patent no. 7,669,465 petition for inter partes review in … no. 7,669,465 petition for inter partes...

Patent No. 7,669,465 Petition For Inter Partes Review

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD

HENDRICKSON USA L.L.C., GREAT DANE L.L.C., and QUEST GLOBAL, INC.,

Petitioners

v.

TRANS TECHNOLOGIES COMPANY, Patent Owner

U.S. Patent No. 7,669,465 Title: Systems and Methods for Maintaining Air Pressure in Tires

Issue Date: March 2, 2010 Filing Date: February 14, 2006

Case IPR2017-01510

PETITION FOR INTER PARTES REVIEW

UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. PART 42 OF U.S. PATENT NO. 7,669,465


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TABLE OF CONTENTS

I. INTRODUCTION ........................................................................................... 1

II. MANDATORY NOTICES ............................................................................. 3

A. Real Parties-in-Interest [37 C.F.R. § 42.8(b)(1)] .................................. 3

B. Related Matters [37 C.F.R. § 42.8(b)(2)] .............................................. 3

C. Lead/Back-up Counsel [37 C.F.R. § 42.8(b)(3)] .................................. 3

D. Service Information [37 C.F.R. § 42.8(b)(4)] ....................................... 4

III. GROUNDS FOR STANDING [37 C.F.R. § 42.104(A)] ................................ 4

IV. BACKGROUND OF THE ‘465 PATENT-AT-ISSUE .................................. 5

A. Historical Tire Inflation Systems .......................................................... 5

B. The ‘465 Patent ..................................................................................... 7

C. Representative Claim 1 ......................................................................... 8

D. The Prosecution History ...................................................................... 10

E. Priority Date (February 14, 2006) ....................................................... 11

V. IDENTIFICATION OF PRIOR ART ........................................................... 12

A. U.S. Patent No. 4,387,931 to Bland (Ex. 1003) .................................. 12

B. U.S. Patent No. 5,287,906 to Stech (Ex. 1004) ................................... 13

C. U.S. Patent No. 7,273,082 to White (Ex. 1005) .................................. 14

D. U.S. Patent No. 2,317,636 to Parker (Ex. 1006) ................................. 15

E. U.S. Patent No. 5,325,902 to Loewe (Ex. 1007) ................................. 16

F. U.S. Patent No. 4,678,017 to Schultz (Ex. 1008) ............................... 16

G. Other Evidence of the State of the Art (Ex. 1009-1023) .................... 16


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VI. IDENTIFICATION OF CHALLENGE AND RELIEF REQUESTED [37 C.F.R. §§ 42.104(B)(1)-(2)] .................................................................... 16

VII. CLAIM CONSTRUCTION [37 C.F.R. § 42.104(B)(3)] .............................. 17

A. “rotary air chamber” ............................................................................ 18

B. “check valve” ...................................................................................... 19

C. “relief valve” ....................................................................................... 20

D. “each check valve configured to inject air into a corresponding tire when tire pressure drops below a first adjustable preset value” ......... 21

E. “means for causing air to flow through an air line within an axle” .... 22

F. “means for injecting air into the tire when tire pressure drops below a first preset value” ................................................................................. 22

G. “means for releasing air from the tire when tire pressure rises above a second preset value” ............................................................................ 25

VIII. GROUNDS OF UNPATENTABILITY [37 C.F.R. §§ 42.104(B)(4)-(5)] ... 27

A. Ground 1: Bland in Combination with Parker Renders Obvious Claims 1, 8-10, and 12-17. .................................................................. 27

1. Disclosures of Bland for Claim 1 ............................................. 27

2. Obviousness Based on Bland and Parker ................................. 30

3. Representative Claim Charts Based on Bland and Parker for Claims 1, 8-10 ........................................................................... 33

4. Claims 12-17 in View of Bland and Parker .............................. 38

B. Ground 2: Stech Renders Obvious Claims 1, 8-10, and 12-17 in View of Loewe. ............................................................................................. 40

1. Disclosures of Stech for Claim 1 .............................................. 40

2. Obviousness Based on Stech and Loewe .................................. 43


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3. Representative Claim Charts Based on Stech and Loewe for Claims 1, 8-10 ........................................................................... 45

4. Claims 12-17 in View of Stech and Loewe .............................. 50

C. Ground 3: White Renders Obvious Claims 1, 8-10, and 12-17, in View of Schultz. .................................................................................. 52

1. Disclosures of White for Claim 1 ............................................. 53

2. Obviousness Based on White and Schultz ................................ 55

3. Representative Claim Charts Based on White and Schultz for Claims 1, 8-10 ........................................................................... 57

4. Claims 12-17 in View of White and Schultz ............................ 63

IX. CONCLUSION .............................................................................................. 64


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EXHIBIT LIST

Exhibit Number

Description

1001 Patent-at-Issue: U.S. Patent No. 7,669,465 to Becker, “Systems and Methods for Maintaining Air Pressure in Tires,” filed February 14, 2006 (“the ‘465 patent”).

1002 Declaration of Lee A. Swanger, Ph.D., P.E.

1003 U.S. Patent No. 4,387,931 to Bland, “Tire Pressure Control in a Vehicle,” filed April 13, 1981 (“Bland”).

1004 U.S. Patent No. 5,287,906 to Stech, “Air Control System for Pneumatic Tires on a Vehicle,” filed September 22, 1992 (“Stech”).

1005 U.S. Patent No. 7,273,082 to White, “Tire Inflation System Apparatus and Method,” filed April 19, 2004 (“White”).

1006 U.S. Patent No. 2,317,636 to Parker, “Dual Tire Inflater,” filed February 24, 1941 (“Parker”).

1007 U.S. Patent No. 5,325,902 to Loewe, “Automatic Tire Pressure Monitoring and Inflation System,” filed June 19, 1992 (“Loewe”).

1008 U.S. Patent No. 4,678,017 to Schultz, “Wheel End Valve for Central Tire Inflation System,” filed July 1, 1985 (“Schultz”).

1009 U.S. Patent No. 2,693,841 to Webster, “Tire Inflation and Deflation System,” filed March 7, 1951 (“Webster”).

1010 U.S. Patent No. 3,099,309 to Congost Horta, “Apparatus and Devices for Automatic Control and Supervision of the Pressure of the Tires of Vehicle Wheels,” filed June 19, 1961 (“Congost-Horta”).

1011 U.S. Patent No. 4,418,737 to Goodell, “Automatic Tire Inflation System,” filed July 31, 1981 (“Goodell”).

1012 U.S. Patent No. 4,640,331 to Braun, “Central Tire Inflation System,” filed June 4, 1984 (“Braun ‘331”).


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1013 U.S. Patent No. 4,744,399 to Magnuson, “Central Tire Inflation System,” filed July 31, 1986 (“Magnuson”).

1014 U.S. Patent No. 5,261,471 to Freigang, “Pressure Relief Valve,” filed March 30, 1992 (“Freigang”).

1015 U.S. Patent No. 5,398,743 to Bartos, “Tire Inflating and Deflating System,” filed September 24, 1993 (“Bartos”).

1016 U.S. Patent No. 5,505,080 to McGhee, “Tire Pressure Management System,” filed May 12, 1994 (“McGhee”).

1017 U.S. Patent No. 6,601,625 to Rheinhardt, “Wheel with Integral Compressed Air Tank Apparatus,” filed November 20, 2001 (“Rheinhardt”).

1018 U.S. Patent No. 7,520,354 to Morrow, “Hybrid Vehicle with Combustion Engine/Electric Motor Drive,” filed May 2, 2002 (“Morrow”).

1019 U.S. Patent No. 6,948,516 to Williams, “Excess Tire Air Pressure Relief Valve,” filed February 28, 2003 (“Williams”).

1020 U.S. Patent No. 7,073,620 to Braun, “Vehicle Steering System Having a Rear Steering Control Mechanism,” filed June 6, 2003 (“Braun ‘620”).

1021 U.S. Patent No. 6,968,882 to Ingram, “Rotary Union Assembly for Use in Air Pressure Inflation Systems for Tractor Trailer Tires,” filed May 21, 2004 (“Ingram”).

1022 U.S. Patent No. 8,245,746 to Stanczak, “Tire Inflation System with Pressure Limiter,” filed July 21, 2004 (“Stanczak”).

1023 U.S. Patent No. 7,207,365 to Nelson, “Central Tire inflation System Rotary Air Union,” filed March 5, 2005 (“Nelson”).

1024 ‘465 Patent Prosecution History, Office Action dated May 27, 2009 (TTech000216-25).

1025 ‘465 Patent Prosecution History, Amendment dated September 28,


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2009 (TTech000203-14).

1026 ‘379 Patent Prosecution History, Response and Amendment dated December 10, 2007 (HEN000892-904).

1027 ‘379 Patent Prosecution History, Office Action dated September 8, 2008 (HEN000860-68).

1028 U.S. Prov. App. No. 60/652,544, filed February 14, 2005 (“‘544 provisional”).

1029 TransTech v. Hendrickson et al., Initial Status Conf. Tr. (Ex. 8 from Defendants Joint Claim Construction Brief).

1030 TransTech v. Hendrickson et al., Joint Claim Construction Statement, pages 1-37 (Dkt. 108).

1031 TransTech v. Hendrickson et al., TransTech’s Opening Claim Construction Brief (Dkt. 113).

1032 TransTech v. Hendrickson et al., Defendants’ Joint Opening Claim Construction Brief (Dkt. 114).

1033 McGraw-Hill Dictionary of Engr’g, HEN000790-96 (Ex. 13 from Defendants Joint Claim Construction Brief).

1034 Glossary of Terms for Fluid Power, ANSI Standard B.93.2, TTech000486-88 (Ex. 14 from Defendants’ Joint Claim Construction Brief).

1035 Parker Valves Datasheet, HEN0001149 (Ex. 16 from Defendants’ Joint Claim Construction Brief).

1036 Hamlin Valves Datasheet, HEN0001150 (Ex. 17 from Defendants’ Joint Claim Construction Brief).

1037 Aventics Valves Datasheet (Ex. 20 from Defendants’ Joint Claim Construction Brief).

1038 Obringer, Lee Ann, “How Self-inflating Tires Work,” downloaded from http://auto.howstuffworks.com/self-inflating-tire.htm on May


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18, 2017.

1039 Union 3/8 BSP RH specification sheet, downloaded from http://www.deublin.com/1115-000-205/ on May 18, 2017.

1040 Bendix RV-1 Pressure Reducing Valve data sheet, SD-03-3510, dated September 2005.

1041 Kaczmarek, Robert W., “Central Tire Inflation Systems (CTIS) – A Means to Enhance Vehicle Mobility”, Proceedings of the International Conference on the Performance of Off-Road Vehicles and Machines, (8th), Volume 3, Cambridge, England, August 5-11, 1984, pp. 1255-1271.

1042 Hummer H1 2000 Parts Catalog, Central Tire Inflation System Routing.

1043 Hummer H1 1996 Parts Catalog, CTIS Valve Assembly and Compressor, Late Model 1996.

1044 “A Legacy Of Achievement … A Future With Promise: The History Of Bendix Commercial Vehicle Systems LLC, downloaded from http://www.bendix.com/en/aboutus/history/history_1.jsp on May 17, 2017.

1045 Between, Webster’s Ninth New Collegiate Dictionary (1989).


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I. INTRODUCTION

Petitioners respectfully request Inter Partes Review of claims 1, 8-10, and

12-17 of U.S. Patent No. 7,669,465 (Ex. 1001), filed February 14, 2006 and

purportedly assigned to Trans Technologies Company (“Patent Owner”).

The ‘465 patent describes an automatic tire inflation system for tractor-

trailers (also commonly called eighteen wheelers). It claims the ability both to

inflate and to deflate tires to the proper air pressure. Patent Owner touted its

invention in the district court as “the first system that had this deflation component

by mechanical means.” Patent Owner also described its claims as “broad…simply

stated and easily understood.”

This Petition shows that Patent Owner did not invent the first system with

the ability to inflate and deflate tires by mechanical means. A long line of prior art

teaches systems with both the ability to inflate and to deflate tires in various

applications. The prior art renders claims 1, 8-10, and 12-17 of the ‘465 patent

invalid as obvious, as set forth in this Petition’s three distinct grounds of

unpatentability.

First, U.S. Patent No. 2,317,636 to Parker teaches a foundational

mechanical system that both inflates and deflates tires for World War II era trucks

using standard check and relief valves, as now claimed by Patent Owner. Applying

Parker’s tire inflation system in the context of a tractor-trailer of later years as


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claimed, such as the basic tire inflation system of U.S. Patent No. 4,387,931 to

Bland, would have been a straightforward rearrangement of mechanical parts. The

obvious combination of Bland and Parker would require no more than a few hand

tools.

Second, the tire inflation system of U.S. Patent No. 7,273,082 to Stech also

renders obvious the subject matter of the claims in combination with teachings of

conventional relief valves, as in U.S. Patent No. 5,325,902 to Loewe. Loewe

clearly discloses conventional relief valves that open and close at adjustable

pressures, and well-known advantages of such relief valves, such as improved fuel

economy, tire wear, and safety.

Third, U.S. Patent No. 7,273,082 to White – Petitioner Hendrickson’s own

tire inflation invention filed before the application for the ‘465 patent – also

renders the claims obvious. In combination with U.S. Patent No. 4,678,017 to

Schultz, White illustrates the well-known function and several specific additional

advantages of using check valves and relief valves to ensure properly inflated tires,

such as for better riding comfort and traction.

As shown in detail below, there is a high likelihood that Petitioners will

prevail with respect to each of the challenged claims and, therefore, Petitioners

request that the Board institute trial. Petitioners have paid the required fee under 37


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C.F.R. §§ 42.15(a) and 42.103 through P.R.P.S. Please assess any fee deficiency or

credit to Deposit Account No. 10-0460.

II. MANDATORY NOTICES

A. Real Parties-in-Interest [37 C.F.R. § 42.8(b)(1)]

Petitioners Hendrickson USA L.L.C., Great Dane L.L.C., and Quest Global,

Inc. are real-parties-in-interest.

In addition, for completeness, Petitioners state that Hendrickson USA L.L.C.

is a wholly-owned subsidiary of The Boler Company. HCNI I L.L.C., Pine S

L.L.C., and Dane Acquisition S L.L.C. each own shares of Great Dane L.L.C. No

parties other than Petitioners have controlled, directed, funded, or participated in

the preparation of this Petition, and therefore no parties other than Petitioners are

understood to be a real-party-in-interest.

B. Related Matters [37 C.F.R. § 42.8(b)(2)]

Patent Owner asserted the ‘465 patent against Petitioners in the Northern

District of Georgia on June 1, 2016 (No. 1:16-cv-01778-AT). Patent Owner

asserted the same claims at issue here.

C. Lead/Back-up Counsel [37 C.F.R. § 42.8(b)(3)]

Petitioners are filing a power of attorney designating Michael G. Babbitt

(Reg. No. 59,288, [email protected]) lead counsel and Timothy J. Barron

(Reg. No. 39,599, [email protected]) and Sara Tonnies Horton (Reg. No.


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61,449, [email protected]) as back-up counsel, of Jenner & Block LLP, 353 N.

Clark. St., Chicago, Illinois 60654, and back-up counsel Paul J. Ripp (Reg. No.

54,400, [email protected]) of Williams Montgomery & John LTD, 233 S.

Wacker, Chicago, Illinois 60606, and Lloyd G. Farr (Reg. No. 38,446,

[email protected]) of Nelson Mullins Riley & Scarborough LLP, 201

17th Street NW, Atlanta, Georgia 30363.

D. Service Information [37 C.F.R. § 42.8(b)(4)]

Petitioners consent to e-mail service at the addresses of lead and back-up

counsel and [email protected]. Hand delivery is also available to the addresses

of lead and back-up counsel.

III. GROUNDS FOR STANDING [37 C.F.R. § 42.104(A)]

Petitioners certify that the ‘465 patent is available for Inter Partes Review,

and Petitioners are not barred or estopped from challenging the claims on the

Grounds identified herein.


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IV. BACKGROUND OF THE ‘465 PATENT-AT-ISSUE1

A. Historical Tire Inflation Systems

Automatic vehicle tire inflation systems, sometimes referred to as Central

Tire Inflation Systems (CTIS), have been popular since at least World War II. (See,

e.g., Ex. 1012 at 1:55-56, Ex. 1008 at 2:5-7, Ex. 1006 at 1:1-7, Ex. 1009 at 1:15-

22, Ex. 1002 at ¶ 15.)

As one historical example, in 1951, Webster taught a system for “inflating

and deflating the pneumatic tires of vehicles… by regulating the pressure of the air

or other gas supplied to the tires.” (Ex. 1009 at 1:15-22.) Webster reflects that the

basic components of a tire inflation system have long included an air tank

connected to a pressure regulator, and mechanical valves to inflate and deflate

tires. (Id. at 1:46-62.) Webster states such systems are “very desirable,” for

example, because high tire pressure may “cause excessive wear on the tire or even

danger of [a] blow out” or may affect traction, as is still true today. (Id. at 1:23-42.)

1 This background, and the Grounds of Unpatentability herein, are further

supported by the Declaration of Petitioner’s expert, Lee A. Swanger, Ph.D., P.E.,

who has over thirty years of experience related to the kinds of mechanical systems

at issue here. (Ex. 1002.)


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Those in the art recognized numerous other benefits of systems both to

inflate and to deflate tires in subsequent decades. In the 1980s, for example,

Schultz explained that tire inflation systems were “well known” and provided

benefits such as improved “economy and safety,” “traction,” “riding comfort on

rough roads,” as well as “reduce[d] wear and tear.” (Ex. 1008 at 1:33-57, 4:29-34.)

McGhee emphasized that “it is important from the economic standpoint … to

maintain proper tire pressure to prevent excessive tread wear.” (Ex. 1016 at 1:28-

31.) In the 1990s, Bartos declared that “it is well known in the art to provide

vehicles with onboard systems for achieving inflating and deflating of vehicle tires

in order to optimize operation of the vehicle under variable and changing

conditions including, for example, weather, vehicle load, terrain and vehicle

speed.” (Ex. 1015 at 1:10-14.) By the early 2000s, it was common knowledge that

“a variety of central tire inflation systems were known to those skilled in the art”

which could be used to “increase or decrease tire pressure.” (Ex. 1020 at 3:61-4:3,

Ex. 1018 at 6:1-9, Ex. 1002 at ¶¶ 14-17.)

In 2004, before the time of alleged invention, Nelson summarized the state

of the art by stating that the concept of maintaining tire pressure is “not new,” has

“always been important,” and has been “constantly promoted” in the industry. (Ex.

1023 at 1:15-25.)


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B. The ‘465 Patent

Against this backdrop, the ‘465 patent, filed February 14, 2006,

acknowledges that tire inflation systems for trailers were known. (Ex. 1001 at

1:53-56.) The ‘465 patent also recognizes the common knowledge in the art that

temperature changes and leaks can cause tires to become under- or over-inflated

over time. (Id. at 1:33-37, 1:42-49.) However, the ‘465 patent does not disclose

that other prior art central tire inflation systems were also used to increase and

decrease air pressure.

The ‘465 patent summarizes its invention as “systems and methods for

injecting air into tires for various over the road trailers.” (Id. at Summary.) These

systems inject air into tires when the pressure drops below a preset value and

release air when the pressure rises above a preset value. (Id.) More specifically, the

patent describes a system with a rotary air chamber 28 secured to a hub cap of each

tire that includes check valves 41 and relief valves 30. (Id. at 3:65-4:21.) The check

valves inject air when tire air pressure drops below a desired pressure level set by a

regulator 16 and, the ‘465 patent states that the relief valves release air when tire

air pressure exceeds a preset value. (Id. at 3:65-67, 4:2-5.) Figure 3 shows these

elements in a side view of a tire hub cap 24, along with the air tank 12, air shaft 40,

and air line 18 to deliver air to the tire through the axle 20:


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C. Representative Claim 1

Independent claim 1 of the ‘465 patent is copied below with the claim

elements labeled for reference.

U.S. Patent No. 7,669,465, Claim 1

[1 P] A system for continuously maintaining air pressure in tires, comprising:

[1.1a] a rotary air chamber secured to a hub cap

[1.1b] wherein the rotary air chamber includes a plurality of check valves,

[1.1c] each check valve configured to inject air into a corresponding tire when tire air pressure drops below a first adjustable preset value, and

[1.1d] a plurality of relief valves, each relief valve configured to release air from a corresponding tire when tire air pressure rises above a second adjustable preset value;

air line 18 rotary air chamber

28

air shaft 40


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U.S. Patent No. 7,669,465, Claim 1

[1.2] an air shaft extending through the hub cap and into the rotary air chamber;

[1.3] an air line attached to the air shaft, so that the air line passes through an axle and injects air into the air shaft; and

[1.4] ball bearings affixed between the air shaft and the hub cap, so that the rotary air chamber rotates with the wheel.

Claim 1 and its dependent claims are representative of independent claim 12.

Each part of the claim language of claim 12 corresponds to claim language of

claim 1 or its dependent claims. The “relief valve” element 1.1d, for example,

corresponds to the “means for releasing air” element 12.3. If element 1.1d is met

by a piece of prior art, then element 12.3 is met by the same prior art, and so on for

each of the other elements. Rather than repeating the same evidence and arguments

from claim 1 to claim 12, Petitioners therefore provide the chart below to show

how each element of claim 12 corresponds to the elements of claim 1 and its

dependent claims. In each case, the scope of the means elements of properly

construed claim 12 is the same as, or broader than, that of properly construed claim

1 and its dependents. Therefore, each element of claim 12 is necessarily satisfied

by the corresponding evidence for claim 1 and its dependent claims for the same

reasons.


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Claim 12 Representative Claim 1 (and Dependent Claims)

[12 P] A system for air injection into a tire, comprising:

See corresponding evidence for element 1P (if preamble limiting).

[12.1] means for causing air to flow through an air line within an axle;

See corresponding evidence for element 1.2-1.3 (as well as dependent claim 8, with respect to “air tank” component of Petitioner’s proposed construction).

[12.2] means for injecting the air into the tire when tire pressure drops below a first preset value; and

See corresponding evidence for “check valve…” element 1.1b-c and “rotary air chamber” element 1.1a (as well as dependent claim 10, with respect to “regulator” component of Petitioner’s proposed construction).

[12.3] means for releasing air from the tire when tire pressure rises above a second preset value.

See corresponding evidence for “relief valve…” element 1.1d and “rotary air chamber” element 1.1a.

D. The Prosecution History

The ‘465 patent obtained allowance based on the Patent Owner’s

representation that the prior art did not disclose the “relief valve” element 1.1d

(and related “means for releasing” element 12.3). The Examiner rejected the claims

as anticipated by U.S. Patent No. 6,968,882 to Ingram (Ex. 1021). (Ex. 1024 at

TTech000219-220.) In response, Applicant admitted that “Ingram teaches injecting

air into the tires when tire air pressure decreases.” (Ex. 1025 at TTech000210.)


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Applicant also confirmed that Ingram provided structure for “injecting” air by

explaining that Ingram’s “pressure responsive valves are provided in each of the

lines to allow air flow through the appropriate line in response to a downstream

pressure drop as would occur in the event of a leak in one of the tires.” (Id. at

TTech000209-210.) The Examiner allowed the claims of the ‘465 patent only after

Applicant amended the claims and represented that Ingram did not teach a relief

valve configured to release air, as claimed.2 (Id. at TTech000209-14.)

E. Priority Date (February 14, 2006)

Patent Owner is not entitled to priority to an application before the February

14, 2006, filing date of the ‘465 patent.3 Although Patent Owner has alleged

2 Similarly, during the prosecution of the parent patent, U.S. Patent No. 7,530,379,

Applicant attempted to rely on a “relief valve” limitation to distinguish the claims.

(Ex. 1026 at HEN000902-903.) The Examiner rejected this argument because the

cited U.S. Patent No. 5,398,743 to Bartos provided for “deflating” tires. (Ex. 1027

at HEN0000864-65.)

3 The patents in Grounds 1-3 are all prior art to both the February 14, 2005 and

2006 priority date. Even if, contrary to fact, Patent Owner were entitled to the

earlier 2005 priority date, the White patent in Ground 3 would be the only

reference Patent Owner could conceivably swear behind.


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priority to the February 14, 2005 filing date of U.S. Prov. App. No. 60/652,544

(Ex. 1028), Patent Owner has not shown the ‘544 provisional application contains

supporting disclosure of a first and second “adjustable” preset value as recited in

claim 1, and required by the properly construed “means for injecting/releasing”

limitations of claim 12 (discussed below in Section VII.F). The ‘544 provisional

application mentions only a “predetermined level,” not adjustable first and second

levels. (See, e.g., Ex. 1028 at 2.)

Because at least this limitation of the ‘465 patent was not sufficiently

described in the priority chain prior to February 14, 2006, Patent Owner cannot

claim priority to an application before this date. See Research Corp. Techs., Inc. v.

Microsoft Corp., 627 F.3d 859, 869-70 (Fed. Cir. 2010) (“Entitlement to a filing

date extends only to subject matter that is disclosed.”). Further, Patent Owner

cannot rely on its general incorporation by reference of earlier applications in the

‘544 provisional. See Focal Therapeutics, Inc. v. Senorx, Inc., Case IPR2014-

00116, at *4 (P.T.A.B. May 22, 2014).

V. IDENTIFICATION OF PRIOR ART

A. U.S. Patent No. 4,387,931 to Bland (Ex. 1003)

Bland teaches a foundational trailer tire inflation system from 1981 with all

the elements of the relevant independent claims except for the relief valves to

release air. Bland shows a side view of its tire inflation system in Figure 6:


13

Bland is prior art under pre-AIA §§ 102(a), (b), and (e) because it was filed

on April 13, 1981, years before any claimed priority date. Although Bland was

before the Examiner during the ‘465 patent prosecution, it was not the subject of a

rejection, and is here presented in a new light together with new evidence.

B. U.S. Patent No. 5,287,906 to Stech (Ex. 1004)

Stech, filed in 1992, discloses all of the elements of the relevant independent

claims except for the relief valves. Stech shows a side view of its tire inflation

system in Figure 4:


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Stech is prior art under pre-AIA §§ 102(a), (b), and (e) because it was filed

on September 22, 1992, several years before any claimed priority date. Although

Stech was before the Examiner during the ‘465 patent prosecution, it also was not

the subject of a rejection, and is here presented in a new light together with new

evidence.

C. U.S. Patent No. 7,273,082 to White (Ex. 1005)

White, invented by one of the Petitioners, Hendrickson U.S.A., LLC, and

filed April 19, 2004, discloses all of the elements of the relevant independent

claims except for the relief valves. It shows the hub cap 57 side view of Figure 8:


15

White is prior art under pre-AIA §§ 102(a), (b), and (e) because it was filed

more than one year prior to the filing date of the ‘465 patent. Even if Patent Owner

were to prove that the claims of the ‘465 patent have priority to its ‘544 provisional

application, White remains prior art under pre-AIA §§ 102(a) and/or (e). White

was not before the Examiner during the ‘465 patent prosecution.

D. U.S. Patent No. 2,317,636 to Parker (Ex. 1006)

Parker is entitled “Dual Tire Inflater” and teaches the claimed relief valves,

as well as check valves, in a rotary air chamber in a tire inflation system. Parker is

prior art under pre-AIA §§ 102(a), (b), and (e) because it was filed on February 24,

1941, decades before any claimed priority date. Parker was not before the

Examiner during the ‘465 patent prosecution.


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E. U.S. Patent No. 5,325,902 to Loewe (Ex. 1007)

Loewe teaches conventional relief valves and reasons to combine a tire

inflation system and relief valves, such as for better fuel economy, tire wear, and

safety. Loewe is prior art under pre-AIA §§ 102(a), (b), and (e) because it was filed

on June 19, 1992, years before any claimed priority date. Loewe was not before the

Examiner during the ‘465 patent prosecution.

F. U.S. Patent No. 4,678,017 to Schultz (Ex. 1008)

Schultz also teaches relief valves and additional reasons to combine a tire

inflation system and relief valves. Schultz is prior art under pre-AIA §§ 102(a), (b),

and (e) because it was filed on July 1, 1985, years before any claimed priority date.

Schultz was not before the Examiner during the ‘465 patent prosecution.

G. Other Evidence of the State of the Art (Ex. 1009-1023)

The prior art in Exs. 1009-1023 further reflects the state of the art, level of

ordinary skill in the art, common knowledge in the art, and/or common sense in the

art, and is therefore also relevant to the background of the invention and the

invalidity analysis herein.

VI. IDENTIFICATION OF CHALLENGE AND RELIEF REQUESTED [37 C.F.R. §§ 42.104(B)(1)-(2)]

Petitioners request Inter Partes Review of claims 1, 8-10, and 12-17 of the

‘465 patent and request that the Board find these claims to be invalid and

unpatentable based on the following specific statutory grounds and prior art.


17

Ground 1: U.S. Patent No. 4,387,931 to Bland (Ex. 1003) in combination

with U.S. Patent No. 2,317,636 to Parker (Ex. 1006) renders obvious claims 1, 8-

10, and 12-17 under § 103(a).

Ground 2: U.S. Patent No. 5,287,906 to Stech (Ex. 1004) renders obvious

claims 1, 8-10, and 12-17 in view of U.S. Patent No. 5,325,902 to Loewe (Ex.

1007) under § 103(a).

Ground 3: U.S. Patent No. 7,273,082 to White (Ex. 1005) renders obvious

claims 1, 8-10, and 12-17 in view of U.S. Patent No. 4,678,017 to Schultz (Ex.

1008) under § 103(a).

VII. CLAIM CONSTRUCTION [37 C.F.R. § 42.104(B)(3)]

In Inter Partes Review, an unexpired claim term “shall be given its broadest

reasonable construction in light of the specification of the patent.” In re Cuozzo

Speed Tech., LLC, 778 F.3d 1271, 1279 (Fed. Cir. 2015) (quoting with approval 37

C.F.R. § 42.100(b)). Petitioners set forth below the claim terms that they believe

the parties may dispute relating to the prior art submitted in this proceeding and

claim terms that are means-plus-function limitations. Petitioners submit that other

claim limitations need no construction at this time.

Petitioners and Patent Owner have provided extensive argument regarding

claim construction of the ‘465 patent in the parallel district court proceeding. (See,

e.g., Exs. 1030-1037.) Petitioners do not set forth here arguments regarding claim


18

construction disputes not properly addressed in this forum, such as those related

solely to non-infringement, indefiniteness, lack of written description, and

inoperability. 35 U.S.C. §§ 101 and 112.

Petitioners’ proposed claim constructions here are otherwise the same as

their proposed constructions in the district court. Petitioners are not aware of any

claim construction arguments Patent Owner has proffered to distinguish the prior

art in this Petition. Patent Owner has taken the position that “the independent

claims are broad…simply stated and easily understood.” (Ex. 1031, Dkt. 113 at 1.)

Even if the Board does not adopt Petitioners’ specific proposed constructions here,

the same prior art and evidence nonetheless render the claims invalid under Patent

Owner’s broader constructions.

A. “rotary air chamber”

Claim 1 recites a “rotary air chamber,” which has its broadest reasonable

meaning of a structure that forms an enclosed space for air that rotates with

the wheel. The ‘465 patent does not limit the description of the rotary air chamber

28 to any specific structure or configuration; it simply describes it as “secured to a

hub cap” and “configured to inject air” into the tires (Ex. 1001 at Abstract), as

shown in Figure 3. Patent Owner has provided no narrower claim construction in

the district court, and the Board should not limit the meaning of this term here.


19

B. “check valve”

Claim 1 recites a “check valve,” which has its broadest reasonable meaning

of a one-way pressure responsive valve that opens to permit flow in response

to a drop in pressure on one side of the valve in comparison to a higher

pressure on the other side of the valve and otherwise blocks reverse flow.

This interpretation comes from the ‘465 patent specification, which states

that a “check valve” (element 41) is a “non flow-back check valve.” (Ex. 1001 at

4:2-5, 4:19.) By the patentee’s own definition, a non flow-back valve structure

permits flow in one direction only, and prevents back flow in the reverse direction,

as in Petitioner’s proposed construction. (Id. at 4:19-21.)

The ‘465 patent also confirms that a check valve controls flow and operates

automatically in response to a pressure change:

Check valves 41 operate to cause air to flow into the tires

11 when the tire 11 air pressure drops below the desired

pressure as set by the air pressure regulator 16.

(Id. at 4:2-5.) Every description of a check valve in the ‘465 patent includes this

requirement that it respond to a pressure change. For example, Figure 6 shows that

air is injected into a tire in response to the drop in tire air pressure below a

minimum value:


20

(Id. at Fig. 6, 5:7-10, see also 4:2-5.) Multiple dictionary definitions also reflect

this same ordinary meaning of check valve. (See, e.g., Ex. 1033 at HEN000793,

Ex. 1034 at TTech000488.)

C. “relief valve”

Claim 1 recites a “relief valve,” which has its broadest reasonable meaning

of a pressure responsive valve that opens to relieve pressure beyond a

specified limit and recloses upon return to normal operating conditions.

The ‘465 patent teaches that its relief valves operate conventionally by

opening in response to a pressure beyond a specified limit:

Two pressure relief valves 30 will release air pressure

from the respective tire 11 when the tire 11 air pressure

exceeds a preset upper limit.

(Ex. 1001 at 3:11-17, see also 3:65-4:2, 4:48-52, Fig. 6.) The purpose of the ‘465

patent’s relief valve is to respond to, and relieve, excess pressure. (See id.) The

‘465 patent nowhere suggests that a relief valve opens when an external

mechanical force is applied, as Patent Owner contended in the district court. (See


21

Ex. 1030, Dkt. 108 at A-13.) Such a construction would eviscerate the distinction

between a “relief value” and a “check valve.”

D. “each check valve configured to inject air into a corresponding tire when tire pressure drops below a first adjustable preset value”

A limitation is means-plus-function if, as here, it “recites function without

reciting sufficient structure for performing that function.” See Williamson v. Citrix

Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc). Although this

language of claim 1 does not use the typical “means for” language, it is a means-

plus-function limitation under § 112, ¶ 6.

Here, the patentee used “each check valve configured to inject air” instead of

the analogous phrase “means for injecting air.” See id. A limitation “configured to”

do something is “entirely functional, rather than structural.” Vistan Corp. v. Fadei

USA, Inc., No. C 10-4862 JCS, 2012 WL 1496099, at *16 (N.D. Cal. Apr. 27,

2012); see also Ex parte Miyazaki, 89 U.S.P.Q.2d 1207, at *13 (B.P.A.I. Nov. 19,

2008). In addition, a check valve alone cannot perform the recited function. (See,

e.g., Ex. 1002 at ¶ 29.) Therefore, this term should be construed as limited to the

structure corresponding to the “means for injecting” limitation of claim element

12.2 discussed below.


22

E. “means for causing air to flow through an air line within an axle”

The “means for causing…” of claim element 12.1 is a means-plus-function

term. The function of this term is stated by the claim “causing air to flow through

an air line within an axle.” The specification teaches that the corresponding

structure is a non-rotating pressurized air tank and air hoses connecting to

intermediate components that lead to an air line within an axle. The

specification expressly requires a pressurized air tank and an air line: “Air pressure

flows to the tire 11 from a pressurized air tank 12 through an air line 18.” (Ex.

1001 3:18-21, emphasis added, see also 4:24-26.) The air line then continues

through the axle and into a rotary air chamber. (Id. at 3:29-30, 5:4-7.) Figures 2

through 5 also depict the pressurized air tank as the initial source of pressurized air

for the system, and Figure 4 shows the air tank as the source for air that flows

through an air line within the axle.

F. “means for injecting air into the tire when tire pressure drops below a first preset value”

The “means for injecting…” of claim element 12.2 is a means-plus-function

term. The claimed function is “injecting air into a tire when tire air pressure drops

below a first preset value.” As discussed below, the (1) regulator, (2) rotary air

chamber, and (3) check valves responsive to the pressure set by the regulator are

required to carry out this claimed function. Thus, the proper interpretation of this

term requires this structure. See Engineered Prods. Co. v. Donaldson Co., 147 F.


23

App’x 979, 985 (Fed. Cir. 2005) (means term limited to structure “necessary to

perform the stated function”).

The ‘465 patent teaches that the structure to perform this function includes

an air pressure regulator to supply air based on the adjustable preset value. The

patent states “[c]heck valves 41 operate to cause air to flow into the tires 11 when

the tire 11 air pressure drops below the desired pressure as set by the air pressure

regulator 16.” (Ex. 1001 at 4:2-5, Fig. 3.) This disclosure links the portion of the

claimed function (“when the tire air pressure drops”) not only to a check valve,

but also to the pressure set by the regulator. (See id.) The patent emphasizes that

“[t]he air pressure regulator 16 sets the desired pressure for the tire inflation

system… if it is desired to operate the tires 11 at 100 psi, then the air pressure

regulator 16 is set for 100 psi.” (Id. at 3:23-29.)

Thus, the regulator’s set pressure is necessary for the claimed injecting

function. (Ex. 1002 at ¶ 33.) Without the regulator, there is no “preset value” as the

claim contemplates. (Ex. 1002 at ¶ 29.) Nor would the system inject air in response

to pressure changes relative to the preset values. (Ex. 1002 at ¶¶ 29, 33.)

To carry out the claimed “injecting” function, the required structure also

includes a rotary air chamber attached to a hub cap. (See Ex. 1002 at ¶ 33.) “[T]he

rotary air chamber is configured to inject air into at least one tire when tire pressure

drops below a first adjustable preset value.” (Ex. 1001 at 1:66-2:2.) The patent


24

emphasizes: “[t]he rotary air chamber 28 causes air transfer to each tire 11 as

needed.” (Id. at 4:14-16.)

In addition, the required structure includes a check valve that opens to

permit air to flow into a corresponding tire in response to a drop in tire pressure

that is below the pressure set by the regulator. (See Ex. 1002 at ¶ 33.) This

structure is necessary because the patent links each valve and its regulator to the

claimed function: “[c]heck valves 41 operate to cause air to flow into the tires 11

when the tire 11 air pressure drops below the desired pressure as set by the air

pressure regulator 16” (Id. at 4:2-5).

In sum, the Board should construe “means for injecting air…” of claim 12

to include the following structure disclosed in the specification:

1. a non-rotating air pressure regulator in fluid communication with the rotary air chamber that supplies air based on the first adjustable preset pressure value;

2. a rotary air chamber attached to a hub cap; and

3. a check valve that opens to permit air to flow into a corresponding tire in response to a drop in tire pressure that is below the pressure


25

set by the regulator, and otherwise blocks flow from the tire. 4

G. “means for releasing air from the tire when tire pressure rises above a second preset value”

This “means for releasing…” of claim element 12.3 is a means-plus-function

term. The claimed function is “releasing air from the tire when tire pressure rises

above a second preset value.”

As with means element 12.2 above, the required structure here includes a

rotary air chamber attached to a hub cap. Figure 3 shows that the rotary air

chamber 28 includes relief valves 3, therefore, linking the rotary air chamber

structure to the claimed function. The specification associates the rotary air

chamber with the means for releasing by describing the rotary air chamber with the

4 Petitioners do not include as a requirement for this construction that “each check

valve is located in the rotary air chamber at an exit of the chamber,” as they

proposed in the district court, because this portion of Petitioner’s district court

construction relates solely to a dispute regarding non-infringement and/or §§

101/112 not at issue in this proceeding. Further, an unconventional “check valve”

definition is not appropriate because the patent does not indicate the patentee acted

as its own lexicographer and because it presents issues of indefiniteness addressed

in the district court.


26

relief valve as the active component part of the rotary air chamber that performs

the claimed function. (Ex. 1001, Abstract, 1:66-2:4, 2:12-19, 4:14-17.) Each

embodiment includes the rotary air chamber. (Id. Figs. 1-6.)

The specification also requires that the structure include a conventional

relief valve that relieves pressure in response to tire pressure rising above a second

adjustable preset value and recloses upon return to normal operating conditions:

“Two pressure relief valves 30 will release air pressure from the respective tire 11

when the tire 11 air pressure exceeds a preset upper limit.” (Ex. 1001 at 3:11-13,

see also 3:65-67, 4:48-52.)

Thus, The Board should construe the “means for releasing air…” of claim

12 as including:

1. a rotary air chamber attached to a hub cap; and

2. a relief valve that relieves tire pressure in response to tire pressure rising above a second adjustable preset value and recloses upon return to normal operating conditions.5

5 As explained above for “check valve,” Petitioners do not include the requirement

that “the relief valve is located within the rotary air chamber, interior to the check

valve,” as they proposed in the district court, because this portion of Petitioner’s

district court construction again relates solely to a dispute regarding non-

infringement and/or §§ 101/112 not at issue in this proceeding.


27

VIII. GROUNDS OF UNPATENTABILITY [37 C.F.R. §§ 42.104(B)(4)-(5)]

A. Ground 1: Bland in Combination with Parker Renders Obvious Claims 1, 8-10, and 12-17.

Bland (Ex. 1003) in combination with Parker (Ex. 1006) renders obvious

claims 1, 8-10, and 12-17 of the ‘465 patent. Bland teaches all of the elements of

representative claim 1, except for the relief valve element 1.1d. Yet Parker, which

was not disclosed or cited to the Patent Office during prosecution, clearly teaches

the relief valve structure and function. Ground 1 is not duplicative of Grounds 2-3

because it is the only Ground based on prior art, Parker, that teaches both relief

valves and check valves in a rotary air chamber for a tire inflation system.

1. Disclosures of Bland for Claim 1

The preamble is met by Bland’s disclosure of “an improved tire inflation

system for maintaining a plurality of tires on a vehicle at predetermined uniform

pressures.” (Ex. 1003 at 1:42-44.)

The rotary air chamber of element 1.a is met by Bland’s adapter 14 “secured

to the hub cap 74” which is “adapted to rotate with the wheel.” (Id. at 4:27-34,

Figs. 6-7.) The adapter 14 includes an air chamber that accepts compressed air

from the regulator and distributes it to the tires via additional air lines, meeting

Petitioner’s proposed construction (i.e., “a structure that forms an enclosed space

for air that rotates with the wheel”). (Id. at 4:51-60, 5:6-12, 33-65, Ex. 1002 at ¶

43.)


28

The rotary air chamber adapter 14 includes the claimed check valves of

element 1.b. (Id. at 5:39-65, Figs. 6-9.) The check valves in the adapter 14 include

steel ball bearings 104 and 106 that respond to pressure, allowing flow to the tires

and otherwise blocking reverse flow. (Id., Ex. 1002 at ¶ 46.) With a low pressure

on the regulator side, for example, the ball bearings “permit air to go around the

particular ball” to inflate the tire. (Ex. 1003 at 5:47-52.) The check valves have a

preset adjustable value from the regulator, as in element 1.c. (Id. at 3:35-43, 5:46-

65, 6:31-32, Ex. 1002 at ¶ 48.)

As in element 1.2, Bland describes an air shaft, sleeve 81, that “provides a

continuation of the air path for the conduit 34 leading into the adapter unit.” (Id. at

4:46-49.) Bland also describes element 1.3: air lines that pass through the axles

and connect to an air shaft leading from the end of the axle to the hub cap. (Id. at

4:16-50, Figs. 2-3.) The other end of the air line is directly connected to the outlet

of the stationary pressure regulator such that high pressure air at a preset pressure

can be injected into the air shaft via the air line that passes through the axle. (Id. at

4:67-68, 5:55-65.)


29

Bland also reflects that one of skill would have appreciated how to

implement standard ball bearings affixed between the sleeve 81 and hub cap 74 at

the location of the seal 76, 85, as in element 1.4 and shown below in annotated

Figure 6. (Id. at 4:32-43, Ex. 1002 at ¶ 53.) The rotatable seal “is adapted to

connect the air from the conduit 34 into the adapter unit 14 while the wheels are

rotating” and “may take a number of different forms.” (Ex. 1003 at 4:32-43.) In

light of Figure 6, one of skill would have appreciated that a common form to

connect the non-rotating sleeve 81 and rotating adapter 14 would be ball bearings

in the rotatable seal. (Ex. 1002 at ¶¶ 53-54, Ex. 1006 at 2:8-24, Fig. 2.)

air line (conduit 34)

air shaft (sleeve 81)


30

2. Obviousness Based on Bland and Parker

There are compelling reasons to combine the relevant mechanical tire

inflation elements of Bland and Parker because the combination would have been a

highly predictable application of well-known technologies with well-known

benefits. See Randall Mfg. v. Rea, 733 F.3d 1355, 1362-63 (Fed. Cir. 2013) (“[i]t is

hard to see why one of skill in the art would not have thought to modify [the basic

structure of the prior art] to include this feature”); id. at 1363 (describing

obviousness of “prevalent perhaps even predominant” method of carrying out

claimed function); see also M.P.E.P. 2143(I)(A), (B).

Location of ball

bearings

(between sleeve 81

and hub cap 74)


31

As discussed above in Section IV.A, the teachings in the art of the benefits

of tire inflation systems that both inflate and deflate are pervasive. (See also Ex.

1002 at ¶ 15.) It was common knowledge in the art that a system to maintain

proper tire pressure, by both deflating and inflating tires, improves economy and

safety, mileage, tire wear, traction, and riding comfort. (Ex. 1002 at ¶¶ 15, 56-59.)

Bland also reflects the common knowledge that it was desirable to maintain “the

air pressure in the tires” at “at predetermined uniform pressures.” (Ex. 1003 at 1:5-

7, 1:43-44.)

The art – in particular Parker – also reveals that the conventional manner to

achieve tire deflation and prevent over-inflation was to use a relief valve to release

air, as Patent Owner claimed as its claims’ lone distinguishing feature in the ‘465

patent. As far back as 1941, Parker explicitly described a tire inflation system with

conventional “relief valves” to “relieve the tires of air in case of over-inflation.”

(Ex. 1006 at 3:44-59.) As has been well known in the art, such conventional relief

valves open to relieve pressure beyond a specified limit and reclose upon return to

normal operating conditions. (Ex. 1002 at ¶ 50.) Parker referred to relief valves as

of “any well known construction.” (Id. at 3:48, emphasis added.) Parker also

provides general motivation to use its tire inflation/deflation system in “other like

automotive vehicles,” such as a trailer. (Id. at 1:1-7.)


32

Numerous other patents describe relief valves to release air and deflate tires,

such as Webster (Ex. 1009 at 6:25-33), Congost-Horta (Ex. 1010 at 3:12-25),

Goodell (Ex. 1011 at 9:5-19), Braun ‘331 (Ex. 1012 at Abstract), Freigang (Ex

1014 at 2:62), Bartos (Ex. 1015 at 5:17-33), McGhee (Ex. 1016 at 8:43-62),

Rheinhardt (Ex. 1017 at 2:64-3:9), and Williams (Ex. 1019 at 1:6-10). Stanczak

further evidences contemporaneous recognition of the advantages of relief valves

with the same kind of structure and function as the ‘465 patent: “[i]ncorporating a

pressure relief valve into a pressure line connection for a tire is a simple and cost

effective way to prevent tires from operating at excessive pressures.” (Ex. 1022 at

2:17-22.)

One of skill in the art therefore would have had a high expectation of

success in combining the tire inflation system of Bland with the relief valve

structure of Parker to render obvious the claimed invention including element

1.1d. (See Ex. 1002 at ¶¶ 56-60.) Readily available standard components with

standardized connections, such as tapered or straight threads, would have

facilitated combining the mechanical components of Bland and Parker, as claimed.

(See id. at ¶ 58.) While physical combination is not required to show obviousness,

see MCM Portfolio LLC v. Hewlett-Packard Co., 812 F.3d 1284, 1293-94 (Fed.

Cir. 2015), the evidence here shows that Parker’s relief valves could be directly

inserted into Bland’s tire inflation system. Simply by unscrewing the service


33

valves 88 and 90 (shown in Fig. 7) and screwing in the relief valves of “well

known construction” of Parker using the correct size hand wrenches, one of skill

could have easily modified the tire inflation system of Bland to include the

conventional relief valves of Parker in the rotary air chamber adapter 14. (Ex. 1002

at ¶ 58.)

3. Representative Claim Charts Based on Bland and Parker for Claims 1, 8-10

U.S. Patent No. 7,669,465

U.S. Patent No. 4,387,931 to Bland (Ex. 1003)


“It is an object of this invention to provide an improved tire inflation system for maintaining a plurality of tires on a vehicle at predetermined uniform pressures.” (Ex. 1003, Bland at 1:42-44, Figs. 1-2, 6.)


Bland describes adapter 14 secured to hub cap 74: “Referring to FIGS. 3, 6 and 7, the unit 42 includes the adapter 14 which receives a conduit 34 which passes through the hollow axle 66…. A hub cap 74 is secured to the outer wheel 70. The adapter unit 14 is secured to the hub cap 74 and is adapted to rotate with the wheel and the hub cap. A rotatable seal arrangement 76 is adapted to connect the air from the conduit 34 into the adapter unit 14 while the wheels are rotating. Air pressure from the conduit 34 within the axle 66 is connected to the adapter unit 14 which is secured to the hub cap 74 of the wheel 70…. The entire assembly including the hub cap and adapter unit rotates with the wheel.” (Id. at 4:27-50, Fig. 6.)


34



“The air within the conduit 34 is transfered [sic] to the open space 78 within the adapter unit 14 (FIG. 3). The open area 78 includes leads to a number of open paths to which the air pressure passes. Two of the paths involve transferring the air from the adapter 14 to the tire stems 22 and 54 of the wheels 70 and 72.” (Id. at 4:51-60.)


Bland describes the adapter 14 includes check valves with ball bearings 104 and 106: “the paths or chambers 98 and 100 include steel ball bearings 104 and 106 which are adapted to seat within the paths or chambers 98 and 100…. When the chamber 102 on the regulator side is stronger than the air chamber 108 or 110 at the tire sides, one of the balls 104 or 106 associated with the spring 108 or 110 is pushed away from the seat against the tension of the spring to permit air to go around the particular ball…. If the regulator pressure is higher than the pressure within a particular tire, a low pressure in the tire involved is indicated. The pressure from the regulator 30 through the particular conduit involved pushes the appropriate ball against the appropriate spring in the adapter unit to cause air to pass from the regulator 30 into the tire with the lower pressure. If one of the tires associated with any of the ball bearings in any adapter unit drops, air will be supplied from the regulator.” (Id. at 5:39-65, Figs. 6-9, Ex. 1002 at ¶ 46.)

[1.1c] each check valve

Bland reflects that the check valves are configured to inject air into a tire when tire air pressure drops below a first adjustable


35



configured to inject air into a corresponding tire when tire air pressure drops below a first adjustable preset value, and

preset value, set by the regulator 30 based on customer requirements (Ex. 1002 at ¶ 48): “[T]he purpose of the components illustrated is to inflate the tires of the wheels and to maintain the pressures therein at some predetermined uniform levels. In a typical system it may be desirable to keep all the tires on the trailer at a uniform set pressure somewhere between 85 and 90 psi. The exact pressures will be determined by customer requirements and tire design.” (Ex. 1003 at 2:68-3:7.) “The pressure from the emergency tank 26 passes through the ratio relay valve 28 to a pressure regulator 30….The pressure regulator 30 may be of a type manufactured by Bendix RV-1 Pressure Reducing Valve, such as part number 279015.” (Id. at 3:33-43, 5:39-65, Figs. 6-9.)


Although Bland does not expressly disclose the claimed relief valves to release air, Bland refers to the general desire in the art of “maintaining the air pressure in the tires.” (Id. at 1:5-7.) Therefore, one of skill would have had a strong reason to add conventional relief valves to release air to better maintain air pressure in tires, such as taught in Parker. Specifically, Parker teaches “relief valves” in outlets 48 and 49 “to relieve the tires of air in case of over-inflation, and may be adjusted so as to function as relief valves in accordance with a predetermined air pressure existing in the tires.” (Ex. 1006 at 3:52-59.) In addition, Parker teaches “check valve” elements in chambers 30 and 31 to inject air into the tires. (Id. at 3:3-22) The relief and check valves of Parker are in a rotary air chamber, valve body 38 inside casing 8, which is secured to the hub of the wheel. (Id. at 3:33-37, 2:5-7, Figs. 1-3, Ex. 1002 at ¶¶ 44, 50.)


36



“The valve body 38 is also formed with the outlets 48 and 49 which respectively communicate with the chambers 39 and 40, and in which are provided relief valves. These relief valves may be of any well known construction and consist of a spring-controlled valve head under regulation of the adjustable screw nut indicated at 50 and 51. The relief valves mounted in outlets 48 and 49 are adapted to relieve the tires of air in case of over-inflation, and may be adjusted so as to function as relief valves in accordance with a predetermined air pressure existing in the tires. Usually these valves may be set to function when the air pressure in the tires exceeds thirty pounds.” (Id. at 3:44-59, Figs. 2-3.)


Bland shows the air shaft sleeve 81 extends through the hub cap 74 and into the adapter 14 in Figure 6. “Referring to FIGS. 3, 6 and 7, the unit 42 includes the adapter 14 which receives a conduit 34 which passes through the hollow axle 66…. A sleeve 81 provides a continuation of the air path for the conduit 34 leading into the adapter unit through spacer 83 and lip

casing 8


37



seal 85. A retainer ring holds the sleeve 81 in alignment. The entire assembly including the hub cap and adapter unit rotates with the wheel.” (Ex. 1003 at 4:27-50.)


Bland shows air line conduit 34 attached to sleeve 81, so that conduit 34 passes through axle 66 and injects air into sleeve 81 in Figures 3 and 6. “Referring to FIGS. 3, 6 and 7, the unit 42 includes the adapter 14 which receives a conduit 34 which passes through the hollow axle 66…. A sleeve 81 provides a continuation of the air path for the conduit 34 leading into the adapter unit through spacer 83 and lip seal 85. A retainer ring holds the sleeve 81 in alignment. The entire assembly including the hub cap and adapter unit rotates with the wheel.” (Id.)


Bland shows that one of skill would have appreciated how to implement “a number of different forms” to “permit the transfer of the air from the interior of the axle to the hub cap while rotating,” such as ball bearings affixed between the sleeve 81 and hub cap 74 in Figure 6. (Id. at 4:32-43, Ex. 1002 at ¶ 53.) In addition, Parker teaches ball-bearing structures, which were well-known in the art to provide several common advantages. (Ex. 1006 at 2:8-24, Figs. 2-3, see also Ex. 1002 at ¶¶ 53-54.)

[8] The system of claim 1, further comprising an air tank connected to the air line.

“[T]he air for inflating the tires is provided by a source of pressure already in the system, such as an emergency tank 26. In a conventional trailer, the pressure in the emergency tank 26 is supplied by an air compressor in the tractor (not illustrated). The air pressure in the emergency tank 26 may normally be between 110 and 120 psi.” (Ex. 1003 at 3:8-14.)

[9] The system of claim 8, further comprising that the air line is

“Sources of pressures for braking and the like provided by emergency tanks in trailers are well known. The pressure from the emergency tank 26 is applied to a ratio relay valve 28. As in conventional systems, the ratio relay valve 28 may be utilized to connect the pressure from the emergency tank 26 to overcome the parking brake pressure provided by mechanical springs during


38



connected to at least one shut-off valve between the air tank and the rotary air chamber.

parking, when the air pressure is disconnected from the tractor, or any time that the pressure in the emergency tank 26 drops below a safe operating level, such as 60 psi…. All of these comments relating to the ratio relay valve 28 are conventional and will not be elaborated upon.” (Id. at 3:15-32.)

[10] The system of claim 8, further comprising that the air line is connected to an air pressure regulator between the air tank and the rotary air chamber.

“The pressure from the emergency tank 26 passes through the ratio relay valve 28 to a pressure regulator 30. The pressure regulator 30 has a single inlet 32. The regulated pressure from the regulator 30 includes four outlets 34, 36, 38 and 40. The outlets 34 and 36 are connected toward the pairs of dual multiple wheel units 42 and 44. The outlets 38 and 40 are connected toward the dual multiple wheel units 46 and 48, respectively. The pressure regulator 30 may be of a type manufactured by Bendix RV-1 Pressure Reducing Valve, such as part number 279015.” (Id. at 3:33-43.)

4. Claims 12-17 in View of Bland and Parker

As referenced above in Section IV.C, claim 12 (and its dependents) are

obvious in view of the same evidence of obviousness for claim 1 and its

dependents.

Element 12.1 is met by the evidence described above for elements 1.2-3 and

dependent claim 8, such as Bland’s teachings of conventional air tank 26 (see, e.g.,

Ex. 1003 at 3:8-14, Figs. 1-2), air line conduits 34 and 36 through hollow axle 66


39

(id. at 4:16-26), and air shaft sleeve 81 (id.). (Ex. 1002 at ¶ 69.) Element 12.2 is

met by the evidence for elements 1.1a-c and dependent claim 10, such as Bland’s

regulator 30 that supplies air based on a preset pressure value (Ex. 1003 at 3:33-

43), rotary air chamber adapter 14 (see, e.g., id. at 4:27-50, Fig. 6), and check

valves with ball bearings 104 and 106 (id. at 5:39-65, Figs. 7-9). (Ex. 1002 at ¶

71.) Element 12.3 is met by the evidence for element 1.d, such as Parker’s relief

valves 48 and 49 and rotary air chamber. (See, e.g., id. at 3:44-59, Figs. 2-3, Ex.

1002 at ¶ 73.) The compelling reasons to combine Bland and Parker for claim 12

(and its dependents) are the same as for claim 1, discussed above.

Dependent claim 13 is met because the causing means of Bland remains

stationary and cannot rotate with the tires. (See, e.g., Ex. 1003 at Figs. 1-2, 6, Ex.

1002 at ¶ 75.) Dependent claim 14 is met because the injecting/releasing means of

Bland are configured to inject/release air from a second tire. (See, e.g., Ex. 1003 at

Figs. 1-2, Ex. 1002 at ¶¶ 76-78.) Dependent claim 15 is met by Bland’s disclosure

that the check valves are mounted in the adapter 14 which is “adapted to rotate

with the wheel and the hub cap.” (See, e.g., Ex. 1003 at 4:32-34, 5:6-12.)

Dependent claims 16 and 17 are met by Bland’s teaching of a rotary air chamber

adapter 14 discussed above. (See, e.g., Ex. 1003 at 4:27-50, Fig. 6.)


40

B. Ground 2: Stech Renders Obvious Claims 1, 8-10, and 12-17 in View of Loewe.

Stech (Ex. 1004), renders obvious claims 1, 8-10, and 12-17 of the ‘465

patent in view of Loewe (Ex. 1007). Stech teaches all of the limitations of

representative claim 1, except for the conventional “relief valves” of element 1.1d,

which are plainly taught by Loewe. Loewe was not present during prosecution

before the Patent Office. Ground 2 is not redundant of Ground 1 because it is based

on different prior art. In addition, Loewe teaches a different use and structure of

relief valves from Parker, and Loewe explicitly teaches reasons to combine a relief

valve and a tire inflation system like Stech.

1. Disclosures of Stech for Claim 1

Stech’s invention “is directed to an air control system for pneumatic tires on

a vehicle which is continuously connected to the conventional air supply on the

vehicle for supplying equal pressure to all of the tires,” as claimed in the preamble

of claim 1. (Ex. 1004 at 1:9-25.)

Stech shows a rotary air chamber of element 1.1a in annotated Figure 4

below, including a “rotatable connection which includes a tee 54” connected to

connectors 56, 58, and valve stems 60. (Id. at 3:30-59, see also 2:16-19, Fig. 4,

Claim 1, Ex. 1002 at ¶ 86.) This connection provides a structure for air that rotates

with the tire and is secured to a hub cap for hub 52, as in Petitioner’s proposed


41

construction for “rotary air chamber.” (See id.) Figure 4 illustrates the “air

connection.” (Id. at 2:16-19.)

Stech discloses what it calls a “conventional” check valve connected to the

tee 54 in the connect/disconnect couplings 56-58 or 56a-58a, as in element 1.1b.

(Id. at 3:51-59, 4:28-35, Ex. 1002 at ¶ 87.) Stech claims that the check valves are

“downstream of the regulator allowing downstream flow but preventing upstream

flow from the tires.” (Id. at 6:3-5, Fig. 4.) Stech also reflects that the conventional

function of the check valves, claimed in element 1.1c, is to inject air into a tire

when the pressure drops below the adjustable preset value of the regulator 36

(typically 108-110 psi set by the user). (Id. at 4:22-39, 3:1-6, Ex. 1002 at ¶ 88.)

With respect to the air shaft of element 1.2, Stech teaches a rotatable

connection 40 and associated piping that extends through hub 52 connected into

tee 54: “the rotating joint 40 is connected through the fixed air line 50 on one side


42

and the other side is connected to a rotatable connection which includes a tee 54.”

(Id. at 3:30-43, Fig. 4, annotated below.)

Fixed line 50 inside the axle 12 meets the air line limitation of element 1.3,

as it passes through axle 12 and is attached to rotatable connection 40 (seen

below). (Id.)

air line

(fixed line 50)


43

Stech also discloses the ball bearings of element 1.4 between the rotatable

connection 40 (and associated piping) and wheel hub 52 in annotated Figure 4

below, indicated by a standard schematic symbol for ball bearings (an X within

each square). Moreover, Stech’s rotatable connection 40 may be “a rotatable union

model 1115 sold by Deublin,” which also includes ball bearings. (Id. at 3:37-38,

Ex. 1002 at ¶ 93).

2. Obviousness Based on Stech and Loewe

As discussed above in Section IV.A and Ground 1, the common knowledge

in the art of the many benefits of tire inflation and deflation systems is strong

evidence of the well-known reasons to combine the relevant art. (See also Ex. 1002

at ¶¶ 95-99.) Moreover, Loewe expressly recognizes several of these same reasons

to combine a conventional relief valve with a tire inflation system, such as Stech.

Schematic symbols of

four ball bearings


44

See, e.g., KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007) (“[A]ny need or

problem known in the field of endeavor at the time of invention… can provide a

reason for combining the elements in the manner claimed.”); see also M.P.E.P.

2143(I)(A), (G).

Loewe states that “[s]ystems for automatically inflating and deflating

vehicle tires are well known,” and “[t]hose skilled in the art will recognize that

various relief valves are suitable” to prevent over-inflation. (Ex. 1007 at 1:60-61,

6:37-39, emphasis added.) Loewe describes numerous well-known reasons why

“[t]he desirability of maintaining correct inflation pressure in automobile tires and

the like is well established” including improved “fuel economy,” “tire wear,” and

“safety.” (Ex. 1007 at 1:13-59, Ex. 1002 at ¶¶ 95-96.) Similarly, Stech recognizes

that the importance of maintaining “properly inflated” tires and states this goal is

“known.” (Ex. 1004 at 1:9-25, Ex. 1002 at ¶ 95.) These are clear, express reasons

to use a relief valve to deflate a tire.

Furthermore, one of skill would have had a high expectation of success in

combining the tire inflation system of Stech with the relief valve structure of

Loewe to render obvious the claimed invention, including element 1.1d. (See Ex.

1002 at ¶¶ 95-99.) The relief valve element 1.1d is met by Loewe’s straightforward

disclosure of “relief valve 82” on each tire “to release air from the tire 11 to the

atmosphere and thereby prevent over-inflation.” (Ex. 1007 at 6:35-37, Fig. 1.)


45

Loewe states that this relief valve 82 releases air based on an “adjustable preset

valve,” as claimed, because a “preset valve determines the pressure above which

the relief valve 82 releases air from the tire.” (Id. at 6:55-56.) Loewe also specifies

that its “system may be mounted on the wheel or partly in a wheel cover, i.e.,

hubcap” (Id. at 7:31-34), motivating one of skill to include Loewe’s relief valve 82

in the rotary air chamber secured to a hub cap of Stech as in element 1.1d. (See Ex.

1002 at ¶ 96.) Indeed, one of skill would have recognized that Stech’s test valve

stem 60 would have been a desirable location to add a conventional relief valve,

such as taught by Loewe, and to release air as claimed. (Id.)

3. Representative Claim Charts Based on Stech and Loewe for Claims 1, 8-10


U.S. Patent No. 5,287,906 to Stech (Ex. 1004)


“The present invention is directed to an air control system for pneumatic tires on a vehicle which is continuously connected to the conventional air supply on the vehicle for supplying equal pressure to all of the tires and providing an indication of a problem.” (Ex. 1004 at 1:9-25.)


“The line 50 is connected to the rotatable connection 40 which is a rotatable joint which allows rotation of the end of the air supply connection as the tire rotates. One suitable type of rotatable joint is a rotatable union model 1115 sold by Deublin. Thus, the rotating joint 40 is connected through the fixed air line 50 on one side and the other side is connected to a rotatable connection which includes a tee 54 having first 51 and second 53 similar tire connections for two tires, such as 16 and 18. Thus connected to the outside tire, such as tire 16, is a connection 51 consisting of


46



preferably a male 56 and female 58 connectible and disconnectible coupling for conveniently disconnecting the tire 16 from the system 30 for replacement or repair. Also, the tire connection 51 includes a test valve stem 60 for testing the air in the tire 16.” (Id. at 3:30-59, see also 2:16-19, Fig. 4, Claim 1, Ex. 1002 at ¶ 86.)


“Thus, the air will flow through the air connections 38 through the rotatable joints 40 and 40a, and to the rotating tee connections 54 to the tire connections 51 and 53 which are continuously connected to and continuously supply air to all of the tires 16, 18, 20 and 22 of the vehicle 10. The air is supplied through check valves in each of the tire connections 51 and 53.” (Id. at 4:28–35, Claim 1.) “Preferably, the normal dill valve in the tires are removed and instead a conventional check valve, such as Model MJCV-1, sold by Control Devices, Inc. is included in the male connector 56 as such a check valve will be longer lasting that [sic] the normal dill valve. The tire connection 53 to the inside wheel 18 is also connected to the tee 54 and includes similar parts to those in the tire connection to the tire 16 which are similarly numbered with the addition of the suffix ‘a.’” (Id. at 3:51-59.)

[1.1c] each check valve configured to inject air into a corresponding tire when tire air pressure

Stech discloses that the conventional check valves inject air into a tire when the pressure drops below the adjustable preset value of the regulator 36: “The outlet air pressure supplied from the pressure regulator to the air connection 38 is normally 108-110 psi. Thus, the air will flow through the air connections 38 through the rotatable joints 40 and 40a, and to the rotating tee connections 54 to the tire connections 51 and 53 which are continuously


47



drops below a first adjustable preset value, and

connected to and continuously supply air to all of the tires 16, 18, 20 and 22 of the vehicle 10. The air is supplied through check valves in each of the tire connections 51 and 53. As long is the system operates satisfactorily, the unloader valve 46 will remain in the open position supplying regulated pressure to the tires. In normal operation, the system 30 will maintain all of the tires with equal pressure.” (Id. at 4:22-39.) “The air pressure regulator 36 may be of any conventional type and is typically set at between 108-110 psi as this is the normal air pressure carried in the truck-trailer tires of an 18-wheel truck-trailer.” (Id. at 3:1-6.)


Although Stech does not disclose the claimed relief valves configured to release air from tires, Stech recognizes that the importance of maintaining “properly inflated” tires is “known.” (Id. at 1:9-25.) Thus, one of skill would have had a known motivation to combine Stech with art such as Loewe, which further describes the advantages and operation of known relief valves in the art used to maintain proper inflation of tires, to render obvious this limitation. (Ex. 1007 at 6:35-56, Ex. 1002 at ¶¶ 94-100.)


“Referring now to FIG. 4, in which a front or fixed axle 12 is shown, the air connection 38 is supplied from the outside of the axle 12 through a fixed line 50 which is preferably coaxially positioned in the axle 12 and through the wheel hub 52. The line 50 is connected to the rotatable connection 40 which is a rotatable joint which allows rotation of the end of the air supply connection as the tire rotates. One suitable type of rotatable joint is a rotatable union model 1115 sold by Deublin. Thus, the rotating joint 40 is connected through the fixed air line 50 on one side and the other side is connected to a rotatable connection


48



which includes a tee 54 having first 51 and second 53 similar tire connections for two tires, such as 16 and 18.” (Id. at 3:30-43, Fig. 4, Claim 1.) “Thus, the air will flow through the air connections 38 through the rotatable joints 40 and 40a, and to the rotating tee connections 54 to the tire connections 51 and 53 which are continuously connected to and continuously supply air to all of the tires 16, 18, 20 and 22 of the vehicle 10.” (Id. at 4:28–33.)


“Referring now to FIG. 4, in which a front or fixed axle 12 is shown, the air connection 38 is supplied from the outside of the axle 12 through a fixed line 50 which is preferably coaxially positioned in the axle 12 and through the wheel hub 52. The line 50 is connected to the rotatable connection 40 which is a rotatable joint which allows rotation of the end of the air supply connection as the tire rotates. One suitable type of rotatable joint is a rotatable union model 1115 sold by Deublin. Thus, the rotating joint 40 is connected through the fixed air line 50 on one side and the other side is connected to a rotatable connection which includes a tee 54 having first 51 and second 53 similar tire connections for two tires, such as 16 and 18.” (Id. at 3:30-43, Fig. 4, Claim 1.)


Stech discloses four ball bearings between the fixed axle 12 and wheel hub 52 in Figure 4, indicated by a standard schematic symbol for ball bearings (an X within each square):


49



Stech also describes a rotatable joint 40, which may be a Deublin model 1115, that accommodates the relative motion between the hub cap/rotary air chamber and the stationary air line within the axle using internal ball bearings. (Ex. 1004 at 3:34-43; Ex. 1002 at ¶ 93.)


“Such a vehicle 10 also includes an air supply line 24 from a pump (not shown) and an air tank 26 for supplying air pressure to the brakes on vehicle 10.” (Id. at 2:36–39, 2:57-3:34, Figs. 1, 4-6.)

[9] The system of claim 8,

“Referring now to FIGS. 1 and 6, the air control system 30 of the present invention includes the air line 32 which is connected to

Schematic symbols of

four ball bearings


50



further comprising that the air line is connected to at least one shut-off valve between the air tank and the rotary air chamber.

the normal truck air supply 24. A typical truck air supply may have 120 psi air pressure. Preferably, the air line 32 includes a manual off/on valve 42 for manually connecting or disconnecting the air control system 30 of the present invention to the vehicle air supply 24.” (Id. at 2:57-61, Fig. 1, Fig. 6.)


“Additionally, the air line 32 may include a check valve 44 which allows the passage of the air through the air line 32 to the regulator 36, but prevents reverse flow of air. The check valve 44 is for protecting the air pressure in the tires when the truck is shut down. The air pressure regulator 36 may be of any conventional type and is typically set at between 108-110 psi as this is the normal air pressure carried in the truck-trailer tires of an 18-wheel truck-trailer. One satisfactory type of air regulator is Model 56-110, sold by Air Drco….” (Id. at 2:57-3:37, Figs. 4, 6.)

4. Claims 12-17 in View of Stech and Loewe


dependent claim 8, such as Stech’s air tank 26, fixed line 50 through axle 12, and

air shaft rotatable connection 40. (See, e.g., Ex. 1004 at 2:36-39, 3:30-59, Fig. 4,


51

Ex. 1002 at ¶ 106.) Element 12.2 is satisfied by the evidence for elements 1.1a-c

and dependent claim 10, such as Stech’s regulator 36 that supplies air based on a

preset pressure value, rotary air chamber elements 54, 56, 58, 60, and conventional

check valves. (See, e.g., id. at 2:57–3:37, 4:22-50, Figs. 4, 6, Ex. 1002 at ¶ 107.)

Element 12.3 is met by the evidence for element 1.d, such as the “conventional”

relief valves of Loewe in combination with Stech. (See, e.g., Ex. 1007 at 6:35-56,

Fig. 1, Ex. 1002 at ¶ 108.) The substantial reasons to combine Stech and Loewe for

claim 12 (and its dependents) are the same as for claim 1, discussed above.

Dependent claim 13 is satisfied because the causing means of Stech

remains stationary and cannot rotate with the tires. (See, e.g., Ex. 1004 at Figs. 1,

4, 6, Ex. 1002 at ¶ 110.) Dependent claim 14 is met because the injecting means

of Stech in view of the releasing means of Loewe would have been configured to

inject/release air from a second tire as taught in Stech. (See, e.g., Ex. 1004 at Figs.

1, 2, Ex. 1002 at ¶ 111.) Dependent claim 15 is satisfied by Stech’s disclosure that

the check valves rotate with the tire. (See, e.g., Ex. 1004 at 4:22-39, Fig. 4.)

Dependent claims 16 and 17 are met by Stech’s teaching of a rotary air chamber

discussed above. (See, e.g., id. at 3:30-59, Fig. 4.)


52

C. Ground 3: White Renders Obvious Claims 1, 8-10, and 12-17, in View of Schultz.

White (Ex. 1005), invented by Petitioner Hendrickson, renders obvious

claims 1, 8-10, and 12-17 of the ‘465 patent in view of Schultz (Ex. 1008). White

teaches all of the limitations of representative claim 1, except for the well-known

“relief valves” for releasing air of element 1.1d, which Schultz teaches. Neither

White nor Schultz were before the Examiner during the ‘465 patent prosecution.

Ground 3 based on White and Schultz is not redundant of Ground 1 or

Ground 2 because it is based on different prior art. In addition, Schultz teaches a

different use and structure of relief valves from Parker or Loewe, and there are

additional stated reasons and motivations to combine in Schultz. White also

reflects the state of the art contemporaneous with the ‘465 patent filing date in

2005, whereas Stech and Bland are from earlier years. Patent Owner therefore

cannot credibly argue that the passage of time since the filing of White to the ‘465

patent is indicative of nonobviousness, as it may attempt to do against Stech or

Bland. In addition, unlike with the patents in Grounds 1 or 2, Patent Owner may

attempt to swear behind White in Ground 3.


53

1. Disclosures of White for Claim 1

As the preamble of claim 1 recites, White’s stated objective is to

“accurately check and monitor the inflation pressure of a vehicle tire.” (Ex. 1005 at

2:61-67.)

White shows a rotary air chamber of element 1.1a in annotated Figures 7

and 8 below, including the “air tube assembly 36” that is a structure for air that

rotates with the tire and is secured to “hub cap 57” via bulkhead fitting 106. (See

id. at 18:66-19:6, 19:19-33, 21:1-22, Ex. 1002 at ¶¶ 118-19.)

White discloses check valves configured to inject air when tire pressure

drops below a first adjustable preset value, i.e., “check valve[s] 38,” as in element

1.1b and element 1.1c. (Id. at 19:28-33.) White explains that multiple check valves

38 are contemplated, at least one for each wheel. (Id. at 6:26-41, see also Figs. 1,

rotary air chamber (air tube assembly 36)


54

7-8, 9-11, 19.) The check valves 38 are “biased to a closed position when the air

pressure in tire 14 is higher than the air pressure in third pneumatic conduit 16c to

isolate each tire 14 from the rest of system 10, including other tires.” (Id. at 6:17-

25.) White further describes that its system inflates based on a “target value,”

programmed by a user, in other words, the “first adjustable preset value” of

element 1.c. (See id. at 17:49-18:12, 7:37-65, Ex. 1002 at ¶ 121.)

With respect to the air shaft of element 1.2, White teaches a rigid air tube 66

and associated piping that extends through “hub cap 57” and into air tube assembly

36. (Id. at 19:37-49, Figs. 1, 7-8.) The

pneumatic conduit 16 is the air line of

element 1.3. (Id. at 19:19-33, 5:27-

6:12, 20:65-21:13.) White also

specifies the ball bearings 68 of

element 1.4 affixed between air shaft

66 and hub cap 57 “which allows the

air tube to rotate with wheel 32 and

tire 14 in relation to body 58,” as

indicated here. (Id. at 19:38-40, Fig.

10.)

hubcap 57 (added to Fig. 10)

ball bearings 68 (between hubcap and

air shaft)

air shaft 66


55

2. Obviousness Based on White and Schultz

Besides the evidence of obviousness discussed above in Section IV.A and

Grounds 1-2, ample additional reasons demonstrate why a person of skill in the art

would combine the functionality of a relief valve to release air, as in Schultz, with

a tire inflation system like White.

Schultz expressly teaches several well-known advantages of releasing tire

pressure as needed using relief valves, for example, including to improve riding

comfort and traction. (See Ex. 1002 at ¶ 130.) Schultz states that “it is often

desirable to decrease the tire pressure from the over-the-road or highway inflation

pressure to increase riding comfort on rough roads” and that “it is well known that

the traction of vehicles on relatively soft terrain (i.e., on mud, sand, or snow), may

be greatly improved by decreasing the inflation pressure within the tires.” (Ex.

1008 at 1:45-54, emphasis.) This is because, as shown in Schultz Figure 8 below,

and as well-known in the art, varying the inflation pressure as needed makes for

more contact area between the tire and the road. (Id. at 4:22-29.)


56

Schultz also emphasizes the importance of “maintenance of an operator or

system selected pressure” by taking “whatever corrective action (inflate or deflate)

that is required to maintain said selected pressure.” (Id. at 10:32-37.) Similarly,

White repeatedly emphasizes the importance of avoiding over-inflated tires. (Ex.

1005 at 2:64-67, 18:56-65, 22:1-16, 23:12-15.)

One having skill in the art would have had an expectation of success in

combining the tire inflation system of White with the relief valve function of

Schultz to render obvious the claimed invention, including element 1.1d. (See Ex.

1002 at ¶¶ 129-132.) Schultz’s teaching of the function of a valve assembly 11 that

carries out the “deflate mode of operation” meets the relief valve element 1.1d.

(Ex. 1008 at 12:4-10.) This mode of operation depends on whether the “selected

desired pressure” is met; that is, whether the tire air pressure rises above a second

adjustable valve, as claimed. (Id. at 10:47-53.) Schultz states to locate the tire valve

assembly “at a relatively protected location on the tire rim or hub or inside the tire


57

chamber 74” that rotates with the tire. (Id. at 12:41-44.) This teaching would have

motivated one of skill to combine the function of Schultz’s relief valve assembly

with the rotary air chamber of White, as in element 1.1d. (See Ex. 1002 at ¶¶ 129-

132.)

3. Representative Claim Charts Based on White and Schultz for Claims 1, 8-10


U.S. Patent No. 7,273,082 to White (Ex. 1005)


“One objective of the present invention is to provide a tire inflation system with an improved ability to accurately check and monitor the inflation pressure of a vehicle tire….” (Ex. 1005 at 2:61-3:9, see also Abstract, Figs. 1, 7, 8.)


White shows a rotary air chamber secured to a hub cap in Figures 7 and 8, including the “air tube assembly 36” that is secured to “hub cap 57” via “bulkhead fitting 106” (Ex. 1002 at ¶¶ 118-19):

“Turning now to FIGS. 7 and 8, rotary union 34 of system 10 facilitates the connection of pneumatic conduit 16 to air tube assembly 36, which rotates with tire 14….” (Id. at 18:66-19:6.)

“Wheel 32 is mounted on axle 30 in a manner known in the art, and tire 14 in turn is mounted on the wheel, also as known in the art….Rotary union 34 is attached to a plug 92 that is press-fit in a tight-tolerance, machined section 55 of axle central bore 54 at an outboard end of axle 30 and fluidly connects to third pneumatic conduit section line 16c. A hub cap 57 is mounted on a wheel hub 56 over the outboard end of axle 30. Air tube assembly 36, which includes check valve 38 (FIG. 1), is rotatably connected to rotary union 34 under hub cap 57, passes


58



through the hub cap, and connects to tires 14, as will be described in greater detail below.” (Id. at 19:19-33, see also 19:33-20:64, 6:4-25, Figs. 9-11, 19.)

“As shown, air tube assembly 36 includes a first flexible air tube 104 that fluidly connects to rigid tube 66 and leads to a bulkhead fitting 106, which in turn fluidly connects to a tee fitting 108….” (Id. at 21:1-19.)


“Air tube assembly 36, which includes check valve 38 (FIG. 1), is rotatably connected to rotary union 34 under hub cap 57, passes through the hub cap, and connects to tires 14, as will be described in greater detail below.” (Id. at 19:28-33.)

“A rotary union 34, to be described in greater detail below, is mounted on an outboard end of axle 30 and facilitates fluid communication between third pneumatic conduit section 16c and an air tube assembly 36, which in turn fluidly connects to tire 14. A tire pressure retention valve 38 (also shown in FIG. 19) is included in air tube assembly 36. Tire pressure retention valve 38 may be of any type that is well-known in the art, and is preferably a check valve and will be referred to hereinbelow as such. Check valve 38 is biased to a closed position when the air pressure in tire 14 is higher than the air pressure in third pneumatic conduit 16c to isolate each tire 14 from the rest of system 10, including other tires. Thus, air passes from supply tank 12 via pressure protection valve 17 through supply solenoid 18, delivery solenoid 24 and axle 30 via pneumatic conduit 16 to arrive at rotary union 34, where it passes through air tube assembly 36, including check valve 38, and into tire 14.” (Id. at 6:8-25.)

“[W]hile reference herein is made to certain components in singular form for the purposes of ease and clarity of description, it is to be understood that, since multiple tires 14 are included on the vehicle, multiple axles 30, wheels 34, rotary unions 34, air tube assemblies 36, check valves 38 and associated


59



components are contemplated.” (Id. at 6:35-41, Figs. 1, 7-8, 9-11, 19.)

[1.1c] each check valve configured to inject air into a corresponding tire when tire air pressure drops below a first adjustable preset value, and

“Check valve 38 is biased to a closed position when the air pressure in tire 14 is higher than the air pressure in third pneumatic conduit 16c to isolate each tire 14 from the rest of system 10, including other tires. Thus, air passes from supply tank 12 via pressure protection valve 17 through supply solenoid 18, delivery solenoid 24 and axle 30 via pneumatic conduit 16 to arrive at rotary union 34, where it passes through air tube assembly 36, including check valve 38, and into tire 14.” (Id. at 6:17-25.)

“Turning now to FIG. 6G, if controller 42 detects that tire 14 has an air pressure which is below the target value, an extended-pulse inflation procedure commences….” (Id. at 17:49-18:12, 7:37-65.)


Although White does not disclose the claimed relief valves configured to release air from tires, White emphasizes the importance of avoiding over-inflated tires. (Id. at 2:64-67, 18:56-65, 22:1-16, 23:12-15.) Thus, one of skill would have had specific reason to combine White with art such as Schultz (Ex. 1008), which further describes the advantages and operation of known relief valves in the art used to release air from over-inflated tires, to render obvious the claim as a whole. (Ex. 1002 at ¶¶ 128-32.)

[1.2] an air shaft extending through the hub cap and into the

“With additional reference to FIGS. 9-11, rotary union 34 includes a cylindrical body 58 that has an inboard half 60 and an outboard half 62, with the two halves being screwed together. A central bore 64 is formed in body 58, which receives a one-piece


60



rotary air chamber;

rigid air tube 66. Rigid air tube 66 seats on bearings 68 that are housed about central bore 64, which allows the air tube to rotate with wheel 32 and tire 14 in relation to body 58….” (Id. at 19:33-50, Figs. 7-11.)


“A pneumatic conduit 16 extends between and interconnects components of inflation system 10. More particularly, a first pneumatic conduit section 16a extends between and fluidly connects tank 12 via a pressure protection (PPT) valve 17 to a first, or supply, valve 18…. When supply solenoid 18 is energized, pressurized air passes through it to a second pneumatic conduit section 16b and to a second valve 24, also known as a delivery valve, which in turn is connected to a third pneumatic conduit section 16c…. After pressurized air passes through delivery solenoid 24 when the delivery solenoid is energized, it proceeds through third pneumatic conduit section 16c, which passes through a vehicle axle 30, on which a wheel 32, including tire 14, is rotatably mounted in a usual manner. A rotary union 34, to be described in greater detail below, is mounted on an outboard end of axle 30 and facilitates fluid communication between third pneumatic conduit section 16c and an air tube assembly 36, which in turn fluidly connects to tire


61



14.” (Id. at 5:27-6:12.)

“With reference now to FIGS. 1 and 7-11, air tube assembly 36 connects to and fluidly communicates with rigid air tube 66 of rotary union 34 to convey air from the rotary union to tires 14. It is to be understood that air tube assembly 36 includes removable components that may be alternately configured….” (Id. at 20:65-21:13, Figs. 1, 7, 8.)


“Rigid air tube 66 seats on bearings 68 that are housed about central bore 64, which allows the air tube to rotate with wheel 32 and tire 14 in relation to body 58.” (Id. at 19:38-40, Fig. 10, Ex. 1002 at ¶ 126.)


62




“Supply source 12 includes components known in the art, such as a compressor, accumulator, and/or tank, as well as combinations thereof, and will be referred to hereinbelow for the purpose of convenience as a supply tank 12. Tank 12 optimally is charged with compressed or pressurized air to about 120 pounds per square inch (psi), but may fluctuate between about 85 psi and about 130 psi, and is connected, by components to be described in detail below, to vehicle tires 14.” (Id. at 5:5-24, Fig. 1, 6:4-25, 19:19-33.)

[9] The system of claim 8, further comprising that the air line is connected to at least one shut-off valve between the air tank and the rotary air chamber.

“A pneumatic conduit 16 extends between and interconnects components of inflation system 10. More particularly, a first pneumatic conduit section 16a extends between and fluidly connects tank 12 via a pressure protection (PPT) valve 17 to a first, or supply valve 18. First valve 18 may be of any type that is well-known in the art, such as a ball valve, gate valve, solenoid valve, and the like….When supply solenoid 18 is de-energized, that is, in a closed position as shown in FIG. 1, no air passes from first conduit section 16a through the supply solenoid.” (Id. at 5:27-45, Fig. 1.)


63




Although White does not expressly disclose the claimed regulator, White teaches that it was common knowledge before the time of invention that central tire inflation systems included a “a simple mechanical air pressure regulator to set the tire pressure.” (Id. at 1:60-63.) Thus, there is reason to combine the tire inflation system of White, for example, with the “conventional” regulator design described by Schultz to render obvious this claim as a whole. (See Ex. 1008 at 6:36-46, Ex. 1002 at ¶ 136.)

4. Claims 12-17 in View of White and Schultz


dependent claim 8, such as White’s air supply tank 12, air line pneumatic conduit

16 through axle 30, and central bore 54 air shaft. (See, e.g., Ex. 1005 at 5:11-6:12,

19:19-32, Figs. 1, 7-8, Ex. 1002 at ¶ 138.) Element 12.2 is met by the evidence for

elements 1.1a-c and dependent claim 10, such as the simple mechanical regulator

described by White (Ex. 1005 at 1:60-63) and/or Schultz (Ex. 1008 at 6:36-46) in

combination with the rotary air chamber element 36 (Ex. 1005 at 6:4-25), and

check valves 38 of White (id. at 18:66-19:6). (Ex. 1002 at ¶ 139.) Element 12.3 is

met by the evidence for element 1.d, such as the relief valves of Schultz in

combination with White. (See, e.g., Ex. 1008 at 12:4-37, Ex. 1002 at ¶ 140.) The


64

reasons to combine White and Schultz for claim 12 (and its dependents) are the

same as for claim 1, discussed above.

Dependent claim 13 is met because the causing means of White remains

stationary. (Id. at Figs. 1, 7-8, Ex. 1002 at ¶ 142.) Dependent claim 14 is met

because the injecting means of White in view of the releasing means of Schultz

would have been configured to inject/release air from a second tire as taught in

White. (Id. at Figs. 1, 7-8, Ex. 1002 at ¶ 143.) Dependent claim 15 is met by

White’s disclosure that “air tube assembly 36, which includes check valve 38 (FIG.

1), is rotatably connected to rotary union 34 under hub cap 57.” (Id. at 19:28-30,

see also 18:66-19:1.) Dependent claims 16 and 17 are met by White’s teaching of

a rotary air chamber discussed above. (See, e.g., id. at 18:66-19:6.)

IX. CONCLUSION

For the foregoing reasons, Petitioners respectfully request that the Board

institute inter partes review trial and that claims 1, 8-10, and 12-17 of the ’465

patent be canceled as unpatentable.

Respectfully submitted,

Dated: May 31, 2017 By: /s/ Michael G. Babbitt /s/ Lead Counsel for Petitioner


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CERTIFICATE OF COMPLIANCE

The undersigned certifies that this Petition complies with the applicable

type-volume limitations of 37 CFR § 42.24. Exclusive of the portions exempted by

37 CFR § 42.24(a), this Petition contains 13,993 words as counted by the word

processing program used for its preparation (Microsoft Word 2007).

/s/ Michael G. Babbitt /s/ Lead Counsel for Petitioner


CERTIFICATE OF SERVICE

I hereby certify that on May 31, 2017, I caused a true and correct copy of the

foregoing materials:

• Petition for Inter Partes Review of U.S. Patent No. 7,669,465

• Exhibits 1001-1045

• Table of Exhibits for Petition for Inter Partes Review of U.S. Patent No. 7,669,465 (Ex. 1001-1045)

• Petitioners’ Powers of Attorney

to be served via: Express Mail to the Patent Owner’s Attorney of Record as

follows:

Sharad Bijanki Vivek Ganti Gregory Ourada Hill, Kertscher & Wharton, LLP 3350 Riverwood Parkway Suite 800 Atlanta GA 30339

/s/ Michael G. Babbitt /s/

Lead Counsel for Petitioner

patent no. 7,669,465 petition for inter partes review in … no. 7,669,465 petition for inter partes...

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