Par Kan Co LLC v. Unverferth Mfg Co Inc

1. Case Identification

• Case #: IPR2024-01426
• Patent #: 8,967,940
• Filed: September 11, 2024
• Petitioner(s): Par-Kan Company, LLC
• Challenged Claims: 16-23

2. Patent Overview

• Title: Seed Carrier with Pivoting Conveyor
• Brief Description: The ’940 patent discloses a seed or grain carrier featuring a main hopper, a pivoting conveyor, and a support arm. The support arm is rotatably coupled to a base, allowing vertical axis rotation, and the conveyor is pivotably coupled to the support arm, enabling it to move between a loading position and an unloading position.

3. Grounds for Unpatentability

Ground 1: Obviousness over Hiniker Combination - Claims 16, 18-21 are obvious over Hiniker Manual in view of Hiniker Webpage.

• Prior Art Relied Upon: Hiniker Manual (a 2001 assembly manual for the Hiniker 4800 Series Air Seeder) and Hiniker Webpage (a 2006 archived webpage for the same product line).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the Hiniker Manual discloses a seed tender with a seed tank (main hopper), a mounting plate (base), a "swing arm" (support arm), and a "pivoting outer tube" (first coupling) that allows the support arm to rotate about a vertical axis. The manual also disclosed a hinge and ratchet jack assembly allowing rotation about a horizontal axis. Petitioner contended the disclosed auger is a type of "conveyor" and that its connection via a "swing arm pivot" (second coupling) is near its center of gravity. To meet the limitation of rotating between loading and unloading positions, Petitioner cited the Hiniker Webpage, which explicitly states the auger "may be used to both fill and empty the seed hopper."
  • Motivation to Combine (for §103 grounds): A POSITA would combine the Hiniker Manual and Webpage because they describe the same product family and provide complementary information (assembly instructions versus operational capabilities). The combination would provide a more complete understanding of the product’s features.
  • Expectation of Success (for §103 grounds): Because the references describe the same product, a POSITA would have known that combining their teachings was not only achievable but had already been implemented by Hiniker, ensuring a high expectation of success.

Ground 2: Obviousness over Hiniker Combination and Baskerville - Claims 22-23 are obvious over Hiniker Manual in view of Hiniker Webpage and Baskerville.

• Prior Art Relied Upon: Hiniker Manual, Hiniker Webpage, and Baskerville (Patent 5,888,044).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the Hiniker combination from Ground 1 to address dependent claims 22 and 23. For claim 22, Petitioner argued that Baskerville discloses a "hydraulic lifting cylinder" (hydraulic piston) connected to its support arm to assist with vertical pivoting. For claim 23, Petitioner asserted that Baskerville discloses a "companion seed bin" with a stand that supports the conveyor hopper above the ground when in a loading position.
  • Motivation to Combine (for §103 grounds): A POSITA would replace Hiniker's manual ratchet jack assembly with Baskerville’s hydraulic piston to achieve the known benefits of remote control, safer operation, and smoother movement. A POSITA would also incorporate Baskerville's stand into the Hiniker design to increase stability, reduce spillage during loading, and keep the conveyor hopper off the ground and free from contaminants.
  • Expectation of Success (for §103 grounds): Incorporating a hydraulic piston or a simple stand—both well-known components—into the Hiniker system for their known functions would have been a routine design modification with predictable results.

Ground 3: Obviousness over Morris and Furrer - Claims 16-21 are obvious over Morris in view of Furrer.

• Prior Art Relied Upon: Morris (a 2006 operator's manual for a 7000 Series Air Cart) and Furrer (Patent 7,500,817).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Morris discloses a seed tender with an auger on a support arm that pivots between loading and unloading positions, meeting many elements of independent claim 16. Furrer was introduced primarily to teach mounting the support arm on a rotatable base ("turret 28") positioned under the main hopper, rather than on its side as in Morris. Furrer’s turret design allows the vertical axis of rotation to extend through the main hopper discharge, as required by claim 17.
  • Motivation to Combine (for §103 grounds): A POSITA would modify the Morris design with Furrer’s teachings to gain significant advantages. These included greater flexibility in positioning the conveyor (e.g., forward and rear unloading), improved stability from a lower center of gravity, and the ability to replace Morris's complex two-bar linkage support arm with a simpler, rigid support arm.
  • Expectation of Success (for §103 grounds): The proposed modifications involved combining known components from the same technical field to achieve predictable benefits. Adding a structure like Furrer's turret to the Morris tender was a routine design change to enhance functionality and stability.
• Additional Grounds: Petitioner asserted additional obviousness challenges, including for claim 17 based on the Hiniker combination in view of Furrer, and for claims 22-23 based on the Morris/Furrer combination in view of Baskerville.

4. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial for several reasons. First, it contended that the General Plastic factors do not apply because this is the first IPR petition filed against the ’940 patent. Second, Petitioner asserted that it filed a stipulation agreeing not to pursue the same grounds in parallel litigation, which weighs against denial under the Fintiv factors. Finally, Petitioner argued against denial under §325(d) because the primary prior art references (Hiniker Manual, Morris) were never before the USPTO, and the asserted combinations of secondary art were not previously considered or evaluated by the examiner.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 16-23 of Patent 8,967,940 as unpatentable.