from the United States Patent and Trademark Office, Patent
Trial and Appeal Board in Nos. IPR2014-01427, IPR2014-01428.
Derek Vandenburgh, Carlson, Caspers, Vanden-burgh, Lindquist
& Schuman, P.A., Minneapolis, MN, argued for appellant.
Also represented by Alan Gary Carlson, Dennis Bremer.
Herriges, Jr., Fish & Richardson P.C., Minneapolis, MN,
argued for cross-appellant. Also represented by John Cameron
Adkisson, Robert P. Courtney, Conrad Gosen.
Lourie, O'Malley, and Hughes, Circuit Judges.
O'Malley, Circuit Judge.
Industries, Inc. ("Polaris") owns U.S. Patent No.
8, 596, 405 ("the '405 patent"), which is
directed to all-terrain vehicles ("ATVs") having at
least two seats arranged side-by-side. Polaris's
competitor, Arctic Cat, Inc. ("Arctic Cat"), filed
two petitions for inter partes review, challenging
the patentability of all thirty-eight claims of the '405
patent as obvious under 35 U.S.C. § 103 based on
different combinations of prior art references. The Patent
Trial and Appeal Board ("Board") found, in two
inter partes review proceedings, that the claims are
unpatentable over one combination of references, but not the
other. See Arctic Cat, Inc. v. Polaris Indus., Inc.,
No. IPR2014-01427, 2016 WL 498434 (P.T.A.B. Feb. 4, 2016)
(1427 Decision); Arctic Cat, Inc. v. Polaris
Indus., Inc., No. IPR2014-01428, 2016 WL 498539
(P.T.A.B. Feb. 4, 2016) (1428 Decision). The parties
reasons below, we affirm in part, vacate in part, and remand
for further proceedings in the 1427 Decision. We
affirm the Board's determination that the challenged
claims were not proven unpatentable in the 1428
'405 patent, titled "Side-by-Side ATV, " issued
on December 3, 2013, and was assigned to Polaris. According
to the specification, the invention of the '405 patent
"relates to [ATVs] having at least a pair of laterally
spaced apart seating surfaces." '405 patent, col. 1,
ll. 10- 12. At several points, the '405 patent expresses
a desire that the ATV have a low center of gravity. The
specification, for example, explains that in one
"illustrative embodiment, " shown in Figure 2,
"the ratio of the wheelbase to the seat height, or
distance A to distance B, is about 6.55 to 1."
Id. col. 4, ll. 19-21. The specification goes on to
state that "the present invention contemplates ATVs
having a ratio of wheelbase to seat height greater than about
6.0 to 1, " which "facilitates a relatively low
vehicle center of gravity and further provides improved
ergonomics, handling, and space utilization."
Id. col. 4, ll. 23-28. The specification also
provides that, in another embodiment, "various
relatively heavy components" such as the battery and
fuel tank "are positioned vertically proximate the frame
15 to lower the vehicle's center of gravity, thereby
improving balance and stability." Id. col. 5,
the thirty-eight claims recites components housed within the
ATVs, and specifies the spatial relationship between these
components. For example, independent claim 1, at issue on
appeal, recites an ATV including:
[a] a frame, comprising a front frame portion, a mid frame
portion and a rear frame portion;
[b] a front suspension supported by the front frame portion;
[c] at least two front wheels coupled to the front
[d] a front axle assembly supported by the front frame
portion and drivingly coupled to the front wheels;
[e] a seating area supported by the mid frame portion,
comprising side by side seats;
[f] an engine supported by the rear frame portion, the engine
positioned rearwardly of the seating area;
[g] a transmission coupled to and extending rearwardly of the
[h] a rear suspension supported by the rear frame portion;
[i] at least two rear wheels coupled to the rear suspension;
[j] a rear axle assembly supported by the rear frame portion
and drivingly coupled to the rear wheels;
[k] a front drive shaft extending between the transmission
and the front axle assembly for coupling the transmission to
the front wheels;
[l] and a rear drive shaft extending between the transmission
and the rear axle assembly for coupling the transmission to
the rear wheels.
Id. col. 11, ll. 2-25.
claims that depend from claim 1-i.e., claims 2-33
and 35-either specify the spatial relationship between the
various components or recite additional components, such as
"side-by-side bucket seats having a seat back and seat
bottom." Id. col. 11, ll. 26-28 (claim 2). Also
at issue on appeal are dependent claims 15-19, which include
limitations regarding the placement of a "protective
panel, " fuel tank, battery, and front driveshaft.
Id. col. 11, l. 61-col. 12, l. 6. These five claims
all depend from claim 5, which recites "[t]he
all-terrain vehicle of claim 1, wherein the rear frame
portion comprises a lower rear frame portion and an upper
rear frame portion." Id. col. 11, ll. 35-37.
only other independent claim, claim 34, differs from claim 1
in two relevant ways. First, while claim 1 requires that the
front and rear drive shafts "extend between" the
transmission and the front and rear axle assemblies,
respectively, claim 34 requires that these drive shafts
"extend forward of the transmission" and
"rearward of the transmission, " respectively.
Compare id. col. 11, ll. 20-26, with id.
col. 13, ll. 6-11. Second, while claim 1 requires that the
transmission "extend rear-wardly of the engine, "
claim 34 requires that the transmission be located
"completely rearward of the seating area."
Compare id. col. 11, ll. 14-15, with id.
col. 12, ll. 66-67.
prior art references-U.S. Patent Nos. 7, 658, 258
("Denney"), 5, 327, 989 ("Furuhashi"),
and 3, 709, 314 ("Hickey")-are relevant to these
appeals. These references are described below.
is directed to "an all terrain, four-wheeled vehicle
frame for carrying at least two passengers in a side-by-side
riding configuration, comprising a rigid, tubular frame
body." Denney, at Abstract. The invention of
Denney "provides for a forward passenger compartment
having structural support members for carrying a pair of
seats for the side-by-side passengers" and "a
rearward engine compartment configured for receiving an
engine, power train, and transmission for driving wheels of
the vehicle." Id. The invention in Denney
"includes a vertical, load-bearing truss member
extending generally along a longitudinal, central axis of the
vehicle within the passenger compartment, the truss member
forming a load-bearing structural member between the pair of
specification describes the state of the art at the time of
the invention disclosed therein, and the tradeoffs between
certain known vehicle designs. The specification explains
that ATVs "typically have a short wheelbase which gives
the ATV increased maneuverability and
transportability over their counterpart recreational
vehicles such as sandrails or a dune buggies [sic]."
Id. col. 1, ll. 17-20 (emphasis added). But,
"[h]istorically, ATVs with a shorter wheelbase require
that the ATV occupancy area be raised to accommodate the
decreased amount of space between the wheels. By raising the
occupancy area, the center of gravity of the ATV is also
raised." Id. col. 1, ll. 22-26 (emphasis
added). "The result of a higher center of gravity is a
decrease in vehicle stability and subsequent
increased risk of rollovers." Id. col.
1, ll. 26-28 (emphasis added).
other hand, recreational vehicles such as dune buggies
"with wider wheelbases are able to accommodate vehicle
occupants lower in the vehicle plane and hence have a
lower center of gravity." Id. col. 1,
ll. 30-32 (emphasis added). But "the wider wheelbase
decreases the vehicles [sic]
maneuverability as well as the ability to transport
the recreational vehicle in the back of a standard pick up
truck bed." Id. col. 1, ll. 34-36 (emphasis
added). Denney therefore explains that "[i]t would be
advantageous to combine the attractive features of the lower
center of gravity vehicles with the attractive features of
the shorter wheelbase . . . vehicles such that the resultant
ATV has the increased maneuverability and transportability of
a smaller ATV and the lower center of gravity and resultant
enhanced stability of the vehicles with the wider
wheelbases." Id. col. 1, ll. 37-43.
invention described in Denney purports to achieve this
desired combination, but purportedly does so in a
two-wheel drive system. See id. col. 4, ll.
29-35 (describing the power train giving the rear wheels
additional movement through the driving axle). It is
undisputed that Denney lacks features claimed in the '405
patent that relate to front-wheel drive. See
Cross-Appellant Br. 17. It is also undisputed that Denney
does not disclose the additional limitations recited in
claims 16-19 of the '405 patent. See id. at
by contrast, is directed to a "four-wheeled buggy"
that can accommodate a single rider. Furuhashi, at
Abstract; id. col. 1, ll. 6-9. Furuhashi's
specification explains that, in one embodiment, "a seat
S is arranged in front of the engine room 11 and a fuel tank
120 is located within an area defined under a cushion 81 of
the seat S." Id. col. 12, ll. 23-26. Moreover,
"[a] battery 16" is "arranged at the right
side of the engine 12 in such a way that the battery 16 is
supported on the right main frame 1 . . . ."
Id. col. 5, ll. 39-42. The specification goes on to
explain that, "[u]nder a seatback 80 a fixed plate 123
is provided to cover a clearance 122 positioned behind the
rider's waist and is formed thereon with air ventilating
slots 124." Id. col. 12, ll. 31-34. In
addition, Figure 19 depicts a "space 121" running
below the fixed plate 123, the "lower part" of
which "is provided for ...