Case: 22-1044 Document: 40 Page: 1 Filed: 05/15/2023
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
LAITRAM, LLC,
Appellant
v.
ASHWORTH BROS., INC.,
Cross-Appellant
______________________
2022-1044, 2022-1045, 2022-1084
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2020-
00593, IPR2020-00594.
______________________
Decided: May 15, 2023
______________________
LAUREN J. DREYER, Baker Botts LLP, Washington, DC,
argued for appellant. Also represented by JENNIFER
CARTER, LORI DING, MICHAEL HAWES, Houston, TX.
ROBERT FRANCIS ALTHERR, JR., Banner & Witcoff, Ltd.,
Washington, DC, argued for cross-appellant. Also repre-
sented by JOHN R. HUTCHINS, CHRISTOPHER ROTH.
______________________
Before LOURIE, TARANTO, and HUGHES, Circuit Judges.
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2 LAITRAM, LLC v. ASHWORTH BROS., INC.
HUGHES, Circuit Judge.
Laitram, LLC appeals a decision from the Patent Trial
and Appeal Board that claims 9 and 11–13 of
U.S. Patent
No. 10,023,388 and claims 1–4 of
U.S. Patent No.
10,189,645 are unpatentable as obvious. Ashworth Bros.,
Inc. cross-appeals the Board’s decision that claim 10 of the
’388 patent is patentable over Roinestad and other prior
art. As to the lead appeal, we affirm because the Board cor-
rectly construed the claims and because substantial evi-
dence supports the Board’s factual findings. As to the cross-
appeal, we vacate and remand for the Board to give proper
weight to Ashworth’s arguments and evidence about Roin-
estad as a whole.
I
A
The ’388 and ’645 patents relate to spiral conveyor sys-
tems that include belts that move up and around a central
tower like a spiral staircase. As shown in the side-view
schematic below, the tower or drum (10) of the system spins
around a central axis (12) such that the conveyor belt (20)
is moved along the spinning tower in a spiral fashion.
’388 patent, Fig. 1.
The patents discuss two well-known types of spiral con-
veyors. The first is a friction spiral conveyor, or an
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LAITRAM, LLC v. ASHWORTH BROS., INC. 3
overdrive spiral conveyor. In this type of conveyor, the
spinning central tower presses tightly against the side of
the conveyor belt and the friction between the tower and
the belt naturally pulls the belt forward as the tower spins.
This design requires the tower to spin faster than the con-
veyor belt, and one known feature of a friction drive system
is that the conveyor belt will sometimes “slip” along the
tower. ’388 patent, 1:41–45.
The second type of spiral conveyor is a positive drive
conveyor. Instead of pressing up against the tower itself, a
positive drive conveyor has structures jutting out of the
tower that grab onto a corresponding structure on the side
of the belt. This type of engagement is like a bike chain and
gear, where the bike chain is the pocket-like structure on
the side of the belt and the gear is the tower with positive
drive structures jutting out. While these positive drive sys-
tems do not experience the same “slip” as in friction drive
systems, positive drive systems sometimes have difficulty
“cleanly engaging the belt with and disengaging it from the
drive structure” on the tower.
Id. at 1:41–48.
The ’388 and ’645 patents claim positive drive spiral
conveyor systems with structures called “ridges” that en-
gage with the side of the conveyor belt. These ridges are
vertical bars that extend from top to bottom of the central
tower along similarly vertical drive members. The ridges
have a distance from the vertical axis that varies from the
bottom to the top of the tower. Such variations are achieved
by what the patents call “taper[ing].” ’388 patent, 1:56–67.
Claim 9 of the ’388 patent below is representative of
the claims at issue. Emphasis is added to highlight the dis-
puted terms.
9. A spiral conveyor comprising:
a drive tower extending from a bottom to a top and
rotating about a vertical axis;
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4 LAITRAM, LLC v. ASHWORTH BROS., INC.
a plurality of parallel drive members extending in
length from the bottom to the top of the drive tower;
wherein each of the drive members includes an out-
wardly projecting ridge whose distance from the
vertical axis varies from the bottom to the top of
the drive tower; and
wherein each drive member includes a lower seg-
ment at the bottom of the drive tower and wherein
the ridge in the lower segment is tapered along a
portion of its length;
a conveyor belt positively driven without slip on a
helical path around the drive tower by the ridges of
the drive members engaging an inside edge of the
conveyor belt.
’388 patent, 8:10–24 (emphases added).
B
Both friction and positive drive spiral conveyors were
well-known in the art before the priority date of the pa-
tents. Relevant here are three prior art references disclos-
ing such systems: Pupp, Roinestad, and Roinestad ’430. 1
There is no dispute that Pupp discloses a spiral con-
veyor; the dispute is whether Pupp discloses a positively
driven system. Relevant to this question are figures 5, 6,
and 8 of Pupp (reproduced below). Figure 5 is a schematic
of the drum with the conveyor belt, Figure 6 is a top view
1 U.S. Pat. No. 6,062,375, issued May 16, 2000
(Pupp); U.S. Pat. No. 3,348,659, issued October 24, 1967
(Roinestad); U.S. Pat. No. 4,741,430, issued May 3, 1988
(Roinestad ’430).
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LAITRAM, LLC v. ASHWORTH BROS., INC. 5
of the drum, and Figure 8 shows the “strips” that flank the
side of the drum and contact the conveyor belt.
Similarly, there is no dispute that Roinestad discloses
a friction drive spiral conveyor; the disputes involve the ta-
pering in Figures 1 and 11 (reproduced below) and their
applicability to a positive drive system. Figure 1 shows an
embodiment where “[e]ach of the drums is tapered in the
direction of belt travel axially of the drum.” Roinestad,
5:25–26. Figure 11 shows other possible embodiments in-
cluding both the vertical driving bars and some tapering of
the drum.
Finally, there is no dispute that Roinestad ’430 dis-
closes a “positive drive helical conveyor system,” J.A. 786;
the dispute is whether Roinestad ’430 discloses a positive
drive conveyor without slip. As in the ’388 and ’645 patents,
the Roinestad ’430 system uses rods to engage with corre-
sponding structures on the conveyor belts. These rods run
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6 LAITRAM, LLC v. ASHWORTH BROS., INC.
from the bottom to the top of a spinning central tower and
are spaced around the circumference of the tower.
C
Ashworth filed two inter partes review petitions chal-
lenging claims 9–13 of the ’388 patent and claims 1–4 of
the ’645 patent as unpatentable. The IPR proceedings
raised many of the same issues, and the Board issued sim-
ilar final written decisions in both IPRs. For the ’388 pa-
tent, the Board found claims 9 and 11–13 unpatentable as
obvious over Pupp and Roinestad, but the Board found that
claims 9 and 10 were not obvious over Roinestad and Roin-
estad ’430. Thus, claim 10 of the ’388 patent survived. For
the ’645 patent, the Board found claims 1–4 unpatentable
as obvious.
Laitram appeals the Board’s unpatentability conclu-
sions for claims 9 and 11–13 of the ’388 patent and claims
1–4 of the ’645 patent. Ashworth cross-appeals the Board’s
conclusion that claims 9 and 10 of the ’388 patent are non-
obvious over Roinestad and Roinestad ’430.
II
We set aside the Board’s actions if they are “arbitrary,
capricious, an abuse of discretion, or otherwise not in ac-
cordance with law,” or “unsupported by substantial evi-
dence.”
5 U.S.C. § 706(2). The Board’s legal determinations
are reviewed de novo, and its factual findings are reviewed
for substantial evidence. Arendi S.A.R.L. v. Google LLC,
882 F.3d 1132, 1133 (Fed. Cir. 2018). Claim construction
and obviousness are both questions of law that depend on
underlying findings of fact, which are reviewed for substan-
tial evidence. Teva Pharms. USA, Inc. v. Sandoz, Inc.,
574
U.S. 318, 325–28 (2015); In re Brandt,
886 F.3d 1171, 1175
(Fed. Cir. 2018).
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LAITRAM, LLC v. ASHWORTH BROS., INC. 7
III
On appeal, Laitram makes three primary arguments:
(1) the Board erred in construing and applying the “posi-
tively driven without slip” limitation, (2) the Board erred
in construing and applying the “tapered along a portion of
its length limitation,” and (3) the Board erred in finding
motivation to combine the prior art.
We begin with the “positively driven without slip” lim-
itation. Because the Board did not err in construing the
claim, and because substantial evidence supports the
Board’s findings that Pupp and Roinestad ’430 disclose this
limitation, we affirm.
A
We consider the Board’s claim construction de novo,
giving the claim language its plain and ordinary meaning
in light of a skilled artisan’s understanding of the specifi-
cation and prosecution history. Phillips v. AWH Corp.,
415
F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Here, the
Board properly construed “without slip” to have its plain
and ordinary meaning: “a system in which there is essen-
tially no slip between the conveyor belt and the drive
tower.” J.A. 15. Here, the Board’s construction captures
both the plain and ordinary meaning of “without slip,” and
the meaning used in the specification and prosecution his-
tory. See ’388 patent, 1:41–45 (“Because there is positive
engagement between regularly spaced drive structure on
the cage and regularly spaced edge structure on the inside
edge of the belt, there is no slip as in overdrive systems.”)
(emphasis added); ’645 patent, 1:55–59 (same); see also J.A.
531 (’388 Patent Notice of Allowability) (“The prior art does
not teach or disclose a non-slip spiral conveyor . . . .” (em-
phasis added)). Thus, we agree with the Board’s construc-
tion.
Laitram argues the Board erred because this is a new
construction raised sua sponte by the Board for the first
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8 LAITRAM, LLC v. ASHWORTH BROS., INC.
time in its final written decisions. We disagree. A slight dif-
ference in wording does not amount to a difference in con-
struction. See, e.g., Hamilton Beach Brands, Inc. v. f’real
Foods, LLC,
908 F.3d 1328, 1338–39 (Fed. Cir. 2018)
(“[T]he Board’s final adopted construction of the nozzle
terms, while not identical to those proposed by f’real, are
similar enough to f’real’s proposed constructions so as to
not constitute changing theories midstream in violation of
the APA.”). Here, although the Board slightly varied its
wording in the final written decisions, in effect the Board’s
construction remained the same. In the institution deci-
sions, the Board applied the plain and ordinary meaning of
this term given the intrinsic record, phrasing that meaning
as “a system in which there is no slip between the conveyor
belt and the drive tower.” J.A. 827. In the final written de-
cisions, the Board continued to apply the plain and ordi-
nary meaning based on the same intrinsic record and
reiterated that same meaning: “a system in which there is
essentially no slip between the conveyor belt and the drive
tower.” J.A. 15. The Board’s addition of “essentially” simply
clarified that the plain and ordinary meaning of “without
slip” is not stringent enough to mean there is no slip at all
in any part of the system. Rather, the plain and ordinary
meaning of “without slip” is met where there is no slip in
the system overall, even if an individual piece within that
system experiences slip. This understanding is just as true
under the wording “no slip” as it is under “essentially no
slip.”
Laitram also argues the Board erred by construing
“positive drive” as necessarily having no slip. We disagree.
Expert testimony makes clear that the plain and ordinary
meaning of a “positively driven” system means that the sys-
tem necessarily does not experience slip, and this under-
standing is expressly supported by the patent
specifications. See, e.g., ’645 patent, 1:55–59 (“Because
there is positive engagement between regularly spaced
drive structure on the cage and regularly spaced edge
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LAITRAM, LLC v. ASHWORTH BROS., INC. 9
structure on the inside edge of the belt, there is no slip as
in overdrive systems.” (emphasis added)); ’388 patent,
1:41–45 (same); see also J.A. 1974 at 67:17–20 (“Q. But if
you’re using positive engagement, you’re not going to have
any slip, are you? A. Correct.”); J.A. 975 ¶ 11.
Laitram argues that the Board’s construction is incor-
rect because it renders “without slip” superfluous and that
“without slip” must have independent meaning because it
is not used in all claims that use “positive drive.” We find
neither argument persuasive. Our preference for avoiding
superfluous language is not an inflexible rule—we must
still consider all other principles of claim construction, in-
cluding how a skilled artisan would have understood the
term and how it is used in the specification. SimpleAir, Inc.
v. Sony Ericsson Mobile Commc’ns AB,
820 F.3d 419, 429
(Fed. Cir. 2016). Here, the plain and ordinary meaning of
“positively driven” is supported by the specification and re-
inforced by expert testimony. We decline to use the super-
fluous language canon to arrive at a conflicting conclusion.
Similarly, our claim differentiation doctrine is not a
rigid rule and should not be used to overcome the specifica-
tion’s description of a term. Wi-Lan USA, Inc. v. Apple Inc.,
830 F.3d 1374, 1391 (Fed. Cir. 2016). This is particularly
true here. Laitram argues that “without slip” must have
independent meaning because “positive drive without slip”
is used in claim 9 but only “positive drive” is used in claim
11. But claim 11 does not only drop the “without slip” lan-
guage. It also has a more specific requirement about the
distance between the ridges and the axis of the tower that
is not present in claim 9. Given that there is more than one
meaningful difference between claims 9 and 11, we decline
to apply the claim differentiation doctrine to conclude that
“without slip” has an independent meaning that contra-
dicts how positive drive is described in the specification.
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10 LAITRAM, LLC v. ASHWORTH BROS., INC.
Thus, the Board did not err by concluding that a posi-
tively driven system necessarily has no overall slip.
B
Substantial evidence also supports the Board’s finding
that Roinestad ’430 discloses “a conveyor belt positively
driven without slip.” As discussed above with respect to
claim construction, the evidence relied on by the Board in
finding that a skilled artisan would have understood that
a positive drive system necessarily has no slip includes ex-
pert testimony, the disclosure of Roinestad ’430, and ad-
missions in the patents’ disclosures. J.A. 139–43. The
Board also relied on Roinestad ’430 and expert testimony
in finding that Roinestad ’430 discloses a positive drive sys-
tem. J.A. 217–19. The Board’s conclusion that Roinestad
’430 discloses this limitation is thus supported by substan-
tial evidence.
Laitram does not contest the finding that Roinestad
’430 discloses a positively driven conveyor belt. Rather,
Laitram argues that Roinestad ’430 does not disclose the
“without slip” portion of the limitation. Laitram points to
the following passage in Roinestad ’430 to argue that the
Roinestad ’430 system experiences slip:
Miniscule variances in the speed of the cage 21 rel-
ative to the supplemental drives can be tolerated
by occasional slippage of individual rod ends 14
from engagement with one of the channel legs 48
or 49. Said occasional slippage does not interfere
with the positive character of the drive. When slip-
page at one of the driving bars occurs, the positive
driving engagement of all or most of the remaining
bars is maintained.
Roinestad ’430, 8:42–50 (emphases added).
First, Laitram did not make this argument until its
sur-reply, and so it is forfeited. See, e.g., General Access
Sols., Ltd. v. Sprint Spectrum L.P.,
811 F. App’x 654, 658
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LAITRAM, LLC v. ASHWORTH BROS., INC. 11
n.2 (Fed. Cir. 2020) (citing SmithKline Beecham Corp. v.
Apotex Corp.,
439 F.3d 1312, 1319 (Fed. Cir. 2006) (“Our
law is well established that arguments not raised in the
opening brief are waived.”)). Second, even if this argument
were not forfeited, the Board relied on substantial evidence
in finding that the “occasional slippage” of individual rods
in Roinestad ’430 does not mean that Roinestad ’430 expe-
riences “slip” as used in the patents. The Board reviewed
the language of Roinestad ’430 and correctly found that,
when Roinestad ’430 uses the term “slippage,” it is not do-
ing so to convey the same type of “slip” between the con-
veyor belt and the drive tower described in the patents.
Rather, Roinestad ’430 explains that even if individual rod
ends disengage from or slip out of individual pockets on the
conveyor belt, the system overall does not experience slip.
We agree with this reading of Roinestad ’430 and thus
agree that Roinestad ’430 discloses “without slip,” as con-
strued in subsection III.A.
C
Substantial evidence also supports the Board’s finding
that Pupp discloses “a conveyor belt positively driven with-
out slip.” The Board relied on expert testimony and the dis-
closures of Pupp to support its finding that Pupp discloses
positive drive. E.g., J.A. 42–51 (citing, e.g., Pupp, 1:30–33,
3:3–8, 4:14–36, Figs. 5 and 8; O’Keefe Decl. ¶¶ 13, 58, 79–
81, 83). For example, the Board credited Ashworth’s expert
when finding “one of ordinary skill in the art would view
Pupp’s Figure 8 as implicitly describing ‘positive engage-
ment’ or, as phrased in element 9F, ‘positive[] drive[].’” J.A.
44 (citing O’Keefe Decl. ¶¶ 58, 79–81, 83). This constitutes
substantial evidence supporting the Board’s finding that
Pupp discloses a positive drive system. And, as discussed
above in subsection III.A, the Board properly construed the
limitation such that a positive drive system is necessarily
“without slip.” Thus, the Board did not err by concluding
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12 LAITRAM, LLC v. ASHWORTH BROS., INC.
that Pupp discloses “a conveyor belt positively driven with-
out slip.”
Laitram argues that, because Pupp does not expressly
state that it is a positive drive system, the Board improp-
erly found that positive drive is inherently disclosed in
Pupp. We disagree. A reference need not use the explicit
words required by the claim for the Board to find that a
limitation is disclosed. Instead, the proper inquiry is
whether a skilled artisan, reading Pupp, would have un-
derstood the reference to disclose positive drive. The Board,
relying on expert testimony and the disclosures of Pupp,
properly found that this limitation was disclosed.
We have considered Laitram’s remaining arguments
about “a conveyor belt positively driven without slip” and
find them unpersuasive. For the reasons above, we affirm
the Board’s claim construction and decision that Roinestad
’430 and Pupp disclose “a conveyor belt positively driven
without slip.”
IV
Next, we address the “tapered along a portion of its
length” limitation, which is relevant only to claims 9 and
10 of the ’388 patent. Again, because we agree with the
Board’s claim construction, and because substantial evi-
dence supports the Board’s finding that Roinestad discloses
this limitation, we affirm.
The Board properly construed “the ridge in the lower
segment is tapered along a portion of its length,” to mean
“at least including a change in the distance from the outer
surface of the ‘ridge’ to the axis of rotation of the drive
tower along at least a portion of the ridge’s length.” J.A. 33
(emphases added). This construction reflects the plain and
ordinary meaning of “taper” given the ’388 patent’s entire
disclosure.
The term “taper” is used broadly in the ’388 patent to
refer to at least varying the distance from the ridge to the
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LAITRAM, LLC v. ASHWORTH BROS., INC. 13
vertical axis. For example, the ’388 patent explains that
“[e]ach of the drive members has an outwardly projecting
ridge whose distance from the vertical axis varies from the
bottom to the top of the drive tower.” ’388 patent, 1:56–58.
The summary also lists three ways in which this variation
in distance can be achieved: (1) with “a skirt portion ta-
pered outwardly away from the vertical axis,” (2) with a
“ridge in the upper segment [that] tapers down toward the
top of the drive tower,” and (3) with a “ridge in the lower
segment [that] is tapered along a portion of its length.”
Id.
at 1:58–67. “Taper” is used in all three examples, suggest-
ing there are multiple ways to achieve tapering.
The claim language does not specify which type of ta-
pering is required. It merely recites that “the ridge in the
lower segment is tapered along a portion of its length.” This
language then, should be read to include all types of lower
portion tapering that are described in the ’388 patent. This
does not only include the example of tapering in Figures 2A
and 2B, where the tapering is achieved by varying the
height of the ridge. It also includes the example in Figures
17 and 18, where tapering is achieved by varying the shape
of the tower. Thus, it was proper for the Board to construe
this limitation broadly, requiring “at least including a
change in the distance from the outer surface of the ‘ridge’
to the axis of rotation of the drive tower along at least a
portion of the ridge’s length.” J.A. 33 (emphases added).
Laitram argues for a narrower construction that would
limit claim 9 to only the first example of tapering, as shown
in Figures 2A and 2B. Under that construction, Figures 17
and 18 would not fall under a “ridge in the lower segment
is tapered along a portion of its length.” This disregards our
longstanding precedent that a claim should not be con-
strued as limited to a single embodiment absent some clear
indication that a claim relates only to that embodiment.
See, e.g., Arlington Indus., Inc. v. Bridgeport Fittings, Inc.,
632 F.3d 1246, 1254 (Fed. Cir. 2011). Here, nothing ties
claim 9 to the single embodiment in Figures 2A and 2B.
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14 LAITRAM, LLC v. ASHWORTH BROS., INC.
Thus, the Board was correct not to narrow the claim lan-
guage to that embodiment.
Laitram also argues that the Board was wrong to cite
portions of the specification that refer to tapering in the
context of components other than the ridges themselves.
But the ridges are affixed to these other components of the
system. If the skirt portions in Figures 17 and 18 taper
away from the vertical axis, then the ridges necessarily
also taper away from the vertical axis because they are at-
tached to the outside of the skirt portion and follow the
same angular trajectory. Thus, the Board did not err in con-
sidering how the specification uses the term “taper,” and it
arrived at the correct construction.
Under the Board’s proper construction, substantial ev-
idence supports the Board’s finding that Roinestad dis-
closes “tapered along a portion of its length.” The Board
relied on Figure 1, which shows a conical central tower, ra-
ther than a cylindrical central tower. J.A. 41 (referring to
“the purely conical drive tower” of Roinestad as meeting
this limitation); J.A. 30–31 (focusing on Figure 1 of Roines-
tad, which is the purely conical tower). Because of this con-
ical shape, the distance from the outside of the ridges to the
cone’s axis increases from top to bottom, including in the
lower segment of the cone. This is substantial evidence to
support the Board’s finding that Roinestad discloses this
limitation.
We have considered Laitram’s remaining arguments
about the “tapered along a portion of its length” limitation
and find them unpersuasive. For the reasons above, we
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LAITRAM, LLC v. ASHWORTH BROS., INC. 15
affirm the Board’s conclusion that Roinestad discloses the
“tapered along a portion of its length” limitation.
V
Third, we address Laitram’s argument that substantial
evidence does not support the Board’s motivation to com-
bine findings. We disagree and thus affirm.
The Board found that a skilled artisan would have been
motivated to combine the conical shape of Roinestad with
the positive drive system of Roinestad ’430 because doing
so “would provide lower belt tension and reduce the
amount of stress on the belt.” J.A. 111. In doing so, the
Board relies on the references themselves and expert testi-
mony that supports this finding. J.A. 111 (citing e.g.,
O’Keefe Decl. ¶ 168). This constitutes substantial evidence.
Similarly, the Board found “that an ordinarily skilled
artisan would have been motivated to make a system in
which the belt may be smoothly and economically driven
under low tension,” as disclosed by the conical shape of
Roinestad. J.A. 57. In doing so, the Board relied on Ash-
worth’s expert testimony that a skilled artisan would have
been motivated to combine the positive drive system of
Pupp with the conical shape disclosed in Roinestad because
the Pupp system adds the benefit of reduced circumferen-
tial friction as compared to friction systems and the shapes
disclosed in Roinestad achieve a smoother and more eco-
nomical result. J.A. 57–58 (citing e.g., O’Keefe Decl. ¶ 66;
Roinestad, 1:11–18). This constitutes substantial evidence.
We have considered Laitram’s remaining arguments
about motivation to combine and find them unpersuasive.
For the reasons above, we affirm the Board’s conclusion
that a skilled artisan would have been motivated to
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16 LAITRAM, LLC v. ASHWORTH BROS., INC.
combine Pupp with Roinestad and Roinestad with Roines-
tad ’430.
Thus, we affirm the Board’s conclusion that claims 9
and 11–13 of the ’388 patent and claims 1–4 of the ’645 pa-
tent are unpatentable as obvious over the prior art.
VI
Finally, we address Ashworth’s cross-appeal. Ash-
worth’s primary argument on cross-appeal is that the
Board applied the wrong legal standard by requiring Ash-
worth to reconcile Figures 1 and 11 of Roinestad and ignor-
ing the arguments and evidence presented in the petition.
We agree. Because the Board did not give proper weight to
Ashworth’s evidence about how a skilled artisan would
have understood Roinestad as a whole, we vacate and re-
mand for the Board to consider all the evidence given the
correct legal standard.
The Board understood Ashworth as relying on Figure 1
to show tapering for claim 9 but relying on Figure 11 to
meet the added tapering limitation in dependent claim 10.
Because it thought Ashworth to be relying on two figures,
the Board held that Ashworth was required to “reconcile”
Figure 1 with Figure 11 when relying on Figure 11 for
claim 10. But Ashworth did not rely solely on the conical
shape in Figure 1 to meet the tapering limitation in claim
9. Rather, it argued with respect to claim 9 that a skilled
artisan would have understood Roinestad to disclose a lim-
ited number of shapes for the drive tower, including in Fig-
ure 11. J.A. 315–16. Ashworth argued that it would have
been obvious to a skilled artisan to use any of these shapes,
or a combination of these shapes, because doing so would
be a simple design choice. J.A. 311–15. It also argued that
these various shapes would have solved a known problem
in the art by routine optimization. J.A. 314–15. Ashworth
then applied that same logic to the added tapering limita-
tion in claim 10. J.A. 322–33.
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LAITRAM, LLC v. ASHWORTH BROS., INC. 17
Given Ashworth’s arguments, the appropriate obvious-
ness analysis is not whether the conical shape of Figure 1
can be physically combined or “reconciled” with the non-
conical shape of Figure 11. Rather, the correct legal stand-
ard is whether a skilled artisan, considering Roinestad as
a whole, would have arrived at the claimed shapes. To the
extent arriving at the claimed shapes would require a com-
bination of elements, the motivation to combine analysis
does not require the Board to “seek out precise teachings
directed to the specific subject matter of the challenged
claim,” because the Board “can take account of the infer-
ences and creative steps that a person of ordinary skill in
the art would employ.” KSR Int’l Co. v. Teleflex Inc.,
550
U.S. 398, 418 (2007)). Ashworth presented evidence to this
effect in the petition, but the Board ignored this evidence
because it focused only on whether the exact shape of Fig-
ure 1 would work with the exact shape of Figure 11. Thus,
the Board erred by failing to consider whether a skilled ar-
tisan, considering Roinestad for all that it teaches, would
have arrived at the claimed shapes.
We have considered Laitram’s arguments on cross-ap-
peal and find them unpersuasive. Accordingly, we vacate
and remand for the Board to properly consider Ashworth’s
arguments and evidence that a skilled artisan would have
arrived at the shapes in claims 9 and 10 based on the teach-
ings of Roinestad as a whole.
AFFIRMED-IN-PART AND VACATED AND
REMANDED-IN-PART
COSTS
No costs.
