• AT&T Mobility LLC / AT&T Services Inc. et al. v. Daingean Technologies Ltd.No claims unpatentable
  PTAB · Jul 14, 2025 · IPR2024-00402 · APJ Mary C Hoffman · IPR · Final written decision

  The Board granted Patent Owner’s revised non-contingent motion to amend, canceling claims 1–4 and substituting claims 7 and 8, which Petitioner did not prove unpatentable.

  RulingsFinal written decision

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted

    “whether the motion to amend meets the statutory and regulatory requirements set forth in 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121.” See Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 15 at 4 (PTAB Feb. 25, 2019) (precedential). A “patent owner bears the burden of persuasion to show, by a preponderance of the evidence, that the motion to amend complies” with the applicable statutory and regulatory requirements. 37 C.F.R. § 42.121(d)(1). Specifically, a patent owner must demonstrate the following: (1) the amendment proposes a reasonable number of substitute claims; (2) the amendment responds to a ground of unpatentability involved in the trial; (3) the amendment does not seek to enlarge the scope of the claims of the patent; and (4) the amendment does not introduce new matter. See 35 U.S.C. § 316(d); 37 C.F.R. § 42.121(a)–(b). For the reasons explained below, Patent Owner satisfies its burden of persuasion to show that the amendments comply with the applicable statutory and regulatory requirements.” slip op. at 8

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Both parties rely on expert testimony for their respective positions relating to the number of years of experience needed to attain ordinary skill, but neither expert cites supporting evidence for their testimony. See Ex. 1002 ¶ 33; Ex. 2002 ¶ 15. Our decision is the same regardless of whether the length of experience is two years or three. We find Patent Owner’s proposed “wireless communications” is more consistent with the ’958 patent than Petitioner’s proposed “telecommunication,” which encompasses a variety of technologies including, e.g., landline and wireless telephones, cable, and satellite. See Ex. 1001, 1:11–62 (describing the invention in terms of wireless communications). Accordingly, we adopt a modified version of Petitioner’s proffered level of ordinary skill in the art, substituting “wireless communications” for “telecommunication.” Neither party, moreover, indicates the overall result would change based on a different definition.” slip op. at 18

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

    “We agree with Patent Owner that the recited second type SIBs exclude first type SIBs. The plain meaning of “first type” and “second type” indicates that the first type and second type are different in kind. RMTA 22 (App. A). Our interpretation is consistent with the Specification, which explains that second type SIBs exclude first type SIBs. As Patent Owner points out, the ’958 patent discloses “first type of system information (1TYP SIB) is . . . essential . . . for initial system access” and “second type of system information (2TYP SIB) is nonessential system information . . . defined as all other types of information, and thus excludes the [] information required for initial access.” Id. at 11–12 (citing Ex. 1001, 8:34– 46); see also Ex. 1001, Abstract (interchangeably using the terms second type and non-essential). Despite Petitioner’s argument that this disclosure is non-limiting and directed to a disclaimed example embodiment (Opp. 8–9), Petitioner could not identify any embodiment, among the approximately forty disclosed embodiments, describing something other than the first type SIB being essential information and the second type SIB being non-essential information. Tr. 22:18–26. Even the Petition acknowledges that “the ’958 Patent further classifies a second type of system information, the ‘non-essential’ SI, which is defined as all other types of information excluding that first type of information required for initial access.” Pet. 5. Furthermore, the prior art of record suggests that a person of ordinary skill would have understood second type SIBs exclude first type SIBs. See Ex. 1008 ¶ 48 (describing two categories of system information, “essential SI” and “Other SI”). Patent Owner’s expert also understood the recited first and second type SIBs as being mutually exclusive. See Ex. 1011, 49:10–13. For the above reasons, we do not agree with Petitioner that the recited second type SIB lacks any requirements, nor do we interpret claims 7 and 8 such that the first type SIB could be a second type SIB.” slip op. at 19

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

    “(d) Limitation 7h: Analysis We agree with Patent Owner that Petitioner’s arguments with respect to limitation 7h are insufficient because they fail to address the limitation as written and improperly incorporate previous arguments by reference. For example, Petitioner did not map the recited “group identifier” when opposing Patent Owner’s Revised Motion to Amend. See Opp. 16–17. In its Sur-reply, Petitioner contends that limitation 7h’s requirement of transmitting the group identifier was previously “set out in Patent Owner’s prior papers,” but does not refer to any specific papers or exhibits. Pet. Surreply 11–12. We decline to search for and piece together Petitioner’s arguments and evidence to develop a persuasive theory of unpatentability. See 37 C.F.R. section 42.6(a)(3). Petitioner similarly failed to address adequately where Lee discloses or suggests the recited “compressed format” and “plural parameters.” See Opp. 16–17. Aside from the above concerns, we also do not see sufficient explanation with respect to limitation 7h’s requirement that the transmitting by broadcast be based on a comparison of the value tag. Petitioner argues that, because Patent Owner does not dispute limitation 7g, “it would have been obvious to a POSITA to use the same value tag[] to determine the system information broadcast in Lee’s compressed format embodiment.” Pet. Sur-reply 12. This conclusory statement is not supported by any citations to evidence and was improperly introduced in the Sur-reply. Moreover, whether it was obvious to determine what system information is broadcast is not commensurate with the claim scope because limitation 7h requires that the broadcasting (not the broadcast content) be based on a comparison of the value tag. See supra III.B.4 and IV.B. Further, we are not persuaded that Lee’s transmitting by broadcast is” slip op. at 26

  Patent outcomesUS 10,841,958 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham · Nautilus
  Patents in suitUS 10,841,958
• Inergy Technology, Inc. v. Force Mos Technology Co., Ltd.No claims unpatentable
  PTAB · May 16, 2025 · IPR2024-00093 · APJ Grace Karaffa Obermann · IPR · Final written decision

  Claims 1–9 were not proven unpatentable because the asserted references did not establish the claimed epitaxial layer or the required coverage of the trench sidewalls.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner defines a person of ordinary skill in the art as having “a Master’s degree in electrical engineering, and at least two years of relevant work experience in the field of integrated circuit design and manufacturing.” Pet. 13 (citing Ex. 1003 ¶¶ 32–37, 57). Patent Owner does not dispute Petitioner’s definition. PO Resp. 6. We adopt Petitioner’s proposed definition of the level of ordinary skill in the art because it is supported by unopposed declaration testimony and appears to be consistent with the disclosures of the ’634 patent and the asserted prior art references. See Ex. 1001, 1:6–2:33 (describing the invention and related art in terms of integrated circuit design and fabrication); see also Ex. 1006 ¶¶ 1–6 (Hirler); Ex. 1008 ¶¶ 1–37 (Kobayashi); Ex. 1009 ¶¶ 2–29 (Shiraishi). Neither party, moreover, indicates the overall result would change based on a different definition.” slip op. at 7

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

    “Petitioner argues that “the sidewalls of said trenches in said base layer are covered” should be construed to mean that “the entire sidewalls of” those trenches are covered. Pet. 18–19. We refer to this as “the sidewall limitation.” Petitioner shows persuasively that the disclosure and file history of the ’634 patent support its position on the sidewall limitation. Id. Patent Owner, for its part, observes that, after the filing of the Petition. two District Courts adopted the construction proposed by Petitioner.” PO Resp. 21 (citing Ex. 2010, 6–9; Ex. 2011, 23). Patent Owner also agrees to apply Petitioner’s construction for purposes of this proceeding. Id. We agree with Patent Owner that an express construction of the sidewall limitation is necessary to this Decision, id., and adopt Petitioner’s undisputed definition because it is supported by the record. No other claim term requires express construction for purposes of this Decision.” slip op. at 8

  • BurdenNot shown unpatentable

    “On this record, Petitioner fails to demonstrate that any claim is unpatentable under any ground asserted in the Petition. IV. CONCLUSION For the above reasons, we determine that Petitioner fails to establish by a preponderance of the evidence that claims 1–9 of the ’634 patent are unpatentable.” slip op. at 34

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “Alternatively, even if we set aside that timing issue, Dr. Liu’s bare opinion, advanced for the first time during cross-examination, that an epitaxial layer is “obvious” from Hirler’s disclosure is inadequate to support the challenges. Id. at 24–25. We accord little weight to Dr. Liu’s opinion because it is conclusory. See Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential). In any event, Petitioner does not meet, on this record, the “high standard” required to establish an inherent disclosure of an epitaxial layer in Hirler. PO Resp. 24.6 Dr. Liu opined for the first time during cross-examination “that it would have been impossible to create Hirler’s more lightly doped n- drift zone layer on top of its more heavily doped n+ substrate layer other than via epitaxy.” Id. at 25 (citing Ex. 2014, 164:16– 165:20). But Patent Owner effectively refutes that proposition with evidence that such a layer “could be created by counter-doping,” even if, as Dr. Liu contends, counter-doping may have been less ideal due to “disadvantageous mobility.” Id. (citing Ex. 2012 ¶ 133; Ex. 2014, 166:15–167:8).” slip op. at 11

  Patent outcomesUS 7,629,634 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,629,634
• Mercedes-Benz USA, LLC v. Daedalus Prime LLCNo claims unpatentable
  PTAB · Jan 8, 2025 · IPR2023-01343 · APJ Thomas L Giannetti · IPR · Final written decision

  Claims 1–7, 13–15, 17, and 18 were not shown unpatentable because Bose and White, alone or in the asserted combinations, failed to teach claimed workload comparisons or workload monitoring.

  RulingsFinal written decision

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “We are persuaded and find for the reasons given that Petitioner fails to prove by a preponderance of the evidence that White teaches or suggests “receiving a bus workload for a communication bus and a first processing element workload for a first processing element based on an integrated circuit reaching a limit.” Patent Owner’s expert Dr. Brogioli testifies that “[t]he workload is a function of the demands imposed by, e.g., applications running on the system, and may or may not be subject to direct control, whereas the conditions under which that workload is processed are controlled directly.” Brogioli Decl. ¶ 66. We agree with Dr. Brogioli and find that White’s frequency and voltage monitoring and adjustments do not result in the power management logic receiving the bus workload as recited in claim element 4[a]. Id. ¶¶ 64–66. We find the testimony of Mr. Wyatt on this issue unconvincing. Wyatt Decl. ¶ 103. In support of his opinion that “monitoring the operating voltages and frequencies of the logic core 120A and common logic bridge 110 is monitoring the workload of those components,” he states: “It was well understood that operating frequency and voltage of a component reflect the activity and use, or workload, of that component.” Id. However, he does not provide any evidentiary support for this statement. We, therefore, give it little weight. See PTAB Consolidated Trial Practice Guide 40 (Nov. 2019)5 (“Opinions expressed without disclosing the underlying facts or data may be given little or no weight.”) (citing Rohm & Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997)).” slip op. at 30

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “response. Paper 9. At the institution stage, therefore, Patent Owner did not dispute Petitioner’s description of a person of ordinary skill in the art or provide its own description. We regarded Petitioner’s description as consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Thus, for the purpose of our Institution Decision, we adopted Petitioner’s proposal. Institution Dec. 12–13. In its Response, Patent Owner states that it “uses this definition” in its analysis. PO Resp. 15 (citing Brogioli Decl. ¶ 25). In view of the foregoing, for this Decision, we adopt the description of the person of ordinary skill articulated by Petitioner and used in our Institution Decision. In light of our review of the complete record, we find that this formulation is consistent with the ’494 patent and the prior art of record, and is supported by the testimony of Mr. Wyatt. See Wyatt Decl. ¶ 21.” slip op. at 14

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionGranted

    “Post-institution, Patent Owner proposes a construction for the term “workload.” PO Resp. 15–16. Patent Owner contends that “[a] person of ordinary skill in the art would understand that in the ’494 patent, the term ‘workload’ means ‘an amount of activity over a quantum or period of time.’” Id. at 15. Dr. Brogioli’s testimony supports this construction, as does Mr. Wyatt’s. Brogioli Decl. ¶¶ 36–38; Wyatt Dep. 34:14–36:9. The ’494 patent also supports this construction. Ex. 1001, 8:20–22, 9:60–63. Petitioner does not dispute this proposed construction in its Reply. For the reasons given, we adopt Patent Owner’s construction for “workload.”” slip op. at 15

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

    “Nowhere does Petitioner or its expert point to an explicit disclosure in Bose of making a comparison of the claimed “bus workload and a bus workload threshold.” Instead, Petitioner relies on its expert’s opinion as to what a person of ordinary skill might have known, without any additional supporting evidence. See, e.g., Pet. 26 (“[A person of ordinary skill] would have understood global PMCU compares a workload threshold as exemplified by the predicted power and performance of each power mode and the monitored workload to select and adjust the power mode of a component” (citing Wyatt Decl. ¶¶ 54–55)). This opinion is not supported by the record. The only disclosure of a comparison in Bose that we have been shown is the comparison of PowerTotal to PowerMax in step 303 of Figure 3, which Petitioner does not rely on to meet the “comparison” limitation in the claim. Hearing Tr. 17:16–20. Also without proper support is Petitioner’s assertion that “a [person of ordinary skill] would have understood that in Bose, selecting or adjusting power mode for a component entails comparing a workload threshold, such as predicted power and performance associated with each power mode with real time statistics, such as the monitored workload of a component.” Pet. 26 (citing Wyatt Decl. ¶¶ 55–56). We determine that for the reasons given, Petitioner fails to demonstrate by a preponderance of the evidence that the claimed comparison element 1[g] of claim 1 is taught or suggested by Bose. We find, therefore, that Petitioner has not demonstrated that claim 1 is anticipated by Bose, nor has Petitioner demonstrated that to a person of ordinary skill, claim 1 would have been obvious in light of Bose.” slip op. at 25

  Patent outcomesUS 8,898,494 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 8,898,494
• Dynaenergetics Europe GmbH / Dynaenergetics US, Inc. v. Qinetiq LimitedNo claims unpatentable
  PTAB · Apr 11, 2024 · PGR2023-00003 · APJ William A Capp · PGR · Final written decision

  The Board held claims 1–5 not unpatentable; Petitioner failed to prove its asserted §101, §102, §103, and §112 grounds, including indefiniteness and written-description challenges.

  RulingsFinal written decision

  • BurdenNot shown unpatentable

    “prevail, Petitioner bears the burden to demonstrate that the challenged claims are unpatentable. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016). This burden never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat'l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). The standard of proof is preponderance of the evidence. 35 U.S.C. § 326(e); 37 C.F.R. § 42.1(d). We have jurisdiction under 35 U.S.C. § 6.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A. Level of Ordinary Skill Petitioner’s expert, Mr. Serra testifies that he is familiar with the” slip op. at 45

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

    “process of claim 1. The first principal decision is the selection of a known liner design from a library that is made at the beginning of the design process. The second principal decision is made at the conclusion of the design process where a “final liner design” emerges after hole shapes produced by modified liners converge toward the desired hole shape. A person of ordinary skill in the art, having read claim 1 in context, would understand that the term “optimized” in the claim refers to the hole shape of the known liner design that is selected from among the known liner designs in the library during the selection step of the claim. A person of ordinary skill in the art would similarly understand that the design that is chosen in the initial selection process is “optimized” with respect to the population of known liner designs in the library as opposed to being “optimized” relative to liner designs produced during the later varying and modelling steps of the design process.” slip op. at 26

  • Disclosure Requirements (§112) › Definiteness (Nautilus)DefiniteNot shown unpatentable

    “Accordingly, Petitioner has not shown that claims 1–5 of the ’039” slip op. at 22

  Patent outcomesUS 11,215,039 not shown unpatentable
  Claim construction§ 101 eligibility§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Bilski · Phillips · Markman · Nautilus
  Patents in suitUS 11,215,039
• Unified Patents, LLC v. Flexiworld Technologies, Inc.No claims unpatentable
  PTAB · Nov 1, 2023 · IPR2022-00775 · APJ Christopher L Ogden · IPR · Final written decision

  Claims 27 and 28 were not shown unpatentable under either § 103 ground because the petitioner did not establish that Olgaard or Acharya was prior art; the revised contingent motion to amend was dismissed as …

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedOther

    “Relying on Dr. Freedman’s testimony, Unified argues that a person of ordinary skill in the art would have had “(1) an undergraduate degree in electrical and computing engineering or a closely related field; and (2) two or more years of experience in wireless content transmission,” where “[m]ore relevant experience could compensate for less education, and vice versa.” Pet. 7 (citing Ex. 1003 ¶¶ 36–38). Flexiworld does not contest Unified’s description of the level of ordinary skill for this proceeding. See PO Resp. 8 (citing Ex. 2010 ¶ 67). Because Unified’s description is supported by uncontroverted testimonial evidence and appears consistent with the types of problems and solutions in the ’257 patent, we adopt it for this decision. See, e.g., Ex. 1001, 1:20–5:35 (“Technical Field” and “Background” sections of the ’257 patent, describing background knowledge relating to wireless content transmission between electronic devices).” slip op. at 9

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

    “Unified argues that “all terms should be given their plain meaning,” and does not propose any explicit constructions. See Pet. 8. In the context of this proceeding, Flexiworld agrees. See PO Resp. 29. We do not find it necessary to explicitly construe any terms to resolve the issues in this proceeding. 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

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “2. Conclusion as to Obviousness For the reasons above, we determine that evidence independent of inventor testimony corroborates (1) a conception date no later than October 22, 2000 and (2) reasonably continuous diligence in reducing the claimed invention to practice until January 19, 2001. Having considered the evidence as a whole under a rule-of-reason analysis, we determine that Unified has not shown that the conception date for the claimed invention was on or after October 24, 2000, or that the inventors did not exercise reasonably continuous diligence during the critical period between October 24, 2000 and January 19, 2001. Unified relies on a priority date of October 24, 2000 for Olgaard and a priority date of December 22, 2000 for Acharya. See Pet. 1–2 & n.2; see also Ex. 1005, code (63); Ex. 1007, codes (22), (43). However, the corroborated conception date for claims 27 and 28 antedates the above priority dates for both Olgaard and Acharya. See supra Section III.C.1. Thus, Unified has not shown that either Olgaard or Acharya is prior art under 35 U.S.C. § 102(e) (2006). Unified provides no theory of obviousness that does not depend on either Olgaard or Acharya being prior art. See Pet. 2, 8–80.” slip op. at 20

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner

    “claimed inventions were conceived no later than October 22, 2000, and Unified has not shown to the contrary by a preponderance of the evidence. First, we find credible Mr. Chang’s testimony that Exhibit 2013 and other related drafts, including their filenames and metadata, have not been altered. Ex. 2031 ¶ 1. We regard the metadata as the most reliable indicator of the latest date each draft was completed. Although the filename dates may differ from the metadata dates, these minor differences do not call into question the reliability of the metadata as the last date on which the drafts were modified. Most significantly, the “last modified” date for Exhibit 2013 is October 22, 2000. That the inventors produced at least three other drafts and then filed a provisional application just ten days later on November 1, 2000 further supports a conception date before October 24, 2000. Ex. 2031 ¶ 6; Ex. 2016; Ex. 2040.” slip op. at 16

  Patent outcomesUS 9,836,257 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,836,257
• Recor Medical, Inc. / Otsuka Medical Devices Co., Ltd. v. Medtronic Ireland Manufacturing Unlimited Co.No claims unpatentable
  PTAB · Jul 14, 2023 · IPR2022-00431 · APJ Eric C Jeschke · IPR · Final written decision

  Claims 1–4 and 8–12 were not shown unpatentable because Petitioner did not prove the asserted anticipation or obviousness grounds by a preponderance of the evidence.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends, with accompanying declaration testimony, that [t]he level of ordinary skill encompassed a team of people, having a person with a Ph.D. or M.D. and five years of clinical and/or research experience treating diseases of the kidneys and circulatory systems and a person with at least a Bachelor’s degree in biomedical engineering or a related field and at least five years of experience designing catheter-based ablation systems. Pet. 40 (emphasis omitted) (citing Daft Pet. Decl. ¶¶ 64–68). Patent Owner responds that, “[f]or purposes of this proceeding, [Patent Owner] does not object to the definition of a person of ordinary skill in the art (‘POSITA’) proffered by Petitioner[] and adopted by the Board at institution as the result remains the same regardless of the definition—the Challenged Claims are valid.” PO Resp. 16; see also Dec. Inst. 15–17 (adopting, for purposes of institution, Petitioner’s proposed definition of the person of ordinary skill in the art). In addition, however, Patent Owner proposes a different level of ordinary skill in the art “should the Board believe that the difference in definition impacts the outcome” of this proceeding.8 PO Resp. 16. Both Petitioner and Patent Owner discuss how” slip op. at 9

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

    “to transmit ultrasound energy waves to target renal neural fibers” (claim 1, element 1d) and “configured to [perform certain functions] to the target neural fibers” (claims 3, 4, 8, and 9). See Pet. 23–25; PO Resp. 17–22; Pet. Reply 10; PO Sur-reply 1–2. Petitioner asserts that the phrase “configured to” should be construed as “able to.” Pet. 23; see Pet. 23–24 n.5 (discussing how “able to” has the same meaning as “capable of”). Patent Owner responds that “[t]he Board need not reach the construction of this term as Petitioner[’s] arguments fail under either construction, but to the extent a construction is required, ‘configured to’ should be construed as ‘designed to.’” PO Resp. 18. Based on the complete record, we do not discern a need to construe explicitly this phrase because doing so would not change the result of the analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we 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 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “the alleged motivation to use the device of Acker in Levin’s renal neuromodulation method. As noted by Patent Owner, after introducing Webster (by patent number), Levin states that “[s]imilar catheter based apparatus can be used to ablate the renal nerve with an intent to treat [Chronic Renal Failure].” Ex. 1004 ¶ 64 (emphasis added) (cited at PO Resp. 39 (discussing how “Levin explicitly qualif[ies] its statement by referring to ‘similar’ (not identical) catheters”)). But neither Petitioner nor its declarants have established that Acker’s ultrasound catheter is in fact “[s]imilar” to that in Webster in a manner that would support the view that one of ordinary skill in the art would have understood that Acker’s catheter could be used to “ablate the renal nerve with an intent to treat [Chronic Renal Failure]” as disclosed in paragraph 64 of Levin—i.e., to perform Levin’s renal neuromodulation method. See id. Dr. Mendelsohn states that Acker’s use of ultrasound-based ablation falls within the “any thermal means” disclosure in Webster (see Ex. 1052, 3:40–42), but Dr. Mendelsohn does not address why Acker’s ultrasound catheter is “[s]imilar” to the catheter in Webster (even after expressly noting the presence of that statement in Levin). See Mendelsohn Decl. ¶ 71 (“Moreover, Webster teaches transvascular nerve ablation using RF thermal ablation or ‘any thermal means’ and Levin teaches catheters similar to Webster’s can be used for renal denervation. Ultrasound ablation disclosed in Acker is a ‘thermal means’ of ablation.”).” slip op. at 21

  • Obviousness (§103) › Objective indicia / secondary considerationsNot reached

    “(2) Objective Indicia of Nonobviousness We next turn to Patent Owner’s objective evidence of nonobviousness. Patent Owner alleges (1) unexpected results and skepticism, (2) copying, (3) praise, and (4) long-felt but unsolved need and failure of others. See PO Resp. 60–68; PO Sur-reply 25–27. Petitioner responds. See Pet. Reply 36–37. We have considered the evidence and argument presented by both parties, but do not address the issues in detail. See Alza Corp. v. Mylan Labs., Inc., 391 F.3d 1365, 1373 n.9 (Fed. Cir. 2004) (“Because [patent challenger] has not made a prima facie case of obviousness, we need not address the parties’ assertions regarding the district court’s discussion of secondary considerations.”).” slip op. at 31

  Patent outcomesUS 8,845,629 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 8,845,629
• Berkeley Lights, Inc. v. The University Of British ColumbiaNo claims unpatentable
  PTAB · Jan 19, 2023 · IPR2021-01249 · APJ Christopher L Ogden · IPR · Final written decision

  Claims 1, 6, 11, 16, 19, 24, 26, 27, and 30 were not shown unpatentable because the asserted references did not establish selective recovery or a sufficient motivation to combine.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Relying on Dr. Meinhart’s testimony, Petitioner argues that a person of ordinary skill in the art “would have had a bachelor’s degree in mechanical engineering, chemical engineering, biomedical engineering, molecular biology, (bio)chemistry, or an equivalent degree relevant to microfluidic biological cell analysis, and three to five years of experience with the construction of and application of microfluidic devices to cell culture and analysis.” Pet. 8–9 (citing Ex. 1002 ¶ 40). Patent Owner does not contest Petitioner’s proposed level of ordinary skill in the art. See PO Resp. 3–4 (citing Ex. 2012 ¶¶ 19–20). We find Petitioner’s uncontested articulation to be reasonable in light of the subject matter involved in the ’408 patent and its description of the relevant prior-art background. See, e.g., Ex. 1001, 1:15–2:54 (describing the field and related art as relating to the construction and use of microfluidic devices in cell culture and analysis). Thus, we adopt it for our decision.” slip op. at 9

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

    “Petitioner contends that “no terms require express construction for purposes of resolving the challenges in this proceeding.” Pet. 9; accord Pet. 12. Petitioner also notes that in the parallel district court proceedings, Patent Owner has proposed constructions for the terms chamber and retaining position that differ from Petitioner’s proposed constructions. Pet. 9–10 (citing Ex. 1013 App’x A, 1, 3 (Patent Owner’s proposed constructions); Ex. 1021, 7, 8 (Petitioner’s proposed constructions); Ex. 1002 ¶ 44). In those proceedings, Patent Owner’s proposed construction for chamber is “an enclosed space within a microfluidic device,” and its proposed construction for retaining position is “a location in the chamber at which a cell is maintained during cell culture and media exchange.” Ex. 1013, 6, 8. Although Petitioner does not contend that its arguments rely on the choice of construction for these terms, Petitioner adopts Patent Owner’s constructions for this proceeding. Pet. 11. Patent Owner does not contest these proposed constructions, or propose any other explicit constructions. See generally PO Resp. We agree with Petitioner that we do not need to construe the terms chamber and retaining position to decide the issues presented in this proceeding, and to the extent we need to interpret the meaning of any claim language, we address the interpretations below in the context of the prior art. 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 11

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “selectively recovering a cell based on the response in the monitoring step. Although Dimov discloses non-selective recovery and briefly lists a few general techniques that might be used for either mixing or recovery, Dimov does not specifically indicate which of the techniques would be useful for recovery rather than just mixing, and Dimov does not explicitly disclose that any cell recovery would be selective. Nor has Petitioner shown that Dimov inherently discloses selectively recovering any particular cell that has been cultured and monitored, because, as Dr. Gale persuasively testifies, Dimov’s removal techniques could, as far as a person of ordinary skill in the art would have known based on Dimov’s disclosure, be merely for “removing . . . unwanted particles out of the capture chamber/trench.” Ex. 2012 ¶ 64; see also id. ¶ 63 (“Dimov . . . may suggest removing cellular materials (rather than intact cells) after capture . . . .”). In other words, given Dimov’s general focus on performing experiments within the trenches and the lack of any specific disclosure about how or why to remove cells, Petitioner has not met its burden to show that Dimov’s potential cell-removal techniques would have necessarily been based on a response of a specific cell being cultured and monitored in limitation 1D. We also agree with Patent Owner that Dimov does not disclose any specifics about how to carry out a selective cell removal based on one of Dimov’s listed techniques, such as laser tweezers. See PO Resp. 8–9. Nor does Petitioner meet its burden of showing that such a technique would have been within the ordinary skill in the art at the time of the claimed invention. “In order to anticipate, a prior art disclosure must also be enabling, such that one of ordinary skill in the art could practice the invention without undue experimentation.” Novo Nordisk Pharms., Inc. v. Bio-Tech. Gen. Corp., 424 F.3d 1347, 1355 (Fed. Cir. 2005) (citing SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1342 (Fed. Cir. 2005)). Given the labyrinthine outlet channels leading from Dimov’s chambers to the common waste stream and Dimov’s lack of any disclosure of a way to identify and extract cells in the outlet streams, we credit Dr. Gale’s testimony that there would have been substantial obstacles to recovering any specific cells that had been liberated from a trench in Dimov’s device. See Ex. 2012 ¶ 63. Petitioner has not shown that a person of ordinary skill in the art would have overcome those obstacles without undue experimentation.” slip op. at 23

  • Strike new argumentNew argument disregardedOther

    “18 Patent Owner contends that these arguments are untimely, and we agree at least as to certain of the arguments. See Paper 27, Nos. 6, 9, 10; see Paper 28, Nos. 6, 9, 10 (Petitioner’s responses). The new arguments introduce new theories as to how to combine Park and Kovac, including additional steps or new modifications necessary for a successful combination, which could have been presented in the Petition but were not. Nevertheless, as we discuss below, we find these arguments unpersuasive. Petitioner also contends, for the first time, that a person of ordinary skill in the art would have addressed the problem of Park’s downward-forcing circulation patterns19 by starting with flow turned off and then turning on flow “after levitation begins, including after the cell has been pushed up out of a well high enough to be clear of recirculating flow lines created once it is turned on.” Pet. Reply 19–20 (citing Ex. 1039 ¶¶ 175– 177); see also id. at 22 (citing Ex. 1039 ¶ 193).” slip op. at 64

  Patent outcomesUS 10,087,408 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 10,087,408
• Lenovo Holding Company, Inc. / Lenovo (United States) Inc. et al. v. Interdigital Technology CorporationNo claims unpatentable
  PTAB · Apr 14, 2022 · IPR2020-01505 · APJ John R Kenny · IPR · Final written decision

  Claims 1–10 were not shown unpatentable because Petitioner failed to establish that Zhang disclosed the claimed response to a non-zero grant construed as a power ratio greater than zero.

  RulingsFinal written decision

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

    “Here, we determine that the term “power ratio” in the involved parenthetical in the Specification is a definition, and not merely an illustrative example, of a “grant.” First, the Specification does not identify any other type of grant. Dr. Mahon testifies that the Specification does not provide an example of any other type of grant. Ex. 2001 ¶ 35. Petitioner offers no rebuttal expert testimony and identifies no other type of grant disclosed in the Specification. See Pet. Reply 1–5. We credit Dr. Mahon’s unrebutted testimony that the Specification does not identify any other type of grant. Ex. 2001 ¶ 35. Thus, the parenthetical at issue in this case does not exclude any grant described in the Specification (nor, as set forth in Section II.B.2.ii, any grant set forth by ordinary meaning of the term grant based on the extrinsic evidence of record).” slip op. at 11

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “Petitioner offers no extrinsic evidence, other than the testimony of Dr. Kakaes, regarding the ordinary meaning of the term “grant,” and Dr. Kakaes cites no extrinsic evidence to support his definition of the term “non-zero grant.” Pet. 12; Pet. Reply 1–5; Ex. 1003 ¶¶ 63–65. Dr. Kakaes does not separately address the meaning of “grant.” Ex. 1003 ¶¶ 63–65. We find Dr. Mahon’s testimony and the 3GPP Technical Specification persuasive. As set forth above, the 3GPP Technical Specification describes grants as power ratios—a fact that Petitioner does not dispute. Pet. Reply 1– 5. Further, as set forth above, in light of the Specification’s references to 3GPP standards and the 3GPP recitations in the preambles of claims 1 and 6, 3GPP standards from the time of the ’873 patent are highly relevant evidence to an ordinarily skilled artisan of the ordinary meaning of the terms “grant” and “non-zero grant.” iii. A Non-zero Power Ratio is a Power Ratio Greater than Zero Dr. Mahon testifies that a “non-zero grant” should be construed as “a power ratio greater than zero.” Ex. 2001 ¶ 33. Dr. Mahon explains that a power ratio cannot be negative, so a “non-zero” power grant must be greater than zero. Id. ¶ 38. Petitioner does not dispute Dr. Mahon’s testimony that a power ratio cannot be negative. Pet. Reply 1–5. Petitioner further does not dispute that if a “grant” is construed to be a “power ratio,” a “non-zero grant” should be construed to be a “power ratio greater than zero.” Id. We credit Dr. Mahon’s testimony that a power ratio cannot be negative. Ex. 2001 ¶ 38. Thus, in light of the Specification’s and extrinsic evidence’s teachings that a “grant” is a “power ratio,” we construe “non-zero grant” to be a “power ratio greater than zero.”” slip op. at 19

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

    “2. Claim 1 Claim 1 recites the following limitation: triggering transmission of scheduling information (SI), from the WTRU to a Node-B, in response to the WTRU having a non-zero grant smaller than needed preventing the WTRU from sending a medium access control protocol data unit (PDU) of any of a plurality of scheduled medium access control-d (MAC-d) flows. [“responsive limitation of claim 1”] Ex. 1001, 7:36–8:6 (emphasis added). Petitioner does not argue, let alone prove, that Zhang discloses the transmission of scheduling information “in response to the WTRU having a non-zero grant smaller than needed” when “non-zero grant” is construed as a “power ratio greater than zero.” Pet. 25–29; Pet. Reply 1–5, 12–13. Thus, Petitioner has not proven that claim 1 is anticipated by Zhang. 3. Claim 5 Claim 5 depends on claim 1. Ex. 1001, 8:15–16. Petitioner relies on its showing for claim 1 for the limitations that claim 5 incorporates from claim 1. Pet. 29–30. Thus, Petitioner has not proven that claim 5 is anticipated by Zhang.” slip op. at 25

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “B. Ground 2: Asserted Obviousness over Zhang Petitioner asserts that claims 1, 5, 6, and 10 would have been obvious over Zhang. Pet. 5. For the responsive limitations of claims 1 and 6, Petitioner relies on its showing for Ground 1. Id. at 32–33. Thus, Petitioner has not proven that claims 1 and 6 would have been obvious over Zhang. For claims 5 and 10, Petitioner also relies on its showing for Ground 1. Id. at 33. Thus, Petitioner has not proven that claims 5 and 10 would have been obvious over Zhang. C. Ground 3: Asserted Obviousness over Zhang and TS 25.321 Petitioner asserts that claims 1–10 would have been obvious over Zhang and TS 25.321. Pet. 5. For this ground, Petitioner argues “[t]o the extent one might argue that Zhang does not . . . sufficiently disclose a WTRU configured to process ‘a plurality of scheduled medium access control-d (MAC-d) flows,’ it would have been obvious to include that functionality in the WTRU of Zhang in view TS 25.321.” Id. at 34 (emphasis omitted). For the responsive limitations of claims 1 and 6, Petitioner relies on its showing for Ground 1. Id. at 34–40, 48. Thus, Petitioner has not proven that claims 1–10 would have been obvious over Zhang and TS 25.321. D. Ground 4: Asserted Obviousness of Claims 1, 5, 6, and 10 over Zhang and Lohr Petitioner asserts that claims 1, 5, 6, and 10 would have been obvious over Zhang and Lohr. Pet. 5. For this ground, Petitioner argues “[t]o the extent one might argue that Zhang alone, or Zhang in combination with TS 25.321 do not does not sufficiently disclose a WTRU configured to process “a plurality of scheduled medium access control-d (MAC-d) flows,’ it would have also been obvious to include that functionality in the WTRU of Zhang in view” of Lohr. Id. at 52–53 (emphasis omitted). For the responsive limitations of claims 1 and 6, Petitioner relies on its showing for Ground 1. Id. at 52–55. Thus, Petitioner has not proven that claims 1, 5, 6, and 10 would have been obvious over Zhang and Lohr. E. Ground 5: Asserted Obviousness of Claims 1–10 over Zhang, Lohr, and TS 25.321 Petitioner asserts that claims 1–10 would have been obvious over Zhang, Lohr, and TS 25.321. Pet. 5. For this ground, Petitioner argues that claims 1, 5, 6, and 10 would have been obvious over Zhang and Lohr for the reasons set forth for Grounds 1–4. Id. at 56. Thus, Petitioner has not proven that claims 1–10 would have been obvious over Zhang, Lohr, and TS 25.321. See Sections III.A–D above.” slip op. at 27

  Patent outcomesUS 8,797,873 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 8,797,873
• Seadrill Americas, Inc. / Seadrill Gulf Operations Auriga, LLC et al. v. Transocean Offshore Deepwater Drilling, Inc.No claims unpatentable
  PTAB · May 18, 2017 · IPR2015-01990 · APJ William V Saindon · IPR · Final written decision

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

  RulingsFinal written decision

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

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

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

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

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

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

  • ExcludeMotion to exclude, deniedDenied

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

  Patent outcomesUS 6,068,069 not shown unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 6,068,069
• Seadrill Americas, Inc. / Seadrill Gulf Operations Auriga, LLC et al. v. Transocean Offshore Deepwater Drilling, Inc.No claims unpatentable
  PTAB · May 18, 2017 · IPR2015-01929 · APJ William V Saindon · IPR · Final written decision

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

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for patent owner

    “information, Patent Owner’s expert analyzing the data, Mr. Bratic, presumes that “dual activity” in the database means “rigs that incorporate the teachings of [Patent Owner’s] Dual-Activity Patents,” relying on the testimony of Dr. Cooke at paragraphs 42–43. Ex. 2080 ¶ 4. There, Dr. Cooke states that “[i]t is my opinion that the term ‘dual activity’ is a generally accepted term in the industry used to reference Transocean’s claimed invention.” Ex. 2077 ¶ 42. He later states that “dual activity” is not offline stand building (Lund) or having two drilling stations but not transfer means (Horn). Id. ¶ 43. For the reasons expressed above in our nexus analysis, Dr. Cooke’s testimony is overly simplistic, contradicted by evidence, and, therefore, not credible. Mr. Bratic’s analysis is thus similarly contradicted by evidence and not credible. Second, the fact that Patent Owner asked for an additional fee for using additional features of a rig, i.e., to use the “dual activity” feature of the rig, in and of itself, cannot show commercial success. To hold otherwise would be to find commercial success for virtually every additional feature not offered for free. See Cable Elec. Products, Inc. v. Genmark, Inc., 770 F.2d 1015, 1027 (Fed. Cir. 1985) (“this court . . . has unequivocally stated that for commercial success of a product embodying a claimed invention to have true relevance to the issue of non-obviousness, that success must be shown to have in some way been due to the nature of the claimed invention, as opposed to other economic and commercial factors unrelated to the technical quality of the patented subject matter.”) (overruled on other grounds in Midwest Industries, Inc. v. Karavan Trailers, Inc., 175 F.3d 1356 (Fed. Cir. 1999)). Further, as Petitioner explains, dayrates are driven by a number of factors, including ship design, reputation, and timing. Pet. Reply 18 (citing Ex. 1038 ¶¶ 43–61).25 Even if we were to ignore the deficiencies in Patent Owner’s reliance on the IHS Petrodata information, to attribute, without sufficient analysis, the price difference to one factor (presence of “dual activity”) out of many factors grossly oversimplifies the analysis and ignores the realities of the marketplace. Thus, Patent Owner’s IHS Petrodata analysis is not credible evidence of non-obviousness.” slip op. at 48

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “1. The Level of Ordinary Skill in the Art Petitioner proposes that a person of ordinary skill in the art typically had a bachelor’s degree in mechanical, chemical, or related engineering plus 5 years of experience in the oil production industry. Pet. 4 (citing Ex. 1007 ¶ 15). Patent Owner does not explicitly offer a level of ordinary skill in the art, but states in some of its briefing that the parties do not generally disagree on the level of ordinary skill. Paper 84 (Patent Owner’s Opposition to Motion to Exclude the testimony of Dr. Cooke), 3 (“[t]he parties also agree generally as to the level of ordinary skill”). Based on the testimony of Mr. Schaff (Ex. 1007 ¶ 15) and the disclosures of the prior art, we adopt Petitioner’s proposed definition of the level of ordinary skill in the art.” slip op. at 18

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

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

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

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

  Patent outcomesUS 6,047,781 not shown unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 6,047,781

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.