N OTE : This disposition is nonprecedential. 

# United States Court of Appeals **for the Federal Circuit**

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SHINN FU COMPANY OF AMERICA, INC., SHINN FU CORPORATION, Appellants

v.

THE TIRE HANGER CORP ORATION, Appellee

JOSEPH MATAL, PERFOR MING THE FUNCTIONS AND DUTIES OF THE UN DER SECRETARY OF COMMERCE FOR INTELLECTUAL PROPERTY AND DIRECTOR, U.S. P ATENT AND TRADEMARK OFFICE , Intervenor

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2016

- 22 50

______________________ Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2015

- 00208.

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Decided: July 3, 2017

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A LLEN J USTIN P OPLIN , Lathrop & Gage, LLP

, Ove rland Park, KS, argued for appellants. Also represented by T RAVIS W. M C C ALLON , Kansas City, MO.

J OHN D AVID VAN L OBEN S ELS , Fish & Tsang LLP, Redwood City, CA, argued for appellee. Also represented by J ENNIFER S HIH ; R OBERT F ISH , Irvine, CA.

N ATHAN K. K ELLE Y , Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA, argued for intervenor. Also represented by S COTT W EIDENFELLER , F RANCES L YNCH

.

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Before P ROST , Chief Judge, R EYNA and T ARANTO , Circuit Judges.

P ROST , 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 t o amend and held the substitute claims patentable

. Because the Board did not properly consider the arguments petitioner set forth in its oppos ition to the patent owner’s motion to amend, we vacate and remand.

I
Tire Hanger is the assignee of the ’897 paten t, which generally relates to apparatuses and methods for ha ndling and supporting vehicle wheels that have been temporarily removed from a vehicle positioned on a lift or hoist. ’897 paten t 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; an d (3) placingSHINN FU CO

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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 princ ipal object and advantage of the invention as providing an improved wheel support apparatus that will not require workers to bend over while t emporarily removing and replacing the wheels ); id . at col. 1 l. 60

– col. 2 l. 6 (requi ring that a worker remove the wheel , carr y it to the su pport 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. (collec tively, “Shinn Fu”) petitioned for inter partes r eview of all five claims of the ’897 patent, proposing var ious anticipatory and obviousness grounds of rejection. The U.S. Patent and Trademark Office (“USPTO”) inst ituted 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 A rt (“AAPA”), and U.S. D EPT

. OF L ABOR , B ACK D ISORDERS AND I NJURIES , OSHA T ECHNICAL M ANUAL 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, 1 31. 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 Boar d’s analysis regarding claims 1

– 5, thus waiving any arg uments in defense of the patentability of t ho se claims. SeeSHINN FU CO

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J.A. 14 (citing 37 C.F.R. § 42.23(a)). Rega rding the newly presented claims, independent cl aim 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 pr esented below (strik ethrough text indicates deletions and underlined text indicates additions) :

6. A method for a human to use a support arm to temporarily retain ing a vehicle wheel during r emoval and reinstallation of the wheel with respect to a vehicle, comprising, in the f ollowing 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 veh icle , 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 t he wheel over the support arm and r eleasing the wheel ; removing the wheel from the support arm su bstantially without the human bending over

, wherein the step of removing the wheel from the support arm consists essentially of gras ping the wheel and pulling the wheel clear of the support arm ; and
reinstalling the wheel onto the vehicle.

J.A. 145

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In broad terms, aside from specif ying the order in which to perform the recited steps, the se amendments added human involvement to steps t hat an apparatus or other structure could have otherwise performed. Tire Hanger accompanied these amendment s with arguments in favor of patentability for the newly presented claims. Specifically, it presented its arguments in view of the prior art upon whi ch the USPTO based its institution decision and recently discovered prior art references not of record

. J.A. 15 2– 63. Shinn Fu opposed and presented arguments of unpatentability with regard to the refe rences Tire Hanger identified in its motion and two add itional 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 jurisdic tion 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 decisio ns to ensure that they ar e not “ arbitrary, capricious, an abuse of discre tion,

. . . other wise not in accordance with law

. . . [or] unsup ported 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’ Op ening Br. 21 . Shinn Fu faults the Board for neither referencing this combin ation in its Final Written Decision nor providing a substa n-SHINN FU CO

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t ive analysis of the merits of its arguments. Id

. Specifica lly, Shinn Fu contends that the Board did not address its proposed combination that included the addition of Co nrad’s tire hanger to a simple lift described in the prior art. Id . at 25

– 26.
For its part, T ire H anger faults Shinn Fu for not a ddressing on appeal t he analysis the Board set forth in its Final Written D ecision 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

, partic ularly with regard to the combinations involving the Co nrad 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 combination s ” that the Board considered ). Tire Hanger describes the Curran and Conrad combi nation as one of many “ ancillary issues ” that Shinn Fu “ only ta ngentially mention[ed] ” in the first instance when opposing Tire Hanger’s motion to amend. Id . at 38 ; see also Inte rvenor’s Br. 21 ( stating that Shinn Fu mentions Curran as merely a “fungible a lternative” to other reference s primarily relied upon throughout the IPR proceeding )

. We conclude that the Board erred by ignor ing 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, t he Board’s failure here was arbitrary and capacious. See In re Lee , 277 F.3d 1338, 1344 (Fed. Cir. 2002) ; s ee 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 .

. . entir ely failed to consider an im portant aspect of the problem

. . . .”).SHINN FU CO

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Throughout its analysis, Shinn Fu described various prior art references and, more importantly here

, the particular manner in which to combine them. Specifically, the combina tions Shinn Fu proposed , including the co mbination of Conrad and Curran that Shinn Fu emphasizes on appeal to this court

, involve modifying the prior art references by adding features from particul ar references together. See, e.g. , J.A. 180 (describing why one of ord inary skill would have taken the tire hangers disclosed in the Conrad, Marion, and Wuethrich references and a ttach ed 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 s pecific motivation to combine by adding these features togeth er. 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 ord inary skill would be motivated to prevent bending over while holding a tire ) ; J.A. 184 (same)

. In contrast, the Board addressed the prior art r efe rences by removing elements from individual references to achieve the resulting combi nation and found no motiv ation 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 Wu ethrich 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 ma nner 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 (Komorit a) reference when combining those references

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not persuaded that a skilled artisan would have conte mplated gutting K omorita’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 pre mised.” ) (emphasis added); id

. at 24 (“ The ability ofKomorita’s tire holder to retain multiple vehicle parts and to self

- collapse flat with the floor would be lost if the cradle

like structure was replaced with a simple tire hanger

. ”) (emphasis added) . This analysis differs substantively from the additive approach Shinn Fu provided i n its opposition to Tire Hanger’s motion to amend. Yet the Board largely engaged in this subtractive a naly sis while ignoring Shinn Fu’s additive combination of the Curran, Conrad, Komorita/Heidle references. 3 S ee J.A. 20 (decla ring in its Final Written Decision that the f ocus 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 o f [ its ] argu ment. ” 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 surpri sing 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 amen dments added limitations that necessitate human involv ement throughout the process

. Indeed, the Board recognized this as the fun damental purpose of the amen ded claims in its Final Written Decision

. See J.A. 21 (“Re levant to our analysis, however, is the purpose of the claimed method, which entails the removal and replac ement of a wheel on an elevated vehicle without requiring the person handling the wheel to bend over .”) (emphasis added).SHINN FU CO

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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 patenta bility determination in light of Shinn Fu’s arguments

. S ee Pers. Web Techs., LLC v. Apple, Inc. , 848 F.3d 987, 9 94 (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 comb ination of prior art discussed throughout an IPR procee ding , 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 t he 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

. I t simply did not meet its obligation here. Accordingly , we vacate the Board’s Final Written Dec ision and remand for it to address Shinn Fu’s arguments in the first instance.

C ONCLUSION For the foregoing reasons, we vacate the Board’s obv iousness determinations of claims 6

– 10 and its order granting Tire Hanger’s motion to amend and remand for further proceedings.

VACATED AND REMANDED

C OSTS The parties shall bear their own costs.