Wednesday, May 09, 2018

CAFC rules "a change in shading" is a change in shape in Valmont case

The outcome of an appeal of a PTAB inter partes review decision :

Valmont Industries, Inc. (“Valmont”) appeals from the
final decision of the Patent Trial and Appeal Board (“the
Board”) in an inter partes review, finding claims 1–10,
12–15, 17, and 18 of U.S. Patent No. 7,003,357 B1 (“the
’357 patent”) unpatentable as obvious. Lindsay Corp.
(“Lindsay”) cross-appeals the Board’s determination that
claim 11 was not obvious. We affirm the Board’s determination
of obviousness with respect to claims 1–10, 12–15,
17, and 18 and reverse as to claim 11.

As to evidentiary issues:

No statutes or rules prohibit a petitioner from submitting
additional evidence after the petition, and § 42.23(b)
specifically permits it. Our case law makes clear that a
petitioner may submit additional evidence in the reply in
response to the patent owner response. In Belden Inc. v.
Berk-Tek LLC, 805 F.3d 1064, 1080 (Fed. Cir. 2015), we
held that a patent owner “ha[d] not established that it
was denied its procedural rights” when a petitioner submitted
a new declaration with its reply. See also Altaire
Pharms., Inc. v. Paragon Bioteck, Inc., No. 2017-1487, Slip
Op. at 14–17 (Fed. Cir. Apr. 25, 2018) (finding an abuse of
discretion when the Board failed to consider a second
declaration submitted with a reply that responded to
arguments raised in the corresponding patent owner
response); Genzyme Therapeutic Prod. Ltd. P'ship v.
Biomarin Pharm. Inc., 825 F.3d 1360, 1364–69 (Fed. Cir.
2016) (finding it permissible for the petitioner to cite two
references in the reply that were not cited in the petition
to show the state of the art at the time). Thus, the Board
did not violate its rules or due process requirements in
concluding that the second Rosenberg declaration fairly
responds only to arguments made in Dr. Mercer’s declaration
and Valmont’s response.

The Board’s procedures in IPR proceedings provide
the patent owner with notice and opportunity to respond
as required by due process and the Administrative Procedure
Act. See 5 U.S.C. § 554(b)(3), (c), (d); In re Biedermann,
733 F.3d 329, 336–37 (Fed. Cir. 2013); Abbott Labs.
v. Cordis Corp., 710 F.3d 1318, 1328 (Fed. Cir. 2013).

Of claim 11:

The first question is whether shading constitutes a
change in “shape.” In matters of claim construction before
the Board as to unexpired patents, we apply the broadest
reasonable construction standard. Cuozzo, 136 S. Ct. at
2144–45. The Board concluded that “shading within the
original GUI does not change the shape of the GUI.” J.A.
36. However, we conclude that a change in shape occurs
when there is a change in pattern, such as through shading.

The CAFC then stated:

Webster’s dictionary defines “shape” as “the visible
makeup characteristic of a particular item or kind of
item.” Webster’s Third International Dictionary 2087
(2002). A change in shading falls within this definition as
it is a change in the visible makeup characteristics of the


Under the broadest reasonable construction standard,
a change in shape occurs when there is a change in shading.

The CAFC disagreed with PTAB:

The Board also determined that Abts did not disclose
GUIs shaped to identify an irrigation pattern. However,
we conclude that the circle-shaped GUIs in Abts are
shaped to identify an irrigation pattern. The Board’s
contrary decision is not supported by substantial evidence.


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