NOTE: This disposition is nonprecedential.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, Over-
land 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 opposi-
tion 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 han-
dling 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 princi-
pal 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 (requir-
ing that a worker remove the wheel, carry it to the sup-
port 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 re-
view of all five claims of the ’897 patent, proposing vari-
ous anticipatory and obviousness grounds of rejection.
The U.S. Patent and Trademark Office (“USPTO”) insti-
tuted 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 argu-
ments 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 pre-
sented 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 re-
moval 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 vehi-
cle, 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 re-
leasing the wheel;
removing the wheel from the support arm sub-
stantially without the human bending over,
wherein the step of removing the wheel from
the support arm consists essentially of grasp-
ing 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 refer-
ences Tire Hanger identified in its motion and two addi-
tional 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 combina-
tion 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. Specifical-
ly, Shinn Fu contends that the Board did not address its
proposed combination that included the addition of Con-
rad’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 ad-
dressing 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, particu-
larly with regard to the combinations involving the Con-
rad 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 tan-
gentially mention[ed]” in the first instance when opposing
Tire Hanger’s motion to amend. Id. at 38; see also Inter-
venor’s Br. 21 (stating that Shinn Fu mentions Curran as
merely a “fungible alternative” to other references primar-
ily 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 . . . entire-
ly 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 com-
bination 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 ordi-
nary skill would have taken the tire hangers disclosed in
the Conrad, Marion, and Wuethrich references and at-
tached 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 ordi-
nary skill would be motivated to prevent bending over
while holding a tire); J.A. 184 (same).
In contrast, the Board addressed the prior art refer-
ences by removing elements from individual references to
achieve the resulting combination and found no motiva-
tion 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 Wue-
thrich 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 man-
ner 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 contem-
plated 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 prem-
ised.”) (emphasis added); id. at 24 (“The ability of Komo-
rita’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 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 (declar-
ing 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 surpris-
ing 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 amend-
ments added limitations that necessitate human involve-
ment throughout the process. Indeed, the Board
recognized this as the fundamental purpose of the amend-
ed claims in its Final Written Decision. See J.A. 21 (“Rel-
evant to our analysis, however, is the purpose of the
claimed method, which entails the removal and replace-
ment 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 combi-
nation of prior art discussed throughout an IPR proceed-
ing, 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 obvi-
ousness 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.