Hoyt Fleming

Patent Trials and Appeals Board

Jan 6, 2021

IPR2019-01566 (P.T.A.B. Jan. 6, 2021)

Trials@uspto.gov Paper 60
Tel: 571-272-7822 Entered: January 6, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

CIRRUS DESIGN CORPORATION,
Petitioner,
v.
HOYT AUGUSTUS FLEMING,
Patent Owner.

IPR2019-01566
Patent RE47,474 E

Before JOSIAH C. COCKS, SCOTT C. MOORE, and
STEPHEN E. BELISLE, Administrative Patent Judges.

COCKS, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining All Claims Unpatentable
Denying Patent Owner’s Motion to Amend
35 U.S.C. § 318(a)

IPR2019-01566
Patent RE47,474 E
2
I. INTRODUCTION
A. Background
Cirrus Design Corporation (“Petitioner” or “Cirrus”) filed a corrected
Petition (Paper 3, “Pet.”) to institute an inter partes review of claims 2, 3, 8,
10, 15, 132, and 135–139 (“the challenged claims”) of U.S. Patent
No. RE47,474 E (Ex. 1001, “the ’474 patent”).1 See 35 U.S.C. § 311. We
instituted trial to determine whether the challenged claims were unpatentable
as follows:
Claims Challenged 35 U.S.C. § References/Basis
2, 3, 8, 10, 15, 132, and 135–
139
1032 POH,3 James4
Paper 18 (“Dec. on Inst.”).
Hoyt Augustus Fleming (“Patent Owner” or “Fleming”) timely filed a
Patent Owner’s Response (Paper 35, “PO Resp.”) and a Contingent Motion
to Amend (Paper 34, “MTA”) seeking contingent entry of substitute
claims 140–148. Petitioner filed a Reply to Patent Owner’s Response (Paper
41, “Pet. Reply”)5 and an Opposition to Patent Owner’s MTA (Paper 42).

1 The ’474 patent is a reissue of U.S. Patent No. 8,100,365 B2.
2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103, effective March 16,
2013. Because the application from which the ’474 patent issued was filed
before this date, the pre-AIA version of § 103 applies.
3 Cirrus Design, Pilot’s Operation Handbook, SR22, Revision A7 dated
Oct. 10, 2003 (Ex. 1007, “POH”).
4 U.S. Patent No. US 6,460,810 B2 issued Oct. 8, 2002 (Ex. 1005, “James”).
5 In its Patent Owner’s Response, Patent Owner states that “[o]n October 9,
2019, Fleming filed a Disclaimer with the Patent Office that disclaims
claims 135 and 136. Ex. 2001. Thus, the remaining challenged claims are
IPR2019-01566
Patent RE47,474 E
3
We issued Preliminary Guidance on Patent Owner’s MTA, determining that
Patent Owner had not shown a reasonable likelihood that it had satisfied the
statutory and regulatory requirements associated with filing a motion to
amend. Paper 44. Subsequently, Patent Owner filed a Sur-Reply (Paper 45,
“PO Sur-Reply”) and a Revised Motion to Amend (Paper 47, “Revised
Motion to Amend” or “RMTA”). In the RMTA, Patent Owner requests the
following: “Fleming provides substitute claims 140–145 which replace
claims 2, 3, 8, 10, 15, and 132. Fleming provides substitute claims 146–148
contingent upon a finding of invalidity of claims 137–139 respectively.”
RMTA 1.6
Petitioner filed an Opposition to the RMTA (Paper 49, “Pet. Opp. to
RMTA”) to which Patent Owner replied (Paper 53, “PO Reply to Opp. to
RMTA”). Lastly, Petitioner filed a Sur-Reply to Patent Owner’s RMTA.
Paper 56 (“Pet. Sur-Reply to RMTA”).

claims 2, 3, 8, 10, 15, 132, and 137–139[.]” PO Resp. 4. We discern that
Exhibit 2001 is a “Disclaimer in Patent Under 37 CFR 1.321(a)” and
indicates that claims 135 and 136 have been disclaimed. Accordingly, those
claims are no longer regarded as part of the ’474 patent and are no longer
involved in this proceeding.
6 Patent Owner also expresses in its Revised Motion to Amend that it seeks
to “amend claims 2, 3, 8, 10, 15, and 132.” RMTA 1; see also PO Sur-
Reply 1 (“Fleming has decided to amend all claims except Claims 137–
139.”). During oral argument, Patent Owner further expressed that “claim 2
. . . is no longer at issue in this matter” and that “[t]he only remaining claims
are claims 137 through 139[.]” Tr. 32. The Revised Motion to Amend, thus,
is not contingent with respect to claims 2, 3, 8, 10, 15, and 132, and we
regard Patent Owner’s position with respect to those claims as a request for
their cancellation such that they are no longer part of the ’474 patent and no
longer part of this proceeding. As we set forth below, we grant that request.
IPR2019-01566
Patent RE47,474 E
4
Oral argument was conducted on November 5, 2020. A transcript of
the oral argument appears in the record. Paper 59 (“Tr.”).
B. Related Proceeding
The parties identify Cirrus Design Corporation v. Fleming, No. 0:19-
cv-01286 (D. Minn.) as a related matter under 37 C.F.R. § 42.8(b)(2).
Pet. 1; Paper 5, 2.
C. The ’474 Patent
The ’474 patent is titled “Intelligent Ballistic Parachute System that
Performs Pre-Activation and/or Post-Activation Actions.” Ex. 1001, code
(54). The ’474 patent characterizes its disclosure as relating generally
“to whole aircraft parachute systems.” Id. at 1:22. The Abstract of the ’474
patent is reproduced below:
An aircraft, the aircraft including a whole-aircraft ballistic
parachute that is coupled to the aircraft. The aircraft determines
if a pre-activation action needs to be performed before activation
of the whole-aircraft ballistic parachute. The aircraft also
receives a whole-aircraft ballistic parachute activation request.
The aircraft then issues a command to perform the pre-activation
action and then activates the deployment of the whole-aircraft
ballistic parachute. The aircraft then issues a command to
perform a post-activation action.
Id. at code (57).
IPR2019-01566
Patent RE47,474 E
5
Figure 14 of the ’474 patent is reproduced below:

Figure 14 above is characterized as a flowchart of a method
performed by “a system for increasing the safety of aircraft occupants.” Id.
at 2:14–15.
D. Illustrative Claim
Of the challenged claims that are still pending before us in this
proceeding, claims 137–139 are each independent. Claim 137 is illustrative
and is reproduced below.
137. An aircraft, the aircraft including:
a fuselage,
a whole-aircraft ballistic parachute, which includes a
rocket, that is coupled to the fuselage of the aircraft,
an activation interface,
IPR2019-01566
Patent RE47,474 E
6
a pitch sensor,
an autopilot,
one or more memories having machine-readable
instructions stored thereon, and
one or more processors, each of the one or more processors
configured to read and execute a portion of the machine-readable
instructions;
wherein at least one of the one or more processors is
coupled to the activation interface, at least one of the one or more
processors is coupled to the pitch sensor, at least one of the one
or more processors is coupled to the autopilot, at least one of the
one or more processors is coupled to the rocket, at least one of
the one or more processors is coupled to the one or more
memories;
the aircraft configured to perform a method comprising:
receiving, by the activation interface, a whole-aircraft
ballistic parachute deployment request from an occupant of the
aircraft; then based upon the receipt of the whole-aircraft ballistic
parachute deployment request by the activation interface, both
performing an action and also deploying the whole-aircraft
ballistic parachute;
wherein the machine readable-instructions include the
action comprising:
based at least upon the receipt of the whole-aircraft
ballistic parachute deployment request, command the autopilot
to increase aircraft pitch.
Id. at 54:20–51 (here and elsewhere in this Decision, language of the
claims is reproduced without italics).
II. ANALYSIS
A. Claim Construction
In an inter partes review, a claim “shall be construed using the same
claim construction standard that would be used to construe the claim in a
civil action under 35 U.S.C. § 282(b).” 37 C.F.R. § 42.100(b) (2019). Under
IPR2019-01566
Patent RE47,474 E
7
this standard, claim terms are given their ordinary and customary meaning as
would have been understood by a person of ordinary skill in the art at the 11
time of the invention and in the context of the entire patent disclosure. In re
Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). If the
specification “reveal[s] a special definition given to a claim term by the
patentee that differs from the meaning it would otherwise possess[,] . . . the
inventor’s lexicography governs.” Phillips v. AWH Corp., 415 F.3d 1303,
1316 (Fed. Cir. 2005) (en banc) (citing CCS Fitness, Inc. v. Brunswick
Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)).
Petitioner proposes construction of three claim phrases:
(1) “performing an action” (Pet. 7–8); (2) “one or more processors is
coupled to [aircraft device]” (id. at 8–9); and (3) “the attitude of the aircraft”
(id. at 9). Patent Owner disagrees with the constructions that Petitioner has
offered but submits that no claim terms need be construed as “Petitioner
does not actually rely upon any of its proposed claim constructions in the
instant Petition.” PO Resp. 10–11. Patent Owner also contends that the
terms of each of the challenged claims should simply be given their ordinary
and customary meaning. Id. at 11.
Generally, there is a “heavy presumption” that a claim term be
afforded its ordinary meaning as understood by one of ordinary skill in the
art. Johnson Worldwide Assocs., Inc. v. Zebco Corp., 175 F.3d 985, 989
(Fed. Cir. 1999). In reviewing the complete record currently before us, we
do not discern that such presumption has been overcome. There is no
evidence of record that any claim term should take on a special meaning that
departs from its ordinary meaning. Thus, we agree that all claims terms
should take on their ordinary and customary meaning. Furthermore, none of
IPR2019-01566
Patent RE47,474 E
8
the parties’ disputes appears to turn on the construction of the above-noted
terms, and we determine that no express constructions are necessary for
purposes of this Final Written Decision. See Nidec Motor Corp. v.
Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
(noting that “we need only construe terms ‘that are in controversy, and only
to the extent necessary to resolve the controversy’” (quoting Vivid Techs.,
Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).
B. Principles of Law
A claim is unpatentable under 35 U.S.C. § 103 if the differences
between the claimed subject matter 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 to which such subject
matter pertains.” 35 U.S.C. § 103(a). The question of obviousness under
35 U.S.C. § 103 is resolved on the basis of underlying factual
determinations, including: (1) the scope and content of the prior art; (2) any
differences between the claimed subject matter and the prior art; (3) the level
of skill in the art; and (4) when in evidence, objective evidence of
nonobviousness, i.e., secondary considerations. See Graham v. John Deere
Co., 383 U.S. 1, 17–18 (1966).
C. Level of Ordinary Skill in the Art
Petitioner offers the following in assessing the level of ordinary skill
in the art: “[a] person of ordinary skill in the art (“POSA”) would have had
(1) a degree in Aerospace Engineering or equivalent technical background
and (2) familiarity with parachute systems, related sensing systems, and
IPR2019-01566
Patent RE47,474 E
9
automated flight control.” Pet. 6 (citing Ex. 1003 ¶¶ 29–32).7 As a part of
its Patent Owner Response, Patent Owner does not challenge Petitioner’s
assessment of the level of ordinary skill in the art. As we noted in the
Decision on Institution, Patent Owner’s own expert, Dr. Joseph Dunagan,
offered a similar assessment of the level of ordinary skill in the art. Dec. on
Inst. 11 (referencing Ex. 2002 ¶¶ 27–30). We observed at that time that the
parties’ respective assessments appeared nearly equivalent of one another,
without material differences, and we adopted them both. Id. We make the
same determination here as a part of this Final Written Decision.8 We
further find that the cited prior art references reflect the appropriate level of
skill at the time of the claimed invention and that the level of appropriate
skill reflected in these references is consistent with the definitions of a
person of ordinary skill in the art proposed by the parties. See Okajima v.
Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).
D. Scope and Content of the Prior Art
1. Overview of POH
POH is titled “Pilot’s Operating Handbook and FAA[9] Approved
Airplane Flight Manual for the Cirrus Design SR22.” Ex. 1007, 1.10 POH

7 Exhibit 1003 is the Declaration testimony of Petitioner’s expert,
Mr. Hoffmann.
8 At oral argument, both parties expressed that the respective assessments of
the level of ordinary skill in the art are essentially “synonymous.” Tr. 13,
34.
9 Federal Aviation Administration.
10 The identified pagination for POH refers to the page numbering added by
Petitioner at the bottom right of each page.
IPR2019-01566
Patent RE47,474 E
10
describes itself as a handbook “to familiarize operators with the Cirrus
Design SR22 airplane.” Id. at 7. The following are portions of POH
describing operation of the Cirrus Airframe Parachute System (“CAPS”):

Id. at 279.

IPR2019-01566
Patent RE47,474 E
11

Id. at 72–73.
The portions above describe considerations that factor into CAPS
operation and deployment. POH also sets forth that once an occupant has
decided to employ the CAPS system, it is activated by pulling down on “the
activation T-handle.” Id. POH further states that “the chances of a
successful deployment increase with altitude.” Id. at 468. POH, thus,
expresses a recommendation in connection with CAPS deployment
pertaining to the desirability of higher altitudes of the aircraft to provide
“enhanced safety margins for parachute recoveries,” and a warning that
deployment at “low altitude . . . may result in severe injury or death to the
occupants.” Id. at 72–73.
2. Overview of James
James is titled “Semiautonomous Flight Director.” Ex. 1005, code
(54). James’s Abstract is reproduced below:
IPR2019-01566
Patent RE47,474 E
12
A device for programming industry standard autopilots by
unskilled pilots. The effect of the invention is such that when the
invention is employed in a flying body comprising an industry
standard autopilot with a digital flight control system, the
invention provides for the safe operation of any aircraft by an
unskilled pilot. The device additionally affords skilled pilots a
more rapid and simplified means of programming autopilots
while in flight thus reducing a skilled pilot’s cockpit workload
for all aircraft flight and directional steering, way points, and
aircraft flight functions reducing the possibility of pilot error so
as to effect safer flight operations of an aircraft by affording a
skilled pilot to direct aircraft steering and function while under
continuous autopilot control.
Id. at code (57).
James presents use of various switches as a part of its device including
a “sixth switch (77)” that is described as “being a non return to null, manual,
single poll, single throw, secured safety, type switch to provide an
‘emergency shutdown/deploy parachute/activate visual, audible and radio
frequency beacons’ command function logic signal (62) and interrupt signal
(67).” Id. at 10:14–19. James also explains the following with respect to the
operation of its disclosed “Semiautonomous Flight Director” (“SFD”):
If for some reason the SFD receives a flight status back
from the aircraft's autopilot that the aircraft has encountered a
negative flight maneuver or some other in-flight incident or
status not conducive to safe operation; either the pilot or
optionally a preprogrammed SFD action may automatically
initiate an emergency shut down procedure; in the case of a low
Reynolds class UAV applications; to accomplish such tasks as
shutting off all engines, terminating all flight functions,
deploying an emergency recovery parachute and activating any
locating beacons such as; visual light beacons, audio sound
beacons, and/or a radio frequency locator beacon, to aid ground
crews in locating and recovering the aircraft after the mishap.
Id. at 18:28–41.
IPR2019-01566
Patent RE47,474 E
13
James further sets forth the following:
It is the object of the invention to improve overall flight
safety by providing a means capable of significantly reducing a
skilled pilot’s work load and/or eliminating or supplanting the
piloting skills normally required to fly any manned or unmanned
helicopter or aircraft equipped with an autopilot employing a
digital flight control system.
Ex. 1005, 6:23–28.
E. Claims 2, 3, 8, 10, 15, 132, 135, and 136
As noted above, Patent Owner has disclaimed claims 135 and 136.
PO Resp. 4; Ex. 2001. Those claims, thus, are no longer regarded as
involved in this proceeding.
Also as noted above, as a part of its Revised Motion to Amend and as
stated in Patent Owner’s Sur-Reply, Patent Owner seeks to non-contingently
amend claims 2, 3, 8, 10, 15, and 132, and now presents those amended
claims as substitute claims 140–145. RMTA 1; PO Sur-Reply 1. As is
evident from the above-noted portions of the Revised Motion to Amend and
Patent Owner’s Sur-Reply, Patent Owner’s position with respect to claims 2,
3, 8, 10, 15, and 132 constitutes a request to cancel those claims. We grant
that request. Claim 2, 3, 8, 10, 15, and 132, thus, also are no longer regarded
as a part of the ’474 patent, and need not be further addressed as a part of
this proceeding.11

11 In our Decision on Institution, we determined that Petitioner had shown a
reasonable likelihood of success in showing that claims 2, 3, 8, 10, 15, and
132 were unpatentable. See Dec. on Inst. 21–26 (citing, e.g., Pet. 15–21, Ex.
1005, 18:28–41; Ex. 1003 ¶¶ 115–127; Paper 8, 49–60 (Patent Owner’s
arguments in its Preliminary Response as to objective evidence of non-
obviousness)). Even were we to regard claims 2, 3, 8, 10, 15, and 132 as
still pending in this proceeding, we conclude that the present record also
IPR2019-01566
Patent RE47,474 E
14
F. Claim 137
Claim 137 is independent and directed to an “aircraft.” The claim
generally requires particular features of an aircraft including, for instance, a
“fuselage,” “a whole-aircraft ballistic parachute” with a “rocket” that is
coupled to the fuselage, “an activation interface,” a “pitch sensor,” “an
autopilot,” “one or more memories having machine-readable instructions,”
and “one or more processors” that read and execute portions of the machine-
readable instructions. Ex. 1001, 54:20–31. Furthermore, many of the
above-noted features are expressed as being in certain coupling
configurations. For instance, claim 137 sets out the following:
wherein at least one of the one or more processors is
coupled to the activation interface, at least one of the one or more
processors is coupled to the roll sensor, at least one of the one or
more processors is coupled to the rocket, at least one of the one
or more processors is coupled to the rocket, at least one of the
one or more processors is coupled to the one or more memories[.]
Id. at 54:32–55:9.
The claims also recite that the aircraft is configured to perform a
method. The steps of that method are recited as:
receiving, by the activation interface, a whole-aircraft
ballistic parachute deployment request from an occupant of the
aircraft; then
based upon the receipt of the whole-aircraft ballistic
parachute deployment request by the activation interface, both
performing an action and also deploying the whole-aircraft
ballistic parachute;
wherein the machine readable-instructions include the
action comprising:

establishes by a preponderance of evidence that those claims are
unpatentable based on the combined teachings of POH and James.
IPR2019-01566
Patent RE47,474 E
15
based at least upon the receipt of the whole-aircraft
ballistic parachute deployment request, command the
autopilot to increase aircraft pitch.
Id. at 54:40–50.
1. Summary of Petitioner’s Contentions
Petitioner contends that claim 137 of the ’474 patent is unpatentable
and lays out in detail where it believes all the features of that claim reside in
the prior art. Pet. 61–66; see id. at 33–57, Appendix.12 Petitioner also offers
an explanation that a person of ordinary skill in the art would have had
adequate reasons to combine the teachings of POH and James. Id. at 16–21.
For instance, Petitioner cites to both POH and James as accounting for
the preamble recitation of an “aircraft.” Pet. 33 (citing Ex. 1003 ¶¶ 179–
180; Ex. 1007, 18–19; Ex. 1005, 8:22–30). Petitioner also points to both
those reference as disclosing a “fuselage.” Id. (citing Ex. 1003 ¶ 81;
Ex. 1007, 184; Ex. 1005, 8:22–30).
With respect to the requirement of a “whole-aircraft ballistic
parachute” which includes a “rocket” that is coupled to the fuselage,
Petitioner argues that the teachings of POH and James taken together
account for that requirement. Id. at 34. In particular, Petitioner notes that
POH discloses its CAPS as comprising a whole-aircraft ballistic parachute
with a rocket that is coupled to the fuselage of the aircraft. Id. at 34 (citing

12 Pages 33–57 of the Petition pertain to claim 132 of the ’474 patent. As a
part of its assessment of claim 137, Petitioner contends that “[a]ll of the
limitations of [c]laim 137 are recited in [c]laim 132” with the exception of
certain features specific to claim 137. Pet. 61. Petitioner also makes
reference to the claim Appendix of the Petition identifying the common
features between claim 132 and claim 137.
IPR2019-01566
Patent RE47,474 E
16
Ex. 1007, 39, 73–75, 279–282). Petitioner also points to James as disclosing
a switch for deployment of a whole-aircraft ballistic parachute coupled to a
fuselage. Id. (citing Ex. 1005, 10:14–19, 18:28–41, 18:53–61; Ex. 1003 ¶¶
183–185). Petitioner reasons that: “[i]t would have been obvious for a
POSA to employ the POH’s teachings of rocket based parachute deployment
as part of the processor-based ‘deploy parachute’ function of James.” Id.
(citing Ex. 1003 ¶ 186).
Petitioner further directs attention to disclosure in each of POH and
James accounting for an activation interface (e.g., POH’s CAPS Activation
T-handle), an autopilot, a pitch sensor, the required one or more processors
(James’s autopilot programmer processor (APR) circuit 71), and machine-
readable instructions. Id. at 35, 37–39, 62 (citing various portions of
Exhibits 1005 and 1007; Ex. 1003 ¶¶ 187–188, 195–205, 271–273).
Petitioner additionally assesses what one of ordinary skill in the art would
have understood in connection with the coupling of James’s APR as a part of
its SFD with either of James’s or POH’s autopilot, an activation interface, a
pitch sensor, a rocket for deploying a whole-aircraft parachute, and
memories of the autopilot’s computer system. Id. at 39–41, 45–46, 48–50,
63–64 (citing, e.g., citing various portions of Exhibits 1005 and 1007; Ex.
1003 ¶¶ 106–112, 122, 201, 202, 206, 207, 209, 218–220, 227–229, 274–
276).
Petitioner additionally accounts for the requirement in claim 137 of an
aircraft’s configuration to perform a method that includes receiving, by the
activation interface, a whole-aircraft parachute deployment request from an
occupant and based on receipt of that request performing an action and
deploying the parachute. In that regard, Petitioner points to disclosure in
IPR2019-01566
Patent RE47,474 E
17
POH pertaining to its CAPS Activation T-Handle and James’s “deploy
parachute” switch. Pet. 50–51 (citing Ex. 1007, 279–281; Ex. 1005, 7:25–
55, 10:14–19, 12:49–60, 18:27–41; Ex. 1003 ¶¶ 230–233).
Claim 137 further specifies that the action that is taken along with
parachute deployment is to “command the autopilot to increase aircraft
pitch.” Petitioner is of the view that disclosures in POH and James that
convey machine-readable instructions for increasing an aircraft’s altitude
and commanding a climb based on a parachute deployment request (id. at 65
(referencing pages 24–26 and 53–55 of the Petition) would have been
understood by a skilled artisan to teach increasing the aircraft’s pitch (id. at
65 (citing Ex. 1003 ¶ 277)). Petitioner additionally expresses that “James
further discloses that activation of one of its switches (such as its parachute-
deployment switch) results in the SFD transferring autopilot flight
programming signals to the autopilot, thus commanding the autopilot to
execute the desired functions(s).” Id. (citing Ex. 1003 ¶¶ 106–110, 277; Ex.
1005, 10:14–19, 10:47–12:28, 18:28–41; 12:49–60, Fig. 2).
As a part of its position that there is motivation to combine the
teachings of POH and James, Petitioner notes James’s statement that its
disclosure applies to “any manned or unmanned helicopter or aircraft
equipped with an autopilot employing a digital flight control system” and
contends that the “SR22 aircraft described in the POH is an aircraft equipped
with a digital autopilot.” Pet. 16 (citing Ex. 1005, 6:23–28; Ex. 1007, 263–
273). Petitioner explains that “[t]he SR22 aircraft discussed in the POH is
therefore within the intended application for the SFD taught by James, and
the combination of the POH and James represents only a routine
IPR2019-01566
Patent RE47,474 E
18
implementation of James within its intended application.” Id. (citing Ex.
1003 ¶ 115).
Petitioner also reasons that “a [person of ordinary skill in the art]
would have been motivated to make this combination to ensure that the
desired pre-deployment and post-deployment actions would be automatically
performed, even if the operator was unskilled or otherwise unable to perform
them.” Id. at 20 (citing Ex. 1003 ¶¶ 124–125); see also id. at 67 (“a [person
of ordinary skill in the art] would have further been motivated to incorporate
James’ process-based parachute deployment switch into the POH’s CAPS
system, to ensure that this action would be automatically performed even if
the operator was unskilled, preoccupied, or otherwise unable to perform it.”)
Petitioner further contends that the teachings of POH and James taken
together constitutes a “combination of familiar elements using known
methods [that] would yield predictable results,” and that a skilled artisan
“would have a reasonable expectation of success in making such a
combination.” Id. at 20–21 (citing Ex. 1003 ¶¶ 124–127).
2. Summary of Patent Owner’s Contentions
Patent Owner disputes Petitioner’s position of the unpatentability of
claim 137 based on POH and James. Patent Owner, however, does not
dispute that many features of claim 137, such as a fuselage, an autopilot, a
pitch sensor, an activation interface, and processors, were known in the art.
Rather, Patent Owner focuses its challenge on the requirement that an
autopilot perform flight maneuvers and deploy an aircraft’s parachute based
upon an aircraft’s receipt of a parachute deployment request. Patent Owner
first contends that neither POH nor James individually discloses the above-
IPR2019-01566
Patent RE47,474 E
19
noted claim feature. PO Resp. 26–27 (citing Ex. 2019 ¶¶ 46, 55)13; PO Sur-
Reply 8–13. Patent Owner further characterizes Petitioner’s proposed
ground as one predicated on use of a “gap-filler” to supply a missing
limitation, and asserts that Petitioner has resorted to the impermissible use of
“common sense” and “hindsight” to arrive at the subject matter of the
challenged claims, including claim 137. See, e.g., PO Resp. 29–49; PO Sur-
Reply 15–18. In Patent Owner’s view, the missing limitation is that of
“performing a flight maneuver and deploying a parachute based upon the
aircraft’s receipt of a parachute deployment request.” Id. at 31–32. More
specifically, Patent Owner finds fault with Petitioner’s proposal that based
on the teachings of POH and James, a person of ordinary skill in the art
would have reprogrammed an autopilot in a manner to arrive at the above-
noted limitation as, according to Patent Owner, such reprogramming
requires “significant expertise,” can be “particularly challenging,” and is of
“utmost complexity.” PO Resp. 32–33 (citing Ex. 2019 ¶¶ 56–58).
Moreover, Patent Owner takes the position that Petitioner’s ground
requires “customizing” aspects of James’s parachute deployment switch in a
manner that does not, itself, emerge from the prior art, and would not have
been recognized by one of ordinary skill in the art. PO Resp. 34–35; see
generally PO Resp. 29–49; PO Sur-Reply 15–18. Patent Owner also
dismisses Petitioner’s assessment that its proposed combination of POH and
James is one predicated on presenting a “safe and logical” approach to
parachute deployment. See, e.g., PO Resp. 46–47. Rather, Patent Owner
contends that the modifications Petitioner proposes to the prior art parachute

13 Exhibit 2019 is the Declaration testimony of Patent Owner’s expert, Dr.
Chris Gregory Bartone.
IPR2019-01566
Patent RE47,474 E
20
deployment mechanisms are not safe and logical because it allegedly
“prohibits an aircraft occupant from following POH’s parachute deployment
instructions regarding (1) airspeed, (2) altitude, and (3) attitude.” See id.
Patent Owner additionally asserts that the prior art as a whole, and
specifically POH, teaches away from the concept of “using an autopilot
based upon the receipt of a parachute deployment request.” PO Sur-Reply
13–15. Patent Owner generally premises that teaching away assertion on the
theory that POH provides “clear warnings that autopilot ‘must not’ be used
in most of the circumstances in which a whole aircraft parachute is likely to
be needed.” Id. at 14.
Lastly, Patent Owner contends that secondary considerations of non-
obviousness demonstrate that the challenged claims are not unpatentable.
To that end, Patent Owner argues it was only after he disclosed content of
patent application No. 12/368, 911 (“the ’911 application”) and its resulting
U.S. Patent No. 8,100,365 (“the ’365 patent’) (which reissued as the ’474
patent) to Petitioner that it then sought to implement content of the ’474
patent into Petitioner’s own aircraft designs and to pursue its own patent
application on the subject matter. PO Resp. 50–59; PO Sur-Reply 22–24.
Thus, in Patent Owner’s view, Petitioner copied the content of Patent
Owner’s ’474 patent, and that such copying demonstrates non-obviousness
of that patent.
3. Discussion—Claim 137
Claim 137, like all of the challenged claims, generally describes the
use of an autopilot as a part of an aircraft to take certain actions, likely in an
emergency situation, upon the request of an occupant to deploy a whole-
aircraft parachute. Upon the receipt of such a request, the autopilot directs
IPR2019-01566
Patent RE47,474 E
21
certain flight maneuvering operations, such as commanding an increase in
the aircraft’s pitch, and also deploys the parachute. There is no dispute on
the record that it was well known in the art that an autopilot may function to
perform flight maneuvers and also to deploy a parachute. On those matters,
James is explicit in its teachings. For instance, James clearly provides the
following:
If for some reason the SFD receives a flight status back
from the aircraft’s autopilot that the aircraft has encountered a
negative flight maneuver or some other in-flight incident or
status not conducive to safe operation; either the pilot or
optionally a preprogrammed SFD action may automatically
initiate an emergency shut down procedure; in the case of a low
Reynolds class UAV applications; to accomplish such tasks as
shutting off all engines, terminating all flight functions,
deploying an emergency recovery parachute and activating any
locating beacons such as; visual light beacons, audio sound
beacons, and/or a radio frequency locator beacon, to aid ground
crews in locating and recovering the aircraft after the mishap.
Ex. 1005, 18:28–41.
James also discloses that its sixth switch 77 constitutes a switch that is
operable “to provide an ‘emergency shutdown/deploy parachute/activate
visual, audible and radio frequency beacons’ command function logic signal
(62) and interrupt signal (67).” Id. at 10:14–19. Thus, James provides that
either in response to an action by a pilot, e.g., a request to deploy the
parachute, or via a preprogrammed action, an aircraft may automatically
initiate shut down procedures, including deploying an emergency recovery
parachute. Furthermore, James also clearly expresses that an autopilot may
perform particular flight maneuvers on an aircraft, including to “slow the
aircraft to landing speed and maintain a slow steady landing descent.” Id. at
17:24–25. We also take note of, and credit, the testimony of Mr. Hoffmann
IPR2019-01566
Patent RE47,474 E
22
as to those teachings of James. For instance, Mr. Hoffmann testifies the
following: “James discloses that the autopilot, which when the SFD is in
operation directly controls the aircraft’s flight operations at all times, may
perform fully automated takeoff and landing procedures, and may enter into
preprogrammed flight missions in which the aircraft will assume
preprogrammed headings and altitudes.” Ex. 1003 ¶ 273 (citing Ex. 1005,
7:25–55, 8:21–35, 13:6–12, 14:51–64, 15:27–40, 17:16–52). We
additionally are cognizant of James’s unambiguous disclosure that the
purpose of an autopilot is to reduce a skilled pilot’s work load by eliminating
or supplanting the piloting skills normally required to fly an aircraft.
Ex. 1005, 6:23–28. Indeed, the very nature of an “autopilot” is that it is a
component that automatically performs piloting actions in lieu of the
performance of those actions by a human pilot.
We further observe that there is no dispute that autopilot systems that
are programmable are known in the art. Patent Owner’s own expert,
Dr. Bartone, acknowledges that POH describes a programmable autopilot as
a part of an SR22 aircraft. See, e.g., Ex. 2019 ¶ 46 (“POH describes the
SR22 as having a programmable autopilot (Ex. 1007 at 266–269)”). As to
the requirement that an autopilot may be programmed to control an aircraft’s
pitch, we observe that Mr. Hoffmann testifies the following as to disclosure
in POH in that respect:
The POH further discloses that the autopilot includes, inter
alia, a pitch computer. [Ex. 1007] at 266 (“A separate pitch
computer provides the ALT hold function. The S-Tec System
Thirty Autopilot features: … • Altitude Hold.”); id. at 380 (“The
pitch computer receives altitude data from the altitude encoder
pressure transducer plumbed into the static system, an
accelerometer, and glideslope information from the HSI and #1
NAV radio. Pitch axis command for altitude hold, vertical speed
IPR2019-01566
Patent RE47,474 E
23
hold, and glideslope tracking is accomplished by pitch computer
commands to the autopilot pitch servo.”); id. at 383 (“The
altitude selector also provides a vertical speed signal to the
autopilot pitch computer that is proportional to the amplitude and
direction of the selected or computed vertical speed…. When
VS is engaged, the autopilot compares the selected vertical speed
signal with the existing vertical speed derived from the
autopilot’s altitude transducer and maneuvers the airplane to
attain the selected vertical speed.”). A [person of ordinary skill
in the art] would have understood that the pitch computer would
include a pitch sensor to determine current pitch in order to
perform flight operations based on that reading, including
Altitude Hold.
Ex. 1003 ¶ 272.
We credit Mr. Hoffmann’s testimony that a skilled artisan would have
well understood that a programmable autopilot, such as that of POH, may
include a pitch computer and be configured to control an aircraft’s pitch.
We do not discern that there is any dispute in connection with that
testimony.
A well-recognized tenet of the obviousness inquiry is that it is not
necessary to find precise teachings in the prior art directed to the specific
subject matter claimed because inferences and creative steps that a person of
ordinary skill in the art would employ can be taken into account. KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Indeed, as observed by the
Court of Appeals for the Federal Circuit (“Federal Circuit”), “KSR expanded
the sources of information for a properly flexible obviousness inquiry to
include market forces; design incentives; the ‘interrelated teachings of
multiple patents’; ‘any need or problem known in the field of endeavor at the
time of invention and addressed by the patent’; and the background
knowledge, creativity, and common sense of the person of ordinary skill.”
IPR2019-01566
Patent RE47,474 E
24
Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir.
2009) (emphasis omitted).
Here, we discern that Patent Owner’s argument that neither POH nor
James individually discloses the use of an autopilot to perform flight
maneuvers based upon an aircraft’s receipt of a parachute deployment
request, even if true, does not end the obviousness evaluation. That limited
consideration of what references individually disclose does not adhere to the
expansive consideration of obviousness contemplated by the law or properly
consider what the combined teachings of the references would have
suggested to those of ordinary skill in the art. See In re Young, 927 F.2d
588, 591 (Fed. Cir. 1991).
We are mindful of Patent Owner’s arguments challenging Petitioner’s
proposed combination of POH and James, e.g., that the combination is
unsafe, that the references teach away from the proposed combination, and
that the combination is a product of hindsight. Those arguments are largely
grounded in the premise that a person of ordinary skill in the art would have
viewed the combination of POH and James proposed by Petitioner as
presenting an aircraft that lacks adequate safety features, and thus would be
undesirable. One such safety feature that Patent Owner characterizes is
described in an embodiment of the ’474 patent is an “override interface,”
that Patent Owner asserts could be “a second pull” of a parachute pull handle
or electronic push button. See, e.g., PO Resp. 9 (citing Ex 1001, 8:36–39,
8:59–62). As we observed in our Decision on Institution, however, an
“override interface” is not recited in the challenged claims, nor do we
discern that any such feature is intrinsically required by the claims. See Dec.
on Inst. 21–22. Moreover, as we also noted, “in assessing obviousness, there
IPR2019-01566
Patent RE47,474 E
25
is no requirement that a particular combination of prior art teachings must
produce something that is ‘preferred, or the most desirable[.]’” Id. at 22
(quoting In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004)). Instead, the
inquiry is what the combined teachings would have suggested to a skilled
artisan, even if that suggestion has some recognized undesirable
characteristics.
We also are cognizant of Patent Owner’s contentions that
programming an autopilot to perform the actions set forth in the claim
requires “significant expertise,” can be “particularly challenging,” and is of
“utmost complexity.” PO Resp. 32–33 (citing Dr. Bartone’s Declaration,
Ex. 2019 ¶¶ 56–58.) Patent Owner also contends that use of an autopilot in
emergency situations or scenarios would require a programmer “with
intimate knowledge of the POH’s SR22 aircraft response to autopilot
commands in such scenarios.” Id. (citing Ex. 2019 ¶ 58). Even if those
contentions are true, notably absent from the record, including Dr. Bartone’s
testimony, is any credible assertion that such programming is beyond the
skill of a person of ordinary skill in the art, or that a skilled artisan would not
have had intimate knowledge of POH’s SR22 autopilot commands. We also
do not discern that the ’474 patent itself provides discussion of any
particular complexities associated with programming an autopilot that would
suggest challenges in that respect beyond the skill of one of ordinary skill in
the art. Indeed, at oral argument when questioned by the panel as to where
the ’474 patent describes the complex programming of the autopilot to
achieve the claimed invention, Patent Owner’s counsel expressed such
sentiments as “there’s not a lot of programming in the patent I’ll grant you
that.” Tr. 47:10–11; see id. at 48–50. That the ’474 patent omits substantive
IPR2019-01566
Patent RE47,474 E
26
description of autopilot programming as unnecessary does not favor the
implication that the programming is of such distinct complexity to be outside
the skill of an ordinary skilled artisan.
Here, Petitioner points to POH’s teachings of an aircraft equipped
with a digital programmable autopilot, deploying a parachute at the request
of an aircraft occupant, and the desirability of, for purposes of safety,
initiating various flight maneuvers including, for instance, increasing the
altitude and changing the attitude of the aircraft. See, e.g., Pet. 16–21.
Petitioner contends that a person of ordinary skill in the art would have
understood that those maneuvers also include increasing the aircraft’s pitch.
Id. at 65 (citing Ex. 1003 ¶ 277). We find that contention persuasive based
on record evidence, including the noted testimony of Mr. Hoffmann to that
effect.
Petitioner additionally relies on James’s teachings that emergency
procedures may be commenced by either a pilot or an autopilot and includes
“deploying an emergency recovery parachute” along with other actions such
as “shutting off all engines, terminating all flight functions,” and activating
visual and audio beacons. Id.; Ex. 1005, 18:28–41. With further recourse to
the testimony of Mr. Hoffmann (see, e.g., Ex. 1003 ¶¶ 115–127), Petitioner
contends that “when implemented on an SR22, James’ parachute
deployment switch would be tailored to be executed in accordance with the
SR22’s flight laws and instructions for parachute deployment, including
commands to pitch up, increase altitude, reduce engine power, and level
wings.” Pet. 19 (citing Ex. 1003 ¶¶ 117–122). Petitioner also submits that
“[i]t would have been obvious to a [person of ordinary skill in the art] to
combine the POH’s aircraft components, and instructions regarding manual
IPR2019-01566
Patent RE47,474 E
27
actions to be taken based on a decision to deploy a whole-aircraft ballistic
parachute, with James’ processor-based system for deploying a whole-
aircraft parachute and automatically performing such actions.” Id. at 19–20
(citing Ex. 1003 ¶ 123). We find persuasive Petitioner’s assessment of what
a person of ordinary skill in the art would have taken from the combined
teachings of POH and James.
Thus, for the reasons discussed above, we find persuasive, and
adequately supported, Petitioner’s assessment of what one of ordinary skill
in the art would have taken from the combined teachings of the prior art in
conjunction with an action or request to deploy an aircraft’s parachute.
Specifically, we conclude that a skilled artisan would have recognized that it
is desirable to also maneuver the aircraft to, for instance, adjust altitude,
attitude and pitch. Further, it follows readily from the evidence of record
that a skilled artisan would have appreciated that a programmable autopilot
may be configured to perform actions that are known to be performed by an
autopilot, such as increasing an aircraft’s pitch and deploying a parachute
upon a request for such parachute deployment. Accordingly, we conclude
that the requirements in claim 137 that an autopilot may facilitate or engage
the actions of flight maneuvering and parachute deployment “based at least
upon the receipt of the whole-aircraft ballistic parachute deployment
request” would have been appreciated by a skilled artisan.
4. Objective Evidence of Non-Obviousness
Objective indicia of non-obviousness is a factor to be considered in
evaluating obviousness. See Graham, 383 U.S. at 17–18. As noted above,
Patent Owner argues that Petitioner copied the content of Patent Owner’s
’474 patent. Patent Owner bases that argument on the theories that after
IPR2019-01566
Patent RE47,474 E
28
Patent Owner showed its original ’911 application and ’365 patent to
Petitioner, Petitioner proceeded to (1) incorporate disclosed material into its
own aircraft designs, and (2) filed its own patent application that Patent
Owner believes is the same invention as the ’474 patent. PO Resp. 50–59;
PO Sur-Reply 22–24. In support of its assertion of copying, Patent Owner
relies on the Declaration testimony of Mr. Fleming (Ex. 2020). Specifically,
Mr. Fleming testifies that on several occasions beginning in 2009 he sent
letters, and also provided or presented copies of the ’911 application and the
’365 patent, to certain executives of Petitioner. See, e.g., Ex. 2020 ¶¶ 2–9
(citing Exs. 2021–2023). Mr. Fleming further testifies that, in his view,
Petitioner’s aircraft product “Cirrus Vision Jet” (or SF50) infringes at least
claims 137–139 of the ’474 patent. Id. ¶ 12.
Petitioner contends that Patent Owner “provides no direct evidence of
copying” and expresses that “Fleming’s own subjective belief in his
infringement allegations is not evidence.” Pet. Reply 23. Petitioner also
disputes that the parachute system of its SF50 jet is based on the ’474 patent.
Pet. Reply 24–25. In that regard, Petitioner contends that the SF50
parachute system includes a “hardware-based ‘control box’ to govern its
parachute deployment process” that was “independently developed without
reference to the ‘474 patent.” Id. Petitioner also disputes that it pursued a
patent on the “same invention” of the ’474 patent. Id. at 25. To that end,
Petitioner contends that its patent application No. 15/431,689 (“the ’689
IPR2019-01566
Patent RE47,474 E
29
application”) was filed with claims all including a “control box component”
and are distinguished from claims of the ’474 patent. Id.14
As determined by the Federal Circuit, “copying by a competitor may
be a relevant consideration in the secondary factor analysis.” Iron Grip
Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1325 (Fed. Cir. 2004). But,
the Court also observed:
Not every competing product that arguably falls within the scope
of a patent is evidence of copying. Otherwise every infringement
suit would automatically confirm the nonobviousness of the
patent. Rather, copying requires the replication of a specific
product. This may be demonstrated either through internal
documents, direct evidence such as disassembling a patented
prototype, photographing its features, and using the photograph
as a blueprint to build a virtually identical replica, or access to,
and substantial similarity to, the patented product (as opposed to
the patent).
Id. (internal citations omitted).
Here, Patent Owner does not offer credible, direct evidence that
copying occurred. Instead, the bulk of the evidence offered by Patent Owner
simply constitutes the testimony of the inventor of the ’474 patent, Mr.
Fleming, that he showed his patent application to Petitioner and that, in his
view, Petitioner then incorporated content of the ’474 patent into a
commercial aircraft product and the ’689 patent application. As we did in
the Decision on Institution (Dec. on Inst. 24–25), we again note that
Petitioner contends in its “Answer to Counterclaim for Patent Infringement”
(Ex. 1029) that it “lacks knowledge with regard to the truth or falsity of”

14 We discern that the ’689 application issued as U.S. Patent No. 10,118,707
B2 with twenty-five claims, all of which require the “control box
component.” See Ex. 3002, 27:32–30:46.
IPR2019-01566
Patent RE47,474 E
30
whether it received either the ’911 application of the ’365 patent from Patent
Owner. Ex. 1029, 4–7.
Patent Owner’s position as to copying activity by Petitioner is little
more than speculation that copying occurred. For instance, Patent Owner, in
part, asks that we infer that Patent Owner presented the ’911 application to
an executive of Petitioner and that the executive stated he would present the
application to Petitioner’s engineering department. Based on that inference,
Patent Owner contends that it is therefore “more likely than not” that the
content of the ’911 application was copied by that engineering department.
See PO Sur-Reply 23. The record, however, provides little concrete basis on
which to readily make such an inference. Rather, Patent Owner simply
argues that such copying should be inferred because the record does not
contain a declaration from the executive that he did not show the ’911
application to the engineering department. We conclude that such inference
is not adequately supported by the evidentiary record before us.
We also decline to take, on face value, Patent Owner’s position, based
largely on Mr. Fleming’s own self-interested testimony, that a product
corresponding to claims of Petitioner’s ’689 application infringes claims of
the ’474 patent. See PO Resp. 55–59. We do not discern that the record
includes any meaningful infringement analysis in connection with a product
of Petitioner. Additionally, although Patent Owner is of the view that claims
of the ’689 application are “the same” as those of the ’474 patent, Patent
Owner advances that view based on little more than Mr. Fleming’s
testimony that he believes they are the same. That is insufficient. Further,
as Petitioner notes, difficulties with Patent Owner’s position emerge in
connection with the “control box component” feature that is a fixture of
IPR2019-01566
Patent RE47,474 E
31
claims of the ’689 application but seemingly absent from claims of the
’474 patent.
Accordingly, we conclude that the record before us does not present
an adequately evidenced position of copying by Petitioner.
5. Conclusion—Claim 137
We have carefully considered the record before us, including the
briefings from the parties, and the evidence underlying those briefings. On
balance, having considered Petitioner’s strong evidence of unpatentability
and Patent Owner’s limited evidence of copying, we conclude that Petitioner
has shown by a preponderance of the evidence that claim 137 is
unpatentable over the prior art.
G. Claims 138 and 139
Like claim 137, claims 138 and 139 are each drawn to an “aircraft”
that includes most of the same features as claim 137. Where claims 138 and
139 differ lies in the type of sensor or sensors required and the action that
the machine-readable instructions command the autopilot to accomplish in
response to the request for parachute deployment. In claim 138, instead of a
pitch sensor the recited sensor is a “roll sensor” and the commanded action
is a reduction in aircraft roll. Ex. 1001, 54:52–55:16. Claim 139 requires
each of a “pitch sensor” and a “roll sensor” and the commanded action is a
change in the attitude of the aircraft. Id. at 55:17–56:25.
Petitioner accounts in the Petition for all the features of claims 138
and 139 in a similar manner as it did for claim 137. Pet. 66–68; see also id.
at 16–21 (“Motivation to Combine the POH and James”). In particular,
Petitioner contends that the prior art also accounts for a roll sensor and for
IPR2019-01566
Patent RE47,474 E
32
commanded action of an autopilot to reduce aircraft roll and change aircraft
attitude based on a whole-aircraft ballistic parachute deployment request.
Patent Owner does not offer any arguments to be applied to claims 138 and
139 apart from those discussed above with respect to claim 137.
For essentially the same reasons discussed above in connection with
claim 137, we conclude that Petitioner has shown by a preponderance of
evidence that claims 138 and 139 are not patentable over the prior art.
H. Motion to Amend
Patent Owner submits a proposed RMTA that seeks to non-
contingently substitute claims 140–145 for claims 2, 3, 8, 10, 15, and 132,
and to contingently substitute claims 146–148 for claims 137–139 upon a
finding of the unpatentability of claims 137–139.15 As discussed above, we
conclude that claims 137–139 are not patentable over the prior art of record.
Accordingly, the contingency has manifested with respect to those claims.
We, therefore, evaluate Patent Owner’s RMTA and its request for entry of
substitute proposed claims 140–148 into the ’474 patent.
1. Applicable Law
In an inter partes review, amended claims are not added to a patent as
of right, but rather must be proposed as a part of a motion to amend.
35 U.S.C. § 316(d). The Board must assess the patentability of proposed
substitute claims “without placing the burden of persuasion on the patent
owner.” Aqua Prods., Inc. v. Matal, 872 F.3d 1290, 1328 (Fed. Cir. 2017)

15 A listing of proposed substitute claims appears in Appendix A of the
RMTA.
IPR2019-01566
Patent RE47,474 E
33
(en banc); see Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-001129, Paper 15
at 3–4 (PTAB Feb. 25, 2019) (precedential). Subsequent to the issuance of
Aqua Products, the Federal Circuit issued a decision in Bosch Automotive
Service Solutions, LLC v. Matal, 878 F.3d 1027 (Fed. Cir. 2017) (“Bosch”),
as well as a follow-up Order amending that decision on rehearing. See
Bosch Auto. Serv. Sols., LLC v. Iancu, No. 2015-1928 (Fed. Cir. Mar. 15,
2018) (Order on Petition for Panel Rehearing).
In accordance with Aqua Products, Bosch, and Lectrosonics, a patent
owner does not bear the burden of persuasion to demonstrate the
patentability of the substitute claims presented in the motion to amend.
Rather, ordinarily, “the petitioner bears the burden of proving that the
proposed amended claims are unpatentable by a preponderance of the
evidence.” Bosch, 878 F.3d at 1040 (as amended on rehearing); see
Lectrosonics, Paper 15 at 3–4. In determining whether a petitioner has
proven unpatentability of the substitute claims, the Board focuses on
“arguments and theories raised by the petitioner in its petition or opposition
to the motion to amend.” Nike, Inc. v. Adidas AG, 955 F.3d 45, 51 (Fed. Cir.
2020).
Notwithstanding the foregoing, Patent Owner’s proposed substitute
claims must meet the statutory requirements of 35 U.S.C. § 316(d) and the
procedural requirements of 37 C.F.R. § 42.121. Lectrosonics, Paper 15 at 4–
8. Accordingly, Patent Owner must demonstrate: (1) the amendment
proposes a reasonable number of substitute claims; (2) the proposed claims
are supported in the original disclosure (and any earlier filed disclosure for
which the benefit of filing date is sought); (3) the amendment responds to a
ground of unpatentability involved in the trial; and (4) the amendment does
IPR2019-01566
Patent RE47,474 E
34
not seek to enlarge the scope of the claims of the patent or introduce new
subject matter. See 35 U.S.C. § 316(d); 37 C.F.R. § 42.121.

2. Statutory and Regulatory Requirements
For the reasons discussed below, we conclude that Patent Owner has
not satisfied the statutory and regulatory requirements associated with filing
a motion to amend. See Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129,
Paper 15, 4 (PTAB Feb. 25, 2019) (precedential); 35 U.S.C. § 316(d); 37
C.F.R. § 42.121.
a) Reasonable Number of Substitute Claims
Patent Owner proposes no more than 1 substitute claim for each
challenged claim. See RMTA 1. Petitioner does not contend that Patent
Owner offers an unreasonable number of substitute claims. We conclude
that Patent Owner proposes a reasonable number of substitute claims. See
35 U.S.C. § 316(d)(1)(B).
b) Respond to a Ground of Unpatentability
A motion to amend must respond to a ground of unpatentability
involved in the trial. 37 C.F.R. § 42.121(a)(2)(i). A revised motion to
amend “must provide amendments, arguments, and/or evidence in a manner
that is responsive to issues raised in the preliminary guidance (if requested)
or the petitioner’s opposition to the” motion to amend and “may not include
amendments, arguments, and/or evidence that are unrelated to issues raised
in the preliminary guidance or the petitioner’s opposition to the” motion to
amend. 84 Fed. Reg. 9497, 9501; Ex. 2037, 5. Patent Owner contends that
IPR2019-01566
Patent RE47,474 E
35
its RMTA responds to the ground of unpatentability proposed by Petitioner
in its Opposition to the initial MTA because the RMTA adds substantive
limitations that are not present in Petitioner’s proposed prior art
combination. RMTA 7.
Petitioner takes the view that the RMTA does not refer to the Board’s
Preliminary Guidance or Petitioner’s Opposition and, because it proposes
new claim limitations that are distinct from those presented in the initial
MTA, the RMTA presents arguments that allegedly are unrelated to issues
raised in the Preliminary Guidance and the Opposition to the MTA. Pet.
Opp. to RMTA 5–6. Petitioner, thus, characterizes the RMTA as having
been “improperly filed.” Id. at 6
Although Petitioner takes issue with the RMTA, we observe that
Petitioner had opportunity to respond to the RMTA through the filing of its
Opposition (Paper 49). We further do not conclude that the RMTA properly
can be characterized as “unrelated” to issues raised in the Preliminary
Guidance or Opposition to the MTA. That is so because, as Patent Owner
contends, the RMTA does appear to attempt to distinguish the proposed
substitute claims from Petitioner’s proposed ground of unpatentability based
on POH and James, albeit in a different manner than the MTA, by adding
limitations to the original claims that the proposed substitute claims are
intended to replace. See RMTA 7; PO Reply to Opp. to RMTA 2–4.
Accordingly, we conclude that the RMTA responds to a ground of
unpatentability.
c) Scope of Amended Claims
A revised motion to amend may not seek to enlarge the scope of the
claims. 35 U.S.C. § 316(d)(3); 37 C.F.R. § 42.121(a)(2)(ii). Patent Owner
IPR2019-01566
Patent RE47,474 E
36
contends that each of the proposed substitute claims 140–148 does not
remove any limitation from the original claim that the substitute claims seek
to replace, and instead only add limitations. RMTA 5–7. Petitioner does not
argue that the proposed substitute claims enlarge the scope of the original
claims. We determine that proposed substitute claims 140–148 do not
enlarge the scope of claims 2, 3, 8, 10, 15, 132, and 137–139.
d) New Matter
A revised motion to amend may not seek to add new subject matter.
35 U.S.C. § 316(d)(3); 37 C.F.R. § 42.121(a)(2)(ii). For the reasons set
forth below, we conclude that the RMTA seeks to add new subject matter as
a part of proposed substitute claims 140–148, and thus does not comply with
the provisions of 35 U.S.C. § 316(d)(3) and 37 C.F.R. § 42.121(a)(2)(ii).
Each of the proposed independent substitute claims 140 and 141 is
drawn to a “method performed by an aircraft.” RMTA A1–A2.16 Proposed
substitute claims 145–148 are each drawn to an “aircraft.” Id. at A3–A11.
Each of proposed substitute claims 140–148 introduces limitations that:
(1) the activation interface “includes a pull-handle”; (2) the autopilot is
“operable to increase aircraft altitude above ground” (claims 140, 141) or the
autopilot is “operable to increase aircraft altitude” (claims 145–148); and
(3) a “distributed processing system that includes a plurality of processors”
(claims 140, 141) or a “distributed processing system that includes a
plurality of processors including at least one of the one or more processors”
(claims 145–148). Id. at A1, A2, A4–A10. Those proposed substitute

16 Proposed substitute claims 142–144 ultimately depend from proposed
substitute claim 140.
IPR2019-01566
Patent RE47,474 E
37
claims further add the following “wherein” clause, which we reproduce as it
appears in claim 140:17
wherein the aircraft is configured to select,[18] using at
least a portion of the distributed processing system, a procedure
from two procedures, comprising:
(i) a first procedure that uses the autopilot to increase
aircraft altitude if aircraft airspeed is greater than a reference
airspeed, and
(ii) a second procedure that does not use the autopilot to
increase aircraft altitude if aircraft airspeed is greater than the
reference airspeed;
wherein the aircraft is configured to activate, using the at
least a portion of the distributed processing system and based
upon a pull of the pull hand, the selected procedure but not the
unselected procedure.
Id. at Appendix A, A1, A2, A5, A7–A11.
Patent Owner contends that the ’911 application and ’365 patent
provide written description support for all of the features of proposed
substitute claims 140, 141, and 145–148, including the above-noted
Procedural Selection Limitations. Id. at 8–19; A12–A34. As a part of its
Appendix A, Patent Owner provides a table showing where Patent Owner
believes the features of the claims of the proposed substitute claims are

17 Petitioner designates the wherein clause as it appears in each of proposed
substitute claims 140–148 as the “Procedural Selection Limitations.” See
Pet. Opp to RMTA 8. Patent Owner also uses that nomenclature in referring
to the limitations of the noted wherein clause. See PO Rep. to Opp to
RTMA 10. For convenience, we do the same.
18 Proposed substitute claims 140 and 142–145 use the phrase “configured to
select[.]” Proposed substitute claims 141 and 147 use the phrase “capable of
selecting.” Proposed substitute claim 146 uses the phrase “configured to
selectively activate.” Proposed substitute claim 148 uses the phrase
“capable of selectively activating.”
IPR2019-01566
Patent RE47,474 E
38
found in the ’911 application and the ’365 patent. We reproduce portions of
that table below in connection with the above-noted Procedural Selection
Limitations associated with proposed substitute claim 140:

***

Id. at A12–A13.
The table reproduced above identifies where Patent Owner believes
various content of the ’911 application and the ’365 patent provide support
for the pertinent claims features.19 We focus on the referenced content of
the ’911 application. See 37 C.F.R. § 42.121(b)(1) (explaining that the

19 The ’911 application appears in the record as both Exhibit 2027 (with
Figures 1–19) and Exhibit 2028 (without Figures but with line numbering).
The ’365 patent appears in the record as Exhibit 2029.
IPR2019-01566
Patent RE47,474 E
39
motion to amend must set forth the “support in the original disclosure of the
patent for each claim that is added or amended”).
Patent Owner points to Figures 13 and 14 and various portions of the
specification of the ’911 application at pages 12–17 and 19–22 as providing
support for the added features pertaining to a configuration of an aircraft to
select, using a portion of a distributed processing system, a “procedure”
from two procedures, one of which uses the autopilot to increase aircraft
altitude and the other of which does not use the autopilot for that purpose.
In both cases, the procedure is selected if the aircraft airspeed is greater than
a reference airspeed.
Figure 13 is described as “a diagram of a system for increasing the
safety of aircraft occupants” and is stated to show processor 405 that “is
coupled to a number of aircraft devices 425–475.” Exs. 2027, 2028, 2:23,
26:18–19.20 Figure 14 is described as “a flowchart of a method performed
by the system of Figure 13.” Id. at 2:24. Neither Figure 13 nor Figure 14
depicts or suggests an aircraft’s configuration for a processor-based selection
between two procedures when an aircraft’s airspeed is greater than a
reference airspeed, or that such procedure selection is between use of an
autopilot, or not, for increasing aircraft altitude. There is also no disclosure
of the aircraft being configured to activate, via the distributed processing
system, a selected procedure but not the un-selected procedure based on a
pull of the pull-handle.
The portions of the ’911 application cited by Patent Owner at page 12,
line 15 through page 13, line 2 describe components of ballistic parachute

20 We reference the page numbering for Exhibits 2027 and 2028 that appears
at the very bottom right of those exhibits.
IPR2019-01566
Patent RE47,474 E
40
system 500 including whole-aircraft ballistic parachute 510 and activation
interface 530 for the parachute that may be “a conventional pull-handle.” Id.
at 12:15–21. That section also describes that the activation interface can
generate data to send to processor 405 for the process “to determine if any
actions need to be performed before and/or after the activation of the
deployment of the ballistic parachute 510.” Id. at 12:21–25. Further
described is “intelligence override interface 540” which is operable for
immediate parachute deployment, where that override interface “could be a
second pull of the above-discussed pull-handle, a separate pull-handle, or a
button placed near the above-discussed pull-handle.” Id. at 12:25–13:2.
There is no disclosure in the above-noted section of an aircraft’s
configuration for selection between two procedures when an aircraft’s
airspeed is greater than a reference airspeed, or that such procedure selection
is between use of an autopilot, or not, for increasing aircraft altitude. There
also is no disclosure of the aircraft being configured, using the distributed
processing system, to activate a selected procedure but not the un-selected
procedure based on a pull of the pull-handle.
The cited portions of the ’911 application at page 14, lines 13–22
generally describe that processor 405 may be provided with data indicating
that a parachute activation request has been received and that the process
could activate deployment of parachute 510. That portion also describes that
processor 405 may receive a parachute activation request and “determine if
an action needs to be performed before the activation of the ballistic
parachute 510.” Id. at 14:18–22. Here, too, the above-noted cited portion
does not describe an aircraft’s configuration for selection between two
procedures when an aircraft’s airspeed is greater than a reference airspeed,
IPR2019-01566
Patent RE47,474 E
41
or that such procedure selection is between use of an autopilot, or not, for
increasing aircraft altitude. That portion also lacks disclosure of an aircraft
being configured, using the distributed processing system, to activate a
selected procedure but not the un-selected procedure based on a pull of the
pull-handle.
The cited portion of the ’911 application at page 15, lines 1–7
generally sets forth an example “determination” that may be made by
processor 405 as to whether an action needs to be performed before
activation of parachute 510. The example determination described is
whether the air speed of the aircraft needs to be decreased for safe
deployment of the parachute. At page 15, lines 8–12, another example
determination is whether the “reefing of the parachute needs to be
controlled” based on aircraft speed and altitude. There is no discussion of an
aircraft’s configuration for selection between two procedures when an
aircraft’s airspeed is greater than a reference airspeed, or that such procedure
selection is between use of an autopilot, or not, for increasing aircraft
altitude.
The cited portion of the ’911 application at page 16, lines 12–25
discloses that processor 405 may determine that a “pre-activation action” is
needed prior to parachute deployment. That cited portion sets forth the
following example:
[I]f the aircraft altitude needs to be increased, then the processor
405 could attempt to increase the aircraft’s altitude above the
ground. Specifically, if the autopilot 445 is not engaged, then the
processor 405 could engage the autopilot 445 and instruct the
autopilot 445 to initiate a steep climb to rapidly increase the
altitude of the aircraft. If the processor 405 has the ability to
control the aircraft engine, then the processor 405 could also
IPR2019-01566
Patent RE47,474 E
42
instruct the engine to provide full power for a maximum rate
climb.
Id. at 16:16–22.
The above-quoted portion describes a scenario in which, if the
processor has determined that an aircraft’s altitude needs to be increased, it
may engage the autopilot and instruct an increase in altitude. Absent from
that portion, however, is any disclosure that a processing system selects
between two procedures that facilitate the aircraft’s increase in altitude in
different manners. Also absent is disclosure that one of the processor-based
selected procedures accomplishes altitude increase without use of the
autopilot.
The cited portions of the ’911 application at page 17, line 18 through
page 19, line 25 and page 20, lines 5–16 generally describe various
exemplary “post activation action[s]” that may be performed by processor
405 including, for instance, extension of reefing control lines 925 by certain
amounts, setting of a transponder mode to certain modes, activating an
emergency locator transmitter 435, setting a transmit frequency of
communication radio 440, and displaying instructions to aircraft occupants
on display 420. None of that disclosure of post activation actions, however,
describes processor-based selection between procedures to accomplish the
increase in an aircraft’s altitude when the aircraft’s airspeed is greater than a
reference airspeed, or that the selected procedure causes altitude increase
without use of an autopilot.
The cited portions at page 21, lines 3–11 expound on the type of
information that could be displayed to an occupant on display 420. There is
no description or disclosure of an aircraft’s configuration for selection
IPR2019-01566
Patent RE47,474 E
43
between two procedures when an aircraft’s airspeed is greater than a
reference airspeed, or that such procedure selection is between use of an
autopilot or not for increasing aircraft altitude.
Lastly, the cited portion at page 22, lines 3–8 generally describe that
the distributed processing system may perform earlier disclosed methods
using processor 405 in conjunction with another processor included as a part
of whole-aircraft ballistic parachute 500. None of that description pertains
to an aircraft’s configuration for selection between two procedures when an
aircraft’s airspeed is greater than a reference airspeed, or that such procedure
selection is between use of an autopilot, or not, for increasing aircraft
altitude.
We conclude that the above-discussed portions of the ’911 application
cited by Patent Owner do not provide support for the Procedural Selection
Limitations appearing in each of proposed substitute claims 140–148.21
Accordingly, we conclude that Patent Owner’s RMTA, in seeking to include
the Procedural Selection Limitations as a part of the proposed substitute
claims, violates the prohibition of adding new subject matter set forth in
35 U.S.C. § 316(d)(3) and 37 C.F.R. § 42.121(a)(2)(ii). That circumstance
in and of itself warrants denial of entry of the Patent Owner’s RMTA.
3. Patentability
For the reasons discussed below, we conclude that Petitioner, and the
record as a whole, show by a preponderance of the evidence that proposed

21 We discern also that the corresponding portions of the ’365 patent that
Patent Owner cites in its RMTA are essentially the same, if not identical, to
those of the ’911 application.
IPR2019-01566
Patent RE47,474 E
44
substitute claims 140–148 are unpatentable. See Lectrosonics, Paper 15 at 4
(“[T]he burden of persuasion ordinarily will lie with the petitioner to show
that any proposed substitute claims are unpatentable by a preponderance of
the evidence.”).
a) Written Description
Arising under 35 U.S.C. § 112 is a requirement that an inventor
provide sufficient written description to demonstrate that he has possession
of the invention being claimed. “[T]he purpose of the written description
requirement is to ‘ensure that the scope of the right to exclude, as set forth in
the claims, does not overreach the scope of the inventor’s contribution to the
field of art as described in the patent specification.’” Ariad Pharms., Inc.
v. Eli Lilly & Co., 598 F.3d 1336, 1353–54 (Fed. Cir. 2010) (en banc)
(quoting Reiffin v. Microsoft Corp., 214 F.3d 1342, 1345 (Fed. Cir. 2000)).
As discussed above under section H.2.d. “New Matter,” with respect to the
Procedural Selection Limitations of proposed substitute claims 140–148, the
portions of the ’911 application cited by Patent Owner are inadequate to
satisfy the written description requirement.
b) Indefiniteness
Petitioner argues that proposed substitute claims 140–148 are
indefinite as they “do not describe and define the claimed invention or its
scope with any specificity.” Pet. Opp. to RMTA 13 (citing Nautilus, Inc. v.
Biosig Instruments, Inc., 134 S. Ct. 2120 (2014) and In re Packard, 751 F.3d
1307 (Fed. Cir. 2014)); see also id. at 13–15 (setting forth reasons why
Petitioner believes the proposed substitute claims are indefinite); Pet. Sur-
Reply to RMTA 8–10 (further assessing why Petitioner believes the
IPR2019-01566
Patent RE47,474 E
45
proposed substitute claims are indefinite). Patent Owner disagrees. PO
Reply to Opp. to RMTA 8–9. For the reasons below, we conclude that the
proposed substitute claims 140–148 are indefinite.
We evaluate indefiniteness in AIA proceedings of proposed substitute
claims in a motion to amend using the same indefiniteness standard as used
in federal courts and the ITC under Nautilus, Inc. v. Biosig Instruments, Inc.,
572 U.S. 898 (2014) and its progeny. See Simpson Strong-Tie Co. v.
Columbia Ins. Co., PGR2019-00063, Paper 14 at 13–16 (PTAB Mar. 12,
2020) (Institution Decision). Under Nautilus, “[a] patent is invalid for
indefiniteness if its claims, read in light of the patent’s specification and
prosecution history, fail to inform, with reasonable certainty, those skilled in
the art about the scope of the invention.” Nautilus, 572 U.S. at 898–99.
“The definiteness requirement, so understood, mandates clarity, while
recognizing that absolute precision is unattainable.” Id. at 910; see Minerals
Separation v. Hyde, 242 U.S. 261, 270 (1916) (“[T]he certainty which the
law requires in patents is not greater than is reasonable, having regard to
their subject matter.”). Nevertheless, Nautilus mandates that a “patent must
be precise enough to afford clear notice of what is claimed,” so as to avoid a
“zone of uncertainty which enterprise and experimentation may enter only at
the risk of infringement claims.” Nautilus, 572 U.S. at 909–910. We also
observe that in Packard, the Federal Circuit characterized the standard for
indefiniteness as one that asks whether a “claim is ambiguous, vague,
incoherent, opaque, or otherwise unclear in describing and defining the
claimed invention.” See Packard, 751 F.3d at 1311. With the above-noted
principles in mind, we turn to proposed substitute claims 140–148, and in
particular, the Procedural Selection Limitations of those claims.
IPR2019-01566
Patent RE47,474 E
46
As discussed above, the Procedural Selection Limitations set forth that
an aircraft is configured to, or capable of, selecting one procedure from two
procedures using a portion of a distributed processing system. One of the
procedures, the first one, “uses the autopilot to increase an aircraft’s altitude
if aircraft airspeed is greater than a reference airspeed.” See, e.g., RMTA
A1 (emphasis added). The second procedure available for selection “does
not use the autopilot to increase aircraft altitude if aircraft airspeed is
greater than the reference airspeed.” See, e.g., id. (emphasis added). Thus,
the “procedure” clauses specify, by their own words, that both procedures
occur based on the same determined condition, i.e., the aircraft airspeed is
greater than a reference speed. Aircraft airspeed, therefore, is not a basis for
the selection of one procedure over the other. One would then expect that
there are disclosed criteria to determine how the aircraft determines “to
select, using at least a portion of the distributed processing system, a
procedure from two procedures. . . .” See, e.g., id. But, review of the
remaining language of the proposed substitute claims and the ’474 patent’s
content is unavailing in establishing any such metric or criteria for
determining how one of the procedures is selected over the other. We agree
with Petitioner that there simply is no adequate basis in the context of the
’474 patent to ascertain what circumstance or scenario prompts the selection
of one of the procedures over the other. See Pet. Opp to RMTA 13–15; Pet.
Sur-Reply to RMTA 8–9.
Patent Owner states that “the specification teaches that the
processor selects between the two recited procedures.” PO Reply to
Opp. to RMTA, 5. As support for that statement, Patent Owner
argues the following:
IPR2019-01566
Patent RE47,474 E
47
The specification teaches that the activation interface may cause
the processor to perform an analysis such as evaluating the
airspeed of the aircraft to determine if any actions need to be
performed before activation of the deployment of the ballistic
parachute. Ex. 2027 at 15:1–2, 16:23–25. The specification
further teaches that the second pull of the pull-handle may
activate the intelligence override feature. Id. at 13:1–2.
According to the preferred embodiment, the system thereby
selects one of the following two procedures based on the number
of times the handle is pulled: i) perform an action and then deploy
the parachute, or ii) immediately deploy the parachute. Id.
Id.
The cited portions of the specification at column 15, lines 1–2 and
column 16 lines 23–25, however, simply convey that “[a]nother
determination could be to determine if the airspeed of the aircraft needs to be
decreased for a safe deployment of the ballistic parachute 510” and
“[s]imilarly, if the airspeed of the aircraft exceeds the maximum parachute
deployment airspeed, then the processor 405 could instruct the autopilot 445
to initiate a steep climb to rapidly decrease the airspeed of the aircraft.” Ex.
2028, 15:1–2, 16:23–25. As noted above, however, both procedures of the
proposed substitute claims occur when airspeed is determined to be greater
than a reference airspeed. It is not apparent how processor 405’s
determination that airspeed needs to be reduced and a steep climb instituted
constitutes a basis for selection of one of the procedures over the other.
Patent Owner also points to disclosure at column 13, lines 1–2
describing that an aircraft occupant may pull the pull-handle a second time
as an intelligence override feature to provide immediate parachute
deployment. We agree with Petitioner that it is not evident why the manual
action of an occupant to pull a pull-handle a second time constitutes
IPR2019-01566
Patent RE47,474 E
48
selection, using a part of the distributed processing system, between two
procedures to increase aircraft altitude. See Pet. Sur-Reply to RMTA 9–10.
In its Reply, Patent Owner contends that its claims are definite
because there is no “requirement that a claim specify every possible criterion
upon which a selection is made . . . .” PO Reply to Opp. to RMTA 8 (citing
Ex. 2033 (Bartone Declaration), ¶¶ 84–85). The issue, however, is not
disclosure of every possible criterion for making a selection. Instead, the
issue is whether any criteria, in the context of the proposed substitute claims,
is recognizable for determining which procedure is to be selected.
Dr. Bartone’s cited testimony provides little illumination on that issue as he
testifies simply that the proposed substitute claim need not specify a “precise
criteria” for a person ordinary skill in the art to understand that selection
between the two procedures occurs. See Ex. 2033 ¶ 85. Yet, as discussed
above, there is no discernable basis on this record for determining what
criteria factor in or dictate how or why one procedure would be selected over
the other. Patent Owner’s arguments do not undermine Petitioner’s
persuasive showing that the proposed substitute claims are indefinite. See
Pet. Opp. to RMTA 13–15; Pet. Sur-Reply to RMTA 8–10.
Accordingly, we determine that the proposed substitute claims are
unclear and vague in describing the claimed invention and that the record
does not apprise a skilled artisan with reasonably certainty as to the scope of
the claimed invention. We conclude, therefore, that the proposed substitute
claims are indefinite.
c) Prior Art Ground of Unpatentability
As discussed above, we conclude that Patent Owner’s RMTA is
deficient in meeting the statutory and regulatory requirements associated
IPR2019-01566
Patent RE47,474 E
49
with filing a motion to amend because the RMTA introduces new matter,
i.e., proposes substitute claims that do not comply with the written
description requirement. We also conclude that the proposed substitute
claims are indefinite. Those are sufficient reasons to deny entry of the
RMTA. Thus, we conclude that it is unnecessary to also evaluate issues
pertaining to patentability of the substitute claims over the prior art ground
that has been proffered by Petitioner.
III. CONCLUSION22
As noted above, Patent Owner disclaimed claims 135 and 136, and
requests cancellation of claims 2, 3, 8, 10, 15, and 132. Furthermore, for the
foregoing reasons, we conclude that Petitioner has met its burden to show by
a preponderance of the evidence that claims 137–139 are unpatentable over
POH and James. We also conclude that Patent Owner has not satisfied the
statutory and regulatory requirements associated with filing a motion to
amend. We further conclude that Petitioner has met its burden to show that
proposed substitute claims are not patentable such that entry of those claims
is not appropriate or warranted.

22 Should Patent Owner wish to pursue amendment of the challenged
claims in a reissue or reexamination proceeding subsequent to the
issuance of this decision, we draw Patent Owner’s attention to the April
2019 Notice Regarding Options for Amendments by Patent Owner
Through Reissue or Reexamination During a Pending AIA Trial
Proceeding. See 84 Fed. Reg. 16,654 (Apr. 22, 2019). If Patent Owner
chooses to file a reissue application or a request for reexamination of
the challenged patent, we remind Patent Owner of its continuing
obligation to notify the Board of any such related matters in updated
mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
IPR2019-01566
Patent RE47,474 E
50
In summary,
Claims Disclaimed: 135, 136

Claims
35
U.S.C. § References
Claims
Shown
Unpatentable
Claims Not
Shown
Unpatentable
137–139 103 POH, James 137–139
Overall Outcome 137–139

Motion to Amend Outcome Claim(s)
Original Claims Cancelled by Amendment 2, 3, 8, 10, 15, 132
Substitute Claims Proposed in the Amendment 140–148
Substitute Claims: Motion to Amend Granted
Substitute Claims: Motion to Amend Denied 140–148
Substitute Claims: Not Reached

IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that Patent Owner has disclaimed claims 135 and 136;
FURTHER ORDERED that claims 2, 3, 8, 10, 15, and 132 are
cancelled;
FURTHER ORDERED that Petitioner has shown by a preponderance
of evidence that claims 137–139 of the ’474 patent are unpatentable;
FURTHER ORDERED that Patent Owner’s Revised Motion to
Amend is denied; and
FURTHER ORDERED because this is a final written decision, the
parties to this proceeding seeking judicial review of our Decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.
IPR2019-01566
Patent RE47,474 E
51
For PETITIONER:

Victor Jonas
Joel Sayres
FAEGRE, DRINKER, BIDDLE & REATH LLP
victor.jonas.ptab@faegredrinker.com
joel.sayres@faegredrinker.com

For PATENT OWNER:

Greg Gardella
Natalie Grace
GARDELLA GRACE P.A.
ggardella@gardellgrace.com
ngrace@gardellgrace.com