IP Law Daily, PATENT—Fed. Cir.: PTAB’s obviousness finding largely affirmed in spiral conveyor patent dispute, (May 15, 2023)

By Kevin M. Finson, J.D.

The Board’s decision was largely supported by the claim language and expert testimony.

In two inter partes review proceedings, the Patent Trial and Appeal Board correctly construed disputed claims and properly found that a seller of spiral conveyors provided sufficient evidence to show that most challenged claims of two of a competitor’s patents would have been obvious over prior art, the U.S. Court of Appeals for the Federal Circuit has held, in affirming one Board final decision in its entirety and the other in large part. The PTAB properly relied upon expert testimony and the claim language itself. However, because the Board failed to properly evaluate evidence of motivation to combine in determining that two claims of one patent were nonobvious, the case was remanded on this issue (Laitram, LLC v. Ashworth Bros., Inc., May 15, 2023, Hughes, T.).

Laitram, LLC (Laitram) was the owner of U.S. Patents Nos. 10,023,388 (the ’388 patent) and 10,189,645 (the ’645 patent), both of which related to spiral conveyor systems. Ashworth Bros., Inc. (Ashworth) petitioned for inter partes review challenging several claims of each patent as unpatentable for obviousness. The Patent Trial and Appeal Board found claims 9 and 11–13 of the ’388 patent and claims 1-4 of the ’645 patent were unpatentable as obvious and claims 10 and 11 of the ’388 patent were non-obvious. Laitram appealed the Board’s findings of obviousness and Ashworth cross-appealed its non-obviousness findings.

Claim construction. Laitram argued that the Board erred in its construction of two claim terms: “a conveyor belt positively driven without slip;” and “the ridge in the lower segment is tapered along a portion of its length.” On the slip issue, the Laitram argued that the Board’s construction did not give effect to the words of the claims because “without slip” would be true of any positive drive system.

The Federal Circuit determined that the Board’s claim construction was supported by expert testimony and that canons of construction could not overcome the plain language. On the tapering issue, the court found that the Board properly interpreted “taper” broadly in accordance with the claim language, rather than limiting the degree of taper to that disclosed in the preferred embodiment. Because there was no error in the challenged claim constructions, the court affirmed the Board’s conclusion that claims 9 And 11–13 of the ’388 patent and claims 1–4 of the ’645 patent were unpatentable as obvious over the prior art.

Motivation to combine. In its cross-appeal, Ashworth argued that the Board erred by not giving proper consideration to its evidence of motivation to combine. The Board had understood Ashworth to be trying to reconcile two different figures to show tapering of the conveyor system, but the court held that in fact Ashworth had presented expert testimony showing that an artisan considering one of the prior art references alone would have arrived at the claimed shapes.

The Federal Circuit remanded the case for consideration of Ashworth’s motivation to combine analysis.

The Case is Nos. 2022-1044, 2022-1045, 2022-1084.

Attorneys: Lauren J. Dreyer (Baker Botts LLP) for Laitram, LLC. Robert Francis Altherr, Jr. (Banner & Witcoff, Ltd.) for Ashworth Bros., Inc.

Companies: Laitram, LLC; Ashworth Bros., Inc.

Cases: Patent FedCirNews