Ficep Corporation

Patent Trials and Appeals Board

May 11, 2021

IPR2020-01707 (P.T.A.B. May. 11, 2021)

Trials@uspto.gov Paper 15
571-272-7822 Date: May 11, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

PEDDINGHAUS CORPORATION,
Petitioner,

v.

FICEP CORPORATION,
Patent Owner.

IPR2020-01707
Patent 7,974,719 B2

Before JAMESON LEE, NORMAN H. BEAMER, and
MELISSA A. HAAPALA, Administrative Patent Judges.

Opinion for the Board filed by LEE, Administrative Patent Judge.

Opinion Dissenting filed by BEAMER, Administrative Patent Judge.

LEE, Administrative Patent Judge.
DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314

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I. INTRODUCTION
A. Background and Summary
Peddinghaus Corporation (“Petitioner”) filed a Petition (Paper 1,
“Pet.”) requesting an inter partes review of claims 1–14 (“challenged
claims”) of U.S. Patent 7,974,719 B2 (Ex. 1001, “the ’719 patent”). Ficep
Corporation (“Patent Owner”) filed a Preliminary Response. Paper 9
(“Prelim. Resp.”). Pursuant to our authorization, Petitioner filed a Reply to
Patent Owner’s Preliminary Response. Paper 11. Patent Owner filed a Sur-
Reply. Paper 14.
An inter partes review may not be instituted unless “the information
presented in the petition . . . and any response . . . shows that there is a
reasonable likelihood that the petitioner would prevail with respect to at least
1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Further, a
decision to institute may not institute on fewer than all claims challenged in
the petition. See 37 C.F.R. § 42.108(a) (2021); SAS Inst., Inc. v. Iancu, 138
S. Ct. 1348, 1359–60 (2018).
We determine that Petitioner has not shown a reasonable likelihood of
prevailing on any challenged claim. Accordingly, we do not institute an
inter partes review of any claim of the ’719 patent. The Petition is denied.
B. Real Parties-in-Interest
Petitioner identifies only itself as real party-in-interest. Pet. 2. Patent
Owner identifies only itself as real party-in-interest. Paper 5, 1.
C. Related Matters
Petitioner identifies the following civil actions as involving the ’719
patent (Pet. 3): Ficep Corp. v. Voortman USA Corp., No. MJG-12-00429(D.
Md); Ficep Corp. v. Peddinghaus Corp., No. 1:19-1994 (D. Del.). Patent
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Owner identifies only the second listed action as a matter that “would affect,
or be affected by, a decision in this proceeding.” Paper 3, 1.
D. The ’719 patent
The ’719 patent is directed to “a method for automatic manufacture of
an object with multiple intersecting components,” and an “apparatus for
automatic manufacture of an object with multiple intersecting components.”
Ex. 1001, 2:9–11, 2:26–28. As background, the ’719 patent describes that
computer-aided design (“CAD”) systems have been used to design detailed
three-dimensional models of physical objects and that they generally include
displaying a three-dimensional scale model of the object. Id. at 1:14–18. As
further background, the ’719 patent explains:
In order to complete the manufacturing process of a
structure or device based on a computer-aided design model, a
human operator typically must program manually the
manufacturing machines associated with an assembly line based
on the computer-aided design display. Production is then
enabled once the appropriate information has been
communicated to the assembly line. Human intervention is
generally necessary to review the computer-aided design
information and to provide the necessary information to the
automated assembly line apparatus so that the structure or device
may be manufactured.
Because the computer-aided design specifications
indicated in a computer-aided design display must be passed
manually by a human operator from the computer-aided design
display to the automated assembly line equipment for the
manufacture of a device or structure, a problem arises when the
specialized human operator, capable of inputting data into the
manufacturing machine, is unavailable. . . . . Further, it is
desirable to eliminate the possibility of operator error when
providing instructions to automated assembly line equipment.
This robust solution improves efficiency and accuracy and
lowers cost, since manual marking-out operations can be
performed automatically.
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Id. at 1:26–58 (emphasis added).
Figure 1 illustrates the steps in a method according to the ’719 patent
and is reproduced below:

Figure 1 is a flow chart depicting a method for automatic manufacture of an
object with multiple intersecting components. Id. at 3:25–27.
At first step 105, a three-dimensional design model of an object is
received. Id. at 3:46–50. At step 110, a plurality of component dimensions
are extracted from the received design model. Id. at 3:53–56. Step 110
generally includes identifying the individual components that are connected
together. Id. at 3:58–62. At step 115, a plurality of intersection and/or
manufacturing parameters, which define a plurality of intersections of the
components of the object, are identified from the received model. Id. at 4:8–
11. After identifying the intersection and/or manufacturing parameters at
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step 115, the method at step 120 extracts from the design model the
intersection and/or manufacturing parameters. Id. at 4:28–36. Typically, the
extracting includes copying or recording the intersection parameters and
other data in the received design model. Id. at 4:32–35.
Thereafter, at step 125, the method stores the extracted component
dimensions and the intersection and/or manufacturing parameters, either
temporarily or permanently, and either locally or remotely. Id. at 4:36–41.
Also, at step 130, the method provides a visual display of the intersection
and/or manufacturing parameters. Id., at 4:41–43.
At step 135, the method transmits the intersection and/or
manufacturing parameters and the component dimensions to at least one
manufacturing machine. Id. at 4:48–51. Thereafter, at step 140, the
components are manufactured based at least in part on the transferred
intersection and/or manufacturing parameters. Id. at 4:56–60. Then, at step
145, the object is assembled, which typically requires configuring the
components as indicated in the design model. Id. at 61–64. The ’719 patent
describes that “the automated assembly of the object is based on a design
model and that the entire manufacturing process, from completion of the
design model to manufacture of the object, can be completed without direct
human intervention.” Id. at 5:26–30.
Claims 1, 7, and 14 are independent. Claim 1 is directed to a method
and claim 7 is directed to an apparatus. Claim 14 is directed to an article of
manufacture. All three are reproduced below:
1. A method for automatic manufacture of an object, the
method comprising the steps of:
creating, at a computing device, a design model of an
object having multiple individual components, at
least two of the individual components defining an
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intersection at which the two components are in
contact with one another;
receiving, at a programmable logic controller, the design
model of the object:
storing, at a database unit, the design model received at
the programmable logic controller;
extracting from the design model a plurality of
component dimensions defining a plurality of
components of the object;
identifying a plurality of intersection and manufacturing
parameters which define in part the intersection of
the two components;
extracting from the design model the intersection and
manufacturing parameters;
transmitting the intersection and manufacturing
parameters and the component dimensions from
the programmable logic controller to at least one
manufacturing machine; and
manufacturing, by means of the at least one
manufacturing machine, the components based at
least partly on the transmitted component
dimensions and the transmitted intersection and
manufacturing parameters.
Ex. 1001, 7:49–8:8.
7. An apparatus for automatic manufacture of an object,
comprising:
a computing device adapted to create a design model of
an object having multiple individual components,
at least two of the individual components defining
an intersection at which the two components are in
contact with one another;
at least one programmable logic controller in
communication with the computing device and
with at least one manufacturing machine;
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a receiver associated with the programmable logic
controller for receiving the design model of the
object;
a database unit adapted to store the design model
received at the receiver;
a processor which is associated with the programmable
logic controller and extracts from the design model
a plurality of dimensions of components which
define a plurality of components of the object;
wherein the processor identifies a plurality of intersection
parameters which define the intersection of the two
components;
wherein the processor extracts from the design model the
intersection parameters;
a transmitter associated with the processor for
transmitting the intersection and machining
parameters and the component dimensions from
the programmable logic controller to the at least
one manufacturing machine; and
wherein the at least one manufacturing machine
manufactures the components based at least in part
on the transmitted component dimensions and on
the transmitted intersection and manufacturing
parameters.
Id. at 8:25–55.
14. An article of manufacture, comprising a program storage
medium which has computer-readable program code
incorporated therein for the automatic manufacture of an object,
wherein the computer-readable program code in the article of
manufacture includes:
computer readable code for receiving, at a programmable
logic controller, a design model of the object,
wherein the object has multiple individual
components, at least two of the individual
components defining an intersection at which the
two components are in contact with one another;
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computer-readable code for extracting from the design
model a plurality of component dimensions which
define a plurality of components of the object;
computer-readable code for identifying a plurality of
intersection parameters which define the
intersection of the two components;
computer-readable code for extracting from the design
model the intersection and manufacturing
parameters;
computer-readable code for transmitting the intersection
and manufacturing parameters and the component
dimensions from the programmable logic
controller to at least one manufacturing machine;
and
computer-readable code for manufacturing, by means of
the at least one manufacturing machine, the
components based at least in part on the
transmitted component dimensions and on the
transmitted parameters.
Id. at 9:7–10:16.
E. Evidence Relied on by Petitioner
Petitioner relies on the following evidence:1
References Date Exhibit
Hashimoto U.S. Pub. App.
2005/0044133 A1
Published Feb. 24, 2005 Ex. 1005
Chen U.S. Pub. App.
2007/0211817 A1
Published Sept. 13, 2007,
filed March 13, 2006
Ex. 1018

1 The ’719 patent was filed on June 6, 2007, was issued on July 5, 2011, and
claims priority to a foreign application filed on June 9, 2006. Ex. 1001,
codes (22), (30), (45).
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Petitioner also relies on the Declaration of William Singhose, Ph.D.
(Ex. 1003).
F. Asserted Grounds of Unpatentability
Petitioner asserts that the challenged claims are unpatentable on the
following grounds:
Claim(s) Challenged 35 U.S.C. §2 Basis
1–14 102 Hashimoto
1–14 103 Hashimoto
13 103 Hashimoto, Chen
II. ANALYSIS
A. Level of Ordinary Skill
Petitioner asserts:
A person of ordinary skill in the art in the field of the ’719
Patent (i.e, CAD/CAM systems) in the 2006 time frame (“a
Skilled Artisan”) would have been someone with an
undergraduate degree in mechanical engineering, electrical
engineering, or a closely related field, and two years of industry
or research experience in manufacturing processes, including
experience with CAD/CAM systems. EX. 1003, ¶46; see also
EX1003, ¶¶45, 47–51.
Pet. 4.
Patent Owner articulates the level of ordinary skill differently, as
follows: “[A] person of ordinary skill in the art (‘POSITA”) is a software

2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125
Stat. 284, 287–88 (2011), revised 35 U.S.C. §§ 102 and 103 effective March
16, 2013. Because the effective filing date of the ’719 patent is prior to
March 16, 2013 (Ex. 1001, codes (22), (30)), we refer to the pre-AIA
version of § 103.
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developer experienced in developing engineering design software and
machine control software.” Prelim. Resp. 11–12. Patent Owner states that
its articulation of the level of ordinary skill in the art “is generally consistent
with Petitioner’s proposed description of a POSITA,” and that “Patent
Owner does not believe that any issues in the arguments raised in the
Petition that are being addressed in this Preliminary Response are affected
by any differences the parties may have in describing the POSITA.” Id.
at 12.
Patent Owner’s articulation of the level of ordinary skill is overbroad,
because it merely refers to the type of experience and not the extent of the
experience and also because it omits the extent of the pertinent education
level. Petitioner's articulation is supported by the cited evidence and also
consistent with what is reflected by the content of the applied prior art
references. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir.
2001) (the applied prior art may reflect an appropriate level of skill).
On this record, we adopt Petitioner’s articulation of the level of
ordinary skill in the art. Thus, a person of ordinary skill in the art would
have had an undergraduate degree in mechanical engineering, electrical
engineering, or a closely related field, and two years of industry or research
experience in manufacturing processes, including experience with
CAD/CAM systems.
B. Claim Construction
In an inter partes review, we use the same claim construction standard
that would be used to construe the claim in a civil action under 35 U.S.C.
§ 282(b), including construing the claim in accordance with the ordinary and
customary meaning of such claim as understood by one of ordinary skill in
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the art and the prosecution history pertaining to the patent. 37 C.F.R.
§ 42.100(b) (2019). We apply the claim construction standard from Phillips
v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Also, only those
claim terms that are in controversy need to be construed, and only to the
extent necessary to resolve the controversy. Nidec Motor Corp. v.
Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).
Claim terms are generally given their ordinary and customary
meaning as would be understood by one with ordinary skill in the art in the
context of the specification, the prosecution history, other claims, and even
extrinsic evidence including expert and inventor testimony, dictionaries, and
learned treatises, although extrinsic evidence is less significant than the
intrinsic record. Phillips, 415 F.3d at 1312–17. Usually, the specification is
dispositive, and it is the single best guide to the meaning of a disputed term.
Id. at 1315.
The specification may reveal a special definition given to a claim term
by the patentee, or the specification or prosecution history may reveal an
intentional disclaimer or disavowal of claim scope by the inventor. Id. at
1316. If an inventor acts as his or her own lexicographer, the definition
must be set forth in the specification with reasonable clarity, deliberateness,
and precision. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d
1243, 1249 (Fed. Cir. 1998). The disavowal of claim scope, if any, can be
effectuated by language in the specification or the prosecution history. Poly-
America, L.P. v. API Indus., Inc., 839 F.3d 1131, 1136 (Fed. Cir. 2016).
Here, there are no explicit definitions set forth in the ’719 patent (see
generally Ex. 1001).
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“identifying” and “extracting”
Petitioner does not offer an express construction for any claim term.
Rather, Petitioner states: “Petitioner believes that no construction is
necessary for any claim terms in this proceeding, and that all terms should
be given their plain and ordinary meaning in the context of the ’719 patent.”
Pet. 11. However, in its analysis, Petitioner does “assume” a certain
meaning for “identifying” and for “extracting.” Id. at 37. Petitioner states:
The ’719 Patent uses the term “extracting” to refer to the
process of obtaining information from the design model. See
§ VII.A.1.e above; EX1001, 3:58–62; EX1003,¶¶125, 131.
Since the ’719 Patent states that the “extracting” step includes an
“identifying” step, there appears to be little, if any, difference
between “identifying” information in a file, and “extracting” the
identified information. EX1003,¶¶125, 131. Nevertheless, since
these two steps are separately identified as claim limitations in
claim 1[f] and 1[g], the “identifying” and “extracting” steps are
separately analyzed, assuming that the “identifying” step refers
to the process of locating relevant information, and that the
“extracting” step refers to obtaining or copying that information.
EX1003,¶131.
Pet. 37. Petitioner’s statement that the ’719 patent states that the extracting
step includes an identifying step is overbroad. The alleged support for that
statement is the following description in the ’719 patent: “Extracting
dimensions of object components of the design model or design (step 110)
generally includes identifying the individual components that are connected
together or otherwise associated with each other to form the object.”
Ex. 1001, 3:58–62. The statement applies only to extracting dimensions of
object components of the design model, not extracting other items. Further,
the characterization of the two being the same is incorrect. For instance, the
identifying can be performed without extracting that which has been
identified.
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We agree with Patent Owner (Prelim. Resp. 12–13) that “identifying a
plurality of intersection and manufacturing parameters which define in part
the intersection of the two components” and “extracting from the design
model the intersection and manufacturing parameters” are not the same.
Patent Owner persuasively notes that the Specification of the ’719 patent
describes the identifying and extracting as separate concepts. Prelim. Resp.
12–13 (citing Ex. 1001, 4:28–31 (“After identifying the intersection and/or
manufacturing parameters (step 115), the method 100 proceeds to extract
from the design model the intersection and/or manufacturing parameters.”).
Further, the flow chart illustrated in Figure 1 uses separate boxes to
represent the two steps 115 (identify intersect parameters) and 120 (extract
intersect parameters). The record does not support Petitioner’s assertion that
identifying and extracting are the same. We determine that they are not. In
effect, Petitioner is asking us to read out an express limitation of a claim,
which is “contrary to the principle that claim language should not [be]
treated as meaningless.” See Bicon, Inc. v. Straumann Co., 441 F.3d 945,
950–52 (Fed. Cir. 2006).
Patent Owner contends that for the claimed “identifying,” that which
is identified cannot be preexisting. Prelim. Resp. 13–16. According to
Patent Owner, “‘identifying’ intersection parameters does not encompass
‘locating’ pre-existing information, but instead includes analyzing data not
already included in the design model to determine what the intersection
parameters that define the intersection between components are.” Id. at 16.
We need not determine whether identifying intersect parameters excludes
locating pre-existing information, as Patent Owner contends, because even if
identifying intersection parameters encompasses locating pre-existing
information, as Petitioner contends, Petitioner has not shown a reasonable
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likelihood that it would prevail in establishing unpatentability of any
challenged claim.
Regarding Petitioner’s proposed position that “identifying” certain
information encompasses “locating” that information, we agree. However,
we note it must be with the understanding that a distinct recognition of that
specific information is required in the sense that mere locating a broad class
of information does not locate a specific subclass of that information. That
comes from the plain meaning of “identify” and is consistent with the
Specification of the ’719 patent. In other words, the locating must be
sufficient to specifically distinguish that which is located from the rest of the
information. If there is no specific recognition of that which is located, as
distinguished from the rest, then there is no identification.
As for Petitioner’s position that “extracting” certain information refers
to obtaining or copying that information, Patent Owner presents no contrary
argument. In light of the statement in the Specification that “[t]ypically,
[extracting from the design model the intersection and/or manufacturing
parameters] includes copying or recording the intersection parameters . . .
and all the other data, which are present in the design model and are not
lost” (Ex. 1001, 4:28–34), we agree that obtaining or copying intersection
and manufacturing parameters from the design model is extracting those
parameters from the model.
“define in part the intersection of the two components”
In a Section IV of its Preliminary Response labeled as Claim
Construction, Patent Owner asserts that each independent claim requires that
the intersection parameters must “define the intersection of the two
components.” Prelim. Resp. 16–17. This is not a construction, because
claim 1 expressly recites “a plurality of intersection and manufacturing
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parameters which define in part the intersection of the two components,” and
claim 7 expressly recites “a plurality of intersection parameters which define
the intersection of the two components.” Ex. 1001, 7:63–65, 8:43–45. We
regard Patent Owner simply as noting that there is such recitation in each
independent claim.
“automatic manufacture”
Claim 1 recites “[a] method for automatic manufacture of an object,”
and claim 7 recites “[a]n apparatus for automatic manufacture of an object.”
Claim 14 recites an article of manufacture comprising a program storage
medium which has computer-readable program code “for the automatic
manufacture” of an object. Although the recitations are in the claims’
preambles, both Petitioner and Patent Owner have treated the requirement of
“automatic manufacture” to be limiting. On this record, we have no reason
to conclude otherwise.3
However, for purposes of this decision, we need to determine what
“automatic manufacture” means and whether all steps in claim 1 and all
functions performed by elements in apparatus claim 7 and article claim 14
are subject to that limitation. Neither party expressly presents a meaning for

3 Although the U.S. District Court for the District of Maryland determined
that the preambles of the independent claims of the ’719 patent are not
limiting (Ex. 1019, 16), it also determined that certain steps/functionalities
of claims 7 and 14, i.e., identifying and extracting intersection parameter,
based on the disclosure of the ’719 patent and the prosecution history of the
’719 patent, had to be performed “without human intervention.” Ex. 1020,
11–18. More importantly, the court’s explanation of “without human
intervention” in that context indicates the information subsequently provided
to the manufacturing machine would not be reviewed by a human prior to
transmission to the manufacturing machine. Id. at 14. Our treating
“automatic manufacture” in the preamble as limiting is fully consistent with
the district court’s claim construction.
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“automatic manufacture.” The Specification, in several instances, provides
description that sheds light on the meaning of automatic manufacture. For
instance, the Specification states: “This transmission can occur
automatically, i.e., without human intervention, after the receipt of the
intersection and/or manufacturing parameters and the components
dimensions receiving step (step 105).” Ex. 1001, 4:53–56. The
Specification also states: “As will be demonstrated below, the automated
assembly of the object is based on a design model and the entire
manufacturing process, from completion of the design model to manufacture
of the object, can be completed without direct human intervention.” Id. at
5:26–30. The Specification further states: “In some embodiments, this
transmission may occur automatically or without human intervention.” Id.
at 6:51–52.
In the context of the Specification of the ’719 patent, “automatic
manufacture” means manufacturing without human intervention. Neither
party’s arguments is inconsistent with this understanding of “automatic
manufacture.”
As for which steps of claim 1 (and which functions provided by the
apparatus of claim 7 and article of claim 14) must be performed without
human intervention, we need not do a complete determination for every step
of claim 1 and every function of claims 7 and 14. For reasons discussed
below, we determine that the following steps of claim 1 must be performed
without human intervention:
identifying a plurality of intersection and manufacturing
parameters which define in part the intersection of
the two components
extracting from the design model the intersection and
manufacturing parameters
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We determine that the following two functions of claim 7 must be
performed without human intervention:
wherein the processor identifies a plurality of intersection
parameters which define the intersection of the two
components
wherein the processor extracts from the design model the
intersection parameters
We further determine that the following two functions of claim
14 must be performed without human intervention:
identifying a plurality of intersection parameters which
define the intersection of the two components
extracting from the design model the intersection and
manufacturing parameters
In describing the disadvantages of systems which involved human
intervention, the Specification refers to human intervention “to review the
computer-aided design information and to provide the necessary [reviewed]
information to the automated assembly line apparatus.” Ex. 1001, 1:26–36.
Such reviewing and providing entails identifying and extracting the
information from the computer-aid design model. Also, the Specification
describes receiving and transferring as possibly accomplished manually (id.
at 3:50–52, 6:38–40) but never describes the same for identifying and
extracting. Further, during prosecution of the application which issued as
the ’719 patent, the Applicant distinguished a prior art reference Jones by
asserting the following based on elimination of manual involvement by an
operator:
Jones et al. are thus concerned with the kind of system
described in the background section of applicant’s disclosure. In
such systems, including the Jones system, in order to complete
the manufacturing process of a structure or device based on a
CAD model, a human operator typically must program manually
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manufacturing machines associated with an assembly line . . . .”
Problems that arise include the unavailability of an operator and
the input of erroneous parameters, as set forth in the applicant’s
specification.
Applicant’s invention aims to eliminate such problems,
thereby increasing manufacturing efficiency. Most pointedly,
applicant’s invention seeks to eliminate errors made in the
process of transferring a CAD generated design into instructions
for controlling a manufacturing machine. Applicant’s solution
improves efficiency and accuracy, at reduced cost (see [page] 2,
lines 5-7, of applicant’s disclosure).
Ex. 1002, 76.
It is not enough, however, that these identifying and extracting steps,
and identifying and extracting functionalities, must be performed without
human intervention. Rather, the identified and extracted parameters must
not be subjected to human review, approval, and/or modification prior to
being sent to a manufacturing machine. That concept is clearly conveyed in
the above-discussed portion of the Specification of the ’719 patent and the
above-discussed prosecution history. Without that requirement, the claims
would cover systems that have the same problems as those discussed in the
background section of the ’719 patent Specification and the Applicant for
patent would not have been able to distinguish the claimed invention from
the Examiner’s applied prior art on that basis, as discussed above.
Based on the Specification and the prosecution history, it is not
meaningful to say that identification and extracting must be accomplished
without human intervention, if the identified and extracted information are
permitted to be subjected to human review, approval, and/or modification
prior to being sent to a manufacturing machine. Thus, we also determine
that the identified and extracted parameters must not be subjected to human
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review, approval, and/or modification prior to being sent to a manufacturing
machine.
Our construction is consistent with the construction provided by the
U.S. District Court for the District of Maryland regarding claims 7 and 14 of
the ’719 patent. Ex. 1020, 17–18. The district court determined that
“wherein the processor identifies a plurality of intersection parameters which
define the intersection of the two components” and “wherein the processor
extracts from the design model the intersection parameters” must be
accomplished “without human intervention.” Id. at 18.
“intersection parameters”
Petitioner asserts that the term “intersection parameters” refers “to
values that define the locations, shapes, and types of intersection points
between components.” Pet. 39 (citing Ex. 1003 ¶ 134). That construction is
overly narrow. Petitioner provides no reason why an intersection parameter
must convey information about all of locations, shapes, and types of
intersection points between components and does not cover data about other
aspects of intersection points. Patent Owner does not contend that an
intersection parameter must convey information about location, shape, and
type of intersection points between components. We determine that any
value associated specifically with intersection points between components
constitutes an intersection parameter and it need not convey information
about each of location, shape, and type of intersection points between
components.
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C. Alleged Anticipation of Claims 1–14 by Hashimoto
1. The Law on Anticipation
To establish anticipation, each and every element in a claim, arranged
as recited in the claim, must be found in a single prior art reference.
Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir.
2010); Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir.
2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed.
Cir. 2001). The applied reference “need not satisfy an ipsissimis verbis
test.” In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond,
910 F.2d 831, 832–33 (Fed. Cir. 1990). Identity of terminology between the
prior art reference and the claim is not required.
2. Overview of Hashimoto
Hashimoto relates to an information processing system for producing
building material for subsequent assembly. Ex. 1005 ¶¶ 2, 18, 19, 66. An
example of that which is subsequently assembled is a steel house. Id. ¶ 19.
a) Hashimoto’s First Embodiment
Hashimoto’s first embodiment is illustrated by Figures 1–19. Id.
¶¶ 66, 71, 76, 78, 104. This first embodiment is focused on generating
design drawings for sections of a steel house, generating an order list for
shape sheet steel members based on those generated design drawings, and
finally producing shape sheet steel members based on the generated order
list. Id. ¶¶ 18–19. Figure 1 is reproduced below:
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Figure 1 shows information processing system 100 for producing light
gauge shape sheet steel for a steel house. Id. ¶ 66. Information processing
system 100 includes design drawing generating unit 101, order list
generating unit 102, and member production control unit 103. Id.
A CAD system (Computer Aided Design system) and a CAM system
(Computer Aided Manufacturing system) are also disclosed. Id. ¶ 6.
Information from a user is input by the CAD system into design drawing
generating unit 101. Id. ¶ 80. The CAD system includes a member totaling
module. Id. ¶ 87. Figure 3, reproduced below, explains the operation of the
information processing system working with the CAD and CAM systems.
Id. ¶ 36.
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Figure 3 shows a flowchart of the operation of information processing
system 100. Id. ¶¶ 36, 79. In step S101, design drawing generating unit 101
uses information input from the user by the CAD system via computer 200
to generate (1) a wall panel drawing, (2) a floor panel drawing and (3) a roof
truss drawing for a steel house. Id. ¶ 80.
To generate these drawings, at step S102, order list generating unit
102 uses the member totaling module of the CAD system to automatically
total, by cross section or length, the design drawing information obtained
from design drawing generating unit 101 including the shape, length,
quantity, hole shape and the hole position of all the light gauge shape sheet
steel used for the steel house existing in the CAD system. Id. ¶¶ 101–102.
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Based on this total, an order list is generated, as shown in Figure 19,
reproduced below. Id.

Figure 19 shows a screen displaying an order list of automatically
totaled shape steel members. Id. ¶¶ 52, 101–102. The only information
regarding holes disclosed in Figure 19 are data for a “NUMBER OF
HOLES” column containing information on the number of holes (2 shown
for 7 steel members) to be made in each steel member, data for at least one
“DIE NO” column(s) (2 shown) indicating corresponding die numbers for
each hole, and data for at least one “POSITION” column(s) (2 shown)
indicating the position(s) where each hole should be made. Id. ¶ 101. This
hole data describes nothing about the type or purpose of the holes, although
during subsequent assembly some holes are used for the purpose of
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connecting intersecting members and other holes are used for non-
connection purposes such as wiring. Id. ¶¶ 24, 29.
b) Hashimoto’s Second Embodiment
A second embodiment is disclosed by Hashimoto with reference to
Figures 20–26. Id. ¶ 151. Figures 22 and 23, reproduced below, broadly
illustrate how the CAD system automatically generates fastening hole
information to be used by equipment 1 of Figures 20 and 21 to produce the
light gauge shape sheet steel as further shown in Figures 24A and 24B. Id.
¶¶ 55–58, 155, 159.

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Figure 22 shows a high-level sequence of activities performed to
automatically generate the fastening hole information in designing a building
by the CAD system. Id. ¶¶ 55, 155. Figure 23 shows how a runner, a stud, a
reinforcing member and fastening holes in those members would be
produced for later assembly. Id. ¶ 156. As is the case with the first
embodiment, when the building materials are ultimately assembled, some
holes will be used as wiring holes and some holes will be used to connect
components. Id. at Fig. 22.
The chart in Figure 22 further shows a step of manually adjusting the
automatically generated hole information before the data is sent to a
manufacturing machine.
3. Claim 1
As we discuss below, Hashimoto does not disclose the claimed
steps of (1) “identifying a plurality of intersection and manufacturing
parameters which define in part the intersection of the two
components,” and (2) “extracting from the design model the
intersection and manufacturing parameters.”
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Claim 1 recites the step of “receiving, at a programmable logic
controller, the design model of the object.” Ex. 1001, 7:56–57.
Petitioner explains:
The “design model of the object” (i.e., the design model of
the “steel house” and the “panels” and “truss[es]” from which it
is constructed) in Hashimoto is “receiv[ed]” at the
“programmable logic controller.” EX1003, ¶110. In addition to
a system in which the design model is created on computer 200,
Hashimoto discloses a scenario in which the design model is
prepared at a different computer, and is subsequently received at
computer 200 via a network connection. EX1005, [0177].
Pet. 28–29. Patent Owner does not present contrary arguments with respect
to this limitation. Petitioner’s assertions are supported by the cited evidence.
Claim 1 further recites the following identifying and extracting steps:
identifying a plurality of intersection and manufacturing
parameters which define in part the intersection of
the two components;
extracting from the design model the intersection and
manufacturing parameters
Ex. 1001, 7:63–67.
Regarding these steps, Petitioner argues as follows:
Hashimoto explains that, from the design model, “the member
totaling module automatically totals, by cross section or length,
the information including the shape, length, quantity, hole shape
and the hole position (design drawing information) of all the light
gauge shape sheet steel used for the steel house existing in the
CAD system.” EX1005, [0101]. That information must be
located (i.e., identified) by the member totaling module before it
is obtained or copied for use in the member totaling operations.
EX1003,¶135.
(a) Intersection Parameters
The “hole shape” and “hole position” that is identified by
the member totaling module comprise “intersection
parameters.” EX1003,¶136. In Hashimoto, “fastening holes”
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can be cut into the various components to allow for “fastening
tools” such as a “tapping screw” or “a one-sided rivet” to connect
the components to each other. EX1005, [0004]; see also id.,
[0156]. The “fastening hole information” can include (1) “the
joint between the runner and the stud,” (2) “the joint between the
reinforcing member and the stud,” (3) “the joint between the stud
and the structural face plate,” and (4) “the wiring holes formed
in the stud.” Id., [0156]. All of that information is
“automatically generated from the attributes of the individual
members” and is “fetched as member control information for the
production control system.” Id. These fastening holes define the
location, size, and shape of the intersections between
components. EX1003,¶136.
Pet. 39–40.
Thus, Petitioner identifies as intersection parameters the “hole shape”
and “hole position” totaled by Hashimoto’s member totaling module. That
is, however, inadequate to meet the requirement of identifying an
“intersection parameter.” As Petitioner itself notes in the above-quoted text,
there are different types of ultimate usage for holes, some relating to
connecting two component parts, which are for that reason intersect
parameters, and some do not, e.g., wiring holes, which are for that reason not
intersection parameters.4 Petitioner, however, points to no description in
Hashimoto that the member totaling module recognizes which hole is for
which purpose. Indeed, Hashimoto’s Figure 19, reproduced below, shows
no information that distinguishes a connecting hole from a non-connecting
hole:

4 The dissent states that “the first embodiment of Hashimoto does not
provide for wiring holes—it only discloses the automatic identification and
extraction of the parameters for fastening holes.” However, as noted by
Petitioner (Pet. 40), Hashimoto itself discloses that “fastening holes include
“wiring holes formed in the stud.” See Ex. 1005 ¶ 156.
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Figure 19 illustrates the order list, generated by order list generating unit 102
of a member totaling module. Ex. 1005 ¶¶ 52, 86, 137, 138. Figure 19 also
merely shows the number of holes and the die numbers and positions of
where those holes are formed. None of this information conveys which hole
is a connecting hole and which hole is a non-connecting hole. Hashimoto
describes the following about the member totaling module: “[T]he member
totaling module automatically totals, by cross section or length, the
information including the shape, length, quantity, hole shape and the hole
position (design drawing information) of all the light gauge shape sheet steel
used for the steel house existing in the CAD system.” Id. ¶ 101. The
descriptive text does not indicate that the member totaling module collects
any information that indicates whether a hole is a connecting hole for two
components or a non-connecting hole such as a hole for wiring.
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In this circumstance, Petitioner has not sufficiently shown that
Hashimoto’s member totaling module identifies a plurality of intersection
parameters which define in part the intersection of two components (i.e., the
member totaling module does not establish the identity of any hole as an
intersection parameter). Although the information in the order list as shown
in Figure 19 pertain to holes, it pertains to all holes including non-
connecting holes. Thus, Petitioner’s reliance on Hashimoto’s member
totaling module and order list is inadequate to support meeting the
requirement of identifying a plurality of intersection parameters which
define in part the intersection of two components.
Regarding the extracting step, Petitioner’s reliance is no different.
Petitioner states: “Hashimoto discloses [extracting step] for the same
reasons as explained with respect to [identifying step] because all of the
identified intersection and manufacturing parameters must be stored by the
computer 200 to be used by the order list generating unit 102 and displayed
as shown in FIG. 19. EX1003,¶146; see also EX1003,¶¶130-137.” Pet. 46–
47. The argument is equally deficient for the same reasons. There is no
copying or storing of another instance of the intersection parameters, where
no intersection parameters have been shown as identified. Assuming that
intersection parameters are initially contained in the design model that has
been received by Hashimoto’s programmable logic controller, Petitioner has
not sufficiently shown that such intersection parameters are identified and
extracted as claimed.
As a backup position, Petitioner additionally relies on Figures 22 and
23 of Hashimoto. Pet. 41. Petitioner states: “FIGS. 22 and 23 of
Hashimoto provide additional detail on a process for identifying intersection
parameters.” Id. The assertion is incorrect for several reasons. First, as
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discussed above, Petitioner has not adequately established any process for
identifying intersection parameters, and therefore there is no base disclosure
of a general identifying step to which to add details. Second, Figures 22 and
23 of Hashimoto are not illustrative of the same embodiment described
earlier in Hashimoto to which Figure 19 is a part. Ex. 1005 ¶¶ 34–52, 151.
Specifically, Hashimoto states: “Another embodiment of the present
invention is explained below with reference to FIGS. 20 to 26.” Id. ¶ 151.
The law of anticipation does not permit Petitioner to mix two separate
embodiments as though they collectively describe a single embodiment
including selective elements from each. See Net MoneyIN, Inc. 545 F.3d at
1369 (to anticipate, the prior art reference must disclose all elements of the
claim arranged as in the claim); see also In re Arkley, 455 F.2d. 586, 587–88
(CCPA 1972) (picking and choosing has no place in the making of a § 102
anticipation rejection). Dr. Singhose testifies:
[A] Skilled Artisan would have appreciated that the member
totaling module that identifies and extracts hole information (see
EX1005, [0101], FIG. 19) could have executed the process of
FIG. 22 to generate that hole information. EX1005, [0101],
[0155]-[0158], FIGS, 19, 22. FIG. 22 shows that its process
starts from the same place as the member totaling module: from
a CAD design. Id., FIG. 22. Then “hole information [is]
automatically generated from individual member attributes,” a
process that the member [totaling] module in ¶ [0101] is said to
perform. Id., [0101], FIG. 22. It also concludes the same way—
with the information being used in a “CAM step” that produces
the individual members including the hole information. Id.,
[0103], FIG.22.
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Ex. 1003 ¶ 140. However, what one with ordinary skill in the art “could
have” done, is not sufficient even for an analysis of obviousness,5 let alone
anticipation. That there are similarities between embodiments does not
make them the same embodiment. There are also differences between the
embodiments. Selective picking and choosing from a prior art reference
only so much as would support a given position to the exclusion of other
parts is inappropriate even for an obviousness analysis,6 let alone
anticipation.
Further, Figure 22 discloses information at a much higher level than
that which is required to meet the claim. It conveys that there are different
types of holes, some used for connecting purposes, i.e., categories “a” and
“b,” and non-connecting holes, category “c.” But that is information already
known from Hashimoto’s description of the earlier embodiment. That fact
did not result in the order list shown in Figure 19 including specific
information as to which holes are connecting holes and which are not. Also,
Figure 22 does not illustrate the production of any order list, much less an
order list having the specific information in categories “a,” “b,” and “c.”
Additionally, Figure 22 illustrates a requirement for human intervention to
generate the information for sending to an automatic manufacturing
machine, i.e., manual adjustment of the hole information that has been

5 Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015)
(“obviousness concerns whether a skilled artisan not only could have made
but would have been motivated to make the combinations or modifications
of prior art to arrive at the claimed invention”); Fresenius USA, Inc. v.
Baxter Intern., Inc., 582 F.3d 1288, 1299 (Fed. Cir. 2009).
6 Bausch & Lomb, Inc. v. Barnes-Hind/Hydrocurve, Inc., 796 F.2d 443, 448
(Fed. Cir. 1986).
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automatically generated. As discussed above, the identifying and extracting
steps must be accomplished without human intervention.
For the foregoing reasons, Petitioner has not shown a reasonable
likelihood that it would prevail in establishing that claim 1 is anticipated by
Hashimoto.
4. Independent Claims 7 and 14
Claim 7 recites an apparatus for automatic manufacture of an object,
which apparatus includes a programmable logic controller and a processor
associated with the programmable logic controller. Ex. 1001, 8:25–34.
Claim 7 further recites: “wherein the processor identifies a plurality of
intersection parameters which define the intersection of the two components;
wherein the processor extracts from the design model the intersection
parameters . . . .” Id. at 8:43–47. The two recited functions of the processor
correspond exactly to the identifying and extracting steps discussed above in
the context of claim 1.
For these identifying and extracting functionalities of the processor,
Petitioner relies on the same arguments it presents for the identifying and
extracting steps discussed above in the context of claim 1. Pet. 62-63.
Patent Owner does not present arguments additional to those it presents for
the identifying and extracting steps of claim 1. Our reasoning above
regarding the identifying and extracting steps of claim 1 equally applies to
the identifying and extracting functionalities of claim 7.
Accordingly, Petitioner has not shown a reasonable likelihood that it
would prevail in establishing that claim 7 is anticipated by Hashimoto.
Claim 14 recites an article of manufacture, comprising a program
storage medium which has computer-readable program code incorporated
therein for the automatic manufacture of an object. Ex. 1001, 9:7-10.
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Claim 14 further recites: “computer-readable code for identifying a plurality
of intersection parameters which define the intersection of the two
components; computer-readable code for extracting from the design model
the intersection and manufacturing parameters. . . .” Id. at 10:4–8. The two
recited computer-readable code segments correspond exactly to the
identifying and extracting steps discussed above in the context of claim 1.
For these identifying and extracting functionalities of the computer-
readable code, Petitioner relies on the same arguments it presents for the
identifying and extracting steps discussed above in the context of claim 1.
Pet. 73. Patent Owner does not present arguments additional to those it
presents for the identifying and extracting steps of claim 1. Our reasoning
above regarding the identifying and extracting steps of claim 1 equally
applies to the identifying and extracting functionalities of claim 14.
Accordingly, Petitioner has not shown a reasonable likelihood that it
would prevail in establishing that claim 14 is anticipated by Hashimoto.
5. Dependent Claims 2–6 and 8–13
Claims 2–6 each depend, directly or indirectly, from claim 1. Claims
8–13 each depend, directly or indirectly, from claim 7. Thus, claims 2–6
each incorporate all of the limitations of claim 1, and claims 8–13 each
incorporate all of the limitations of claim 7. 35 U.S.C. § 112(d). The
deficiencies discussed above for claim 1 equally apply to claims 2–6, and the
deficiencies discussed above for claim 7 equally apply to claims 8–13.
Petitioner has not shown a reasonable likelihood that it would prevail in
establishing that any of claims 2–6 and 8–13 is anticipated by Hashimoto.
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D. Alleged Obviousness of Claims 1–14 over Hashimoto
1. The Law of Obviousness
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
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) when in evidence, objective
evidence of nonobviousness.7 Graham v. John Deere Co., 383 U.S. 1, 17–
18 (1966).
2. Claim 1
With regard to the identifying and extracting steps of claim 1,
Petitioner asserts:
[T]o the extent that Patent Owner might argues that Hashimoto
does not expressly disclose that the embodiment illustrated in
FIGS. 20–26 and described in EX1005, [0151]-[0173] is used n
connection with the building information system disclosed in
EX1005, [0065]-[0147], it would have been obvious to a Skilled
Artisan to utilize the hole information generation process of
FIGS. 22–23 to generate the hole information at the member
totaling module in EX1005, [0101]; EX1003,¶144.
Pet. 76.

7 Patent Owner has not presented any objective evidence of nonobviousness
or any argument in that regard.
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Petitioner further explains:
The description of “fastening hole” information in EX1005,
[0151]-[0173] relates to a specific system whereby overall
throughput can be improved by segregating fastening holes by
their complexity, and only stopping the production line for holes
“requiring high machining accuracy.” EX1005, [0153]-[0158].
Thus, the problem that Hashimoto set out to solve—improving
efficiency in the process of designing and producing a steel
house—is further served by utilizing the hole information
generating system of FIGS. 22-23 in conjunction with building
information system disclosed in EX1005, [0065]-[0147].
Pet. 76–77.
Patent Owner asserts that Petitioner’s statement that combining the
two embodiments improves production efficiency is merely conclusory
reasoning, supported by the same conclusory reasoning of Petitioner’s
expert. Prelim. Resp. 36.
We agree with Patent Owner that Petitioner does not sufficiently
explain why a person of ordinary skill in the art would have combined the
two embodiments of Hashimoto in the manner proposed by Petitioner. To
establish obviousness, Petitioner must explain why a skilled artisan would
have been motivated to make the combination or modification of prior art to
arrive at the claimed invention; it is insufficient to assert a skilled artisan
could have made the combination. See Belden, 805 F.3d at 1073.
Petitioner’s assertion that “it would have been obvious to a Skilled Artisan
to utilize the hole information generation process of FIGS.22–23 to generate
the hole information at the member totaling module” is conclusory and does
not establish why one of skill in the art would have made the modification to
the member totaling module.
Figures 22 and 23 do not describe or refer to the generation of any
order list. Hashimoto includes no disclosure that the process of Figure 22,
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when executed, involves or leads to the generation of an order list. Given
the role of the member totaling module in providing input to order list
generator 102 to generate an order list, Petitioner has not provided adequate
reasoning to modify Hashimoto’s member totaling module. Petitioner’s
general assertions that a skilled artisan would have been motivated to
combine the building information system and the building information
distribution system (not the specific relied upon member totaling module)
with the hole information generation system to improve efficiency (Pet. 77)
do not provide a specific reason for why one of skill in the art would have
made the proposed modification to the member totaling module. Therefore,
Petitioner’s explanation is inadequate.
Additionally, Petitioner fails to make an adequate showing that
Hashimoto teaches the “extracting” limitation. In its proposed combination
of the two embodiments of Hashimoto, Petitioner asserts it would have been
obvious to a skilled artisan to utilize the hole information generation process
of Figure 22 to generate the hole information at the member totaling
module. Pet. 76; see also Pet. 42 (Petitioner’s assertion that the member
totaling module “could have executed the process of Fig. 22 [to] generate
that hole information.”). But, claim 1 specifically requires that the
extracting of the intersection parameters be from the design model received
by the programmable logic controller. Figure 22 of Hashimoto describes
“hole information [is] automatically generated from individual member
attributes.” Ex. 1005, Fig. 22. Petitioner points to no disclosure in
Hashimoto that the information about the type of hole, e.g., a connecting
hole or a non-connecting hole, is contained within the design model received
by the programmable logic controller. Thus, Petitioner does not sufficiently
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establish that Hashimoto teaches or suggests “extracting from the design
model” the intersection parameters.
Additionally, Petitioner’s obviousness argument and articulated
motivation to combine teachings is deficient, for selectively picking and
choosing from the second embodiment only so much of it to support the
alleged unpatentability, to the exclusion of other features that would
undermine the assertion of unpatentability. See Bausch & Lomb, 796 F.2d at
448. In Bausch & Lomb, the Federal Circuit stated:
This statement, however, was improperly taken out of context.
As the former Court of Customs and Patent Appeals held:
It is impermissible within the framework of section
103 to pick and choose from any one reference only
so much of it as will support a given position to the
exclusion of other parts necessary to the full
appreciation of what such reference fairly suggests
to one skilled in the art.
In re Wesslau, 353 F.2d 238, 241, 147 USPQ 391, 393 (CCPA
1965); see also In re Mercer, 515 F.2d 1161, 1165–66, 185
USPQ 774, 778 (CCPA 1975).
Id. As shown in Figure 22, the second embodiment includes a key step,
following identification and extraction of fastening hole information and
prior to transmission of that fastening hole information to the manufacturing
machine. It is the step for manual adjustment of the fastening hole
information prior to sending it to the automatic manufacturing machine.
That is a required step, not optional. Petitioner has provided no reason to
eliminate that step from the second embodiment. Petitioner’s picking only
so much of Figure 22 as would support its position and ignoring another part
of Figure 22 which would undermine its position amounts to selective
picking and choosing based on improper application of hindsight.
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A full appreciation of the embodiment shown in Figure 22 includes
recognizing that the fastening hole information identified and extracted from
the design model is not that which is transmitted to the automatic
manufacturing machine, and that a manual adjustment step is required.
Simply taking the automatically generated fastening hole information of
Figure 22 and providing it to the automatic manufacturing machine, without
manual adjustment, as Petitioner has proposed, is contrary to Hashimoto’s
disclosure and, on this record, based on impermissible hindsight.8
For the foregoing reasons, Petitioner has not shown a
reasonable likelihood that it would prevail in establishing that claim 1
would have been obvious over Hashimoto.
3. Independent Claims 7 and 14
For the identifying and extracting functionalities of claims 7 and 14,
Petitioner relies on the same arguments it presents for the identifying and
extracting steps of claim 1. Pet. 74-77. Patent Owner does not present
arguments additional to those it presents for the identifying and extracting
steps of claim 1. Our reasoning above regarding the identifying and
extracting steps of claim 1 equally applies to the identifying and extracting
functionalities of claims 7 and 14.
Accordingly, Petitioner has not shown a reasonable likelihood that it
would prevail in establishing that claims 7 and 14 are obvious over
Hashimoto.

8 Had the manual adjustment step been incorporated for inclusion in the first
embodiment, the resulting combination would not satisfy “automatic
manufacture,” which we have construed to mean that the identified and
extracted parameters must not be subjected to human review, approval,
and/or modification prior to being sent to a manufacturing machine.

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4. Dependent Claims 2–6 and 8–13
Claims 2–6 each depend, directly or indirectly, from claim 1. Claims
8–13 each depend, directly or indirectly, from claim 7. Thus, claims 2–6
each incorporate all of the limitations of claim 1, and claims 8–13 each
incorporate all of the limitations of claim 7. 35 U.S.C. § 112(d). The
deficiencies discussed above for claim 1 equally apply to claims 2–6, and the
deficiencies discussed above for claim 7 equally apply to claims 8–13.
Petitioner has not shown a reasonable likelihood that it would prevail in
establishing that any of claims 2–6 and 8–13 would have been obvious over
Hashimoto.
E. Alleged Obviousness of Claim 13 over Hashimoto and Chen
1. Overview of Chen
Chen is directed to a computer numerical control (“CNC”) wireless
transmission system that improves mobility by employing a portable
wireless transmitter with an independent power source and reduces cost by
replacing an expensive mobile transmitter, such as a laptop, and also
reducing the amount of transmitters with one portable wireless transmitter.
Ex. 1018 ¶¶ 2, 7-9.
2. Claim 13
Claim 13 depends from claim 7 and further recites: “wherein the
transmitter passes the design model via a wireless connection.” Ex. 1001,
9:4–5. Petitioner relies on Chen to meet the additional limitation of claim 13
relative to independent claim 7. As applied by Petitioner, Chen does not
make up for any of the deficiencies of the Petition as discussed above in the
context of claim 7. Accordingly, Petitioner has not shown a reasonable
likelihood that it would prevail in establishing that claim 13 would have
been obvious over Hashimoto and Chen.
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III. CONCLUSION
After considering the evidence and arguments presented in the
Petition and the Preliminary Response, Petitioner has not shown a
reasonable likelihood that it would prevail in establishing unpatentability of
any claim of the ’719 patent.
IV. ORDER
It is
ORDERED that, pursuant to 35 U.S.C. § 314(a), no inter partes
review of claims 1–14 of the ’719 patent is instituted, and the Petition is
denied.

Trials@uspto.gov Paper 15
571-272-7822 Date: May 11, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

PEDDINGHAUS CORPORATION,
Petitioner,

v.

FICEP CORPORATION,
Patent Owner.

IPR2020-01707
Patent 7,974,719 B2

Before JAMESON LEE, NORMAN H. BEAMER, and
MELISSA A. HAAPALA, Administrative Patent Judges.

BEAMER, Administrative Patent Judge, dissenting.
I respectfully dissent from the majority’s determination that Petitioner
has not shown a reasonable likelihood of prevailing on any challenged
claim, and accordingly denying the Petition. I would institute an inter partes
review as to all challenged claims and on all grounds raised in the Petition,
based on my determination that Petitioner has demonstrated a reasonable
likelihood that it would prevail at least with respect to its challenge of
independent claims 1, 7, and 14 as anticipated by Hashimoto.
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1. THE ’719 PATENT
As the majority opinion states, the ’719 patent is directed to the
“automatic manufacture of a multiple component object with intersecting
components based on a standard design model of the object.” Ex. 1001,
Abstr. Supplementing the majority’s description of the’719 patent, Figure 2
of the ’719 patent is reproduced below.

Figure 2 is a block diagram depicting automatic manufacturing system 200
including general-purpose computer 205 containing a design model, such as
a computer aided design (CAD) model, programmable logic controller 210,
and manufacturing machine 235, which can be one or more machine tools,
cutting tools, shaping machines, lathes, etc. Id. at 5:4–11, 5:31–32, 6:3–20.
Programmable logic controller 210 includes receiver 215, transmitter 225,
storage unit 220, and display 230. Id. at 5:38–6:2. Computer 205 and
programmable logic controller 210 may be “inseparable components of other
electronic devices, such as a computer.” Id. at 7:19–21.
In operation, a design model, in the form of a detailed three-
dimensional CAD diagram of, for example, an architectural structure such as
a steel shed, including specifications, dimensions of components, and
tolerances, is created and stored on computer 205. Ex. 1001, 3:46–52, 3:62–
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65, 5:17–21, 6:21–33. Programmable logic controller 210 receives the
design model, identifies and extracts the dimensions of the components of
the structure and intersection and manufacturing parameters, and transmits
them to manufacturing machine 236. Id. at 3:53–4:52, 5:31–41, 6:34–57.
Manufacturing machine 236 proceeds to manufacture the components of the
structure in accord with the information provided to it. Id. at 4:56–63, 6:3–
8, 6:48–67.
The purported object of the ’719 patent is to avoid errors and save
time and expense compared to prior approaches wherein a human operator
manually programs the manufacturing machines based on the computer-
aided design. Ex. 1001, 1:26–2:5, 7:29–40.
2. CLAIM CONSTRUCTION
In regard to construing the claims of the ’719 patent, Petitioner states,
“Petitioner believes that no construction is necessary for any claim terms in
this proceeding, and that all terms should be given their plain and ordinary
meaning in the context of the ’719 Patent.” Pet. 11. However, in comparing
the claim requirements to the Hashimoto reference, Petitioner proposes
constructions for “identifying,” “extracting,” “intersection parameters,” and
“manufacturing parameters,” which constructions it characterizes as in
accord with the plain meaning of those terms. Pet. 37–39 (citing Singhose
Decl. ¶¶ 125, 131–134). In response, Patent Owner proposes different
constructions for those terms. Prelim. Resp. 12–23. The majority opinion
also construes some of these terms. I separately discuss these claim
construction issues below.
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a. “identifying”;“extracting”
Independent claim 1 of the ’719 patent requires “identifying a
plurality of intersection and manufacturing parameters which define in part
the intersection of the two components,” and “extracting from the design
model the intersection and manufacturing parameters.” Ex. 1001, 7:63–67.
Independent claims 7 and 14 have similar requirements. Id. at 8:43–47,
10:4–8. The ’719 patent does not elaborate on the meaning of “identifying,”
but states that extracting “[t]ypically . . . includes copying or recording the
intersection parameters. . . .” Ex. 1001, 4:31–32. The patent goes on to state
that the parameters may be stored or displayed, and in any event they are
ultimately transmitted to the manufacturing machine. Id. at 4:36–56.
Petitioner observes that “there appears to be little, if any, difference
between ‘identifying’ information in a file, and ‘extracting’ the identified
information.” Pet. 37 (citing Singhose Decl. ¶¶ 125, 131). Setting aside the
“if any” portion of this statement, I agree that there is little difference
between these two steps — the ’719 patent describes the “identifying” and
“extracting” operations, although separate, as essentially occurring hand-in-
hand, with no particular characteristic that would differentiate identifying a
parameter from extracting a parameter, and no discernable transition from a
step of identifying a parameter to the step extracting a parameter, other than
stating that the end-result of the process is “copying or recording” the
parameters. Ex. 1001, 3:58–62, 4:8–11, 4:29–40.9 The ’719 patent never

9 Unlike the majority, I agree with Petitioner that the statement in the ’719
patent, “[e]xtracting dimensions of object components of the design model
or design (step 110) generally includes identifying the individual
components that are connected together . . .,” although not explicitly directed
to identifying or extracting intersection parameters, nevertheless underscores
the fact that there is little difference between identification and extraction
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describes identifying parameters without an accompanying step of
extraction, or vice versa. Nonetheless, given that the specification and
claims describe and call out “identifying” and “extracting” as two separate
operations, Petitioner “assum[es] that the ‘identifying’ step refers to the
process of locating relevant information, and that the ‘extracting’ step refers
to obtaining or copying that information.” Pet. 37.10
Patent Owner also asserts that “identifying” and “extracting” are
separate concepts in the context of the ’719 patent claims, and further asserts
that the extraction step occurs after the identification step. Prelim. Resp. 12–
13; Sur-Reply 2–3. Petitioner’s position, stated above, is not inconsistent
with this observation, and I agree with it (as does the majority).
In addition, Patent Owner challenges Petitioner’s assumption as to the
meaning of “identifying,” arguing that the identification step requires “the
computer automatically performing the analysis of ‘identifying’ the
intersection parameters, rather than simply locating information that could
have been manually programmed by a human.” Prelim. Resp. 14.
The majority agrees with Petitioner’s position that “extracting”
parameters refers to obtaining or copying the parameters, but would further
construe “identifying” as requiring “a distinct recognition of that specific
information is required in the sense that mere locating a broad class of
information does not locate a specific subclass of that information,” and that

insofar as the ’719 patent is concerned. See Pet. 37 (citing Ex. 1001, 3:58–
62) (emphasis added).
10 The majority states that Petitioner asserts that “identifying and extracting
are the same.” However, the above-quoted statement is what I understand to
be Petitioner’s proposed construction of the terms at issue.
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“the locating must be sufficient to specifically distinguish that which is
located from the rest of the information.”
I discuss these issues raised by Patent Owner and the majority below.
i. Patent Owner’s requirement of automatically identifying
In regard to the first part of Patent Owner’s proposed construction,
requiring that the computer automatically identify the specified information,
Patent Owner relies on a claim construction opinion entered in the Voortman
litigation. Prelim. Resp. 20–21 (citing Ex. 1020, 14, 18). In particular, the
court in Voortman construed “wherein the processor identifies a plurality of
intersection parameters which define the intersection of the two
components,” in independent claim 7, to mean “wherein the processor
associated with the programmable logic controller identifies, without human
intervention, a plurality of intersection parameters which define the
intersection of the two components.” Ex. 1020, 18 (emphasis added).11 The
court also construed the “extracting” limitation as being “without human
intervention.” Id.
The court emphasized that the overall system or method encompassed
by the claims, notwithstanding that the preambles of the independent claims
specified “automatic manufacture,” did not exclude “human intervention at
the receiving and transmitting steps [of the claims] — steps that the

11 Patent Owner observes that it is “somewhat unclear as whether [the court]
intended the ‘without human intervention’ language to also be included in
the ‘identifying/identifies’ limitation of claims 1 and 14, in addition to
claim 7.” Prelim. Resp. 20 n. 3. In fact, the court’s order only construed
claim 7 to require “without human intervention.” Ex. 1020, 18. However,
for purposes of this Dissent, I do not differentiate between the independent
claims as to the “identifying/identifies” limitation.
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specification states may be performed manually.”12 Ex. 1020, 15–16 (citing
Ex. 1001, 3:47–54, 6:34–40, 6:51–57). However, as to the “identifying” and
“extracting” steps of the claims, the court relied on statements in the
prosecution history of the patent distinguishing the cited Jones reference:
(1) that ‘Jones [is] concerned with the kind of system described
in the background section . . . of applicant’s disclosure[, in
which] a human operator typically must program manually
manufacturing machines associated with an assembly line”; (2)
the ’719 patent ‘invention aims to eliminate such problems [by]
eliminat[ing] errors made in the process of transferring a CAD
generated design into instructions for controlling a
manufacturing machine”; and (3) the ’719 patent claims
‘include[] at least one [PLC which,] being in communication
with both the computing device . . . and the manufacturing
machine . . . overcomes the problems of the prior art.’
Ex. 1020, 12–13 (quoting Ex. 1019, 24–25) (alteration in original) (footnote
omitted). The court was persuaded by Patent Owner that “‘manual
programming’ means ‘translat[ing] the CAD drawing into the instructions
that program the machine’ — in other words, the ‘identifying’ and
‘extracting’ steps, not the ‘receiving’ and ‘transmitting’ steps,” and that
“although the prosecution history referenced the unavailable human
operator, it had referred to — and, thus, meant — the unavailable specialized
human operator described in the background section, ‘who could perform
manual programming based on a CAD drawing, not any human at all.’” Id.
at 13. In sum, Patent Owner argued, and the court agreed, that the problems

12 The court in Voortman held that the preambles of the independent claims
were not limiting. Ex. 1019, 16. The parties here, as well as the majority,
assume that the preambles are limiting. As discussed below, I agree to the
extent that it is not necessary to determine whether or not the preambles are
limiting because Petitioner has shown, for purposes of the anticipation
analysis, that the recitation in the preambles is disclosed in Hashimoto.
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of the prior art that the ’719 patent purported to avoid was the need for
“translation ‘by a specialized human operator,’” “by which CAD
information was turned into instructions for the manufacturing machines.”
Id. at 14–15. Patent Owner reiterates these arguments in its Response here
— e.g., “The ‘specialized’ operator is not any human that can push a button,
but a human that can translate the CAD drawing into the instructions that
program the machine on where to drill holes or make marks.” Prelim. Resp.
21, see also Prelim. Resp. 22–23.
Petitioner does not challenge Patent Owner’s argument that the
identifying and extracting steps must be performed without human
intervention. Pet. 11 n. 2, 46 n. 7. For purposes of this Dissent, I agree that
the claims require the identifying step (as well as the extracting step) to be
performed automatically without human intervention.
The majority also agrees that claims require the identifying step and
the extracting step to be performed automatically without human
intervention. The majority further determines that, even if the parameters
are automatically identified and extracted, “the identified and extracted
parameters must not be subjected to human review, approval, and/or
modification prior to being sent to a manufacturing machine.” This point is
not relevant to my analysis of anticipation of the independent claims by
Hashimoto — it is only relevant to issues raised in comparing the second
embodiment of Hashimoto (further described below) to the claims, which, as
evident in my anticipation analysis below, is unnecessary to establish
anticipation in my view.
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ii. Patent Owner’s exclusion of manually programmed information
In regard to Patent Owner’s argument that “identification” excludes
“simply locating information that could have been manually programmed by
a human,” Patent Owner cites a summary judgment opinion entered in the
Voortman litigation as supporting this construction. Prelim. Resp. 13–14
(citing Ex. 2003, 12–13; Ex. 2001, 22). However, the Voortman opinion
simply rejected a noninfringement argument asserting that the information
being identified had to be pre-existing, but the opinion did not construe
“identifying” as excluding identifying preexisting information that was, for
example, previously entered by a human during the CAD design process.
Reply 2–3 (citing Ex. 2001, 22). As Petitioner correctly argues, the claims
require information to be “extract[ed] from the design model,” and therefore
the identification step requires identifying information in the design model,
which would include information previously entered in the design by a
human. Reply 1–2.
Patent Owner also relies on references in the ’719 specification to
“marking-out operations” that are performed “automatically.” Prelim. Resp.
4, 14 (citing Ex. 1001, Abstr., 1:8–9, 1:55-58). However, nothing in the
specification indicates one way or the other whether the information
pertaining to such marking out operations is created by humans during the
design or is independently created by software. I accept for purposes of this
Dissent Patent Owner’s description of one of its products, which, according
to an article in “Modern Steel Construction,” has the ability to “extract data
from detailing software and import it directly to a machine for automated
scribing” in the form of an “XML file.” Prelim. Resp. 9, 38 (citing Ex.
2005, 2–3). But the ’719 patent does not describe this feature — at most it
differentiates between a worker manually marking-out a component versus
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the manufacturing machine automatically doing so. Ex. 1001, 1:55–57.
This says nothing about whether or not a human designer programmed the
marking-out information during the design stage. Therefore, the references
to automatic marking-out in the ’719 patent do not support Patent Owner’s
proposed construction of “identifying.”
Patent Owner also argues that the prosecution history supports its
construction of “identifying.” Prelim. Resp. 14–16. As discussed above, the
cited Jones reference was distinguished because, with Jones, “a human
operator typically must program manually the manufacturing machines.” Id.
at 14. However, as Patent Owner explained to the court in the Voortman
claim construction proceedings, “‘manual programming’ means
‘translat[ing] the CAD drawing into the instructions that program the
machine’ — in other words, the ‘identifying’ and ‘extracting’ steps, not the
‘receiving’ and ‘transmitting’ steps.” Ex. 1020, 13 (alteration in original).
This does not pertain to the issue of whether information identified and
extracted from the design model prior to its transmittal to the manufacturing
machine may have been created by humans during the design of the
structure or must have been independently created by software. As
Petitioner points out, the “prior art problems of operator error or
unavailability are still resolved by the automation of identifying intersection
parameters, even if such information is simply located and copied.”
Reply 2.
Also, Jones was further distinguished by the applicants on the basis
that it was “directed solely to the manufacturing of single component parts,”
and therefore, argued applicants, Jones does not handle the problem of
intersecting components, and thus does not disclose identifying and
extracting intersection parameters from a design model. Ex. 1002, 77-80.
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Therefore, applicant’s arguments during prosecution do not support
excluding from the identifying step, “locating information that could have
been manually programmed by a human.” Reply 2.
iii. The majority’s narrow interpretation of “identifying”
The majority would construe “identifying” in the ’719 patent claims
as requiring “a distinct recognition of that specific information is required in
the sense that mere locating a broad class of information does not locate a
specific subclass of that information,” and that “the locating must be
sufficient to specifically distinguish that which is located from the rest of the
information.” There is no support for this narrow construction. All that the
’719 patent requires is that the identified parameters be “extract[ed] from the
design model.” Ex. 1001, 7:63–67. Necessarily, that means that the
parameters are contained in the design model, which is created prior to the
identifying step at a computing device, using, for example, a CAD
application. Id. at 1:14–17, 3:67–4:2, 7:51. Although the ’719 patent does
not elaborate on the CAD design process, I assume for purposes here that
dimensions and intersection and manufacturing parameters are either entered
by the human designer or calculated by the CAD application during the
design. This is described in claim 1, for example, as “creating, at a
computing device, a design model of an object.” Id. at 7:51–52.
Given that, I would agree with the majority that, during the design
stage, intersection parameters must be specifically identified for each
intersection, and the intersection parameters must be distinguishable from
each other and from other parameters and information. But once the design
information is entered into the design model, claim 1 of ’719 patent, for
example, only specifies that it be identified, extracted, and transmitted to the
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manufacturing machine. Id. at 7:60–8:4. There is no requirement in claim 1
or the other claims, or suggested elsewhere in the ’719 patent, that, during
the identification and extraction steps, the identified information cannot be
part of “a broad class of information” or that any one portion of the
information be “specifically distinguish[ed] . . . from the rest of the
information.”
iv. Conclusion re “identifying” and “extracting”
In sum, for purposes of this Dissent, I agree with Petitioner that
“identifying” refers to the process of locating relevant information, and that
“extracting” refers to obtaining or copying that information, and I also agree
with Patent Owner that identifying and extracting must occur automatically
without human intervention. It is unnecessary to further construe these
terms.
b. “intersection parameters”; “manufacturing parameters”
In construing the terms “intersection parameters” and “manufacturing
parameters,” Petitioner relies on the statements in the ’719 patent,
“[i]ntersection and/or manufacturing parameters are generally associated
with an intersection or association of any two or more components that make
up an object,” and “[t]he intersection and/or manufacturing parameters
define [the] intersection point and the manufacturing to be performed.”
Pet. 38 (citing Ex. 1001, 4:12–23); see also Ex. 1001, 1:50–53 (“design
parameters related to intersections and points of contact or connection
between components that come into contact with other components. . . .”).
In addition, Petitioner relies on the examples of these parameters disclosed
in the ’719 patent:
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The parameters associated, for instance, with the cross
arms [i.e, an exemplary intersection point] (distance from the
floor, bolts fixing point, the point of support of the beam, et
cetera) are intersection and/or manufacturing parameters.
Id. (citing Ex. 1001, 4:24–27). From this, Petitioner proposes:
“[I]intersection parameters” refers specifically to values
that define the locations, shapes, and types of intersection
points between components. . . . Similarly, “manufacturing
parameters” would have been understood to be values that
define the size and shape of raw materials to manufacture
components, as well as values that define the movements of the
manufacturing machine to generate the desired components.
Pet. 39 (citing Singhose Decl. ¶ 134) (emphasis omitted). Based on this,
Petitioner asserts that intersection parameters include the shape and position
of the holes that would accommodate the bolts, rivets or screws that attach
two structural components together. Id. at 40 (citing Singhose Decl. ¶ 136).
Petitioner cites the ’719 patent disclosure:
To continue with the . . . shed example, the H-shaped
components that form the pillars of the shed and the beams
intersect by means of the installation of cross arms, fixed by
means of bolts to said pillars on which the beams are lain on. The
point at which the pillar intersects the beam, that is to say the
point where the cross arm should be installed, is an intersection
point. The intersection and/or manufacturing parameters define
this intersection point and the manufacturing to be performed.
The parameters associated, for instance, with the cross
arms (distance from the floor, bolts fixing point, the point of
support of the beam, et cetera) are intersection and/or
manufacturing parameters.
Reply 3–4 (citing Ex. 1001, 4:15–28) (emphasis added). Petitioner argues
that the references to the connection of intersecting beams and pillars using
bolts, and identification of bolt fixing points as intersection parameters,
necessarily means that the positions and shapes of the holes for such bolts
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are intersection parameters which define the intersection. Id. at 4 (citing
Singhose Decl. ¶¶ 133–136).
Patent Owner does not specifically challenge Petitioner’s general
definition of “intersection parameters” as “defin[ing] the locations, shapes,
and types of intersection points between components,” or Petitioner’s
corresponding definition of “manufacturing parameters,” but argues that a
hole cannot be an intersection parameter because it “says next to nothing”
about the locations and shapes of an intersection point, and that “[a] hole
placed at a location on a steel member does not define how two members
intersect.” Prelim. Resp. 17, 28. Instead, Patent Owner argues that “[a]
POSITA would . . . understand that intersection parameters must include the
type of information that would allow for the marking-out of the intersection
between two components like a beam and a pillar.” Prelim. Resp. 18.
Patent Owner offers, as an example of such marking-out, the above-
discussed marking-out capabilities of its product described an illustrated in
the article in “Modern Steel Construction.” Prelim. Resp. 18–19; see Ex.
2005, 2–3. Patent Owner again relies on the statements in the ’719 patent:
“instructing a manufacturing machine to mark out the position of the
components”; “automatic … marking-out of an object”; “[t]his robust
solution improves efficiency and accuracy and lowers cost, since manual
marking-out operations can be performed automatically.” Id. at 18 (citing
Ex. 1001, Abstr., 1:8-9, 1:55-58).
I do not agree with Patent Owner’s arguments. As Petitioner
responds, “neither the claims nor specification describe the ‘identif[ication]’
of ‘intersection parameters’ as requiring information for ‘scribing’ lines.”
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Reply 5. There is no specific disclosure in the ’719 patent that the marking-
out operations described by Patent Owner relate to intersection parameters.13
On the other hand, the reference to “bolt fixing point” as an example
of an intersection parameter in substance establishes that bolt hole shapes
and positions are such parameters. Id. at 4. Patent Owner argues that “[t]o a
person looking at a member having holes in it, there is no way to tell if a
hole is for wiring or is instead for connecting to another member.” Prelim.
Resp. 28. But the claims are not directed to the ability of a “person” being
able to ascertain the function of hole or other feature of a manufactured
component. The pertinent point in the process where the intersection
parameter defines an intersection is during the CAD design process, not after
the components are manufactured. The intersection parameters include the
“distance from the floor, bolts fixing point, the point of support of the beam,
et cetera,” which are automatically identified and extracted, and transmitted
to the manufacturing machine. Ex. 1001, 4:25–26, claim 1. It is not the
“hole” itself that is an intersection parameter, but rather the hole positions
and shape values entered into the design model during the CAD design that
define where and how the components of a structure are connected
together.14

13 I do not rule out that marking-out information may be considered
intersection or manufacturing parameters — the ’719 patent neither requires
nor disallows such information to be so categorized.
14 The parties do not explicitly discuss the definition of “define” in this
context, but I apply “define” in the sense of “to give the distinguishing
characteristics of.” Ex. 3001. For the intersections discussed in this context,
“the distance from the floor, bolts fixing point, the point of support of the
beam, et cetera,” are such distinguishing characteristics, as are the positions
and shapes of the bolt holes of such an intersection.
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Accordingly, I agree with Petitioner that “intersection parameters” at
least refers to values that define the locations, shapes, and types of
intersection points between components, and “manufacturing parameters”
refers to values that define the size and shape of raw materials to
manufacture components, as well as values that define the movements of the
manufacturing machine to generate the desired components. I agree that the
shapes and positions of the holes used for the bolts, screws or rivets
connecting intersecting components together are examples of intersection
parameters.
The majority agrees that the hole shape and hole position of holes
“relating to connecting two component parts” are intersection parameters.
However, the majority determines that Petitioner’s definition of intersection
parameters is too narrow, and states that “any value associated specifically
with intersection points between components constitutes an intersection
parameter and it need not convey information about each of location, shape,
and type of intersection points between components.” I do not disagree with
this alternative construction, although I do not interpret Petitioner’s
articulation as requiring a single parameter to convey information about
each of location, shape, and type of intersection points between components.
Either Petitioner’s or the majority’s construction of intersection parameter
serves for present purposes — under either definition, the hole shape and
hole position of holes relating to connecting two component parts are
intersection parameters.
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3. ANTICIPATION OF THE INDEPENDENT CLAIMS BY
HASHIMOTO
a. The Disclosures of Hashimoto
Hashimoto, titled “Information Processing System For Manufacturing
Building Material, Building Material Manufacturing Method And Facility,
And Building Information Circulating System,” was filed May 20, 2002, and
published February 24, 2005. Ex. 1005, codes (54), (22), (43).
A first embodiment disclosed in Hashimoto is depicted in Figure 1
reproduced below.

Figure 1 is a block diagram of information processing system 100 including
design drawing generating unit 101, order list generating unit 102, member
production control unit 103, storage unit 104, display unit 105, and operating
unit 106. Ex. 1005 ¶ 66. Information processing unit 100 can be
implemented on a computer, and is configured to produce light gauge shape
sheet steel components for a steel house, for example. Id. ¶ 76.
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A CAD (Computer Aided Design) system, also on the computer, is
used to design the steel house, for example, and that information is provided
to drawing generating unit 101 to automatically generate design drawings
for the various components of the house, such as wall panels, floor panels
and roof trusses. Ex. 1005 ¶¶ 6, 19–20, 78, 80–81. The CAD system is used
to determine dimensions of the components to be manufactured, including
automatic generation of the positions, shape and machining accuracy of the
fastening holes that connect the components of the structure. Id. ¶¶ 30, 76–
78, 86, 101. The design drawings generated by drawing generating unit 101
are automatically provided to order list generating unit 102 to create an order
list that automatically totals, by cross section or length, the information
including the shape, length, quantity, hole shape and hole position of all the
light gauge shape sheet steel used for the steel house existing in the CAD
system. Id. ¶¶ 20, 101–102, 138. The order list is automatically provided to
member production control unit 103, which automatically fabricates, under
the control of the computer, the structural components of the designed
structure according to the information provided. Id. ¶¶ 18, 103, 138, 142.
Thus:
[T]he building designer and the light gauge shape sheet steel
maker can automate the processing steps from the design to the
production of the light gauge shape sheet steel in its
entirety. . . .
Id. ¶ 141.
Hashimoto also discloses a second embodiment that describes a more
detailed version of a manufacturing machine, also for producing “the light
gauge shape sheet steel for a steel house,” which provides different
manufacturing techniques for “fastening holes not requiring very high
machining accuracy” (e.g., holes for passing the electrical wiring) versus
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“fastening holes requiring high machining accuracy” (e.g., fastening holes
for connecting the light gauge shape sheet steel for the steel house).
Ex. 1005 ¶¶ 151–173. Like the first embodiment, this embodiment also
includes a CAD system for designing the structure, and the information from
the CAD system is automatically provided to the manufacturing machine for
automatic fabrication of the components of the structure. Id. at Fig. 22,
¶¶ 155–156, 163, 172.15
b. Independent Claim 1
The preamble of claim 1 states, “[a] method for automatic
manufacture of an object.” Ex. 1001, 7:49–50. Petitioner relies on the
disclosure in Hashimoto of the automatic manufacture of the panels and roof
trusses of a steel house structure. Pet. 17–18 (citing Ex. 1005, Title, ¶¶ 2,
20, 30; Singhose Decl. ¶¶ 85–88).16
The first limitation of claim 1 requires, “creating, at a computing
device, a design model of an object having multiple individual components,
at least two of the individual components defining an intersection at which
the two components are in contact with one another.” Ex. 1001, 7:51–55.
Petitioner relies on the disclosure in Hashimoto of using CAD software to
design the steel building, including wall panels, floor panels, and roof

15 Hashimoto further discloses a third embodiment directed to a building
information distribution aiding system. Ex. 1005 ¶¶ 174–194.
16 Petitioner assumes the preamble is limiting (Pet. 18), and, as discussed
above, Patent Owner successfully persuaded the court in the Voortman
litigation that the preambles of the independent claims were not limiting.
Ex. 1019, 16. Because Petitioner has shown that the recitation in the
preamble is disclosed in Hashimoto, there is no need at this time to
determine whether the preamble is limiting. See Vivid Techs., Inc. v. Am.
Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
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trusses, which include “members” connected to each other. Pet. 19–25
(citing Ex. 1005 Figs. 3, 16, ¶¶ 3, 6, 18–19, 66–67, 76, 78–79, 81, 85–87,
103, 131; Singhose Decl. ¶¶ 91–105, 126–129). For example, Figure 16 is
reproduced below.

Figure 16 depicts a roof truss, including various members that are connected
together. Ex. 1005, Fig. 16, ¶¶ 49, 130–131.
The second limitation of claim 1 requires, “receiving, at a
programmable logic controller, the design model of the object.” Ex. 1001,
7:56–57. Petitioner relies on the disclosure in Hashimoto of computer 200,
which processes the design model created by the CAD application. Pet. 25–
28 (citing Ex. 1005, Figs. 1, 2, ¶¶ 66–80; Singhose Decl. ¶¶ 107–110, 116).17
The third limitation of claim 1 requires, “storing, at a database unit,
the design model received at the programmable logic controller.” Ex. 1001,

17 For the second limitation of claim 1, Petitioner alternatively relies on the
third, “building information distribution aiding system,” embodiment
disclosed in Hashimoto. Pet. 29–32. For purposes of this Dissent, it is not
necessary to consider this alternative.
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7:58–59. Petitioner relies on the disclosure in Hashimoto of storage unit 104
which stores the CAD-based design drawings for the steel house. Pet. 32–33
(citing Ex. 1005, Fig. 2, ¶¶ 68–75; Singhose Decl. ¶¶ 106–122).
The fourth limitation of claim 1 requires, “extracting from the design
model a plurality of component dimensions defining a plurality of
components of the object.” Ex. 1001, 7:60–62. Petitioner relies on the
disclosure in Hashimoto of computer 200 determining from the design
drawings the shapes and lengths of the members making up the wall panels,
floor panels, and roof trusses of the steel house, and automatically
generating the above-described order list. Pet. 33–36 (citing Ex. 1005, Fig.
19, ¶¶ 83, 86, 101–102; Singhose Decl. ¶¶ 126–129).
The fifth limitation of claim 1 requires, “identifying a plurality of
intersection and manufacturing parameters which define in part the
intersection of the two components.” Ex. 1001, 7:63–65. Petitioner relies
on the disclosure in Hashimoto of computer 200 automatically determining
from the design drawings the hole shapes and positions of the fastening
holes that accommodate the screws or rivets that connect together the
members making up the wall panels, floor panels, and roof trusses of the
steel house. Pet. 39–40, 43–45 (citing Ex. 1005, Fig.19, ¶¶ 4, 20, 101, 103;
Singhose Decl. ¶¶ 135–136, 141–143).18 See also:
[T]he information including the positions, shape and the
machining accuracy of the fastening holes can be automatically
generated in accordance with the attributes of the individual
members, and the fastening hole information thus generated are
fetched into the member control information. In this manner, a

18 For the fifth limitation of claim 1, Petitioner also relies on disclosures in
the second embodiment of Hashimoto, as providing additional details on the
processing of the fastening hole information. Pet. 40–43. For purposes of
this Dissent, it is not necessary to consider this additional disclosure.
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multiplicity of fastening hole information are efficiently
obtained automatically. . . .
Ex. 1005 ¶ 30.
[B]y opening and accurately setting in position the fastening
holes in the light gauge shape sheet steel and assembling the
members, the steel house can be constructed most efficiently
with high accuracy.
Id. at ¶ 76.
[T]he information obtained in the CAD system is operatively
interlocked with the CAM system by designing the panel
drawing (design drawing) for each building by the CAD system
and burying the information such as the shape and the fastening
holes of each light gauge shape sheet steel in the information
(design drawing information) of the panel drawing.
Id. at ¶ 78.
Such CAD system has registered therein . . . the logic
about the position of the fastening holes of each light gauge
shape sheet steel.
Id. at ¶ 86.
The roof truss drawing generating module is such that . . .
the fastening hole information are input predetermined
positions of the particular members based on the steel house
construction method. . . .
Id. at ¶¶ 97, 99, Fig. 16.
The sixth limitation of claim 1 requires, “extracting from the design
model the intersection and manufacturing parameters.” Ex. 1001, 7:66–67.
Petitioner relies on the disclosure in Hashimoto of computer 200
automatically compiling into the order list the hole shapes and positions of
the fastening holes. Pet. 46–47 (citing Ex. 1005, Fig. 19; Singhose Decl.
¶ 146).
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The seventh limitation of claim 1 requires, “transmitting the
intersection and manufacturing parameters and the component dimensions
from the programmable logic controller to at least one manufacturing
machine.” Ex. 1001, 8:1–4. Petitioner relies on the disclosure in Hashimoto
of computer 200 providing the information summarized in the order list to
production control unit 103, which in turn controls the member production
machines. Pet. 47–48 (citing Ex. 1005, Fig. 19, ¶¶ 103, 138, 141; Singhose
Decl. ¶¶ 149–150).
The eighth limitation of claim 1 requires, “manufacturing, by means
of the at least one manufacturing machine, the components based at least
partly on the transmitted component dimensions and the transmitted
intersection and manufacturing parameters.” Ex. 1001, 8:5–8. Petitioner
relies on the disclosure in Hashimoto of the automatic fabrication of the
member parts of the steel house structure based on the information in the
order list. Pet. 49 (citing Ex. 1005 ¶¶ 103, 141–142; Singhose Decl. ¶¶ 154–
156).
Patent Owner relies on its claim construction arguments discussed
above to dispute Petitioner’s arguments that Hashimoto anticipates claim 1,
particularly focusing on the fifth and sixth limitations of claim 1 requiring
identifying and extracting the intersection parameters. Prelim. Resp. 24–33.
Patent Owner first argues that Petitioner cannot rely the disclosures in both
the first and second embodiments of Hashimoto to prove anticipation, and
that even if considered together, there is insufficient disclosure to associate
the member totaling module of the first embodiment with the manufacturing
processes of the second embodiment. Id. at 25–27 (citing Net MoneyIN, Inc.
v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008)). However, as
discussed above, Petitioner’s anticipation proofs do not hinge on combining
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the two embodiments, and for purposes of this Dissent I do not consider the
additional disclosures of the second embodiment as necessary for the
analysis.
In addition, continuing to focus on the second embodiment of
Hashimoto, Patent Owner argues that the fastening hole information
described in Hashimoto are not intersection parameters that define the
intersection between components, because a hole in a steel member does not
define how two members intersect, there would be no way for a person
looking at a member to tell if a hole is for electrical wiring or for fastening
members together, and even for the holes associated with intersections,
“there is no way to tell which hole in which member connects to which hole
in which other member,” or “what the intersection would look like.” Prelim.
Resp. 27–30.
In the first place, the first embodiment of Hashimoto, which is the
pertinent disclosure for this analysis, does not provide for electrical wiring
holes — only fastening holes are described. E.g., Ex. 1005 ¶ 76. More
generally, as discussed above, parameters including the shape and position
of the holes that would accommodate the bolts, rivets or screws that attach
two structural components together are intersection parameters. These
parameters define the intersection of components because they are part of
the information provided as part of the CAD process for designing the
intersections of the structural components. If two members are to be
connected together using bolts, screws, or rivets, the shapes and positions of
the holes through with those connections are made is part of the definition of
the intersection, in the sense that they are parameters that “give the
distinguishing characteristics” of the intersection. Ex. 3001. There is no
requirement in the claim language that, once the hole shapes and positions
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are defined, that later in the manufacturing of the component, a person or a
device must be able to determine, from those parameters, “which hole in
which member connects to which hole in which other member,” or “what the
intersection would look like.” Claim 1 only requires those parameters to be
identified and extracted from the design model, and transmitted to the
manufacturing machine, which then drills or punches the holes at the
specified location of the member. See Reply 3–5.
Patent Owner additionally argues that, in Hashimoto, the intersection
parameters are not automatically identified. Prelim Resp. 30–31. As
discussed above, I agree that the identifying and extracting steps of claim 1
must be performed automatically without human intervention. Patent Owner
bases its argument on Figure 22 of Hashimoto, which includes a step in the
design process in which “Holes Automatically Developed By Logic Are
Finely Adjusted Manually.” Id. at 30 (citing Ex. 1005, Fig. 22, ¶ 155).
However, this portion of the Hashimoto relates to the second embodiment,
which as discussed is not necessary for the purposes of this analysis. For the
first embodiment, Hashimoto discloses automatic identification and
extraction of the hole shapes and positions. Ex. 1005, Figs. 8, 10, 13, 16.
¶¶ 20, 30, 86, 89, 101, 138, 141–142, 147–150.
Finally, Patent Owner asserts that disclosure in the first embodiment
of Hashimoto regarding the asserted intersection parameters (i.e., the shapes
and positions of fastening holes used for connecting members of the
structure) is insufficient. Prelim. Resp. 31–32. As set forth above, there is
ample disclosure in the first embodiment of Hashimoto of the automatic
generation of the shapes and positions of fastening holes as part of the CAD
design process, and the automatic identification and extraction of those
parameters in accord with the claim requirements. Patent Owner repeats its
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arguments that shapes and positions of fastening holes are not intersection
parameters (id. at 32), which argument is unpersuasive for the reasons
discussed above. Patent Owner also argues that there is no identification of
such parameters, but rather that the parameters are only automatically
totaled. This defies logic, as the totaling of parameters necessarily is
preceded by their identification and extraction, and in any event this
argument ignores the explicit disclosure in the first embodiment of
Hashimoto that “the positions, shape and the machining accuracy of the
fastening holes can be automatically generated in accordance with the
attributes of the individual members.” Ex. 1005 ¶ 30.
The majority also determines that Hashimoto does not disclose the
fifth and sixth limitations of claim 1 requiring identifying and extracting the
intersection parameters, based on reasoning similar to some of Patent
Owner’s arguments discussed above. The majority relies on its unduly
narrow definition of “identifying,” with which I do not agree for the reasons
discussed above. In particular, the majority notes that Hashimoto provides
for including “wiring holes” in the design, the positions and shapes of which
would not be intersection parameters (although I note that they would be
manufacturing parameters). The majority would require that Hashimoto
disclose some sort of identification that “recognizes which hole is for which
purpose,” and points out that the order list of Figure 19 does not differentiate
between fastening holes and wiring holes.
I do not agree with this approach. As discussed in the context of
Patent Owner’s arguments, the first embodiment of Hashimoto does not
provide for wiring holes — it only discloses the automatic identification and
extraction of the parameters for fastening holes. Moreover, there is nothing
in the ’719 patent, and no basis in the claim language, for the majority’s
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interpretation of “identifying” that would require an intersection parameter
to retain some sort of label or indication that differentiates between fastening
holes and wiring holes. All that claim 1, for example, requires is that the
parameters, once they are identified (i.e., located) and extracted from the
design model, be transmitted to the manufacturing machine for manufacture
of the associated component. The manufacturing machine automatically
drills the holes in the proper location, irrespective of whether the holes are
for fastening or wiring.
Accordingly, upon review of the current record and consideration of
the parties’ arguments, I am persuaded that Petitioner has demonstrated a
reasonable likelihood that it would prevail with respect to its challenge of
claim 1 as anticipated by Hashimoto.
c. Independent Claims 7 and 14
Independent claim 7 is an “apparatus” counterpart to independent
method claim 1, and independent claim 14 is an “article of manufacture”
counterpart to claim 1. Ex. 1001, 8:25–55, 9:7–10:16. The claim limitations
of claims 7 and 14 closely correspond to those of claim 1, as does
Petitioner’s comparison of the claim requirements to the disclosures of
Hashimoto, and in response Patent Owner incorporates by reference the
arguments made for claim 1. Id.; Pet. 57–67, 71–74; Prelim. Resp. 33. The
majority opinion also in substance invokes its claim 1 analysis.
Accordingly, in my view Petitioner has demonstrated a reasonable
likelihood that it would prevail with respect to its challenge of claims 7 and
14 as anticipated by Hashimoto.
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4. DISCRETIONARY DENIAL
Petitioner argues that there is no basis for discretionary denial
pursuant to 35 U.S.C. § 314(a) in light of the pending parallel Peddinghaus
litigation because no trial has been scheduled, trial is not expected to occur
until well after any final written decision would issue in this proceeding, the
court allegedly routinely grants stays pending resolution of inter partes
review after institution. Patent Owner does not address this issue.
Therefore, it is not necessary to further consider discretionary denial of
institution.
5. CONCLUSION
For the foregoing reasons, I would determine that the information
presented in the Petition and Preliminary Response establishes that there is a
reasonable likelihood that Petitioner would prevail in challenging at least
one claim of the ’719 patent. Because Petitioner has satisfied the threshold
for institution as to at least one claim, I would institute inter partes review
on all claims and all grounds raised in the Petition. See SAS Inst. Inc. v.
Iancu, 138 S. Ct. 1348, 1359–60 (2018) (holding that a decision to institute
under 35 U.S.C. § 314 may not institute on fewer than all claims challenged
in the petition).

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For PETITIONER:
Scott M. Border
Jason P. Greenhut
Stephanie P. Koh
Sidley Austin LLP
sborder@sidley.com
jgreenhut@sidley.com
skoh@sidley.com

For PATENT OWNER:
Matthew B. Lourie
James C. De Vellis
Foley & Lardner LLP
mlowrie@foley.com
jdevellis@foley.com