Redline Detection, LLC v. Star Envirotech, Inc. , 811 F.3d 435 ( 2015 )


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  •   United States Court of Appeals
    for the Federal Circuit
    ______________________
    REDLINE DETECTION, LLC,
    Appellant
    v.
    STAR ENVIROTECH, INC.,
    Appellee
    ______________________
    2015-1047
    ______________________
    Appeal from the United States Patent and Trademark
    Office, Patent Trial and Appeal Board in No. IPR2013-
    00106.
    ______________________
    Decided: December 31, 2015
    ______________________
    MATTHEW NEWBOLES, Stetina, Brunda, Garred &
    Brucker, Aliso Viejo, CA, argued for appellant. Also
    represented by GREGORY CLARKSON, LOWELL ANDERSON.
    BRENTON R. BABCOCK¸ Knobbe, Martens, Olson &
    Bear, LLP, Irvine, CA, argued for appellee. Also repre-
    sented by JARED C. BUNKER, EDWARD A. SCHLATTER.
    JEREMIAH HELM, Office of the Solicitor, United States
    Patent and Trademark Office, Alexandria, VA, argued for
    intervenor. Also represented by JOSEPH MATAL, JAMIE
    2                REDLINE DETECTION, LLC   v. STAR ENVIROTECH, INC.
    LYNNE SIMPSON, SCOTT WEIDENFELLER, THOMAS W.
    KRAUSE.
    ______________________
    Before LOURIE, WALLACH, and HUGHES, Circuit Judges.
    WALLACH, Circuit Judge.
    Appellant Redline Detection, LLC (“Redline”) appeals
    the inter partes review (“IPR”) decision of the United
    States Patent and Trademark Office’s (“USPTO” or “the
    Office”) Patent Trial and Appeal Board (“the PTAB” or
    “the Board”), which denied Redline’s motion to submit
    supplemental information under 
    37 C.F.R. § 42.123
    (a)
    (2012) and found Redline failed to show that claims 9 and
    10 of 
    U.S. Patent No. 6,526,808
     (the “’808 patent”) would
    have been obvious. See Redline Detection, LLC v. Star
    Envirotech, Inc., IPR2013-00106, 
    2014 WL 2995050
    (P.T.A.B. June 30, 2014) (J.A. 36–75) (“Final Decision”).
    For the reasons set forth below, we affirm.
    BACKGROUND
    I. The ’808 Patent
    Appellee Star Envirotech, Inc. (“STAR”) owns the ’808
    patent, which relates to methods of generating smoke for
    use in volatile and explosive environments. Specifically,
    the ’808 patent describes methods for generating smoke
    that “enables the presence and location of leaks in a fluid
    system (e.g. the evaporative or brake system of a motor
    vehicle) to be accurately and visually detected depending
    upon rate of the air flow through the fluid system under
    test and whether smoke escapes from the system.” ’808
    patent col. 1 ll. 12–16. A partial schematic of the smoke-
    generating apparatus is depicted below.
    REDLINE DETECTION, LLC   v. STAR ENVIROTECH, INC.           3
    
    Id.
     fig.1.
    This apparatus “includes a sealed chamber 6 which
    contains a non-toxic oil supply 8. An air inlet tube 10
    projects upwardly from the bottom of chamber 6 and
    extends above the oil supply 8.” 
    Id.
     col. 3 ll. 25–28. “An
    inlet orifice 12 is formed in the air inlet tube 10 so as to
    lie within the oil supply 8 immediately above the bottom
    of chamber 6. A resistor heating grid (e.g. coil) 14 extends
    laterally across the sealed chamber 6 . . . .” 
    Id.
     col. 3 ll.
    30–34. The “fluid baffle 18” contains “a smoke outlet
    orifice 20” that “extends laterally across the sealed cham-
    ber 6 above the heating grid 14.” 
    Id.
     col. 3 ll. 35–38.
    Alternative embodiments allow for the use of nitrogen
    (“N2”) or carbon dioxide (“CO2”) gas in place of air for
    testing high-pressure systems (e.g., air brakes) with high
    operating temperatures without the risk of an explosion.
    
    Id.
     col. 6 ll. 63–67. “A mixture of air [or inert gas] and oil
    is then blown upwardly and outwardly from the air inlet
    tube 10 towards and into contact with the heating grid
    [14], whereby the[] oil is instantaneously vaporized into
    smoke.” 
    Id.
     col 3 ll. 47–50. The resulting “smoke travels
    through the outlet orifice 20[] in fluid baffle 18 for receipt
    4                REDLINE DETECTION, LLC   v. STAR ENVIROTECH, INC.
    by the smoke outlet line 2.” 
    Id.
     col. 3 ll. 50–52. This
    smoke is carried by the smoke supply line 4 “to the fluid
    system to be tested so that the integrity of the system
    may be visually inspected for leaks depending upon the
    absence or presence of smoke escaping therefrom.” 
    Id.
     col.
    3 ll. 52–56.
    II. Prior Art
    The prior art discloses various methods to generate
    smoke—e.g., combusting smoke-producing fluid with a
    heating element, vaporizing mixtures of oil and CO2 gas,
    and vaporizing small droplets of oil dispersed in a stream
    of inert gas. Each of these methods advance smoke gen-
    erating technology, but these methods are not suitable for
    leak testing closed systems that have volatile hydrocar-
    bons. The ’808 patent generates smoke that can be used
    to test closed and potentially explosive systems for leaks.
    A. Gilliam
    
    U.S. Patent No. 5,107,698
     (“Gilliam”) describes meth-
    ods and devices for detecting leaks in fluid systems via
    smoke. J.A. 972–82. Figure 3 of Gilliam is depicted
    below.
    Gilliam fig.3.
    “Smoke-generating assembly 35 includes [air] pump
    15, thermistor 8, spike-protecting diode 9, switch 10, and
    ceramic heating element 11. A smoke-producing fluid is
    REDLINE DETECTION, LLC   v. STAR ENVIROTECH, INC.           5
    poured into chamber 20 through filler port 6.” 
    Id.
     col. 6 ll.
    20–23. Smoke is circulated throughout the system by air
    pump 15. If heating element 11 becomes “submerged,
    vaporization is prevented and the fluid is merely heated
    and eventually reaches it boiling point.” 
    Id.
     col. 6 ll. 38–
    41. When the heating element 11 becomes sufficiently
    hot, the smoke-producing fluid vaporizes within chamber
    40. The generated smoke then passes through “conduit
    22 into the vacuum system connected thereto for leak
    testing purposes.” 
    Id.
     col 8 ll. 11–13. Thus, the “[s]moke
    generating fluid should preferably be non-flammable and
    non-toxic.” 
    Id.
     col. 5 ll. 67–68.
    Because temperature control of the heating element is
    important to this prior art, Gilliam discloses several
    preferred embodiments for controlling temperature. See,
    e.g., 
    id.
     col. 7 ll. 1–4, 14–18, 26–28. Additionally, the
    “spark-arrestor 3 prevents sparks or even flames from
    entering a vehicle’s engine, thereby causing an explosion.
    Flames could be generated . . . if a flammable fluid mix-
    ture was inadvertently created in chamber 20.” 
    Id.
     col. 7
    ll. 55–59.
    B. Stoyle
    Great Britain Patent No. 1,240,867 (“Stoyle”) (J.A.
    1004–08) describes an apparatus for “heating [] oil or
    other mixtures of oil and [CO2], oil and water, or oil, [CO2]
    and water to produce smoke or mist . . . for testing venti-
    lation systems or for theatrical effects.” Stoyle p. 1 ll. 11–
    17. Figure 3 of Stoyle is depicted below.
    6                REDLINE DETECTION, LLC   v. STAR ENVIROTECH, INC.
    
    Id.
     fig.3.
    “The fluid inlet means 14 are connected to a generator
    capable of producing a foam of oil and [CO2] gas. The
    oil/gas mixture is forced into the space 7 and, passing
    through the gaps between the knurlings, eventually
    reaches the outlet means 10, where it emerges in the form
    of a mist or smoke.” 
    Id.
     p. 2 ll. 101–08. This allows for “a
    relatively large contact area for heating the oil/gas mix-
    ture[,] . . . [making] the heating very uniform and easy to
    control.” 
    Id.
     p. 2 ll. 109–11, 118–19. Additionally, this
    apparatus permits the “production of oil smokes and
    mists with a relatively lower proportion of gas in the
    mixture by comparison with other types of heater[s].” 
    Id.
    p. 3 ll. 15–18.
    C. Pauley
    Great Britain Patent No. 640,266 (“Pauley”) (J.A.
    1010–15) describes an apparatus for generating an
    opaque fog, for use in theatrical work, that is “sufficiently
    heavy in weight by comparison with the surrounding air,”
    Pauley p. 2 ll. 20–22, such that the fog can “‘lay’ conven-
    iently without quickly melting or drifting away,” 
    id.
     p. 2
    ll. 51–52. Figure 1 of Pauley is depicted below.
    
    Id.
     fig.1.
    REDLINE DETECTION, LLC   v. STAR ENVIROTECH, INC.          7
    “[G]lycerine, oil or other suitable liquid is sprayed in
    atomised form by means of a jet of [CO2 or N2 gas] under
    pressure on to a surface sufficiently heated as to cause an
    immediate vaporisation of the liquid.” 
    Id.
     p. 1 ll. 26–31.
    This “vapour . . . [is] propelled along . . . [and] cooled
    again by the expanding gas.” 
    Id.
     p. 1 ll. 31–34. The
    cooled liquid condenses to form a heavy fog or mist. 
    Id.
     p.
    2 ll. 37–38. Using inert gas to propel and cool the vapor-
    ized liquid is advantageous “because its presence greatly
    reduces any tendency to ignition of the vapour should the
    liquid medium be one of an inflammable nature.” 
    Id.
     p. 2
    ll. 42–47.
    D. 1999 Website
    Applications for the Smoke Generator, published on
    the Internet in 1999, disclose potential uses of smoke
    generators sold by third party, Corona Integrated Tech-
    nologies, Inc. J.A. 1038–41 (“the 1999 Website”). The
    1999 Website discloses that smoke generators produce a
    non-hazardous, thermal fog, which could be used for leak
    testing. J.A. 1039–40. In particular, the 1999 Website
    explains that “[o]ur smoke machines have been used to
    detect leaks in a broad range of systems, including asbes-
    tos enclosures, flues and chimneys, luggage holds of
    aircraft and ships, freight containers, vehicles and drain-
    age and fire sprinkler systems.” J.A. 1039.
    III. Proceedings
    In January 2013, Redline filed a corrected IPR Peti-
    tion with the PTAB, requesting review of claims 9 and 10
    of the ’808 patent. 1 This IPR was instituted on July 1,
    1 The ’808 patent underwent two ex parte reexami-
    nations. The first ex parte reexamination certificate
    issued in July 2011: (1) claim 9 was patentable as amend-
    ed; (2) new claim 10 was added and determined to be
    patentable; and (3) claims 1–8 were not reexamined. The
    8               REDLINE DETECTION, LLC   v. STAR ENVIROTECH, INC.
    2013. On July 30, 2013, Redline filed a Motion for Sup-
    plemental Disclosure of New Exhibits, requesting submis-
    sion of four pieces of evidence. In August 2013, the PTAB
    denied Redline’s request to submit supplemental infor-
    mation and expunged the submitted evidence from the
    record. The PTAB subsequently issued its Final Decision
    on June 30, 2014, finding Redline failed to prove by a
    preponderance of the evidence that claims 9 and 10 of the
    ’808 patent would have been: (1) obvious over Gilliam and
    Stoyle; and (2) obvious over Gilliam, Pauley, and the 1999
    Website. Redline timely appealed. Pursuant to 
    35 U.S.C. § 143
     (2012), the Director of the USPTO intervened in
    March 2015. This court has jurisdiction to review the
    PTAB’s Final Decision under 
    28 U.S.C. § 1295
    (a)(4)(A)
    (2012) and 
    35 U.S.C. § 141
    (c) (2012).
    DISCUSSION
    I. USPTO’s Interpretation of its Regulations Accords With
    Law
    On appeal, Redline argues the PTAB erred in denying
    its motion to submit supplemental information for three
    reasons. First, Redline argues the regulatory history of
    
    37 C.F.R. § 42.123
     demonstrates the USPTO has already
    incorporated its statutory mandate into the three tier
    scheme of subsections (a) through (c) of that regulation
    and, thus, the PTAB cannot “mix and match” these re-
    quirements at its discretion. Second, Redline argues the
    plain language of § 42.123(a) precludes the imposition of
    any additional criteria beyond the plain language of the
    regulation. Finally, Redline argues the PTAB’s decision
    was arbitrary and capricious because Petitioners in other
    IPR proceedings were allowed to submit supplemental
    information. We address each argument in turn.
    second ex parte reexamination certificate issued in May
    2012 with no amendments to the patent.
    REDLINE DETECTION, LLC   v. STAR ENVIROTECH, INC.          9
    A. Deference Is Accorded to the PTAB’s Interpretation of
    USPTO Regulations
    This court accepts the PTAB’s “interpretation of
    [USPTO] regulations unless that interpretation is ‘plainly
    erroneous or inconsistent with the regulation,’” In re
    Sullivan, 
    362 F.3d 1324
    , 1326 (Fed. Cir. 2004) (citations
    omitted), or conflicts with the USPTO’s “intent at the time
    of the regulation’s promulgation,” Gardebring v. Jenkins,
    
    485 U.S. 415
    , 430 (1988). We review the PTAB’s decision
    of how it manages its permissive rules of trial proceedings
    for an abuse of discretion. Eli Lilly & Co. v. Bd. of Re-
    gents of Univ. of Wash., 
    334 F.3d 1264
    , 1266 (Fed. Cir.
    2003). “An abuse of discretion occurs if the decision (1) is
    clearly unreasonable, arbitrary, or fanciful; (2) is based on
    an erroneous conclusion of law; (3) rests on clearly erro-
    neous fact findings; or (4) involves a record that contains
    no evidence on which the Board could rationally base its
    decision.” Abrutyn v. Giovanniello, 
    15 F.3d 1048
    , 1050–51
    (Fed. Cir. 1994) (citing Heat & Control, Inc. v. Hester
    Indus., Inc., 
    785 F.2d 1017
    , 1022 (Fed. Cir. 1986)).
    B. Relevant Legal Authority
    Congress’s enactment of the Leahy-Smith America
    Invents Act (“AIA”), Pub. L. No. 112–29, § 6(a)–(c), 
    125 Stat. 284
    , 299–305 (2011) (codified in part at 
    35 U.S.C. §§ 311
    –319) replaced inter partes reexamination with IPR
    for requests filed on or after September 16, 2012. Com-
    pare 
    35 U.S.C. §§ 311
    –318 (2006), with 
    35 U.S.C. §§ 311
    –
    319 (2012). 2 The AIA authorized the USPTO to promul-
    gate regulations governing the administration of IPR
    proceedings. See 
    35 U.S.C. § 316
    (a)(3)–(4) (“The Director
    2   Any discussion in this opinion of IPRs, and corre-
    sponding citations to 
    35 U.S.C. §§ 311
    –319, shall refer to
    the statutory provisions effective on or after September
    16, 2012.
    10               REDLINE DETECTION, LLC   v. STAR ENVIROTECH, INC.
    shall prescribe regulations . . . establishing procedures for
    the submission of supplemental information after the
    petition is filed; [and] establishing and governing [IPR]
    under this chapter and the relationship of such review to
    other proceedings under this title.”). The AIA also re-
    quires consideration of “the effect of any such regulation
    on,” among other things, “the efficient administration of
    the Office[] and the ability of the Office to timely complete
    proceedings instituted under this chapter.” 
    Id.
     § 316(b).
    Consistent with Congress’s mandate, the USPTO
    promulgated general regulations governing the PTAB’s
    trial practices, 37 C.F.R. Part 42, Subpart A, in addition
    to specific regulatory requirements for IPR proceedings,
    37 C.F.R. Part 42, Subpart B. These regulations encour-
    age Petitioners “to submit all of the evidence that sup-
    ports the ground of unpatentability asserted in the
    petition” within the time period proscribed in 
    37 C.F.R. § 42.123
    (a), (b), or (c). Changes to Implement Inter Partes
    Review Proceedings, Post-Grant Review Proceedings, and
    Transitional Program for Covered Business Method Pa-
    tents, 
    77 Fed. Reg. 48,680
    , 48,708 (U.S. Patent & Trade-
    mark Office Aug. 14, 2012) (“Final Rule”) (to be codified at
    37 C.F.R. pt. 42); see also Office Patent Trial Practice
    Guide, 
    77 Fed. Reg. 48,756
    , 48,763 (U.S. Patent &
    Trademark Office Aug. 14, 2012) (“[A] petitioner must
    identify each claim that is challenged and the specific
    statutory grounds on which each challenge to the claim is
    based, provide a claim construction for the challenged
    claims, and state the relevance of the evidence to the
    issues raised.” (citing in part 
    37 C.F.R. § 42.104
    )).
    The AIA authorizes the filing of supplemental infor-
    mation with the PTAB during the course of an IPR, 
    35 U.S.C. § 316
    (a)(3), and the USPTO promulgated regula-
    tions pursuant to that authority. In particular, Section
    42.123(a) states:
    REDLINE DETECTION, LLC   v. STAR ENVIROTECH, INC.          11
    Motion to submit supplemental information.
    Once a trial has been instituted, a party may file a
    motion to submit supplemental information in ac-
    cordance with the following requirements:
    (1) A request for the authorization to file a motion
    to submit supplemental information is made with-
    in one month of the date the trial is instituted.
    (2) The supplemental information must be rele-
    vant to a claim for which the trial has been insti-
    tuted.
    
    37 C.F.R. § 42.123
    (a) (emphases added). Subsection (b)
    provides for submitting supplemental information later
    than one month after the date the trial is instituted. 
    Id.
    § 42.123(b). Subsection (c) provides for the submission of
    supplemental information that is not relevant to an
    instituted claim. Id. § 42.123(c). Under subsections (b)
    and (c), the party must show “why the supplemental
    information reasonably could not have been obtained
    earlier, and that consideration of the supplemental infor-
    mation would be in the interests-of-justice.”          Id.
    § 42.123(b), (c).
    The PTAB’s decision to admit supplemental infor-
    mation is also informed by 37 C.F.R. Part 42, Subpart A.
    See 
    37 C.F.R. § 42.100
    (a) (“An [IPR] is a trial subject to
    the procedures set forth in subpart A of this part.”).
    Subpart A requires USPTO regulations “be construed to
    secure the just, speedy, and inexpensive resolution of
    every proceeding.” 
    37 C.F.R. § 42.1
    (b); see also 
    35 U.S.C. § 316
    (b). Consistent with this regulation, the USPTO has
    authorized the PTAB to “determine a proper course of
    conduct in a proceeding for any situation not specifically
    covered by this part and may enter non-final orders to
    administer the proceeding.” 
    37 C.F.R. § 42.5
    (a). The
    PTAB may also “waive or suspend a requirement of
    part[] . . . 42 [Trial Practice Before the PTAB] and may
    12               REDLINE DETECTION, LLC   v. STAR ENVIROTECH, INC.
    place conditions on the waiver or suspension.”                
    Id.
    § 42.5(b).
    C. The PTAB’s Interpretation of 
    37 C.F.R. § 42.123
     is
    Consistent with the Regulatory History and Is Not Plain-
    ly Erroneous
    1. Section 42.123(a) Does Not Preclude Consideration of
    Additional Criteria Beyond Timing and Relevance
    The PTAB found Redline’s IPR Petition did not rely
    on an expert declaration in support of its position. J.A. 4
    (PTAB Order–Conduct of the Proceeding); see also J.A.
    1078–1142 (corrected petition to institute IPR). Rather,
    Redline’s Motion for Supplemental Disclosure of New
    Exhibits sought to introduce four new exhibits: (1) a sixty-
    page declaration of Redline’s expert, Dr. Michael St.
    Denis; (2) the resume of Dr. St. Denis; (3) 
    U.S. Patent No. 3,250,723
    ; and (4) 
    U.S. Patent No. 3,432,439
    . J.A. 2. The
    PTAB denied Redline’s Motion, noting Redline did not
    make “any attempt to justify the submission of an expert
    declaration after filing its petition and after a decision to
    institute has been made except to note that the move was
    cost effective . . . .” 3 J.A. 4. The PTAB also found that
    Redline did not allege “any of the arguments or evidence
    in the newly submitted declaration [was] information that
    reasonably could not have been submitted with the Peti-
    tion.” J.A. 4. “The [PTAB] chose two of twelve grounds
    proposed by Redline, thus Redline could have submitted
    expert opinion testimony to support those grounds with
    the petition itself.” J.A. 4; see also J.A. 1431 (Redline
    3  During oral argument, Redline reaffirmed nothing
    prevented it from submitting the supplemental infor-
    mation with its Petition. The “rationale was one of cost
    savings primarily the driving factor . . . .” Oral Argument
    at 2:25–42, http://oralarguments.cafc.uscourts.gov/default.
    aspx?fl=2015-1047.mp3 (Counsel for Redline).
    REDLINE DETECTION, LLC   v. STAR ENVIROTECH, INC.         13
    admitted to the PTAB it intentionally delayed filing this
    information because “submission of the declaration at this
    point [after institution of the IPR] makes things far less
    complex than had [Redline] had an expert opine as to all
    12 grounds as originally submitted in our petition”). The
    PTAB concluded Redline did not establish a sufficient
    basis for submitting new evidence and its “‘supplemental
    evidence’ is in essence something more than just supple-
    mental evidence.” J.A. 5.
    The PTAB determined “nothing in 
    37 C.F.R. § 42.123
    requires that a request to submit supplemental infor-
    mation satisfying these two criteria [,i.e., timeliness and
    relevance,] automatically be granted no matter the cir-
    cumstance.” J.A. 18 (citation omitted). Rather, the
    USPTO regulations dictate “[a] party filing a motion has
    the burden of proof to establish that it is entitled to the
    requested relief.” J.A. 18 (citing 
    37 C.F.R. § 42.20
    ). “This
    is so, no matter the requested relief.” J.A. 18 (emphasis
    added). The PTAB emphasized “the Board decides such
    motions in view of its mandate to ensure the efficient
    administration of the Office and the ability of the Office to
    complete IPR proceedings in a timely manner.” J.A. 18–
    19. The PTAB also stated whether the Board grants a
    motion to submit supplemental information also “de-
    pend[s] upon the Board’s determination that, in its discre-
    tion, the action sought by the movant is consistent with
    the Board’s statutory mandate.” J.A. 19.
    On appeal, Redline argues “the regulatory history of
    [37 C.F.R.] § 42.123 shows that the [USPTO] has already
    incorporated its statutory mandate into the three tier
    scheme of subsections (a)–(c)” of that regulation. Appel-
    lant’s Br. 45 (capitalization and emphasis omitted).
    Redline contends the USPTO cannot consider factors
    articulated in subsections (b) and (c) if the timeliness and
    relevance conditions in subsection (a) are satisfied.
    According to Redline, this tiered rule “reflects a balance of
    interests expressed in agency notice-and-comment rule-
    14               REDLINE DETECTION, LLC   v. STAR ENVIROTECH, INC.
    making.” Id. at 45. Redline alleges Comments 91–93 of
    the regulatory history “presumptively established that the
    timeliness and relevance requirements of §42.123(a) alone
    were sufficient to meet the [PTAB’s] statutory mandate
    for economy, integrity, efficient administration, and
    timely consideration of IPRs.” Id. at 45–46 (citing 
    35 U.S.C. § 316
    (b)). Redline also argues the omission of the
    
    37 C.F.R. § 42.123
    (b) and (c) limitations from § 42.123(a)
    offers further support for its hierarchical interpretation of
    the regulation. Id. at 46. According to Redline, this
    arrangement “clearly evidences an intent on the part of
    the rulemaking body that those factors were not meant to
    be considered for submissions under § 42.123(a), and
    instead the sole criteria for admission were those in the
    plain language of the regulation.” Id. Because all three
    subsections were adopted in the same rulemaking session,
    Redline argues this lends “strength to the infer-
    ence . . . [that] timeliness and relevance[] formed the sole
    basis for evaluating submissions under [§ 42.123(a)].” Id.
    at 48.
    Redline’s arguments rely, in part, on rules of statuto-
    ry construction—e.g., (1) the exclusion of particular
    language from one subsection of a statute that was in-
    cluded in other subsections means “it is generally pre-
    sumed that Congress acts intentionally and purposefully
    in the disparate inclusion or exclusion,” Keene Corp. v.
    United States, 
    508 U.S. 200
    , 208 (1993) (internal quota-
    tion marks and citation omitted); and (2) words that
    appear in different statutes that are adopted during the
    same legislative session creates a negative implication
    that is “strongest when the portions of a statute treated
    differently had already been joined together and were
    being considered simultaneously when the language
    raising the implication was inserted,” Lindh v. Murphy,
    
    521 U.S. 320
    , 330 (1997) (citation omitted). The Supreme
    Court has found that canons of statutory construction “are
    not mandatory rules. They are guides that ‘need not be
    REDLINE DETECTION, LLC   v. STAR ENVIROTECH, INC.         15
    conclusive.’” Chickasaw Nation v. United States, 
    534 U.S. 84
    , 94 (2001) (quoting Circuit City Stores, Inc. v. Adams,
    
    532 U.S. 105
    , 115 (2001)). Rather these guides “are
    designed to help judges determine the Legislature’s intent
    as embodied in particular statutory language.” 
    Id.
    The PTAB’s interpretation of its governing regula-
    tions is not plainly erroneous. Its interpretation of
    § 42.123(a) is consistent with the regulation’s plain lan-
    guage and the USPTO’s intent in promulgating § 42.123.
    The plain language of § 42.123(a) does not exclude the
    application of other general governing regulations. The
    guiding principle for the PTAB in making any determina-
    tion is to “ensure efficient administration of the Office and
    the ability of the Office to complete IPR proceedings in a
    timely manner.” J.A. 18–19; see 
    35 U.S.C. § 316
    (b).
    Requiring admission of supplemental information so long
    as it was timely submitted and relevant to the IPR pro-
    ceeding would cut against this mandate and alter the
    intended purpose of IPR proceedings.
    Redline’s interpretation of the regulatory history does
    not warrant a different conclusion. For example, Red-
    line’s reliance on the USPTO’s response to Comments 91–
    93 is flawed. These responses do not conflict with the
    USPTO’s intent at the time of the regulation’s promulga-
    tion. Further, none of the USPTO’s statements “pre-
    sumptively established that the timeliness and relevance
    requirements of §42.123(a) alone were sufficient to meet
    the [PTAB’s] statutory mandate for economy, integrity,
    efficient administration, and timely consideration of
    IPRs.” Appellant’s Br. 45–46 (citing 
    35 U.S.C. § 316
    (b)).
    The USPTO’s statements suggest the PTAB may allow
    the submission of supplemental information if certain
    conditions are met. Comment 91 addresses the public’s
    concern that “the petitioner may intentionally hold back
    some evidence which would be unfair to the patent own-
    er.” Final Rule, 77 Fed. Reg. at 48,707. In response, the
    USPTO said “the patent owner will have sufficient time to
    16                REDLINE DETECTION, LLC   v. STAR ENVIROTECH, INC.
    address any new information submitted by the petitioner,
    except in the situation where the party satisfies the
    requirements of § 42.123(b) [within thirty days of the
    institution of the IPR] . . . .” Id. This statement does not
    connote the PTAB must accept supplemental information
    so long as it is timely and relevant. Comment 92 notes
    “Petitioners are encouraged to set forth their best grounds
    of unpatentability and supporting evidence in their peti-
    tions, lest the Board not to institute the review or deny
    the asserted grounds of unpatentability (§ 42.108(b)).” Id.
    at 48,708. Similarly, Comment 93 says the final rule
    provides “that a party may seek authorization to file a
    motion to submit supplemental evidence relevant to a
    claim for which the trial has been instituted within one
    month of the date the trial is instituted.” Id. (emphasis
    added). These statements do not indicate the PTAB must
    accept supplemental information if timely submitted and
    relevant.
    In sum, nothing in § 42.123 or its regulatory history
    expressly states or implies that all elements of the PTAB’s
    mandate are incorporated into § 42.123(a) and that it
    must be read to the exclusion of the remaining subsec-
    tions in that regulation and 37 C.F.R. Part 42, Subpart A.
    2. Section 42.123(a) Does Not Prohibit the PTAB from
    Exercising Discretion
    Redline next argues the plain language of 
    37 C.F.R. § 42.123
    (a) “establishes a comprehensive scheme that
    leaves no room for [the] PTAB to impose its own discre-
    tionary requirements.” Appellant’s Br. 41. Rather, it
    says, the regulation permits “consideration of two and
    only two requirements: timeliness and relevance. If the
    regulation permitted the Board to consider or impose
    additional criteria, it would by its plain language have
    said so.” 
    Id.
     at 41–42.
    In support of this argument, Redline states “[i]t is a
    fundamental principle of administrative law that ‘agen-
    REDLINE DETECTION, LLC   v. STAR ENVIROTECH, INC.        17
    cies are bound to follow their own rules, even self-imposed
    procedural rules that limit otherwise discretionary deci-
    sions.’” 
    Id. at 41
     (quoting Hernandez v. Dep’t of Air Force,
    
    498 F.3d 1328
    , 1332 (Fed. Cir. 2007)). Redline proffers
    several IPR decisions where supplemental information
    was admitted, stating “[s]everal other [PTAB Panels], in
    deciding motions brought under § 42.123(a), have started
    and ended their analysis with the plain meaning of this
    regulation.” Id. at 42. Redline relies primarily on Pacific
    Market International, 4 where the PTAB admitted “exten-
    sive expert declaration testimony submitted under
    § 42.123(a) and set[] forth reasons to combine particular
    prior art references that formed the underlying basis for
    instituting the IPR, precisely as Redline sought to do in
    submitting its own expert testimony.” Id. at 43 (citing
    Pac. Mkt. Int’l, LLC v. Ignite USA, LLC, IPR2014-00561,
    Paper 23 at 3 (P.T.A.B. Dec. 2, 2014)). Redline asserts the
    Panel in Pacific Market International “was obligated
    under § 42.123(a) to allow the supplemental expert testi-
    4   Redline also cites Norman International, Inc. v.
    Toti Testamentary Trust, IPR2014-00283, Paper 29
    (P.T.A.B. Sept. 29, 2014) (addressing Petitioner’s submis-
    sion of supplemental information to confirm the accuracy
    of the translation of a Japanese Patent Application Publi-
    cation that was submitted in the IPR Petition); Brose
    North America v. UUSI, LLC, IPR2014-00416, -417,
    Paper 16 (P.T.A.B. Sept. 16, 2014) (addressing Petition-
    er’s submission of a U.S. patent and patent publications
    for claim construction); and Palo Alto Networks, Inc. v.
    Juniper Network, Inc., IPR2013-00369, Paper 37 (P.T.A.B.
    Feb. 5, 2014) (addressing Petitioner’s submission of
    supplemental information to establish that prior art cited
    in the IPR Petition qualified as a prior art printed publi-
    cation). Appellant’s Br. 42–43. However, Pacific Market
    International presents the scenario most similar to the
    present proceeding.
    18              REDLINE DETECTION, LLC   v. STAR ENVIROTECH, INC.
    mony.” Id. at 44. Redline also contends the rationale and
    application of § 42.123(a) in Pacific Market International
    “is incapable of being reconciled with the decision in this
    case.” Id.
    Redline’s regulatory interpretation presents a new
    facet of the first argument it raised regarding § 42.123,
    and it fails for the same reasons discussed above. Its
    interpretation requires the PTAB to exclude all other
    regulations governing PTAB proceedings and admit
    supplemental information so long as the request was
    timely made and the information is relevant to the pro-
    ceeding. The plain language of § 42.123(a) does not
    support such a reading. Nothing within subsection (a)
    excludes application of other PTAB regulations. Rather,
    timeliness and relevancy provide additional requirements
    that must be construed within the overarching context of
    the PTAB’s regulations governing IPR and general trial
    proceedings. 5 Additionally, the PTAB has discretion to
    grant or deny motions as it sees fit. See, e.g., 
    37 C.F.R. § 42.5
    (a), (b).
    5  Redline’s argument on appeal is also inapposite to
    its conduct throughout its IPR proceeding. Redline com-
    plied with the PTAB’s general requirements without
    protest—i.e., demonstrating entitlement to relief within
    its Petition, 
    37 C.F.R. § 42.20
    , and providing assurances
    to the PTAB that its motion was consistent with the
    regulations allowing for further evidence before deposition
    or testimony is taken, 
    id.
     § 42.53(d)(2). See J.A. 1430
    (transcript from conference call with the PTAB discussing
    Redline’s Motion).
    REDLINE DETECTION, LLC   v. STAR ENVIROTECH, INC.         19
    3. The PTAB’s Decision Comports with Other PTAB
    Decisions Allowing Supplemental Information and Is Not
    Arbitrary and Capricious
    Redline next argues “[t]he arbitrary-and-capricious
    standard requires an agency to provide an adequate
    explanation to justify treating similarly situated parties
    differently.” Appellant’s Br. 49 (internal quotation marks
    omitted) (quoting In re FCC, 
    753 F.3d 1015
    , 1142 (10th
    Cir. 2014)). Without an adequate explanation, Redline
    contends the PTAB’s decision deviates from its previous
    decisions allowing supplemental information. 
    Id.
     In
    support of its argument, Redline relies on Palo Alto
    Networks and Pacific Market International. These deci-
    sions do not support Redline’s argument that the PTAB
    must accept supplemental information so long as it is
    timely and relevant.
    In Palo Alto Networks, the Petitioner sought to submit
    supplemental information that would establish the cited
    prior art within the Petition did in fact qualify as a prior
    art printed publication. The PTAB found the information
    was not intentionally withheld nor did allowing this
    information limit the PTAB’s ability to timely complete
    the proceeding. Palo Alto Networks, Paper 37 at 4. The
    PTAB did agree that it must decide this Motion not solely
    on § 42.123 requirements, but also in light of 
    37 C.F.R. § 42.1
    (b) (i.e., the just, speedy, and inexpensive resolution
    of proceedings). 
    Id.
     Redline relies on this case because
    the PTAB determined whether information could have
    been obtained earlier was a requirement under
    § 42.123(b) and (c), not (a). Appellant’s Br. 43; see id. at
    49–50. Redline also relies on this case because the PTAB
    found the submission of the supplemental information
    would not prevent the PTAB from satisfying its mandate
    under § 42.1(b). Id. at 43.
    Redline’s reliance is misplaced. The PTAB in Palo Al-
    to Networks found the supplemental information would
    20               REDLINE DETECTION, LLC   v. STAR ENVIROTECH, INC.
    not prevent it from fulfilling its mandate since the “Pa-
    tent Owner already [had] possession of the supplemental
    information” because it was served “in response to Patent
    Owner’s objections” and it is “the same supplemental
    information that Petitioner now seeks to submit under
    § 42.123(a).” Palo Alto Networks, Paper 37 at 5. Redline
    has not provided any evidence to indicate STAR possessed
    the supplemental information it seeks to admit. 6 The
    PTAB in Palo Alto Networks also determined the supple-
    mental information “Petitioner seeks to submit does not
    change the grounds of unpatentability authorized in this
    proceeding, nor does it change the evidence initially
    presented in the [IPR] Petition to support those grounds
    of unpatentability.” Id. at 3. That is not what Redline
    did. The PTAB determined, in its Decision on Redline’s
    Request for Rehearing, that Redline’s supplemental
    information “relates to a ground for which the trial was
    instituted, rather than only to a claim of the patent, for
    which the trial was instituted.” J.A. 19.
    6  Redline failed to follow the proper procedure dur-
    ing the IPR proceeding. Once the Petition is filed, the
    Petitioner may reply: 1) after institution of the proceed-
    ing; and 2) after the patent owner has filed an opposition
    to the Petition. See Final Rule, 77 Fed. Reg. at 48,766
    (citing 
    35 U.S.C. § 316
    (a)(8)). At that time, a petitioner
    “may only respond to arguments raised in the correspond-
    ing opposition.” 
    Id. at 48
    ,768 (citing 
    37 C.F.R. § 42.23
    ).
    Any new issues raised in the reply will not be considered.
    “Examples of indications that a new issue has been raised
    in a reply include new evidence necessary to make out a
    prima facie case for the patentability or unpatentability of
    an original or proposed substitute claim, and new evi-
    dence that could have been presented in a prior filing.”
    
    Id.
    REDLINE DETECTION, LLC   v. STAR ENVIROTECH, INC.         21
    In Pacific Market International, the Petitioner sought
    to submit its expert’s supplemental declaration in support
    of its claim of obviousness. Pac. Mkt. Int’l, Paper 1 (IPR
    Petition); 
    id.
     Ex. 1014 (expert declaration relied on in IPR
    Petition). The IPR Petition itself was a sixty-page docu-
    ment, 
    id.
     Paper 1, that relied heavily on its expert decla-
    ration, which was a separate sixty-eight page document
    with claim charts comparing the claims to prior art, 
    id.
    Ex. 1014. The Supplemental Declaration was a ten-page
    declaration that supplements the Petitioner’s claim of
    obviousness that was first argued in its IPR Petition. 
    Id.
    Ex. 1021. The PTAB accepted the supplemental infor-
    mation as evidence within the proceeding and determined
    the Patent Owner had sufficient time to address the new
    information submitted by the Petitioner in its request
    made one month from the institution date. 
    Id.
     Paper 23
    at 3. This information was also found not to change
    grounds instituted on nor did it change evidence present-
    ed in the IPR Petition. 
    Id. at 4
    .
    However, the PTAB stated “[a]lthough a party may
    meet the [
    37 C.F.R. § 42.123
    ] requirements . . . that does
    not, itself, guarantee that the motion will be granted.” 
    Id. at 3
     (emphasis added). This provision does not offer “a
    routine avenue for bolstering deficiencies in a petition
    raised by a patent owner in a Preliminary Re-
    sponse. . . . Petitioner should not expect . . . a ‘wait-and-
    see’ opportunity to supplement a petition after initial
    comments or arguments have been laid out by a patent
    owner.” 
    Id.
     The PTAB, in Pacific Market International,
    explicitly relied on § 42.1(b) when conducting its
    § 42.123(a) analysis, emphasizing that the PTAB’s man-
    date “is to interpret our Rules ‘to secure the just, speedy,
    and inexpensive resolution’ to this proceeding.” Id. at 4
    (quoting 
    37 C.F.R. § 42.1
    (b)).
    Here, Redline asserts its submission of Dr. St. Denis’s
    sixty-page declaration was identical to the type of evi-
    dence submitted in Pacific Market International and the
    22               REDLINE DETECTION, LLC   v. STAR ENVIROTECH, INC.
    Panel in this instance reached an opposite conclusion,
    thus acting in an arbitrary and capricious manner.
    Appellant’s Br. 50–51. Redline’s opening brief presents
    Pacific Market International as the case that is most
    similar to its case because the PTAB admitted “extensive
    expert declaration testimony submitted under § 42.123(a)
    and set[] forth reasons to combine particular prior art
    references that formed the underlying basis for instituting
    the IPR, precisely as Redline sought to do in submitting
    its own expert testimony.” Id. at 43 (citing Pac. Mkt. Int’l,
    Paper 23 at 3). Redline asserts the Panel in Pacific
    Market International “was obligated under § 42.123(a) to
    allow the supplemental expert testimony.” Id. at 44.
    Further, Redline contends, the rationale and application
    of § 42.123(a) in Pacific Market International “is incapable
    of being reconciled with the decision in this case.” Id.
    Redline’s characterization of Pacific Market Interna-
    tional is inaccurate and misleading. The Panel’s decision
    expressly stated 
    37 C.F.R. § 42.123
    (a) is not a routine
    avenue to pursue, nor does the regulation require an
    automatic acceptance of, supplemental information. See
    Pac. Mkt. Int’l, Paper 23 at 3. This is the exact opposite of
    having an obligation to allow the supplementary infor-
    mation. Redline fails to appreciate the stark difference
    between the short, supplemental expert report, which the
    PTAB reasonably permitted in Pacific Market Interna-
    tional, and its de novo expert report submitted for the
    first time. Pacific Market International is inapposite.
    II. The PTAB Did Not Err in Finding that Redline Failed
    to Prove the ’808 Patent Would Have Been Obvious over
    the Cited Prior Art
    A. Standard of Review and the Legal Standard for Obvi-
    ousness
    We review the PTAB’s factual findings for substantial
    evidence and its legal conclusions de novo. Rambus Inc.
    v. Rea, 
    731 F.3d 1248
    , 1251 (Fed. Cir. 2013). “A finding is
    REDLINE DETECTION, LLC   v. STAR ENVIROTECH, INC.          23
    supported by substantial evidence if a reasonable mind
    might accept the evidence to support the finding.” K/S
    Himpp v. Hear-Wear Techs., LLC, 
    751 F.3d 1362
    , 1364
    (Fed. Cir. 2014) (citation omitted); see also In re Gartside,
    
    203 F.3d 1305
    , 1312 (Fed. Cir. 2000). “If the evidence in
    [the] record will support several reasonable but contradic-
    tory conclusions, we will not find the Board’s decision
    unsupported by substantial evidence simply because the
    Board chose one conclusion over another plausible alter-
    native.” In re Jolley, 
    308 F.3d 1317
    , 1320 (Fed. Cir. 2002).
    A patent claim should be held to have been obvious
    and therefore invalid “if the differences between the
    subject matter sought to be patented 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 [(“PHOSITA”)] to which
    said subject matter pertains.”         
    35 U.S.C. § 103
    (a). 7
    Whether a claimed invention is unpatentable as obvious
    is a question of law that is reviewed de novo, based on
    underlying findings of fact reviewed for substantial evi-
    dence. In re Gartside, 
    203 F.3d at 1316
    . These underly-
    ing factual inquiries include: (1) the scope and content of
    the prior art; (2) differences between the prior art and the
    claims at issue; (3) the level of ordinary skill in the perti-
    nent art; and (4) secondary considerations of non-
    obviousness, such as commercial success, long felt but
    unsolved needs, failure of others, and unexpected results.
    Graham v. John Deere Co. of Kan. City, 
    383 U.S. 1
    , 17–18,
    30 (1966).
    7    In passing the AIA, Congress amended section
    103. See Pub. L. No. 112-29, § 3(c), 125 Stat. at 287.
    However, because the ’808 patent application was filed
    before March 16, 2013, the pre-AIA § 103(a) applies. See
    id., § 3(n)(1), 125 Stat. at 293.
    24               REDLINE DETECTION, LLC   v. STAR ENVIROTECH, INC.
    When asserting that a claimed invention would have
    been obvious, that party “must demonstrate by clear and
    convincing evidence that a skilled artisan would have had
    reason to combine the teaching of the prior art references
    to achieve the claimed invention, and that the skilled
    artisan would have had a reasonable expectation of suc-
    cess from doing so.” PAR Pharm., Inc. v. TWI Pharm.,
    Inc., 
    773 F.3d 1186
    , 1193 (Fed. Cir. 2014) (internal quota-
    tion marks and citations omitted). “Whether such a
    motivation has been demonstrated is a question of fact”
    reviewed for substantial evidence. Medichem, S.A. v.
    Rolabo, S.L., 
    437 F.3d 1157
    , 1164–65 (Fed. Cir. 2006).
    B. Redline Waived Its Arguments Regarding PTAB’s
    Determination of the PHOSITA’s Skill Level
    The PTAB rejected Redline’s unsupported oral argu-
    ment that a PHOSITA “must have experience, education,
    and knowledge specific to the United States.” Final
    Decision at 16. Instead, the PTAB adopted the PHOSITA
    definition offered by STAR’s expert, Dr. M. David Check-
    el, who explained that a PHOSITA in the area of “motor
    vehicle engine diagnosis and repair, including [evapora-
    tive emission control (“EVAP”)] system leak detection
    methods, at the time of the filing of the ’808 patent[]
    possessed a range of educational and professional experi-
    ence, with more education demanding less professional
    experience.” 8 Id. at 17. Redline declined to rebut STAR’s
    8  Dr. Checkel’s declaration stated that, at the time
    the ’808 patent was filed, not many technicians
    focused solely on evaluating and developing diag-
    nostic systems for the EVAP systems, [such that]
    the person of ordinary skill would have had expe-
    rience developing diagnostic and repair tools for
    engine systems in general. . . . The professional
    experience possessed by the ordinary artisan
    REDLINE DETECTION, LLC   v. STAR ENVIROTECH, INC.         25
    definition of a PHOSITA by submitting rebuttal expert
    testimony in its reply, after it reviewed STAR’s expert
    declaration. See 
    37 C.F.R. §§ 42.23
     (opposition and re-
    plies), 42.53(b)(1) (taking testimony).
    On appeal, Redline argues the PTAB did not “apply
    [the PHOSITA] definition in the context of an obviousness
    analysis . . . [and did not] consider the common sense or
    creativity of a person skilled in the art.” Appellant’s Br.
    54. However, STAR correctly notes the PTAB “spent a
    considerable amount of time at the Oral Hearing, as well
    as several pages of its Final Decision, [defining a
    PHOSITA].” Appellee’s Br. 48 (citing Final Decision at
    14–17). The PTAB noted Redline argued for a different
    PHOSITA standard, but “provide[d] no persuasive alter-
    native.” Final Decision at 16. Now on appeal, Redline is
    arguing for the application of a different PHOSITA
    standard. These arguments are based upon information
    appended to Redline’s Motion for Supplemental Disclo-
    sure of New Exhibits that the PTAB excluded. They were
    would thus have included experience in engine di-
    agnosis and repair, including at least some expe-
    rience with EVAP systems and other emission
    systems. . . . The ordinary artisan would also
    have had a limited understanding of the chemis-
    try of combustion and the characteristics of hydro-
    carbon based fuel.
    According to Dr. Checkel, for the person of ordi-
    nary skill who held a high school diploma, the
    amount of relevant professional experience would
    be seven to ten years, while those with more edu-
    cational experience would require correspondingly
    less years of professional experience.
    Final Decision at 15 (quoting Redline Detection, Paper 41
    at 29).
    26               REDLINE DETECTION, LLC   v. STAR ENVIROTECH, INC.
    thus not made to the PTAB and are improper on appeal.
    Because this court’s review of the PTAB’s decision “is
    confined to the ‘four corners’ of that record[,] . . . it is
    important that the applicant challenging a decision not be
    permitted to raise arguments on appeal that were not
    presented to the [PTAB].” In re Watts, 
    354 F.3d 1362
    ,
    1367 (Fed. Cir. 2004). We hold Redline’s arguments
    waived and need not address them.
    C. Substantial Evidence Supports the PTAB’s Determina-
    tion of the Scope and Content of the Prior Art
    1. The PTAB Considered the Prior Art as a Whole
    Redline argues on appeal that the PTAB failed to con-
    sider the prior art as a whole, but rather considered
    teachings from only four references. Redline contends the
    Board failed to consider the following submitted prior art
    references: (1) Research and Testing, Aircraft Engineering
    & Aerospace Tech., Jan. 1969, Vol. 41, Issue 1, p. 44 (“AE
    Article”) (J.A. 1002) and (2) T. Dunnington, High Temper-
    ature Smoke Training—the Way Forward, Indus. Fire J.,
    56 (Dec. 1995–Jan. 1996) (“IJF Article”) (J.A. 1009).
    Appellant’s Br. 57.
    The PTAB, in fact, considered these references. In its
    decision to institute the IPR, the PTAB rejected redun-
    dant grounds. It noted that Redline “acknowledge[d] that
    the teachings of some of these additional references are
    themselves redundant.” J.A. 1294. The sentence imme-
    diately following this statement discussed prior art refer-
    ences submitted by Redline, including the “‘IFJ Article
    describing the ViCount smoke system of the AE Article[].’”
    J.A. 1294; see J.A. 110.
    What is more, Redline raised these prior art refer-
    ences during oral argument at the PTAB while discussing
    other alleged prior art and cited them in its reply brief to
    the PTAB during its discussion of the prior art. See J.A.
    3757 (oral argument), 3500 (reply). The PTAB also cited
    REDLINE DETECTION, LLC   v. STAR ENVIROTECH, INC.          27
    to the portion of Redline’s reply brief in its Final Decision.
    Final Decision at 24. Thus, the record demonstrates the
    references certainly were considered by the PTAB.
    2. Substantial Evidence Supports the PTAB’s Analysis of
    Gilliam, Stoyle, Pauley, and the 1999 Website
    On appeal, Redline contends the PTAB improperly ex-
    cluded its supplemental information and therefore its
    motivation to combine analysis, and ultimate obviousness
    determination, is incomplete and, therefore, improper.
    The PTAB’s “findings could not be made if the excluded
    declaration of Dr. St. Denis was entered.” Appellant’s Br.
    51. Redline also argues that the PTAB otherwise erred in
    its motivation to combine analysis. 
    Id.
     at 58–60. We
    address each argument in turn.
    a. The PTAB’s Factual Findings for Gilliam, Stoyle,
    Pauley, and the 1999 Website
    The grounds on which the PTAB instituted the IPR
    were based on Redline’s assertions that independent
    claim 9 and dependent claim 10 were unpatentable under
    
    35 U.S.C. § 103
    (a) over: (1) Gilliam and Stoyle, Final
    Decision at 17; and (2) Gilliam, Pauley, and the 1999
    Website, Final Decision at 27. Based on the record before
    it, the PTAB determined what each reference taught and
    determined whether a PHOSITA would have been moti-
    vated to combine these references. Substantial evidence
    supports the PTAB’s factual findings.
    The PTAB found “Gilliam does not teach or suggest
    the use of inert gas to create an inert environment in the
    closed smoke-producing chamber, as a combustion-
    prevention alternative.” Final Decision at 21. In reach-
    ing this finding, the PTAB stated Gilliam preferably uses
    a smoke-producing fluid that is non-flammable and non-
    toxic. 
    Id.
     at 19 (citing Gilliam col. 5 ll. 67–68). “When the
    smoke-producing fluid comes in contact with ceramic
    heating element 11, the smoke-producing fluid vaporizes
    28               REDLINE DETECTION, LLC   v. STAR ENVIROTECH, INC.
    within the chamber 30.” 
    Id.
     (citing Gilliam col. 6 ll. 34–
    36). The PTAB further noted, “[s]moke generated within
    chamber 30 is then conveyed via conduit 22 to a particu-
    lar automotive system for leak testing.” 
    Id.
     (citing
    Gilliam col. 8 ll. 8–13). Additionally, Gilliam “includes at
    least three ways to prevent combustion of a flammable,
    smoke producing fluid . . . .” 
    Id. at 20
     (citation omitted).
    The PTAB found that Stoyle does not “disclose or sug-
    gest creating an inert environment during leak-testing of
    a closed vacuum system in a motor vehicle, such as an
    EVAP system including a fuel tank.” 
    Id. at 25
    . “Stoyle
    does not teach generation of smoke in an inert environ-
    ment within a closed smoke-producing chamber, as recit-
    ed in claim 9 of the ’808 patent.” 
    Id. at 24
     (citation
    omitted). Rather, the PTAB found “the generation of
    smoke using inert gas in Stoyle is different in type and
    location than recited in claim 9 of the ’808 patent.” 
    Id.
    (citation omitted). Smoke in Stoyle is generated “when a
    heated mixture of oil and CO2 is combined with air and
    that smoke is not produced within a closed smoke produc-
    ing chamber.” 
    Id. at 25
     (citation omitted). Additionally,
    the PTAB agreed with Dr. Checkel that smoke produced
    by flash evaporation and pressure would be inappropriate
    and dangerous to use in a closed EVAP system. 
    Id.
     at 25–
    26 (citing J.A. 2055–56).
    The PTAB found that Pauley “teaches the use of [CO2
    or N2 gas] as a medium for atomizing and propelling fog,
    smoke, or mist forming liquid in order to reduce, but not
    necessarily to prevent, any risk of ignition.” 
    Id. at 27
    (citation omitted). Relying on Dr. Checkel’s testimony,
    the PTAB found that “Pauley does not teach or suggest
    creating an inert environment within a closed smoke-
    producing chamber, but rather teaches combining an inert
    gas with air to generate smoke in an open tube.” 
    Id. at 30
    (citation omitted). While “Pauley teaches the presence of
    inert gases ‘reduces to a minimum any tendency to igni-
    tion of the vapour should the liquid employed be of an
    REDLINE DETECTION, LLC   v. STAR ENVIROTECH, INC.         29
    inflammable nature,’” this in itself “does not prevent
    ignition of the flammable fluid, ‘as would be the case in an
    inert environment within a closed chamber.’” 
    Id.
     (cita-
    tions omitted).
    The PTAB determined that the 1999 Website suggests
    “only that vehicles may be leak tested using the Corona
    smoke machine described therein.” 
    Id. at 27
     (internal
    quotation marks and citation omitted).
    b. Motivation to Combine Gilliam and Stoyle
    The PTAB determined a PHOSITA would have had no
    reason “to substitute Stoyle’s use of inert gas, forced into
    the narrow compressed space between a bore and a plug,
    in place of the air used in Gilliam’s temperature-
    regulated, spark arrestor-governed system to generate
    smoke in a closed smoke-producing chamber.” 
    Id. at 22
    (citation omitted). The PTAB found there was no rational
    underpinning to combine Gilliam and Stoyle to achieve
    the invention recited in claim 9 of the ’808 patent. 
    Id.
    The PTAB also noted that its analysis is applicable to
    both independent claim 9 and dependent claim 10 of the
    ’808 patent. “Claim 10 recites that the method of claim 9
    comprises ‘the additional step of regulating the pressure
    at which the smoke is carried by said non-combustible gas
    from said closed smoke producing chamber to the closed
    system undergoing testing.’” 
    Id. at 26
     (quoting ’808
    patent col. 2 ll. 28–31); see also J.A. 158 (ex parte reexam-
    ination certificate adding claim 10 to the ’808 patent).
    Redline argued to the PTAB that Gilliam teaches all
    limitations of claims 9 and 10 of the ’808 patent, “except
    [that Gilliam uses] air instead of inert gas to generate
    smoke and carry that smoke to the systems being tested.”
    
    Id. at 17
     (alteration in original) (internal quotation marks
    and citation omitted). Redline argued the reason to
    combine these references is the “disclosure of the safety
    advantages of Stoyle’s mist or smoke produced with an
    inert gas, i.e., [CO2 gas], and Gilliam’s cautions about the
    30               REDLINE DETECTION, LLC   v. STAR ENVIROTECH, INC.
    dangers of the introduction of flammable smoke into
    tested systems.” 
    Id. at 23
     (citation omitted).
    The PTAB rejected Redline’s arguments because it
    found they were not supported with declaration testimo-
    ny, “and the inferences [Redline] attempt[ed] to draw
    from statements made in Gilliam and Stoyle [were] rebut-
    ted effectively by [STAR’s expert] . . . .” 
    Id. at 24
     (cita-
    tions omitted).     After reviewing the record and the
    unrebutted testimony of STAR’s expert, the PTAB deter-
    mined Redline failed to provide sufficient evidence to
    show a PHOSITA would “have had reason to substitute
    the air used in Gilliam with inert gas alone from the
    mixture disclosed in Stoyle to achieve the invention
    recited in claim 9.” 
    Id. at 25
    .
    On appeal, Redline argues a PHOSITA “would be fa-
    miliar with Gilliam’s smoke machines to test for EVAP
    system leaks and the risks associated therewith.” Appel-
    lant’s Br. 58 (capitalization and emphasis omitted). It
    contends that a PHOSITA would have understood the
    teachings of Gilliam, such that smoke could be created
    and used to test systems for leaks. 
    Id.
     Redline further
    argues a PHOSITA would have understood that Gilliam’s
    prior art “expressly warns of the potential for gasoline
    vapors to explode.” 
    Id.
     As such, a “skilled artisan would
    also know that at least as early as 1950[] it was known
    that one could generate a non-flammable smoke that
    eliminates the risk of explosion by vaporizing an oil with
    an inert gas . . . .” 
    Id. at 59
    . Thus, Redline contends “[a]s
    a matter of common sense, [a PHOSITA as defined by the
    PTAB] . . . would [have] unquestionably [understood] the
    risk of explosion inherent to gasoline vapors, and would
    [have] be[en] motivated to exercise ordinary creativity
    and common sense to minimize such risk” and combine
    known and readily available alternatives. 
    Id.
     at 58–59.
    Substantial evidence supports the PTAB’s determina-
    tion that there was no motivation to combine Gilliam and
    REDLINE DETECTION, LLC   v. STAR ENVIROTECH, INC.       31
    Stoyle. The PTAB determined that Gilliam teaches the
    combustion of a smoke producing fluid in an oxygen
    environment. Final Decision at 19. Dr. Checkel’s decla-
    ration supports this finding, demonstrating that Gilliam’s
    combustion does not work without oxygen. “Based on the
    education and experience of the person of ordinary skill in
    the field in July 1999, this person would have understood
    that smoke is generally the product of combustion.” J.A.
    2049 ¶ 123. “And the teachings of Gilliam would confirm
    to this person that Gilliam’s methods involved at least
    some combustion” through the vaporization of smoke-
    generating fluid. J.A. 2049. During IPR proceedings,
    Redline acknowledged that Gilliam does not disclose the
    use of inert gas to create an inert environment for pre-
    venting ignition within the smoke producing chamber.
    Final Decision at 20.
    The PTAB also determined that Stoyle uses high
    pressure and temperature to flash evaporate oil to gener-
    ate smoke. 
    Id. at 25
     (quoting J.A. 2054–55 ¶ 136).
    Stoyle’s high pressure is achieved using CO2 gas that is
    forced through narrow passages in the heated assembly.
    J.A. 2055 ¶ 136. The superheated oil is “released to
    ambient conditions where it undergoes flash evaporation,
    forming oil vapor which is condensed to form a mist of
    droplets.”   J.A. 2055 ¶ 136 (footnote omitted).        A
    PHOSITA “would not look to Stoyle to supply any missing
    features” because “the smoke-generating methods are
    materially different and are used for materially different
    purposes.” J.A. 2054 ¶ 135.
    The PTAB properly found that Gilliam and Stoyle,
    taken together, generate smoke via differing methods and
    thus, could not be combined to achieve the claimed inven-
    tion recited in claims 9 and 10 of the ’808 patent. A
    PHOSITA in July 1999 would have no reason to remove
    the ambient air from Gilliam and replace it with inert gas
    from Stoyle. Stoyle relies on high temperature and pres-
    sure. Gilliam relies on vaporizing fluid in an oxygen
    32               REDLINE DETECTION, LLC   v. STAR ENVIROTECH, INC.
    environment. Both of these methods can damage closed
    EVAP systems with volatile compounds.
    c. Motivation to Combine Gilliam, Pauley, and the 1999
    Website
    The PTAB determined that a PHOSITA would have
    had no “reason to substitute the air used in Gilliam with
    the inert gas from the mixture of air and inert gas dis-
    closed in Pauley’s open-tube, theatrical effects system for
    generating smoke in air to achieve the invention recited
    in claim 9 [of the ’808 patent].” Final Decision at 31.
    On appeal, Redline argues Pauley “shows that it was
    known well before July 1999 that an inflammable smoke
    may be created by vaporizing an oil in an inert gas envi-
    ronment, and that inflammable smoke may be used in a
    wide variety of commercial applications . . . .” Appellant’s
    Br. 59. Redline states the smoke in Pauley can be used in
    theatrical effects, firefighter training, and even “automo-
    tive leak detection systems.”        
    Id.
     (citation omitted).
    Redline’s previously discussed arguments on appeal
    regarding Gilliam are also applicable under this motiva-
    tion to combine argument. Redline does not offer any
    arguments on appeal regarding the motivation to combine
    the 1999 Website. Thus, the PTAB’s determination that
    “[t]he 1999 Website adds little to the asserted combina-
    tion of Gilliam and Pauley,” is uncontested. Final Deci-
    sion at 27.
    Substantial evidence supports the PTAB’s determina-
    tion that there was no motivation to combine Gilliam,
    Pauley, and the 1999 Website. Dr. Checkel’s declaration
    stated “the inert gas [in Pauley] is only provided to atom-
    ize the glycerine or oil, propel it against the heating
    element and reduce the tendency to ignition in the region
    of the hot element.” J.A. 2066 ¶ 160. “[U]se of an inert
    gas ‘reduces to a minimum’ the tendency to ignition—
    rather than eliminating the tendency—suggest[ing] to a
    person of ordinary skill that the smoke generation method
    REDLINE DETECTION, LLC   v. STAR ENVIROTECH, INC.         33
    is not in an inert environment and needs some ambient
    air or oxygen.” J.A. 2066 ¶ 161 (footnote omitted). Pauley
    requires ambient air to work for its intended purpose,
    otherwise “[a] purely inert smoke mixture, produced
    without entraining ambient air[,] would produce an
    anoxic environment . . . present[ing] a hazard to the
    actors and audience.” J.A. 2067 ¶ 163 (footnote omitted).
    The PTAB accordingly determined “the use of inert gas in
    Pauley is different in type and location from that recited
    in claim 9 of the ’808 patent.” Final Decision at 31.
    Both Pauley and Gilliam require air to produce smoke
    in accordance with their disclosed inventions. But, “nei-
    ther Pauley nor Gilliam disclose using an inert gas . . . to
    prevent ignition and thereby avoid the possibility of an
    explosion” when using the smoke to test closed EVAP
    systems that contain volatile compounds. J.A. 2068
    ¶ 165. Further, Dr. Checkel’s declaration noted the 1999
    Website references “‘vehicle’ in a list including large, open
    objects such as chimneys, luggage holds of aircraft and
    ships . . . [which] would confirm to a [PHOSITA] that the
    smoke machines discussed were intended for large open
    objects . . . not the sensitive, hazardous EVAP system in a
    vehicle engine.” J.A. 2070 ¶ 169. Based on this testimo-
    ny, the PTAB properly determined the 1999 Website did
    not teach the use of smoke machines for leak testing
    closed EVAP systems. Substantial record evidence sup-
    ports the PTAB’s finding there was no motivation to
    combine Pauley, Gilliam, and the 1999 Website.
    CONCLUSION
    Redline’s remaining arguments are unpersuasive.
    Accordingly, the decision of the United States Patent and
    Trademark Office’s Patent Trial and Appeal Board is
    AFFIRMED