REDLINE DETECTION, LLC, Appellant v. STAR ENVIROTECH, INC., Appellee.
No. 2015-1047.
United States Court of Appeals, Federal Circuit.
Dec. 31, 2015.
435
Brenton R. Babcock, Knobbe, Martens, Olson & Bear, LLP, Irvine, CA, argued for appellee. Also represented 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 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
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.
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 chamber 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 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 generating technology, but these methods are not suitable for leak testing closed systems that have volatile hydrocarbons. The ‘808
A. Gilliam
U.S. Patent No. 5,107,698 (“Gilliam“) describes methods 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 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 boihng 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 mixture 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 ventilation systems or for theatrical effects.” Stoyle p. 1 ll. 11-17. Figure 3 of Stoyle is depicted below.
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 mixture[,] [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’ conveniently without quickly melting or drifting away,” id. p. 2 ll. 51-52. Figure 1 of Pauley is depicted below.
Id. fig.1.
“[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
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 Technologies, 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 asbestos enclosures, flues and chimneys, luggage holds of aircraft and ships, freight containers, vehicles and drainage and fire sprinkler systems.” J.A. 1039.
III. Proceedings
In January 2013, Redline filed a corrected IPR Petition with the PTAB, requesting review of claims 9 and 10 of the ‘808 patent.1 This IPR was instituted on July 1, 2013. On July 30, 2013, Redline filed a Motion for Supplemental Disclosure of New Exhibits, requesting submission of four pieces of evidence. In August 2013, the PTAB denied Redline‘s request to submit supplemental information 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
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
A. Deference Is Accorded to the PTAB‘s Interpretation of USPTO Regulations
This court accepts the PTAB‘S “interpretation of [USPTO] regulations un-
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
Consistent with Congress‘s mandate, the USPTO promulgated general regulations governing the PTAB‘s trial practices,
The AIA authorizes the filing of supplemental information with the PTAB during the course of an IPR,
Motion to submit supplemental information. Once a trial has been instituted, a party may file a motion to submit supplemental information in accordance with the following requirements:
(1) A request for the authorization to file a motion to submit supplemental information is made within one month of the date the trial is instituted.
(2) The supplemental information must be relevant to a claim for which the trial has been instituted.
The PTAB‘s decision to admit supplemental information is also informed by
C. The PTAB‘s Interpretation of 37 C.F.R. § 42.123 is Consistent with the Regulatory History and Is Not Plainly 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 sixtypage 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 Petition.” 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 admit-
The PTAB determined “nothing in
On appeal, Redline argues “the regulatory history of [
Redline‘s arguments rely, in part, on rules of statutory construction—e.g., (1) the exclusion of particular language from one subsection of a statute that was included in other subsections means “it is generally presumed that Congress acts intentionally and purposefully in the disparate inclusion or exclusion,” Keene Corp. v. United States, 508 U.S. 200, 208 (1993) (internal quotation 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 con-
The PTAB‘s interpretation of its governing regulations is not plainly erroneous. Its interpretation of
Redline‘s interpretation of the regulatory history does not warrant a different conclusion. For example, Redline‘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 promulgation. Further, none of the USPTO‘s statements “presumptively established that the timeliness and relevance requirements of
In sum, nothing in
Redline next argues the plain language of
In support of this argument, Redline states “[i]t is a fundamental principle of administrative law that ‘agencies are bound to follow their own rules, even self-imposed procedural rules that limit, otherwise discretionary decisions.‘” 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
Redline‘s regulatory interpretation presents a new facet of the first argument it raised regarding
tionally, the PTAB has discretion to grant or deny motions as it sees fit. See, e.g.,
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 decisions 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
Redline‘s reliance is misplaced. The PTAB in Palo Alto Networks found the supplemental information would not prevent it from fulfilling its mandate since the “Patent 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
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 document, id. Paper 1, that relied heavily on its expert declaration, 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 information 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 presented in the IPR Petition. Id. at 4.
However, the PTAB stated “[a]lthough a party may meet the [
Here, Redline asserts its submission of Dr. St. Denis‘s sixty-page declaration was identical to the type of evidence submitted in Pacific Market International and the 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
Redline‘s characterization of Pacific Market International is inaccurate and misleading. The Panel‘s decision expressly stated
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 Obviousness
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 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 contradictory conclusions, we will not find the Board‘s decision unsupported by substantial evidence simply because the Board chose one conclusion over another plausible alternative.” 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.”
When asserting that a claimed invention would have been obvious, that party “must demonstrate ... 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 success from doing so.” PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1193 (Fed. Cir. 2014) (internal quotation marks and citations omitted); see Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1364-65 (Fed. Cir. 2015); see also
B. Redline Waived Its Arguments Regarding PTAB‘s Determination of the PHOSITA‘s Skill Level
The PTAB rejected Redline‘s unsupported oral argument that a PHOSITA
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 alternative.” 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 Disclosure of New Exhibits that the PTAB excluded. They were 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 Determination 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 consider 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 Temperature Smoke Training—the Way Forward, Indus. Fire
The PTAB, in fact, considered these references. In its decision to institute the IPR, the PTAB rejected redundant grounds. It noted that Redline “acknowledge[d] that the teachings of some of these additional references are themselves redundant.” J.A. 1294. The sentence immediately following this statement discussed prior art references submitted by Redline, including the “TFJ 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 references 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 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 excluded 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
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 reaching this finding, the PTAB stated Gilliam preferably uses a smoke-producing fluid that is non-flammable and nontoxic. 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 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 particular 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 suggest 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 environment within a closed smoke-producing chamber, as recited in claim 9 of the ‘808 patent.” Id. at 24 (citation omitted). Rather, the PTAB found “the generation of smoke us-
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 ignition of the vapour should the liquid employed be of an 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. (citations 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 reexamination 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 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 testimony, “and the inferences [Redline] attempt[ed] to draw from statements made in Gilliam and Stoyle [were] rebutted effectively by [STAR‘s expert]....” Id. at 24 (citations omitted). After reviewing the record and the unrebutted testimony of STAR‘s expert, the PTAB determined Redline failed to pro-
On appeal, Redline argues a PHOSITA “would be familiar with Gilliam‘s smoke machines to test for EVAP system leaks and the risks associated therewith.” Appellant‘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 determination that there was no motivation to combine Gilliam and 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 declaration 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 preventing 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 generate 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 invention recited in claims 9 and 10 of the ‘808 patent. A PHOSITA in July 1999 would have had no reason to remove the ambient air from Gilliam and replace it with inert gas from Stoyle. Stoyle relies on high temperature and pressure. Gilliam relies on vaporizing fluid in an oxygen 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
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 environment, 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 “automotive leak detection systems.” Id. (citation omitted). Redline‘s previously discussed arguments on appeal regarding Gilliam are also applicable under this motivation 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 combination of Gilliam and Pauley,” is uncontested. Final Decision at 27.
Substantial evidence supports the PTAB‘s determination 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 atomize 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 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, “neither 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 testimony, the PTAB properly determined the 1999 Website did not teach the use of smoke machines for leak testing closed EVAP systems. Substantial record evidence supports 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