• BJ Energy Solutions, LLC v. Yantai Jereh Petroleum Equipment & Technologies Co., Ltd.Institution denied
  PTAB · Sep 7, 2021 · PGR2021-00060 · APJ Ryan H Flax · PGR · Institution

  The Board denied institution because the petition did not show claims 1–7 likely unpatentable, and a possible § 112(a) issue for claims 8–9 did not justify instituting on all claims and grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “not demonstrated with particularity that it is more likely than not that most claims challenged in the petition are unpatentable under the asserted grounds. Although there is a reasonable argument that claims 8 and 9 may be unpatentable under 35 U.S.C. § 112(a), as discussed above, this analysis is applicable to only these two dependent claims under a single ground for unpatentability, leaving Petitioner’s other ten grounds insufficient regarding independent claim 1 and dependent claims 2–7. As discussed above, instituting trial under these circumstances would not be an efficient use of the Board’s or the parties’ time and resources. See Chevron, IPR2018- 00923, Paper 9, 10–11; Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper 7, 41–43 (PTAB Jan. 24, 2019) (informative). Our decision at this stage derives from our review of the record presented. In accordance with the Court’s decision in SAS (138 S. Ct. at 1359– 60) and Office guidance, we deny institution of a post-grant review of the challenged claims of the ’631 patent on any grounds alleged by Petitioner. This decision does not reflect a final determination on the patentability of any claim.” slip op. at 66

  • Other 314aInstitution denied discretionary otherInstitution denied

    “Even when a petitioner satisfies the minimum statutory institution standard (e.g., demonstrating a reasonable likelihood of prevailing with respect to one or more claims in an inter partes review or that it is more likely than not that at least one claim is unpatentable in a post-grant review), institution of review remains discretionary. SAS Inst. v. Iancu, 138 S. Ct. 1348, 1356 (2018); Harmonic, Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“First of all, the PTO is permitted, but never compelled, to institute an IPR proceeding.”). Under such circumstances, the Board takes into account other considerations, including efficiency and fundamental fairness for all parties. See Adaptics Limited v. Perfect Co., IPR2018-01596, Paper 20 at 17 (PTAB Mar. 6, 2019) (informative); Chevron Oronite Co. LLC v. Infineum USA L.P., IPR2018-00923, Paper 9 (PTAB Nov. 7, 2018) (informative); see also Consolidated Trial Practice Guide, 84 FR 64280, 53– 63 (2019) (addressing various considerations at institution phase, including efficiency and fundamental fairness for all parties).1 We conclude that Petitioner has not demonstrated in the petition that it is more likely than not that challenged claims 1–7 are unpatentable under any asserted grounds for unpatentability. Although it is a closer question as to whether Petitioner has demonstrated it is more likely than not that dependent claims 8 and 9 are unpatentable based on a single asserted unpatentability ground under § 112, we determine based on the record here that instituting a trial with respect to all challenged claims under all eleven asserted grounds for unpatentability is not an efficient use of the Board’s or the parties’ time and resources. Therefore, we do not institute post-grant review pursuant to 35 U.S.C. § 324. See SAS, 138 S. Ct. at 1359–60 (requiring institution on all claims, if any); see also Consolidated Trial Practice Guide, 55 (providing guidance in view of SAS).” slip op. at 2

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner

    “to read the concept of “flush with” into the claims. We agree with Petitioner’s position that such an interpretation is not supported by the ’631 patent’s written description, which illustrates and describes two embodiments, each having a turbine engine and reduction gearbox configured to be flush with one another, but refers to only the configuration of Embodiment 1 as being “directly connected” and refers to the configuration of Embodiment 2 as being merely “connected.” See Ex. 1001, 5:27–28, 5:62–6:2, Figs. 2, 3; see also Ex. 2001 ¶ 63 (Patent Owner’s expert witness confirming there is a difference between merely “connected” and “directly connected”). Thus, the intrinsic record supports a conclusion that the concept of “directly connected” is not related to whether one component is “flush with” another component. This disclosure of the ’631 patent also illuminates the meaning of “directly connected.” As shown in Embodiment 2, something may be connected with another thing even if there are intervening components, e.g., a transmission shaft or coupling; however, as shown in Embodiment 1, the ’631 patent uses the term “directly connected” only where no such intervening components are disclosed. Ex. 1001, 5:15– 6:19, Figs. 2, 3. Besides the guidance provided with respect to the embodiments discussed above, the ’631 patent does not otherwise expressly define the term “directly connected.” See generally Ex. 1001. Thus, we consider what the ordinarily skilled artisan would consider to be its ordinary and customary meaning. In this respect, Patent Owner also uses the word “uninterrupted” to describe “directly connected.” See Prelim. Resp. 6; see also Ex. 2001 ¶¶ 61–71. We conclude based on this record that the concept of “uninterrupted” is more apt than the concept of “flush with,” and find it to be a better description for the ordinary and customary meaning of “directly connected.” For example, the ’631 patent describes, in Embodiment 1, “the turbine engine 19 is connected to the plunger pump 18.” Ex. 1001, 5:26–27 (emphasis added). However, it is without question that Embodiment 1 positions a reduction gearbox between the turbine engine and plunger pump; thus, the engine and pump may be connected, but they are not directly connected. See, e.g., Fig. 2. On the other hand, regarding this same Embodiment 1, the ’631 patent describes that “the turbine engine 19 is directly connected to an input end of the reduction gearbox 24,” and there are no components illustrated or described as being between the turbine engine and reduction gearbox. Id. at 5:28–30 (emphasis added), Fig. 3. The connection between the turbine engine and reduction gearbox shown in Embodiment 1 is more aptly described as being uninterrupted. Thus, this illuminates the meaning of “directly connected.” In view of the above, we ascribe to the term “directly connected” its ordinary and customary meaning as it would have been understood by a person of ordinary skill in the art, and we find that ordinary and customary meaning to require that the turbine engine and reduction gearbox are connected with nothing intervening there-between so that their connection is uninterrupted.” slip op. at 29

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “Petitioner’s evidence shows that the Apollo 1 apparatus has two gearboxes and a clutch between its turbine engine and plunger pump, thus the Apollo 1 does not meet the claim limitation “the plunger pump is a plunger pump integrated with a reduction gearbox, the turbine engine is directly connected to an input end of the reduction gearbox integrated on the plunger pump.” Ex. 1001, 6:51–54. Petitioner’s Exhibit 1017 is explained by Mr. Zhang11 as having these two gearboxes and clutch, where at least one of the gearboxes and the clutch forecloses the system from having a single reduction gearbox that is both integrated on a pump and directly connected to a turbine engine. Ex. 2010 ¶¶ 8–12. Petitioner presents no evidence contradicting Mr. Zhang’s understanding of the Apollo 1 configuration and, notably never attempted to explain exactly what is shown in the above-reproduced photograph from its own Exhibit 1017, even when given the opportunity to address Mr. Zhang’s testimony in its Reply. See generally Reply.” slip op. at 50

  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · Graham · Nautilus
  Patents in suitUS 10,865,631
• Wabco Holdings Inc. / Laydon Composites Ltd. v. Transtex Composites Inc.Some claims unpatentable
  PTAB · Jan 10, 2020 · IPR2018-01319 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 1, 5–11, and 15–19 are unpatentable as obvious over Layfield and Rinard; claims 2–4, 12–14, and 20 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Dr. Micklow does not explain how or why he proposes a different level of ordinary skill in the art as compared to the level proposed by Petitioner and preliminarily adopted in our Decision on Institution. See generally id. ¶¶ 28–31. Additionally, neither Patent Owner nor Dr. Micklow argues that the difference in the proposed level of ordinary skill in the art affects the outcome of this proceeding; Dr. Micklow, in fact, states the contrary—that his opinions are the same under either level of skill. See Ex. 2001 ¶ 31.7 Nothing in the full record is sufficient to persuade us that our preliminary finding as to the level of ordinary skill in the art was incorrect. Accordingly, because our preliminary finding is consistent with the level of ordinary skill in the art reflected by the prior art of record, we maintain and reaffirm our preliminary finding that the level of ordinary skill in the art at the time of the invention would have been “a bachelor’s degree in mechanics, aeronautics, materials, or a related field of study, or equivalent experience, and at least two years of experience in the development of components of vehicles, or an equivalent amount of relevant work or research experience.” Inst. Dec. 10–11; see Pet. 10.” slip op. at 8

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Turning to Petitioner’s video (Ex. 1018), Petitioner asserts testing of commercial versions of the Layfield fairing illustrates what one skilled in the art would have understood from Layfield itself, namely that the Layfield strut is adapted to sustain an elastic deformation when a load is applied to the resilient strut when the skirt panel moves away from the configuration reducing air drag about the trailer and to self-recover the resilient strut original shape when the load is removed. Pet. 29 (citing Ex. 1010 ¶¶ 102–103).16 We afford this evidence little weight for several reasons. First, the video does not show the strut or the bending of a strut. See Ex. 1018. In fact, the only feature shown is a skirt panel attached to a trailer. that because thermoplastic material is more resilient than aluminum, we should adopt Petitioner’s argument. Pet. Reply 15–16 (citing Ex. 1058, 1– 12; Ex. 1010 ¶¶ 77–82). We must base our decision in this case on the arguments and evidence presented. As explained above, the record before us has contradictory evidence in the form of Dr. Micklow’s testimony that was not before the examiner. 16 Petitioner does not cite Exhibit 1018 in the Petition, but instead cites to Mr. Tres’s testimony regarding the exhibit. Id. Thus, from the video, it is unknown whether the skirt panel is attached to the trailer by one strut, multiple struts, or additional features. Second, Petitioner does not identify clearly how the tested system precisely corresponds to the teachings of Layfield. For example, Patent Owner raises a number of issues with the struts and panels in the video to which Petitioner provides either no response or an unconvincing response. For example, Patent Owner argues that each embodiment of Layfield uses trusses 36 to “interconnect each skirt panel and reinforce the panel assembly,” while it is asserted that the skirt panels in the video do not have trusses and are not interconnected. PO Resp. 26. Petitioner argues that the skirt panels in the video were made according to the teachings of Layfield and did include “integral vertical lateral side edges as the connecting mechanism for adjacent panels.” Pet. Reply 19 (citing Exs. 1018, 2003, 2005; Ex. 1004, 18:36–39; Ex. 1010 ¶¶ 63–64; Ex. 1055 ¶¶ 37–38). Other than stating that the skirt panels have connecting mechanisms, Petitioner does not address the fact that the panels are not interconnected according to the teachings of Layfield, as Patent Owner correctly pointed out. See generally id. at 19–21.” slip op. at 28

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “components (see, e.g., id. at 17:1–10), Layfield does not contain any express disclosure concerning the flexibility of the struts. Nor does Layfield include any discussion about the desirability of strut flexibility. The closest Layfield comes to discussing flexibility of the struts is by frequently referring to the struts as “support struts” (see, e.g., id. at 18:40) and discussing the use of a “bracket means,” which is on the struts, to “rigidly secure” the skirt panels to the trailer (id. at 6:48–49). Further, Layfield’s detailed discussion of the embodiment of support strut 58 shown in Figure 10, reproduced below, highlights the bracing and reinforcement features. Figure 10, above, shows the construction detail of a support strut 58. Ex. 1004, 15:45. Specifically, Layfield discloses that strut 58 includes “a pair of spaced-apart vertical members 160, which are braced by horizontal cross-members 162” and “reinforcing rectangular lattice 170.” Id. at 15:46– 54. Thus, we agree with Patent Owner’s argument that “Layfield does not expressly teach that the ‘support struts 58’ are ‘resilient.’” PO Resp. 42 (citing Ex. 2001 ¶¶ 148–149). We reiterate that Petitioner’s first challenge is based on anticipation. Thus, Petitioner must show that resilient struts are “either expressly or inherently described, in” Layfield. Verdegaal Bros. Inc., 814 F.2d at 631; see also PO Resp. 42. In its Reply Brief and at the oral hearing, Petitioner contends that its challenge is based on express disclosure, not inherency. See Pet. Reply 17–18; Tr. 9:21–11:4 (arguing that “this is not a case of inherency”). Petitioner contends one of ordinary skill in the art “would have understood, based upon Layfield’s express disclosures concerning the material, structure, and connection of the strut, that the Layfield strut is resilient and can sustain significant and substantial elastic deformation.” Pet. Reply 18 (citing REG Synthetic Fuels, LLC v. Neste Oil Oyj, 841 F.3d 954, 960–61 (Fed. Cir. 2016)). Whether we analyze Petitioner’s argument based on express disclosure or inherency, we reach the same result. To begin, although we agree with Petitioner that a prior art reference “need not satisfy an ipsissimis verbis test” (Pet. Reply 17 (quoting In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009))), there is no express statement that Layfield’s strut is resilient or otherwise exhibits a characteristic synonymous with resiliency. Additionally, we do not agree that Petitioner’s reliance on the thermoplastic materials, disclosed by Layfield for construction of the strut, establishes whether the strut is resilient and capable of elastic deformation. The evidence submitted by the parties is contradictory as to whether one of ordinary skill in the art would have understood Layfield’s struts to be resilient based on the material alone.15 Compare Ex. 1010 ¶¶ 74–82 15 Petitioner also points to a finding by the examiner, during prosecution of the ’017 patent application, that an aluminum strut was resilient, and argues (Mr. Tres opining as to the materials disclosed by Layfield), with Ex. 2001 ¶¶ 160–164 (Dr. Micklow contradicting Mr. Tres’s testimony regarding the materials disclosed by Layfield). Further, the evidence is contradictory as to whether one of ordinary skill in the art would have understood from the design of Layfield’s strut, specifically the taper design and mechanism by which the strut connects to the trailer I-beam, that the strut is resilient. Compare Ex. 1010 ¶¶ 83–90 (Mr. Tres’s testimony regarding the design and connection mechanism), with Ex. 2001 ¶¶ 165–175 (Dr. Micklow’s contradictory testimony). Turning to Petitioner’s video (Ex. 1018), Petitioner asserts testing of commercial versions of the Layfield fairing illustrates what one skilled in the art would have understood from Layfield itself, namely that the Layfield strut is adapted to sustain an elastic deformation when a load is applied to the resilient strut when the skirt panel moves away from the configuration reducing air drag about the trailer and to self-recover the resilient strut original shape when the load is removed. Pet. 29 (citing Ex. 1010 ¶¶ 102–103).16 We afford this evidence little weight for several reasons. First, the video does not show the strut or the bending of a strut. See Ex. 1018. In fact, the only feature shown is a skirt panel attached to a trailer.” slip op. at 26

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “Additionally, Patent Owner similarly contends that the modifications proposed are redundant of Layfield’s “flexible lower panel 20,” which already “allow[s] flexing when impacting a road object.” PO Resp. 59 (citing Ex. 1004, 14:13–18); see PO Sur-reply 26–27. We disagree. Again, the proposed modifications here are to Layfield’s struts. In the context of Petitioner’s anticipation challenge, we agreed with Patent Owner and found that Petitioner had not established sufficiently on the record that Layfield’s struts were resilient. See supra, § II.D.a.i., ii. Therefore, the proposed modification addressed here, to make Layfield’s struts resilient, does not duplicate the objective of Layfield’s flexible lower panel 20 at least because (a) Layfield’s struts are a different structure than lower panel 20 and (b) modification of Layfield’s struts would provide greater impact protection to other panels aside from just lower panel 20. See Pet. Reply 26–27 (One of ordinary skill in the art “would have been motivated to do so because Rinard and Layfield both seek to provide fairing panels with ‘sufficient flexibility’ to bend when encountering objects.” (citing Ex. 1004, 12:67– 13:4; Ex. 1006, 10:43–50; Ex. 1055 ¶ 47)). We determine that Petitioner has shown that one of ordinary skill in the art would have had a reason with rational underpinning to look to other similar types of trailer components that are flexible to make further improvements to Layfield’s design. See KSR, 550 U.S. at 417 (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”). Third, Patent Owner contends one of ordinary skill in the art “would not have a reasonable expectation of success at achieving the claimed technology by looking to the vertical supports of Rinard’s air scoops to modify the Layfield skirt panels 10 and support struts 58.” PO Resp. 61 (citing Ex. 2001 ¶¶ 237–240). Patent Owner asserts that because Layfield’s upper skirt panels are rigid and non-moving one of ordinary skill in the art “would not reasonably expect the hypothetical modified panels (with their reinforcing trusses 36) to move.” Id. Patent Owner also argues that Rinard teaches “an upper skirt panel that is rigid and non-moving” and so it is not reasonable to expect modifying Layfield as proposed would somehow cause Layfield’s fixed skirt panels to be able to move as claimed. PO Sur-reply 27–28 (citations omitted). We disagree for the same reasons discussed above—namely, we find Layfield’s upper skirt panels to be resilient. Therefore, one of ordinary skill in the art would have a reasonable expectation of success in achieving a resilient strut adapted as claimed by modifying Layfield’s strut in light of Rinard, for the reasons proposed by Petitioner. See Pet. Reply 27 (“Applying this solution to the Layfield skirt panel and struts would yield the predictable result of allowing the Layfield skirt panel 10 and struts 58 to absorb greater impacts without having to be repaired or replaced.” (citing Ex. 1021, 7–8, 11–12)).” slip op. at 42

  Patent outcomesUS 8,449,017 mixed
  § 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,449,017
• SZ Dji Technology Co., Ltd. / Parrot Inc. v. Drone-Control, LLCAll claims unpatentable
  PTAB · Jun 11, 2019 · IPR2018-00207 · APJ Frances L Ippolito · IPR · Final written decision

  Claims 1–15 are unpatentable: claims 1, 3–6, 8–11, and 13–15 are anticipated by Thornberg ’983; claims 2, 7, and 12 are obvious over Thornberg ’983 and Karem. The motion to amend is denied.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner did not file a Patent Owner Response and has not otherwise disputed Petitioner’s proposed level of skill. See Tr. 77:1–6. We find, based on our review of the complete record, that the evidence of record supports a level of ordinary skill in the art consistent with Petitioner’s definition. Our findings are supported by the level of ordinary skill in the art reflected by the prior art of record and the ’116 patent. See Ex. 1001, 1:36–37 (“This invention relates generally to radio controlled toys such as airplanes and helicopters.”); Ex. 1006, 1:8–10 (“The present invention relates to the control of remotely operated vehicles, and more particularly to a variable reference for the control of a remotely operated vehicle.”), see id. at 3:41–44 (“The system provides for the referencing of vehicle commands based on an operator frame of reference so that control commands provided by the operator remain intuitive and independent of the orientation of the vehicle with respect to the operator.”). Thus, we adopt Petitioner’s proposed level of ordinary skill in the art and apply it to our discussion below.” slip op. at 11

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Ex. 1006, 5:22–29. We further observe that once the disclosed pitch/roll commands (i.e., command data) are provided to the pitch axis and roll axis transformation functions, the pitch axis transformation 410 and roll axis transformation 412 use transformation equations to determine a transformed pitch stick signal (TPSS) and a transformed roll stick signal (TRSS). See Ex. 1006, 6:17–28. In other words, the flight control computer transforms received command pitch/roll data into TPSS and TRSS commands. In performing this transformation, the pitch axis transformation function 410 and the roll axis transformation function 412 also receive a transformation angle (θ) input. Id. at 5:30–32. Thornberg ’983 teaches that the transformation angle θ is determined based on the true heading of the vehicle as determined by the navigation system 36 and the desired vehicle reference and vehicle reference mode. Id. at 5:31–35. As discussed above, we find that the true heading of the vehicle as determined by navigation system 36 provides motion data generated by a sensor. Thornberg ’983 teaches that the transformations into TPSS and TRSS take into account transformation angle (θ), which Thornberg ’983 teaches is determined based on the true heading (i.e., motion data) of the vehicle and the control data (pitch/roll commands) received from control panel 200 of the remote operator control. See Ex. 1006, 4:29–33, 5:23–25, 5:36–38. Further, in the operator reference mode, the orientation of the operator/remote control upon activation of the operator mode is used as the reference axis (i.e., operator’s coordinate system). Additionally, as noted in the Petition (see Pet. 30–31), Thornberg ’983 teaches a variable operator reference mode in which the operator reference changes based on changes in the orientation of the operator control panel. Ex. 1006, 7:32–35. Based on the disclosure discussed above, we find that the pitch and roll commands received at lines 405, 415 in the operator mode teach command data in “a first coordinate system from a perspective of the remote control device” as recited in claim 1. Moreover, we find that Thornberg ’983 teaches that the received pitch/roll command data is transformed into control data in “a second coordinate system that is from a perspective of the RC aircraft.” Specifically, Thornberg ’983 teaches that the transformation equations 1 and 2 transform the pitch command and roll command based on the difference between the aircraft heading and the reference heading. See Ex. 1066, 7:9–11, 7:19–24. Further, Dr. Hansman testifies that TPSS and TRSS control data control the vehicle in the vehicle’s coordinate system, which is from the perspective of the vehicle. Ex. 1003 ¶ 411. We credit Dr. Hansman’s undisputed testimony in this regard because this testimony is consistent with the disclosure of Thornberg ’983, which teaches, among other things, that “[t]he system provides for the referencing of vehicle commands based on an operator frame of reference so that control commands provided by the operator remain intuitive and independent of the orientation of the vehicle with respect to the operator.” Ex. 1006, 3:41–44.” slip op. at 19

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentableUnpatentable

    “[a] POSITA would have been motivated to modify Thornberg’s control panel 200 to “control” the UAV 100 in a hovering state, i.e., by sending appropriate lift command data to the vehicle when the operator releases the input controls as Karem teaches, in order to facilitate aerial tasks that may involve a hovering state, such as airborne surveillance, inspection, maintenance, and repair, that Thornberg teaches were “well known” uses of UAVs. Ex. 1006, 1:15-24; Ex. 1003, ¶443. Pet. 45. We are persuaded that Petitioner’s rationale and evidence demonstrate by a preponderance of the evidence that claims 2, 7, and 12 would have been obvious in view of Thornberg ’983 and Karem. For example, Petitioner’s arguments are supported by the disclosure of Karem, which teaches a remotely-operated vehicle in a hovering state (Ex. 1008, 7:13–23, 32–39, and Thornberg ’983 teaches remotely operated vehicles include helicopters (Ex. 1006, 1:14–17). Further, Petitioner’s arguments are supported by Dr. Hansman’s undisputed testimony that a POSITA would have been motivated to modify Thornberg ’983’s control panel 200 to control UAV 100 in a hovering state, i.e., by sending appropriate lift command data to the vehicle when the operator releases the input controls as Karem teaches, in order to facilitate aerial tasks that may involve a hovering state, such as airborne surveillance, inspection, maintenance, and repair. Ex. 1003 ¶ 443. This testimony is supported by Thornberg ’983’s teaching that (1) airborne surveillance, inspection, maintenance, and repair were well known uses of UAVs; and (2) remote operation of UAVs apply to remotely operated helicopters. See Ex. 1006, 1:15–24.” slip op. at 29

  • Expert testimonyPetitioner expert creditedOther

    “In the same manner described in the ’116 patent, we find that the orientation of the control panel in Thornberg ’983 indicates the angular displacement (i.e., position data) of the vehicle relative to the operator mode reference axis because the control panel is directed toward the vehicle. Thornberg ’983’s Figure 2 discloses that the control panel is directly facing the remotely operated vehicle, which is nearly identical to placement of the remote control device and RC aircraft in Figure 5 of the ’116 patent. Ex. 1001, 3:67–4:2, Fig. 5; Ex. 1006, Fig. 2.” slip op. at 50

  Patent outcomesUS 9,079,116 unpatentable
  § 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 9,079,116
• SZ Dji Technology Co., Ltd. v. Drone-Control, LLCAll claims unpatentable
  PTAB · May 29, 2019 · IPR2018-00206 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1–18 are unpatentable, principally because Thornberg ’983 anticipates them or renders them obvious; the contingent motion to amend is denied.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “would have an equivalent of a Bachelor’s degree from an accredited institution in electrical engineering, mechanical engineering, aeronautical or astronautical engineering, robotics, computer science, or any other discipline covering principles of design, operation, and/or control of unmanned aerial vehicles, including remote-controlled vehicles, and would have a working knowledge of the design, development, implementation, or deployment of such technologies. Additional education could substitute for experience, and significant experience could substitute for formal education. Pet. 12 (citing Ex. 1003 ¶ 28). Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art. See Tr. 77:1–6; see also Ex. 2005 ¶ 48 (Patent Owner’s declarant adopting this definition of the person of ordinary skill in the art for purposes of declaration testimony).” slip op. at 12

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner

    “The only question, then, is whether orientation data can suffice by itself to qualify as “motion data,” as Petitioner contends, or whether data indicating a change in the vehicle’s position is essential, as Patent Owner argues. On that question, we agree with Petitioner that orientation data is sufficient. The Specification describes that motion sensing module 122 generates motion data 124 based on the motion of the aircraft and that motion sensing module 122 includes one or more axes of accelerometers or gyroscopes or other devices that alone, or with further processing by processing module 126, can generate data that represents θ, φ3, and/or other motion parameters such as R, Z, etc., that can be used in transforming the command data 104 to control data 128. Ex. 1001, 5:6–11 (emphases added). This disclosure supports a broad understanding of “motion data” as any data generated by the sensing module that represents a position, orientation, or motion parameter.” slip op. at 17

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Based on the complete record, we are persuaded by Petitioner’s contention. Although Thornberg ’983 does not state explicitly that the signals transmitted from the control panel to the vehicle are RF signals, we agree that a skilled artisan, considering the context of Thornberg ’983’s disclosure, would have recognized that the transmitted signals could comprise RF signals. “What a reference teaches or suggests must be examined in the context of the knowledge, skill, and reasoning ability of a skilled artisan,” and “is not . . . limited to what a reference specifically ‘talks about’ or what is specifically ‘mentioned’ or ‘written’ in the reference.” Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005); see also Manual of Patent Examining Procedure (“MPEP”) § 2144.01 (“[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.”) (quoting In re Preda, 401 F.2d 825, 826 (CCPA 1968)). Furthermore, we credit Dr. Hansman’s testimony that an ordinarily skilled artisan would understand Thornberg ’983’s disclosure to mean that the transmitted control signals “are radio frequency (RF) signals, as antennas are most commonly used for.” Ex. 1003 ¶ 295.” slip op. at 25

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “We are persuaded by Petitioner’s assertion that Thornberg ’983’s flight control computer 38 corresponds to the claimed processing module. As discussed above (see supra § III.D.1), flight control computer 38 is provided with transformation function 400. Ex. 1006, 5:9–12. Transformation function 400 receives an input of command data (the pitch command and the roll command) from the control panel through antenna 42 and an input of the transformation angle, θ, which is based on the true heading of the vehicle provided by navigation system 36. Id. at 5:19–31, Fig. 6. Transformation function 400 (via pitch axis transformation function 410 and roll axis transformation function 412) transforms the pitch command and the roll command into a transformed pitch stick signal (TPSS) and a transformed roll stick signal (TRSS) using equations that are based on the transformation angle. Id. at 6:17–28. When the system is in the operator reference mode, the TPSS and TRSS (i.e., control data) are in accordance with a second coordinate system that is from a perspective of the vehicle. Id. at 6:8–11 (“In an operator reference mode, the orientation of the operator upon activation of the operator mode is used as the reference axis.”). Patent Owner argues that Thornberg ’983 does not disclose transforming command data into control data based on motion data. PO Resp. 8–13; Sur-Reply 6–8. Patent Owner agrees that, in Thornberg ’983, transformation uses transformation angle θ, which is determined based on the vehicle’s true heading. PO Resp. 8. But Patent Owner contends that transformation angle θ is not “motion data” because it is solely an indication of orientation. Id. (citing Ex. 2005 ¶¶ 74–75). The distinction Patent Owner urges between Thornberg ’983 and the claimed subject matter is based on Patent Owner’s proposed construction of “motion data” as requiring data indicative of a change in position. See id. at 8–9; see also Tr. 103:1–8. For the reasons discussed in Section III.C., we decline to adopt Patent Owner’s proposed construction. Under the construction we have adopted, Thornberg ’983’s transformation angle θ is motion data because, as both parties agree, it indicates the vehicle’s orientation.” slip op. at 28

  Patent outcomesUS 8,649,918 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 8,649,918
• SZ Dji Technology Co., Ltd. v. Synergy Drone LLCAll claims unpatentable
  PTAB · May 23, 2019 · IPR2018-00205 · APJ Timothy J Goodson · IPR · Final written decision

  Claims 1–18 are unpatentable, principally because Thornberg-983 anticipates or renders them obvious; the contingent motion to amend is denied for lack of written-description support.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “itself to qualify as “motion data,” as Petitioner contends, or whether data indicating a change in the vehicle’s position is essential, as Patent Owner argues. On that question, we agree with Petitioner that orientation data is sufficient. The Specification describes that motion sensing module 122 generates motion data 124 based on the motion of the aircraft and that motion sensing module 122 includes one or more axes of accelerometers or gyroscopes or other devices that alone, or with further processing by processing module 126, can generate data that represents θ, φ3, and/or other motion parameters such as R, Z, etc., that can be used in transforming the command data 104 to control data 128. Ex. 1001, 4:66–5:4 (emphasis added). This disclosure supports a broad understanding of “motion data” as any data generated by the sensing module that represents a position, orientation, or motion parameter.” slip op. at 12

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “For the purposes of our Decision on Institution, and based on the record at that preliminary stage, we adopted Petitioner’s proposal that an ordinarily skilled artisan at the time of the invention of the ’368 patent would have had the following education and experience: [A] Bachelor’s degree from an accredited institution in electrical engineering, mechanical engineering, aeronautical or astronautical engineering, robotics, computer science, or any other discipline covering principles of design, operation, and/or control of unmanned aerial vehicles, including remote-controlled vehicles, and would have a working knowledge of the design, development, implementation, or deployment of such technologies. Additional education could substitute for experience, and significant experience could substitute for formal education. Dec. on Inst. 9 (citing Pet. 12; Ex. 1003 ¶ 28). Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art. See Tr. 77:3– 6. Based on our review of the complete record, we find that the evidence supports the level of ordinary skill in the art set forth above. Thus, we adopt Petitioner’s proposed level of ordinary skill in the art and apply it in our analysis below.” slip op. at 15

  • Expert testimonyPetitioner expert creditedOther

    “Looking at the first portion of the block quote, as Dr. Hansman observes, “[m]otion sensing module 122 is not limited to any specific technology and can therefore include gyroscopes that measure changes in orientation or accelerometers used to measure change in position.” Ex. 1023 ¶ 32. The Specification’s description that the “motion sensing module 122 includes one or more axes of accelerometers or gyroscopes or other devices” indicates that some embodiments include only gyroscopes, which are devices that provide information about orientation. Ex. 1001, 4:66–67 (emphasis added). Turning to the second portion of the passage block quoted above — i.e., that motion sensing module 122 includes devices that “can generate data that represents θ, φ3, and/or other motion parameters such as R, Z, etc., that can be used in transforming the command data 104 to control data 128” (Ex. 1001, 5:1–4) — we find persuasive Dr. Hansman’s testimony that an ordinarily skilled artisan would understand this passage to signify that “the motion data generated by motion sensing module 122 can be data reflecting any one, or several, or all of the mentioned parameters.” Ex. 1023 ¶ 32. Because φ3, which represents the aircraft’s orientation, is one of the mentioned parameters, this means that motion data can reflect orientation data alone. Ex. 1001, 3:46–47, 3:30–31, 5:2. We also note that Dr. Murphy’s testimony was in accord when he testified during cross-examination that “[m]otion data could be position data, it could be orientation data, or it could be a combination of position and orientation” and that he understands his own declaration to “say[] the same thing.” Ex. 1019, 96:12–15; see also id. at 61:18–19 (“Motion could be a change in only Phi 3. Yes. That’s correct.”).” slip op. at 12

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “d. Limitation [d]: “a processing module, coupled to the motion sensing module and the receiver, that transforms the command data into control data, based on the motion data, and in accordance with a second coordinate system, wherein the second coordinate system is from a perspective of the RC aircraft” We are persuaded by Petitioner’s argument that Thornberg-983’s flight control computer 38 discloses the claimed “processing module.” See Pet. 31–33. Thornberg-983’s flight control computer 38 is coupled to navigation system 36 and communications equipment 40. Ex. 1006, 4:12– 16, Figs. 5–6. Flight control computer 38 receives roll and pitch commands from communications equipment 40 and transforms those commands into transformed pitch stick signal (TPSS) and transformed roll stick signal (TRSS). Id. at 4:44–52, 5:9–12, 5:20–23, 6:17–28. These transformations are “based on the motion data” as claimed because they use the transformation angle θ determined from the true heading measured by navigation system 36. Id. at 5:30–35, 6:22, 6:27. Thornberg-983 also discloses that the control data can be in a coordinate system that is from the aircraft’s perspective, as claimed, because in one mode of operation, “the vehicle reference for purposes of vehicle control is the forward reference position on the aircraft.” Id. at 5:56–59; Ex. 1003 ¶ 201. Patent Owner argues that Thornberg-983 does not disclose transforming command data into control data based on motion data. PO Resp. 8–13; Sur-Reply 6–8. Patent Owner agrees that in Thornberg-983, transformation uses transformation angle θ, which is determined based on the vehicle’s true heading. PO Resp. 8. But Patent Owner contends that transformation angle θ is not “motion data” because it is solely an indication of orientation. Id. (citing Ex. 2005 ¶¶ 74–75). The distinction Patent Owner urges between Thornberg-983 and the claimed subject matter is based on Patent Owner’s proposed construction of “motion data” as requiring data indicative of a change in position. See id. at 8–9; see also Tr. 103:1–8. For the reasons discussed in Section II.A., we decline to adopt Patent Owner’s proposed construction. Under the construction we have adopted, Thornberg- 983’s transformation angle θ is motion data because, as both parties agree, it indicates the vehicle’s orientation. e. Limitation [e]: “a plurality of control devices, coupled to the processing module, that control the motion of the RC aircraft based on the control data” We are persuaded by Petitioner’s argument that Thornberg-983’s pitch flight control system and roll flight control system disclose the claimed “control devices” because they are coupled to flight control computer 38 and they control the pitch and roll motion of the vehicle based on the transformed TPSS and TRSS data. See Pet. 33 (citing Ex. 1006, 6:16–28; Ex. 1003 ¶ 203). f. Conclusion Regarding Claim 1 We determine that Petitioner has proven by a preponderance of the” slip op. at 22

  Patent outcomesUS 8,380,368 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,380,368
• Nautilus, Inc. v. Icon Health & Fitness Inc.Some claims unpatentable
  PTAB · Nov 28, 2018 · IPR2017-01363 · APJ Timothy J Goodson · IPR · Final written decision

  Claims 1–5 and 11–13 are unpatentable as obvious; claims 6–10 and 14–19 were not shown unpatentable because Six-Pak was not established as prior art.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable

    “Petitioner’s evidence to be deficient. What we find lacking is evidence that persons interested in exercise equipment knew of the TuffStuff website or would have been able to locate it through reasonable diligence. Even assuming that the two archived webpages captured by the Wayback Machine show that Six-Pak was available for anyone to view or download from the TuffStuff website,9 “‘[p]ublic accessibility’ requires more than technical accessibility.” Acceleration Bay, LLC v. Activision Blizzard Inc., __ F.3d __, 2018 WL 5795976, at *5 (Fed. Cir. Nov. 6, 2018) (affirming Board’s determination that a reference uploaded to a university website in the prior art period was not a printed publication when it was not meaningfully indexed to allow an ordinarily skilled person to locate the reference using the website’s search function). Petitioner has presented no evidence, in the Butler affidavit or elsewhere in the record, that the TuffStuff website could have been located through a reasonably diligent internet search.” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable

    “2. Claims 2–5 Petitioner contends that claims 2–5 would have been obvious over Sleamaker in view of Hanoun. Pet. 26–31. Petitioner argues that a skilled artisan would have been motivated to combine Sleamaker with Hanoun as proposed in its challenges to these claims because by 2013, it was known that exercise machines should track user performance and the market demanded such features. Id. at 19 (citing Ex. 1007 ¶¶ 44–50, 117–118). Sleamaker discloses electronics to track user performance (see Ex. 1002, 5:46–55), but according to Petitioner, “because the direction of its invention was not focused on the details of such electronics, a POSITA would have looked to Hanoun for a complimentary and more comprehensive system to measure performance in a flywheel-based exercise system.” Pet. 19 (citing Ex. 1007 ¶¶ 117–118). We find that Petitioner’s stated reasoning for combining Sleamaker and Hanoun is supported by rational underpinnings.” slip op. at 25

  • Skill levelSkill level petitioner adoptedOther

    “In our Decision on Institution, we adopted Petitioner’s proposal that an ordinarily skilled artisan at the time of the invention of the ’047 patent “would have had at least a bachelor’s degree in mechanical engineering or biomechanics and two years’ experience designing exercise equipment, or alternatively, an equivalent level of education and experience in product development and engineering regarding commercial fitness products.” Dec. on Inst. 7 (quoting Pet. 7). The parties’ post-institution briefing does not present any argument relating to the definition of the level of ordinary skill in the art. We maintain the definition of the level of ordinary skill in the art set forth in our Decision on Institution for the reasons stated therein. See Dec. on Inst. 7.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “II. CLAIM CONSTRUCTION Under the version of our rules applicable to this inter partes review,7 claim terms in an unexpired patent are given their broadest reasonable construction in light of the specification. 37 C.F.R. § 42.100(b) (2016); Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable interpretation standard). In our Decision on Institution, we determined that resolution of the disputed issues at that stage did not require an express interpretation of any claim term. See Dec. on Inst. 6 (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). The parties’ post-institution briefing does not present any claim construction arguments or issues. We maintain our determination that no express claim construction is necessary to resolve the disputed issues.” slip op. at 8

  Patent outcomesUS 9,403,047 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Graham
  Patents in suitUS 9,403,047
• Smith & Nephew, Inc. / Arthrocare Corp. v. Arthrex, Inc.All claims unpatentable
  PTAB · Oct 16, 2017 · IPR2016-00918 · APJ Barry L Grossman · IPR · Final written decision

  Claims 10 and 11 are unpatentable as obvious over Gordon and West; claim 11 is also anticipated by Curtis, and claim 10 is obvious over Curtis, Overaker, and DiPoto.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “We deny the Motion as moot. We have not relied on or cited the evidence Patent Owner seeks to exclude. Moreover, the Board acts as both the gatekeeper of evidence and as the weigher of evidence. Rather than excluding evidence that is allegedly confusing, misleading, and/or irrelevant, we will simply not rely on it or give it little weight, as appropriate, in our analysis. Similar to a district court in a bench trial, the Board, sitting as a non-jury tribunal with administrative expertise, is well positioned to determine and assign appropriate weight to evidence presented, including giving it no weight. See, e.g., Donnelly Garment Co. v. NLRB, 123 F.2d 215, 224 (8th Cir. 1941) (“One who is capable of ruling accurately upon the admissibility of evidence is equally capable of sifting it accurately after it has been received . . . .”). Thus, in this inter partes review, the better course is to have a complete record of the evidence to facilitate public access as well as appellate review.” slip op. at 79

  • Skill levelOther

    “1. Level of Ordinary Skill The level of skill in the art is “a prism or lens” through which we view” slip op. at 14

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “and 11.” PO Resp. 69. But Patent Owner does not point us to evidence or explanation supporting its contention that the anchors embody claim 10 or 11 of the ’541 patent. We have not been directed to persuasive evidence of any nexus between the Patent Owner’s sales and the patented invention. Accordingly, the evidence of commercial success has no probative weight.” slip op. at 68

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “flexible approach” to the question of obviousness. KSR, 550 U.S. at 415. Whether a patent claiming the combination of prior art elements would have been obvious is determined by whether the improvement is more than the predictable use of prior art elements according to their established functions. Id. at 417. To reach this conclusion, however, it is not enough to show merely that the prior art includes separate references covering each separate limitation in a challenged claim. Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011). Rather, obviousness additionally requires that a person of ordinary skill at the time of the invention “would have selected and combined those prior art elements in the normal course of research and development to yield the claimed invention.” Id.” slip op. at 45

  Patent outcomesUS 8,821,541 unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,821,541
• Fpusa, LLC v. M-I LLCSome claims unpatentable
  PTAB · May 24, 2017 · IPR2016-00295 · APJ Timothy J Goodson · IPR · Final written decision

  Derrick rendered claims 1, 3–6, 8–10, 14, and 15 of the ’288 patent and claims 1, 3–6, 8–10, and 14–18 of the ’440 patent unpatentable; other instituted grounds were not proven.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner

    “We note that the parties’ experts are in agreement that “preventing stalling” means avoiding clogging the screen with solids. Ex. 1013 ¶ 24; Ex. 2015 ¶¶ 49–50; Ex. 2017, 28:8–14. The specification supports this understanding of what it means to prevent stalling. See Ex. 1001, 3:37–42, 47–49, 6:34–39, 54–58. Further, both parties’ proposed constructions reflect this understanding of what it means to prevent stalling. In this respect, the parties’ proposals are similar. The parties capture that concept using slightly different wording. In our view, Petitioner’s construction hews more closely to the description in the specification. See id. Therefore, we adopt Petitioner’s proposed construction that “controlling air flow under at least a portion of the first screen to prevent stalling of the slurry on the screen” in claim 1 of the ’288 patent and “controlling air flow under the screen to prevent stalling of the slurry on the screen” in claim 9 of the ’440 patent include adjusting a pressure differential across a screen to allow solids to be conveyed along the screen unhindered and to allow fluid to flow through the screen.” slip op. at 15

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner

    “C. “slurry” Claims 1 and 10 of both the ’288 and ’440 patents recite a “slurry.” Patent Owner proposes that this term should be construed to mean “a mixture of drilling fluid and drill cuttings.” 213 PO Resp. 25. Patent Owner notes that the parties stipulated to this construction in the Parallel District Court Litigation. Id. (citing Ex. 2018). In the claim construction section of Petitioner’s Reply, Petitioner does not respond to Patent Owner’s proposal or propose a different construction of this term. See 213 Pet. Reply 3–5. The specification supports Patent Owner’s proposal because it sets forth the proposed construction as an express definition of the term. See Ex. 1001, 5:20–21 (“As used herein, a slurry refers to a mixture of drilling fluid and drill cuttings.”). Therefore, we adopt Patent Owner’s proposal that “slurry” means “a mixture of drilling fluid and drill cuttings.”” slip op. at 15

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “We agree with Petitioner that Patent Owner’s proposal improperly equates the description of a “shale shaker” in the specification with the broader term “shaker” used in the claims. Although the specification focuses heavily on shale shakers that are used in the oil and gas industry, Patent Owner did not use the word “shale shaker” in its claims and instead chose the broader term “shaker.” See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004) (“We have cautioned against reading limitations into a claim from the preferred embodiment described in the specification, even if it is the only embodiment described, absent clear disclaimer in the specification.”). The deposition testimony of Petitioner’s expert cited by Patent Owner does not persuade us that a “shaker” means only a “shale shaker” and cannot include any other type of vibratory separator because Mr. Matthews was not asked that question; he was only asked the more ambiguous question of whether the term shaker “refers to” a shale shaker. Ex. 2017, 11:8–15. Therefore, we adopt only the parties’ agreed-upon portion of Patent Owner’s construction and interpret “shaker” to mean “a vibratory separator.”5” slip op. at 16

  • PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner

    “In the 295 IPR, the Petition was filed on December 8, 2015, less than nine months after the ’440 patent issued on July 7, 2015. 295 IPR, Ex. 1001, at [45]. Accordingly, the Petition in the 295 IPR is timely under 37 C.F.R. § 42.102(a) only if the ’440 patent is a “first-to-invent” patent, notwithstanding the July 31, 2014, filing date of the application that issued as the ’440 patent. Id. at [22]. Petitioner contends that the ’440 patent is a “first-to-invent” patent because, by virtue of its priority claims, it does not contain a claim having an effective filing date on or after March 16, 2013. 295 Pet. 2. In our Decision on Institution in the 295 IPR, we outlined the analysis that led to our preliminary determination that Petitioner had sufficiently shown that the 2 Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”). 3 If a post-grant review of such a patent is instituted, a petition for inter partes review is not timely until after the termination of the post-grant review. 37 C.F.R. § 42.102(a)(3). ’440 patent is a “first-to-invent” patent and, therefore, the Petition in the 295 IPR was timely. See 295 Dec. on Inst. 8–11. We also noted that “Patent Owner has the opportunity to present contrary evidence after institution.” Id. at 11. Patent Owner did not present any argument or evidence on this issue in its Patent Owner Response in the 295 IPR. At the hearing, Patent Owner stated that it does not dispute that the Petition in the 295 IPR was timely filed. See Tr. 73:22–74:5. Therefore, for the reasons discussed in our Decision on Institution, we determine that the Petition in the 295 IPR was timely.” slip op. at 11

  Patent outcomesUS 9,074,440 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,074,440
• Fpusa, LLC v. M-I LLCSome claims unpatentable
  PTAB · May 24, 2017 · IPR2016-00213 · APJ Timothy J Goodson · IPR · Final written decision

  Claims 1, 3–6, 8–10, 14, and 15 of the ’288 patent and claims 1, 3–6, 8–10, and 14–18 of the ’440 patent are unpatentable, principally anticipated by Derrick or Vasshus.

  RulingsFinal written decision

  • PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner

    “to the “first-inventor-to-file” provisions of the AIA.2 A petition for inter partes review of a “first-inventor-to-file” patent (i.e., a patent described in section 3(n)(1) of the AIA) may not be filed until after at least “the date that is nine months after the date of the grant of the patent.” 37 C.F.R. § 42.102(a)(1).3 By contrast, a petition for inter partes review of a “first-toinvent” patent (i.e., a patent not described in section 3(n)(1) of the AIA) may be filed at any time after “the date of the grant of the patent.” 37 C.F.R. § 42.102(a)(2). Under section 3(n)(1), the first-inventor-to-file provisions apply to any application for patent, and to any patent issuing thereon, that contains or contained at any time a claim to a claimed invention that has an effective filing date on or after March 16, 2013. See AIA § 3(n)(1). In the 295 IPR, the Petition was filed on December 8, 2015, less than nine months after the ’440 patent issued on July 7, 2015. 295 IPR, Ex. 1001, at [45]. Accordingly, the Petition in the 295 IPR is timely under 37 C.F.R. § 42.102(a) only if the ’440 patent is a “first-to-invent” patent, notwithstanding the July 31, 2014, filing date of the application that issued as the ’440 patent. Id. at [22].” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other

    “We note that the parties’ experts are in agreement that “preventing stalling” means avoiding clogging the screen with solids. Ex. 1013 ¶ 24; Ex. 2015 ¶¶ 49–50; Ex. 2017, 28:8–14. The specification supports this understanding of what it means to prevent stalling. See Ex. 1001, 3:37–42, 47–49, 6:34–39, 54–58. Further, both parties’ proposed constructions reflect this understanding of what it means to prevent stalling. In this respect, the parties’ proposals are similar. The parties capture that concept using slightly different wording. In our view, Petitioner’s construction hews more closely to the description in the specification. See id. Therefore, we adopt Petitioner’s proposed construction that “controlling air flow under at least a portion of the first screen to prevent stalling of the slurry on the screen” in claim 1 of the ’288 patent and “controlling air flow under the screen to prevent stalling of the slurry on the screen” in claim 9 of the ’440 patent include adjusting a pressure differential across a screen to allow solids to be conveyed along the screen unhindered and to allow fluid to flow through the screen.” slip op. at 15

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “The differences between these competing articulations of the level of ordinary skill in the art are fairly minor. Our analysis below, including the conclusions we reach, would be substantially the same under either proposal. Nevertheless, after considering the evidence of record, we adopt Mr. Palmer’s definition of the level of ordinary skill in the art because we agree that five years of relevant experience is sufficient to achieve the level of ordinary skill in this art. We are not convinced that an engineering degree is necessary, and Petitioner’s proposal is not specific about what “equivalent industry experience or education” would involve.” slip op. at 20

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “We agree with Petitioner that Derrick discloses the “controlling” step. As discussed in Section III.B. above, we construe this limitation to include adjusting a pressure differential across a screen to allow solids to be conveyed along the screen unhindered and to allow fluid to flow through the screen. The specification of the ’288 patent describes accomplishing this by toggling the pressure between vacuum and static. Ex. 1001, 6:35–39, 54–58. In the Parallel District Court Litigation, Patent Owner relied on that disclosure as support for the “controlling” step. Ex. 1018, 24. As indicated in our summary of Derrick above, Derrick describes the same technique for the same purpose. Ex. 1004 ¶ 79. Patent Owner’s arguments are not persuasive because they do not address the portions of Derrick on which Petitioner’s challenge is based. Patent Owner’s arguments distinguish Derrick’s disclosure of alternating application of suction and pressure. But Petitioner’s challenge is based on Derrick’s disclosure of alternating application and release of suction. Accordingly, we find that Derrick discloses each element of claim 1. b. Claims 3–6, 8, and 9 Turning to the dependent claims, Petitioner explains how Derrick discloses the subject matter of claims 3–6, 8, and 9. 213 Pet. 28–30. Aside from pointing out their dependency from claim 1, Patent Owner does not dispute Petitioner’s arguments regarding these claims. See 213 PO Resp. 30. Having reviewed the underlying evidence cited in support of Petitioner’s arguments, we agree with and adopt Petitioner’s analysis of how Derrick discloses the features of these dependent claims. 3.” slip op. at 24

  Patent outcomesUS 9,004,288 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,004,288
• Seadrill Americas, Inc. / Seadrill Gulf Operations Auriga, LLC et al. v. Transocean Offshore Deepwater Drilling, Inc.No claims unpatentable
  PTAB · May 18, 2017 · IPR2015-01990 · APJ William V Saindon · IPR · Final written decision

  The Board found claims 10–13 and 30 of the ’781 patent, claim 10 of the ’851 patent, and claims 17–19 of the ’069 patent not shown unpatentable over the asserted grounds.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “The words “to the seabed” in claim 30 require that the second means for advancing tubular members must have a structure in practice that, without modification, allows it to perform that function. See Typhoon Touch Tech’s, Inc. v. Dell, Inc., 659 F.3d 1376, 1380 (Fed. Cir. 2011) (listing cases that reject the notion that a prior art structure that could be modified to infringe would infringe).18 Petitioner asserts that, to anticipate, Lund merely of the deck. Thus, of the 30 m long stand, a little more than 10 m of tube would be above the deck and a little less than 20 m would be below the deck, depending on how and where exactly the torqueing device held onto the second and third tubes to fasten them. 18 We recognize that Typhoon was concerned with a question of infringement, but the principles discussed therein are also relevant to a patentability analysis because “[t]hat which infringes, if later, would needs to perform this function at some depth, not every depth. Pet. Reply 5– 6. We agree with Petitioner on this point, at least in general.19 See, e.g., Bell Commc’ns Research, Inc. v. Vitalink Commc’ns Corp., 55 F.3d 615, 622–23 (Fed. Cir. 1995) (“an accused product that sometimes, but not always, embodies a claimed method nonetheless infringes”). We are not persuaded, however, that Petitioner has shown that Lund is capable of lowering a tubular string to the seabed at some depth. First, Petitioner has not offered evidence that Lund actually describes lowering tubulars to the seabed. The disclosure in Lund cautioning to be careful not to strike structures (Ex. 1002, 9:58–65) does not actually describe whether the structures are undersea, let alone at the seabed. Instead, Lund simply describes a “possible occurrence of well heads and other structures in the area around the well centre.” Id. Patent Owner has provided evidence that Lund could be referring to structures above the surface of the water or on the drilling rig itself, which Patent Owner shows are not uncommon in shallow-water operations. PO Resp. 7–9 (citing, e.g., Ex. 2075 ¶¶ 68–74; Ex. 2088, 47:15–52:19). This evidence rebuts the testimony of Mr. Schaaf upon which we relied in determining that Petitioner had a reasonable likelihood of success. See Pet. 42 (citing Ex. 1007 ¶ 94); Ex. 1007 ¶ 94 (citing to Ex. 1002, 9:58–64 as allegedly disclosing that the hoist in Lund could reach the seabed); Dec. on Inst. 19 (relying on the testimony at Ex. anticipate, if earlier.” Peters v. Active Mfg. Co., 129 U.S. 530, 537 (1889). 19 The depth would have to be a depth at which a drilling rig would be used, for example. If drilling rigs were not used at a certain depth, for example, then it would make no sense to construe the limitation in a way to require such a depth. 1007 ¶ 94). Based on the record now before us, we find that it is not necessarily the case that Lund was describing interference with structures in the sea or at the seabed, as it is possible Lund was describing interference with structures above the waterline or on the rig itself.” slip op. at 25

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “into a drilling hoist. Pet. 23–24. A reason for doing this is for the ability to have two drilling stations, such as shown in Horn. Id. (citing Ex. 1007 ¶ 72); see also id. at 23 (citing Ex. 1012 ¶ 41; Ex 1014, I-191, I-193; Ex. 1015, each of which show examples of drilling rigs having two drilling stations). Given the examples of drilling rigs having two drilling stations under one derrick (e.g., Horn, Chevron S-55), we find that a person of ordinary skill in the art has a reasonable expectation of success in converting Lund’s preparation hoist into a drilling station. Patent Owner’s arguments focus on whether a person of ordinary skill in the art would have considered such a modification in the first place. PO Resp. 15–16, 22–24. Patent Owner first argues that Horn does not explain why a person of ordinary skill in the art would modify Lund’s rig to have a second drilling hoist. Id. at 15–16. Petitioner’s Petition addresses that argument, when it states that the proposed modification “would have had the added advantage of being able to have each hoist run its own drill string to the seabed,” exactly as taught in Horn. Pet. 24. In other words, making the second hoist drill-worthy would be following Horn, such as to enable the Lund rig to drill two wells at the same time. Patent Owner misunderstands KSR when it argues that Petitioner cannot use drill two wells as a rationale. See PO Resp. 15 (citing KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)); KSR, 550 U.S. at 418 (“[I]t can be important to identify a reason . . . to combine the elements in the way the claimed new invention does.”). When it states that there must be a reason to combine the elements “in the way the claimed new invention does,” the Supreme Court means that there must be a reason to combine to arrive at the claimed invention (i.e., to meet each limitation, as arranged in the claim). This understanding of KSR is apparent by reading the next page, where the Supreme Court explicitly rejected the theory that a reason for combination must be the same as the inventor’s: “[i]n determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls.” KSR, 550 U.S. at 419. Accordingly, we do not see any deficiency in Petitioner’s reasoning with respect to Petitioner’s reliance on a desire to have two drill stations for two wells, as taught in Horn and for the benefits described therein. As such, we find that Petitioner has articulated a reason with rational underpinnings for modifying Lund’s rig to have two drill stations, as taught in Horn.” slip op. at 32

  • Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia with nexusObjective indicia outweighedDecided for patent owner

    “that also are called “dual activity,” it is difficult to discern whether any given feature is in reference to a feature of the claimed version or the prior art version in isolation. Accordingly, we cannot agree with Petitioner that there is no nexus, but we also cannot presume that “dual activity” refers to the claimed invention in every instance. In effect, we find that there is some nexus between the phrase “dual activity” and the claims, but with the caveat that we must be careful to discern how the phrase is used in the evidence.” slip op. at 46

  • ExcludeMotion to exclude, deniedDenied

    “B. Motion to Exclude Petitioner filed a Motion to Exclude Evidence (Paper 80), to which Patent Owner filed a Response (Paper 84) and Petitioner filed a Reply (Paper 85). Petitioner moves to exclude the testimony of Claude E. Cooke, Jr., Ph.D., in Exhibit 2077. Paper 80, 17. Patent Owner relies on the testimony of Dr. Cooke for purposes of analysis of its secondary considerations evidence, specifically as to the nexus. Paper 84, 2. In our Decision below, we do not rely on Dr. Cooke’s testimony except in one instance in which we find his testimony not credible. Accordingly, we deny Petitioner’s Motion to Exclude as moot, as we do not rely on it.” slip op. at 14

  Patent outcomesUS 6,068,069 not shown unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 6,068,069

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