Par Kan Co LLC v. Unverferth Mfg Co Inc

1. Case Identification

• Case #: IPR2024-01427
• Patent #: 9,745,123
• Filed: September 11, 2024
• Petitioner(s): Par-Kan Company, LLC
• Challenged Claims: 10-21

2. Patent Overview

• Title: Seed Carrier with Pivoting Conveyor
• Brief Description: The ’123 patent discloses a seed or grain carrier comprising a main hopper for holding material and a conveyor for transport. The conveyor is mounted on a support arm that is pivotably coupled to the carrier's base, allowing the conveyor to be moved between various loading and unloading positions.

3. Grounds for Unpatentability

Ground 1: Obviousness over Morris and Baskerville - Claims 10, 12-21 are obvious over Morris in view of Baskerville.

• Prior Art Relied Upon: Morris (Operator’s Manual, 7000 Series Air Cart, Sept. 2004) and Baskerville (Patent 5,888,044).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Morris, a manual for a commercial air cart, discloses nearly all limitations of independent claim 10, including a seed tender with a main hopper and a conveyor (specifically, an auger) mounted on a support arm. The support arm in Morris pivots about a first, vertical axis to move between operating and storage positions. To meet the limitation of a second pivot axis for adjusting elevation (claim 10.4), Petitioner pointed to Baskerville, which teaches a seed cart with a support arm that pivots both horizontally and vertically about its proximate end to adjust the conveyor's height.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Morris and Baskerville as both relate to seed conveyor systems and address the problem of improving seed transport. Petitioner asserted a POSITA would recognize the benefits taught by Baskerville of having vertical pivot capability—namely, allowing discharged seed to be directed with greater precision to planting equipment of various heights, minimizing spillage, and reaching taller equipment.
  • Expectation of Success: Petitioner contended a POSITA would have a reasonable expectation of success because the modification was routine. It required adding a known horizontal hinge and hydraulic piston, as disclosed in Baskerville, to the Morris system to achieve the predictable result of adjustable conveyor elevation.

Ground 2: Obviousness over Morris, Baskerville, and Furrer - Claim 11 is obvious over Morris and Baskerville in view of Furrer.

• Prior Art Relied Upon: Morris, Baskerville, and Furrer (Patent 7,500,817).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground specifically addresses dependent claim 11, which requires the "first axis of rotation extends through said main hopper discharge." While Morris discloses a side-mounted support arm, Furrer discloses a seed tender where the support arm is mounted to a turret positioned directly below the main hopper. This configuration inherently results in the vertical axis of rotation extending through the hopper's discharge point.
  • Motivation to Combine: A POSITA would be motivated to incorporate Furrer's under-hopper mount design into the Morris-Baskerville system to achieve the "great flexibility and adaptability" touted by Furrer. This design allows the conveyor to be positioned for forward, rearward, and side unloading, a significant improvement over the side-only operation in Morris. It also allows for the use of a simpler, more rigid support arm, reducing mechanical complexity.
  • Expectation of Success: Success was expected, as the modification involved the routine addition of known components (a support module and turret like Furrer's) to achieve the predictable advantages of enhanced positioning flexibility.

Ground 3: Obviousness over Hiniker Manual, Hiniker Webpage, and Furrer - Claims 10-19 are obvious over Hiniker Manual and Hiniker Webpage in view of Furrer (and, if necessary, Morris).

• Prior Art Relied Upon: Hiniker Manual (Assembly Manual, Jan. 2001), Hiniker Webpage (archived webpage, Mar. 2006), and Furrer.

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner presented the Hiniker references as a new primary combination. The Hiniker Manual and a corresponding Hiniker Webpage for the same product family disclose an air seeder with a seed tank and an auger on a "swing arm" that pivots both horizontally (about a "pivoting outer tube") and vertically (using a "ratchet jack assembly"). The webpage clarifies the auger can both fill and empty the hopper. Petitioner again relied on Furrer to teach mounting the pivot point underneath the hopper discharge.
  • Motivation to Combine: A POSITA would first combine the Hiniker Manual and Webpage because they describe the same product and provide complementary details. A POSITA would then modify this system with Furrer's teachings for two primary reasons: 1) to gain the same "great flexibility" in conveyor positioning as described in Ground 2, and 2) to improve the tender's stability by lowering its overall center of gravity, which results from moving the support arm mount below the hopper.
  • Expectation of Success: The combination was presented as a routine design choice, adding known structures from Furrer to achieve the predictable results of improved stability and greater operational flexibility.

• Additional Grounds: Petitioner asserted an additional obviousness challenge for claims 20 and 21 based on the Hiniker/Furrer combination further in view of Baskerville to teach a hydraulic piston and a support stand.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise discretionary denial. Under the Fintiv factors, denial is inappropriate because Petitioner stipulated not to pursue the same grounds in parallel district court litigation. Petitioner also contended that denial under 35 U.S.C. §325(d) is unwarranted because the petition's primary references (Morris and the Hiniker Webpage) were never before the examiner during prosecution. While other references (Baskerville, Furrer, an earlier Hiniker Manual) were of record, Petitioner argued the examiner clearly erred in his evaluation or did not consider them in the combinations asserted in the petition.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 10-21 of the ’123 patent as unpatentable.