.62(a), 42.64.

D. ASSIGNOR ESTOPPEL
Patent Owner contends that the doctrine of assignor estoppel prevents
Petitioner from seeking inter partes review of the ’055 patent because
Mr. Pondelick, an inventor and assignor of the ’055 patent, is in privity with
Petitioner. PO Resp. 6–7, 49–52. Patent Owner acknowledges that the
Board has not applied assignor estoppel to inter partes reviews. Id. at 7 n.1.
As explained in our Decision to Institute, the Board has consistently
maintained that assignor estoppel is not applicable to inter partes reviews.
Inst. Dec. 14–15 (citing Athena Automation Ltd. v. Husky Injection Molding
Sys. Ltd., Case IPR2013-00290, slip op. at 12–13 (PTAB Oct. 25, 2013)
(Paper 18);21 Redline Detection, LLC, v. Star Envirotech, Inc., Case
IPR2013-00106, slip op. at 12˗13 (PTAB June 30, 2014) (Paper 66);
Synopsys, Inc. v. Mentor Graphics Corp., Case IPR2012-00042, slip op. at
16–17 (PTAB Feb. 19, 2014) (Paper 60)). We agree with, and adopt, the
logic of these cases. Because we are not persuaded that assignor estoppel,
an equitable doctrine, provides an exception to the statutory mandate that
any person who is not the owner of a patent may file a petition for an inter

21 See also the associated Final Written Decision in related case Athena
Automation Ltd. v. Husky Injection Molding Sys. Ltd., IPR2013-00167, slip
op. at 6 (PTAB July 23, 2014) (Paper 51).
IPR2014-01513
Patent 6,536,055 B2

21
partes review, we decline to dismiss this inter partes review based on the
doctrine of assignor estoppel.

III. CLAIM CONSTRUCTION
A. INTRODUCTION TO THE SUBJECT MATTER
The Specification describes a modular vacuum toilet and a method of
servicing such toilet. Id. at 2:54–4:7, Figs. 1, 2. Modular vacuum toilet 10
shown in Figure 1A is reproduced below:

IPR2014-01513
Patent 6,536,055 B2

22
Figure 1A is a front perspective view of a modular vacuum toilet of the ’055
patent. Id. at 4:10–12. Modular vacuum toilet 10 generally includes frame
20, bowl 36, and valve set 8. Id. at 4:34–35, Figs. 1A, 1B.
Frame 20 supports the components of vacuum toilet 10. Id. at
4:41˗42, Figs 1A, 1B. Top member 28 of frame 20 defines opening 30, and
includes two slots 29 near the rear thereof. Id. at 4:47–48.
Bowl 36 is a receptacle for receiving waste material having a sidewall
38 sized for insertion into opening 30 of frame 20. Id. at 4:58–61. Bowl 36
includes out-turned flange 40 about an upper edge of the sidewall. Id.
Flange 40 includes tabs 39 sized for insertion through slots 29 in top frame
member 28. Id. at 4:61–63; Fig. 3. Bowl 36 includes outlet 42 in fluid
communication with discharge valve 70. Id. at 4:66–67.
Valve set 8 is comprised of four sub-components: discharge valve 70,
rinse valve 72, flush control unit (FCU) 74, and actuator 76. Id. at 5:54–59,
Fig. 4.

B. ILLUSTRATIVE CLAIM
Each of the challenged claims depends, directly or indirectly, from
independent claim 15, which follows (emphasis added):
15. A method of servicing a modular vacuum toilet in which
the toilet has a first line replaceable unit including a waste
receptacle for receiving waste and being supported by a support
structure, the waste receptacle defining an outlet and having a
rinse fluid dispenser associated therewith; the toilet further
including a discharge valve having an inlet in fluid
communication with the receptacle outlet, an outlet in fluid
communication with a sewer line placeable under partial vacuum
pressure, and a moveable discharge valve member disposed
between the discharge valve inlet and the discharge valve outlet;
IPR2014-01513
Patent 6,536,055 B2

23
a rinse fluid valve having an inlet in fluid communication with a
source of rinse fluid, an outlet in fluid communication with the
rinse fluid dispenser, and a moveable rinse fluid valve member
disposed between the rinse fluid valve inlet and the rinse fluid
valve outlet; and a flush control unit adapted to control actuation
of the discharge valve member and rinse fluid valve member; in
which at least two of the discharge valve, rinse fluid valve, and
flush control unit are provided as a valve set forming a second
line replaceable unit, the method comprising:
replacing the first line replaceable unit with a new first line
replaceable unit independently of the toilet and the second line
replaceable unit or the second line replaceable unit with a new
second line replaceable unit independently of the toilet and the
first line replaceable unit.

C. LINE REPLACEABLE UNIT (LRU)
Claim 15 is directed to a method of servicing a vacuum toilet that
includes a first and a second LRU. The first LRU includes a waste
receptacle, and the second LRU is a valve set comprised of at least two of
the discharge valve, rinse fluid valve, and the flush control unit (FCU).
1. Introduction
In the Petition, Petitioner advocated that the broadest reasonable
interpretation of an LRU as claimed should encompass both the District
Court’s claim construction (Ex. 1012) and the construction proffered by
Patent Owner in that litigation (Ex. 1010). Pet. 5–7. Patent Owner did not
disagree with Petitioner’s interpretation. Prelim. Resp. 7–8. In the Decision
to Institute, after considering these contentions, we preliminarily construed
LRU as claimed to be a component or group of components, less than the
whole vacuum toilet, that may be removed and replaced at the installation
IPR2014-01513
Patent 6,536,055 B2

24
site of the toilet, and the toilet may or may not be uninstalled during this
process. Inst. Dec. 7–12.
Petitioner agrees with our claim construction in the Institution
Decision. Pet. Reply 1. Patent Owner disagrees, and contends that an LRU
as claimed is:
a component or modular group of components of the vacuum
toilet assembly designed to be quickly and easily replaced at the
installation site of the toilet while the toilet remains installed, so
that the vehicle on which the toilet is installed need not be
removed from service.
PO Resp. 23. Patent Owner contends that the Board’s construction is
divorced from the specification and unreasonably broad. Id. at 11–17.
Patent Owner elaborates that the Board’s interpretation omits three
requirements of claim 15: (1) a limitation in terms of time or difficulty of
removal of a component, (2) a requirement that the toilet remains installed
during replacement of the LRU, and (3) a requirement that the LRU is
removed and replaced without removing the vehicle in which the toilet is
installed from revenue service. PO Resp. 12.
2. Claim Language
We begin by considering the language of the claim, and then, as we
must, we consider that language in view of the specification, all as would be
understood by a person of ordinary skill in the art.
Claim 15 is directed to a method of servicing a modular vacuum toilet
in which the toilet has a first LRU including a waste receptacle for receiving
waste, and a second LRU provided as a valve set including at least two of
the: discharge valve, rinse fluid valve, and flush control unit (FCU). The
method comprises either (1) replacing the first LRU with a new first LRU
IPR2014-01513
Patent 6,536,055 B2

25
independently of the toilet and the second LRU, or (2) replacing the second
LRU with a new second LRU independent of the toilet and the first LRU.
Claim 15 requires removing and replacing either first or the second
LRU independent of the toilet and the other LRU. Claim 15 does not recite
any time or difficulty aspect to these steps. Claim 15 does not recite that the
toilet remains installed during the steps. Claim 15 does not recite that the
vehicle containing the toilet remains in revenue service.22 Consequently,
Patent Owner’s interpretation is not supported by the language of claim 15.
See Arlington Indus., Inc. v. Bridgeport Fittings, Inc., 632 F.3d 1246, 1256
(Fed. Cir. 2011) (“the name of the game is the claim”) (quoting Giles S.
Rich, The Extent of the Protection and Interpretation of Claims–American
Perspectives, 21 Int’l Rev. Indus. Prop. & Copyright L. 497, 499, 501
(1990)).
3. Specification
As background, the Specification describes that “[a]ccording to
general practice in the airline industry, each sub-system includes one or
more components which must be replaced in the event of failure, such
replacement components being commonly referred to as line replaceable
units (LRUs).” Ex. 1001, 1:43–47. Prior to the ’055 patent, the entire toilet
was defined as an LRU, so that an entire replacement toilet was swapped in
for the faulty toilet, and the faulty toilet was given a “bench test” to
determine which components had failed, following which the faulty
components were repaired or replaced so that the toilet may be reused on
another aircraft. Id. at 1:39˗57. A consequence of this maintenance

22 In fact, the term “revenue service” is not found in the ’055 patent.
IPR2014-01513
Patent 6,536,055 B2

26
approach was that airlines had to stock one or more replacement toilets so
that a replacement toilet was ready to be swapped in for a faulty toilet. Id. at
1:45–48, 2:33–44.
In light of the Specification of the ’055 patent, a person of ordinary
skill in the art would recognize that an LRU as claimed incorporates two
concepts: one, where the replacement occurs, and two, that the component
replaced is something less than the entire toilet.
Regarding where the unit is replaced, as discussed above, in the prior
art the entire toilet was the line replaceable unit so that the entire faulty toilet
was removed and replaced on the line (at the aircraft) and components were
removed and replaced off the line. See id. at 1:35˗53 (referring to a “bench
test” of the faulty toilet, suggesting repair was in a maintenance facility
containing a bench). Consequently, an LRU is line replaceable in that it is
replaced on the line rather than elsewhere.
Regarding the replaced component being something less than the
entire toilet, the Specification describes that modular vacuum toilet 10
differs from conventional toilets in that “[i]nstead of defining the entire toilet
as an LRU, the toilet 10 defines individual components or groups of
components as LRUs.” Id. at 9:58–60. Accordingly, in the context of the
0’055 patent, an LRU is a component or group of components less than the
entire toilet.
Given this, the Specification describes an LRU as a component or
group of components, less than the entire toilet, that may be removed and
replaced at the installation site of the toilet.
In parity with claim 15, the Specification describes the claimed
method as “removing the faulty line replaceable unit from the toilet, and
IPR2014-01513
Patent 6,536,055 B2

27
installing a new line replaceable unit into the toilet.” Ex. 1001, 3:57–59.
The Specification does not state that the toilet remains installed during this
process, nor does the Specification state that the aircraft remains in revenue
status.
Our analysis to this point suggests that an LRU as claimed is a
component or group of components, less than the whole vacuum toilet, that
may be removed and replaced at the installation site of the toilet, and the
toilet may or may not be uninstalled during this process. We note that claim
15 also requires that the first LRU includes a waste receptacle and the
second LRU is a valve set comprised of at least two of the discharge valve,
rinse fluid valve, and the FCU.
We analyze this interpretation in light of Patent Owner’s argument and
evidence.
4. Patent Owner Arguments
As stated above, Patent Owner argues that the Board’s interpretation
omits three requirements of claim 15. PO Resp. 12. We analyze these
contentions in turn.
a) Time or Difficulty of Removal of a Component
Patent Owner contends that claim 15 requires that an LRU as claimed
is quickly and easily replaced. PO Resp. 12. For the reasons that follow,
this contention is not persuasive.
First, as explained above, there is no support in the language of claim
15 for such an interpretation. The method of claim 15 requires either (1)
replacing the first LRU with a new first LRU independently of the toilet and
the second LRU, or (2) replacing the second LRU with a new second LRU
IPR2014-01513
Patent 6,536,055 B2

28
independent of the toilet and the first LRU. Claim 15 does not recite that
such steps must be completed quickly or easily.
Second, Patent Owner contends that the ’055 patent “stresses” that the
claimed LRUs can be “quickly and easily replaced in the field.” Id. at 12–15
(citing for support to Ex. 1001, 1:29–41, 54–67, 2:11–36, 49–51, 9:57–65).
Indeed, the ’055 patent stresses that the claimed LRU’s may be quickly and
easily replaced as compared to the prior method of replacing the entire faulty
toilet and repairing components of the faulty toilet at a site other than the
installation site. See, e.g., Ex. 1001, 9:31–32, 56–65 (contrasting the
claimed toilet to conventional toilets, and stating that LRUs, such as valve
set 8, are individual components or groups of components that can be
“quickly removed” or “quickly and easily removed”); see also id. at 1:29–
41, 54–67, 2:11–36, 49–51 (highlighting that repair of conventional toilets
was difficult, time consuming, and complicated).
A person of ordinary skill in the art would understand that the ’055
patent does not describe that an LRU may be quickly and easily replaced.
Rather, the ’055 patent describes that a toilet that includes an LRU is quicker
and easier to maintain than a toilet without an LRU. Specifically, a toilet
that includes an LRU may be returned to a serviceable condition by
replacing less than the entire toilet and doing such replacement on the line.
In contrast, a faulty toilet without an LRU must be replaced with an entire
serviceable toilet (creating the need for stock toilets) and then the faulty
toilet must be repaired at a location other than on the line.
Further, stressing a benefit of a claimed apparatus or method in the
Specification does not incorporate that benefit into the claims. None of the
identified disclosures rise to the level of a lexicographical definition. See In
IPR2014-01513
Patent 6,536,055 B2

29
re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Nor do any of these
disclosures rise to the level of clear disavowal. See Epistar Corp. v. Int’l
Trade Comm’n, 566 F.3d 1321, 1335 (Fed. Cir. 2009) (mere criticism of a
particular embodiment encompassed in the plain meaning of a claim term is
not sufficient to rise to the level of clear disavowal).
Patent Owner contends that during prosecution, claim 15 was
amended to include the valve set LRU. PO Resp. 17 (citing “Ex. 1013,
9/3/02 Amendment, at 10–11”).23 Claim 15 (then claim 24) was amended to
specify the composition of the second LRU and to require the method to
include removing either the first or the second LRU. Ex. 1013, 95–96. The
change to the claim does not specify that the LRU must be changed quickly
or easily, and does not rise to the level of clear and unmistakable disclaimer.
See Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1325–26 (Fed. Cir.
2003).
Accepting Patent Owner’s interpretation that claim 15 requires quick
and easy replacement of the LRU would cast serious doubt on the scope of
claim 15. The terms “quickly” and “easily” are terms of degree, and the
’055 patent does not identify an objective standard for these terms. See
Seattle Box Co., Inc. v. Indus. Crating & Packing, Inc., 731 F.2d 818, 826
(Fed. Cir. 1984) (when a term of degree is used it is necessary to determine
whether there is some standard for measuring that degree); see also
Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1350 (Fed. Cir.
2005) (“Some objective standard must be provided in order to allow the
public to determine the scope of the claimed invention.”), abrogated on

23 Based on content, it appears Patent Owner is referencing pages 95–96 of
Ex. 1013.
IPR2014-01513
Patent 6,536,055 B2

30
other grounds by Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120
(2014). We made this point in our Institution Decision, and subsequently,
Patent Owner did not identify any such standard in the ’055 patent. See Inst.
Dec. 11; PO Resp. 12–18.
b) Installation of the Toilet
Patent Owner contends that the Board’s interpretation is incorrect in
that it does not require that the toilet remains installed during replacement of
the LRU. PO Resp. 12–18. Patent Owner presents several contentions in
support of this argument.
First, Patent Owner notes that during examination of what became the
’055 patent, the title was changed from “Modular Vacuum Toilet” to
“Modular Vacuum Toilet with Line Replaceable Units.”24 PO Resp. 13 n.2.
According to Patent Owner, this change suggests that the toilet remains
installed during replacement of the LRU. Id. The title change reflects that
the claimed toilet includes LRUs. The title change is silent regarding
whether the toilet remains installed during removal and replacement of an
LRU.
Second, Patent Owner asserts that the ’055 patent unambiguously
requires that the toilet remain installed during replacement of the LRU
because the patent includes a preferred embodiment of the toilet bowl that
includes manual release tabs, and a preferred embodiment of the valve set
includes hand-manipulated fasteners, such as knurled screws. PO Resp. 15
(citing Ex. 1001, 5:3–20, 39–64, 9:32–44; Figs. 1–4). Claim 15 does not
require that the toilet bowl be manually releasable because the embodiment

24 Although the challenged claims are all method claims, the ’055 patent
includes apparatus claims, such as independent claim 1.
IPR2014-01513
Patent 6,536,055 B2

31
that includes a toilet bowl having manual release tabs is found in dependent
claim 18. Similarly, the valve set of claim 15 is not required to include
knurled screws because the embodiment that includes a valve set having
knurled screws is found in dependent claim 28. Consequently, Patent
Owner’s argument is not commensurate in scope with claim 15. More
importantly, removal of an LRU without the use of tools is an independent
issue from whether the toilet remains installed during that process.
Somewhat relatedly, Patent Owner contends that the ’055 patent
describes that the toilet remains installed during replacement of valve set 8,
and our Institution Decision incorrectly determined otherwise. See PO Resp.
15–16 (citing Inst. Dec. 10). Patent Owner emphasizes that the ’055 patent
describes that “‘the valve set 8’ – like the toilet bowl [36] – ‘may be
separately removed from the toilet,’ while the rest of the toilet assembly
remains installed.” Id. at 16 (quoting Ex. 1001, 9:58–6025). That is, Patent
Owner interprets the disclosure that the valve set 8 may be “separately
removed from the toilet,” as meaning that the toilet remains installed while
valve set 8 is removed and replaced.
The ’055 patent does not state explicitly that the toilet remains
installed during replacement of bowl 36 or valve set 8. Rather, the
Specification describes that bowl 36, and similarly valve set 8, may be
“independently removed from toilet 10 and replaced.” Ex. 1001, 9:57–65.
The meaning of removing and replacing these components independent of
the toilet must be understood in view of the entire disclosure.

25 The cited portion is actually at 9:61–63.
IPR2014-01513
Patent 6,536,055 B2

32
The Specification describes that in the prior art, the entire toilet was
removed from the aircraft, and serviced elsewhere. Id. at 1:39–57.
Consequently, when the Specification describes that bowl 36 is an LRU, and
as a result, the entire toilet need not be removed and serviced, a person of
ordinary skill in the art would understand that bowl 36 may be removed and
replaced without the need for removing toilet 10 from the aircraft for
maintenance elsewhere. Id. at 5:39–50.
Also relatedly, Patent Owner emphasizes that only piping connections
between valve set 8 and the drain, sewer, and rinse water piping need be
undone to remove valve set 8, illustrating that the toilet remains installed
during the process of replacing valve set 8. PO Resp. 16 (citing Ex. 1001,
9:38–53). In other words, Patent Owner, contends that the specified piping
connections are the only thing attached to valve set 8. Not so. Valve set 8 is
also attached to bracket 27 by fasteners, such as knurled screws 37. Ex.
1001, 5:54–57, 9:38–41, Fig. 1; see also Tr. 97–98 (Patent Owner
acknowledging that the knurled26 screws must be removed to remove valve
set 8). More importantly, Patent Owner’s focus on how valve set 8 is
attached to the toilet is misplaced. The proper inquiry is whether the toilet
remains installed during removal of valve set 8, and as explained above, the
Specification does not describe that the toilet remains installed. Rather, the
Specification describes that the toilet need not be taken elsewhere for
replacement of the LRU (e.g., valve set 8).

26 The Transcript mistakenly refers to the knurled screws as “neural
screws.”
IPR2014-01513
Patent 6,536,055 B2

33
c) Understanding of a Person of Ordinary Skill in the Art
Patent Owner provides evidence in support of how a person of
ordinary skill in the art would have understood the term LRU. PO Resp. 18–
23. This evidence relates to all three of the limitations Patent Owner
contends are missing from our interpretation.
Patent Owner contends that a person of ordinary skill in the art would
have understood that the LRU’s of the ’055 patent permitted vehicles such as
aircraft to be repaired without being removed from revenue service. PO
Resp. 18 (citing Ex. 2021 ¶ 15; Ex. 2022 ¶ 23). The cited portion of the
Anderson Declaration cited merely states what the ’055 patent describes and
does not provide evidence of how a person of ordinary skill in the art
understood the term LRU. Ex. 2021 ¶ 15. The cited portion of the Jones
Declaration states that LRUs as claimed made it possible to replace a toilet
bowl or valve set during a flight turn. See Ex. 2022 ¶ 23; see also ¶ 24
((“‘Flight turn,’ refers to the short period of time when an aircraft arrives at a
gate in an airport terminal to offload and load passengers and cargo and
perform the reverse operation – loading new passengers and additional cargo
before being pushed from the gate and returning to the air.”). Even if the
claimed LRU’s permitted removing and replacing an LRU during a flight
turn, that does not mean that such is required by the claims.
Patent Owner cites to several definitions of LRU’s in support of their
claim construction argument. First, According to Patent Owner, Aviation
Maintenance Management, a 2004 publication with which a person of
ordinary skill would have been familiar, explains that an LRU is
a component or system that has been designed in such a manner
that the parts that most commonly [f]ail can be quickly removed
and replaced on the vehicle. This allows the vehicle to be
IPR2014-01513
Patent 6,536,055 B2

34
returned to the scheduled service without undue delay for
maintenance.
PO Resp. 20–21 (emphasis omitted) (citing Ex. 2038 ¶ 16).27
Second, the FAA defines an LRU as
Line Replacement Unit. A unit that can be replaced by line
maintenance personnel without removing the aircraft from
service for an extended period.
PO Resp. 21 (citing Ex. 2022 ¶ 21).28 According to Patent Owner,
Mr. Jones’s understanding is consistent with the FAA definition. PO Resp.
20; Ex. 2022 ¶ 21.
Third, according to Patent Owner, another government publication
provides that a Line Replaceable Unit is
An item which may consist of a unit, an assembly . . ., a
subassembly, or a part that, upon its failure, is removed and
replaced at the site maintenance level in order to restore the
system/equipment to its operational status.
PO Resp. 21–22 (citing Ex. 2050, emphasis Patent Owner’s).
Fourth, Patent Owner notes that two appeals before the Armed
Services Board of Contract Appeals (ASBCA) have addressed LRU’s,
explaining that an LRU is “individually removable and replaceable” and
“can be replaced easily on the aircraft on the flight line.” PO Resp. 22
(emphasis omitted) (citing Exs. 2051, 2052).
For the reasons that follow, Patent Owner’s evidence does not provide
persuasive support for including any of the three limitations that Patent

27 Apparently Exhibit 2024 ¶ 16 is the citation intended, quoting from
Exhibit 2048, 20.
28 Exhibit 2022 cites to an FAA Advisory Circular at Exhibit 2049,
Appendix A, page 32, which is page 67 of that Exhibit.
IPR2014-01513
Patent 6,536,055 B2

35
Owner seeks to read into claim 15. Regarding whether removing and
replacing the LRU must be quick and easy, Aviation Maintenance
Management states it must be quick, the FAA and other government
publication do not state that it must be quick or easy, and the ASBCA cases
state it must be easy.
Regarding whether the toilet must remain installed during removing
and replacing the LRU, the other government publication and the ASBCA
cases indicate that the LRU must be serviced on the line, but uninstalling of
the toilet is a different issue from performing the LRU replacement on the
line. None of the evidence cited by Patent Owner explicitly states that the
toilet must remain installed during removal and replacement of the LRU.
Regarding revenue service, none of the evidence cited states that the
vehicle on which the toilet is installed must remain in revenue status. The
other government publication and the ASCBA cases are silent on the issue.
The FAA definition states the aircraft is not removed for “an extended
period,”29 and Aviation Maintenance Management states that the aircraft is
returned to service “without undue delay.”
The Jones Declaration represents a further inconsistency. Specifically,
Mr. Jones contend that the aircraft is not removed from revenue service, and
that FAA regulations apply to revenue service of commercial airlines. See
PO Resp. 20; Ex. 2022 ¶ 21. Yet, Mr. Jones contends the aircraft may not be
removed from service while the FAA definition implies that the aircraft may
be removed from revenue service for less than an extended period. Compare
Ex. 2022 ¶¶ 21–22, with Ex. 2049, 67.

29 This definition implies that the aircraft may be removed from service for
something less than an extended period.
IPR2014-01513
Patent 6,536,055 B2

36
Patent Owner has not persuaded us that a person of ordinary skill in
the art understood an LRU to require any of the three limitations Patent
Owner seeks to read into claim 15 (i.e., quick and easy, toilet remains
installed, vehicle remains in revenue status).
Accepting Patent Owner’s interpretation that claim 15 requires the
LRU to be removed and replaced without removing the aircraft from
revenue status would cast serious doubt on the scope of claim 15. Patent
Owner contends that the requirement to remove and replace the LRU
without removing the vehicle on which the toilet is installed from revenue
service means removing and replacing the LRU during the typical turn time
of an aircraft. Tr. 59:16–21, 62:5–12; see also Ex. 2022 ¶ 24 (“‘Flight turn,’
refers to the short period of time when an aircraft arrives at a gate in an
airport terminal to offload and load passengers and cargo and perform the
reverse operation – loading new passengers and additional cargo before
being pushed from the gate and returning to the air.”). However, turn time
varies by airline, and consequently the time to complete a repair while in
revenue status would vary as well. Id. Thus, if we accept Patent Owner’s
claim construction, the time permitted to remove and replace the LRU would
be unclear.
d) Summary of Patent Owner’s Arguments
The three limitations that Patent Owner seeks to read into claim 15
find no support in the language of claim 15. None of the disclosures of the
’055 patent rise to the level of a lexicographical definition, nor has Patent
Owner persuaded us there has been a disavowal of claim scope. Patent
Owner’s extrinsic evidence is inconsistent and otherwise not persuasive.
Further, the limitations Patent Owner seeks to add likely would cast serious
IPR2014-01513
Patent 6,536,055 B2

37
doubt on the proper scope of the claims. Patent Owner has not persuaded us
that our claim interpretation is incorrect.
5. Conclusion
An LRU is a component or group of components, less than the entire
vacuum toilet, that may be removed and replaced at the installation site of
the toilet, and the toilet may or may not be uninstalled during this process.30

D. RINSE FLUID DISPENSER
Claim 15 is directed to a method of servicing a vacuum toilet that
includes a “rinse fluid dispenser.”
In the Decision to Institute we determined that a rinse fluid dispenser
as claimed may take the form of nozzles (e.g., nozzles 46) or known
substitutes such as spray rings. See Inst. Dec. 12; Pet. 7; Ex. 1001, 5:23˗25.
Neither party contests this interpretation, and we adopt it here.

IV. PATENTABILITY31
A. INTRODUCTION
A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
differences between the claimed subject matter and the prior art are such that
the subject matter, as a whole, would have been obvious at the time the

30 Claim 15 also requires that the first LRU includes a waste receptacle and
the second LRU is a valve set comprised of at least two of the discharge
valve, rinse fluid valve, and the FCU.
31 In this analysis, we consider the Dershowitz Declaration (Ex. 1030).
Despite Dr. Dershowitz’s lack of hands-on experience servicing vacuum
toilets, his expertise, as discussed in the analysis of Patent Owner’s Motion
to Exclude Evidence, above, provides for useful explanations.
IPR2014-01513
Patent 6,536,055 B2

38
invention was made to a person having ordinary skill in the art to which said
subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
(2) any differences between the claimed subject matter and the prior art;
(3) the level of ordinary skill in the art; and (4) objective evidence of
nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
We consider Patent Owner to have admitted those aspects of these
grounds of unpatentability that are uncontested by Patent Owner and are
material facts. See 37 C.F.R. § 42.23(a) (in an opposition, any material fact
not specifically denied may be considered admitted), § 42.120(a) (the patent
owner response is an opposition).

B. OBVIOUSNESS OVER OLIN
CLAIMS 15, 16, 20, 21, AND 24–26
Olin is titled “vacuum toilet unit,” and discloses a vacuum toilet
having an outer shell that enclose a toilet bowl, and operating means for
toilet function. Ex. 1021, [54], 1:53–56; Figs. 1, 4. A substantial portion of
the shell is removable to allow service access to the bowl and operating
means. Id. at 1:56–60.
Petitioner explains how Olin’s toilet includes a first and second LRU
and may be served by the method required by claim 15, and alternatively
explains how it would have been obvious to modify Olin’s toilet to be
configured and serviceable as required by claim 15. See Pet. 11–19;
Dershowitz Decl., Ex. 1030 ¶¶ 87–113. In particular, Petitioner explains that
Olin’s toilet includes a discharge valve (sewer valve 4), rinse fluid valve
IPR2014-01513
Patent 6,536,055 B2

39
(water dosing device 5), and FCU (flush control unit 6) provided as a valve
set (“devices 4, 5, 6”), that correspond to a second LRU as claimed.32 Pet.
11˗13. Petitioner explains that Olin’s bowl 1 corresponds to a first LRU as
claimed because it may be removed independent of the toilet and the second
LRU, or alternatively it would have been obvious to modify Olin so that it
may be so removed. Pet. 13. Petitioner does not contend that Olin’s first
LRU (valve set) may be removed and replaced independent of the toilet and
the second LRU; however, claim 15 requires either replacing the first LRU
independent of the second, or replacing the second LRU independent of the
first.
We evaluate this ground of unpatentability further by analyzing Patent
Owner’s contentions and evidence of secondary considerations.
1. Claim 15
a) Olin’s Waste Receptacle is a First LRU
Patent Owner argues that Olin’s waste receptacle is not designed as an
LRU that is replaceable independently of the toilet and second LRU. PO
Resp. 26. Specifically, Patent Owner characterizes Olin’s bowl as
permanently or firmly locked in place, and contends that removing and
replacing Olin’s bowl would require several actions (e.g., removing
caulking). Id. at 26–28. In particular, Patent Owner contends that Olin’s
disclosure that the bowl “does not normally need to be removed from the
supporting part of the shell” suggests to a person of ordinary skill in the art
that the bowl is permanently attached. Id. at 28. Based on this, Patent
Owner argues that Olin’s bowl cannot be replaced “without removing the

32 Parentheticals are Olin’s nomenclature.
IPR2014-01513
Patent 6,536,055 B2

40
toilet from its installation site and taking the vehicle on which it was
installed out of revenue service,” and that Olin teaches away from a toilet
bowl that may be replaced while the toilet assembly remains installed and
while the vehicle remains in revenue service. PO Resp. 27–29.
Even accepting for sake of argument that removal of Olin’s bowl is
difficult, Patent Owner’s argument is unpersuasive because, as detailed in
our claim construction above, claim 15 does not require that: (1) replacing
the LRU is quick and easy, (2) the LRU may be replaced without
uninstalling the toilet, (3) the LRU may be removed and replaced without
removing the vehicle on which the toilet is installed from revenue service.
Consequently, Patent Owner’s argument is not commensurate in scope with
claim 15. See Pet. Reply 10.
Regarding teaching away, Patent Owner does not identify, nor do we
discern, any disclosure in Olin that criticizes, discredits, or otherwise
discourages configuring a toilet bowl to be replaceable in the field. See In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). To the contrary, Olin
disclosures that the discharge valve (sewer valve 4), rinse fluid valve (water
dosing device 5), and FCU (flush control unit 6) are all readily accessible
and may be removed or serviced in place, suggesting the desirability of
replacement in the field. See Pet. 12 (citing Ex. 1021, 4:42–46 (devices 4, 5,
and 6 may be serviced in place)); see also Pet. Reply 13 (quoting Ex. 1021,
5:20–22 (removing shell 2 permits access to interior elements for service)).
We disagree with Patent Owner’s characterization that Olin’s bowl is
permanently locked in place. See PO Resp. 26–29. Olin discloses that a
vacuum toilet having a shell with a lower part that supports the bowl, and an
upper part that is removable without influence on that support. Ex. 1021,
IPR2014-01513
Patent 6,536,055 B2

41
1:53–62, 2:33–36, 49–51; Pet. 14; Ex. 1030 ¶¶ 95–96. The bowl and lower
part of the shell “can be locked to one another by gluing or by attachment
members, because the toilet bowl does not normally need to be removed
from the supporting part of the shell.” Ex. 1021, 2:49–53.
Regarding this disclosure, Patent Owner contends that a person of
ordinary skill would understand that Olin’s bowl is not designed to be
removable. PO Resp. 28 (citing Anderson Decl., Ex. 2021 ¶ 22). The cited
portion of the Anderson Declaration does not support Patent Owner’s
contention. Specifically, Dr. Anderson asserts that it would be “very difficult
to remove and replace the bowl since the bowl is glued, welded, or otherwise
permanently adhered to the shell,” and Dr. Anderson adds that removal
would be further complicated by plumbing and electrical lines. Ex. 2021
¶ 22. In light of this, Dr. Anderson does not state that Olin’s bowl cannot be
removed; rather, Dr. Anderson states that removal would be difficult. As
explained above, claim 15 does not require that removal of the LRU is easy.
Further, Dr. Anderson does not provide the underlying facts or data for
the opinion that Olin’s explicit disclosure of attaching the bowl by “gluing or
by attachment members,” would be understood as attachment that is “glued,
welded, or otherwise permanently adhered to the shell.” Compare Ex. 1021,
2:49–53, with Anderson Decl., Ex. 2021 ¶ 22; 37 C.F.R. § 42.65(a); see also
Anderson Depo., Ex. 1047, 133:3–15 (acknowledging that attachment
members permit removal and that use of the word “normally” suggests the
bowl may be removed sometimes). In that regard, we are not persuaded that
Olin’s disclosure is limited to permanent attachment of the bowl to the
exclusion of an attachment configuration that would be understood as non-
permanent.
IPR2014-01513
Patent 6,536,055 B2

42
Even if Olin’s bowl is not removable at the installation site
independent of the toilet and the first LRU, Patent Owner only addresses
what Olin discloses, and ignores that Petitioner alternatively proposes to
modify Olin’s bowl so that it is so removable. See Pet. 13 (citing Ex. 1021,
2:42–47). We agree that Olin suggests the desirability of removing and
replacing components to facilitate maintenance, and for that reason it would
have been obvious to apply the same principle to the bowl. See Ex. 1021,
2:42–47; see also Pet. Reply 12–13 (explaining that Olin’s devices 4, 5, and
6 may be serviced in place and that Olin’s shell is removable to permit
access for service).
b) Olin’s Discharge Valve, Rinse Valve and FCU are a
Second LRU
As explained above, Petitioner contends that Olin’s toilet includes a
discharge valve (sewer valve 4), rinse fluid valve (water dosing device 5),
and FCU (flush control unit 6) provided as a valve set (“devices 4, 5, 6”),
that correspond to a second LRU as claimed. Pet. 11˗13. Petitioner
correctly observes that these components (sewer valve 4, water dosing
device 5, and FCU) are all mounted on base plate 22, in the form of a single
assembly block. Pet 12, 17–18; Ex. 1021, 3:10–15, Fig. 4; see also Ex.
1021, 1:63–66, 3:25–29, 4:42–46 (regarding accessibility of 4, 5 and 6); Ex.
1030 ¶¶ 107–109 (analysis consistent with Petitioner’s interpretation). In
light of this, devices 4, 5, and 6 are removable together at the installation site
of the toilet independently of the toilet, and thus correspond to a second
LRU as claimed.
Patent Owner contends that Olin’s valve components (devices 4, 5,
and 6) do not form a valve set that corresponds to a second LRU as claimed
because these components may not be “easily and quickly removed and
IPR2014-01513
Patent 6,536,055 B2

43
replaced . . . without requiring that the vehicle on which the toilet is installed
be removed from revenue service.” PO Resp. 29–30. Patent Owner
elaborates that removal of devices 4, 5, and 6 requires numerous difficult
steps, and is not feasible. PO Resp. 30–33 (citing Ex. 2021 ¶ 21; Ex. 1021,
Figs. 2–4).
As in the previous line of argument, Patent Owner’s argument is
unpersuasive because it is not commensurate in scope with claim 15, which
does not require that: (1) replacing the LRU is quick and easy, (2) the LRU
may be replaced without uninstalling the toilet, (3) the LRU may be
removed and replaced without removing the vehicle on which the toilet is
installed from revenue service.
In the portion of the Declaration cited by Patent Owner, Dr. Anderson
asserts that Olin’s devices 4, 5, and 6 are not LRUs as claimed because of
the difficulty in removing and replacing these components. Ex. 2021 ¶ 21.
Consequently, Dr. Anderson’ opinion is not persuasive because it is based
upon the same erroneous claim interpretation put forth by Patent Owner.
c) Secondary Considerations
Patent Owner contends that the nonobviousness of the claimed
methods is demonstrated by secondary considerations, namely, that the
claimed methods: (1) satisfied a long-felt and unmet need for improved
methods of servicing vacuum toilets, (2) received industry praise, and (3)
were commercially successful. PO Resp. 43–49.
(1) Satisfaction of Long-felt need
Patent Owner contends that “[a]t the time of the invention of the ’055
Patent, vacuum toilets, particularly on aircraft, did not include a toilet bowl,
rinse valve, discharge valve, and/or FCU that could be quickly and easily
IPR2014-01513
Patent 6,536,055 B2

44
replaced in the field while the toilet assembly remained installed.” PO Resp.
45 (citing Anderson Decl., Ex. 2021 ¶¶ 15, 16, 18; Jones Decl., Ex. 2022
¶ 25). Patent Owner elaborates that in the prior art, the entire toilet was
uninstalled and removed from the aircraft, removing the aircraft from
revenue service. Id. Patent Owner contends that the claimed methods
“finally made it possible for maintenance persons and airlines to service
vacuum toilets without requiring that the aircraft be removed from revenue
service.” Id. at 45–46.
This evidence is deficient in at least three respects. First, it states only
that there was a need at the time of the invention. It does not allege, let
alone show, that an art recognized problem existed for a long period of time
without solution.33 See Newell Cos. v. Kenney Mfg. Co., 864 F. 2d 757, 768
(Fed. Cir. 1988).
Second, this evidence it does not address the extent of the problem, or
attempts by others to solve the problem. See In re Allen, 324 F.2d 993, 997
(CCPA 1963) (an allegation of failure by others is not evidence of
nonobviousness unless it is shown that widespread efforts of skilled workers
having knowledge of the prior art had failed to find a solution to the
problem).
Third, this evidence lacks nexus to the claimed subject matter in that
the claims do not require that aircraft remain in revenue service during
replacement of an LRU. See Ashland Oil, Inc. v. Delta Resins &

33 Similarly, the ’055 patent states that there was a need for a vacuum toilet
that is easier to maintain and reduces the number of stock parts required (Ex.
1001, 2:36˗40), but the ’055 patent does not address how long this need
existed.
IPR2014-01513
Patent 6,536,055 B2

45
Refractories, Inc., 776 F.2d 281, 305 n.42 (Fed. Cir. 1985), cert. denied, 475
U.S. 1017 (1986).
(2) Industry Praise
Patent Owner contends that praise specifically related to features of
the patented invention is probative of the nonobviousness of an invention.
PO Resp. 46–47 (citing Power-One, Inc. v. Artesyn Techs., Inc., 599 F.3d
1343, 1352 (Fed. Cir. 2010)). Patent Owner identifies two sources of such
praise: one, an April 2015 story on Skift, a travel and airline industry
website, and two, praise from Petitioner as a competitor.
The Skift article is titled, “The Airline Toilet That is Set to
Revolutionize In-Flight Relief.” Ex. 2025, 1. The article describes that
traditional toilets had to be replaced as an entire unit, and had a right or left
hand pipe version so that airlines had to stock both versions of the toilet. Id.
at 2; see also Ex. 1001, 2:44–48. The Revolution toilet includes a number of
interchangeable sub-assembly parts, and a reversible pipe, permitting
airlines to stock sub-assemblies rather than entire toilets, and to quickly
replace faulty parts. Ex. 2025, 2. The article goes on to state that “[t]he
very best part” of the Revolution toilet is that the bowl is made of a new
composite that is lighter and yet has the lubricity of Teflon. Id. at 3.
Patent Owner states, but provides no evidence, that the Revolution
toilet is the toilet of the ’055 patent. See PO Resp. 46–47; In re Pearson,
494 F.2d 1399, 1405 (CCPA 1974) (attorney’s arguments do not take the
place of evidence). The article provides some praise that can be tied to
claimed features, like the ability to stock sub-assemblies rather than entire
toilets. However, other praise is not tied to claimed features (e.g., the
reversible pipe). Further, the praise for claimed features should be
IPR2014-01513
Patent 6,536,055 B2

46
considered in the context that the article explicitly describes the bowl’s
composition, an unclaimed feature, as the very best part of the toilet. See
Ex. 2025, 3.
According to Patent Owner, Petitioner developed a vacuum toilet that
includes modular LRU’s based on the invention from Patent Owner and
Patent Owner’s predecessor, Evac, and therefore the praise for Petitioner’s
toilets, is actually praise for the claimed subject matter. PO Resp. 47; Ex.
202434 ¶¶ 17–18 (citing Ex. 2020). For the reasons that follow, this
evidence does not demonstrate effectively praise for the claimed subject
matter.
The portion of Exhibit 2020 cited by Mr. Meyers includes the
following statements:
2001-Envirovac Begins Development of Advanced Technology
toilet – E-max
2007-B/E [Petitioner] Enters Market; resurrects Advanced
Technology35
In this context, Petitioner’s use of the phrase “Advanced Technology” seems
to be the name of the toilet rather than a comment that the technology of the
toilet is advanced.
This evidence also does not demonstrate effectively a nexus to the
claimed subject matter. For example, Mr. Meyers simply refers to LRUs in
general while the claimed subject matter relates to a first and second LRU in
the form of a waste receptacle and a valve set formed of at least two

34 Exhibit 2024 includes two versions of the Meyers Declaration: redacted
and unredacted.
35 See Ex. 2020, “BE-MAG-001-00103175,” also labeled “Page 3.”
IPR2014-01513
Patent 6,536,055 B2

47
specified components. See Ex. 2024 ¶ 17. From this information, Patent
Owner has not established persuasively that Petitioner’s LRUs are in fact
LRU’s as claimed.
Although Patent Owner has identified some praise of the claimed
subject matter, Patent Owner has not effectively shown that the praise
specifically relates to features of the patented invention. See Power-One,
599 F.3d at 1352.
(3) Commercial Success
Patent Owner contends that the commercial success of the
Revolution™ toilet is further evidence of the nonobviousness of the claimed
subject matter. PO Resp. 47–49. Patent Owner provides evidence that 103
units were sold in 2014. Id. at 48; Conrad Decl., Ex. 2055 ¶¶ 1, 5. Patent
Owner also provides projections of sales, to include projections of market
share. PO Resp. 48. According to Mr. Conrad, “[s]ales of the Revolution™
toilet are driven in large part by the very high reliability and simplicity of
maintenance of the toilet which is a function of the design and how easily
and quickly the modular components of the Revolution™ toilet can be
replaced ‘on wing.’” Ex. 2055 ¶ 7; PO Resp. 48. Patent Owner provides
evidence that Petitioner’s toilets that include the claimed LRUs moved
Petitioner’s market share for water and waste systems from zero percent in
2008 to a projected four percent by the year 2020, growth that Mr. Conrad
contends the aircraft supplier industry would consider “astounding.” PO
Resp. 48–49; Ex. 2055 ¶ 9.
This evidence is unpersuasive for several reasons. First, Patent Owner
has not provided persuasive evidence of market share. Without market share
information, the 103 units sold in 2014 cannot be put in perspective. See In
IPR2014-01513
Patent 6,536,055 B2

48
re Applied Materials, Inc., 692 F.3d 1289, 1299 (Fed. Cir. 2012) (even the
number of units sold, without market share information, is only weak
evidence, if any, of commercial success). The projections of Patent Owner’s
sales and Petitioner’s sales are only estimates of future activity and do not
show persuasively the actual commercial success of the claimed subject
matter. Further, the projections regarding sales of Petitioner’s toilets speak
in terms of the “water and waste systems market for commercial aircraft”
and it is unclear what portion of this market is attributable to vacuum toilets.
See Ex. 2055 ¶ 9.
Second, Patent provides evidence of sales of Revolution™ toilets and
Petitioner’s toilets, but in both cases, Patent Owner does not explain
persuasively how the sales are tied to claimed features. See PO Resp. 47–
49; Ex. 2055 ¶¶ 5, 6, 9; Ex. 2024 ¶¶ 18–19. That is, Patent Owner has not
shown that either the Revolution™ toilet or Petitioner’s toilet(s) include
claimed features. See PPC Broadband, Inc. v. Corning Optical
Communications RF, LLC, No. 2015–1361, 2016 WL 692368, at *8 (Fed.
Cir. Feb. 22, 2016). In fact, Patent Owner’s evidence attributes sales to
unclaimed features (e.g., reliability, simplicity of maintenance, and the ease
and speed with which modular components may be replaced “on wing”).
Ex. 2055 ¶ 7; Applied Materials, 692 F.3d at 1299–1300 (sales must be a
direct result of the unique characteristics of the invention, and not a result of
economic and commercial factors unrelated to the quality of the patented
subject matter). Because Patent Owner’s evidence does not show that either
the Revolution toilets or Petitioner’s toilets are the toilets disclosed in the
’055 patent, we do not presume the commercial success is of these products
is due to the patented invention.
IPR2014-01513
Patent 6,536,055 B2

49
(4) Summary of Secondary Considerations
Patent Owner provides some evidence of a need at the time of
invention, but does not show persuasively that the need was long-felt. This
weak evidence of need is further undermined by the absence of a nexus to
the claimed subject matter. Patent Owner shows some praise for the
Revolution toilet and praise by Petitioner of Petitioner’s toilets, but this
evidence is not persuasive because of a lack of nexus to the claimed subject
matter. Patent Owner’s evidence of commercial success does not
demonstrate persuasively market share, and is not tied to claimed features.
d) Conclusion for claim 15
We have considered the entirety of the evidence, to include the
evidence of secondary considerations. The weak evidence of secondary
considerations does not outweigh the strong case for obviousness of claim
15 based on our analysis of the prior art. analyzed above. We conclude that
Petitioner has demonstrated by a preponderance of the evidence that claim
15 is unpatentable for obviousness under 35 U.S.C. § 103(a) over Olin.
As mentioned in our analysis of Patent Owner’s Motion to Exclude
Evidence, a key factual basis of Patent Owner’s secondary considerations is
the contention that at the time of the invention of the ’055 Patent, vacuum
toilets, particularly on aircraft, did not include a toilet bowl, rinse valve,
discharge valve, and/or FCU that could be replaced in the field while the
toilet assembly remained installed. See, e.g., PO Resp. 44–45.
Petitioner provides copies of Patent Owner’s SBs that indicate that,
prior to the time of the ’055 patent invention, it was possible to remove and
replace components of a vacuum toilet installed in an aircraft, such as a rinse
valve, without removing the toilet from the aircraft. See Ex. 1069 ¶ 92; Ex.
IPR2014-01513
Patent 6,536,055 B2

50
1061, 1–2. This evidence undermines Patent Owner’s secondary
considerations. We emphasize that even without Petitioner’s evidence,
Patent Owner’s secondary considerations did not alter our conclusion of
obvious.
2. Claims 16, 20, 21, and 24–26
Patent Owner only argues for independent claim 15 and provides no
additional arguments for dependent claims 16, 20, 21, and 24–26.36
Claim 16 depends from claim 15 and recites “in which the vacuum
toilet comprises a stationary support structure, and in which the waste
receptacle is adapted to releasably engage the support structure.” As
explained above, Olin’s waste receptacle (bowl 1) releasably engages the
lower portion of the shell. See Pet. 19.
Claim 20 depends from claim 13 and recites, “in which a rinse fluid
pipe communicates between the rinse fluid valve outlet and the rinse fluid
dispenser, wherein the rinse fluid pipe is releasably attached to the rinse
fluid dispenser with a coupling.” Claim 21 depends from claim 20 and
recites, “in which the coupling is manually releasable.”
An annotated version of Olin’s Figure 4 follows.

36 Consequently, Patent Owner has admitted the material facts of the ground
of unpatentability regarding these claims. See 37 C.F.R. §§ 42.23(a),
42.120(a).
IPR2014-01513
Patent 6,536,055 B2

51

This annotated version of Olin’s Figure 4 is a perspective exploded
view, and shows that Olin discloses a rinse fluid pipe (flexible hose) that that
communicates between the rinse fluid outlet (dosing device outlet) and the
rinse fluid dispenser (tubing leading to the nozzles 15), and which is
manually/releasably attached to a coupling—in this case a nipple on the back
end of the bowl. See Pet. 19–20; Ex. 1021, 3:62–63; Fig. 4; Ex. 1030
¶¶ 121–126.
Claim 24 depends from claim 15 and recites, “in which a rinse fluid
line communicates between the rinse fluid valve inlet and the source of rinse
fluid, wherein the rinse fluid valve inlet is releasably connected to the rinse
fluid line with a coupling.” Claim 25 depends from claim 24 and recites, “in
which the coupling is manually releasable.”
Olin’s Figures 1–3 show rinse fluid line 8 that communicates between
the rinse fluid valve inlet and the source of rinse fluid in a non-connected
state, indicating that it is releasably connected. Ex. 1021, Figs. 1–3; Pet. 20.
Given that toilets need to be replaced on aircraft and other vehicles from
IPR2014-01513
Patent 6,536,055 B2

52
time to time, it would have been obvious to modify the rinse fluid line to be
manually releasable. Pet. 20; Dershowitz Decl., Ex. 1030 ¶¶ 127–130.
Claim 26 depends from claim 15 and recites, “which a discharge pipe
communicates between the discharge valve outlet and the sewer line,
wherein the discharge pipe is adapted for releasable connection to the sewer
line.” A person of ordinary skill in the art would recognize that Olin’s
discharge pipe (short pipe 7) is adapted for releasable connection and which
connects to a vacuum sewer. Pet. 20–21; Ex. 1021, 4:25–27; Ex. 1030
¶¶ 131–132.
Patent Owner’s weak evidence of secondary considerations does not
outweigh the strong case for obviousness of these claims based on our
analysis of the prior art. We conclude that Petitioner has demonstrated by a
preponderance of the evidence that claims 16, 20, 21, and 24–26 are
unpatentable for obviousness under 35 U.S.C. § 103(a) over Olin.

C. OBVIOUSNESS OVER OLIN AND KENDALL
CLAIMS 15, 16, 20, 21, AND 24–26
Petitioner relies upon Olin as discussed in the previous ground of
unpatentability except that Petitioner proposes to modify Olin’s floor
mounted toilet to incorporate a floor mounted support structure that cradles
the bowl, such as disclosed by Kendall (Ex. 1020). Pet. 29–30.
Kendall (Ex. 1020) discloses a toilet assembly that includes a waste
receptacle (basin 1) having flanges 3 for securing to a frame (cradle like
support means 30). Pet. 30–32; Ex. 1020, 4:21–25, 5:10–17, 21–25, Fig. 1;
Ex. 1030 ¶¶ 155. Kendall’s frame includes at least two vertical supports
(spaced apart support walls 32A, 32B) and a top member (top section 33)
IPR2014-01513
Patent 6,536,055 B2

53
that defines an opening and includes a receptacle engaging portion (pins 33A
or attachment bolts). Pet. 30–32; Ex. 1020, 5:10–15, 5:66–6:9, Fig. 1; Ex.
1030 ¶¶ 153–154, 169.
Petitioner reasons that Olin’s disclosure of a floor mounted rather than
wall mounted toilet is an express suggestion to incorporate a structure such
as Kendall’s. Pet. 29–30 (referring to Ex. 1021, 4:30–40); Ex. 1030 ¶¶ 160–
171 (providing details of how Kendall discloses a structure that provides the
means to carry out Olin’s suggestion). Petitioner also reasons that the
modification will provide a bowl that is detachable for service. Pet. 30.
We are persuaded that Petitioner’s contentions are supported
adequately by the evidence, and we evaluate this ground of unpatentability
further by analyzing Patent Owner’s contentions and evidence of secondary
considerations.
1. Claim 15
a) Kendall is Analogous Art
Patent Owner contends that a person of ordinary skill in the art would
not have considered Kendall because Kendall’s toilet differs from a vacuum
toilet in several respects, including that it: is not used in vehicles, has a
different structure, and does not have precision components or exacting
weight and dimension requirements. PO Resp. 33–36.
Petitioner contends, and we agree, that Kendall generally relates to
toilets, just as the toilet of the ’055 patent does. Pet. Reply 17; Ex. 1001,
1:9–10 (describing the field of invention as generally relating to toilets).
Petitioner contends, and we agree, that Kendall relates to the problem
faced by Patent Owner in that Kendall discloses the ability to repair
components in place, and ease of access for repairs, concepts applicable to
IPR2014-01513
Patent 6,536,055 B2

54
LRUs. See Pet. Reply 14–15, 17–18; Ex. 1020, 2:9–12, 30–41, 54–55,
3:53–56; Dershowitz Reply Decl., Ex. 1068 ¶¶ 75, 103; see also Ex. 1001,
14–15 (describing that vacuum toilets have both vehicle and stationary
applications).
Consequently, Kendall logically would have commended itself to the
problem facing the inventor of the ’055 patent. See Scientific Plastic
Products, Inc. v. Biotage AB, 766 F.3d 1355 (Fed. Cir. 2014); see also In re
ICON Health & Fitness, Inc., 496 F.3d 1374, 1379–80 (Fed. Cir. 2007)
(holding that a reference may be reasonably pertinent as analogous art where
the matter it deals with logically would have commended itself to the
inventor’s attention).
b) Olin Discloses a Second LRU
Patent Owner repeats the argument that Olin does not describe a valve
set corresponding to a second LRU as claimed. PO Resp. 36–37. Our
analysis of this contention in the previous ground of unpatentability is
equally applicable here.
c) Obviousness and Rationale
Patent Owner argues that importing Kendall’s support structure into
Olin’s toilet would have made it more difficult to replace the bowl and
would not have made the bowl a first LRU as claimed. PO Resp. 37–39
(citing Anderson Decl., Ex. 2021 ¶¶ 33–34).
This argument is unpersuasive for two primary reasons. First, to the
extent that Patent Owner argues that removing the bowl of the proposed
combination would be difficult, such a contention is not commensurate in
scope with claim 15. Claim 15 does not include a requirement that
removing and replacing the bowl is easy.
IPR2014-01513
Patent 6,536,055 B2

55
Second, Patent Owner’s contention that the proposed modification
would make removing the bowl more difficult is based on the assertion that
numerous other parts would have to be removed to remove the bowl. See
PO Resp. 39 (providing a version of Kendall’s Figure 1 highlighting those
parts that must be removed). As explained above, Petitioner proposes to
modify Olin’s floor mounted toilet to incorporate a floor mounted support
structure that cradles the bowl, such as disclosed by Kendall (Ex. 1020).
Pet. 29–30. Consequently, the parts that Patent Owner identifies as creating
difficulty in removing the bowl are in fact not part of the proposed
combination.
Similarly, Patent Owner argues that a person of ordinary skill in the
art would not have made the proposed combination because it would be
complicated and difficult to remove and replace Olin’s bowl, and because
Kendall’s support structure is fundamentally incompatible with Olin’s toilet
and vacuum toilets generally. PO Resp. 40–43 (citing Anderson Decl., Ex.
2021 ¶¶ 23–24, 34). Mr. Anderson elaborates that: there is “no similarity”
between the architecture and operation of the Olin and Kendall toilets, Olin’s
bowl is already secured, Olin’s toilet carries load in the shell and Kendall
does not, and Kendall’s structure would have added size, weight, and
complexity and made accessing internal components more difficult. Ex.
2021 ¶¶ 24, 34.
For the reasons that follow this line of argument is not persuasive.
First, here, as elsewhere, Patent Owner’s argument is not commensurate in
scope in that it relates to the difficulty of changing components.
Second, the fact that the references differ, without more, does not
demonstrate the nonobviousness of the claimed subject matter. Patent
IPR2014-01513
Patent 6,536,055 B2

56
Owner’s assertion that toilets have nothing in common with vacuum toilets
is undermined by the disclosure in the ’055 patent that the claimed vacuum
toilet generally relates to toilets, and the disclosure that vacuum toilets have
both vehicle and stationary applications. Ex. 1001, 1:5–6, 10–11. Further,
we are persuaded by Petitioner that there are similarities between Olin’s and
Kendall’s toilets. Pet. Reply 16–18. For example, Petitioner explains that
the references both relate generally to toilets, have many of the same basic
components, and face the same problems of long term use and the corrosive
and potentially hazardous nature of human waste. Id. at 17; Dershowitz
Reply Decl., Ex. 1068 ¶ 93; see also Conrad Depo., Ex. 1067, 47:3–18
(stating that the elbow is a vacuum toilet serves some of the same functions
as an elbow in a residential toilet). Additionally, Kendall and Olin similarly
disclose structure and methods that simplify toilet maintenance. Pet. Reply
17–18; Ex. 1068 ¶ 103; Ex. 1021, 4:41–46, 5:20–23 (Olin’s shell may be
removed to make internal components readily accessible for service); Ex.
1020, 3:53–56 (Kendall’s skirt can be removed to facilitate ease of
maintenance).
Third, Patent Owner identifies some potential drawbacks of the
proposed modification (e.g., added weight), but fails to weigh the alleged
drawbacks against the benefits identified by Petitioner (i.e., providing a floor
mountable toilet with a bowl that can be replaced in the field). See
Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“[A]
given course of action often has simultaneous advantages and disadvantages,
and this does not necessarily obviate motivation to combine.”); Winner Int’l
Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact
that the motivating benefit comes at the expense of another benefit, however,
IPR2014-01513
Patent 6,536,055 B2

57
should not nullify its use as a basis to modify the disclosure of one reference
with the teachings of another. Instead, the benefits, both lost and gained,
should be weighed against one another.”).
d) Conclusion for claim 15
We conclude that Petitioner has demonstrated by a preponderance of
the evidence that claim 15 is unpatentable for obviousness under 35 U.S.C.
§ 103(a) over Olin and Kendall. In making this determination we considered
Patent Owner’s arguments and the entirety of the evidence as a whole,
including the evidence regarding secondary considerations.
2. Claims 16, 20, 21, and 24–2637
Petitioner relies on Olin for the additional limitations of dependent
claims 16, 20, 21, and 24–26, and consequently our analysis of these
limitations in the prior ground of unpatentability is applicable here. Pet. 33.
Patent Owner’s weak evidence of secondary considerations does not
outweigh the strong case for obviousness of these claims. We conclude that
Petitioner has demonstrated by a preponderance of the evidence that claims
16, 20, 21, and 24–26 are unpatentable for obviousness under 35 U.S.C. §
103(a) over Olin and Kendall.

V. MOTIONS TO SEAL
Patent Owner filed two Motions to Seal (Papers 38 and 85), and
Petitioner also filed two Motions to Seal (Papers 64 and 93). There is a
strong public policy in favor of making information filed in an inter partes

37 Patent Owner provides no additional arguments for the dependent claims
and therefore has admitted the material facts of this ground unpatentability
for these claims. See 37 C.F.R. §§ 42.23(a), 42.120(a).
IPR2014-01513
Patent 6,536,055 B2

58
review open to the public, especially because the proceeding determines the
patentability of claims in an issued patent and, therefore, affects the rights of
the public. See Garmin International v. Garmin Speed Technologies, LLC,
Case IPR2012-00001 (PTAB Mar. 14, 2013) (Paper 34). Under 35 U.S.C.
§ 316(a)(1) and 37 C.F.R. § 42.14, the default rule is that all papers filed in
an inter partes review are open and available for access by the public; a
party, however, may file a concurrent motion to seal and the information at
issue is sealed pending the outcome of the motion. It is, however, only
“confidential information” that is protected from disclosure. 35 U.S.C.
§ 316(a)(7); see Trial Practice Guide, 77 Fed. Reg. at 48,760. The standard
for granting a motion to seal is “for good cause.” 37 C.F.R. § 42.54(a). The
party moving to seal bears the burden of proof in showing entitlement to the
requested relief, and must explain why the information sought to be sealed
constitutes confidential information. 37 C.F.R. § 42.20(c).
In reviewing the underlying documents that are sought to be sealed,
we conclude that they may contain confidential information. Accordingly,
we are persuaded that good cause exists to have some of the documents
remain under seal. In that respect, the Motions to Seal (Papers 38, 64, 85,
and 93) are granted, except for information that is discussed in or relied on
by this decision. With regard to such information, pertinent to substantive
patentability analysis leading to the determination that claims 15, 16, 20, 21,
and 24–26 are unpatentable, we discern no reason to shield them from the
public. The parties have shown no good cause to seal such information.
The Office Patent Trial Practice Guide provides:
Expungement of Confidential Information: Confidential
information that is subject to a protective order ordinarily would
become public 45 days after denial of a petition to institute a trial
IPR2014-01513
Patent 6,536,055 B2

59
or 45 days after final judgment in a trial. There is an expectation
that information will be made public where the existence of the
information is referred to in a decision to grant or deny a request
to institute a review or is identified in a final written decision
following a trial. A party seeking to maintain the confidentiality
of information, however, may file a motion to expunge the
information from the record prior to the information becoming
public. § 42.56. The rule balances the needs of the parties to
submit confidential information with the public interest in
maintaining a complete and understandable file history for public
notice purposes. The rule encourages parties to redact sensitive
information, where possible, rather than seeking to seal entire
documents.
77 Fed. Reg. 48756, 48766 (Aug. 14, 2012).
Consequently, 45 days from entry of this decision, all information
subject to a protective order will be made public by default. In the interim, a
party seeking to maintain confidentiality of information that was not relied
upon in this decision, may file a motion to expunge that information. See 37
C.F.R. § 42.56.

VI. ORDER
For the reasons given, it is:
ORDERED that claims 15, 16, 20, 21, and 24–26 of U.S. Patent No.
6,536,055 B2 have been shown by a preponderance of the evidence to be
unpatentable;
FURTHER ORDERED that Patent Owner’s Motion to Exclude is
denied;
FURTHER ORDERED that Petitioner’s Motion to Exclude is denied;
FURTHER ORDER that the Motions to Seal are granted-in-part and
denied-in-part as noted herein; and
IPR2014-01513
Patent 6,536,055 B2

60
FURTHER ORDERED that, because this is a Final Written 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.

IPR2014-01513
Patent 6,536,055 B2

61
PETITIONER:
Andrei Iancu
aiancu@irell.com
Benjamin Haber
bhaber@irell.com
Michael Fleming
mfleming@irell.com
Ellisen S. Turner
eturner@irell.com
Christopher Vanderlaan
cvanderlaan@irell.com

PATENT OWNER:
John Alemanni
jalemanni@kilpatricktownsend.com
Dean Russell
drussell@kilpatricktownsend.com
David Reed
dareed@kilpatricktownsend.com
Alyson Wooten
awooten@kilpatricktownsend.com
Steve Moore
smoore@kilpatricktownsend.com
Erwin Cena
ecena@kilpatricktownsend.com