Randall Mfg. v. Rea , 733 F.3d 1355 ( 2013 )

United States Court of Appeals
for the Federal Circuit
______________________
RANDALL MFG.,
Appellant,
v.
TERESA STANEK REA, Acting Director, United
States Patent and Trademark Office,
Appellee,
AND
FG PRODUCTS, INC.,
Appellee.
______________________
2012-1611
______________________
Appeal from the United States Patent and Trademark
Office, Board of Patent Appeals and Interferences in
Reexamination No. 95/000,326.
______________________
Decided: October 30, 2013
______________________
MARK H. REMUS, Steptoe & Johnson, LLP, of Chicago,
Illinois, argued for the appellant. With him on the brief
was MEREDITH MARTIN ADDY.
FRANCES M. LYNCH, Associate Solicitor, United States
Patent and Trademark Office, of Alexandria, Virginia,
2 RANDALL MFG. v. REA
argued for appellee United States Patent and Trademark
Office. With her on the brief were NATHAN K. KELLEY,
Deputy Solicitor, and LORE A. UNT, Associate Solicitor.
SCOTT A. MCKEOWN, Oblon, Spivak, McClelland,
Maier & Neustadt, LLP, of Alexandria, Virginia, argued
for appellee, FG Products, Inc.
______________________
Before RADER, Chief Judge, DYK, and TARANTO, Circuit
Judges.
TARANTO, Circuit Judge.
FG Products owns U.S. Patent No. 7,214,017, which is
directed to moveable bulkheads for partitioning cargo
space in a shipping container. FG’s competitor, Randall
Manufacturing, requested inter partes reexamination of
the ’017 patent, and the Patent and Trademark Office
examiner rejected a number of FG’s claims as obvious
over a combination of four prior-art references. On ap-
peal, the Board of Patent Appeals and Interferences (now
the Patent Trial and Appeal Board) reversed, unable to
discern any reason that one of ordinary skill in the art
would have been motivated to combine the cited refer-
ences. Randall appeals the Board’s determination to this
court. Because the Board failed to consider a wealth of
well-documented knowledge that is highly material to
evaluating the motivation to combine references to arrive
at the claimed invention, we vacate the Board’s decision
and remand the matter.
BACKGROUND
FG and Randall are competitors in selling products
for refrigerated trucks. In particular, both parties manu-
facture moveable, track-mounted bulkheads (partitions)
used for dividing cargo space. The ’017 patent, issued on
May 8, 2007, discloses partitioning apparatuses that
include two half-width panels independently mounted on
4 RANDALL MFG. v. REA
On December 4, 2007, Randall requested inter partes
reexamination of the ’017 patent. The Examiner granted
Randall’s request and subsequently rejected all 15 origi-
nal claims of the ’017 patent. In response, FG amended or
canceled its original claims and added 78 new claims.
Three years of additional prosecution ensued, including
consideration of dozens of prior-art references, resulting
in a series of rejections, responses, and amendments.
New claim 38 is representative of FG’s claims on appeal:
An apparatus for separating cargo areas in a
trailer, comprising:
a trailer that includes a cargo space;
first and second panels, each panel extending in
a direction generally perpendicular to a longi-
tudinal axis of the trailer, wherein when in a
first operative position the first and second
panels are arranged in a side-by-side configura-
tion and abut one another along adjacent pe-
ripheral edges of the panels;
fastening straps that releasably secure the first
and second panels together in the side-by-side
configuration to form a full-width bulkhead
that extends between opposing sidewalls of the
cargo space of the trailer;
a mounting system that provides each of the
first and second panels with a first degree of
freedom to convey the panels in a longitudinal
direction independently of one another and that
provides each of the first and second panels
with a second degree of freedom to raise the
panels independently, the mounting system
comprising a first set of two longitudinal rails
to guide movement of the first panel and a sec-
ond set of two longitudinal rails to guide
movement of the second panel, the first and
RANDALL MFG. v. REA 5
second sets of two longitudinal rails being at-
tached to at least one of a wall or a ceiling of
the cargo space; and
a first lift mechanism mounted proximate to a
longitudinal end of at least one of the first set of
two longitudinal rails, the first lift mechanism
engaging a first strap or rope that is coupled
proximate to a lower edge of the first panel so
as to raise the lower edge of the first panel to-
ward the ceiling when the first strap or rope is
manually pulled; and
a second lift mechanism mounted proximate to
a longitudinal end of at least one of the second
set of two longitudinal rails, the second lift
mechanism engaging a second strap or rope
that is coupled proximate to a lower edge of the
second panel so as to raise the lower edge of the
second panel toward the ceiling when the sec-
ond strap or rope is manually pulled.
J.A. 691-92.
Ultimately, the Examiner allowed many of FG’s new
and amended claims, but rejected claims 10-12, 38-40, 48-
56, 75-79, and 83-91 (and certain others, including claim
1, not here on appeal) as obvious over a combination of
four references: two advertisements from third-party
bulkhead manufacturer ROM; U.S. Patent No. 3,217,664,
issued to Aquino; and U.S. Patent No. 1,193,254, issued to
Gibbs. The Examiner cited the ROM references for their
disclosure of half-width panels with straps for positioning
and joining the panels together to form a full-width
partition, as depicted below:
6 RANDALL MFG. v. REA
ROM Ad. No. 2. The Examiner cited Aquino for its disclo-
sure of independently movable half-width panels mounted
on the ceiling of a container using rail-and-trolley
assemblies:
’664 patent, Fig. 1. The Examiner cited Gibbs for its
disclosure of a panel that can be lifted by means of a lift
RANDALL MFG. v. REA 7
mechanism and stowed near the ceiling of a container:
’254 patent, Fig. 1. The Examiner concluded that all of
the elements of the rejected claims were well known at
the time of FG’s application and that it would have been
obvious to one of ordinary skill in the art to combine
them.
FG appealed the Examiner’s obviousness rejections to
the Board, arguing that one of ordinary skill in the art
would not have been motivated to combine the cited
references, both because of alleged physical impediments
to their combination and because the references each
taught distinct features that were at cross-purposes with
one another. In particular, FG argued that the lift mech-
anism of Gibbs would be incompatible with Aquino, that
the panels of Aquino could not be lifted to the ceiling of
the container without colliding with the rails on which
they were mounted, and that Aquino, in providing for
stowage of its panels against the wall of the container,
taught away from ceiling stowage. FG supported its
contentions with declarations from named inventor and
FG co-owner Chad Nelson.
In its briefing before the Board, Randall argued that
the state of the art and the level of skill at the time of
8 RANDALL MFG. v. REA
FG’s application included well-known options for lifting
moveable, track-mounted bulkheads and stowing them
against the ceiling. As evidence of what one of ordinary
skill in the art would have known, Randall cited a host of
references that had been considered by the Examiner
during the course of the reexamination—some of which
had provided the basis for rejecting FG’s original claims—
including multiple references disclosing track- and trailer-
mounted bulkheads that could be raised to the ceiling,
and a variety of references teaching straps and lift mech-
anisms to assist in stowage. Randall also provided a
declaration from its employee, Gregory Boyer, who con-
firmed that a bulkhead designer at the time of FG’s
application would have recognized that the panels of
Aquino could be raised and stowed near the ceiling,
noting references showing that it was well known how to
adjust the geometry of a track-mounted assembly so that
the rails would not interfere with lifting the panel.
At oral argument before the Board, patentee FG stat-
ed that “we concede that raising of doors is known” and
that the “crux” of its appeal focused specifically on Aquino
and “why one would modify Aquino when Aquino already
provides a solution for stowing the door.” Transcript of
May 11, 2012 Hearing at 7, 17. Randall, in contrast,
stressed the broad range of knowledge demonstrated in
the art “going back close to a hundred years,” arguing
that “a person of ordinary skill in the art would think of
this because raising panels to the ceiling, at this point in
time, was so pervasive.” Id. at 11, 14. Randall contended
that the side stowage of panels shown in Aquino was the
exception rather than the rule, and that “raising them to
the ceiling was the standard method of getting a panel out
of the way.” Id. at 15.
In its decision reversing the Examiner on the rejec-
tions at issue here, the Board did not consider the back-
ground references Randall had cited as evidence of the
knowledge of one of skill in the art. Instead, the Board
RANDALL MFG. v. REA 9
looked to “the content of the prior art relied upon in
rejecting FG Products’ claim 1.” Randall Mfg. v. FG
Products, Inc., No. 2012-005371, 2012 WL 1616962, at *4
(B.P.A.I. May 7, 2012). 1 Analyzing just Aquino, Gibbs,
and the two ROM references, and focusing specifically on
modifying Aquino to allow ceiling stowage, the Board
found that it “simply does not follow” that ceiling stowage
“would have been contemplated for Aquino’s assembly for
which there is no need or intent for such a position.” Id.
at *5. The Board observed that “the nature and extent of
the raising of the panels” was “at the center of the dis-
pute,” id. at *3, but unable to identify any reason that one
of skill in the art would have sought to modify Aquino to
include ceiling stowage, the Board reversed the Examin-
er’s obviousness rejections for (new or amended) claims
11-12, 38-40, 48-56, 75-79, and 83-91, now at issue. Id. at
*6-7.
The Board addressed amended claim 10 separately.
That claim recites “first and second means for separating
a cargo space” and
a means for mounting the first and second sepa-
rating means, the mounting means being attached
to at least one of a wall or a ceiling of the cargo
space, wherein the mounting means provides each
of the first and second separating means with a
first degree of freedom to be moved independently
in a longitudinal direction and provides each of
the first and second separating means with a sec-
ond degree of freedom to be raised independently.
Id. at *6. The Board concluded that “means for separat-
ing” and “means for mounting” are means-plus-function
1 Except for claim 10, the Board rejected all of the
claims at issue for the same reasons it gave for claim 1
(which itself is not at issue here). Id. at *6-7.
10 RANDALL MFG. v. REA
terms, and thus limited to the structures described in the
specification (and their equivalents) for performing the
claimed functions. Id. 2 The Board identified panels 18
and 20 (the half-width bulkheads) as corresponding to the
“means for separating” and determined that the corre-
sponding structures for the “means for mounting” the
panels were the rails, trolleys, rollers, hinges, and hinge
rods. Id. The Board further stated that “the mounting
arrangement . . . which corresponds to the ‘means for
mounting’ of claim 10 is structured . . . so as to permit
panels 18, 20 to be moved in a fore and aft direction of a
trailer and to be raised like garage doors to the ceiling of
the trailer.” Id. Evaluating the ROM references, Aquino,
and Gibbs, the Board found that, whether taken individu-
ally or collectively, the references did not disclose such a
mounting structure or its equivalent. Id. at *7. Because
the Board did not find the “means for mounting” to be
disclosed by the prior art, it reversed the Examiner’s
rejection of claim 10. Id.
Randall appeals the Board’s determinations of non-
obviousness as to claims 10-12, 38-40, 48-56, 75-79, and
83-91. This court has jurisdiction under 28 U.S.C.
§ 1295(a)(4)(A).
2 Although claims 11 and 12 depend on claim 10,
the Board concluded that, unlike claim 10, claims 11 and
12 recited particular structure in connection with the
mounting means. Id. at *7. The Board then reversed the
Examiner’s rejections of claims 11 and 12 for the same
reason discussed for claims 38-40, 48-56, 75-79, and 83-
91. Id.
RANDALL MFG. v. REA 11
DISCUSSION
A claimed invention is unpatentable if the differences
between the claimed invention and the prior art are such
that the claimed invention as a whole would have been
obvious to one of ordinary skill in the relevant art. 35
U.S.C. § 103. Whether a claimed invention would have
been obvious is a question of law, based on factual deter-
minations regarding the scope and content of the prior
art, differences between the prior art and the claims at
issue, the level of ordinary skill in the pertinent art, and
any objective indicia of non-obviousness. KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 406 (2007); Graham v. John
Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966). On
appeal, we review the Board’s compliance with governing
legal standards de novo and its underlying factual deter-
minations for substantial evidence. In re Sullivan, 498
F.3d 1345, 1350 (Fed. Cir. 2007).
A
In KSR, the Supreme Court criticized a rigid ap-
proach to determining obviousness based on the disclo-
sures of individual prior-art references, with little
recourse to the knowledge, creativity, and common sense
that an ordinarily skilled artisan would have brought to
bear when considering combinations or modifications.
KSR, 550 U.S. at 415-22. Rejecting a blinkered focus on
individual documents, the Court required an analysis that
reads the prior art in context, taking account of “demands
known to the design community,” “the background
knowledge possessed by a person having ordinary skill in
the art,” and “the inferences and creative steps that a
person of ordinary skill in the art would employ.” Id. at
418. This “expansive and flexible approach,” id. at 415, is
consistent with our own pre-KSR decisions acknowledging
that the inquiry “not only permits, but requires, consider-
ation of common knowledge and common sense.” DyStar
12 RANDALL MFG. v. REA
Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick
Co., 464 F.3d 1356, 1367 (Fed. Cir. 2006).
The Board’s analysis in this case ran afoul of that
basic mandate. By narrowly focusing on the four prior-art
references cited by the Examiner and ignoring the addi-
tional record evidence Randall cited to demonstrate the
knowledge and perspective of one of ordinary skill in the
art, the Board failed to account for critical background
information that could easily explain why an ordinarily
skilled artisan would have been motivated to combine or
modify the cited references to arrive at the claimed inven-
tions. As KSR established, the knowledge of such an
artisan is part of the store of public knowledge that must
be consulted when considering whether a claimed inven-
tion would have been obvious.
In recognizing the role of common knowledge and
common sense, we have emphasized the importance of a
factual foundation to support a party’s claim about what
one of ordinary skill in the relevant art would have
known. See, e.g., Mintz v. Dietz & Watson, Inc., 679 F.3d
1372, 1377 (Fed. Cir. 2012); Perfect Web Techs., Inc. v.
InfoUSA, Inc., 587 F.3d 1324, 1328 (Fed. Cir. 2009). One
form of evidence to provide such a foundation, perhaps the
most reliable because not litigation-generated, is docu-
mentary evidence consisting of prior art in the area.
Randall relied on just such evidence in citing to extensive
references of record showing a familiar, even favored,
approach to bulkhead stowage. For instance, Randall
cited four U.S. patents (Nos. 1,148,382; 2,752,864;
2,866,419; and 4,019,442) that disclose bulkheads de-
signed to be lifted and stowed near the ceiling, three of
which (the ’382, ’864, and ’419 patents) describe such
stowage for movable, track-mounted panels. The signifi-
cance of those and other references did not depend on any
attempt to change the combination that formed the basis
of the Examiner’s rejections; rather, the references consti-
tute important evidence of the state of the art and the
RANDALL MFG. v. REA 13
context in which the Examiner-cited combination should
be evaluated.
The Board’s failure to consider that evidence—its
failure to consider the knowledge of one of skill in the art
appropriately—was plainly prejudicial. 3 Once it is estab-
lished that a prevalent, perhaps even predominant,
method of stowing a bulkhead panel was to raise it to the
ceiling, it is hard to see why one of skill in the art would
not have thought to modify Aquino to include this fea-
ture—doing so would allow the designer to achieve the
other advantages of the Aquino assembly while using a
stowage strategy that was very familiar in the industry. 4
Moreover, although FG claims that, as depicted, the
panels of Aquino may have been impeded by the rails
from being raised all the way to the ceiling, there is no
dispute that it would have been well within the capabili-
ties of an ordinary bulkhead designer to adjust the geom-
etry (e.g., drop the hinge axis down a few inches) so that
the panels could be freely raised to the ceiling. There are
no apparent functional concerns that would have discour-
aged a bulkhead designer of ordinary skill from attempt-
ing the combination.
3 Although the Examiner did not articulate this
analysis, Randall, as the appellee before the Board, was
entitled to defend the Examiner’s rejection on this ground,
which it had presented in the record. Rexnord Indus.,
LLC v. Kappos, 705 F.3d 1347, 1355-56 (Fed. Cir. 2013).
4 Familiarity may be reason enough, but the wide-
spread industry use of ceiling stowage may reflect par-
ticular judgments. At least in some situations, for
instance, it may be more important to reserve space for
cargo at the sides of a container than near the ceiling, as
packing cargo against the walls helps distribute weight
more evenly and may be easier than piling cargo toward
the ceiling.
14 RANDALL MFG. v. REA
Particularly when viewed in the context of the back-
ground references Randall provided, the evidence strongly
supports the notion that the bulkhead design FG claimed
was nothing more than the “combination of familiar
elements according to known methods,” “‘each performing
the same function it had been known to perform,’”
“yield[ing] predictable results.” KSR, 550 U.S. at 416-17
(quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282
(1976)). In addition, neither FG nor the Board points to
any objective indicia of non-obviousness. On this record,
the Board’s finding of lack of motivation to combine is
infected by prejudicial error. We accordingly vacate the
Board’s reversal of the Examiner’s rejection of claims 11-
12, 38-40, 48-56, 75-79, and 83-91 for obviousness. 5
B
With respect to claim 10, Randall contends that the
Board misconstrued “means for mounting” by improperly
importing an unclaimed functional limitation into the
corresponding structure. Specifically, Randall argues
that the Board erred by including a requirement that the
“means for mounting” permit the panels “to be raised like
garage doors to the ceiling of the trailer,” while the claim
requires only a “degree of freedom to be raised inde-
pendently.” But we need not and do not reach that ques-
tion.
Even if the structure must permit the panels to be
raised to the ceiling, such a range of motion is clearly
5 Contrary to FG’s argument, Randall has not
waived any argument that claims reciting “strap” limita-
tions would have been obvious. Neither FG nor the Board
has disputed that the cited references disclose straps for
lifting a panel, and the Board’s reversal was based solely
on the finding of a lack of motivation to modify Aquino so
that the panels could be lifted.