Howard Industries Inc v. Capsa Solutions LLC

1. Case Identification

• Case #: IPR2023-01274
• Patent #: 7,594,668
• Filed: August 3, 2023
• Petitioner(s): Howard Industries, Inc.
• Patent Owner(s): Capsa Solutions LLC
• Challenged Claims: 3-4

2. Patent Overview

• Title: Height-Adjustable Medical Cart
• Brief Description: The ’668 patent discloses a height-adjustable medical cart featuring a work platform with storage compartments, a movable base, and a height adjustment mechanism. The core technology relates to the height adjustment mechanism, which comprises telescoping casings, a gas-driven piston (driver), and an actuator for controlling the driver to raise or lower the work platform.

3. Grounds for Unpatentability

Ground 1: Obviousness over Clark, Manner, and Santoro - Claims 3-4 are obvious over Clark in view of Manner and Santoro.

• Prior Art Relied Upon: Clark (Patent 6,493,220), Manner (Patent 5,682,825), and Santoro (Application # 2002/0145088).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Clark taught the foundational elements of the challenged claims, including a mobile medical workstation with an adjustable-height work platform, compartments (drawers), a movable base, and a telescoping height adjustment mechanism using a gas spring. However, Clark disclosed a side-mounted lever actuator. Petitioner contended that Manner taught a height-adjustable work table with a flexible Bowden pull actuator that can be positioned at any desired location for user convenience, such as at the front edge of the work surface. For claim 3, which requires drawer slides, Petitioner asserted that Santoro taught the use of conventional, well-known drawer slides within the telescoping legs of a height-adjustable workstation to ensure smooth movement.
  • Motivation to Combine: A POSITA would combine Clark with Manner because Clark’s own disclosure suggested that a drawer could be added under the work platform, which would physically interfere with Clark’s side-mounted lever actuator. To implement the drawer while maintaining functionality, a POSITA would have been motivated to replace Clark's lever with Manner’s relocatable actuator, placing it in a more accessible forward-facing position. A POSITA would have further been motivated to incorporate Santoro's conventional drawer slides into Clark’s telescoping mechanism to reduce friction and prevent binding, a common problem with a known and predictable solution.
  • Expectation of Success: Petitioner argued a POSITA would have a high expectation of success, as the combination involved substituting known components into a base system for their intended and well-understood purposes to achieve the predictable result of an ergonomic and smoothly operating height-adjustable cart.

Ground 2: Obviousness over Reeder, Manner, and Santoro - Claims 3-4 are obvious over Reeder in view of Manner and Santoro.

• Prior Art Relied Upon: Reeder (Application # 2002/0044059), Manner (Patent 5,682,825), and Santoro (Application # 2002/0145088).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner asserted that Reeder disclosed a base height-adjustable medical cart with all the major components of the claimed invention, including a work platform, compartments, a movable base, and telescoping sections with controls for raising and lowering them. However, Reeder lacked specific details about the internal driver and actuator mechanisms. Petitioner argued Manner supplied these missing details by teaching a gas-spring driver and a corresponding actuator (e.g., Bowden pull) that could be flexibly positioned. As in the first ground, Petitioner relied on Santoro to teach the use of conventional drawer slides between telescoping members to satisfy that limitation of claim 3.
  • Motivation to Combine: A POSITA, starting with Reeder’s functional but mechanically incomplete design, would combine it with Manner to implement a proven and reliable height adjustment mechanism. Manner provided the necessary "how-to" for implementing a gas-spring driver and actuator to make Reeder’s cart fully functional. The motivation to incorporate Santoro's drawer slides was to improve the performance of Reeder's telescoping column by reducing binding, which was a known engineering problem with a conventional solution.
  • Expectation of Success: Petitioner contended the combination would yield predictable results, as it involved supplementing a general system (Reeder) with specific, compatible, and well-known components (from Manner and Santoro) to achieve their established functions.

• Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations including Gillis (Application # 2003/0084828). Gillis was used to teach an arcuate sliding keyboard tray to accommodate both left- and right-handed users, thereby rendering the claims obvious under an alternative, broader construction of the claim term "work surface."

4. Key Claim Construction Positions

• an actuator for controlling the driver: Petitioner noted that it has argued in district court that this term is indefinite. However, for the purposes of the IPR, Petitioner adopted the Patent Owner's proposed construction: "a mechanism to activate or control equipment, e.g., by use of pneumatic, hydraulic, or electronic signals."
• work surface: The parties dispute the meaning of this term in parallel litigation. Petitioner argued for a narrower construction ("a curved surface at the top of a cart large enough to dispense medication or hold work papers"), while Patent Owner advocated for a broader plain and ordinary meaning. To address this dispute, Petitioner presented alternative invalidity grounds including the Gillis reference, arguing the claims are obvious under either party’s proposed construction.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) would be inappropriate. Although the primary reference Clark was of record during the original prosecution of the ’668 patent, it was merely cited and never substantively analyzed or relied upon by the examiner, as the claims were allowed in a first action.
• The petition presented new combinations of prior art (e.g., Clark with Manner and Santoro) and new arguments that were never before the USPTO. Petitioner contended these new combinations teach the very actuator placement that the examiner in a parent application had previously suggested might be a point of novelty.
• To address potential Fintiv concerns, Petitioner stipulated that if the IPR is instituted, it will not pursue in the related district court litigation any invalidity ground that it raised or reasonably could have raised in the IPR.

6. Relief Requested

• Petitioner requests institution of IPR and cancellation of claims 3 and 4 of the ’668 patent as unpatentable.