Aerodynamic truck skirt patent found partially invalid. TRANSTEX v. LAYDON

A patent is not immune from review after it is granted. If a member of the public discovers prior art which would anticipate (35 U.S.C. §102) or render a patented invention obvious (35 U.S.C. §103), that member of the public can request an inter partes review (IPR). IPR is a trial proceeding conducted at the Patent Trial and Appeal Board (PTAB) to review the patentability of one or more claims in a patent. The evidence that can be submitted in an IPR is limited to patents or printed publications which would qualify under §§ 102 or 103 and expert testimony to explain those publications. At the conclusion of an IPR the PTAB may invalidate all, some or none of the claims of the patent.

Obviousness under 35 U.S. Code § 103 is a question of law, based on underlying factual findings. Whether an invention is obvious is an objective test based on the prior art and a person having ordinary skill in that art. Prior art is the sum of all knowledge in a given field of technology. Research papers, granted patents, patent applications, and other forms of printed publications are all examples of prior art. The person of ordinary skill in the art is a hypothetical person who is presumed to have known the relevant art at the time of the invention.

Relevant underlying factual questions related obviousness include, whether a prior art reference teaches away, whether a skilled artisan would have been motivated to combine references, and a skilled artisan’s reasonable expectation of success in combining references.

TRANSTEX INC. v. LAYDON COMPOSITES LTD., 20-1576 (C.A.F.C. 2021) is an example of a case where an artisan’s reasonable expectation of success was particularly important.

Respondent, is the owner of U.S. Patent No. 8,449,017 (“the ’017 patent”). The ’017 patent is directed to a “trailer skirt” for a road trailer. A trailer skirt is one type of fairing used to reduce aerodynamic drag on a trailer when it is being hauled. It thereby improves fuel efficiency. The invention has a “resilient strut” which allows the trailer skirt to flex and move, but return to its original position. This allows the trailer skirt to move is something hits it, but continue to operate once the obstruction is removed.

Petitioner, petitioned the PTAB for inter partes review on the grounds that the ’017 patent was obvious over the combination of U.S. Patent No. 7,578,541 to Layfield and U.S. Patent No. 5,280,990 to Rinard. In January 20, 2020, the PTAB held that claims 1, 5–11, and 15–19 of the ’017 patent were unpatentable in light of the prior art, however, petitioner had failed to prove that claims 1, 5–11, and 15–19 of the ’017 patent were unpatentable. Both parties appealed to the Court of Appeals for the Federal Circuit.

On appeal Respondent’s primary argument was that the invalidated claims were patentable because the PTAB “erred in concluding that the combination of Layfield and Rinard would have been likely to succeed because it failed to articulate the reasons for finding an expectation of success.” Essentially, a person skilled in making trucks would have looked at the two pieces of prior art and thought “that will never work”. The Federal Circuit affirmed the PTAB’s decision because it was supported by substantial evidence. Both pieces of prior art were directed to similar technologies, both use resilient materials, therefore a skilled artisan would have been motivated to combine the references. A skilled artisan’s expectation of success need only be reasonable, not absolute.

Petitioner’s primary argument was that the PTAB did not properly construe the term “‘U’ shaped section” and “concave” in the ‘716 patent. Had the PTAB given those terms their broadest reasonable interpretation, it would have found the remaining claims of the patent invalid. The Federal Circuit, again, affirmed the PTAB’s decision because it was supported by substantial evidence. The ‘716 patent disclosed structures that were shaped like a U and similar structures did not appeal in the prior art. Similarly the dictionary definition of concave requires a round surface, petitioner’s argument that a flat surface could be considered concave because it was hollow was unpersuasive.

Based on these findings the Federal Circuit affirmed the PTAB’s decision.

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