Pride Mobility Products Corp. v. Permobil, Inc. , 818 F.3d 1307 ( 2016 )

United States Court of Appeals
for the Federal Circuit
______________________
PRIDE MOBILITY PRODUCTS CORPORATION,
Appellant
v.
PERMOBIL, INC.,
Appellee
______________________
2015-1585, 2015-1586
______________________
Appeals from the United States Patent and Trade-
mark Office, Patent Trial and Appeal Board in Nos.
IPR2013-00407, IPR2013-00411.
______________________
Decided: April 5, 2016
______________________
GARY H. LEVIN, Baker & Hostetler LLP, Philadelphia,
PA, argued for appellant. Also represented by HAROLD H.
FULLMER, DANIEL J. GOETTLE.
AMY K. WIGMORE, Wilmer Cutler Pickering Hale and
Dorr LLP, Washington, DC, argued for appellee. Also
represented by OWEN K. ALLEN, HEATH BROOKS, DAVID
LANGDON CAVANAUGH, RICHARD ANTHONY CRUDO.
______________________
Before REYNA, TARANTO, and CHEN, Circuit Judges.
2 PRIDE MOBILITY PRODUCTS CORP. v. PERMOBIL, INC.
TARANTO, Circuit Judge.
Pride Mobility Products Corp. owns U.S. Patent Nos.
8,408,598 and 8,408,343, which disclose and claim wheel-
chairs designed to travel stably over obstacles. The
Patent and Trademark Office’s Patent Trial and Appeal
Board, acting through a panel under authority delegated
by the Director, instituted inter partes reviews of the ’598
and ’343 patents on petitions filed by Permobil, Inc. under
35 U.S.C. § 311 et seq. After reviewing the patents, the
Board cancelled all claims of both patents for obviousness.
Permobil, Inc. v. Pride Mobility Prods. Corp., IPR2013-
407, 2014 WL 7405755 (PTAB Dec. 31, 2014) (’598 Deci-
sion); Permobil, Inc. v. Pride Mobility Prods. Corp.,
IPR2013-411, 2014 WL 7405756 (PTAB Dec. 31, 2014)
(’343 Decision). Pride Mobility’s appeal centers on two
issues: (1) whether the Board misconstrued claim 7 of the
’343 patent, which requires a “substantially planar”
mounting plate “oriented perpendicular” to the axis of the
claimed wheelchair’s drive wheel; and (2), as to all other
claims, whether the Board erred in concluding that a
relevant skilled artisan would have been motivated to
make the claimed wheelchair by lowering the position of a
pivot in a prior-art wheelchair. We reverse the Board’s
construction and cancellation of claim 7 of the ’343 patent.
As to the other claims, we affirm.
BACKGROUND
Pride Mobility and Permobil compete for sales of
power wheelchairs. The ’598 and ’343 patents disclose
wheelchairs that raise their front wheels (called caster
wheels) in response to torque from the chairs’ motors,
enhancing the capacity of the chairs to travel stably over
obstacles. ’598 patent, col. 2, line 55, through col. 3, line
3; ’343 patent, col. 2, lines 16–31. Figure 2 of the ’598
patent and Figure 3B of the ’343 patent are illustrative:
4 PRIDE MOBILITY PRODUCTS CORP. v. PERMOBIL, INC.
The ’343 patent discloses a chair that is similar in rel-
evant respects. See ’343 patent, Figs. 1, 3A, 3B, & 5; id.,col. 7, line 51, through col. 8, line 8. Figure 3B shows
portions of the ’343 patent’s chair relevant to the issue
presented by claim 7 of that patent. A part of each of a
left and right drive assembly (not numbered in Figure 3B)
is a mounting plate (number 56 in other Figures), a
portion of which is shown in Figure 3B as 57b. See id.,col. 7, lines 60–63; id., col. 8, lines 27–32. That part of the
mounting plate contains a pivot 29. The plate connects at
its top to the roughly horizontal (slightly bent) front arm
(numbered 60 in other Figures), which in turn connects to
a caster wheel 66. Id., col. 8, lines 27–35, 60–62; id., col.
11, lines 21–28. As in the ’598 patent’s chair, the relevant
pivot of the ’343 patent’s chair is positioned below a line
drawn between the chair’s drive-wheel axis A-DW and the
front-caster-wheel axis (not numbered).
Claim 1 of the ’343 patent, representative of most of
the claims at issue, reads:
1. A wheelchair comprising:
a frame;
a drive wheel defining a drive wheel axis a mount-
ing plate pivotally coupled to the frame at a piv-
ot axis, the pivot axis being positioned forward
of the drive wheel axis; a mounting plate pivot-
ally coupled to the frame at a pivot axis, the piv-
ot axis being positioned forward of the drive
wheel axis;
a drive operatively coupled to the drive wheel and
affixed to the mounting plate;
a forward-extending front arm rigidly extending
from the mounting plate such that the mounting
plate, drive, and front arm are together config-
ured to pivot about the pivot axis;
PRIDE MOBILITY PRODUCTS CORP. v. PERMOBIL, INC. 5
a front wheel rotatably coupled to the front arm,
the front wheel defining a front wheel axis,
wherein a vertical position of the pivot axis with
respect to the ground plane is spaced from and
positioned relatively below a line drawn between
the drive wheel axis and the front wheel axis
when the drive wheels and front wheels are on
level ground;
whereby motor torque biases the front wheel.
Id., col. 14, line 58, through col. 15, line 12 (emphasis
added). Claim 7 of the ’343 patent, which depends on
claim 1, adds:
wherein the mounting plate is substantially pla-
nar and is oriented perpendicular to the drive
wheel axis.
Id., col. 16, lines 10–12.
Permobil filed petitions for inter partes review of the
’598 and ’343 patents under 35 U.S.C. § 311(a). Permobil
argued that the wheelchairs of all claims of the ’598
patent would have been obvious over WO 02/34190 to
Goertzen in view of, among other references, U.S. Patent
No. 6,454,286 to Hosino and U.S. Patent No. 6,129,165 to
Schaffner. Permobil also argued that the wheelchairs of
all claims of the ’343 patent would have been obvious over
Goertzen in view of, among other references, Hosino and
U.S. Patent Application No. 03/0205420 to Mulhern. In
its preliminary responses under 35 U.S.C. § 313, Pride
Mobility argued that Permobil had failed to show a moti-
vation to make the asserted combinations of references.
The primary reference, Goertzen, discloses a wheel-
chair for traversing obstacles such as curbs. The
Goertzen chair has a pivot arm connected to the chair’s
frame by a pivot-mounting structure, such that the pivot
connecting to the frame is positioned above a straight line
drawn between the drive-wheel and front-caster-wheel
6 PRIDE MOBILITY PRODUCTS CORP. v. PERMOBIL, INC.
axes. Hosino, Mulhern, and Schaffner also disclose
wheelchairs equipped for riding over uneven terrain.
Significantly, both Hosino and Mulhern disclose chairs
with pivots or pivot-like elements located below a line
drawn between their drive-wheel and front-caster-wheel
axes. Schaffner discloses a chair with a drive-wheel axis
and housing, the housing enclosing a motor and transmis-
sion.
The Board, exercising the PTO Director’s authority by
regulatory delegation, 37 C.F.R. § 42.4(a), instituted
reviews of all claims of both patents under 35 U.S.C.
§ 314(a). As to the ’598 patent, the Board concluded that
Permobil had established a reasonable likelihood that the
wheelchairs of claims 1, 4–8, and 11–13 would have been
obvious over Goertzen and Hosino—combining the two by
using Hosino’s low pivot point to motivate the lowering of
the pivot point in Goertzen. Using the same core reason-
ing as to the pivot-point location, the Board also conclud-
ed that Permobil had established a reasonable likelihood
that the wheelchairs of claims 2, 3, 9, and 10 would have
been obvious over Goertzen, Hosino, and Schaffner. As to
the ’343 patent, the Board concluded, again for similar
reasons, that Permobil had established a reasonable
likelihood that the wheelchairs of all of that patent’s
claims would have been obvious over Goertzen and Hosino
and, separately, that the wheelchairs of claims 1 and 4–10
would have been obvious over Goertzen and Mulhern.
After the reviews were instituted, the Board began
conducting the reviews under 35 U.S.C. §§ 6(b)(4) &
316(c). Pride Mobility filed responses as authorized by 37
C.F.R. § 42.120. In reliance on a declaration from its
expert, Dr. Curran, Pride Mobility argued that a skilled
artisan would have recognized that lowering the pivot in
the Goertzen chair would reduce that chair’s stability.
Dr. Curran discussed various options that a skilled arti-
san might consider to reduce the instability caused by
lowering Goertzen’s pivot, but he concluded that each of
PRIDE MOBILITY PRODUCTS CORP. v. PERMOBIL, INC. 7
those options would compromise the chair’s performance.
Permobil, in a reply implicitly authorized by 37 C.F.R.
§§ 42.23, 42.24(c)(1), maintained that there were ways to
adjust the characteristics of the chair to maintain its
stability, citing, among other things, deposition testimony
of Permobil’s expert, Dr. Richter.
The Board cancelled all claims of both patents in its
final written decisions under 35 U.S.C. § 318(a). As to the
’598 patent, the Board first determined that the wheel-
chairs of claims 1, 4–8, and 11–13 would have been obvi-
ous over Goertzen and Hosino. ’598 Decision, at *12. In
particular, the Board found that Permobil’s expert, Dr.
Richter, had testified about how lowering the pivot point
in the Goertzen chair would introduce a stability problem
but that a skilled artisan “would have known to compen-
sate for the reduction in stability” in various ways. Id. at
*10 (citing J.A. 990–92). It also found that the advantage
of using a low pivot axis taught in Hosino applied equally
to the chair disclosed in Goertzen, despite physical differ-
ences between the two chairs and different principal uses.
Id. at *11. On those bases, the Board found that a skilled
artisan would have looked to Hosino and modified
Goertzen accordingly. Id. The Board also concluded that
the wheelchairs of claims 2, 3, 9, and 10 of the ’598 patent
would have been obvious over Goertzen, Hosino, and
Schaffner. Id. at *12–15.
As to the ’343 patent, the Board first construed lan-
guage in claim 7—which requires a mounting plate that
“is substantially planar and is oriented perpendicular to
the drive wheel axis,” ’343 patent, col. 16, lines 10–12—as
covering an arrangement in which the drive-wheel axis is,
in common-sense and ordinary geometric terms, parallel
to the planar surface of a substantially planar mounting
plate. The Board so concluded by relying on the patent’s
description of Schaffner as showing a drive-wheel axis
that is perpendicular to a motor—a motor whose longitu-
dinal axis (not any planar surface) was perpendicular to
8 PRIDE MOBILITY PRODUCTS CORP. v. PERMOBIL, INC.
the drive-wheel axis. The Board concluded that the claim
language, though referring to a substantially planar
mounting plate, is “broad enough to encompass not only
the orientation of mounting plate 56 relative to drive
wheel axis A-DW, but also the orientation of motor 80
relative to the drive wheel axis 24, as depicted in Figure 9
of [Schaffner].” ’343 Decision, at *6. On that basis the
Board found that claim 7 reads on the substantially
planar mounting plate 308 and drive-wheel axis 311 of
Figure 3 of Goertzen:
FIG. 3
(GOERTZEN)
The Board so found because, although the planar surface
of Goertzen’s mounting plate 308 plainly was not perpen-
dicular to the drive-wheel axis 311, one edge of the rough-
ly rectangular flat plate (perhaps the longer edge), like
the longitudinal axis of Schaffner’s motor, was perpendic-
ular to the drive-wheel axis. Id. at *13.
The Board ultimately concluded that the wheelchairs
of claims 1–10 of the ’343 patent would have been obvious
over Goertzen and Hosino, relying specifically on the just-
described claim construction for claim 7 and otherwise
relying on the same reasons that it determined that the
relevant claims of the ’598 patent failed for obviousness
over the same references. Id. at *7–13. It also concluded
that the wheelchairs of claims 1 and 4–10 of the ’343
PRIDE MOBILITY PRODUCTS CORP. v. PERMOBIL, INC. 9
patent would have been obvious over Goertzen and Mul-
hern. Id. at *13–15.
Pride Mobility appeals under 35 U.S.C. § 319, chal-
lenging the Board’s construction of claim 7 of the ’343
patent and the cancellation of the ’598 and ’343 patents’
claims. We have jurisdiction under 28 U.S.C.
§ 1295(a)(4)(A).
DISCUSSION
“This court reviews Board decisions using the stand-
ard set forth in the Administrative Procedure Act, 5
U.S.C. § 706.” In re Sullivan, 362 F.3d 1324, 1326 (Fed.
Cir. 2004) (citing Dickinson v. Zurko, 527 U.S. 150, 154
(1999)); see Power Integrations, Inc. v. Lee, 797 F.3d 1318,
1323 (Fed. Cir. 2015) (inter partes review); Belden Inc. v.
Berk-Tek LLC, 805 F.3d 1064, 1080 (Fed. Cir. 2015) (inter
partes review subject to various APA requirements).
Under 5 U.S.C. § 706(2)(A), (E), the Board’s actions here
are to be set aside if “arbitrary, capricious, an abuse of
discretion, or otherwise not in accordance with law” or
“unsupported by substantial evidence.” See Sullivan, 362
F.3d at 1326 (citing In re McDaniel, 293 F.3d 1379, 1382
(Fed. Cir. 2002)); Brief for Intervenor—Director of the
U.S. Pat. & Trademark Office at 23–24, Magnum Oil
Tools Int’l, Ltd., No. 2015-1300 (Fed. Cir. Sept. 18, 2015),
2015 WL 5920112, at *23–24 (inter partes review).
Two types of issues are presented here. Regarding
claim construction, “[t]here being no dispute here about
findings or evidence of facts extrinsic to the patent,
whether facts about outside-the-patent understandings of
technical words or other facts, we conduct a de novo
review of the Board’s determination of the broadest
reasonable interpretation of the claim language.”
Straight Path IP Group, Inc. v. Sipnet EU S.R.O., 806
F.3d 1356, 1360 (Fed. Cir. 2015). Such de novo review
accords with the de novo review of ordinary judicial claim
10 PRIDE MOBILITY PRODUCTS CORP. v. PERMOBIL, INC.
construction where, as here, no facts are in dispute. See
Teva Pharms. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831,
841 (2015); Ethicon Endo-Surgery, Inc. v. Covidien, Inc.,
796 F.3d 1312, 1323 (Fed. Cir. 2015). Regarding obvious-
ness, we review de novo the ultimate determination of
obviousness and compliance with legal standards, and we
review underlying factual findings for substantial evi-
dence. Belden, 805 F.3d at 1073.
A
We first review the Board’s construction and cancella-
tion of claim 7 of the ’343 patent. Claim 7 requires a
“mounting plate [that] is substantially planar and is
oriented perpendicular to the drive wheel axis.” ’343
patent, col. 16, lines 10–12. It is unreasonable to read
that straightforward language as meaning anything other
than that the drive-wheel axis is perpendicular to the
surface of the mounting plate that makes the plate sub-
stantially planar. In terms of simple geometry, if the
plate were translated in space (without rotation) so that it
intersected the axis, the axis would intersect the substan-
tially planar surface at a single point (not more) and
make a right angle.
The claim language says two things about the plate: it
must be substantially planar, and it must be oriented
perpendicular to the drive-wheel axis. The “oriented”
term allows the plate and axis not to be touching: it
requires that their placement in space must be such that,
if translated in space without rotation, they would be
perpendicular. With the axis idealized as a line, perpen-
dicularity in the ordinary geometric sense relevant here
requires that the axis make a right angle with either an
essentially one-dimensional feature (a line or curve) or an
essentially two-dimensional feature (a plane or surface) of
the plate: lines are not “perpendicular” to a three-
dimensional object in any other ordinary geometric sense.
And the claim tells us exactly what that feature of the
PRIDE MOBILITY PRODUCTS CORP. v. PERMOBIL, INC. 11
three-dimensional plate is: it is the surface that makes
the plate substantially planar. The claim identifies no
other feature of the plate. The phrase “oriented perpen-
dicular to the drive wheel axis” must be read to mean that
the drive-wheel axis is perpendicular to the mounting
plate’s substantially planar surface. We do not see how
the claim language can mean anything else without
obvious strain.
The specification reinforces this reading. In a first
embodiment, the specification says that “[m]ounting plate
56 preferably is planar and oriented perpendicular to the
rotational axis C-DW of drive wheels 58.” Id., col. 8, lines
27–29. In the same passage, it points to Figures 3A, 3B,
4A, and 4B as “best show[ing]” the components of mount-
ing plate 56, including its projection 57b. Id., col. 8, lines
29–32. Each of those figures shows projection 57b as
having a planar surface oriented perpendicularly to the
drive-wheel axis (A-DW) in the ordinary geometric sense.
The specification likewise says that mounting plate 56 (of
which 57b is a part) in a second embodiment “preferably
is planar and oriented perpendicular to rotational axis C-
DW of drive wheels 58′,” pointing to Figures 7A and 7B.
Id., col. 13, lines 19–23. Both of those figures show the
axis of the drive wheel oriented perpendicularly to the
planar surface of the mounting plate. The specification
nowhere describes or depicts the drive-wheel axis as
oriented other than perpendicular to the planar surface of
the mounting plate in the ordinary geometric sense.
The Board’s sole basis for its claim construction does
not reasonably support a departure from what the claim
language and specification so clearly mean. The ’343
patent’s specification describes Schaffner’s motor as
having an orientation “perpendicular to [Schaffner’s]
drive wheel axis.” Id., col. 9, lines 20–25. That descrip-
tion plainly refers to perpendicularity of the drive-wheel
axis to a one-dimensional feature of Schaffner’s motor,
namely, its longitudinal axis (which runs front to back in
12 PRIDE MOBILITY PRODUCTS CORP. v. PERMOBIL, INC.
the wheelchair): the description refers to Schaffner as
having a “longitudinally mounted motor[ ]” and “requiring
a right-angle gearbox” to translate the direction of the
motor’s motion to the drive-wheel axis. Id., col. 9, lines
21–26. Nothing in the reference to Schaffner refers to any
two-dimensional feature (plane or surface) of the motor as
perpendicular to the drive-wheel axis. In contrast, what
claim 7 by its terms refers to is precisely a two-
dimensional feature—the surface that makes the plate
substantially planar—and not any longitudinal axis or
other one-dimensional feature of the plate. Thus, the
reference to perpendicularity of the Schaffner motor has a
straightforward, ordinary-geometry meaning that has no
significant bearing on the distinct but equally straight-
forward, ordinary-geometry meaning of perpendicularity
in claim 7. Claim 7 requires that the mounting plate’s
substantially planar surface be oriented perpendicularly
to the drive-wheel axis.
Under that construction, the Board’s cancellation of
claim 7 must be reversed. The sole prior-art reference
that the Board (and Permobil) identified for this element
is Goertzen. The pertinent component of Goertzen is
substantially planar, but it is indisputably not perpendic-
ular to the drive-wheel axis in the ordinary sense required
by claim 7, and the Board did not find otherwise. The
Goertzen plate, if translated without rotation to intersect
the drive-wheel axis, would not intersect at a single point
and make a right angle: indeed, the axis would likely lie
flat on the plate. Accordingly, there is no evidence of the
claim 7 element in the relied-on prior art. Because there
is no other Board ruling or properly preserved argument
addressed to this element, we reverse the cancellation of
claim 7.
B
As to all of the other claims at issue, we affirm the
Board’s decision. The Board found that a relevant skilled
PRIDE MOBILITY PRODUCTS CORP. v. PERMOBIL, INC. 13
artisan would have been motivated to lower the pivot axis
in the Goertzen chair in the way shown in Hosino. Pride
Mobility challenges that finding, but it does not dispute
that the finding, if sustained, suffices to support all of the
rejections except for claim 7 of the ’343 patent. We sus-
tain the Board’s finding.
The Board had sufficient evidence to find that lower-
ing the pivot axis “enables a front caster wheel to move
‘rear upward’ and thereby more easily rise up and over-
come [an] obstacle” such as a curb. ’598 Decision at *11;
see also id. at *9; ’343 Decision at *11, *12; J.A. 338–39, ¶
38; J.A. 966, 985. Based on its expert’s evidence, howev-
er, Pride Mobility argues that a relevant skilled artisan
would have recognized that obtaining the obstacle-
climbing advantage would have come at the cost of intro-
ducing instability problems in the Goertzen chair and
that adjustments of other components of the chair to
compensate for instability would have introduced their
own problems. But we read the Board as having found,
and as reasonably understanding Dr. Richter to have
testified, that a relevant skilled artisan would have
“known to compensate for” the instability problem in ways
that preserved the acceptability of the wheelchair. See
’598 Decision at *10; ’343 Decision at *12; J.A. 985–92.
We need not go beyond saying that the findings and
evidence, so understood, are sufficient to support the
Board’s rejection of Pride Mobility’s argument against a
skilled artisan’s having had a reason to make the
Goertzen-Hosino combination.
CONCLUSION
We reverse the Board’s construction and cancellation
of claim 7 of the ’343 patent. We affirm the Board’s
cancellation of all other claims at issue in the ’598 and
’343 patents.
No costs.
14 PRIDE MOBILITY PRODUCTS CORP. v. PERMOBIL, INC.
REVERSED IN PART AND AFFIRMED IN PART