- Tanklogix, LLC v. Sitepro, Inc.Institution deniedPTAB · Oct 10, 2025 · IPR2025-00653 · APJ Bart A Gerstenblith · IPR · Institution
The Board denied institution on all claims because the Petition did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] response . . . 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) (2024). For the reasons given below, on this record Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of any of the Challenged Claims. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“The parties’ proposed levels of ordinary skill in the art are similar, although Patent Owner proposes two years of experience along with a bachelor’s degree whereas Petitioner proposes “significant” experience. Patent Owner also proposes an alternative with more extensive experience in lieu of a bachelor’s degree. Although we find Petitioner’s proposed qualifications acceptable, we adopt Patent Owner’s proposed qualifications for the purposes of this Decision because they offer a wider range of qualifications that nonetheless comport with the level of ordinary skill necessary to understand and implement the teachings of the ’504 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Our analysis and findings herein, however, do not turn on any differences in the parties’ proposed qualifications.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Additionally, only terms that are in controversy need to be construed, and these need be construed only to the extent necessary to resolve the controversy. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only 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)). The parties assert that each claim term should be construed in accordance with its plain and ordinary meaning. Pet. 9; Prelim. Resp. 4 (citing Ex. 2009 ¶ 72); see Ex. 1002 ¶ 22 (opining the same). And, in the respective claim construction sections of their briefs, the parties do not propose any claim terms for express construction. We agree with the parties that no claim terms require express construction to resolve the controversy before us. See Realtime Data, 912 F.3d at 1375.” slip op. at 13
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Ex. 1002 ¶ 47. As reflected above, Dr. Wooley’s testimony as to element [1.2] does not even assert that Cardamone discloses a tank, let alone one or more sensors disposed at a tank as recited in element [1.2]. Thus, Dr. Wooley’s testimony does not support Petitioner’s argument on this issue.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,726,504 - Tanklogix, LLC v. Sitepro, Inc.Institution deniedPTAB · Oct 10, 2025 · IPR2025-00652 · APJ Bart A Gerstenblith · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–23 and 25–30 were unpatentable over the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“presented in the petition . . . and any [preliminary] response . . . 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) (2024). For the reasons given below, on this record Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of any of the Challenged Claims. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“The parties’ proposed levels of ordinary skill in the art are similar, although Patent Owner proposes two years of experience along with a bachelor’s degree whereas Petitioner proposes “significant” experience. Patent Owner also proposes an alternative with more extensive experience in lieu of a bachelor’s degree. Although we find Petitioner’s proposed qualifications acceptable, we adopt Patent Owner’s proposed qualifications for the purposes of this Decision because they offer a wider range of qualifications that nonetheless comport with the level of ordinary skill necessary to understand and implement the teachings of the ’403 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Our analysis and findings herein, however, do not turn on any differences in the parties’ proposed qualifications.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The parties assert that each claim term should be construed in accordance with its plain and ordinary meaning. Pet. 10; Prelim. Resp. 4 (citing Ex. 2009 ¶ 73); see Ex. 1002 ¶ 22 (opining the same). And, in the respective claim construction sections of their briefs, the parties do not propose any claim terms for express construction. We agree with the parties that no claim terms require express construction to resolve the controversy before us. See Realtime Data, 912 F.3d at 1375.” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner that the Petition fails to demonstrate that Kahn discloses element [1.2] because the evidence cited does not disclose a “first computer system being configured to provide remote control of the first pump or first valve” (i.e., a fluid-handling device). Kahn is directed to providing access to fluid sensing data and analyzing and providing visual information on that data, but Petitioner has not identified any disclosure of the capability to remotely control fluid-handling devices. See, e.g., Ex. 1005, code (54), 1:27–36, 2:50–3:2. More specifically, Kahn’s disclosures that Petitioner relies on for allegedly teaching remote control are deficient. We discuss each. First, Petitioner points to the following, “[f]or instance, as illustrated in FIG. 1C, a fluid control device such as a valve 15A is located on the input side of a sen[s]or unit 110.” Ex. 1005, 8:19–21, cited in Pet. 13. This portion of Kahn, however, does not disclose remote control. Second, Petitioner cites to the following: Finally, or in addition to, the communication unit 112B can include on-site alerts such as optical (indicator lights), audible alerts (e.g., alarm sounds), tactile (e.g., vibration of the unit) or can be interfaced to an appropriate control valve for simply shutting off the supply of fluid upon the detection of emergency events, for instance. Pet. 13 (citing Ex. 1005, 10:62–67). We agree with Patent Owner that this portion of Kahn teaches on-site alerts and local control of the fluid-handling device. See Prelim. Resp. 7. This portion of Kahn does not disclose remote control.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,294,403 - Tanklogix, LLC v. SiteproInstitution deniedPTAB · Oct 10, 2025 · IPR2025-00650 · APJ Sheila F Mcshane · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 18–32 and 34 were unpatentable over Kahn or Kahn and Gutierrez.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“information presented in the petition . . . and any response . . . 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) (2024). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has not established a reasonable likelihood of prevailing with respect to the unpatentability of at least one claim of the ’871 patent. Accordingly, for the reasons that follow, we decline to institute an inter partes review of claims 18–32 and 34 of the ’871 patent.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“The respective proposed levels of qualifications for a person of ordinary skill in the art are similar, with Patent Owner proposing two years of experience compared to Petitioner proposing significant experience with remotely controlling fluid-handling devices, like SCADA systems. Patent Owner also proposes more extensive experience in lieu of educational experience. While we find Petitioner’s proposed qualifications to be acceptable, we adopt Patent Owner’s proposed qualifications for the purposes of this Decision because they offer a wider range of qualifications that nonetheless comport with the level of skill necessary to understand and implement the teachings of the ’871 patent and the asserted prior art. Our analysis and findings herein, however, do not turn on any differences in the qualifications adopted.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We determine that we need not expressly construe any claim terms to resolve the parties’ disputes on the current record. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only 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 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“actuators and the remote control of fluid handling devices, including the receipt with the user-interface module of “a user command to actuate an actuator via a presented control interface” (limitation [18.7]) and “account authorized to send commands to remotely control fluid handling devices” (limitation [18.11]). We agree with Patent Owner that the Petition fails to demonstrate that Kahn discloses or teaches these limitations because the evidence does not provide support that there is remote control of fluid handling devices or the use of a user command on a control interface to send a command to a fluid handling device, for instance. Kahn is directed to providing access to fluid sensing data and analyzing and providing visual information on that data, but we do not discern that it teaches or discloses the capability to remotely control fluid handling devices. See, e.g., Ex. 1005, code (54), 1:27–36, 2:50–3:2. More specifically, the Kahn disclosures that Petitioner repeatedly relies upon for allegedly teaching this control are deficient. See Ex. 1005, 10:62–67, 14:35– 15:2, 15:62–16:32; see also Pet. 12–14, 16–18. Kahn discloses that “the communication unit 112B can include on-site alerts such as optical (indicator lights), audible alerts (e.g., alarm sounds), tactile (e.g., vibration of the unit) or can be interfaced to an appropriate control valve for simply shutting off the supply of fluid upon the detection of emergency events, for instance.” Ex. 1005, 10:62–67. Communication unit 112B is part of the local “sensor unit,” wherein the detection conditions determined by the sensor are communicated to remote devices by communication unit 112B. See id. at 3:31–33, 5:62–6:2, 6:27–35, 7:33–37, 13:7–12, Figs. 1A–1C. Kahn discloses that the sensor units, which include communication units 112B, can be located near shut-off valves and can communicate with distant locations. See id. at 11:1–13. There are no disclosures, however, in the above passages that there is remote control of fluid handling devices, that there is a user command on a control interface that actuates an actuator, or that there is a command sent to the facility actuators via a network connection, as required in limitations [18.5]–[18.7] and [18.9]–[18.12], respectively. Rather, the disclosure indicates that the communication unit 112B includes on-site alerts and that the local (non-remote) communication unit 112B can be interfaced with the control valve.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,488,871 - Comcast Cable Communications, LLC v. Entropic Communications, LLCAll claims unpatentablePTAB · Oct 6, 2025 · IPR2024-00432 · APJ Frederick C Laney · IPR · Final written decision
Claims 1–20 are unpatentable: claims 1–3, 8, 9, 11–13, 18, and 19 as anticipated or obvious over Zhang; the remaining claims as obvious over the listed combinations.
RulingsFinal written decision- Expert testimonyOther
“and digital selector 240 disclosed by Zhang is “digital circuitry,” which is configured to receive a plurality of frequencies comprising a plurality of desired/undesired television channels from ADC 220 and to output the desired television channels to demodulators 250 as a digital datastream. Tr. 71:14–17 (PO Counsel: “There is no dispute that in both Zhang and the patent, an RF signal that has both desired and undesired channel comes in and what’s sent to demodulators are desired channels. Nobody is disputing that.”), 134:3–5 (PO Counsel: “The issue is not whether the black box 230- plus-240 is the digital circuitry. It is. The issue is not whether or not that overall circuitry selects channels. At some level, it does.”). In other words, Zhang teaches digital circuitry that is (1) capable of receiving a plurality of frequencies including desired/undesired television channels and (2) capable of distinguishing between the desired/undesired channels to output the desired television channels to a demodulator. We find these uncontested facts to be highly probative of Petitioner’s contention that, to a skilled artisan, Zhang suggests that its digital circuitry is capable of selecting the desired television channels from a digitized plurality of frequencies that include both desired/undesired television channels. This is because Zhang’s digital circuitry is able to take what is input originally as a digitized plurality of frequencies having both desired/undesired television channels and, using those frequencies, pick out the desired television channels that are subsequently output to a demodulator. Zhang teaches that “because only the selected channels are later demodulated” the disclosed digital circuitry is “much faster than traditional analog channel switching through RF tuners” and it “dissipates less heat because fewer resources are required when demodulating only the selected RF channels.” Ex. 1013 ¶ 28 (emphasis added).” slip op. at 22
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“ordinary and customary meaning to a POSITA.” Pet. 21. Although Petitioner proposes corresponding structure for the term “digital circuitry” recited in claim 1, it does so only “[t]o the extent” that term “is construed to be a means-plus-function term under 35 U.S.C. 112, paragraph 6.” Id. at 22. But Petitioner does not argue or suggest that “digital circuitry” should be construed as a means-plus-function term; nor does Petitioner make an argument to overcome the presumption that 35 U.S.C. § 112, paragraph 6, does not apply. See id. Patent Owner does not address claim construction. See generally PO Resp. Because neither party actually argues “digital circuitry” is a means-plus-function term, the presumption holds and we determine that no claim term requires express interpretation to resolve any controversy in this proceeding. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
Patent outcomesUS 9,210,362 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 9,210,362 - Comcast Cable Communications, LLC v. Entropic Communications, LLCAll claims unpatentablePTAB · Oct 1, 2025 · IPR2024-00438 · APJ Michelle N Wormmeester · IPR · Final written decision
Claims 1–76 are unpatentable: Zhang anticipates or renders some claims obvious, and the other challenged claims are obvious over combinations including Zhang.
RulingsFinal written decision- BurdenFwd all claims unpatentableUnpatentable
“IV. CONCLUSION For the reasons given, Petitioner has demonstrated by a preponderance of the evidence that claims 1–76 of the ’206 patent are unpatentable as follows.6” slip op. at 48
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that “[a]ll claim terms herein should be given their ordinary and customary meaning to a POSITA.” Pet. 18. Patent Owner does not respond. See PO Resp. For purposes of this Decision, we determine that no claim term requires express interpretation to resolve any controversy in this proceeding. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“B. Asserted Challenges Based on Zhang Alone Petitioner asserts that claims 1, 3–7, 9, 11, 13, 15–19, 21, 23, 25, 27– 31, 33–35, 38, 40–44, and 46–48 of the ’206 patent are anticipated by Zhang. Pet. 19–45. Petitioner also asserts that these claims would have been obvious over Zhang. Id. Patent Owner disputes certain aspects of Petitioner’s analysis. PO Resp. 3–50. For the reasons explained below, we determine that Petitioner has demonstrated by a preponderance of the evidence that claims 1, 3–7, 9, 11, 13, 15–19, 21, 23, 25, 27–31, 33–35, 38, 40–44, and 46–48 are anticipated by Zhang or would have been obvious over Zhang.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“system may include a digital video recorder (DVR).” Id. at 45–46 (citing Ex. 1052 ¶¶ 5, 43, 48, 60, 73, 98, 112, 118, 191, 197, 212, 281–285, 296, 546). According to Petitioner, “[a] POSITA would have been motivated to include Reisman’s DVR in Zhang’s STB to provide a more feature-filled and individualized user experience, which in the proposed combination still includes Zhang’s wideband front-end receiver components cited for performing Elements [25A]–[25E].” Id. at 46. Petitioner explains that “Reisman’s DVR improves user experience and flexibility by allowing timeshifted and on-demand viewing, and enabling replay and trick-play (fast forwarding, rewinding, and pausing) of live programming.” Id. (citing Ex. 1052 ¶¶ 191, 197, 212, 284); see also id. at 46–47 (asserting that “[a]dding Reisman’s DVR to Zhang’s system would have been nothing more [than] applying a known technique of integrating a DVR into a set-top box . . . to a known STB . . . that was ready for improvement to yield a predictable result” and that “[a] POSITA would have had a reasonable expectation of success”). Patent Owner does not specifically dispute Petitioner’s contentions in this regard. See PO Resp. Based on Petitioner’s argument and evidence (see Pet. 45–47), we find Petitioner’s proposed combination of Zhang and Reisman teaches all the limitations of claims 25 and 38. We also find that Petitioner’s proffered reasoning for combining Zhang and Reisman supports a legal conclusion of obviousness. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”).” slip op. at 40
Patent outcomesUS 11,399,206 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 11,399,206 - Comcast Cable Communications, LLC v. Entropic Communications, LLCAll claims unpatentablePTAB · Sep 29, 2025 · IPR2024-00435 · APJ Michelle N Wormmeester · IPR · Final written decision
Claims 1–82 are unpatentable: claims are anticipated by Zhang or obvious over Zhang, Zhang with Reisman, Zhang with Jackson, or the listed combinations with Pandey.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“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).” See 37 C.F.R. § 42.100(b). That standard involves construing claims in accordance with the ordinary and customary meaning of such claims as would have been understood by a person of ordinary skill in the art (“POSITA”) and the prosecution history pertaining to the patent. See id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). Petitioner asserts that “[a]ll claim terms herein should be given their ordinary and customary meaning to a POSITA.” Pet. 16. Patent Owner does not respond. See PO Resp. For purposes of this Decision, we determine that no claim term requires express interpretation to resolve any controversy in this proceeding. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We agree with Petitioner. Claim 1 recites “the DFE is configured to concurrently select and provide each of the plurality of desired channels . . . without providing any of the plurality of undesired channels.” The claim expressly covers both selecting desired channels and providing desired channels. By reciting “without providing any of the plurality of undesired channels,” the claim expressly excludes providing undesired channels; it does not exclude selecting undesired channels. Thus, the claim covers selecting both desired and undesired channels.” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Patent Owner argues that Zhang’s PVR is not a ‘DVR’ as recited in Elements [27D] and [41D], Reisman discloses this feature.” Pet. 50. Petitioner asserts that “Reisman teaches that STBs in a cable system may include a digital video recorder (DVR).” Id. (citing Exc. 1052 ¶¶ 5, 43, 48, 60, 73, 98, 112, 118, 191, 197, 212, 281–285, 296, 546). According to Petitioner, an ordinarily skilled artisan “would have been motivated [to] include Reisman’s DVR in Zhang’s STB to provide a more feature-filled and individualized user experience, which in the proposed combination still includes Zhang’s wideband front-end receiver components cited for Elements [27A]–[27C] and [41A]–[41C].” Id. Petitioner explains that “Reisman’s DVR improves user experience by allowing time-shifted and ondemand view, and enabling, e.g., fast-forwarding, rewinding, and pausing of live programming.” Id. (citing Ex. 1052 ¶¶ 191, 197, 212, 284–285, 546, 758); see also id. at 50–51 (asserting that the proposed combination “merely applies a known technique of integrating a DVR into a STB . . . to a known STB . . . that was ready for improvement to yield a predictable result” and that an ordinarily skilled artisan “would have had a reasonable expectation of success”). Patent Owner does not specifically dispute Petitioner’s contentions in this regard. See PO Resp. Based on Petitioner’s argument and evidence (see Pet. 50–51), we find Petitioner’s proposed combination of Zhang and Reisman teaches all the limitations of claims 27 and 41. We also find that Petitioner’s proffered reasoning for combining Zhang and Reisman supports a legal conclusion of obviousness. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”).” slip op. at 37
Patent outcomesUS 11,381,866 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 11,381,866 - Intelligent Wellhead Systems, Inc. v. Downing Wellhead Equipment, LLCNo claims unpatentablePTAB · Jun 9, 2025 · IPR2024-00300 · APJ Frederick C Laney · IPR · Final written decision
Claims 1–38 were not shown unpatentable because Petitioner failed to establish Krupa as prior art and failed to show the claimed fluid-triggered valve sequence in Carr or Tolman.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Although we agree with Petitioner that the plain meaning of limitation 1.2 does not require the recited determination to occur at the first well, it does require the determination to be about the condition(s) of the fluid communicated to the first well by the manifold, regardless of where or how the information is gathered to make that determination. Limitation 1.2 recites plainly that the “determining” step is specifically about whether “the fluid communicated via the manifold has satisfied one or more conditions.” Ex. 1001, 22:38–39 (emphasis added). Considering the antecedents for “the fluid” and “the manifold”––i.e., “communicating fluid to a first well via a manifold” (id. at 22:35, limitation 1.1)––limitation 1.2 expressly identifies the fluid which “the manifold” has “communicated” to the first well to be exactly the fluid used for “determining” whether “one or more conditions” are “satisfied” to trigger the recited responses. Id. This is because “the fluid” refers to a fluid passing to a first well by way of a manifold and the past tense of “communicated via the manifold” indicates, more specifically, that it is the fluid passed by the manifold which must satisfy a condition(s). The Specification of ’770 patent illustrates this by checking the “frac rate” of the fluid discharged by a manifold to a first well to make the determination about whether to permit a regular swap or a continuous pumping swap (“CP swap”). Ex. 1001, 13:30–54, Fig. 12. Therefore, contrary to Petitioner’s representation that limitation 1.2 does not “requir[e] the fluid used for ‘determining’ to have been communicated to the first well” (Pet. Reply 3), the plain meaning of limitation 1.2 does require the fluid used” slip op. at 12
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artNot shown unpatentable
“anticipated by, or would have been obvious over, Krupa necessarily requires Krupa to be first qualified as prior art. See Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327 (Fed. Cir. 2008) (party’s burden to prove anticipation of a patent includes initial burden of going forward with evidence that there is anticipating prior art). Under 35 U.S.C. § 102(a)(2)— the subsection under which Petitioner contends Krupa qualifies as prior art—when the reference patent document’s actual filing date is before the challenged patent’s filing date, a petitioner need only refer to the filing dates appearing on the challenged patent and reference patent document to make prima facie showing that the reference is prior art. 35 U.S.C. § 102(d)(1) (“For purposes of determining whether a patent or application for patent is prior art to a claimed invention under subsection (a)(2), such patent or application shall be considered to have been effectively filed, with respect to any subject matter described in the patent or application—(1) if paragraph (2) does not apply, as of the actual filing date of the patent or the application for patent.”).” slip op. at 16
- Strike new argumentNew argument disregardedDecided for patent owner
“We determine that the Petition did not adequately present Petitioner’s contention that Tolman discloses or suggests a “master valve” that a skilled artisan would understand to be the claimed “first valve,” which is first introduced in the Reply. The issue is whether Petitioner’s identification of Tolman’s “tree valve” for the claimed first valve was particular enough to allow Petitioner to rely specifically on the “master valve” in the well tree to show Tolman discloses the first valve. We find that it is not. It is undisputed that a well tree include several different valves: (1) valves for communicating fluid to a well (e.g., for treatment or stimulation); (2) valves for communicating fluid from a well (e.g., for flowback); and (3) valves for communicating fluid both to and from a well (e.g., master valve). See Reply 19–20; Ex. 1002 ¶¶ 542–545; Ex. 1044 ¶¶ 33–34, 38–42; Tr. 33:12–18, 34:3–12, 36:8–37:18, 39:4–17; Ex. 2013, 85:4–86:19, 87:1–12, 89:2–11. And the opening/closing of these different valves are controlled independently of the other valves based on different parameters. Id. identifying a tree valve, generally, does not provide the particularity necessary to provide notice that the master valve is the particular valve being relied upon. Further compounding this problem is the fact that the Petition repeatedly refers to a plurality of valves, rather than a singular “master valve.” The variability of possible valves suggested by simply referring to a tree valve fails to provide a level of particularity that clearly identifies which specific structure is being relied upon to perform which part of the recited procedure. Ultimately, we agree with Patent Owner that because the Petition does not specifically identify the master valve in the Petition, which the Petitioner’s Reply suggest was the intention all along, Patent Owner was put at a disadvantage because its ability to fully develop a response was impeded. Therefore, Petitioner’s reliance particularly on the “master valve” of the well tree, and the newly introduced evidence associated therewith, was improper and may not be considered. Nevertheless, as discussed below, even if Petitioner were allowed to rely on the master valve, we still find the Tolman Grounds to be deficient.” slip op. at 56
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“However, Carr does not disclose or suggest: relying on the condition(s) of the fluid communicated by first isolated manifold path 122 to first well 140 to be the determinative factor for causing first and second valves 470 and 472 to perform a sequenced response that includes–– (1) opening second valve 472, (2) communicating fluid to second well 142 through second valve 472, and (3) after opening second valve 472, closing first valve 150 from communicating fluid to first well 140. At the time of the invention, when a first well is being operated individually using high pressure pumping, we find that skilled artisans would have considered concurrent operation of the second well’s valves to be hazardous and activities that can not occur. See Ex. 1031, 4 (“specifically identified activities that were restricted from occurring at the same time (i.e., CAN NOT OCCUR activities). As an example, if the operations on a well involved high pressure pumping . . . then manipulating manifold well valves and wellhead trees valves on another well were not allowed to be performed concurrently”); Ex. 2012 ¶ 148. would have had a reasonable expectation of being able to successfully avoid the unacceptable hazards known to be associated with opening second valve 472 and communicating fluid to second well 142, while individually operating on first well 140 using high pressure pumping.10 Furthermore, Petitioner provides no persuasive evidence that a skilled artisan would have known that those unacceptable hazards could be avoided (or acceptably minimized) by using a condition(s) of the fluid communicated by first isolated manifold path 122 to first well 140 as a trigger for opening second valve 472 and communicating fluid to second well 142, while first well 140 is being individually operated.” slip op. at 34
Patent outcomesUS 11,560,770 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,560,770 - PTAB · Dec 16, 2024 · IPR2024-00891 · APJ Jon M Jurgovan · IPR · Institution
The Board instituted IPR on claims 23–46 on all grounds, finding a reasonable likelihood that Shin anticipates at least one challenged claim.
RulingsInstitution decision- Parallel petitionsDenied
“Under the circumstances presented here, we find that discretionary denial is not warranted for the Petition in this case due to the parallel petition in IPR2024-00890. Given the large number of claims asserted by Patent Owner against Petitioner in the district court litigation, we do not consider two petitions asserting two single-reference grounds against forty claims including five independent claims to be excessive. The CTPG provides that assertion of a large number of claims in litigation is one circumstance under which more than one petition may be necessary. CTPG at 59. Furthermore, the two petitions challenge different claims of the ’031 patent. Claim length and subject matter complexity also justify the additional briefing presented by two petitions for which Patent Owner has been afforded the same amount” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“(see 37 C.F.R. § 42.4(a)) that the record demonstrates a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims on the merits, so we grant institution of the petitioned inter partes review. See 35 U.S.C. § 314(a). We decline to exercise our discretion to deny institution because of the parallel petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Petitioner asserts that A person of ordinary skill in the art (“POSA”) as of the asserted priority date would have had a bachelor’s degree in biomedical engineering, chemical engineering, chemistry, or a related or equivalent field, and two or more years of experience researching, developing, designing and/or evaluating (or supervising the same) medical devices for measuring analyte levels, including some experience with algorithms for calibrating such devices, or equivalent experience. Such experience could include either formal coursework in signal processing, computer science, or electrical engineering, or it could also be obtained during on-the-job experience. A person with less or different education but more relevant practical experience, or vice versa, may also meet this standard. A POSA may have been part of an interdisciplinary team with others having the relevant experience set forth above and/or with clinicians. The prior art also evidences the level of skill in the art.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Since Petitioner does not propose any alternative construction for “drift profile” or construction of any other term in this proceeding, there is no dispute over claim terms that we need to decide to resolve. Accordingly, we will apply the ordinary and customary meaning of the claim terms in our analysis of the challenge grounds without express construction. See Nidec, supra. Id. (citing Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)). We note in passing, however, that Patent Owner’s stated definition of “drift profile” in its Preliminary Response seems to comport both with Petitioner’s proposal in the district court litigation4 as well as how the ’031 patent’s specification uses the terms “drift” and “profile” in the context of “sensitivity.” See Ex. 1001, 21:36–48 (discussing “drift”), 210:39–60 (discussing “profile”).” slip op. at 15
Claim construction§ 102 anticipationDiscretionary denialcites KSR · GrahamPatents in suitUS 11,020,031 - PTAB · Dec 16, 2024 · IPR2024-00890 · APJ Jon M Jurgovan · IPR · Institution
The Board instituted IPR for claims 1–2, 4, 6–15, and 20–22 because the petition showed a reasonable likelihood of prevailing on anticipation by Shin.
RulingsInstitution decision- Parallel petitionsDecided for petitioner
“In IPR2024-00891, Petitioner filed on the same date a parallel petition to challenge claims 23–26 of the ’031 patent on grounds similar to those asserted in this proceeding. In its “Explanation of Parallel Petitions” (Paper 3), Petitioner provides the following table to explain the claims challenged and grounds of unpatentability asserted in each petition: Paper 3, 2. Petitioner ranked the Petition filed in this proceeding as first. Id. at 3. Accordingly, we need not reach the issue of parallel petitions in this proceeding, and instead address the issue in our institution decision in IPR2024-00891.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“likelihood that each limitation of claim 1 is disclosed by Shin notwithstanding Patent Owner’s arguments. Accordingly, Petitioner has shown a reasonable likelihood to prevail in demonstrating unpatentability of claim 1 of the ’031 patent as anticipated by Shin.” slip op. at 37
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art “because the Petition fails to demonstrate unpatentability even under that definition.” Prelim. Resp. 18. Petitioner’s proposed level of skill in the art is consistent with the ’031 patent and the asserted prior art except that we set the level to “at least two . . . years of experience.” Otherwise, on this record, we agree with and will use Petitioner’s proposed level for this Decision.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“As the parties do not present any dispute over the meaning of any claim term, we will apply the ordinary and customary meaning of the claim terms in our analysis of the challenge grounds without express construction. See Nidec, supra.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,020,031 - PTAB · Dec 11, 2024 · IPR2024-00906 · APJ Kevin C Trock · IPR · Institution
The Board instituted IPR on claims 1, 4–6, and 8–27 on all five § 103 grounds, finding a reasonable likelihood that claim 1 is obvious over N93, Dua, and Herle.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“Based on the current record, the weight of the evidence before us does not support a finding that that the same or substantially the same art or arguments were previously presented to the Office.” slip op. at 18
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDecided for petitioner
“will not deny institution of an IPR or PGR under Fintiv (i) when a petition presents compelling evidence of unpatentability; (ii) when a request for denial under Fintiv is based on a parallel ITC proceeding; or (iii) where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” slip op. at 20
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“demonstrated a reasonable likelihood of prevailing in its challenge to claim 1 under 35 U.S.C. § 103 as obvious over the combined teachings of N93, Dua, and Herle.” slip op. at 68
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s description of a person of ordinary skill appears to be consistent with the subject matter of the ’241 patent. This is supported by the testimony of Petitioner’s declarant, Dr. Creusere. See Ex. 1002 ¶ 28. We, therefore, adopt Petitioner’s assessment of a person of ordinary skill for purposes of this Decision. D. Claim Construction” slip op. at 22
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,445,241
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.