NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________ 

SHINN FU COMPANY OF AMERICA, INC., SHINN

FU CORPORATION,

Appellants

v.

THE TIRE HANGER CORPORATION,

Appellee

JOSEPH MATAL, PERFORMING THE FUNCTIONS 

AND DUTIES OF THE UNDER SECRETARY OF 

COMMERCE FOR INTELLECTUAL PROPERTY 

AND DIRECTOR, U.S. PATENT AND TRADEMARK 

OFFICE, 

Intervenor

______________________ 

2016-2250

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. IPR2015-

00208.

______________________ 

Decided: July 3, 2017

______________________ 
2 SHINN FU CO. OF AM. v. THE TIRE HANGER CORP. 

ALLEN JUSTIN POPLIN, Lathrop & Gage, LLP, Overland Park, KS, argued for appellants. Also represented by 

TRAVIS W. MCCALLON, Kansas City, MO.

JOHN DAVID VAN LOBEN SELS, Fish & Tsang LLP, 

Redwood City, CA, argued for appellee. Also represented 

by JENNIFER SHIH; ROBERT FISH, Irvine, CA.

NATHAN K. KELLEY, Office of the Solicitor, United

States Patent and Trademark Office, Alexandria, VA, 

argued for intervenor. Also represented by SCOTT 

WEIDENFELLER, FRANCES LYNCH. 

______________________ 

Before PROST, Chief Judge, REYNA and TARANTO, Circuit 

Judges.

PROST, Chief Judge.

This appeal arises from an inter partes review (“IPR”)

of U.S. Patent No. 6,681,897 (“’897 patent”) in Inter 

Partes Review No. IPR2015-00208. In that proceeding, 

the Patent Trial and Appeal Board (“Board”) granted the 

patent owner’s motion to amend and held the substitute

claims patentable. Because the Board did not properly 

consider the arguments petitioner set forth in its opposition to the patent owner’s motion to amend, we vacate 

and remand.

I 

Tire Hanger is the assignee of the ’897 patent, which

generally relates to apparatuses and methods for handling and supporting vehicle wheels that have been

temporarily removed from a vehicle positioned on a lift or 

hoist. ’897 patent col. 1 ll. 11–14. In one embodiment, the 

’897 patent describes a method for temporary removal of 

an automotive tire assembly, e.g., a vehicle wheel, that 

includes the steps of: (1) elevating a vehicle on a hoist; 

(2) removing the wheel from the vehicle; and (3) placing 
SHINN FU CO. OF AM. v. THE TIRE HANGER CORP. 3

the wheel on a support arm installed on the hoist. Id. at 

col. 2 ll. 36–41. Throughout various embodiments, the 

specification describes humans carrying out these method 

steps. See, e.g., id. at col. 1 ll. 54–59 (describing a principal object and advantage of the invention as providing an 

improved wheel support apparatus that will not require 

workers to bend over while temporarily removing and 

replacing the wheels); id. at col. 1 l. 60–col. 2 l. 6 (requiring that a worker remove the wheel, carry it to the support apparatus, and hang it on the support arm without 

bending over throughout the removal and subsequent 

reinstallation processes). 

Shinn Fu Co. of America, Inc. and Shinn Fu Corp. 

(collectively, “Shinn Fu”) petitioned for inter partes review of all five claims of the ’897 patent, proposing various anticipatory and obviousness grounds of rejection.

The U.S. Patent and Trademark Office (“USPTO”) instituted on claims 1–5 under the following three grounds:

Claims 1 and 4 as anticipated by U.S. Patent No. 

5,813,659 (“Heidle”) under 35 U.S.C. § 102;

Claims 3 and 5 as rendered obvious over Heidle, 

Applicant Admitted Prior Art (“AAPA”), and U.S.

DEPT. OF LABOR, BACK DISORDERS AND INJURIES,

OSHA TECHNICAL MANUAL 5-1 (2d ed., 1991) 

(“OSHA”) under 35 U.S.C. § 103; and 

Claims 1–4 as rendered obvious in view Japanese 

Patent Pub. No. H4-368261, pub. Dec. 21, 1992 

(“Komorita”), AAPA, and OSHA under 35 U.S.C. 

§ 103.

J.A. 126, 131. 

In response, Tire Hanger filed a motion to amend, 

seeking to cancel claims 1–5 and substitute claims 6–10. 

J.A. 144. Tire Hanger did not challenge the Board’s 

analysis regarding claims 1–5, thus waiving any arguments in defense of the patentability of those claims. See
4 SHINN FU CO. OF AM. v. THE TIRE HANGER CORP. 

J.A. 14 (citing 37 C.F.R. § 42.23(a)). Regarding the newly 

presented claims, independent claim 6 modified original 

claim 1, and dependent claims 7–10 modified original 

claims 2–5, respectively. J.A. 164–66. A redline version 

comparing original claim 1 to substitute claim 6 is presented below (strikethrough text indicates deletions and 

underlined text indicates additions): 

6. A method for a human to use a support arm to 

temporarily retaining a vehicle wheel during removal and reinstallation of the wheel with respect 

to a vehicle, comprising, in the following order,

the steps of:

elevating a the vehicle on an automotive hoist so 

that a support arm disposed on the hoist is at 

about the same height as a wheel of the vehicle, and the human can remove the wheel 

without bending over; 

removing the wheel from the vehicle;

carrying the wheel to the support arm, wherein 

the human carries an entire weight of the 

wheel; 

placing hanging the wheel on the support arm, 

wherein the step of hanging the wheel on the 

support arm consists essentially of guiding a 

hole in the wheel over the support arm and releasing the wheel; 

removing the wheel from the support arm substantially without the human bending over, 

wherein the step of removing the wheel from 

the support arm consists essentially of grasping the wheel and pulling the wheel clear of 

the support arm; and

reinstalling the wheel onto the vehicle.

J.A. 145. 
SHINN FU CO. OF AM. v. THE TIRE HANGER CORP. 5

In broad terms, aside from specifying the order in 

which to perform the recited steps, these amendments 

added human involvement to steps that an apparatus or 

other structure could have otherwise performed. Tire 

Hanger accompanied these amendments with arguments 

in favor of patentability for the newly presented claims. 

Specifically, it presented its arguments in view of the 

prior art upon which the USPTO based its institution 

decision and recently discovered prior art references not 

of record. J.A. 152–63. Shinn Fu opposed and presented 

arguments of unpatentability with regard to the references Tire Hanger identified in its motion and two additional references: U.S. Patent No. 4,976,336 (“Curran”) 

and U.S. Patent No. 4,650,144 (“Conrad”). J.A. 170–94. 

After the parties presented oral argument, the Board 

concluded that the amended claims were patentable in 

light of the prior art of record and granted Tire Hanger’s 

motion to amend. J.A. 27. It reached this conclusion after 

characterizing the focus of the parties’ arguments as

being limited only to the Komorita, Heidle, and Conrad 

references. J.A. 20. Shinn Fu timely appealed. We have 

jurisdiction under 28 U.S.C. § 1295(a)(4)(A) (2012).

II

The principal issue on appeal is whether the Board 

erred by not adequately addressing Shinn Fu’s arguments 

in opposition to Tire Hanger’s motion to amend. We 

review the Board’s IPR decisions to ensure that they are 

not “arbitrary, capricious, an abuse of discretion, . . . 

otherwise not in accordance with law . . . [or] unsupported 

by substantial evidence. . . .” 5 U.S.C. § 706(2)(A), (E).

On appeal, Shinn Fu argues that the Board failed to 

consider its position of unpatentability based on “the prior 

art combination of Curran and Conrad as taught by 

Komorita or Heidle.” Appellants’ Opening Br. 21. Shinn 

Fu faults the Board for neither referencing this combination in its Final Written Decision nor providing a substan-
6 SHINN FU CO. OF AM. v. THE TIRE HANGER CORP. 

tive analysis of the merits of its arguments. Id. Specifically, Shinn Fu contends that the Board did not address its 

proposed combination that included the addition of Conrad’s tire hanger to a simple lift described in the prior art. 

Id. at 25–26. 

For its part, Tire Hanger faults Shinn Fu for not addressing on appeal the analysis the Board set forth in its 

Final Written Decision and focusing instead on other 

combinations of prior art that the Board could have

considered. Appellee’s Br. 25. It contends that Shinn Fu 

failed to develop its arguments before the Board, particularly with regard to the combinations involving the Conrad and Curran references. See id. at 34 (arguing that the 

combination that involved these references was not a 

“primary combination” that Shinn Fu argued before the 

Board) (citation omitted); see also id. at 25–26 (identifying 

the Komorita, Heidle, and Conrad references as one of the 

“primary combinations” that the Board considered). Tire 

Hanger describes the Curran and Conrad combination as 

one of many “ancillary issues” that Shinn Fu “only tangentially mention[ed]” in the first instance when opposing 

Tire Hanger’s motion to amend. Id. at 38; see also Intervenor’s Br. 21 (stating that Shinn Fu mentions Curran as 

merely a “fungible alternative” to other references primarily relied upon throughout the IPR proceeding). 

We conclude that the Board erred by ignoring the 

manner in which Shinn Fu proposed its obviousness 

combinations in opposition to Tire Hanger’s motion to 

amend. J.A. 180–86. Under our standard of review, the 

Board’s failure here was arbitrary and capacious. See In 

re Lee, 277 F.3d 1338, 1344 (Fed. Cir. 2002); see also 

Motor Vehicle Mfrs. Ass’n of U.S., Inc. v. State Farm Mut. 

Auto. Ins. Co., 463 U.S. 29, 43 (1983) (“[A]n agency rule 

would be arbitrary and capricious if the agency . . . entirely failed to consider an important aspect of the problem 

. . . .”). 
SHINN FU CO. OF AM. v. THE TIRE HANGER CORP. 7

Throughout its analysis, Shinn Fu described various 

prior art references and, more importantly here, the 

particular manner in which to combine them. Specifically, 

the combinations Shinn Fu proposed, including the combination of Conrad and Curran that Shinn Fu emphasizes 

on appeal to this court, involve modifying the prior art 

references by adding features from particular references 

together. See, e.g., J.A. 180 (describing why one of ordinary skill would have taken the tire hangers disclosed in 

the Conrad, Marion, and Wuethrich references and attached them to a vehicle lift disclosed in Curran or 

Heidle); J.A. 183 (coupling Conrad’s tire hanger to the 

Curran lift).1 Furthermore, Shinn Fu provided the specific 

motivation to combine by adding these features together. 

See J.A. 182 (explaining why one of ordinary skill in the 

art would have coupled the Conrad tire hanger to a lift); 

see also J.A. 181 (discussing OSHA and why one of ordinary skill would be motivated to prevent bending over 

while holding a tire); J.A. 184 (same). 

In contrast, the Board addressed the prior art references by removing elements from individual references to 

achieve the resulting combination and found no motivation to combine the references in this manner.2 See, e.g., 

J.A. 24–25 (“Thus, absent evidence to the contrary, we are

1 See also J.A. 181 (“The Conrad, Marion, and Wuethrich hangers would have respectively been attached to a 

vehicle lift . . . .”); J.A. 182–83 (attaching Conrad’s hanger 

to a lift); id. (coupling Conrad’s hanger to a lift in a manner taught by Komorita).

2 During oral argument, Shinn Fu characterized its 

proposed combination as “additive in nature,” i.e., adding

elements of the prior art together. It contrasted this 

analysis with the Board’s “subtractive approach,” i.e., 

taking elements away from the primary (Komorita) 

reference when combining those references. 

 
8 SHINN FU CO. OF AM. v. THE TIRE HANGER CORP. 

not persuaded that a skilled artisan would have contemplated gutting Komorita’s cradle structure in favor of a 

simpler hanger structure where doing so would have led to 

the loss of the very benefits on which Komorita is premised.”) (emphasis added); id. at 24 (“The ability of Komorita’s tire holder to retain multiple vehicle parts and to 

self-collapse flat with the floor would be lost if the cradlelike structure was replaced with a simple tire hanger.”) 

(emphasis added). This analysis differs substantively

from the additive approach Shinn Fu provided in its

opposition to Tire Hanger’s motion to amend. Yet the 

Board largely engaged in this subtractive analysis while

ignoring Shinn Fu’s additive combination of the Curran, 

Conrad, Komorita/Heidle references.3 See J.A. 20 (declaring in its Final Written Decision that the focus of the 

parties’ arguments merely “boils down” to the Komorita, 

Heidle, and Conrad references). And it did so even after 

describing Shinn Fu’s proposed combination as “the 

centerpiece of [its] argument.” See J.A. 290 ll. 1–13 (oral 

argument transcript). 

3 Although the Board faulted Shinn Fu for relying 

on additional references in its opposition, it is not surprising that it pursued this course of action in light of Tire 

Hanger’s amendments. See J.A. 290, ll. 1–13 (arguing that 

its combinations provided the necessary motivation in 

light of the amendments). In particular, those amendments added limitations that necessitate human involvement throughout the process. Indeed, the Board 

recognized this as the fundamental purpose of the amended claims in its Final Written Decision. See J.A. 21 (“Relevant to our analysis, however, is the purpose of the 

claimed method, which entails the removal and replacement of a wheel on an elevated vehicle without requiring 

the person handling the wheel to bend over.”) (emphasis 

added). 

 
SHINN FU CO. OF AM. v. THE TIRE HANGER CORP. 9

Because the Board did not provide any analysis with 

regard to the manner in which Shinn Fun proposed its

key obviousness combination, we have no meaningful way 

to review the Board’s patentability determination in light 

of Shinn Fu’s arguments. See Pers. Web Techs., LLC v. 

Apple, Inc., 848 F.3d 987, 994 (Fed. Cir. 2017) (concluding

that the Board provided an inadequate analysis to provide 

meaningful appellate review); In re Nuvasive, Inc., 842 

F.3d 1376, 1384–85 (Fed. Cir. 2016) (remanding for 

failure to articulate a motivation to combine).

To be clear, the Board’s error here does not stem from

its disregard for the teachings of any particular reference. 

As Tire Hanger correctly observes, the law does not 

require that the Board address every conceivable combination of prior art discussed throughout an IPR proceeding, no matter how duplicative the other references are. 

Appellee’s Br. 29–30. The Board does have an obligation, 

however, to address the arguments that the parties 

present to it—here, represented by the manner in which 

Shinn Fu argued the Curran-Conrad combination in 

opposition to Tire Hanger’s motion to amend. It simply 

did not meet its obligation here. Accordingly, we vacate 

the Board’s Final Written Decision and remand for it to 

address Shinn Fu’s arguments in the first instance. 

CONCLUSION

For the foregoing reasons, we vacate the Board’s obviousness determinations of claims 6–10 and its order 

granting Tire Hanger’s motion to amend and remand for 

further proceedings.

VACATED AND REMANDED

COSTS

The parties shall bear their own costs.