Jacobs Corp v. Genesis III Inc

1. Case Identification

• Case #: IPR2014-01267
• Patent #: 7,140,569
• Filed: August 11, 2014
• Petitioner(s): Jacobs Corp.
• Patent Owner(s): Genesis III
• Challenged Claims: 1-30

2. Patent Overview

• Title: Improved Hammermill Hammer
• Brief Description: The ’569 patent discloses a metallic, forged hammer for use in rotatable hammermill assemblies used for comminuting, or grinding, material. The invention centers on a specific hammer geometry where a connecting neck between the two ends of the hammer has a thickness that is less than the thickness or width of the ends, a design intended to improve durability and performance.

3. Grounds for Unpatentability

Ground 1: Anticipation and Obviousness over Kachik - Claims 1-30 are anticipated or obvious over Kachik.

• Prior Art Relied Upon: Kachik (Patent 4,856,170).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Kachik, which discloses a forged hammer for a hammermill, anticipates all limitations of independent claims 1, 8, 18, and 23. Petitioner contended that Kachik’s hammer (101) includes a first end (103) for mounting, a second end (102) for impact, and a connecting neck (104). Critically, Petitioner asserted that the figures in Kachik inherently show the neck’s thickness is less than the thickness of the first end and rod hole shoulder, thus meeting the core dimensional limitation of the ’569 patent’s independent claims. Kachik also explicitly teaches that its hammer is both forged and heat-treated after forging, anticipating those specific claim limitations.
  • Motivation to Combine (for §103 grounds): For the dependent claims, Petitioner argued that achieving recited features would have been obvious to a person of ordinary skill in the art (POSITA). Modifications such as limiting the hammer’s swing length (claim 2) or weight (claim 3) were asserted to be simple and predictable design choices. For claims requiring tungsten carbide on the hammer’s periphery (e.g., claim 6), Petitioner argued this was an obvious modification, citing the ’569 patent’s own admission that adding weld material like tungsten carbide to improve hardness was "well known in the art."
  • Expectation of Success: A POSITA would have a high expectation of success in making these minor dimensional or material modifications, as they involved applying routine, well-understood principles to achieve predictable results in durability and performance.

Ground 2: Obviousness over Hermann in view of Kachik and other references - Claims 1-30 are obvious over combinations based on Hermann.

• Prior Art Relied Upon: Hermann (Patent 3,058,676) and Kachik (Patent 4,856,170), with additional references for specific dependent claims.
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Hermann discloses the basic structure of a hammermill hammer with a first end, a second end, and a connecting neck that is visibly the thinnest part of the hammer. This base design from Hermann provides the general shape and dimensional relationships central to the ’569 patent. However, Hermann does not explicitly teach that its hammer is forged or heat-treated.
  • Motivation to Combine (for §103 grounds): A POSITA, seeking to improve the durability and wear resistance of the Hermann hammer, would have been motivated to look to well-known manufacturing techniques in the field. Petitioner argued Kachik provides a clear teaching of forging and heat-treating hammermill hammers specifically to improve their strength and service life. A POSITA would combine Kachik’s manufacturing process with Hermann’s hammer design to create a stronger, more wear-resistant product, arriving at the claimed invention. The combination was presented as the application of a known technique (forging/heat-treating from Kachik) to a similar device (the Hermann hammer) to obtain predictable results.
  • Expectation of Success: The outcome of applying forging and heat-treating processes to a metallic hammer was well-understood and highly predictable. Therefore, a POSITA would have had a reasonable expectation of success in creating a more durable hammer by combining the teachings of Hermann and Kachik.

Ground 3: Anticipation and Obviousness over Schillinger - Claims 1 and others are anticipated or obvious over combinations based on Schillinger.

• Prior Art Relied Upon: Schillinger (Application # 2004/0017955), with Kachik (Patent 4,856,170) for certain claims.

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that Schillinger anticipates every element of independent claim 1. Schillinger discloses a hammermill hammer with a first end (18), a second end (18), a rod hole (11) with shoulders (10.1), and a connecting neck (15). Petitioner asserted that Schillinger’s figures and description teach that the neck’s thickness is less than the combined thickness of the rod hole shoulder and the first end, directly reading on the limitation of claim 1.
  • Motivation to Combine (for §103 grounds): For claims that additionally require the hammer to be forged (e.g., claim 8), Petitioner argued it would have been obvious to manufacture the Schillinger hammer using the forging process taught by Kachik. A POSITA would have recognized the known benefits of forging—namely, improved strength and grain structure—and would have been motivated to apply this conventional manufacturing technique to the hammer disclosed in Schillinger to enhance its performance and durability.
  • Expectation of Success: Applying the standard industrial process of forging, as taught by Kachik, to the hammer design of Schillinger was a straightforward implementation of a known technique to improve a known device, carrying a high expectation of success.

• Additional Grounds: Petitioner asserted numerous other obviousness challenges, primarily based on Hermann in view of Kachik and further combined with secondary references to teach specific features. These included combinations with Eilers (Patent 3,045,934) for teaching tungsten carbide tips, Balvanz (Patent 6,419,173) for hardened edges, and Anderson (Patent 2,566,758) for multiple rod hole shoulders.

4. Relief Requested

• Petitioner requests the institution of an inter partes review and the cancellation of claims 1-30 of Patent 7,140,569 as unpatentable.