PTAB

IPR2015-00273

Shimano Inc v. Globeride Inc

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Spinning Fishing Reel with Magnetic Seal
  • Brief Description: The ’022 patent discloses a spinning fishing reel featuring a magnetic seal device arranged between a driving part (e.g., a pinion gear) and a support part (e.g., the reel body). The technology aims to prevent water and debris from contaminating internal components like the one-way clutch and bearings.

3. Grounds for Unpatentability

Ground 1: Claims 1-12 are obvious over JP212 in view of JP042.

  • Prior Art Relied Upon: JP212 (Japanese Publication # JP2009-131212) and JP042 (Japanese Publication # JPH11-276042).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that JP212 discloses every element of independent claim 1 except for the use of a magnetic seal. JP212 teaches a complete spinning reel with a reel body, rotor, handle, and drive shaft, and includes a conventional, non-magnetic seal arranged between the drive shaft and the support body to prevent water from entering the clutch and bearings. JP212 also discloses radial openings in the rotor for weight reduction, satisfying limitations in dependent claims.
    • Motivation to Combine: Petitioner asserted that JP042 explicitly teaches using a magnetic seal in a spinning reel for the identical purpose: to seal the opening between a component and a rotating shaft to prevent water ingress. A person of ordinary skill in the art (POSITA), seeking to improve the sealing of the reel taught in JP212, would substitute the conventional seal with the known magnetic seal taught by JP042 to achieve a better-performing seal, a well-known and predictable design choice.
    • Expectation of Success: A POSITA would have a high expectation of success, as magnetic seals were known components for fishing reels, and JP042 provides a clear blueprint for their implementation. Petitioner further noted that other art, such as the ’819 patent, explicitly states that conventional seals and magnetic seals are interchangeable in this context.

Ground 2: Claims 1-3 and 5-8 are obvious over the ’819 patent in view of JP212.

  • Prior Art Relied Upon: Furomoto (Patent 6,598,819) and JP212 (Japanese Publication # JP2009-131212).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that the ’819 patent discloses a spinning reel with all the core components of the challenged claims, including a seal arranged between the driving and support parts. Crucially, the ’819 patent expressly teaches that its conventional seals are interchangeable with "fluid seals employing magnetic fluids," thus teaching the magnetic seal limitation. However, the ’819 patent does not disclose the claimed radial openings in the rotor.
    • Motivation to Combine: Petitioner argued that JP212 explicitly teaches forming radial openings in a spinning reel rotor for the express purpose of weight reduction to create a "lightweight item with improved fishing operability." A POSITA, starting with the reel design of the ’819 patent, would be motivated to incorporate the weight-reducing openings from JP212 to achieve this known and desirable benefit. This combination was argued to be a simple application of a known technique (adding lightening holes) to a known device (’819 patent’s reel) to yield predictable results.
    • Expectation of Success: The outcome of adding openings to a rotor to reduce weight was considered entirely predictable. Therefore, a POSITA would have a clear expectation of success in implementing this modification without undue experimentation.

Ground 3: Claims 1-12 are obvious over JP212 in view of JP042 and JP974.

  • Prior Art Relied Upon: JP212 (Japanese Publication # JP2009-131212), JP042 (Japanese Publication # JPH11-276042), and JP974 (Japanese Publication # JP2002-354974).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the combination of JP212 and JP042 from Ground 1. Petitioner argued that the additional reference, JP974, provides further teachings for the "cap-shaped cover body" recited in dependent claims 2 and 9. JP974 discloses a retaining component that functions as a cap-shaped cover to protect the unidirectional clutch from water penetration, similar to the structure claimed in the ’022 patent.
    • Motivation to Combine: A POSITA, having already combined JP212 and JP042 to create a reel with a magnetic seal, would look to other prior art like JP974 for ways to further enhance the protection of the internal clutch and bearings. Since JP974’s stated purpose for its cap-shaped cover body was to protect the clutch, it would have been obvious to incorporate this feature into the base design to achieve a more robust and water-resistant reel.
    • Expectation of Success: Combining known sealing and protective structures from analogous devices was a routine design practice, leading to a high expectation of success.
  • Additional Grounds: Petitioner asserted an additional obviousness challenge for claims 9-12 over the ’819 patent in view of JP042 and JP974, relying on a similar rationale of substituting known magnetic seals and incorporating known protective cover designs.

7. Relief Requested

  • Petitioner requested the institution of an inter partes review and cancellation of claims 1-12 of the ’022 patent as unpatentable under 35 U.S.C. §103.