- Schlumberger Technology Corporation v. Dynaenergetics Europe GmbHInstitution deniedPTAB · Dec 14, 2021 · PGR2021-00089 · APJ Frances L Ippolito · PGR · Institution
The Board denied institution on all claims because the petition did not show a reasonable likelihood that any challenged claim was unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“We are authorized to institute a post-grant review where a petition demonstrates that it is more likely than not that at least one challenged patent claim is unpatentable. See 35 U.S.C. § 324. We are never compelled to institute a review, however, because institution is discretionary. Id.; cf. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (explaining that under § 314(a), “the PTO is permitted, but never compelled, to institute an IPR proceeding”). As in an IPR proceeding, we deny post-grant review, for example, where a petition fails to identify “with particularity” the challenges or evidence supporting them. Cf. Harmonic, 815 F.3d at 1363; 35 U.S.C. § 322(a)(3); Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (“It is of the utmost importance that petitioners in IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’” (quoting 35 U.S.C. § 312(a)(3)). For the reasons discussed below, we deny the institution of post-grant review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends a person of ordinary skill in the art (“POSITA”) “would be expected to have at least a Bachelor’s of Science degree in Mechanical or Electrical Engineering and at least two years of industry experience related to assembling, operating, and/or designing perforating tools.” Pet. 10 (citing Parrott Decl. ¶ 28). Patent Owner “believes that Petitioner’s definition suggests that a field technician who merely assembles guns could be a POSITA, which is incorrect,” and instead proposes “a POSITA would be expected to have a Bachelor’s of Science degree in Mechanical or Electrical Engineering and at least two (2) years of industry experience related to designing perforating gun systems.” Prelim. Resp. 35–36 (citing Ex. 2001 ¶ 52). For the purposes of institution, we do not see a material difference between the parties’ proposed definitions. Nonetheless, because Petitioner’s proposed definition of the level of ordinary skill in the art appears consistent with the record, including the prior art, we adopt the definition of the level of ordinary skill in the art proposed by Petitioner for purposes of this Decision. See GPAC Inc., 57 F.3d at 1579.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“D. Claim Construction We interpret a claim “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.200(b) (2020). This standard requires that we construe claims “in accordance with the ordinary and customary meaning of such claim[s] as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id.; see also Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Only those terms that are in controversy need be construed, and 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); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an AIA trial proceeding). Patent Owner proposes constructions for “shaped charge receptacle” and “retention mechanism extending from a portion of the body.” Prelim. Resp. 36–38; see also PO Sur-reply 1–5. In its Reply, Petitioner disputes Patent Owner’s proposed constructions. Pet. Reply 2–3. For purposes of this Decision, we determine that no claim term requires explicit construction. See Vivid Techs., 200 F.3d at 803 (construing explicitly only those claim terms in controversy and only to the extent necessary to resolve the controversy).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“In addition, we determine that Petitioner has not sufficiently explained its alternative argument based on the “simple substitution of the circular openings (for inserting the shaped charges) in Vann for the circular openings with tabs in Von Kaenel.” Pet. 90 (citing Parrott Decl. ¶ 485). As an initial matter, Petitioner’s proposed substitution lacks sufficient clarity because it remains unclear which of Vann’s structures remain in the resulting combination. By emphasizing substitution of the “circular openings” alone in Vann, Petitioner suggests that Vann’s tabs 62 remain without explaining why the tabs are necessary if Von Kaenel’s tabs retain the shaped charges. See id. As discussed, Vann requires that the plurality of charge holders are placed in tandem and jointly cooperate together to make up a charge carrier 48. Ex. 1009, 5:50–56. To do so, tabs 62 formed by extended lateral edges 56, 58 are aligned in an overhanging relationship relative to the central lateral face 70 of the two adjacent charge holders. Id. at 6:61–64, Fig. 5. If the proposed combination employs Von Kaenel’s tabs to retain the charges, preserving the overhanging relationship of Vann’s tabs 62 to retain the charges would appear superfluous, and if Petitioner proposes retaining Vann’s tabs 62 but removing the overhanging relationship, Petitioner does not describe such a structure. In either case, a substitution of Vann’s circular openings alone while Vann’s tabs 62 remain in the resulting combination lacks adequate specificity and support. For completeness, we assess Petitioner’s argument based on the assumption that Petitioner proposes removing Vann’s tabs 62 entirely from the proposed combination. Per this theory, a POSITA would have simply substituted Von Kaenel’s side locking tabs 610 for Vann’s tabs 62 because a POSITA would have recognized the advantages of having the retention mechanisms be a part of the body in order reduce the number of tools and assembly required, to allow for differing offsets, as well as to simplify manufacturing, as discussed in each of Vann, Brooks, and Von Kaenel. Pet. 89–90 (emphasis added) (citing Parrott Decl. ¶ 484; Ex. 1013, Abstract, 2:60–3:16, 5:20–41, 8:41–58; Ex. 1009, 1:18–21, 2:22–29, 1:66–67, 1:41– 43, 3:63–68, 4:14–24; Ex. 1010, 9:48–53, 1:52–64). However, Petitioner has not explained sufficiently how this substitution would “simplify manufacturing” for Vann’s specific stacked formation. Indeed, Vann’s charge carrier is formed by a plurality of charge holders that jointly cooperate in tandem, which includes the cooperation of extended lateral edges that overhang the central lateral face of adjacent charge holders. See Ex. 1009, 6:61–64; Fig. 5. Substitution of Vann’s tabs 62 with Von Kaenel’s side locking tabs 610 would affect Vann’s tandem construction if tabs 62 are removed. See Pet. 80–95. More importantly, Petitioner has failed to explain adequately why a POSITA would have sought to make this combination to simplify manufacturing or reduce assembly given Vann’s specific charge carrier design, which is dependent on the overhanging relationship between separate, stacked charge holders. Id. Further, Mr. Parrott’s testimony is not helpful on this point. In paragraph 485 (cited by Petitioner), Mr. Parrott states that Von Kaenel’s tabs (retention mechanisms) would have been applied with ease to Vann’s perforating gun apparatus, which would have yielded predictable results. A POSITA would have recognized the combination as a simple substitution of the circular openings for inserting the shaped charges in Vann for the circular openings with tabs in Von Kaenel, and a POSITA would have had a reasonable expectation of success. Parrott Decl. ¶ 485 (emphases added). Like the Petition, these statements by Mr. Parrott are conclusory and do not explain the basis for his conclusions. See id. Looking elsewhere, paragraph 484 mirrors statements and citations in the Petition, which as discussed, are insufficient. Id. ¶ 484. And although paragraph 483 articulates the advantages of using “Von Kaenel’s superior teachings in order to better achieve the goal of reliably securing and positioning the shaped charges,” Mr. Parrott neglects to explain the proposed substitution in the context of Vann’s specific charge carrier design that relies on the overhanging edges/tabs of the charge holders for the in tandem assembly and construction. Id. ¶ 483 (citing Ex. 1013, Fig. 6B, 8:59–67). The Supreme Court has made clear that we apply “an expansive and 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. Reaching this conclusion, however, requires more than a mere showing that the prior art includes separate references covering each separate limitation in a claim under examination. Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011). Rather, obviousness requires the additional showing 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. Here, Petitioner has failed to make the threshold showing for the” slip op. at 21
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 10,844,696 - Intex Recreation Corp. v. Team Worldwide Corp.All claims unpatentablePTAB · Apr 29, 2020 · PGR2019-00015 · APJ James J Mayberry · PGR · Final written decision
Claims 1–5 are unpatentable as indefinite under § 112(f)/112(b) and for lack of written description under § 112(a); the prior-art grounds did not show them unpatentable.
RulingsFinal written decision- Skill levelSkill level board ownOther
“We find that the level of ordinary skill in the art reflects aspects of each party’s definition. First, we agree with Petitioner’s characterization that the breadth of experience is in the field of inflatable product pump design. The field of “pneumatic pumps” is broad and encompasses pumps with operating parameters outside the needs identified in the ’979 patent and prior art of record. See e.g., Ex. 1004, 1:24–32 (identifying the types of inflatable objects as having applications “in hospitals for patients, outdoors for recreations and indoors for comfort”); Ex. 1006, 6:54–65 (identifying a low pressure blower and a low volume supplemental pump); Ex. 1007 (involving a pump for supplying breathing air for a continuous positive airway pressure device); Ex. 1010, 1:19–22, 3:21–27 (disclosing a low output circulation pump for “mattresses, chairs, couches and other patient support devices”); Ex. 1013, 11:34–37 (“The blower provides an air flow of 50 cubic feet per minute, without back pressure, and is capable of generating a maximum pressure of about 30 inches of water.”); Ex. 1014, 15:60–16:15 (disclosing gauge air pressures in the range of 0.16 to 0.65 pounds per square inch for an air bed); Ex. 1017, 10:62–64 (“The blower preferably is a 24 v.d.c. model producing 29.29 in Hg at 70 degrees F.”). Second, we agree with Patent Owner that the level of ordinary skill in the art encompasses a person with an advanced engineering degree and broader experience, with inflatable product pumps. Accordingly, we find that a person having of ordinary skill in the art at the time of the invention would have had: (1) a bachelor’s degree in mechanical engineering or an equivalent field, and two years of experience in inflatable product pump design, or an advanced degree in mechanical engineering or an equivalent field and two years in teaching, research, or experience relating to pneumatic pumps; or (2) an associate’s degree in mechanical engineering, or an equivalent field, and four years of practical experience in inflatable product pump design. Also, our claim construction and patentability analyses presented below would reach the same findings and determinations under either party’s definition of the level of ordinary skill in the art. Cf. Ex. 2020 ¶ 89 (“My opinions expressed in this declaration remain the same under either definition of a POSA.”).” slip op. at 15
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesTerm construed petitioner constructionDecided for petitioner
“The Federal Circuit emphasizes “that the essential inquiry is not merely the presence or absence of the word ‘means’ but whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.” Williamson, 792 F.3d at 1348. To overcome the presumption that § 112(f) does not apply, the burden is on Petitioner to “demonstrate[] that the claim term fails to ‘recite sufficiently definite structure’ or else recites ‘function without reciting sufficient structure for performing that function.” Id. at 1349; see Advanced Ground Info. Sys., Inc. v. Life360, Inc., 830 F.3d 1341, 1347 (Fed. Cir. 2016) (“In determining whether this presumption has been rebutted, the challenger must establish by a preponderance of the evidence that the claims are to be governed by § 112[(f)].”); see also Diebold Nixdorf, Inc. v. Int’l Trade Comm’n, 899 F.3d 1291, 1299–1300 (Fed. Cir. 2018) (“[I]n appropriate cases, a party advocating that a claim limitation that does not recite the word ‘means’ is subject to § 112[(f)] can overcome the presumption against its application solely by reference to evidence intrinsic to the patent.”). preponderance of the evidence, that “pressure controlling assembly” is a means-plus-function term. Patent Owner, citing Zeroclick, LLC v. Apple Inc., 891 F.3d 1003 (Fed. Cir. 2018), argues that Petitioner has not rebutted the presumption that the term “pressure controlling assembly” does not invoke § 112(f) by showing that the term is a nonce word. Sur-reply 4–5. As we detail below, we do not agree. We determine that Petitioner has met its burden in demonstrating that the term “pressure controlling assembly” is a means-plus-function term, invoking the requirements of 35 U.S.C. § 112(f). We determine that the intrinsic evidence on which Petitioner relies is sufficient to overcome the presumption that the lack of the word “means” indicates that the term does not invoke § 112(f). See Diebold Nixdorf, Inc., 899 F.3d at 1299–1300.9 In our analysis below, we review the intrinsic evidence, extrinsic evidence (and, particularly whether the extrinsic evidence would support a finding that the term is used in common parlance or by persons of skill in the pertinent art to designate structure, including either a particular structure or a class of structures), and relevant case law.” slip op. at 18
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed board ownDecided for petitioner
“We find that the Specification fails to disclose corresponding structure for all the recited functions of the “pressure controlling assembly.” “Where there are multiple claimed functions, as we have here, the patentee must disclose adequate corresponding structure to perform all of the claimed 18 This image differs from Figure 1 of the ’979 patent, which does not include reference numeral 4 or its associated lead line. Compare Ex. 1004, Fig. 1, with Ex. 1003, 17. of the recited functions, as it is dispositive to our finding. Claim 1 requires, in part, the pressure controlling assembly functions to “automatically activate the supplemental air pressure providing device.” Ex. 1004, 5:54–56. Patent Owner takes the position that item 121 and item 122 combine to form the pressure controlling assembly. PO Resp. 25 (“A POSA would understand the region of [Figure] 2a denoted by 121/122 as a disclosed pressure controlling assembly.”). Patent Owner then includes rod 12 as part of item 121. See PO Resp. 24 (showing rod 12 and item 121 in red); id. at 25 (indicating a “rod (also red)” associated with item 121). Patent Owner characterizes item 121 as a “flexible diaphragm” and argues that “flexible diaphragm 121 (red) of [Figure] 2a of the ’979 [p]atent acts as a pressure sensor. Its associated rod (also red) will slide up and down based on the pressure of the inflatable (blue) versus the ambient pressure (green) and force applied to it by the adjusting input (e.g., spring 11 of [Figure] 2a).” PO Resp. 25 (referencing Ex. 2020 ¶ 41). Significant to our analysis, Patent Owner argues, relying on Dr. Stevick’s verbatim testimony, that the movement of the rod is sensed by limit switch 13, which turns the supplemental air pressure providing device on and off. See PO Resp. 25 (referencing Ex. 2020 ¶ 41).” slip op. at 56
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateUnpatentable
“For similar reasons that we found that the ’979 patent did not disclose corresponding structure for the means-plus-function limitation “pressure controlling assembly,” we find that the ’847 application fails to provide written description support for the “pressure controlling assembly.” Specifically, we find that the ’847 application fails to demonstrate that the inventors were in possession of a “pressure controlling assembly” that “automatically activate[s] the supplemental air pressure providing device” as required by claim 1. We do not agree with Patent Owner that the cited sections of the ’847 application disclose to a person having ordinary skill in the art that automatically operate the supplemental air pressure providing device. The ’847 application itself is silent as to any limit switch operating the supplemental air pressure providing device. See, e.g., PO Resp. 34–35 (presenting two sections of the ’847 application that allegedly support Patent Owner’s position, where the text of the application never mentions limit switches). We also do not credit Dr. Stevick’s testimony in this regard. Again, Dr. Stevick’s declaration essentially mimics the Patent Owner Response, down to the bolding of language from the ’847 application. Compare Ex. 2020 ¶¶ 53–54, with PO Resp. 34–35. Also, Dr. Stevick’s declaration states that a person having ordinary skill in the art would have understood that a “pressure controlling assembly provides limit switching to automatically turn the supplemental air pressure providing device on when the pressure of the inflatable object is at a lower limit and to turn it off when the pressure is at an upper limit to maintain an air pressure of the inflatable object.” Ex. 2020 ¶ 54. The sole basis for this statement is a reference to Exhibit 1003, Figures 1 and 2a, without any further explanation. Such a conclusory opinion that is not adequately supported is entitled to little weight. See 37 C.F.R. § 42.65(a). We also find Patent Owner’s post hoc reliance on the CN ’302 application as confirmation of its position inapposite. As an initial point, there is no dispute that the CN ’302 application cannot be directly relied upon for written description support of the “pressure controlling assembly,” with respect to any disclosure in that application that does not appear in the ’847 application.19 Patent Owner’s use of the information in the application 19 See supra note 8.” slip op. at 63
Patent outcomesUS 9,989,979 unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites PhillipsPatents in suitUS 9,989,979 - Motionpoint Corporation v. Transperfect Global, Inc.All claims unpatentablePTAB · Jul 15, 2015 · CBM2014-00060 · APJ Bart A Gerstenblith · CBM · Final written decision
Claims 1–28 are unpatentable for lack of adequate written description under § 112, first paragraph.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“that “hyperlink” is a well-understood term that the ’022 patent uses in accordance with its ordinary meaning. As explained above, the Microsoft Computer User’s Dictionary makes clear that a hyperlink includes a connection to another element or document. Patent Owner points to no persuasive evidence that the ’022 patent describes a hyperlink as separate from this connection such that the connection can be changed with the hyperlink remaining the same. Indeed, the ’022 patent describes “replac[ing] all links in the translated web page 7 with links that point to the translation manager 4” as part of the translation process. Ex. 1001, 3:37–38. Thus, as described in the patent, changing the connection to point to the translation manager requires a new link. This is consistent with the ordinary meaning of a hyperlink as including a specific connection from one document to another element or document. Our preliminary construction of “hyperlink” included “a link or connection” but did not include a recitation of the element or document linked. To resolve the parties’ dispute, consistent with the ordinary meaning and the specification, we conclude, on the full record before us, that one of ordinary skill in the art at the time of the invention would have understood “hyperlink” to mean “a connection between an element in a hypertext document, such as a word, phrase, symbol, or image, and a different element in the document, another hypertext document, a file, or a script.”” slip op. at 10
- ExcludeMotion to exclude, deniedDenied
“First, the inter partes reexamination of the ’022 patent is relevant to our consideration of the claim construction issues presented here because claim construction was at issue in the reexamination. Second, we see no risk of undue prejudice that would outweigh the probative value of the documents and evidence submitted in the reexamination. Of note, is that this proceeding is not a jury trial and, thus, the risk of prejudice in this forum is less than what may otherwise exist before a jury. Third, we agree with Petitioner that Exhibit 1013 is not hearsay at least under Federal Rule of Evidence 801(d)(2)(B) because the testimony in Dr. Nakhimovsky’s Declaration was submitted by, and on behalf of, Patent Owner to the Patent Office, thus evidencing that Patent Owner manifested a belief that the statements contained therein were true. Accordingly, Patent Owner’s Motion to Exclude as applied to Exhibit 1013 is denied.” slip op. at 22
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateUnpatentable
“Patent Owner’s first argument is contrary to our constructions of the term “hyperlink” and the phrase “said hyperlink.” As reflected in our construction, “said hyperlink” in each of independent claims 1, 17, and 26, refers back to the original recitation of “one or more hyperlinks” in the original (untranslated) electronic communication. The portion of the specification relied upon by Patent Owner does not disclose providing translation of said further electronic communications when the original one or more hyperlink is activated. Rather, this disclosure indicates that the translation manager may replace all of the links (i.e., hyperlinks) in the translated web page with links that point to the translation manager. These replaced links are in the translated electronic communication (e.g., web page 7), and not in the original untranslated electronic communication (e.g., web page 2). Thus, this disclosure does not reasonably convey to one of ordinary skill in the art that the inventors had possession of a translation manager that provides translation of further electronic communications when the one or more hyperlinks in the original untranslated electronic communication is activated (i.e., one or more hyperlinks with unmodified destination addresses). See Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc).” slip op. at 25
- Disclosure Requirements (§112) › Definiteness (Nautilus)Not reached
“E. Indefiniteness of Claims 23 and 25–28 Under 35 U.S.C. § 112, Second Paragraph Our determination that each challenged claim is unpatentable for lack of an adequate written description renders it unnecessary to reach Petitioner’s contentions that claims 23 and 25–28 of the ’022 patent are indefinite.” slip op. at 31
Patent outcomesUS 6,857,022 unpatentableClaim construction§ 112 disclosurecites PhillipsPatents in suitUS 6,857,022
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.