Redline Detection, LLC v. Star Envirotech, Inc. , 811 F.3d 435 ( 2015 )

United States Court of Appeals
for the Federal Circuit
______________________
REDLINE DETECTION, LLC,
Appellant
v.
STAR ENVIROTECH, INC.,
Appellee
______________________
2015-1047
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2013-
00106.
______________________
Decided: December 31, 2015
______________________
MATTHEW NEWBOLES, Stetina, Brunda, Garred &
Brucker, Aliso Viejo, CA, argued for appellant. Also
represented by GREGORY CLARKSON, LOWELL ANDERSON.
BRENTON R. BABCOCK¸ Knobbe, Martens, Olson &
Bear, LLP, Irvine, CA, argued for appellee. Also repre-
sented by JARED C. BUNKER, EDWARD A. SCHLATTER.
JEREMIAH HELM, Office of the Solicitor, United States
Patent and Trademark Office, Alexandria, VA, argued for
intervenor. Also represented by JOSEPH MATAL, JAMIE
2 REDLINE DETECTION, LLC v. STAR ENVIROTECH, INC.
LYNNE SIMPSON, SCOTT WEIDENFELLER, THOMAS W.
KRAUSE.
______________________
Before LOURIE, WALLACH, and HUGHES, Circuit Judges.
WALLACH, Circuit Judge.
Appellant Redline Detection, LLC (“Redline”) appeals
the inter partes review (“IPR”) decision of the United
States Patent and Trademark Office’s (“USPTO” or “the
Office”) Patent Trial and Appeal Board (“the PTAB” or
“the Board”), which denied Redline’s motion to submit
supplemental information under 37 C.F.R. § 42.123(a)
(2012) and found Redline failed to show that claims 9 and
10 of U.S. Patent No. 6,526,808 (the “’808 patent”) would
have been obvious. See Redline Detection, LLC v. Star
Envirotech, Inc., IPR2013-00106, 2014 WL 2995050(P.T.A.B. June 30, 2014) (J.A. 36–75) (“Final Decision”).
For the reasons set forth below, we affirm.
BACKGROUND
I. The ’808 Patent
Appellee Star Envirotech, Inc. (“STAR”) owns the ’808
patent, which relates to methods of generating smoke for
use in volatile and explosive environments. Specifically,
the ’808 patent describes methods for generating smoke
that “enables the presence and location of leaks in a fluid
system (e.g. the evaporative or brake system of a motor
vehicle) to be accurately and visually detected depending
upon rate of the air flow through the fluid system under
test and whether smoke escapes from the system.” ’808
patent col. 1 ll. 12–16. A partial schematic of the smoke-
generating apparatus is depicted below.
REDLINE DETECTION, LLC v. STAR ENVIROTECH, INC. 3
Id. fig.1.
This apparatus “includes a sealed chamber 6 which
contains a non-toxic oil supply 8. An air inlet tube 10
projects upwardly from the bottom of chamber 6 and
extends above the oil supply 8.” Id. col. 3 ll. 25–28. “An
inlet orifice 12 is formed in the air inlet tube 10 so as to
lie within the oil supply 8 immediately above the bottom
of chamber 6. A resistor heating grid (e.g. coil) 14 extends
laterally across the sealed chamber 6 . . . .” Id. col. 3 ll.
30–34. The “fluid baffle 18” contains “a smoke outlet
orifice 20” that “extends laterally across the sealed cham-
ber 6 above the heating grid 14.” Id. col. 3 ll. 35–38.
Alternative embodiments allow for the use of nitrogen
(“N2”) or carbon dioxide (“CO2”) gas in place of air for
testing high-pressure systems (e.g., air brakes) with high
operating temperatures without the risk of an explosion.
Id. col. 6 ll. 63–67. “A mixture of air [or inert gas] and oil
is then blown upwardly and outwardly from the air inlet
tube 10 towards and into contact with the heating grid
[14], whereby the[] oil is instantaneously vaporized into
smoke.” Id. col 3 ll. 47–50. The resulting “smoke travels
through the outlet orifice 20[] in fluid baffle 18 for receipt
4 REDLINE DETECTION, LLC v. STAR ENVIROTECH, INC.
by the smoke outlet line 2.” Id. col. 3 ll. 50–52. This
smoke is carried by the smoke supply line 4 “to the fluid
system to be tested so that the integrity of the system
may be visually inspected for leaks depending upon the
absence or presence of smoke escaping therefrom.” Id. col.
3 ll. 52–56.
II. Prior Art
The prior art discloses various methods to generate
smoke—e.g., combusting smoke-producing fluid with a
heating element, vaporizing mixtures of oil and CO2 gas,
and vaporizing small droplets of oil dispersed in a stream
of inert gas. Each of these methods advance smoke gen-
erating technology, but these methods are not suitable for
leak testing closed systems that have volatile hydrocar-
bons. The ’808 patent generates smoke that can be used
to test closed and potentially explosive systems for leaks.
A. Gilliam
U.S. Patent No. 5,107,698 (“Gilliam”) describes meth-
ods and devices for detecting leaks in fluid systems via
smoke. J.A. 972–82. Figure 3 of Gilliam is depicted
below.
Gilliam fig.3.
“Smoke-generating assembly 35 includes [air] pump
15, thermistor 8, spike-protecting diode 9, switch 10, and
ceramic heating element 11. A smoke-producing fluid is
REDLINE DETECTION, LLC v. STAR ENVIROTECH, INC. 5
poured into chamber 20 through filler port 6.” Id. col. 6 ll.
20–23. Smoke is circulated throughout the system by air
pump 15. If heating element 11 becomes “submerged,
vaporization is prevented and the fluid is merely heated
and eventually reaches it boiling point.” Id. col. 6 ll. 38–
41. When the heating element 11 becomes sufficiently
hot, the smoke-producing fluid vaporizes within chamber
40. The generated smoke then passes through “conduit
22 into the vacuum system connected thereto for leak
testing purposes.” Id. col 8 ll. 11–13. Thus, the “[s]moke
generating fluid should preferably be non-flammable and
non-toxic.” Id. col. 5 ll. 67–68.
Because temperature control of the heating element is
important to this prior art, Gilliam discloses several
preferred embodiments for controlling temperature. See,
e.g., id. col. 7 ll. 1–4, 14–18, 26–28. Additionally, the
“spark-arrestor 3 prevents sparks or even flames from
entering a vehicle’s engine, thereby causing an explosion.
Flames could be generated . . . if a flammable fluid mix-
ture was inadvertently created in chamber 20.” Id. col. 7
ll. 55–59.
B. Stoyle
Great Britain Patent No. 1,240,867 (“Stoyle”) (J.A.
1004–08) describes an apparatus for “heating [] oil or
other mixtures of oil and [CO2], oil and water, or oil, [CO2]
and water to produce smoke or mist . . . for testing venti-
lation systems or for theatrical effects.” Stoyle p. 1 ll. 11–
17. Figure 3 of Stoyle is depicted below.
6 REDLINE DETECTION, LLC v. STAR ENVIROTECH, INC.
Id. fig.3.
“The fluid inlet means 14 are connected to a generator
capable of producing a foam of oil and [CO2] gas. The
oil/gas mixture is forced into the space 7 and, passing
through the gaps between the knurlings, eventually
reaches the outlet means 10, where it emerges in the form
of a mist or smoke.” Id. p. 2 ll. 101–08. This allows for “a
relatively large contact area for heating the oil/gas mix-
ture[,] . . . [making] the heating very uniform and easy to
control.” Id. p. 2 ll. 109–11, 118–19. Additionally, this
apparatus permits the “production of oil smokes and
mists with a relatively lower proportion of gas in the
mixture by comparison with other types of heater[s].” Id.p. 3 ll. 15–18.
C. Pauley
Great Britain Patent No. 640,266 (“Pauley”) (J.A.
1010–15) describes an apparatus for generating an
opaque fog, for use in theatrical work, that is “sufficiently
heavy in weight by comparison with the surrounding air,”
Pauley p. 2 ll. 20–22, such that the fog can “‘lay’ conven-
iently without quickly melting or drifting away,” id. p. 2
ll. 51–52. Figure 1 of Pauley is depicted below.
Id. fig.1.
REDLINE DETECTION, LLC v. STAR ENVIROTECH, INC. 7
“[G]lycerine, oil or other suitable liquid is sprayed in
atomised form by means of a jet of [CO2 or N2 gas] under
pressure on to a surface sufficiently heated as to cause an
immediate vaporisation of the liquid.” Id. p. 1 ll. 26–31.
This “vapour . . . [is] propelled along . . . [and] cooled
again by the expanding gas.” Id. p. 1 ll. 31–34. The
cooled liquid condenses to form a heavy fog or mist. Id. p.
2 ll. 37–38. Using inert gas to propel and cool the vapor-
ized liquid is advantageous “because its presence greatly
reduces any tendency to ignition of the vapour should the
liquid medium be one of an inflammable nature.” Id. p. 2
ll. 42–47.
D. 1999 Website
Applications for the Smoke Generator, published on
the Internet in 1999, disclose potential uses of smoke
generators sold by third party, Corona Integrated Tech-
nologies, Inc. J.A. 1038–41 (“the 1999 Website”). The
1999 Website discloses that smoke generators produce a
non-hazardous, thermal fog, which could be used for leak
testing. J.A. 1039–40. In particular, the 1999 Website
explains that “[o]ur smoke machines have been used to
detect leaks in a broad range of systems, including asbes-
tos enclosures, flues and chimneys, luggage holds of
aircraft and ships, freight containers, vehicles and drain-
age and fire sprinkler systems.” J.A. 1039.
III. Proceedings
In January 2013, Redline filed a corrected IPR Peti-
tion with the PTAB, requesting review of claims 9 and 10
of the ’808 patent. 1 This IPR was instituted on July 1,
1 The ’808 patent underwent two ex parte reexami-
nations. The first ex parte reexamination certificate
issued in July 2011: (1) claim 9 was patentable as amend-
ed; (2) new claim 10 was added and determined to be
patentable; and (3) claims 1–8 were not reexamined. The
8 REDLINE DETECTION, LLC v. STAR ENVIROTECH, INC.
2013. On July 30, 2013, Redline filed a Motion for Sup-
plemental Disclosure of New Exhibits, requesting submis-
sion of four pieces of evidence. In August 2013, the PTAB
denied Redline’s request to submit supplemental infor-
mation and expunged the submitted evidence from the
record. The PTAB subsequently issued its Final Decision
on June 30, 2014, finding Redline failed to prove by a
preponderance of the evidence that claims 9 and 10 of the
’808 patent would have been: (1) obvious over Gilliam and
Stoyle; and (2) obvious over Gilliam, Pauley, and the 1999
Website. Redline timely appealed. Pursuant to 35 U.S.C.
§ 143 (2012), the Director of the USPTO intervened in
March 2015. This court has jurisdiction to review the
PTAB’s Final Decision under 28 U.S.C. § 1295(a)(4)(A)
(2012) and 35 U.S.C. § 141(c) (2012).
DISCUSSION
I. USPTO’s Interpretation of its Regulations Accords With
Law
On appeal, Redline argues the PTAB erred in denying
its motion to submit supplemental information for three
reasons. First, Redline argues the regulatory history of
37 C.F.R. § 42.123 demonstrates the USPTO has already
incorporated its statutory mandate into the three tier
scheme of subsections (a) through (c) of that regulation
and, thus, the PTAB cannot “mix and match” these re-
quirements at its discretion. Second, Redline argues the
plain language of § 42.123(a) precludes the imposition of
any additional criteria beyond the plain language of the
regulation. Finally, Redline argues the PTAB’s decision
was arbitrary and capricious because Petitioners in other
IPR proceedings were allowed to submit supplemental
information. We address each argument in turn.
second ex parte reexamination certificate issued in May
2012 with no amendments to the patent.
REDLINE DETECTION, LLC v. STAR ENVIROTECH, INC. 9
A. Deference Is Accorded to the PTAB’s Interpretation of
USPTO Regulations
This court accepts the PTAB’s “interpretation of
[USPTO] regulations unless that interpretation is ‘plainly
erroneous or inconsistent with the regulation,’” In re
Sullivan, 362 F.3d 1324, 1326 (Fed. Cir. 2004) (citations
omitted), or conflicts with the USPTO’s “intent at the time
of the regulation’s promulgation,” Gardebring v. Jenkins,
485 U.S. 415, 430 (1988). We review the PTAB’s decision
of how it manages its permissive rules of trial proceedings
for an abuse of discretion. Eli Lilly & Co. v. Bd. of Re-
gents of Univ. of Wash., 334 F.3d 1264, 1266 (Fed. Cir.
2003). “An abuse of discretion occurs if the decision (1) is
clearly unreasonable, arbitrary, or fanciful; (2) is based on
an erroneous conclusion of law; (3) rests on clearly erro-
neous fact findings; or (4) involves a record that contains
no evidence on which the Board could rationally base its
decision.” Abrutyn v. Giovanniello, 15 F.3d 1048, 1050–51
(Fed. Cir. 1994) (citing Heat & Control, Inc. v. Hester
Indus., Inc., 785 F.2d 1017, 1022 (Fed. Cir. 1986)).
B. Relevant Legal Authority
Congress’s enactment of the Leahy-Smith America
Invents Act (“AIA”), Pub. L. No. 112–29, § 6(a)–(c), 125
Stat. 284, 299–305 (2011) (codified in part at 35 U.S.C.
§§ 311–319) replaced inter partes reexamination with IPR
for requests filed on or after September 16, 2012. Com-
pare 35 U.S.C. §§ 311–318 (2006), with 35 U.S.C. §§ 311–
319 (2012). 2 The AIA authorized the USPTO to promul-
gate regulations governing the administration of IPR
proceedings. See 35 U.S.C. § 316(a)(3)–(4) (“The Director
2 Any discussion in this opinion of IPRs, and corre-
sponding citations to 35 U.S.C. §§ 311–319, shall refer to
the statutory provisions effective on or after September
16, 2012.
10 REDLINE DETECTION, LLC v. STAR ENVIROTECH, INC.
shall prescribe regulations . . . establishing procedures for
the submission of supplemental information after the
petition is filed; [and] establishing and governing [IPR]
under this chapter and the relationship of such review to
other proceedings under this title.”). The AIA also re-
quires consideration of “the effect of any such regulation
on,” among other things, “the efficient administration of
the Office[] and the ability of the Office to timely complete
proceedings instituted under this chapter.” Id. § 316(b).
Consistent with Congress’s mandate, the USPTO
promulgated general regulations governing the PTAB’s
trial practices, 37 C.F.R. Part 42, Subpart A, in addition
to specific regulatory requirements for IPR proceedings,
37 C.F.R. Part 42, Subpart B. These regulations encour-
age Petitioners “to submit all of the evidence that sup-
ports the ground of unpatentability asserted in the
petition” within the time period proscribed in 37 C.F.R.
§ 42.123(a), (b), or (c). Changes to Implement Inter Partes
Review Proceedings, Post-Grant Review Proceedings, and
Transitional Program for Covered Business Method Pa-
tents, 77 Fed. Reg. 48,680, 48,708 (U.S. Patent & Trade-
mark Office Aug. 14, 2012) (“Final Rule”) (to be codified at
37 C.F.R. pt. 42); see also Office Patent Trial Practice
Guide, 77 Fed. Reg. 48,756, 48,763 (U.S. Patent &
Trademark Office Aug. 14, 2012) (“[A] petitioner must
identify each claim that is challenged and the specific
statutory grounds on which each challenge to the claim is
based, provide a claim construction for the challenged
claims, and state the relevance of the evidence to the
issues raised.” (citing in part 37 C.F.R. § 42.104)).
The AIA authorizes the filing of supplemental infor-
mation with the PTAB during the course of an IPR, 35
U.S.C. § 316(a)(3), and the USPTO promulgated regula-
tions pursuant to that authority. In particular, Section
42.123(a) states:
REDLINE DETECTION, LLC v. STAR ENVIROTECH, INC. 11
Motion to submit supplemental information.
Once a trial has been instituted, a party may file a
motion to submit supplemental information in ac-
cordance with the following requirements:
(1) A request for the authorization to file a motion
to submit supplemental information is made with-
in one month of the date the trial is instituted.
(2) The supplemental information must be rele-
vant to a claim for which the trial has been insti-
tuted.
37 C.F.R. § 42.123(a) (emphases added). Subsection (b)
provides for submitting supplemental information later
than one month after the date the trial is instituted. Id.§ 42.123(b). Subsection (c) provides for the submission of
supplemental information that is not relevant to an
instituted claim. Id. § 42.123(c). Under subsections (b)
and (c), the party must show “why the supplemental
information reasonably could not have been obtained
earlier, and that consideration of the supplemental infor-
mation would be in the interests-of-justice.” Id.
§ 42.123(b), (c).
The PTAB’s decision to admit supplemental infor-
mation is also informed by 37 C.F.R. Part 42, Subpart A.
See 37 C.F.R. § 42.100(a) (“An [IPR] is a trial subject to
the procedures set forth in subpart A of this part.”).
Subpart A requires USPTO regulations “be construed to
secure the just, speedy, and inexpensive resolution of
every proceeding.” 37 C.F.R. § 42.1(b); see also 35 U.S.C.
§ 316(b). Consistent with this regulation, the USPTO has
authorized the PTAB to “determine a proper course of
conduct in a proceeding for any situation not specifically
covered by this part and may enter non-final orders to
administer the proceeding.” 37 C.F.R. § 42.5(a). The
PTAB may also “waive or suspend a requirement of
part[] . . . 42 [Trial Practice Before the PTAB] and may
12 REDLINE DETECTION, LLC v. STAR ENVIROTECH, INC.
place conditions on the waiver or suspension.” Id.§ 42.5(b).
C. The PTAB’s Interpretation of 37 C.F.R. § 42.123 is
Consistent with the Regulatory History and Is Not Plain-
ly Erroneous
1. Section 42.123(a) Does Not Preclude Consideration of
Additional Criteria Beyond Timing and Relevance
The PTAB found Redline’s IPR Petition did not rely
on an expert declaration in support of its position. J.A. 4
(PTAB Order–Conduct of the Proceeding); see also J.A.
1078–1142 (corrected petition to institute IPR). Rather,
Redline’s Motion for Supplemental Disclosure of New
Exhibits sought to introduce four new exhibits: (1) a sixty-
page declaration of Redline’s expert, Dr. Michael St.
Denis; (2) the resume of Dr. St. Denis; (3) U.S. Patent No.
3,250,723; and (4) U.S. Patent No. 3,432,439. J.A. 2. The
PTAB denied Redline’s Motion, noting Redline did not
make “any attempt to justify the submission of an expert
declaration after filing its petition and after a decision to
institute has been made except to note that the move was
cost effective . . . .” 3 J.A. 4. The PTAB also found that
Redline did not allege “any of the arguments or evidence
in the newly submitted declaration [was] information that
reasonably could not have been submitted with the Peti-
tion.” J.A. 4. “The [PTAB] chose two of twelve grounds
proposed by Redline, thus Redline could have submitted
expert opinion testimony to support those grounds with
the petition itself.” J.A. 4; see also J.A. 1431 (Redline
3 During oral argument, Redline reaffirmed nothing
prevented it from submitting the supplemental infor-
mation with its Petition. The “rationale was one of cost
savings primarily the driving factor . . . .” Oral Argument
at 2:25–42, http://oralarguments.cafc.uscourts.gov/default.
aspx?fl=2015-1047.mp3 (Counsel for Redline).
REDLINE DETECTION, LLC v. STAR ENVIROTECH, INC. 13
admitted to the PTAB it intentionally delayed filing this
information because “submission of the declaration at this
point [after institution of the IPR] makes things far less
complex than had [Redline] had an expert opine as to all
12 grounds as originally submitted in our petition”). The
PTAB concluded Redline did not establish a sufficient
basis for submitting new evidence and its “‘supplemental
evidence’ is in essence something more than just supple-
mental evidence.” J.A. 5.
The PTAB determined “nothing in 37 C.F.R. § 42.123requires that a request to submit supplemental infor-
mation satisfying these two criteria [,i.e., timeliness and
relevance,] automatically be granted no matter the cir-
cumstance.” J.A. 18 (citation omitted). Rather, the
USPTO regulations dictate “[a] party filing a motion has
the burden of proof to establish that it is entitled to the
requested relief.” J.A. 18 (citing 37 C.F.R. § 42.20). “This
is so, no matter the requested relief.” J.A. 18 (emphasis
added). The PTAB emphasized “the Board decides such
motions in view of its mandate to ensure the efficient
administration of the Office and the ability of the Office to
complete IPR proceedings in a timely manner.” J.A. 18–
19. The PTAB also stated whether the Board grants a
motion to submit supplemental information also “de-
pend[s] upon the Board’s determination that, in its discre-
tion, the action sought by the movant is consistent with
the Board’s statutory mandate.” J.A. 19.
On appeal, Redline argues “the regulatory history of
[37 C.F.R.] § 42.123 shows that the [USPTO] has already
incorporated its statutory mandate into the three tier
scheme of subsections (a)–(c)” of that regulation. Appel-
lant’s Br. 45 (capitalization and emphasis omitted).
Redline contends the USPTO cannot consider factors
articulated in subsections (b) and (c) if the timeliness and
relevance conditions in subsection (a) are satisfied.
According to Redline, this tiered rule “reflects a balance of
interests expressed in agency notice-and-comment rule-
14 REDLINE DETECTION, LLC v. STAR ENVIROTECH, INC.
making.” Id. at 45. Redline alleges Comments 91–93 of
the regulatory history “presumptively established that the
timeliness and relevance requirements of §42.123(a) alone
were sufficient to meet the [PTAB’s] statutory mandate
for economy, integrity, efficient administration, and
timely consideration of IPRs.” Id. at 45–46 (citing 35
U.S.C. § 316(b)). Redline also argues the omission of the
37 C.F.R. § 42.123(b) and (c) limitations from § 42.123(a)
offers further support for its hierarchical interpretation of
the regulation. Id. at 46. According to Redline, this
arrangement “clearly evidences an intent on the part of
the rulemaking body that those factors were not meant to
be considered for submissions under § 42.123(a), and
instead the sole criteria for admission were those in the
plain language of the regulation.” Id. Because all three
subsections were adopted in the same rulemaking session,
Redline argues this lends “strength to the infer-
ence . . . [that] timeliness and relevance[] formed the sole
basis for evaluating submissions under [§ 42.123(a)].” Id.
at 48.
Redline’s arguments rely, in part, on rules of statuto-
ry construction—e.g., (1) the exclusion of particular
language from one subsection of a statute that was in-
cluded in other subsections means “it is generally pre-
sumed that Congress acts intentionally and purposefully
in the disparate inclusion or exclusion,” Keene Corp. v.
United States, 508 U.S. 200, 208 (1993) (internal quota-
tion marks and citation omitted); and (2) words that
appear in different statutes that are adopted during the
same legislative session creates a negative implication
that is “strongest when the portions of a statute treated
differently had already been joined together and were
being considered simultaneously when the language
raising the implication was inserted,” Lindh v. Murphy,
521 U.S. 320, 330 (1997) (citation omitted). The Supreme
Court has found that canons of statutory construction “are
not mandatory rules. They are guides that ‘need not be
REDLINE DETECTION, LLC v. STAR ENVIROTECH, INC. 15
conclusive.’” Chickasaw Nation v. United States, 534 U.S.
84, 94 (2001) (quoting Circuit City Stores, Inc. v. Adams,
532 U.S. 105, 115 (2001)). Rather these guides “are
designed to help judges determine the Legislature’s intent
as embodied in particular statutory language.” Id.The PTAB’s interpretation of its governing regula-
tions is not plainly erroneous. Its interpretation of
§ 42.123(a) is consistent with the regulation’s plain lan-
guage and the USPTO’s intent in promulgating § 42.123.
The plain language of § 42.123(a) does not exclude the
application of other general governing regulations. The
guiding principle for the PTAB in making any determina-
tion is to “ensure efficient administration of the Office and
the ability of the Office to complete IPR proceedings in a
timely manner.” J.A. 18–19; see 35 U.S.C. § 316(b).
Requiring admission of supplemental information so long
as it was timely submitted and relevant to the IPR pro-
ceeding would cut against this mandate and alter the
intended purpose of IPR proceedings.
Redline’s interpretation of the regulatory history does
not warrant a different conclusion. For example, Red-
line’s reliance on the USPTO’s response to Comments 91–
93 is flawed. These responses do not conflict with the
USPTO’s intent at the time of the regulation’s promulga-
tion. Further, none of the USPTO’s statements “pre-
sumptively established that the timeliness and relevance
requirements of §42.123(a) alone were sufficient to meet
the [PTAB’s] statutory mandate for economy, integrity,
efficient administration, and timely consideration of
IPRs.” Appellant’s Br. 45–46 (citing 35 U.S.C. § 316(b)).
The USPTO’s statements suggest the PTAB may allow
the submission of supplemental information if certain
conditions are met. Comment 91 addresses the public’s
concern that “the petitioner may intentionally hold back
some evidence which would be unfair to the patent own-
er.” Final Rule, 77 Fed. Reg. at 48,707. In response, the
USPTO said “the patent owner will have sufficient time to
16 REDLINE DETECTION, LLC v. STAR ENVIROTECH, INC.
address any new information submitted by the petitioner,
except in the situation where the party satisfies the
requirements of § 42.123(b) [within thirty days of the
institution of the IPR] . . . .” Id. This statement does not
connote the PTAB must accept supplemental information
so long as it is timely and relevant. Comment 92 notes
“Petitioners are encouraged to set forth their best grounds
of unpatentability and supporting evidence in their peti-
tions, lest the Board not to institute the review or deny
the asserted grounds of unpatentability (§ 42.108(b)).” Id.
at 48,708. Similarly, Comment 93 says the final rule
provides “that a party may seek authorization to file a
motion to submit supplemental evidence relevant to a
claim for which the trial has been instituted within one
month of the date the trial is instituted.” Id. (emphasis
added). These statements do not indicate the PTAB must
accept supplemental information if timely submitted and
relevant.
In sum, nothing in § 42.123 or its regulatory history
expressly states or implies that all elements of the PTAB’s
mandate are incorporated into § 42.123(a) and that it
must be read to the exclusion of the remaining subsec-
tions in that regulation and 37 C.F.R. Part 42, Subpart A.
2. Section 42.123(a) Does Not Prohibit the PTAB from
Exercising Discretion
Redline next argues the plain language of 37 C.F.R.
§ 42.123(a) “establishes a comprehensive scheme that
leaves no room for [the] PTAB to impose its own discre-
tionary requirements.” Appellant’s Br. 41. Rather, it
says, the regulation permits “consideration of two and
only two requirements: timeliness and relevance. If the
regulation permitted the Board to consider or impose
additional criteria, it would by its plain language have
said so.” Id. at 41–42.
In support of this argument, Redline states “[i]t is a
fundamental principle of administrative law that ‘agen-
REDLINE DETECTION, LLC v. STAR ENVIROTECH, INC. 17
cies are bound to follow their own rules, even self-imposed
procedural rules that limit otherwise discretionary deci-
sions.’” Id. at 41 (quoting Hernandez v. Dep’t of Air Force,
498 F.3d 1328, 1332 (Fed. Cir. 2007)). Redline proffers
several IPR decisions where supplemental information
was admitted, stating “[s]everal other [PTAB Panels], in
deciding motions brought under § 42.123(a), have started
and ended their analysis with the plain meaning of this
regulation.” Id. at 42. Redline relies primarily on Pacific
Market International, 4 where the PTAB admitted “exten-
sive expert declaration testimony submitted under
§ 42.123(a) and set[] forth reasons to combine particular
prior art references that formed the underlying basis for
instituting the IPR, precisely as Redline sought to do in
submitting its own expert testimony.” Id. at 43 (citing
Pac. Mkt. Int’l, LLC v. Ignite USA, LLC, IPR2014-00561,
Paper 23 at 3 (P.T.A.B. Dec. 2, 2014)). Redline asserts the
Panel in Pacific Market International “was obligated
under § 42.123(a) to allow the supplemental expert testi-
4 Redline also cites Norman International, Inc. v.
Toti Testamentary Trust, IPR2014-00283, Paper 29
(P.T.A.B. Sept. 29, 2014) (addressing Petitioner’s submis-
sion of supplemental information to confirm the accuracy
of the translation of a Japanese Patent Application Publi-
cation that was submitted in the IPR Petition); Brose
North America v. UUSI, LLC, IPR2014-00416, -417,
Paper 16 (P.T.A.B. Sept. 16, 2014) (addressing Petition-
er’s submission of a U.S. patent and patent publications
for claim construction); and Palo Alto Networks, Inc. v.
Juniper Network, Inc., IPR2013-00369, Paper 37 (P.T.A.B.
Feb. 5, 2014) (addressing Petitioner’s submission of
supplemental information to establish that prior art cited
in the IPR Petition qualified as a prior art printed publi-
cation). Appellant’s Br. 42–43. However, Pacific Market
International presents the scenario most similar to the
present proceeding.
18 REDLINE DETECTION, LLC v. STAR ENVIROTECH, INC.
mony.” Id. at 44. Redline also contends the rationale and
application of § 42.123(a) in Pacific Market International
“is incapable of being reconciled with the decision in this
case.” Id.
Redline’s regulatory interpretation presents a new
facet of the first argument it raised regarding § 42.123,
and it fails for the same reasons discussed above. Its
interpretation requires the PTAB to exclude all other
regulations governing PTAB proceedings and admit
supplemental information so long as the request was
timely made and the information is relevant to the pro-
ceeding. The plain language of § 42.123(a) does not
support such a reading. Nothing within subsection (a)
excludes application of other PTAB regulations. Rather,
timeliness and relevancy provide additional requirements
that must be construed within the overarching context of
the PTAB’s regulations governing IPR and general trial
proceedings. 5 Additionally, the PTAB has discretion to
grant or deny motions as it sees fit. See, e.g., 37 C.F.R.
§ 42.5(a), (b).
5 Redline’s argument on appeal is also inapposite to
its conduct throughout its IPR proceeding. Redline com-
plied with the PTAB’s general requirements without
protest—i.e., demonstrating entitlement to relief within
its Petition, 37 C.F.R. § 42.20, and providing assurances
to the PTAB that its motion was consistent with the
regulations allowing for further evidence before deposition
or testimony is taken, id. § 42.53(d)(2). See J.A. 1430
(transcript from conference call with the PTAB discussing
Redline’s Motion).
REDLINE DETECTION, LLC v. STAR ENVIROTECH, INC. 19
3. The PTAB’s Decision Comports with Other PTAB
Decisions Allowing Supplemental Information and Is Not
Arbitrary and Capricious
Redline next argues “[t]he arbitrary-and-capricious
standard requires an agency to provide an adequate
explanation to justify treating similarly situated parties
differently.” Appellant’s Br. 49 (internal quotation marks
omitted) (quoting In re FCC, 753 F.3d 1015, 1142 (10th
Cir. 2014)). Without an adequate explanation, Redline
contends the PTAB’s decision deviates from its previous
decisions allowing supplemental information. Id. In
support of its argument, Redline relies on Palo Alto
Networks and Pacific Market International. These deci-
sions do not support Redline’s argument that the PTAB
must accept supplemental information so long as it is
timely and relevant.
In Palo Alto Networks, the Petitioner sought to submit
supplemental information that would establish the cited
prior art within the Petition did in fact qualify as a prior
art printed publication. The PTAB found the information
was not intentionally withheld nor did allowing this
information limit the PTAB’s ability to timely complete
the proceeding. Palo Alto Networks, Paper 37 at 4. The
PTAB did agree that it must decide this Motion not solely
on § 42.123 requirements, but also in light of 37 C.F.R.
§ 42.1(b) (i.e., the just, speedy, and inexpensive resolution
of proceedings). Id. Redline relies on this case because
the PTAB determined whether information could have
been obtained earlier was a requirement under
§ 42.123(b) and (c), not (a). Appellant’s Br. 43; see id. at
49–50. Redline also relies on this case because the PTAB
found the submission of the supplemental information
would not prevent the PTAB from satisfying its mandate
under § 42.1(b). Id. at 43.
Redline’s reliance is misplaced. The PTAB in Palo Al-
to Networks found the supplemental information would
20 REDLINE DETECTION, LLC v. STAR ENVIROTECH, INC.
not prevent it from fulfilling its mandate since the “Pa-
tent Owner already [had] possession of the supplemental
information” because it was served “in response to Patent
Owner’s objections” and it is “the same supplemental
information that Petitioner now seeks to submit under
§ 42.123(a).” Palo Alto Networks, Paper 37 at 5. Redline
has not provided any evidence to indicate STAR possessed
the supplemental information it seeks to admit. 6 The
PTAB in Palo Alto Networks also determined the supple-
mental information “Petitioner seeks to submit does not
change the grounds of unpatentability authorized in this
proceeding, nor does it change the evidence initially
presented in the [IPR] Petition to support those grounds
of unpatentability.” Id. at 3. That is not what Redline
did. The PTAB determined, in its Decision on Redline’s
Request for Rehearing, that Redline’s supplemental
information “relates to a ground for which the trial was
instituted, rather than only to a claim of the patent, for
which the trial was instituted.” J.A. 19.
6 Redline failed to follow the proper procedure dur-
ing the IPR proceeding. Once the Petition is filed, the
Petitioner may reply: 1) after institution of the proceed-
ing; and 2) after the patent owner has filed an opposition
to the Petition. See Final Rule, 77 Fed. Reg. at 48,766
(citing 35 U.S.C. § 316(a)(8)). At that time, a petitioner
“may only respond to arguments raised in the correspond-
ing opposition.” Id. at 48,768 (citing 37 C.F.R. § 42.23).
Any new issues raised in the reply will not be considered.
“Examples of indications that a new issue has been raised
in a reply include new evidence necessary to make out a
prima facie case for the patentability or unpatentability of
an original or proposed substitute claim, and new evi-
dence that could have been presented in a prior filing.”
Id.REDLINE DETECTION, LLC v. STAR ENVIROTECH, INC. 21
In Pacific Market International, the Petitioner sought
to submit its expert’s supplemental declaration in support
of its claim of obviousness. Pac. Mkt. Int’l, Paper 1 (IPR
Petition); id. Ex. 1014 (expert declaration relied on in IPR
Petition). The IPR Petition itself was a sixty-page docu-
ment, id. Paper 1, that relied heavily on its expert decla-
ration, which was a separate sixty-eight page document
with claim charts comparing the claims to prior art, id.Ex. 1014. The Supplemental Declaration was a ten-page
declaration that supplements the Petitioner’s claim of
obviousness that was first argued in its IPR Petition. Id.Ex. 1021. The PTAB accepted the supplemental infor-
mation as evidence within the proceeding and determined
the Patent Owner had sufficient time to address the new
information submitted by the Petitioner in its request
made one month from the institution date. Id. Paper 23
at 3. This information was also found not to change
grounds instituted on nor did it change evidence present-
ed in the IPR Petition. Id. at 4.
However, the PTAB stated “[a]lthough a party may
meet the [37 C.F.R. § 42.123] requirements . . . that does
not, itself, guarantee that the motion will be granted.” Id.
at 3 (emphasis added). This provision does not offer “a
routine avenue for bolstering deficiencies in a petition
raised by a patent owner in a Preliminary Re-
sponse. . . . Petitioner should not expect . . . a ‘wait-and-
see’ opportunity to supplement a petition after initial
comments or arguments have been laid out by a patent
owner.” Id. The PTAB, in Pacific Market International,
explicitly relied on § 42.1(b) when conducting its
§ 42.123(a) analysis, emphasizing that the PTAB’s man-
date “is to interpret our Rules ‘to secure the just, speedy,
and inexpensive resolution’ to this proceeding.” Id. at 4
(quoting 37 C.F.R. § 42.1(b)).
Here, Redline asserts its submission of Dr. St. Denis’s
sixty-page declaration was identical to the type of evi-
dence submitted in Pacific Market International and the
22 REDLINE DETECTION, LLC v. STAR ENVIROTECH, INC.
Panel in this instance reached an opposite conclusion,
thus acting in an arbitrary and capricious manner.
Appellant’s Br. 50–51. Redline’s opening brief presents
Pacific Market International as the case that is most
similar to its case because the PTAB admitted “extensive
expert declaration testimony submitted under § 42.123(a)
and set[] forth reasons to combine particular prior art
references that formed the underlying basis for instituting
the IPR, precisely as Redline sought to do in submitting
its own expert testimony.” Id. at 43 (citing Pac. Mkt. Int’l,
Paper 23 at 3). Redline asserts the Panel in Pacific
Market International “was obligated under § 42.123(a) to
allow the supplemental expert testimony.” Id. at 44.
Further, Redline contends, the rationale and application
of § 42.123(a) in Pacific Market International “is incapable
of being reconciled with the decision in this case.” Id.
Redline’s characterization of Pacific Market Interna-
tional is inaccurate and misleading. The Panel’s decision
expressly stated 37 C.F.R. § 42.123(a) is not a routine
avenue to pursue, nor does the regulation require an
automatic acceptance of, supplemental information. See
Pac. Mkt. Int’l, Paper 23 at 3. This is the exact opposite of
having an obligation to allow the supplementary infor-
mation. Redline fails to appreciate the stark difference
between the short, supplemental expert report, which the
PTAB reasonably permitted in Pacific Market Interna-
tional, and its de novo expert report submitted for the
first time. Pacific Market International is inapposite.
II. The PTAB Did Not Err in Finding that Redline Failed
to Prove the ’808 Patent Would Have Been Obvious over
the Cited Prior Art
A. Standard of Review and the Legal Standard for Obvi-
ousness
We review the PTAB’s factual findings for substantial
evidence and its legal conclusions de novo. Rambus Inc.
v. Rea, 731 F.3d 1248, 1251 (Fed. Cir. 2013). “A finding is
REDLINE DETECTION, LLC v. STAR ENVIROTECH, INC. 23
supported by substantial evidence if a reasonable mind
might accept the evidence to support the finding.” K/S
Himpp v. Hear-Wear Techs., LLC, 751 F.3d 1362, 1364
(Fed. Cir. 2014) (citation omitted); see also In re Gartside,
203 F.3d 1305, 1312 (Fed. Cir. 2000). “If the evidence in
[the] record will support several reasonable but contradic-
tory conclusions, we will not find the Board’s decision
unsupported by substantial evidence simply because the
Board chose one conclusion over another plausible alter-
native.” In re Jolley, 308 F.3d 1317, 1320 (Fed. Cir. 2002).
A patent claim should be held to have been obvious
and therefore invalid “if the differences between the
subject matter sought to be patented 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 [(“PHOSITA”)] to which
said subject matter pertains.” 35 U.S.C. § 103(a). 7
Whether a claimed invention is unpatentable as obvious
is a question of law that is reviewed de novo, based on
underlying findings of fact reviewed for substantial evi-
dence. In re Gartside, 203 F.3d at 1316. These underly-
ing factual inquiries include: (1) the scope and content of
the prior art; (2) differences between the prior art and the
claims at issue; (3) the level of ordinary skill in the perti-
nent art; and (4) secondary considerations of non-
obviousness, such as commercial success, long felt but
unsolved needs, failure of others, and unexpected results.
Graham v. John Deere Co. of Kan. City, 383 U.S. 1, 17–18,
30 (1966).
7 In passing the AIA, Congress amended section
103. See Pub. L. No. 112-29, § 3(c), 125 Stat. at 287.
However, because the ’808 patent application was filed
before March 16, 2013, the pre-AIA § 103(a) applies. See
id., § 3(n)(1), 125 Stat. at 293.
24 REDLINE DETECTION, LLC v. STAR ENVIROTECH, INC.
When asserting that a claimed invention would have
been obvious, that party “must demonstrate by clear and
convincing evidence that a skilled artisan would have had
reason to combine the teaching of the prior art references
to achieve the claimed invention, and that the skilled
artisan would have had a reasonable expectation of suc-
cess from doing so.” PAR Pharm., Inc. v. TWI Pharm.,
Inc., 773 F.3d 1186, 1193 (Fed. Cir. 2014) (internal quota-
tion marks and citations omitted). “Whether such a
motivation has been demonstrated is a question of fact”
reviewed for substantial evidence. Medichem, S.A. v.
Rolabo, S.L., 437 F.3d 1157, 1164–65 (Fed. Cir. 2006).
B. Redline Waived Its Arguments Regarding PTAB’s
Determination of the PHOSITA’s Skill Level
The PTAB rejected Redline’s unsupported oral argu-
ment that a PHOSITA “must have experience, education,
and knowledge specific to the United States.” Final
Decision at 16. Instead, the PTAB adopted the PHOSITA
definition offered by STAR’s expert, Dr. M. David Check-
el, who explained that a PHOSITA in the area of “motor
vehicle engine diagnosis and repair, including [evapora-
tive emission control (“EVAP”)] system leak detection
methods, at the time of the filing of the ’808 patent[]
possessed a range of educational and professional experi-
ence, with more education demanding less professional
experience.” 8 Id. at 17. Redline declined to rebut STAR’s
8 Dr. Checkel’s declaration stated that, at the time
the ’808 patent was filed, not many technicians
focused solely on evaluating and developing diag-
nostic systems for the EVAP systems, [such that]
the person of ordinary skill would have had expe-
rience developing diagnostic and repair tools for
engine systems in general. . . . The professional
experience possessed by the ordinary artisan
REDLINE DETECTION, LLC v. STAR ENVIROTECH, INC. 25
definition of a PHOSITA by submitting rebuttal expert
testimony in its reply, after it reviewed STAR’s expert
declaration. See 37 C.F.R. §§ 42.23 (opposition and re-
plies), 42.53(b)(1) (taking testimony).
On appeal, Redline argues the PTAB did not “apply
[the PHOSITA] definition in the context of an obviousness
analysis . . . [and did not] consider the common sense or
creativity of a person skilled in the art.” Appellant’s Br.
54. However, STAR correctly notes the PTAB “spent a
considerable amount of time at the Oral Hearing, as well
as several pages of its Final Decision, [defining a
PHOSITA].” Appellee’s Br. 48 (citing Final Decision at
14–17). The PTAB noted Redline argued for a different
PHOSITA standard, but “provide[d] no persuasive alter-
native.” Final Decision at 16. Now on appeal, Redline is
arguing for the application of a different PHOSITA
standard. These arguments are based upon information
appended to Redline’s Motion for Supplemental Disclo-
sure of New Exhibits that the PTAB excluded. They were
would thus have included experience in engine di-
agnosis and repair, including at least some expe-
rience with EVAP systems and other emission
systems. . . . The ordinary artisan would also
have had a limited understanding of the chemis-
try of combustion and the characteristics of hydro-
carbon based fuel.
According to Dr. Checkel, for the person of ordi-
nary skill who held a high school diploma, the
amount of relevant professional experience would
be seven to ten years, while those with more edu-
cational experience would require correspondingly
less years of professional experience.
Final Decision at 15 (quoting Redline Detection, Paper 41
at 29).
26 REDLINE DETECTION, LLC v. STAR ENVIROTECH, INC.
thus not made to the PTAB and are improper on appeal.
Because this court’s review of the PTAB’s decision “is
confined to the ‘four corners’ of that record[,] . . . it is
important that the applicant challenging a decision not be
permitted to raise arguments on appeal that were not
presented to the [PTAB].” In re Watts, 354 F.3d 1362,
1367 (Fed. Cir. 2004). We hold Redline’s arguments
waived and need not address them.
C. Substantial Evidence Supports the PTAB’s Determina-
tion of the Scope and Content of the Prior Art
1. The PTAB Considered the Prior Art as a Whole
Redline argues on appeal that the PTAB failed to con-
sider the prior art as a whole, but rather considered
teachings from only four references. Redline contends the
Board failed to consider the following submitted prior art
references: (1) Research and Testing, Aircraft Engineering
& Aerospace Tech., Jan. 1969, Vol. 41, Issue 1, p. 44 (“AE
Article”) (J.A. 1002) and (2) T. Dunnington, High Temper-
ature Smoke Training—the Way Forward, Indus. Fire J.,
56 (Dec. 1995–Jan. 1996) (“IJF Article”) (J.A. 1009).
Appellant’s Br. 57.
The PTAB, in fact, considered these references. In its
decision to institute the IPR, the PTAB rejected redun-
dant grounds. It noted that Redline “acknowledge[d] that
the teachings of some of these additional references are
themselves redundant.” J.A. 1294. The sentence imme-
diately following this statement discussed prior art refer-
ences submitted by Redline, including the “‘IFJ Article
describing the ViCount smoke system of the AE Article[].’”
J.A. 1294; see J.A. 110.
What is more, Redline raised these prior art refer-
ences during oral argument at the PTAB while discussing
other alleged prior art and cited them in its reply brief to
the PTAB during its discussion of the prior art. See J.A.
3757 (oral argument), 3500 (reply). The PTAB also cited
REDLINE DETECTION, LLC v. STAR ENVIROTECH, INC. 27
to the portion of Redline’s reply brief in its Final Decision.
Final Decision at 24. Thus, the record demonstrates the
references certainly were considered by the PTAB.
2. Substantial Evidence Supports the PTAB’s Analysis of
Gilliam, Stoyle, Pauley, and the 1999 Website
On appeal, Redline contends the PTAB improperly ex-
cluded its supplemental information and therefore its
motivation to combine analysis, and ultimate obviousness
determination, is incomplete and, therefore, improper.
The PTAB’s “findings could not be made if the excluded
declaration of Dr. St. Denis was entered.” Appellant’s Br.
51. Redline also argues that the PTAB otherwise erred in
its motivation to combine analysis. Id. at 58–60. We
address each argument in turn.
a. The PTAB’s Factual Findings for Gilliam, Stoyle,
Pauley, and the 1999 Website
The grounds on which the PTAB instituted the IPR
were based on Redline’s assertions that independent
claim 9 and dependent claim 10 were unpatentable under
35 U.S.C. § 103(a) over: (1) Gilliam and Stoyle, Final
Decision at 17; and (2) Gilliam, Pauley, and the 1999
Website, Final Decision at 27. Based on the record before
it, the PTAB determined what each reference taught and
determined whether a PHOSITA would have been moti-
vated to combine these references. Substantial evidence
supports the PTAB’s factual findings.
The PTAB found “Gilliam does not teach or suggest
the use of inert gas to create an inert environment in the
closed smoke-producing chamber, as a combustion-
prevention alternative.” Final Decision at 21. In reach-
ing this finding, the PTAB stated Gilliam preferably uses
a smoke-producing fluid that is non-flammable and non-
toxic. Id. at 19 (citing Gilliam col. 5 ll. 67–68). “When the
smoke-producing fluid comes in contact with ceramic
heating element 11, the smoke-producing fluid vaporizes
28 REDLINE DETECTION, LLC v. STAR ENVIROTECH, INC.
within the chamber 30.” Id. (citing Gilliam col. 6 ll. 34–
36). The PTAB further noted, “[s]moke generated within
chamber 30 is then conveyed via conduit 22 to a particu-
lar automotive system for leak testing.” Id. (citing
Gilliam col. 8 ll. 8–13). Additionally, Gilliam “includes at
least three ways to prevent combustion of a flammable,
smoke producing fluid . . . .” Id. at 20 (citation omitted).
The PTAB found that Stoyle does not “disclose or sug-
gest creating an inert environment during leak-testing of
a closed vacuum system in a motor vehicle, such as an
EVAP system including a fuel tank.” Id. at 25. “Stoyle
does not teach generation of smoke in an inert environ-
ment within a closed smoke-producing chamber, as recit-
ed in claim 9 of the ’808 patent.” Id. at 24 (citation
omitted). Rather, the PTAB found “the generation of
smoke using inert gas in Stoyle is different in type and
location than recited in claim 9 of the ’808 patent.” Id.(citation omitted). Smoke in Stoyle is generated “when a
heated mixture of oil and CO2 is combined with air and
that smoke is not produced within a closed smoke produc-
ing chamber.” Id. at 25 (citation omitted). Additionally,
the PTAB agreed with Dr. Checkel that smoke produced
by flash evaporation and pressure would be inappropriate
and dangerous to use in a closed EVAP system. Id. at 25–
26 (citing J.A. 2055–56).
The PTAB found that Pauley “teaches the use of [CO2
or N2 gas] as a medium for atomizing and propelling fog,
smoke, or mist forming liquid in order to reduce, but not
necessarily to prevent, any risk of ignition.” Id. at 27(citation omitted). Relying on Dr. Checkel’s testimony,
the PTAB found that “Pauley does not teach or suggest
creating an inert environment within a closed smoke-
producing chamber, but rather teaches combining an inert
gas with air to generate smoke in an open tube.” Id. at 30(citation omitted). While “Pauley teaches the presence of
inert gases ‘reduces to a minimum any tendency to igni-
tion of the vapour should the liquid employed be of an
REDLINE DETECTION, LLC v. STAR ENVIROTECH, INC. 29
inflammable nature,’” this in itself “does not prevent
ignition of the flammable fluid, ‘as would be the case in an
inert environment within a closed chamber.’” Id. (cita-
tions omitted).
The PTAB determined that the 1999 Website suggests
“only that vehicles may be leak tested using the Corona
smoke machine described therein.” Id. at 27 (internal
quotation marks and citation omitted).
b. Motivation to Combine Gilliam and Stoyle
The PTAB determined a PHOSITA would have had no
reason “to substitute Stoyle’s use of inert gas, forced into
the narrow compressed space between a bore and a plug,
in place of the air used in Gilliam’s temperature-
regulated, spark arrestor-governed system to generate
smoke in a closed smoke-producing chamber.” Id. at 22(citation omitted). The PTAB found there was no rational
underpinning to combine Gilliam and Stoyle to achieve
the invention recited in claim 9 of the ’808 patent. Id.The PTAB also noted that its analysis is applicable to
both independent claim 9 and dependent claim 10 of the
’808 patent. “Claim 10 recites that the method of claim 9
comprises ‘the additional step of regulating the pressure
at which the smoke is carried by said non-combustible gas
from said closed smoke producing chamber to the closed
system undergoing testing.’” Id. at 26 (quoting ’808
patent col. 2 ll. 28–31); see also J.A. 158 (ex parte reexam-
ination certificate adding claim 10 to the ’808 patent).
Redline argued to the PTAB that Gilliam teaches all
limitations of claims 9 and 10 of the ’808 patent, “except
[that Gilliam uses] air instead of inert gas to generate
smoke and carry that smoke to the systems being tested.”
Id. at 17 (alteration in original) (internal quotation marks
and citation omitted). Redline argued the reason to
combine these references is the “disclosure of the safety
advantages of Stoyle’s mist or smoke produced with an
inert gas, i.e., [CO2 gas], and Gilliam’s cautions about the
30 REDLINE DETECTION, LLC v. STAR ENVIROTECH, INC.
dangers of the introduction of flammable smoke into
tested systems.” Id. at 23 (citation omitted).
The PTAB rejected Redline’s arguments because it
found they were not supported with declaration testimo-
ny, “and the inferences [Redline] attempt[ed] to draw
from statements made in Gilliam and Stoyle [were] rebut-
ted effectively by [STAR’s expert] . . . .” Id. at 24 (cita-
tions omitted). After reviewing the record and the
unrebutted testimony of STAR’s expert, the PTAB deter-
mined Redline failed to provide sufficient evidence to
show a PHOSITA would “have had reason to substitute
the air used in Gilliam with inert gas alone from the
mixture disclosed in Stoyle to achieve the invention
recited in claim 9.” Id. at 25.
On appeal, Redline argues a PHOSITA “would be fa-
miliar with Gilliam’s smoke machines to test for EVAP
system leaks and the risks associated therewith.” Appel-
lant’s Br. 58 (capitalization and emphasis omitted). It
contends that a PHOSITA would have understood the
teachings of Gilliam, such that smoke could be created
and used to test systems for leaks. Id. Redline further
argues a PHOSITA would have understood that Gilliam’s
prior art “expressly warns of the potential for gasoline
vapors to explode.” Id. As such, a “skilled artisan would
also know that at least as early as 1950[] it was known
that one could generate a non-flammable smoke that
eliminates the risk of explosion by vaporizing an oil with
an inert gas . . . .” Id. at 59. Thus, Redline contends “[a]s
a matter of common sense, [a PHOSITA as defined by the
PTAB] . . . would [have] unquestionably [understood] the
risk of explosion inherent to gasoline vapors, and would
[have] be[en] motivated to exercise ordinary creativity
and common sense to minimize such risk” and combine
known and readily available alternatives. Id. at 58–59.
Substantial evidence supports the PTAB’s determina-
tion that there was no motivation to combine Gilliam and
REDLINE DETECTION, LLC v. STAR ENVIROTECH, INC. 31
Stoyle. The PTAB determined that Gilliam teaches the
combustion of a smoke producing fluid in an oxygen
environment. Final Decision at 19. Dr. Checkel’s decla-
ration supports this finding, demonstrating that Gilliam’s
combustion does not work without oxygen. “Based on the
education and experience of the person of ordinary skill in
the field in July 1999, this person would have understood
that smoke is generally the product of combustion.” J.A.
2049 ¶ 123. “And the teachings of Gilliam would confirm
to this person that Gilliam’s methods involved at least
some combustion” through the vaporization of smoke-
generating fluid. J.A. 2049. During IPR proceedings,
Redline acknowledged that Gilliam does not disclose the
use of inert gas to create an inert environment for pre-
venting ignition within the smoke producing chamber.
Final Decision at 20.
The PTAB also determined that Stoyle uses high
pressure and temperature to flash evaporate oil to gener-
ate smoke. Id. at 25 (quoting J.A. 2054–55 ¶ 136).
Stoyle’s high pressure is achieved using CO2 gas that is
forced through narrow passages in the heated assembly.
J.A. 2055 ¶ 136. The superheated oil is “released to
ambient conditions where it undergoes flash evaporation,
forming oil vapor which is condensed to form a mist of
droplets.” J.A. 2055 ¶ 136 (footnote omitted). A
PHOSITA “would not look to Stoyle to supply any missing
features” because “the smoke-generating methods are
materially different and are used for materially different
purposes.” J.A. 2054 ¶ 135.
The PTAB properly found that Gilliam and Stoyle,
taken together, generate smoke via differing methods and
thus, could not be combined to achieve the claimed inven-
tion recited in claims 9 and 10 of the ’808 patent. A
PHOSITA in July 1999 would have no reason to remove
the ambient air from Gilliam and replace it with inert gas
from Stoyle. Stoyle relies on high temperature and pres-
sure. Gilliam relies on vaporizing fluid in an oxygen
32 REDLINE DETECTION, LLC v. STAR ENVIROTECH, INC.
environment. Both of these methods can damage closed
EVAP systems with volatile compounds.
c. Motivation to Combine Gilliam, Pauley, and the 1999
Website
The PTAB determined that a PHOSITA would have
had no “reason to substitute the air used in Gilliam with
the inert gas from the mixture of air and inert gas dis-
closed in Pauley’s open-tube, theatrical effects system for
generating smoke in air to achieve the invention recited
in claim 9 [of the ’808 patent].” Final Decision at 31.
On appeal, Redline argues Pauley “shows that it was
known well before July 1999 that an inflammable smoke
may be created by vaporizing an oil in an inert gas envi-
ronment, and that inflammable smoke may be used in a
wide variety of commercial applications . . . .” Appellant’s
Br. 59. Redline states the smoke in Pauley can be used in
theatrical effects, firefighter training, and even “automo-
tive leak detection systems.” Id. (citation omitted).
Redline’s previously discussed arguments on appeal
regarding Gilliam are also applicable under this motiva-
tion to combine argument. Redline does not offer any
arguments on appeal regarding the motivation to combine
the 1999 Website. Thus, the PTAB’s determination that
“[t]he 1999 Website adds little to the asserted combina-
tion of Gilliam and Pauley,” is uncontested. Final Deci-
sion at 27.
Substantial evidence supports the PTAB’s determina-
tion that there was no motivation to combine Gilliam,
Pauley, and the 1999 Website. Dr. Checkel’s declaration
stated “the inert gas [in Pauley] is only provided to atom-
ize the glycerine or oil, propel it against the heating
element and reduce the tendency to ignition in the region
of the hot element.” J.A. 2066 ¶ 160. “[U]se of an inert
gas ‘reduces to a minimum’ the tendency to ignition—
rather than eliminating the tendency—suggest[ing] to a
person of ordinary skill that the smoke generation method
REDLINE DETECTION, LLC v. STAR ENVIROTECH, INC. 33
is not in an inert environment and needs some ambient
air or oxygen.” J.A. 2066 ¶ 161 (footnote omitted). Pauley
requires ambient air to work for its intended purpose,
otherwise “[a] purely inert smoke mixture, produced
without entraining ambient air[,] would produce an
anoxic environment . . . present[ing] a hazard to the
actors and audience.” J.A. 2067 ¶ 163 (footnote omitted).
The PTAB accordingly determined “the use of inert gas in
Pauley is different in type and location from that recited
in claim 9 of the ’808 patent.” Final Decision at 31.
Both Pauley and Gilliam require air to produce smoke
in accordance with their disclosed inventions. But, “nei-
ther Pauley nor Gilliam disclose using an inert gas . . . to
prevent ignition and thereby avoid the possibility of an
explosion” when using the smoke to test closed EVAP
systems that contain volatile compounds. J.A. 2068
¶ 165. Further, Dr. Checkel’s declaration noted the 1999
Website references “‘vehicle’ in a list including large, open
objects such as chimneys, luggage holds of aircraft and
ships . . . [which] would confirm to a [PHOSITA] that the
smoke machines discussed were intended for large open
objects . . . not the sensitive, hazardous EVAP system in a
vehicle engine.” J.A. 2070 ¶ 169. Based on this testimo-
ny, the PTAB properly determined the 1999 Website did
not teach the use of smoke machines for leak testing
closed EVAP systems. Substantial record evidence sup-
ports the PTAB’s finding there was no motivation to
combine Pauley, Gilliam, and the 1999 Website.
CONCLUSION
Redline’s remaining arguments are unpersuasive.
Accordingly, the decision of the United States Patent and
Trademark Office’s Patent Trial and Appeal Board is
AFFIRMED