Machinex Indus. v. JJG IP Holdings, LLC

• Decision Date: 04 October 2021
• Docket Number: 346 B2,950,IPR2020-00899,Patent 9
• Parties: MACHINEX INDUSTRIES, INC., Petitioner, v. JJG IP HOLDINGS, LLC, Patent Owner.
• Court: Patent Trial and Appeal Board

MACHINEX INDUSTRIES, INC., Petitioner,
v.
JJG IP HOLDINGS, LLC, Patent Owner.

No. IPR2020-00899

Patent 9, 950, 346 B2

United States Patent and Trademark Office, Patent Trial and Appeal Board

October 4, 2021

For PETITIONER: Peter Sullivan Jeffrey Lewis Stephen Kenny FOLEY HOAG LLP

For PATENT OWNER: Robert Brunelli Patricia Ho Kendria Pearson SHERIDAN ROSS P.C.

Before GEORGE R. HOSKINS, MICHAEL L. WOODS, and ROBERT L. KINDER, Administrative Patent Judges.

JUDGMENT

WOODS, Administrative Patent Judge.

Final Written Decision Determining All Challenged Claims Unpatentable 35 U.S.C. § 318(a)

ORDER Denying Petitioner's Motion to Exclude Dismissing Patent Owner's Motion to Exclude 37 C.F.R. § 42.64

I. INTRODUCTION

Petitioner, Machinex Industries, Inc., filed a Petition (Paper 1, "Pet.") requesting inter partes review of claims 1-16 ("the challenged claims") of U.S. Patent No. 9, 950, 346 B2 (Ex. 1001, "the '346 patent").^[1] Pet. 4. We issued a decision to institute an inter partes review of these claims. Paper 11 ("Institution Decision" or "Inst. Dec").

After institution, Patent Owner, JJG IP Holdings, LLC, filed a Patent Owner Response (Paper 19, "PO Resp." or "Response"), to which Petitioner replied (Paper 28, "Pet. Reply" or "Reply"). Patent Owner also filed a Sur-Reply to Petitioner's Reply. Paper 29 ("PO Sur-Reply" or "Sur-Reply").

Petitioner further filed a Motion to Exclude several of Patent Owner's exhibits (Paper 34), to which Patent Owner opposed (Paper 35), and Petitioner Replied (Paper 37).

Patent Owner also filed a Motion to Exclude one of Petitioner's Exhibits (Paper 43), to which Petitioner opposed (Paper 44).

Oral argument, or hearing, was held on July 21, 2021, and the Transcript of the hearing has been entered as Paper 42 ("Transcript" or "Tr").

We have jurisdiction under 35 U.S.C. § 6. Petitioner bears the burden of proving unpatentability of the challenged claims, and the burden of persuasion never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat 7 Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To prevail, Petitioner must prove unpatentability by a preponderance of the evidence. See 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons that follow, Petitioner has shown that claims 1-16 of the '346 patent are unpatentable.

A. Related Proceedings

The parties identify JJG IP Holdings, LLP v. Machinex Indus., Inc., No. l:19-cv-00437 (M.D. N.C. ) as a related proceeding. Pet. 3; Paper 4, 1.

B. The 346 Patent (Ex. 1001)

The '346 patent is titled "Method and Apparatus for Sorting Recycled Material." Ex. 1001, code (54). The patent describes an apparatus and method for sorting heterogeneous material, such as a mix of recycling material. See id. at code (57), 1:14-24. To illustrate an embodiment of the described system, we reproduce its Figure 1, below:

IMAGE OMITTED.

According to the '346 patent, Figure 1 "is a front perspective drawing illustrating a system for the separation of heterogeneous material." Id. at 3:36-38. In particular, conveyer 1 carries material to identification camera enclosure 4, which encloses a camera (not shown). See id. at 4:1-4. "Disposed proximately" to the camera is array of lights 5, which highlight the target area for the camera. Id. at 4:4-5. In one embodiment, the camera is a hyperspectral camera, in which cameras and sensors "collect and then combine spatial and spectral information" as a set of images. Id. at 4:6-9. Computer system 3 is programmed to receive input from the camera and to provide output signals to ejector nozzles, which "eject desired product." Id. at 5:5-9. The force from the ejector jets "propels the picked items into" receiving hood 7, which is located above conveyer belt 1, where the items are pushed toward collection point 9. Id. at 5:23-28.

C. Illustrative Claims

Of the challenged claims, claims 1 and 14 are independent. Ex. 1001, 5:66-8:17. We reproduce claims 1 and 9 below, reformatted from the version provided in the '346 patent to include bracketed alphanumeric nomenclature that corresponds with Petitioner's modifications or nomenclature. See Pet. 40-51.

1. [Limitation l(p)]A system for the identification and sorting of heterogeneous material, the system comprising

[Limitation 1(a)] a hyper spectral identification system for capturing spectra of material

[Limitation 1(b)] said hyperspectral identification system comprises at least one hyperspectral camera said hyperspectral camera configured to receive spectral data from a plurality of selected spectral bands of infrared and visible light corresponding to spectral signatures of target materials to be identified if present in said heterogeneous material and spacial data locating a position of said heterogeneous materials on a solid belt

[Limitation 1(c)] said camera disposed proximate to a visible or infrared light source

[Limitation 1(d)] said light source and said at least one hyperspectral camera are disposed on the same side of a stream of said heterogeneous material;

[Limitation 1(e)] said solid belt having first and second ends, said belt running beneath said hyperspectral identification system and upon which said heterogeneous material is conveyed from said first end to said second end,

[Limitation 1(f)] said belt traveling at a preset rate, said hyperspectral identification system being disposed over said second end of said belt;

[Limitation 1(g)] a computer configured to receive and analyze data from said hyperspectral identification system,

[Limitation 1(h)] to identify target materials of a first user defined category from among said heterogeneous materials,

[Limitation l(i)] identify the spatial position of said target materials, and

[Limitation 1(f)] to trigger an ejection system at a preset time delay equal to the distance between said camera and said ejection system divided by the rate of travel of the belt; and

[Limitation l(k)] said ejection system disposed immediately after said second end of said belt, whereby said desired materials are separated from said heterogeneous material,

[Limitation 1(1)] said ejection system being triggered by said computer.

9. The system according to claim 1 wherein said heterogeneous materials comprise waste and recyclable materials.

Ex. 1001, 5:66-6:32, 6:58-59; Pet. 40-51.

D. References Relied Upon

Petitioner's challenges rely on the following references (Pet. 4-6):

Name	Reference	Ex. No.
Carlsohn	Excerpts from Color Image Processing: Methods and Applications, CRC Press (2007)	1002
Sinram	WO Publication No. 2007/112591 A1, published Oct. 11, 2007	1003
Arleth	US Patent Publication No. 2004/0044436 A1, published Mar. 4, 2004	1004
Kampf	US Patent Publication No. 2005/0127285 A1, published June 16, 2005	1005
Ulrichsen	US Patent No. 6, 353, 197 B1, issued Mar. 5, 2002	1006
Mayhak	US Patent No. 5, 339, 961, issued Aug. 23, 1994	1007
Cowling2	US Patent Publication No. 2007/0278139 A1, published Dec. 6, 2007	1019

E. Alleged Grounds of Unpatentability ^[2]

Petitioner contends that the challenged claims are unpatentable based on the following asserted grounds (Pet. 4-6):

Ground	Claim(s) Challenged	35 U.S.C. §	Reference(s)/Basis[3]
1	1-5, 7, 9-12	103	Carlsohn, Arleth
2	8	103	Carlsohn, Arleth, Ulrichsen, Mayhak
3	1-7, 9-16	103	Carlsohn, Arleth, Sinram
4	8	103	Carlsohn, Arleth, Ulrichsen, Mayhak, Sinram
5	2	103	Carlsohn, Arleth, Kampf
6	2	103	Carlsohn, Arleth, Sinram, Kampf
7	12, 13	103	Carlsohn, Arleth, Cowling2
8	12, 13	103	Carlsohn, Arleth, Sinram, Cowling2

Petitioner supports its challenge with a declaration from Dr. Gonzalo R. Arce (Ex. 1008).^[4] Patent Owner supports its Response with declarations from Mr. Fred P. Smith (Exs. 2001, 2022).

II. ANALYSIS

A. Preliminary Response Incorporated by Reference

In the Response, Patent Owner incorporates by reference "all the evidence and arguments previously presented by" Patent Owner, including, we presume, those made in the Patent Owner's Preliminary Response. See PO Resp. 1-2.

We do not permit a Patent Owner to incorporate by reference arguments made in the Preliminary Response. Our Rules provide that "[arguments must not be incorporated by reference from one document into another document." 37 C.F.R. § 42.5(a)(3). Furthermore, our Scheduling Order states that "Patent Owner is cautioned that any arguments not raised in the response may be deemed waived." Paper 12, 8 (bold emphasis omitted). Accordingly, arguments made by Patent Owner in its Preliminary Response, which were not otherwise made in the Response, are waived. See Tr. 4:23-5:9 (explaining the same during the oral argument).

B. Level of Ordinary Skill in the Art

In determining whether an invention would have been obvious at the time it was made, we consider the level of ordinary skill in the pertinent art at the time of the invention. Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17(1966).

Factors pertinent to a determination of the level of ordinary skill in the art include: (1) educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of workers active in the field...