Filed May 27, 2025
`
`
`
`On behalf of FreightCar America, Inc.
`By: Philip Nelson (Reg. No. 62,676)
`Ted M. Cannon (Reg. No. 55,036)
`Justin Gillett (Reg. No. 71,099)
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`Tel.: (949) 760-0404
`Fax: (949) 760-9502
`Email: FCAIPR-892@knobbe.com
`
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________
`
`FREIGHTCAR AMERICA, INC.,
`Petitioner,
`
`v.
`
`NATIONAL STEEL CAR LIMITED,
`Patent Owner.
`
`
`Case IPR2025-01046
`Patent 8,166,892
`
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 8,166,892
`
`
`
`
`
`
`
`On behalf of FreightCar America, Inc.
`By: Philip Nelson (Reg. No. 62,676)
`Ted M. Cannon (Reg. No. 55,036)
`Justin Gillett (Reg. No. 71,099)
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`Tel.: (949) 760-0404
`Fax: (949) 760-9502
`Email: FCAIPR-892@knobbe.com
`
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________
`
`FREIGHTCAR AMERICA, INC.,
`Petitioner,
`
`v.
`
`NATIONAL STEEL CAR LIMITED,
`Patent Owner.
`
`
`Case IPR2025-01046
`Patent 8,166,892
`
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 8,166,892
`
`
`
`
`
`TABLE OF CONTENTS
`
`Page No.
`
`I.
`
`INTRODUCTION .................................................................................... 9
`
`II.
`
`PRELIMINARY MATTERS ................................................................. 15
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`Priority Date of the ’892 Patent.................................................... 15
`
`Prosecution History of the ’892 Patent ........................................ 15
`
`Level of Ordinary Skill in the Art ................................................ 16
`
`Claim Construction....................................................................... 16
`
`Reliance on Expert Analysis and Testimony ............................... 16
`
`III. STATEMENT OF PRECISE RELIEF REQUESTED .......................... 17
`
`A.
`
`B.
`
`Statutory Grounds for Cancellation ............................................. 17
`
`Status of References as Prior Art ................................................. 17
`
`IV. SPECIFIC PROPOSED GROUNDS FOR UNPATENTABILITY ...... 18
`
`A. Ground 1a: Claim 1 is anticipated by, or at least obvious
`over, the 1946 Cyclopedia. ........................................................... 18
`
`1.
`
`Independent Claim 1 .............................................................. 19
`
`B. Ground 1b: Claims 2–8 and 10–14 are obvious over the
`1946 Cyclopedia in view of Lindström, and optionally in
`view of Wong. .............................................................................. 34
`
`1.
`
`2.
`
`3.
`
`4.
`
`Independent Claim 2 .............................................................. 34
`
`Dependent Claim 3 ................................................................ 64
`
`Dependent Claim 4 ................................................................ 66
`
`Dependent Claim 5 ................................................................ 67
`
`i
`
`
`
`TABLE OF CONTENTS
`(cont’d)
`
`Page No.
`
`5.
`
`6.
`
`7.
`
`8.
`
`9.
`
`Dependent Claim 6: ............................................................... 68
`
`Dependent Claim 7 ................................................................ 71
`
`Dependent Claim 8 ................................................................ 71
`
`Dependent Claim 10 .............................................................. 72
`
`Dependent Claim 11 .............................................................. 73
`
`10. Dependent Claim 12 .............................................................. 75
`
`11. Dependent Claim 13 .............................................................. 75
`
`12. Dependent Claim 14 .............................................................. 75
`
`C. Ground 1c: Claim 9 is obvious over the 1946 Cyclopedia
`in view of Lindström and Wong. ................................................. 75
`
`1.
`
`Dependent Claim 9 ................................................................ 75
`
`D. Ground 1d: Claim 15 is obvious over the art in Ground 1b
`in view of Coates. ......................................................................... 84
`
`1.
`
`Dependent Claim 15 .............................................................. 84
`
`E.
`
`F.
`
`Ground 2a: Claim 1 is anticipated by Lindström, or at least
`obvious over Lindström in view of the 1946 Cyclopedia. ........... 86
`
`1.
`
`Independent Claim 1 .............................................................. 86
`
`Ground 2b: Claims 2-14 are obvious over Lindström in
`view of the 1946 Cyclopedia and Wong. ..................................... 98
`
`1.
`
`2.
`
`Independent Claim 2 .............................................................. 98
`
`Dependent Claim 3 .............................................................. 114
`
`ii
`
`
`
`TABLE OF CONTENTS
`(cont’d)
`
`Page No.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`9.
`
`Dependent Claim 4 .............................................................. 116
`
`Dependent Claim 5 .............................................................. 117
`
`Dependent Claim 6 .............................................................. 118
`
`Dependent Claim 7 .............................................................. 121
`
`Dependent Claim 8 .............................................................. 121
`
`Dependent Claim 9: ............................................................. 124
`
`Dependent Claim 10 ............................................................ 126
`
`10. Dependent Claim 11 ............................................................ 128
`
`11. Dependent Claim 12 ............................................................ 130
`
`12. Dependent Claim 13 ............................................................ 130
`
`13. Dependent Claim 14 ............................................................ 130
`
`G. Ground 2c: Claim 15 is obvious over the art in Ground 2b
`in view of Coates. ....................................................................... 130
`
`1.
`
`Dependent Claim 15 ............................................................ 130
`
`V. CONCLUSION ..................................................................................... 131
`
`VI. MANDATORY NOTICES, GROUNDS FOR STANDING,
`AND FEE PAYMENT ......................................................................... 131
`
`A.
`
`B.
`
`C.
`
`Real Party-In-Interest (37 C.F.R. §42.8(b)(1)) .......................... 131
`
`Related Matters (37 C.F.R. §42.8(b)(2)) .................................... 131
`
`Lead and Backup Counsel (37 C.F.R. §42.8(b)(3)) ................... 132
`
`iii
`
`
`
`TABLE OF CONTENTS
`(cont’d)
`
`Page No.
`
`D.
`
`E.
`
`F.
`
`Service Information (37 C.F.R. §42.8(b)(4)) ............................. 132
`
`Grounds for Standing (37 C.F.R. §42.104) ................................ 132
`
`Payment of Fees (37 C.F.R. §42.15(a)) ..................................... 133
`
`
`
`
`
`iv
`
`
`
`TABLE OF AUTHORITIES
`
`Page No(s).
`
`In re Bond,
`910 F.2d 831 (Fed. Cir. 1990) ..................................................................... 18
`
`National Steel Car Limited v. FreightCar America, Inc., et al.,
`C.A. No. 1:24-cv-00594-JLH (D. Del.) ..................................................... 131
`
`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd.,
`868 F.3d 1013 (Fed. Cir. 2017) ................................................................... 16
`
`Unwired Planet, LLC v. Google Inc.,
`841 F.3d 995 (Fed. Cir. 2016) ..................................................................... 18
`
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`200 F.3d 795 (Fed. Cir. 1999) ..................................................................... 16
`
`OTHER AUTHORITIES
`
`35 U.S.C. §102 .................................................................................................. 17
`
`35 U.S.C. §102 .................................................................................................. 17
`
`35 U.S.C. §103 .................................................................................................. 17
`
`37 C.F.R. §42.8 ....................................................................................... 131, 132
`
`37 C.F.R. §42.10 ............................................................................................. 132
`
`37 C.F.R. §42.15 ............................................................................................. 133
`
`37 C.F.R. §42.24 ............................................................................................. 134
`
`37 C.F.R. §42.104 ........................................................................................... 132
`
`Car Builders’ Dictionary ................................................................................... 18
`
`
`
`v
`
`
`
`IPR Petition – Patent 8,166,892
`FreightCar America, Inc. v. National Steel Car Limited.
`
`LIST OF EXHIBITS
`
`Exhibit No.
`
`Description
`
`1001
`
`U.S. Patent No. 8,166,892 (“the ’892 patent”)
`
`1002
`
`File History of the ’892 patent
`
`1003
`
`Declaration of Mehdi Ahmadian, Ph.D.
`
`1004
`
`Excerpts from 1946 Car Builders’ Cyclopedia, 17th ed. (“1946
`Cyclopedia”)
`
`1005
`
`U.S. Patent No. 1,321,928 (“Lindström”)
`
`1006
`
`U.S. Patent No. 4,941,411 (“Wong”)
`
`1007
`
`Excerpts from Lancashire & Yorkshire, Vol. 2, Noel Coates,
`copyright 2006 (“Coates”)
`
`1022
`
`Declaration of Sylvia Hall-Ellis
`
`1023
`
`U.S. Patent No. 2,030,748 (“Gilpin”)
`
`
`
`Exhibit List, Page 1
`
`
`
`IPR Petition – Patent 8,166,892
`FreightCar America, Inc. v. National Steel Car Limited
`
`CLAIM LISTING
`
`Limitation
`
`Claim Language
`
`1a
`
`1b
`
`1c
`
`1d
`
`1e
`
`1f
`
`1g
`
`1. A rail road hopper car comprising: a hopper carried
`between a pair of trucks,
`
`said hopper having first and second upstanding sidewalls
`running lengthwise therealong;
`
`said hopper having a lower discharge and convergent slope
`sheets giving onto said discharge;
`
`said rail road car having a side sill and a top chord; said first
`upstanding sidewall extending from said side sill to said top
`chord;
`
`said first upstanding sidewall having a predominantly
`upwardly running sidewall stiffener mounted thereto, said
`sidewall stiffener being located at a longitudinal station
`intermediate the trucks;
`
`said first upstanding sidewall having a first region, said first
`region being a lower region thereof;
`said first upstanding sidewall having a second region, said
`second region being an upper region thereof;
`
`
`said sidewall stiffener having a first portion, said first portion
`being a lower portion thereof, said first portion being
`mounted to said first region of said first upstanding sidewall;
`said sidewall stiffener having a second portion, said second
`portion being an upper portion thereof, said second portion
`being mounted to said second region of said first upstanding
`sidewall;
`
`1
`
`
`
`IPR Petition – Patent 8,166,892
`FreightCar America, Inc. v. National Steel Car Limited
`
`
`Limitation
`
`Claim Language
`
`1h
`
`1i
`
`1j
`
`2a
`
`2b
`
`2c
`
`2d
`
`2e
`
`said first portion of said first upstanding sidewall stiffener
`being laterally outboard of said first region of said first
`upstanding sidewall;
`said second portion of said sidewall stiffener being laterally
`inboard of said second region of said first upstanding
`sidewall;
`
`said first sidewall having a continuous section between said
`first and second regions thereof; and
`
`said sidewall stiffener having web continuity between said
`first and second portions thereof.
`
`A rail road hopper car comprising: a hopper carried between
`a first end section and a second end section;
`said first and second end sections being carried by respective
`first and second trucks for rolling motion in a longitudinal
`direction along railroad tracks;
`
`said hopper having first and second upstanding sidewalls
`running lengthwise therealong;
`
`said hopper having a lower discharge and convergent slope
`sheets that slope downward toward said discharge;
`
`said discharge having a door movable between a closed
`position and an open position to govern egress of lading from
`said hopper;
`
`one of said convergent slope sheets being a first end slope
`sheet;
`said first end slope sheet extending laterally between said
`first and second upstanding sidewalls;
`said first end slope sheet having a first, lower, longitudinally
`inboard end proximate said discharge, and a second, upper,
`longitudinally outboard end distant from said discharge;
`
`2
`
`
`
`IPR Petition – Patent 8,166,892
`FreightCar America, Inc. v. National Steel Car Limited
`
`
`Limitation
`
`Claim Language
`
`2f
`
`2g
`
`2h
`
`2i
`
`2j
`
`said first end section having a first draft sill and a main
`bolster extending cross-wise to said first draft sill, said first
`draft sill and said main bolster intersecting at a first truck
`center, said first truck being located centrally under said first
`truck center;
`
`said draft sill having a striker longitudinally outboard of said
`first truck center;
`
`said first end section having a shear plate mounted overtop of
`said first draft sill and said main bolster;
`said shear plate having a longitudinally inboard margin
`adjacent to said longitudinally inboard end of said first end
`slope sheet;
`said shear plate having a longitudinally outboard cross-wise
`running margin traversing said draft sill longitudinally
`outboard of said truck center;
`
`said upper, longitudinally outboard end of said first end slope
`sheet being reinforced by a first cross-wise extending beam;
`
`
`said lower, longitudinally inboard end of said first end slope
`sheet being reinforced by a second cross-wise extending
`beam;
`
`2k
`
`said first end slope sheet overhanging said shear plate;
`
`2l
`
`2m
`
`a door actuator mounted above said shear plate, said door
`actuator being at least partially overhung by said first end
`slope sheet;
`said door actuator being connected to said door by a
`mechanical transmission;
`
`said first end section being free of longitudinally oriented
`elephant ears extending between said draft sill and said first
`end slope sheet;
`
`3
`
`
`
`IPR Petition – Patent 8,166,892
`FreightCar America, Inc. v. National Steel Car Limited
`
`
`Limitation
`
`Claim Language
`
`2n
`
`2o
`
`2p
`
`2q
`
`2r
`
`2s
`
`said hopper having respective first and second top chords
`running longitudinally therealong;
`said car having respective first and second side sills running
`longitudinally between said first and second end sections;
`
`
`said first upstanding sidewall having a predominantly
`upwardly running sidewall stiffener mounted thereto, said
`sidewall stiffener being located at a longitudinal station
`intermediate the trucks;
`
`said first upstanding sidewall having a first region, said first
`region being a lower region thereof;
`said first upstanding sidewall having a second region, said
`second region being an upper region thereof;
`
`said first and second regions of said sidewall adjoining each
`other at a height intermediate said first side sill and said first
`top chord; said second region of said sidewall extending
`downwardly or said first top chord;
`said first region of said sidewall extending downwardly and
`laterally inboard from said second region of said sidewall;
`
`said sidewall stiffener having a first portion, said first portion
`being a lower portion thereof, said first portion being
`mounted to said first region of said first upstanding sidewall;
`said sidewall stiffener having a second portion, said second
`portion being an upper portion thereof, said second portion
`being mounted to said second region of said first upstanding
`sidewall;
`
`said first portion of said first upstanding sidewall stiffener
`being laterally outboard of said first region of said first
`upstanding sidewall;
`said second portion of said sidewall stiffener being laterally
`inboard of said second region of said first upstanding
`sidewall;
`
`4
`
`
`
`IPR Petition – Patent 8,166,892
`FreightCar America, Inc. v. National Steel Car Limited
`
`
`Limitation
`
`Claim Language
`
`2t
`
`2u
`
`3
`
`4
`
`5
`
`6a
`
`6b
`
`said first sidewall having a continuous section between said
`first and second regions thereof; and
`
`said sidewall stiffener having web continuity between said
`first and second portions thereof.
`
`The rail road hopper car of claim 2 wherein said first and
`second portions of said sidewall stiffener are substantially
`co-planar, and are substantially vertically aligned when seen
`in a sectional view looking along the car.
`
`The rail road hopper car of claim 2 wherein said first
`upstanding sidewall has a third region intermediate said first
`and second regions, said third region including a side sheet
`transition portion passing across said sidewall stiffener from
`an inboard margin thereof to an outboard margin thereof, and
`said stiffener having vertical web continuity through said
`transition portion.
`
`The rail road hopper car of claim 4 wherein said first
`sidewall has an overall height from said first side sill to said
`first top chord, L, and said transition portion is located a
`distance above said first side sill that is in the range of ¼ to
`⅔ L
`
`The rail road hopper car of claim 2 wherein:
`said first upstanding sidewall has a third region intermediate
`said first and second regions, said third region including a
`side sheet transition portion passing across said sidewall
`stiffener from an inboard margin thereof to an outboard
`margin thereof;
`
`said hopper includes first and second sloped side sheets; and
`said first sloped side sheet meets said first sidewall at said
`transition portion.
`
`5
`
`
`
`IPR Petition – Patent 8,166,892
`FreightCar America, Inc. v. National Steel Car Limited
`
`
`Limitation
`
`Claim Language
`
`7
`
`8a
`
`8b
`
`9a
`
`9b
`
`10
`
`11
`
`12
`
`The rail road hopper car of claim 6 wherein said first
`sidewall has an overall height from said first side sill to said
`first top chord, L, and said first sloped side sheet meets said
`transition portion at an height that is in the range of ¼ to ⅔ L
`above said first side sill.
`
`The rail road hopper car of claim 2 wherein said hopper has a
`cross-wise extending outboard end top chord;
`
`and an end post extends from said draft sill to said end top chord,
`said end post being mounted above said draft sill between said
`truck center and said striker.
`
`The rail road hopper car of claim 8: wherein said hopper has an end
`wall extending downward of said end top chord;
`
`said upper, longitudinally outboard end of said first end slope sheet
`meets said downwardly extending end wall; and said first cross-
`wise extending beam is located where said downwardly extending
`end wall meets said first end slope sheet; and said first cross-wise
`extending beam is of hollow cross-section.
`
`The rail road hopper car of claim 8 wherein said shear plate
`has lateral margins; said lateral margins of said shear plate
`mate with said first and second side sills; and said sidewall
`stiffener is supported by a respective one of said side sills.
`
`The rail road hopper car of claim 10 wherein said main
`bolster has first and second ends; and first and second corner
`posts extend upwardly from said first and second ends
`respectively to mate with said sidewalls.
`
`The rail road hopper car of claim 2 wherein said main bolster
`has first and second ends; and first and second corner posts
`extend upwardly from said first and second ends respectively
`to mate with said sidewalls.
`
`6
`
`
`
`IPR Petition – Patent 8,166,892
`FreightCar America, Inc. v. National Steel Car Limited
`
`
`Limitation
`
`Claim Language
`
`13
`
`14
`
`15
`
`The rail road hopper car of claim 12 wherein said shear plate
`has lateral margins; said lateral margins of said shear plate
`mate with said first and second side sills; and said sidewall
`stiffener is supported by a respective one of said side sills.
`
`The rail road hopper car of claim 2 wherein said shear plate
`has lateral margins; said lateral margins of said shear plate
`mate with said first and second side sills; and said sidewall
`stiffener is supported by a respective one of said side sills.
`
`The rail road hopper car of claim 2 wherein said first and
`second portions of said sidewall stiffener are made of flat
`bar, are positioned in vertical-transverse planes, are
`substantially co-planar, and are substantially vertically
`aligned when seen in a sectional view looking along the car.
`
`
`
`
`
`
`7
`
`
`
`IPR Petition – Patent 8,166,892
`FreightCar America, Inc. v. National Steel Car Limited
`
`
`Grounds Listing
`
`GROUND 1a
`
`Claim 1: 1946 Cyclopedia
`
`GROUND 1b
`
`Claims 2-8, 10–14: 1946 Cyclopedia, Lindström and
`
`optionally Wong
`
`GROUND 1c
`
`Claim 9: 1946 Cyclopedia, Lindström and Wong
`
`GROUND 1d
`
`Claim 15: The art in Ground 1b and Coates
`
`GROUND 2a
`
`Claim 1: Lindström and optionally the 1946 Cyclopedia
`
`GROUND 2b
`
`Claims 2–14: Lindström, 1946 Cyclopedia and Wong
`
`GROUND 2c
`
`Claim 15: The art in Ground 2b and Coates
`
`
`
`
`
`
`
`
`8
`
`
`
`IPR Petition – Patent 8,166,892
`FreightCar America, Inc. v. National Steel Car Limited
`
`
`Petitioner FreightCar America, Inc. (“FCA”) requests inter partes review of
`
`claims 1–15 (“the challenged claims”) of U.S. Patent No. 8,166,892 (“the ’892
`
`patent,” EX1001), a patent owned by National Steel Car Ltd. (“NSC”).
`
`I. INTRODUCTION
`
`The ’892 patent is directed to a bottom-discharge hopper car, a railway freight
`
`car whose payload is loaded through the hopper’s open top and discharged through
`
`doors at the bottom. The ’892 patent describes reinforcing the hopper’s side walls
`
`with vertically oriented web stiffeners that have two portions: a lower portion on the
`
`exterior of the side sheet and an upper portion on the interior of the side sheet. Figure
`
`1 of the patent is a perspective view of the hopper car that shows the lower, exterior
`
`portion of the stiffener of one side wall; and the upper, interior portion of the stiffener
`
`of the other side wall.
`
`Fig. 1
`
`
`
`9
`
`
`
`IPR Petition – Patent 8,166,892
`FreightCar America, Inc. v. National Steel Car Limited
`
`
`Figure 2c, an end view of one side wall, shows both parts of the side-wall
`
`stiffener 102. The specification of the ’892 patent states that the two parts are aligned
`
`in a vertical plane passing through the rail car perpendicular to the side wall 94.
`
`EX1001 at 15:44-46 and 15:64-65. The patent refers to this alignment in a vertical
`
`plane as “web continuity.” Id. at 15:44-46 (“Portions 104 and 106 are co-planar, or
`
`substantially co-planar, such that stiffener 102 has web continuity through member
`
`94.”).
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`During prosecution, the claims of the ’892 patent were allowed because the
`
`Examiner believed the prior art did not disclose a side-wall stiffener with interior and
`
`exterior portions aligned in the same vertical plane, i.e., with web continuity. After
`
`10
`
`
`
`IPR Petition – Patent 8,166,892
`FreightCar America, Inc. v. National Steel Car Limited
`
`an initial restriction requirement led to a narrowing of the claims, the remaining
`
`claims were allowed in the next office action. EX1002 at 267-71, 400-07, 411-17.
`
`In his Reasons for Allowance, the Examiner stated:
`
`The following is an examiner’s statement of reasons for allowance: The
`sidewall stiffener having web continuity between the first and second
`portions along with the first portion of the sidewall stiffener being
`laterally outboard of the first region and the second portion of the
`sidewall stiffener being laterally inboard of the second region is seen as
`an unobvious improvement over the art of record.
`
`Id. at 416.
`
`
`
`Unbeknownst to the Examiner, two-part side-wall stiffeners with web
`
`continuity were known over a century before the ’892 patent application was filed.
`
`For example, Coates shows photos of a hopper car produced by the Lancashire &
`
`Yorkshire Company in 1904. EX1007 (Coates) at front cover (“L&Y Hopper Car”).
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`L&Y Hopper Car
`
`11
`
`
`
`IPR Petition – Patent 8,166,892
`FreightCar America, Inc. v. National Steel Car Limited
`
`
`
`Each side wall of the L&Y Hopper Car was comprised of four panels. As
`
`shown above, the lower part of the side wall was reinforced by three exterior web
`
`stiffeners, one at each juncture of adjacent panels. In addition, as seen in the image
`
`below, the interior of the L&Y Hopper Car’s sidewalls had stiffeners located at upper
`
`ends of these same panel junctures. Id. at 263 Thus, the L&Y Hopper Car had upper,
`
`interior and lower, exterior stiffeners arranged in the same vertical plane.
`
`
`
`
`
`
`
`The stiffeners of the L&Y Hopper Car were riveted to the rail car’s steel
`
`sidewalls with L-brackets. However, the rail industry quickly devised other methods
`
`of providing two-part side-wall stiffeners with web continuity. In 1936, Garth Gilpin
`
`received a patent on rail-car side walls with web stiffeners formed by bending the
`
`side edges of each side-wall panel. EX1023. Figures 1 and 2 of the Gilpin patent,
`
`12
`
`
`
`IPR Petition – Patent 8,166,892
`FreightCar America, Inc. v. National Steel Car Limited
`
`shown below, show the exterior and interior, respectively, of Gilpin’s side wall. As
`
`the figures demonstrate, Gilpin’s stiffeners had lower, exterior and upper, interior
`
`portions arranged in the same vertical plane. Id. at Figs. 1-2.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Gilpin Patent
`
`By the 1940s, two-part side-wall stiffeners with web continuity were common
`
`in hopper cars used to transport minerals such as coal and iron ore. For example,
`
`three of the four schematics in the ore-car section of the 1946 Cyclopedia, a handbook
`
`for rail car manufacturers, disclose two-part side-wall stiffeners with web continuity.
`
`EX1004 at 290, 292, 294. Indeed, as shown below, the relevant portions of those
`
`schematics—the end sectional views that show both the interior and exterior portions
`
`of the stiffener at once—are almost identical to Figure 2c of the ’892 patent. Id.
`
`Thus, far from being novel, the side-wall stiffeners of the ’892 patent had become
`
`commonplace over sixty years before the ’892 patent application was filed.
`
`13
`
`
`
`IPR Petition – Patent 8,166,892
`FreightCar America, Inc. v. National Steel Car Limited
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`EX1001 at Fig. 2c; EX1004 at 294 (NSC); 292 (Enterprise); 290 (Pressed Steel).
`
`The claims of the ’892 patent recite features other than sidewall stiffeners, but
`
`these claim elements are standard hopper-car features. Virtually all of these features
`
`are shown in the 1946 Cyclopedia’s NSC schematics and in a 1919 patent issued to
`
`Charles Lindström (EX1005). The ’892 patent was allowed not because of these
`
`standard features, but because the Examiner mistakenly believed that two-part side-
`
`wall stiffeners with web continuity were new when NSC filed its patent application.
`
`The claims of the ’892 patent are essentially lists of rail-car features that had
`
`become common by the 1940s. Those claims would have been unpatentable had
`
`NSC filed its patent application in 1946—they were certainly unpatentable in 2009.
`
`Those claims should be declared unpatentable and cancelled.
`
`14
`
`
`
`IPR Petition – Patent 8,166,892
`FreightCar America, Inc. v. National Steel Car Limited
`
`
`II. PRELIMINARY MATTERS
`
`A.
`
`Priority Date of the ’892 Patent
`
`The ’892 patent was filed as U.S. Application No. 12/559,065 on September
`
`14, 2009 and claims priority to Canadian Patent Application No. 2,678,605, also filed
`
`on September 14, 2009, as well as to Canadian Patent Application No. 2,678,447,
`
`filed on September 11, 2009. EX1002 at 120; EX1003 ¶26. For purposes of this
`
`petition, Petitioner will assume that the earliest of these dates—September 11,
`
`2009—is the ’892 patent’s priority date.
`
`B.
`
`Prosecution History of the ’892 Patent
`
`Filed claims 1–19 were directed to a hopper car with motor-operated doors,
`
`and filed claims 20–25 were directed to a hopper car with reinforced sidewalls.
`
`EX1002 at 34-40. In response to the examiner’s restriction requirement, NSC
`
`elected claim 20, cancelled claims 21–25, and added new claims 26–39. EX1002 at
`
`266-71 and 400-405. On January 3, 2012, the Examiner allowed the pending
`
`claims—without discussing any prior art—and offered the following Reasons for
`
`Allowance:
`
`The following is an examiner’s statement of reasons for allowance: The
`
`sidewall stiffener having web continuity between the first and second
`
`portions along with the first portion of the sidewall stiffener being
`
`laterally outboard of the first region and the second portion of the
`
`15
`
`
`
`IPR Petition – Patent 8,166,892
`FreightCar America, Inc. v. National Steel Car Limited
`
`
`sidewall stiffener being laterally inboard of the second region is seen as
`
`an unobvious improvement over the art of record.
`
`Id. at 416.
`
`C. Level of Ordinary Skill in the Art
`
`The claims of the ’892 patent are directed to reinforcing and assuring the
`
`structural integrity of the side wall of a railway hopper car. Accordingly, a person of
`
`ordinary skill in the art to which the ’892 patent pertains (POSITA) would have had
`
`at least a bachelor’s degree in a discipline related to mechanical engineering, physics,
`
`structural design, or an equivalent discipline, and at least two years of experience
`
`designing or analyzing rail cars or similar vehicles. EX1003 ¶30.
`
`D. Claim Construction
`
`No claim term requires construction to resolve the validity challenges here.
`
`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017
`
`(Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed.
`
`Cir. 1999). The challenged claims are unpatentable under any reasonable
`
`construction.
`
`E. Reliance on Expert Analysis and Testimony
`
`Expert testimony may be helpful in addressing the validity issues raised by this
`
`petition. Certain claim terms commonly used in the rail-car field require a brief
`
`explanation. In addition, because certain prior art schematics discussed in the petition
`
`are very old, expert testimony may be helpful in interpreting them. Accordingly, this
`
`16
`
`
`
`IPR Petition – Patent 8,166,892
`FreightCar America, Inc. v. National Steel Car Limited
`
`petition relies on the expert analysis and testimony of Dr. Mehdi Ahmadian. EX1003
`
`(Expert Declaration of Medhi Ahmadian, Ph.D.).
`
`III. STATEMENT OF PRECISE RELIEF REQUESTED
`
`A.
`
`Statutory Grounds for Cancellation
`
`Petitioner requests that the Board cancel claim 1 of the ’892 patent under pre-
`
`AIA 35 U.S.C. § 102 because the invention recited in this claim was disclosed in a
`
`single prior art reference. In addition, Petitioner requests that the Board cancel claims
`
`1-15 of the ’892 patent under pre-AIA 35 U.S.C. § 103 because, as of their effective
`
`filing date, they would have been obvious to a POSITA.
`
`B.
`
`Status of References as Prior Art
`
`The references relied upon herein are prior art for the following reasons:
`
`Exhibit No.
`
`Description
`
`Prior Art Basis
`
`EX1004
`
`1946 Cyclopedia
`
`Pre-AIA 35 U.S.C. §102(b) – published in
`1946
`
`EX1005
`
`Lindström
`
`EX1006 Wong
`
`EX1007
`
`Coates
`
`Pre-AIA 35 U.S.C. §102(b) – issued on
`November 18, 1919
`
`Pre-AIA 35 U.S.C. §102(b) – issued on
`July 17, 1990
`
`Pre-AIA 35 U.S.C. §102(b) – published in
`2006
`
`Each of these references constitutes prior art under pre-AIA 35 U.S.C. §102(b)
`
`because its issue or publication date is more than a year before September 11, 2009,
`
`17
`
`
`
`IPR Petition – Patent 8,166,892
`FreightCar America, Inc. v. National Steel Car Limited
`
`the earliest possible effective filing date of the ’892 patent. EX1022. These
`
`references constitute analogous art because they are from the same field of endeavor
`
`as the ’892 patent: rail-car design. Unwired Planet, LLC v. Google Inc., 841 F.3d
`
`995, 1000 (Fed. Cir. 2016). They are also reasonably pertinent to a particular problem
`
`with which the inventor was concerned—i.e., strengthening and improving bottom-
`
`discharge hopper cars—and they disclose numerous railcar features that are disclosed
`
`and claimed in the ’892 patent.
`
`None of the prior art references listed above was considered by the examiner
`
`during prosecution. See EX1002; EX1001 at 1–2.
`
`IV. SPECIFIC PROPOSED GROUNDS FOR UNPATENTABILITY
`
`As explained below, claims 1–15 of the ’892 patent were anticipated by or
`
`obvious in view of the prior art. The references discussed below disclose every claim
`
`limitation, though not always using the terminology in the claims. See In re Bond,
`
`910 F.2d 831, 832 (Fed. Cir. 1990) (disclosure need not be ipsissimis verbis).
`
`A. Ground 1a: Claim 1 is anticipated by, or at least obvious over, the 1946
`Cyclopedia.
`
`The 1946 Cyclopedia is the seventeenth edition of a handbook for rail car
`
`manufacturers. EX1004 at 1-2. The reference, which was first produced in 1879
`
`under the name Car Builders’ Dictionary, contains a dictionary of railroad
`
`terminology, photographs and schematics of passenger and freight cars, and
`
`advertisements from suppliers of rail-car parts. Id. at 4. The
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
