More than one point of attack of Prima Facie cases of Obviousness can be presented

Bernadette McGann | May 16, 2016

Pride Mobility Products Corp. v. Permobil, Inc.

April 5, 2016

Before Reyna, Chen, and Taranta.  Opinion by Taranta.

Summary:

Pride argued before the Board, in an inter partes review, and the CAFC that a skilled artisan would not be motivated to combine the cited art, as alleged, because it would compromise the performance of the resulting wheelchair.  The argument by Pride focused only on a lack of motivation to combine the cited art and did not address the potential issue that if the rejection is sustained, there is a prima facie case of obviousness.  The Board found, and the CAFC affirmed, that the disputed claims were obvious.

Discussion

Pride Mobility (hereinafter Pride) owns U.S. Patent Nos. 8,408,598 and 8,408,343, both directed towards a wheelchair that is able to travel over an obstacle, such as a curb.  Permobil filed petitions for inter partes review of both patents under 35 U.S.C. §311(a).  In response, Pride argued that Permobil failed to show a motivation to achieve the alleged combination of references.  The Board concluded that Permobil had established a reasonable likelihood that claims 1, 4-8 and 11-13 of ‘598 and claims 2, 3, 9 and 10 of ‘343 were obvious over Goertzen in view of Hosino and Goertzen, Hosino and Schaffner, respectively, and instituted a review of the disputed claims.

Claim 1 of ‘343 is herein reproduced, as it is representative of the claims at issue:

  1.  A wheelchair comprising:

a frame;

a drive wheel defining a drive wheel axis a mounting plate pivotally coupled to the frame at a pivot axis, the pivot axis being positioned forward of the drive wheel axis; a mounting plate pivotally coupled to the frame at a pivot axis, the pivot axis being positioned forward of the drive wheel axis;

a drive operatively coupled to the drive wheel and affixed to the mounting plate;

a forward-extending front arm rigidly extending from the mounting plate such that the mounting plate, drive, and front arm are together configured to pivot about the pivot axis;

a front wheel rotatably coupled to the front arm, the front wheel defining a front wheel axis, wherein a vertical position of the pivot axis with respect to the ground plane is spaced from and positioned relatively below a line drawn between the drive wheel axis and the front wheel axis when the drive wheels and front wheels are on level ground;

whereby motor torque biases the front wheel.

(emphasis added).

Figure 2 of ‘598, herein reproduced, illustrates “the pivot axis is below a straight line drawn between the drive-wheel axis PA and front-caster-wheel axis 16A.  When the wheelchair accelerates or climbs a curb or other obstacle, the arm 24 rotates clockwise about the pivot axis, lifting the front caster wheel.”  Id. at 3.

 

 

 

 

 

 

 

Goertzen discloses a wheelchair wherein a “pivot arm connected to the chair’s frame by a pivot-mounting structure, such that the pivot connecting to the frame is positioned above a straight line drawn between the drive-wheel and front-caster-wheel axes.”  Id. at 5 and 6.  Hosino and Schaffner are both directed towards wheelchairs for traveling over an unstable surface, and in Hosino the “pivots or pivot-like elements [are] located below a line drawn between their drive-wheel and front-caster-wheel axes.”  Id. at 6.

Pride, replying upon expert Dr. Curran, argued that a skilled artisan would understand that lowering the pivot in Goertzen would reduce the wheelchair’s stability and that while there are various options to reduce the resulting instability, each of these options would compromise the performance of the chair.  Permobil argued that there are ways to adjust the characteristics of the chair in order to maintain stability, citing the deposition testimony of expert Dr. Richter.

The Board cancelled the disputed claims of both patents.  The “Board found that Permobil’s expert, Dr. Richter, had testified about how lowering the pivot point in the Goertzen chair would introduce a stability problem but that a skilled artisan ‘would have known to compensate for the reduction in stability’ in various ways…. The Board found that a skilled artisan would have looked to Hosino and modified Goertzen accordingly.”  Id. at 7.  Pride appealed the Board’s decision.

The CAFC reviewed the Board’s decision under 5 U.S.C. §706(2)(A), (E), wherein the Board’s actions will be set aside if arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with the law or unsupported by substantial evidence.  In re Sullivan, 362 F.3d, 1324, 1326 (Fed. Cir. 2004).  The CAFC affirmed the Board’s decision to cancel all of the disputed claims of both patents.  The CAFC agreed with the Board’s decision that a skilled artisan would have been motivated to lower the pivot axis of the Goertzen wheelchair, as disclosed in Hosino.  It was noted that while Pride challenged the finding of obviousness, “it does not dispute the finding, if sustained, suffices to support all of the rejections except for claim 7 of the ‘343 patent.”  Id. at 13.  The CAFC acknowledges Pride’s argument that by modifying the Goertzen wheelchair to obtain obstacle-climbing advantages, one is creating instability problems, and adjustments to other components of the chair to compensate for said instability would create new problems.  However, the CAFC ultimately held that “the Board as having found, and as reasonably understanding Dr. Richter to have testified that a relevant skilled artisan would have ‘known to compensate for’ the instability problem in ways that preserved the acceptability of the wheelchair.”  Id. at 13.

Takeaway:

  • In addition to arguing that there is no reason to combine two or more references to achieve the claimed invention, Pride should have also argued against the resulting combination.
  • Another potential argument, if possible, is to argue against the “known to compensate for” the resulting instability allegation. That is, Pride may have considered establishing that even if combined, said combination does not compensate for the newly created instability.

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