Ficep CorporationDownload PDFPatent Trials and Appeals BoardMay 11, 2021IPR2020-01707 (P.T.A.B. May. 11, 2021) Copy Citation 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 IPR2020-01707 Patent 7,974,719 B2 2 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 IPR2020-01707 Patent 7,974,719 B2 3 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. IPR2020-01707 Patent 7,974,719 B2 4 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 IPR2020-01707 Patent 7,974,719 B2 5 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 IPR2020-01707 Patent 7,974,719 B2 6 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; IPR2020-01707 Patent 7,974,719 B2 7 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; IPR2020-01707 Patent 7,974,719 B2 8 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). IPR2020-01707 Patent 7,974,719 B2 9 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. IPR2020-01707 Patent 7,974,719 B2 10 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 IPR2020-01707 Patent 7,974,719 B2 11 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). IPR2020-01707 Patent 7,974,719 B2 12 “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. IPR2020-01707 Patent 7,974,719 B2 13 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 IPR2020-01707 Patent 7,974,719 B2 14 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 IPR2020-01707 Patent 7,974,719 B2 15 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. IPR2020-01707 Patent 7,974,719 B2 16 “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 IPR2020-01707 Patent 7,974,719 B2 17 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 IPR2020-01707 Patent 7,974,719 B2 18 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 IPR2020-01707 Patent 7,974,719 B2 19 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. IPR2020-01707 Patent 7,974,719 B2 20 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: IPR2020-01707 Patent 7,974,719 B2 21 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. IPR2020-01707 Patent 7,974,719 B2 22 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. IPR2020-01707 Patent 7,974,719 B2 23 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 IPR2020-01707 Patent 7,974,719 B2 24 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. IPR2020-01707 Patent 7,974,719 B2 25 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.” IPR2020-01707 Patent 7,974,719 B2 26 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” IPR2020-01707 Patent 7,974,719 B2 27 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. IPR2020-01707 Patent 7,974,719 B2 28 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. IPR2020-01707 Patent 7,974,719 B2 29 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 IPR2020-01707 Patent 7,974,719 B2 30 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. IPR2020-01707 Patent 7,974,719 B2 31 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). IPR2020-01707 Patent 7,974,719 B2 32 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. IPR2020-01707 Patent 7,974,719 B2 33 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. IPR2020-01707 Patent 7,974,719 B2 34 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. IPR2020-01707 Patent 7,974,719 B2 35 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, IPR2020-01707 Patent 7,974,719 B2 36 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 IPR2020-01707 Patent 7,974,719 B2 37 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. IPR2020-01707 Patent 7,974,719 B2 38 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. IPR2020-01707 Patent 7,974,719 B2 39 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. IPR2020-01707 Patent 7,974,719 B2 40 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. IPR2020-01707 Patent 7,974,719 B2 2 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– IPR2020-01707 Patent 7,974,719 B2 3 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. IPR2020-01707 Patent 7,974,719 B2 4 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 IPR2020-01707 Patent 7,974,719 B2 5 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. IPR2020-01707 Patent 7,974,719 B2 6 “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. IPR2020-01707 Patent 7,974,719 B2 7 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. IPR2020-01707 Patent 7,974,719 B2 8 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. IPR2020-01707 Patent 7,974,719 B2 9 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 IPR2020-01707 Patent 7,974,719 B2 10 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. IPR2020-01707 Patent 7,974,719 B2 11 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 IPR2020-01707 Patent 7,974,719 B2 12 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: IPR2020-01707 Patent 7,974,719 B2 13 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 IPR2020-01707 Patent 7,974,719 B2 14 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.” IPR2020-01707 Patent 7,974,719 B2 15 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. IPR2020-01707 Patent 7,974,719 B2 16 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. IPR2020-01707 Patent 7,974,719 B2 17 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. IPR2020-01707 Patent 7,974,719 B2 18 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 IPR2020-01707 Patent 7,974,719 B2 19 “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). IPR2020-01707 Patent 7,974,719 B2 20 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. IPR2020-01707 Patent 7,974,719 B2 21 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. IPR2020-01707 Patent 7,974,719 B2 22 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). IPR2020-01707 Patent 7,974,719 B2 23 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 IPR2020-01707 Patent 7,974,719 B2 24 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 IPR2020-01707 Patent 7,974,719 B2 25 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 IPR2020-01707 Patent 7,974,719 B2 26 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 IPR2020-01707 Patent 7,974,719 B2 27 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. IPR2020-01707 Patent 7,974,719 B2 28 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). IPR2020-01707 Patent 7,974,719 B2 29 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 Copy with citationCopy as parenthetical citation