Schott Gemtron Corp. v. SSW Holding Co., Inc.
In a final written decision addressing the patentability of claims challenged as obvious, the U.S. Patent and Trademark Office's Patent Trial and Appeal Board (PTAB, the Board) found three challenged claims patentable, determining that one of the key prior art references was non-analogous and could not be used in an obviousness analysis. Schott Gemtron Corp. v. SSW Holding Co., Inc., Case IPR2013-00358 (PTAB, Aug. 20, 2014) (Braden, APJ).
Schott Gemtron petitioned the Board for review of a patent directed to refrigerator shelving with a hydrophobic surface having a spill containment pattern where the hydrophobic surface area is less than the remaining area. One embodiment was a shelf with a perimeter band of hydrophobic material.
During claim construction, the Board determined that the arguments raised by the parties made it necessary to construe the term "spill." Relying on examples provided in the patent, the petitioner argued that "spill" has a specific meaning of "liquid being placed on a surface." The patent owner argued for the plain and ordinary meaning of the term—"an accidental or unintentional release of liquid"—relying on other parts of the specification. In view of examples in the specification showing how the invention affected an accidental spill, the Board agreed with the patent owner.
The petitioner provided a declaration in support of its petition. In an attempt to qualify its witness as a skilled artisan as of the effective filing date, the petitioner disputed the priority date for the challenged patent. The petitioner alleged that the two provisional applications cited for priority lacked sufficient written description to support limitations in each disputed claim. The Board disagreed. It found support in the provisionals for all limitations and accorded the patent the earlier priority date. Consequently, the petitioner's witness did not qualify as a skilled artisan at the time of the invention, and the Board discounted his testimony.
The petitioner provided two prior art combinations to support its obviousness challenge. The patent owner argued that one reference, which was critical to both obviousness challenges, was not analogous to the claimed invention. The reference in question was directed to the containment of liquids on microscope slides. Relying in part on testimony from the patent owner's witness, the Board agreed. The Board also noted that the petitioner's witness did not dispute that testimony.
The Board reasoned that containing the accidental spill of liquid on a shelf is markedly different from containing miniscule amounts of liquid on a microscope slide. The Board determined that it did not matter whether the technique was scalable because the reference was not analogous. As a result, the Board excluded the reference from its analyses. Without this reference, both obviousness challenges failed.
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