Thank You For Submiting Feedback!
United States Court of Appeals for the Federal Circuit
October 30, 2013, Decided
[*1356] [***1728] 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 appeal, the Board of Patent Appeals and Interferences [**2] (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 references. 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.
FG and Randall are competitors in selling products for refrigerated trucks. In particular, both parties manufacture 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 the ceiling of a shipping container using [*1357] rail-and-trolley assemblies, so that the panels may be strapped together to form a full-width partition, separately moved along the length of the container for separate positioning, or raised and stowed against the ceiling. Figures 1, 6, and 7 are illustrative:
[***1729] On December 4, 2007, Randall requested inter partes reexamination of the '017 patent. [**3] The Examiner granted Randall's request and subsequently rejected all 15 original 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. [*1358] New claim 38 is representative of FG's claims on appeal:
Full case includes Shepard's, Headnotes, Legal Analytics from Lex Machina, and more.
733 F.3d 1355 *; 2013 U.S. App. LEXIS 22071 **; 108 U.S.P.Q.2D (BNA) 1727 ***; 2013 WL 5813334
RANDALL MFG., Appellant, v. TERESA STANEK REA, Acting Director, United States Patent and Trademark Office, Appellee, AND FG PRODUCTS, INC., Appellee.
Prior History: [**1] Appeal from the United States Patent and Trademark Office, Board of Patent Appeals and Interferences in Reexamination No. 95/000,326.
Disposition: VACATED AND REMANDED.
panels, ceiling, references, mounting, bulkhead, lift, first and second, ordinary skill, longitudinal, stowage, rails, skill, cargo, strap, prior art, separating, container, invention, combine, trailer, stowed, space, non-obviousness, rejections, partition, assembly, Patent, modify, vacate, hinge
Patent Law, Jurisdiction & Review, Standards of Review, De Novo Review, Substantial Evidence, Nonobviousness, Elements & Tests, General Overview, Prior Art, Evidence, Fact & Law Issues