Smartdoor Holdings, Inc. v. Edmit Industries, Inc. , 707 F. App'x 705 ( 2017 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
SMARTDOOR HOLDINGS, INC.,
Appellant
v.
EDMIT INDUSTRIES, INC.,
Appellee
______________________
2016-2152
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2015-
00013.
______________________
Decided: September 7, 2017
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MICHAEL JOSEPH FOYCIK, JR., Silver Spring, MD,
argued for appellant. Also represented by THOMAS A.
MAURO, Mauro Law Offices, PC, Washington, DC.
DAMIAN KEVIN GUNNINGSMITH, Carmody Torrance
Sandak & Hennessey LLP, New Haven, CT, argued for
appellee. Also represented by JOHN RICHARD HORVACK,
JR.
______________________
2 SMARTDOOR HOLDINGS, INC. v. EDMIT INDUSTRIES, INC.
Before MOORE, REYNA, and STOLL, Circuit Judges.
STOLL, Circuit Judge.
Edmit Industries, Inc. filed a petition for inter partes
review with the Patent Trial and Appeal Board to review
the patentability of claims 16–18 and 27 of Smartdoor
Holdings, Inc.’s U.S. Patent No. 6,484,784. The Board
instituted an IPR proceeding on these claims and ulti-
mately determined that claims 16–18 and 27, as well as
Smartdoor’s proposed substitute claims, would have been
obvious under 35 U.S.C. § 103. Smartdoor appeals from
the Board’s final written decision. We affirm.
BACKGROUND
I.
The ’784 patent “relates to a control device for closing
and opening a door.” ’784 patent col. 1 ll. 5–6. Particular-
ly, the patent is directed to fire doors, which “serve[] as a
barrier to the spread of fire, smoke or fumes through an
opening or throughway in a building interior or exterior
wall.” Id. at col. 1 ll. 10–14. The patent purports to
improve on the prior art by harnessing energy caused by
the closing of the door to control the closing of the door,
also known as regenerative braking, and to power auxilia-
ry devices such as visual or audio indicators.
Claim 16, the only independent claim at issue in this
appeal, is illustrative:
16. A device comprising:
a door having an open, first position and a
closed, second position, with a force tending to
move said door toward said second position;
a disengageable stop connected to said door to
hold said door in said first position;
SMARTDOOR HOLDINGS, INC. v. EDMIT INDUSTRIES, INC. 3
a motor connected to said door, said motor
having an ability to move said door from said sec-
ond position to said first position; and
a generator connected to said door, wherein
movement of said door from said first position to
said second position causes said generator to pro-
duce power to apply a braking force to slow
movement of said door from said first position to
said second position and to power at least one
auxiliary device.
Id. at col. 14 ll. 23–37.
II.
Edmit petitioned for IPR of the ’784 patent, alleging,
inter alia, that claims 16–18 and 27 were unpatentable as
obvious under 35 U.S.C. § 103 in view of various prior art.
The Board instituted review of: (1) claims 16 and 17 as
obvious in view of U.S. Patent No. 5,386,891 (“Shea”) in
combination with U.S. Patent No. 1,367,298 (“Burke”); (2)
claim 18 as obvious in view of Shea in combination with
Burke and U.S. Patent No. 5,193,647 (“O’Brien”); and (3)
claim 27 as obvious in view of Shea in combination with
Burke and U.S. Patent No. 4,533,905 (“Leivenzon”).
The Board’s final written decision concluded that
claims 16 and 17 would have been obvious in view of Shea
in combination with Burke. Edmit Indus., Inc. v.
Smartdoor Holdings, Inc., IPR2015-00013, 2016 WL
1246855, at *7 (P.T.A.B. Mar. 29, 2016) (“Final Written
Decision”). The Board explained that Shea discloses a
mechanism for controlling the raising and lowering of a
door, whereby “[t]he mechanism is described generally as
comprising a brake, with a speed reduction gearing, and a
governor, to control the speed of the door when it is clos-
ing under the gravitational pull on the door.” Final
Written Decision, 2016 WL 1246855, at *3. The Board
explained that “Burke relates to alternating current
4 SMARTDOOR HOLDINGS, INC. v. EDMIT INDUSTRIES, INC.
motors that regenerate current when driven by the load,
i.e., the motor also serves as a generator” and discloses
that “it is desirable to utilize the regenerative function of
electric motors . . . where an electric braking action is
required as in electrically operated elevators, motor
vehicles, trains, and the like . . . .” Id. at *4 (emphasis
added). The Board additionally concluded that claim 18
would have been obvious in view of Shea in combination
with Burke and O’Brien. Id. at *9. The Board also con-
cluded that claim 27 would have been obvious in view of
Shea in combination with Burke and Leivenzon. Id. The
Board finally denied Smartdoor’s motion to amend, which
proposed substitute claims 40–43. Id. at *9–11.
Smartdoor timely appealed to this court. We have
jurisdiction under 28 U.S.C. § 1295(a)(4)(A) and 35 U.S.C.
§ 141(c).
DISCUSSION
Smartdoor first asserts that Burke “cannot perform
the regenerative [braking] function from a full stopped
position,” which Smartdoor posits is required by claim 16.
Appellant Br. 13. But our review of the record reveals
that Smartdoor did not raise this argument before the
Board. Indeed, in its final written decision, the Board
explained that Smartdoor “focuse[d] on the issues of
whether a person of ordinary skill in the art would have
sought to combine Shea and Burke and the feasibility of
the combination” and “d[id] not generally dispute [Ed-
mit’s] contention that the individual limitations of claims
16 and 17 would be met by the teachings of Shea and
Burke.” Final Written Decision, 2016 WL 1246855, at *4.
We have frequently declined to hear arguments that
were not presented to the Board. See, e.g., In re Watts,
354 F.3d 1362, 1367 (Fed. Cir. 2004). “On appeal to this
court, ‘we have before us a comprehensive record that
contains the arguments and evidence presented by the
parties’ and our review of the Board’s decision is confined
SMARTDOOR HOLDINGS, INC. v. EDMIT INDUSTRIES, INC. 5
to the ‘four corners’ of that record.” Id. (quoting In re
Gartside, 203 F.3d 1305, 1314 (Fed. Cir. 2000)). Thus, “it
is important that the applicant challenging a decision not
be permitted to raise arguments on appeal that were not
presented to the Board.” Id. A review of Smartdoor’s IPR
response, motion to amend, and oral hearing transcript
reveal that the argument Smartdoor now raises on appeal
related to whether Burke is able to perform the regenera-
tive function from a full stopped position was not raised
before the Board. Accordingly, this argument is waived
and we need not address it.
Smartdoor next challenges the Board’s finding that
Burke is analogous art, arguing that Burke “does not
mention a door or a DC motor.” Appellant Br. 15. “Two
separate tests define the scope of analogous prior art:
(1) whether the art is from the same field of endeavor,
regardless of the problem addressed and, (2) if the refer-
ence is not within the field of the inventor’s endeavor,
whether the reference still is reasonably pertinent to the
particular problem with which the inventor is involved.”
In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). Though
the Board acknowledged Smartdoor’s argument that
Burke does not disclose a door, the Board found that
Burke is analogous art because it is relevant to the prob-
lem faced by the inventor of the ’784 patent: the problem
of braking in electronic devices. The Board thoroughly
and correctly addressed Smartdoor’s argument, finding
that “Burke discloses an approach to that problem by
absorbing energy from a motor, operated as a generator,
for the purposes of braking.” Final Written Decision,
2016 WL 1246855, at *5. On appeal, Smartdoor does not
challenge this fact finding, but instead, continues to argue
that Burke is non-analogous art because it is not from the
same field of endeavor as the ’784 patent. We see no error
in the Board’s contrary finding, as it is supported by
substantial evidence.
6 SMARTDOOR HOLDINGS, INC. v. EDMIT INDUSTRIES, INC.
Smartdoor next challenges the Board’s finding of a
motivation to combine, arguing that the combination of
Shea and Burke “would necessarily destroy the teachings
of Shea to incorporate a regenerative braking scheme, as
it would require removing the governor.” Appellant
Br. 17. We disagree.
Addressing this same argument below, the Board cit-
ed In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012), for
the proposition that “a substitution of components, e.g.,
the substitution of an electrical component for an optical
component, does not destroy the principle of operation
where it does not destroy the overall principle of operation
of the device.” Final Written Decision, 2016 WL 1246855,
at *6. As the Board explained, “the asserted combination
of Shea and Burke would operate in the same manner as
the fire door of Shea—to slow the movement of the door,
while allowing the door to close under the force of gravi-
ty.” Id. Analogizing this case to Mouttet, the Board found
that the combination of Shea and Burke is “the substitu-
tion of an electrical component for an analog component,
which does not destroy the principle of operation because
it does not destroy the overall principle of operation of the
device” and that “this type of fitting together of teachings
would have been obvious to a person of ordinary skill in
the art.” Id. at *7. On appeal, Smartdoor fails to demon-
strate how this sound and thoroughly-explained finding
by the Board is not supported by substantial evidence.
Accordingly, we see no error in the Board’s finding.
Smartdoor finally challenges the Board’s denial of its
motion to amend, which proposed substitute claims 40–
43. Smartdoor, however, merely rests on the same argu-
ments addressed above. Accordingly, we see no error in
the Board’s denial of Smartdoor’s motion to amend.
CONCLUSION
We have considered Smartdoor’s remaining argu-
ments but discern no errors in the Board’s decision. The
SMARTDOOR HOLDINGS, INC. v. EDMIT INDUSTRIES, INC. 7
Board did a commendable job in rendering its detailed
and thorough opinion. The Board provided detailed
findings on the scope and content of Shea and Burke and
the reasons one of ordinary skill in the art would have
been motivated to combine these references, and carefully
and clearly responded to Smartdoor’s contrary arguments,
greatly aiding our review on appeal. Because we conclude
that the Board did not err in holding claims 16–18 and 27
of the ’784 patent unpatentable or denying Smartdoor’s
motion to amend, we affirm.
AFFIRMED
COSTS
Costs to Appellee.