- Valve Corporation v. Ironburg Inventions Ltd.Some claims unpatentablePTAB · Sep 22, 2017 · IPR2016-00949 · APJ Phillip J Kauffman · IPR · Final written decision
Claims 1–12 and 15–18, and 20 are unpatentable: claims 1, 3–12, 15–17, 19, and 20 as anticipated by Tosaki; claims 1–12, 15–18, and 20 as obvious over Enright and Tosaki.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“This Motion has no meaningful distinction from the Motion filed in IPR2016-00948, and we incorporate that analysis here. Consequently, we deny Patent Owner’s Motion.” slip op. at 4
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Patent Owner’s argument is that the ’770 patent expresses a clear intent to disavow controllers having a recessed portion that does not receive a user’s fingers. See PO Resp. 17–22. Stated in a positive sense, Patent Owner argues that the ’770 patent expresses a clear intent to cover only recessed portions that receive a user’s fingers. Patent Owner does not identify, nor do we discern, any explicit disclosure in the ’770 patent that the invention includes only recessed portions that receive a user’s fingers. The description that “preferably” each elongate member is mounted in a recess such that a user’s fingers may be received in the recess is an exemplary disclosure of a preferred embodiment. See Ex. 1011, 1:62–67. Likewise, the disclosures that the elongate members (e.g., paddles 11) are mounted within recesses so that a user may engage the elongate members with the tips of the fingers are exemplary. See Ex. 1011, 2:21–25, 3:39–44, Fig. 3. Consequently, the ’770 patent does not express a clear intent to limit the claimed invention to recessed portions that receive a user’s fingers. See e.g., SciMed Life Sys. Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed.Cir. 2001); see also Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed.Cir. 1988) (“Although the specification may aid the court in interpreting the meaning of disputed claim language, particular embodiments and examples appearing in the specification will not generally be read into the claims.”). In light of the disclosures above, the ordinary meaning that a recessed portion is an indentation is consistent with the Specification.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We agree with Petitioner (Pet. Reply 9–10) that nothing in claim 1 precludes the back of Tosaki’s steering wheel 14 from corresponding to the back of the controller as claimed. Claim 1 is an open-ended claim, so that additional components like base casing 10 with its bottom plate 11 are not precluded. Patent Owner’s assertion is not persuasive because it is not commensurate in scope with the claims. c) Conclusion Petitioner has demonstrated by a preponderance of the evidence that Tosaki anticipates independent claim 1.” slip op. at 23
- Skill levelSkill level patent owner adoptedDecided for patent owner
“We accept Patent Owner’s uncontested assertions regarding the education level of the inventors; however, this information provides an incomplete picture because other factors are involved. See e.g. Daiichi Sankyo Co. Ltd, Inc. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007) (enumerating a non-exhaustive list of six factors that are a guide to determining the level of skill in the art). For example, one concern is the type of problems encountered in the art, and the problem solved by the ’770 patent is but one type of problem encountered. Tosaki describes that removing a hand from the controller to manipulate switches makes prompt reaction difficult and degrades usability, and describing that repositioning the user’s hands can affect comfort. Ex. 1002, 1:54–67, 2:19–23. Tosaki describes an apparatus that permits manipulation of a plurality of switches while holding the controller. Id. at 3:20–23. Tosaki’s solution also includes switches on the back of the controller (shift levers) that are accessible to a user’s fingers. Id. at 3:36–4:8. Enright describes that controller had become more complex in that the number of functions and user input devices increased to the point that user’s had difficulty moving a finger to a desired button. Ex. 1003 ¶ 2. Enright describes that movement between input devices can be difficult. Id. at ¶¶ 3–4. As a solution, Enright disclosed a device that permits selection of discrete button commands without looking at or moving fingers from buttons. Id. ¶ 5. Enright’s solution includes switches (mode switches 32, 34) added to the underside (back) of the controller to reside near a user’s fingers for easy operation. Id. at ¶ 32. Enright also discloses that these switches may be located elsewhere is ergonomically desired. Id. In light of this, the prior art of record demonstrates that switch position on the controller, usability, and comfort were known problems in the art. Further, prior solutions included placing switches to be easily accessible to a user’s finger or thumb, and placing switches so that those switches are accessible without removing a finger or thumb from another switch. In particular, these solutions placed controls on the back of the controller to be accessible to a user’s fingers. The technology involved was placement of switches in ergonomically desired locations that permit usability.” slip op. at 37
Patent outcomesUS 9,089,770 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 9,089,770 - Valve Corporation v. Ironburg Inventions Ltd.Some claims unpatentablePTAB · Sep 22, 2017 · IPR2016-00948 · APJ Phillip J Kauffman · IPR · Final written decision
Claims 1, 6, 13, 14, 16, 17, 19, and 20 are unpatentable: Tosaki anticipates them, and Enright with Tosaki also renders claim 20 obvious.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“In our Decision to Institute, we explained that a preliminary response cannot serve as an effective objection for two reasons.2 Dec. 4–5 (entered on September 27, 2016). First, objections must be made after institution of trial. See 37 C.F.R. § 42.64(b)(1) (objections are due ten days from institution of trial). Second, an objection and a preliminary response may not be combined into a single document. See 37 C.F.R. § 42.6(a)(3) (prohibiting combined documents).” slip op. at 5
- Strike new argumentNew argument consideredDecided for petitioner
“The Petition fails to address a claimed characteristic of the elongate members (flexibility). See PO Resp. 39–41 (arguing that Enright does not disclose elongate members that are flexible as claimed). This cannot be corrected in Petitioner’s Reply. See Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,767 (Aug. 14, 2012) (a reply may not raise a new issue or belatedly present evidence); 35 U.S.C. § 312 (a)(3) (requiring petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”); 37 C.F.R. § 42.104(b)(4) (a petition for inter partes review must identify how the construed claim is unpatentable under the statutory grounds on which the petitioner challenges the claim and must specify where each element of the claim is found in the prior art patents or printed publications relied upon); Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1080 (Fed. Cir. 2015); see also Paper 39, 2 (pointing out that Petitioner is making a new argument).20 Petitioner has not demonstrated by a preponderance of the evidence that claim 1 is unpatentable under 35 U.S.C. § 103 as obvious over Enright and Tosaki. The same is true of claims 2–11, 13, 16, and 17 by virtue of their dependence from claim 1. 20 Petitioner argues that Patent Owner’s contention could not have been addressed earlier because the Board did not explicitly construe this claim limitation. Petitioner’s burden is not alleviated by the lack of a claim construction by the Board.” slip op. at 38
- Expert testimonyPetitioner expert discountedMixed
“In our Institution Decision, we observed that the Petition does not explain persuasively how observations from a UK patent examiner, which presumably are based on UK law and not United States law, are of use in our proceeding. Dec. 4. Petitioner asserts that Mr. Donohoe must be a person of ordinary skill because the level of ordinary skill is low, and because the UK Intellectual Property Office employed Mr. Donohoe to examine the video game controller art. Pet. Reply 16–17. Petitioner chose not to address our concern regarding the distinctions between United States and UK law. Because of those distinctions, Petitioner’s assertions and evidence with regard to Mr. Donohoe are entitled to little or no weight. This shortcoming is not fatal to this ground of unpatentability because, as explained below, the prior art of record is reflective of the level of skill in the art.” slip op. at 39
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Patent Owner contends that the level of skill in the art is relatively low and that “less than a year of experience or other training in controller assembly or tooling is required.” PO Resp. 34; Ex. 2002 ¶ 30 (Patent Owner’s expert opining that the level of skill is “no more than a year of experience or other training in controller assembly or tooling”). Patent Owner bases this level of skill on the education level of the inventor and the type of problems encountered in the art. PO Resp. 35. Regarding the education level of the inventors, Patent Owner provides evidence that the named inventors have degrees in unrelated fields. Id. (citing Ex. 2008, 3; Ex. 2009, 4). Patent Owner asserts the problem solved was that users of conventional game controllers were at risk of hand strain or injury from having to operate many different controls on the front of the controller with only a user’s thumbs. Id. at 35–36 (citing Ex. 2012 ¶ 10; Ex. 1001, 1:33–40, 3:56–61). Petitioner does not contest the education level of the inventors or the problem solved by the ’525 patent. Pet. Reply 15–16. Rather, Petitioner asserts that Patent Owner has taken the illogical position that the qualifications of a person of ordinary skill in the art are maximum levels of experience or training rather than minimums. Id. To the extent that Patent Owner’s assertion suggests that the level of skill may not exceed a year of experience or other training in controller assembly or tooling, we disagree. Patent Owner does not cite, nor are we aware, of any legal precedent supporting the assertion that education and experience levels are maximums that must not be exceeded. Regarding the problem solved by the ’525 patent, the portions cited by” slip op. at 40
Patent outcomesUS 8,641,525 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 8,641,525 - Axon Enterprise, Inc. v. Digital Ally, Inc.Institution deniedPTAB · Jul 6, 2017 · IPR2017-00515 · APJ Minn Chung · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 10–17 and 20 were unpatentable over either asserted § 103 ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and the Preliminary Response, we conclude that the information presented in the Petition does not establish a reasonable likelihood that Petitioner would prevail in showing the unpatentability of any of the challenged claims on the grounds set forth in the Petition. Accordingly, we deny Petitioner’s request to institute an inter partes review of claims 10–17 and 20.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable interpretation standard as the claim construction standard to be applied in an inter partes review proceeding). Under the broadest reasonable interpretation standard, and absent any special definitions, claim terms generally are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art, in view of the specification. In re Translogic Tech. Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). For the purposes of this decision, and on the record presented, we determine that no claim terms need express interpretation. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (explaining that “claim terms need only be construed ‘to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“two-way radio, etc.” Ex. 1014 ¶ 62. Neither Petitioner nor Dr. Houh explains what specific modification to the remote handheld camera would have been necessary or how a person of ordinary skill would have been motivated to make the necessary modification based on “the structure and operation” of a walky-talky or a two-way radio. In addition, Dr. Houh does not explain what specific modification was “well within the skill of one skilled in the art” and why one would make such a modification. See Ex. 1003 ¶ 164. Further, Dr. Houh does not cite any evidence in support of his testimony. See id.; 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Hence, we agree with Patent Owner that, at least with respect to the proposed modification to the remote handheld camera of Pierce, Petitioner’s argument and Dr. Houh’s testimony are conclusory, are based on hindsight, and do not include a reasoned analysis and evidentiary support sufficient to establish obviousness. See Magnum Oil Tools, 829 F.3d at 1380.” slip op. at 18
- Expert testimonyPetitioner expert discountedDecided for patent owner
“two-way radio, etc.” Ex. 1014 ¶ 62. Neither Petitioner nor Dr. Houh explains what specific modification to the remote handheld camera would have been necessary or how a person of ordinary skill would have been motivated to make the necessary modification based on “the structure and operation” of a walky-talky or a two-way radio. In addition, Dr. Houh does not explain what specific modification was “well within the skill of one skilled in the art” and why one would make such a modification. See Ex. 1003 ¶ 164. Further, Dr. Houh does not cite any evidence in support of his testimony. See id.; 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Hence, we agree with Patent Owner that, at least with respect to the proposed modification to the remote handheld camera of Pierce, Petitioner’s argument and Dr. Houh’s testimony are conclusory, are based on hindsight, and do not include a reasoned analysis and evidentiary support sufficient to establish obviousness. See Magnum Oil Tools, 829 F.3d at 1380.” slip op. at 18
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,253,452 - Arctic Cat, Inc. v. Polaris Industries Inc.Institution deniedPTAB · Jul 5, 2017 · IPR2017-00455 · APJ Phillip J Kauffman · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on the challenged claims, failing to provide a sufficient rationale for either proposed prior-art combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner, and for that reason, section 325(d) is not relevant to our analysis. Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); 37 C.F.R. § 42.108. We consider Patent Owner’s three underlying contentions under this standard.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“cooling air unobstructed by exterior body panels and would avoid receiving hot air from inside the engine compartment, thereby cooling the CVT more effectively, reducing wear, and improving CVT efficiency. Pet. 19, 22; Ex. 1001 ¶¶ 48–50, 54, 55, 230, 233; Ex. 1005 ¶¶ 4–5. The premise of this reasoning is that airflow to Suzuki’s CVT is obstructed by an exterior body panel or panels. That premise is not supported adequately the record.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For the purposes of this decision, and on this record, we determine that no claim terms need express interpretation. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only those terms which are in controversy need to be construed, and only to the extent necessary to resolve the controversy).” slip op. at 7
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Other
“We reserve ruling on the Motion to Seal. Paper 7 and Exhibit 2015 will remain under seal in the interim. After the absence of a timely request for rehearing, or if filed, after resolution of a request for rehearing, Patent Owner may seek authorization to file a Motion to Expunge Paper 7 and Exhibit 2015. See 37 C.F.R. §§ 42.71(d)(1), 42.56.” slip op. at 3
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 9,217,501 - Irwin Seating Company v. Camatic Proprietary LimitedInstitution deniedPTAB · Jun 12, 2017 · IPR2017-00385 · APJ Mitchell G Weatherly · IPR · Institution
The Board denied institution because Irwin did not show a reasonable likelihood that claims 13, 18–22, 27–33, 35, and 36 were obvious over the asserted reference combinations.
RulingsInstitution decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“written decision is issued shall be given its broadest reasonable construction in light of the specification of the patent in which it appears.” 37 C.F.R. § 42.100(b); see also Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (affirming that USPTO has statutory authority to construe claims according to Rule 42.100(b)). When applying that standard, we interpret the claim language as it would be understood by one of ordinary skill in the art in light of the specification. In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010). Thus, we give claim terms their ordinary and customary meaning. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (“The ordinary and customary meaning ‘is the meaning that the term would have to a person of ordinary skill in the art in question.’”). Only terms which are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Based upon our review of the Petition and Preliminary Response, we do not consider it necessary to interpret expressly any terms in the challenged claims to resolve a controversy presented by the parties.” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“timely filed a Preliminary Response. Paper 9 (“Prelim. Resp.”). Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); 37 C.F.R. § 42.108. Based on our review of the record, we conclude that because Irwin is not reasonably likely to prevail with respect to any of its challenges to the patentability of claims.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“analysis as follows: “In determining whether there would have been a motivation to combine prior art references to arrive at the claimed invention, it is insufficient to simply conclude the combination would have been obvious without identifying any reason why a person of skill in the art would have made the combination.” Metalcraft of Mayville, Inc. v. The Toro Company, 848 F.3d 1358, 1366 (Fed. Cir. 2017). However, “knowledge of a problem and motivation to solve it are entirely different from motivation to combine particular references.” Id.at 1367 (quoting Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1373 (Fed. Cir. 2008)). The Metalcraft court further explained: Without any explanation as to how or why the references would be combined to arrive at the claimed invention, we are left with only hindsight bias that KSR warns against. See KSR, 550 U.S. at 421 . . . . And while we understand that “[t]he obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation,” we also recognize that we cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention. See KSR, 55 U.S. at 419, 421 . . . .” slip op. at 12
- Expert testimonyPetitioner expert discountedDecided for patent owner
“demonstrate a reasonable likelihood of establishing that an ordinarily skilled artisan would have been motivated to combine teachings from Head, Allison, and Burdick to arrive at the inventions as set forth in independent claims 13, 20, and 33. The testimony from Mr. Simons upon which Irwin relies is of little probative value because Mr. Simons merely parrots Irwin’s argument without citing objective evidence in support, even when such evidence should be readily available. For example, Mr. Simons testifies: In the context of beams, flanges/overhangs serve the dual purpose of mitigating torsional and bending movement while at the same time affording undercuts for positive attachment of other elements by either clamping or capturing. These benefits were well known to those of skill in the art before September 1999, and provide motivation for one of skill in the art to add flanges or overhangs to beam seating. Ex. 1002 ¶ 50 (parroting argument at Pet. 28). It is not sufficient simply to state a broad concept regarding “flanges/overhangs” as they relate to “mitigating torsional and bending movement” that is “well known” without also providing some objective evidence that the concept is well known as of the time of the invention. Like the testimony rejected for insufficiency in ActiveVideo Networks, Inc. v. Verizon Communications, Inc., 694 F.3d 1312, 1328 (Fed. Cir. 2012), Mr. Simons’ testimony is generic and fails to explain with objective evidence in support why an ordinarily skilled artisan would have been motivated to modify Head’s beam 12 by adding the flanges of Allison or Burdick. Under ActiveVideo, an expert must: “explain how specific references could be combined, which combination(s) of elements in specific references would yield a predictable result, or how any specific combination would operate or read on the asserted claims.” Mr. Simons fails to do so. Moreover, Expert testimony in these proceedings that “does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a). As discussed below, Mr. Simons’ testimony regarding motivation to combine elements of Head, Allison, and Burdick is devoid of any disclosure of underlying facts or data and is therefore entitled to little or no weight.” slip op. at 12
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,073,858 - Dynamic Air Inc. v. M-I Drilling Fluids UK Ltd.Some claims unpatentablePTAB · May 23, 2017 · IPR2016-00264 · APJ William V Saindon · IPR · Final written decision
Claims 1–10 and 12–30 are unpatentable as obvious over the Dietzen-led combination; claim 11 was not shown unpatentable because Toth did not establish the ISO-container limitation.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“1. “adapted to” This term appears in claims 11 and 18–20. Petitioner proposes “adapted to” means “capable of.” Pet. 9. We agree, insofar as these limitations require structure to have qualities or features allowing it to meet the claim language. For example, claim 18 would require a vessel that actually can “withstand a pressure of about 4 bar to about 8 bar.” In other words, the “adapted to” language distinguishes from those structures that are not physically capable of meeting the limitation. Patent Owner argues that Petitioner’s construction is overly broad. PO Resp. 17–19. Reviewing Patent Owner’s arguments, however, is not clear to us what Patent Owner disputes to be the effective difference. We determine that no explicit construction of “adapted to” is necessary.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Patent Owner that Petitioner’s initial construction, now abandoned, was too broad. Specifically, Petitioner’s abandoned construction did not account for the fact that the mixture comes from a particular origin (drilling of an oil well) and that the “some resistance to flow” aspect was also too broad given the particular materials involved. However, the aspect of Patent Owner’s proposed construction that would require a gravity test is not supported by the ’217 patent. Instead, we adopt a construction that is essentially a combination of Petitioner’s new claim construction (see Pet. Reply 10) and Patent Owner’s claim construction, for the reasons below. The ’217 patent does not describe drill cuttings or paste with any reference to flow in relation to gravity. The ’217 patent describes the material conveyed therein in several different ways, but it is always referring to the same material. The labels that the ’217 patent gives to this material are: “thick heavy paste” (Ex. 1001, 1:6, 22–23, 28, 32, 42–43, 2:43), “drill cuttings” (id. at 1:28, 43; see also id. at 1:21 (simply, “cuttings”)), “non-free flowing paste” (id. at 1:38, 42), and “thick and/or heavy paste or clay like material” (id. at 1:42–43). These labels are often equated to one another in the ’217 patent: “cuttings . . . in the form of a very thick heavy paste[]” (id. at 1:21–23), “thick heavy pastes . . . e.g. drill cuttings” (id. at 1:28), “non- free flowing paste[] . . . e.g. oil rig drill cuttings” (id. at 1:42–43). As such, the ’217 patent considers drill cuttings to be a thick heavy paste as well as a non-free flowing paste. Thus, using the terms from the ’217 patent, drill cuttings are a non-free flowing paste. We do not adopt Patent Owner’s proposed construction, which involves adding some sort of gravity test to the material to determine whether or not it is a non-free flowing paste. According to ’217 patent, the non-free flowing paste is drill cutting material, which in turn is a screened material generated by the drilling of an oil well. Ex. 1001, 1:19–23,15 28, 42–43. The ’217 patent, therefore, defines the relevant “paste” material, e.g., drill cuttings, by the way in which it arrives at the pressure vessel (screening), consistent with our construction in IPR2016-00256, and not by any particular gravity test. See Ex. 2055 ¶ 10 (Patent Owner’s declarant, Mr. Lauder, testifying that “[t]he material coming out of the shaker house is referred to as drill cuttings and often has the consistency of a thick, heavy paste, or as claimed in the ‘217 patent, non-free flowing, heterogeneous, multicomponent, earth extracted paste”). Thus, we are not persuaded that the claim requires a gravity test, as none is mentioned or alluded to in the specification, and is not needed given the way that the relevant material is described in the specification.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Although both parties agree that the level of ordinary skill involves a bachelor’s degree and familiarity with similar subject matter, Petitioner proposes experience in the design of systems, whereas Patent Owner merely proposes experience with the systems themselves. We agree with Petitioner that a person of ordinary skill in the art designs devices, rather than is merely familiar with them (e.g., an operator or a manufacturer), as proposed by Patent Owner. See Ex. 1031 ¶ 28; Ex. 1002, 2:25–27 (indicating that those skilled in the art would understand “that the critical cone angle will vary depending upon the material being conveyed”). Accordingly, we adopt Petitioner’s proposed level of ordinary skill; though we note this difference would not affect our analysis.” slip op. at 15
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“testimony of Petitioner’s expert, Dr. Carson, taken out of context, and also on the unsupported testimony of its expert, Dr. Brown. PO Resp. 12–15. As to the testimony of Dr. Carson, Patent Owner points out that one of Dr. Carson’s colleagues once used the term “free-flowing” in a paper. Id. at 12 (citing Ex. 1016). During cross examination relating to this paper (which was on powders, not pastes), Dr. Carson agreed that “it is possible” “to define non-free flowing in terms of gravity.” Ex. 2021, 88:17–21.16 Even if it is possible to define “non-free flowing” in terms of gravity in some context, that does not mean it is possible to define it in all contexts, let alone this particular context.17 Or, if possible, that such a definition is reasonable. Thus, we do not find the testimony of Dr. Carson to support Patent Owner’s requirement for a gravity test. As to Dr. Brown, Patent Owner relies on his testimony that a person of ordinary skill in the art “would understand that these pastes would not generally flow as a result of gravity.” PO Resp. 13 (citing Ex. 2060 ¶ 83). Dr. Brown’s cited testimony is as follows: 16 Notably, Dr. Carson does not testify with respect to pastes, drill cuttings, or anything related to the claimed material at hand. Patent Owner distinguishes pastes and drill cuttings from powders when arguing that the prior art powder-conveying pressure vessels could not be expected to convey pastes or drill cuttings. See, e.g., PO Resp. 27 (arguing that “granular solids are distinct from the non-free flowing . . . paste . . . of the claims”). 17 Exhibit 1016 is directed to the flowability of powder, not pastes, and states that “the term free flowing, so commonly used, becomes meaningless unless the specific equipment handling the material is specified.” Ex. 1016, 62. To the extent this teaching applies to pastes, what it shows is that what is “free flowing” on one piece of equipment may not be so on another, and supports Petitioner’s argument that adding a gravity test would render the term indefinite. Pet. Reply 12. The ’217 Patent goes further to establish that “thick heavy paste material[s]” are different from “relatively free flowing material” or “small batches of wet sticky materials.” Ex. 1002 at 1:35-36. Because the material conveyed in the ’217 Patent is contrasted with “relatively free flowing material,” the ’217 Patent’s use of the term “non-free flowing” is consistent with what a person of ordinary skill in the art would understand it to mean, and that is “does not generally flow freely by gravitational force.” Ex. 2060 ¶ 83. Dr. Brown’s testimony does not provide any credible evidence in support of his conclusion that the ’217 patent’s contrast between “thick heavy paste” and “free flowing material” has something to do with gravity. Similarly, his testimony that “‘non-free flowing’ is used to describe a material that ‘does not generally flow freely by gravitational force’” lacks supporting evidence or explanation. Id. ¶ 80; 37 C.F.R. § 42.65(a). We do not find his testimony persuasive.” slip op. at 12
Patent outcomesUS 6,709,217 mixedClaim construction§ 103 obviousnessPatents in suitUS 6,709,217 - Dynamic Air Inc. v. M-I Drilling Fluids UK Ltd.Some claims unpatentablePTAB · May 23, 2017 · IPR2016-00263 · APJ William V Saindon · IPR · Final written decision
Claims 1–10 and 12–49 are unpatentable as obvious over the Dietzen-led grounds; claim 11 was not shown unpatentable.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“1. “adapted to” This term appears in claims 11, 17–19, and 30–49. Petitioner proposes “adapted to” means “capable of.” Pet. ’262, 10; Pet. ’263, 10. We agree, insofar as these limitations require structure to have qualities or features allowing it to meet the claim language. For example, claim 17 would require a vessel that actually can “withstand a pressure of about 4 bar to about 8 bar.” In other words, the “adapted to” language distinguishes from those structures that are not physically capable of meeting the limitation. Patent Owner argues that Petitioner’s construction is overly broad. PO Resp. ’262, 17–19; PO Resp. ’263, 16–19. Reviewing Patent Owner’s arguments, however, is not clear to us what Patent Owner disputes to be the effective difference. We determine that no explicit construction of “adapted to” is necessary.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITADecided for patent owner
“Reviewing the arguments and evidence before us, we agree with Patent Owner that Petitioner’s initial construction, now abandoned, was too broad. Specifically, Petitioner’s abandoned construction did not account for the fact that the mixture comes from a particular origin (drilling of an oil well) and that the “some resistance to flow” aspect was also too broad given the particular materials involved. However, Patent Owner’s proposed construction, which would require a gravity test, is not supported by the ’062 patent. Instead, we effectively adopt a combination of Patent Owner’s proposed construction and Petitioner’s, for the reasons explained below.” slip op. at 12
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Term construed patent owner constructionDecided for patent owner
“3. “means for transporting” This term appears in claims 39, 40, 46, and 47. Petitioner proposes the term is a means-plus-function limitation having a function of “transporting [the] pressure vessel to a discharge station” and corresponding structure of “a ship, crane, and road vehicle.” Pet. ’263, 12 (citing Ex. 1004, Fig. 1, Fig. 6, 5:8–11, 5:59–63, 6:17–31). Patent Owner proposes a similar construction. PO Resp. ’263, 20 (using the term “boat” instead of “ship”). The constructions are effectively identical. Our Decision does not turn on which proposed construction we choose; we adopt the Patent Owner’s proposed construction. 4. “means for transferring” This term appears in claims 44 and 45. Petitioner proposes the term is a means-plus-function limitation having a function of “transferring the nonfree flowing drill cuttings from a second vessel to a third vessel” and corresponding structure of “a conduit, pipe, or flexible hose.” Pet. ’263, 12– 13 (citing Ex. 1004, Fig. 1, Fig. 6, 5:8–11, 5:59–63, 6:17–31). Patent Owner proposes a similar construction, but with more exemplary corresponding structures. PO Resp. ’263, 21 (also including “compressed gas[/air],” “a connector,” and “a hose”). Petitioner’s Reply does not discuss the construction of “means for transferring.” Our Decision does not turn on which proposed construction we choose; we adopt Patent Owner’s proposed construction because it is a slightly broader reasonable interpretation.” slip op. at 18
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner
“The original claims of the ’217 patent were rejected as anticipated by Curtis, which had pulsed-jet aerators in the cone of the pressure vessel. Ex. 2017, 232, 3:7–11, 6:59–64. After a telephone interview, during which the Examiner and Patent Owner “[d]iscussed [a] proposed amendment” (id. at 284), the Examiner proposed an Examiner’s Amendment adding that the conveyance gas was “the sole means for inducing movement [of the material]” (see, e.g., id. at 322). The Examiner set forth the scope of the “sole means” limitation: “heat addition, aerating action (i.e. chopping up of material, applying a screw conveyor, etc.), or the addition of a fluidizing agent are precluded. The conveyance gas is not a fluidizing agent.” Id. Amending the claims to include the “sole means” limitation, along with the Examiner’s accompanying explanation of its scope, are clearly and unmistakably the reasons for issuance of the ’217 patent. See Edwards Lifesciences LLC v. Cook Inc., 582 F.3d 1322, 1327 (Fed. Cir. 2009) (prosecution history “provides evidence of how the [PTO] and the inventor understood the patent” (quoting Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005) (en banc) (alteration in original)).” slip op. at 19
Patent outcomesUS 7,186,062 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 7,186,062 - Dynamic Air Inc. v. M-I Drilling Fluids UK Ltd.Some claims unpatentablePTAB · May 23, 2017 · IPR2016-00262 · APJ William V Saindon · IPR · Final written decision
Claims 1–10 and 12–49 are unpatentable as obvious; claim 11 is not unpatentable because the obviousness grounds did not establish its ISO-frame limitation.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“1. “adapted to” This term appears in claims 11, 17–19, and 30–49. Petitioner proposes “adapted to” means “capable of.” Pet. ’262, 10; Pet. ’263, 10. We agree, insofar as these limitations require structure to have qualities or features allowing it to meet the claim language. For example, claim 17 would require a vessel that actually can “withstand a pressure of about 4 bar to about 8 bar.” In other words, the “adapted to” language distinguishes from those structures that are not physically capable of meeting the limitation. Patent Owner argues that Petitioner’s construction is overly broad. PO Resp. ’262, 17–19; PO Resp. ’263, 16–19. Reviewing Patent Owner’s arguments, however, is not clear to us what Patent Owner disputes to be the effective difference. We determine that no explicit construction of “adapted to” is necessary.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Reviewing the arguments and evidence before us, we agree with Patent Owner that Petitioner’s initial construction, now abandoned, was too broad. Specifically, Petitioner’s abandoned construction did not account for the fact that the mixture comes from a particular origin (drilling of an oil well) and that the “some resistance to flow” aspect was also too broad given the particular materials involved. However, Patent Owner’s proposed construction, which would require a gravity test, is not supported by the ’062 patent. Instead, we effectively adopt a combination of Patent Owner’s proposed construction and Petitioner’s, for the reasons explained below. The ’062 patent describes the material conveyed therein in several different ways, but it is always referring to the same material. The labels that the ’062 patent gives to this material are: “thick heavy paste” (Ex. 1004, 1:29, 1:46–47, 1:64, 2:1, 3:11), “drill cuttings” (id. at 1:65, 2:12; see also id. at 1:45 (simply, “cuttings”)), “non-free flowing paste” (id. at 2:7–8, 11), and “thick and/or heavy paste or clay like material” (id. at 2:11–12). These labels are often equated to one another: “cuttings . . . in the form of a very thick heavy paste” (id. at 1:45–47), “thick heavy paste . . . e.g. drill cuttings” (id. at 1:64–65), “non-free flowing paste . . . e.g. oil rig drill cuttings” (id. at 2:11–12). As such, the ’062 patent considers screened drill cuttings to be a thick heavy paste as well as a non-free flowing paste and, thus, considers a thick heavy paste to be a non-free flowing paste. The ’062 patent does not discuss “non-free flowing drill cuttings,” or relate it to gravity. However, given that the ’062 patent considers “drill cuttings” to be “non-free flowing paste,” the “drill cuttings” are already “non-free flowing” according to the ’062 patent. Thus, when the claims add “non-free flowing” to “drill cuttings,” we find that they do not provide a further limitation, but rather just provide an extra description that a person of ordinary skill in the art would already understand is present if they were to read the specification. The ’062 patent is simply providing many ways to describe the same thing. There is no persuasive evidence that a person of ordinary skill in the art would understand “non-free flowing” to otherwise be a term of art. Indeed, Patent Owner’s expert, Dr. Brown, points to the exact same physical material samples to provide examples of “drill cuttings,” “non-free flowing paste,” and “non-free flowing drill cuttings.” Compare Ex. 2014 ¶ 53 with Ex. 2056 ¶ 53 with Ex. 2059 ¶ 53 with Ex. 2060 ¶ 53 (each using the same picture to describe the material).18” slip op. at 12
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Other
“3. “means for transporting” This term appears in claims 39, 40, 46, and 47. Petitioner proposes the term is a means-plus-function limitation having a function of “transporting [the] pressure vessel to a discharge station” and corresponding structure of “a ship, crane, and road vehicle.” Pet. ’263, 12 (citing Ex. 1004, Fig. 1, Fig. 6, 5:8–11, 5:59–63, 6:17–31). Patent Owner proposes a similar construction. PO Resp. ’263, 20 (using the term “boat” instead of “ship”). The constructions are effectively identical. Our Decision does not turn on which proposed construction we choose; we adopt the Patent Owner’s proposed construction. 4. “means for transferring” This term appears in claims 44 and 45. Petitioner proposes the term is a means-plus-function limitation having a function of “transferring the nonfree flowing drill cuttings from a second vessel to a third vessel” and corresponding structure of “a conduit, pipe, or flexible hose.” Pet. ’263, 12– 13 (citing Ex. 1004, Fig. 1, Fig. 6, 5:8–11, 5:59–63, 6:17–31). Patent Owner proposes a similar construction, but with more exemplary corresponding structures. PO Resp. ’263, 21 (also including “compressed gas[/air],” “a connector,” and “a hose”). Petitioner’s Reply does not discuss the construction of “means for transferring.” Our Decision does not turn on which proposed construction we choose; we adopt Patent Owner’s proposed construction because it is a slightly broader reasonable interpretation.” slip op. at 18
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner
“The original claims of the ’217 patent were rejected as anticipated by Curtis, which had pulsed-jet aerators in the cone of the pressure vessel. Ex. 2017, 232, 3:7–11, 6:59–64. After a telephone interview, during which the Examiner and Patent Owner “[d]iscussed [a] proposed amendment” (id. at 284), the Examiner proposed an Examiner’s Amendment adding that the conveyance gas was “the sole means for inducing movement [of the material]” (see, e.g., id. at 322). The Examiner set forth the scope of the “sole means” limitation: “heat addition, aerating action (i.e. chopping up of material, applying a screw conveyor, etc.), or the addition of a fluidizing agent are precluded. The conveyance gas is not a fluidizing agent.” Id. Amending the claims to include the “sole means” limitation, along with the Examiner’s accompanying explanation of its scope, are clearly and unmistakably the reasons for issuance of the ’217 patent. See Edwards Lifesciences LLC v. Cook Inc., 582 F.3d 1322, 1327 (Fed. Cir. 2009) (prosecution history “provides evidence of how the [PTO] and the inventor understood the patent” (quoting Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005) (en banc) (alteration in original)). The application that was issued as the ’062 patent is a direct continuation of the application that issued as the ’217 patent. The claims in the ’062 patent application did not have the “sole means” limitation required by the Examiner for allowance of the ’217 patent. Instead, the claims included the “without employing non-pneumatic means” limitation. The ’062 patent application received an obviousness-type double patenting rejection in the first Office Action, where the Examiner stated “[a]lthough the [claims in the ’217 patent and the present application] are not identical, they are not patently distinct from each other because the instant apparatus claim(s) are too close in scope with the patented method claim(s).” Ex. 2019, 629. Patent Owner did not traverse that rejection and filed a terminal disclaimer; the claims were thereafter allowed. Our understanding of the prosecution history of the ’062 patent is that the Examiner did not consider the “without employing” limitation to be meaningfully broader than the “sole means” limitation, or the Examiner would have re-instated the Curtis rejection. Instead, the Examiner stated the claims were “not patently distinct.” Ex. 2019, 629. In other words, the Examiner considered the claims in the ’062 patent to also have “precluded” “heat addition, aerating action (i.e. chopping up of material, applying a screw conveyor, etc.), or the addition of a fluidizing agent.” Ex. 2017, 322. Patent Owner acquiesced to the Examiner’s statement that the claims are not patentably distinct by not traversing the double patenting rejection and filing a terminal disclaimer to secure allowance of the claims. Ex. 2019, 651 (“please find enclosed a TERMINAL DISCLAIMER in response to the double patenting rejection”). See Biogen Idec, Inc. v. GlaxoSmithKline LLC, 713 F.3d 1090, 1097 n.6 (Fed. Cir. 2013) (disclaimer arose where the applicants “let[ ] stand an examiner’s narrow characterization of a claim term” and “adopt[ed] ... that characterization to overcome the examiner’s ... rejection”); TorPharm Inc. v. Ranbaxy Pharm., Inc., 336 F.3d 1322, 1330 (Fed.Cir.2003) (“Whether the patentee chooses to dispute the examiner’s view of matters is relevant to claim interpretation, for there a court may need to ascertain exactly what subject matter was actually examined and allowed by the PTO.”). Thus, the prosecution history of the ’062 patent simply continues the prosecution history of the ’217 patent, and leaves intact the Examiner’s and Patent Owner’s understanding regarding the scope of the amendment responsible for allowance. Accordingly, we construe the “without employing” limitation the same as the “sole means” limitation of the ’217 patent: heat addition, aerating action (i.e. chopping up of material, applying a screw conveyor, etc.), or the addition of a fluidizing agent are precluded. The conveyance gas is not a fluidizing agent.” slip op. at 19
Patent outcomesUS 7,186,062 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 7,186,062 - Dynamic Air Inc. v. M-I Drilling Fluids UK Ltd.All claims unpatentablePTAB · May 23, 2017 · IPR2016-00260 · APJ Richard E Rice · IPR · Final written decision
Claims 1–20 are unpatentable as obvious over Dietzen I, Dietzen II, Ciaffone, Laster, and Pneumatic Conveying.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We do not agree with Patent Owner that Petitioner’s definition of the person of ordinary skill in the art is unreasonably high, and we adopt Petitioner’s definition for purposes of our Final Written Decision. While Petitioner’s definition requires five years of design experience at the bachelor’s degree level of education, Patent Owner’s definition does not require any design experience at all. We agree with Petitioner that a person of ordinary skill in the art designs devices, and, thus, actively monitors the relevant technical literature, rather than is merely familiar with devices (e.g., an operator or a manufacturer), as proposed by Patent Owner. See Ex. 1032 ¶ 28; Ex. 1003, 2:59–61 (indicating that those skilled in the art would understand “that the critical cone angle will vary depending upon the material being conveyed”). Accordingly, we adopt Petitioner’s proposed level of ordinary skill.” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“1. Claim Preambles The preambles of independent claims 1 and 12 recite, respectively, “[a]n apparatus adapted for use on an oil well drilling rig for conveying nonfree flowing drill cuttings” and “[a] system for conveying non-free flowing oil well drill cuttings.” In the Institution Decision, we determined preliminarily that the preambles are limiting. Inst. Dec. 8. As neither party proposes any change to our interpretation, and our review of the full record developed at trial does not indicate that any change is necessary, we maintain that interpretation.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITADecided for patent owner
“We agree with aspects of both parties’ proposed claim constructions. We agree with Petitioner that the term “non-free flowing drill cuttings” refers to the resultant mixture of cuttings and drilling mud after screening (which we understand to include similar processing to separate drill cuttings from drilling mud, such as centrifuging). See Ex. 1003, 1:42–46, 62–64; 6:15–16; cf. Ex. 2053 ¶10; Ex. 2058 ¶ 86. We agree with Patent Owner that the source of the resultant mixture is the drilling of an oil well, and that the mixture includes earth (drill cuttings) and drilling fluid or oil.12 See Ex. 1003, 1:31–46; Ex. 2058 ¶¶ 85–88. We do not agree with Patent Owner’s proposal to construe “non-free flowing drill cuttings” as drill cuttings that do not generally flow freely by gravitational force. There is insufficient support in the Specification for that proposal. The Specification does not distinguish between different types of screened drill cuttings, for example, screened drill cuttings that generally flow freely by gravitational force and those that do not. While the Specification describes screened drill cuttings in various ways, it is always referring to the same material. For example, the Specification refers explicitly to “thick, heavy pastes which are normally difficult to move and handle” (Ex. 1003, 1:28–29), “[screened] cuttings . . . transported ashore in the form of a very thick heavy paste” (id. at 1:42–46), “thick heavy paste material (e.g., drill cuttings)” (id. at 1:63–64), “a thick heavy paste” (id. at 1:67), “a non-free flowing paste” (id. at 2:6–7), “[t]he non-free flowing 12 See Ex 1003, 1:35–38 (calling drilling fluid a special type of oil used as a lubricant”). paste may be a thick and/or heavy paste or clay like material, e.g. oil rig drill cuttings” (id. at 2:10–11), and “a thick heavy paste” (id. at 3:9–10). As such, the Specification characterizes screened drill cuttings as a thick heavy paste as well as a non-free flowing paste and, thus, considers a thick heavy paste to be a non-free flowing paste. We determine that the broadest reasonable interpretation consistent with the Specification of “non-free flowing drill cuttings” is “screened drill cuttings, i.e., screened material, generated by the drilling of an oil well, including a mixture of earth and drilling fluid or oil.”” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Conventional terms ('about', 'substantially', 'a'/'an', 'configured to')Term construed board ownDecided for patent owner
“We disagree. The disclosure in the Specification that the pressure vessel for conveying non-free flowing drill cuttings may be “similar to” the Clyde vessel indicates that the vessels have characteristics in common, but does not indicate clearly that the Clyde vessel could be used, without modification, to convey non-free flowing drill cuttings. For the reasons given above and in the Institution Decision, we maintain our interpretation that “adapted [for/to]” as used in the claims means “made [for/to]” or “designed [for/to].” See Inst. Dec. 9.” slip op. at 13
Patent outcomesUS 7,033,124 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,033,124 - Dynamic Air Inc. v. M-I Drilling Fluids UK Ltd.Some claims unpatentablePTAB · May 23, 2017 · IPR2016-00259 · APJ Richard E Rice · IPR · Final written decision
Claims 1, 2, and 4–9 are unpatentable as obvious over Dietzen I and II, Ciaffone, Laster, Pneumatic Conveying, and Toth; claim 3 was not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We do not agree with Patent Owner that Petitioner’s definition of the person of ordinary skill in the art is unreasonably high, and we adopt Petitioner’s definition for purposes of our Final Written Decision. While Petitioner’s definition requires five years of design experience at the bachelor’s degree level of education, Patent Owner’s definition does not require any design experience at all. We agree with Petitioner that a person of ordinary skill in the art designs devices, and, thus, actively monitors the relevant technical literature, rather than is merely familiar with devices (e.g., an operator or a manufacturer), as proposed by Patent Owner. See Ex. 1034 ¶ 28; Ex. 1005, 2:62–64 (indicating that those skilled in the art would understand “that the critical cone angle will vary depending upon the material being conveyed”). Accordingly, we adopt Petitioner’s proposed level of ordinary skill.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“We do not agree with Patent Owner’s proposal to construe “non-free flowing drill cuttings” as drill cuttings that do not generally flow freely by gravitational force. There is insufficient support in the Specification for that proposal. The Specification does not distinguish between different types of screened drill cuttings, for example, screened drill cuttings that generally flow freely by gravitational force and those that do not. While the Specification describes screened drill cuttings in various ways, it is always referring to the same material. For example, the Specification refers explicitly to “thick, heavy pastes which are normally difficult to move and 12 See Ex 1005, 1:37–39 (calling drilling fluid a special type of oil used as a lubricant.) handle” (Ex. 1005, 1:31–32), “[screened] cuttings . . . transported ashore in the form of a very thick heavy paste” (id. at 1:44–48), “thick heavy paste material (e.g., drill cuttings)” (id. at 1:66–67), “a thick heavy paste” (id. at 2:3), “a non-free flowing paste” (id. at 2:9–10), “[t]he non-free flowing paste may be a thick and/or heavy paste or clay like material, e.g. oil rig drill cuttings” (id. at 2:13–14), and “a thick heavy paste” (id. at 3:10–11). As such, the Specification characterizes screened drill cuttings as a thick heavy paste as well as a non-free flowing paste and, thus, considers a thick heavy paste to be a non-free flowing paste. We determine that the broadest reasonable interpretation consistent with the Specification of “non-free flowing drill cuttings” is “screened drill cuttings, i.e., screened material, generated by the drilling of an oil well, including a mixture of earth and drilling fluid or oil.”” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Patent Owner’s arguments do not respond adequately to Petitioner’s persuasive obviousness rationale that a POSITA would have substituted a positive-pressure conveyance system in place of the negative-pressure conveyance system of Dietzen I and II because negative pressure systems are generally limited to shorter distances and lower material volumes than positive systems. Further, Patent Owner’s arguments do not address sufficiently Ciaffone’s teaching that a positive-pressure vessel with a conical bottom section can be used to convey materials without the need for bins, hoppers, hydraulic rams, screw feeders, conveyor belts, and the like. See Ex. 1006, 1:70–2:6. As explained by Petitioner, Dietzen II uses an auger to augment use of negative pressure for moving settled materials horizontally from the bottom of a vessel. Pet. Reply 15; Ex. 2021 ¶¶ 154:6–155:5. In contrast with Dietzen II’s relatively low-pressure vacuum system, a positive- pressure system such as taught by Ciaffone, with an operating pressure of up to 6.89 bar, blows materials out of the conical bottom section of the vessel. See supra Section II.C.1.b. Patent Owner further argues that a “POSITA would have discounted positive pressure given th[at] non-free flowing drill cuttings cannot be fragmented.” PO Resp. 22 (citing Ex. 2057 ¶¶ 44, 150). We find this argument unpersuasive because Ciaffone’s blow vessel does not require fragmentation of the material to be conveyed. Rather, Ciaffone teaches compaction of the material in a tightly knit unit that can be acted upon by the full force of the pressurized air, in contrast with dispersion of the waste such that air is diffused among the separated particles resulting in diminution in the applied air pressure conveying the total charge. Ex. 1006, 3:11–19. Further, Pneumatic Conveying teaches that “small capacity blow vessels are designed on the basis of conveying material as a series of discrete plugs rather than as a continuous stream.” Ex. 1009, 282, Fig. 7.32. Pneumatic Conveying further explains: “As such, the capacity of the vessel is selected such that on discharge a plug is formed which is just long enough to prevent blocking [of the conveying line].” Id. Pneumatic Conveying discloses that “[i]f the material to be conveyed is unusually cohesive, a plug forming system will yield good results” and, “[a]s the plugs are relatively impermeable, they remain separated even over long conveying distances.” Id. at 346. Based on these teachings, a POSITA would not have understood that it was necessary to fragment non-free flowing drill cuttings, contrary to Patent Owner’s argument. For the reasons given, Petitioner has provided a sufficient reason with rational underpinning for combining Dietzen I and II, Ciaffone, Laster, and Pneumatic Conveying. See KSR, 550 U.S. at 418 (“‘[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’”) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).” slip op. at 23
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Pneumatic Conveying does not provide information on “anything close to ‘non-free flowing [oil well drill/drill] cuttings’ or a ‘thick, heavy paste,’” and, thus, a POSITA “would not look to designs presented in Pneumatic Conveying.” Ex. 2057 ¶ 185. We give little weight to this testimony because, as discussed above, we credit Dr. Carson’s testimony that Pneumatic Conveying identifies hundreds of materials, including paste and cohesive material. See supra Section II.C.1.e(2). We also credit Dr. Carson’s testimony that Pneumatic Conveying explains that pressure vessels increasingly were being used to convey materials with “bad” flow properties, and that “Pneumatic Conveying would have also shown those of ordinary skill in the art that pneumatic conveying with a positive pressure system would be an effective way to transport non-free flowing drill cuttings, including in the form of a paste or sludge.” Ex. 1034 ¶ 124. Dr. Brown also testifies that the information in Pneumatic Conveying with respect to mass flow concerns granular solids. Ex. 2057 ¶ 185 (citing Ex. 1009, 411). He further testifies that because “the flow behavior of nonfree flowing [oil well drill/drill] cuttings is distinct from that of granular solids . . . a person of ordinary skill in the art would gain no insight in designing a vessel for paste to produce mass flow from a vessel designed to contain granular solids.” Id. We give little weight to this testimony because Dr. Brown does not address all of the information in Pneumatic Conveying that is relevant to mass flow, as discussed further below. In contrast with Dr. Brown, Dr. Carson testifies: “As explained in Pneumatic Conveying, those of ordinary skill in the art knew that the cone angle is an important variable to adjust in order to achieve mass flow.” Ex. 1034 ¶ 144 (citing Ex. 1009, 280–282, 410–420; Ex. 1046, 68–74, 147– 151). Consistent with Dr. Carson’s testimony, the ’018 Patent discloses that “[i]t is well known that the critical cone angle [to achieve mass flow] will vary depending upon the material being conveyed [and] as such would be well understood by those skilled in the art.” Ex. 1005, 2:61–63. We credit the testimony of Dr. Carson over the conflicting testimony of Dr. Brown because Dr. Carson’s testimony addresses the full Pneumatic Conveying disclosure, and is consistent with that disclosure, while Dr. Brown’s testimony does not address the full Pneumatic Conveying disclosure, and is not completely consistent with that disclosure. For example, under the subheading “Factors influencing blow vessel performance,” Pneumatic Conveying teaches that “[t]he increased use of blow vessels for feeding materials with ‘bad’ flow properties necessitates the selection of a suitable cone angle.” Ex. 1009, 279. Pneumatic Conveying further explains that “[v]essels with incorrectly designed cone angles will result in either ‘ratholing’ or ‘bridging’ problems.” Id. at 279, Fig. 7.30. These teachings of Pneumatic Conveying are not limited to granular solids, contrary to Dr. Brown’s testimony.” slip op. at 32
Patent outcomesUS 7,544,018 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,544,018
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.