• Intelligent Wellhead Systems, Inc. v. Downing Wellhead Equipment, LLCInstitution denied
  PTAB · Sep 12, 2024 · IPR2024-00583 · APJ Benjamin D M Wood · IPR · Institution

  The Board denied institution on all grounds because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim.

  RulingsInstitution decision

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

    “II. ANALYSIS A. Legal Standards Used in the Merits Analysis “In an IPR, the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)); 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).” slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner contends that, for the ’779 patent, one of ordinary skill in the art “would have had an engineering degree and two or more years’ wellrelated operations experience, or equivalent education/experience.” Pet. 8. Patent Owner does not offer an alternative definition, but its Declarant, Mr. Hughett, submits that one of ordinary skill in the art would have had “a degree in petroleum or mining engineering, mechanical engineering, or a comparable discipline, and at least two years of experience in oil and gas extraction, or an equivalent combination of education and experience.” Ex. 2006 ¶ 17. On the record, we do not discern a meaningful difference between Petitioner’s and Mr. Hughett’s proposed definitions, and therefore adopt Petitioner’s definition for purposes of this Decision. We also presume that the cited prior-art references reflect the level of ordinary skill at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining the level of ordinary skill in the art may be evidenced by the cited references themselves).” slip op. at 8

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

    “The Specification does not suggest a particular definition of threshold, and neither party suggests that it is a term of art in the relevant field. Therefore, we consult a general dictionary for guidance. See Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010) (If “the specification does not assign or suggest a particular definition [of a claim term], in determining the ordinary and customary meaning of the claim term as viewed by a person of ordinary skill in the art, it is appropriate to consult a general dictionary definition of the word for guidance.”). Because Merriam-Webster’s online dictionary, Merriam-Webster.com, provides several definitions for threshold, we refer to the intrinsic record “to identify which of the different possible dictionary meanings is most consistent with the use of the words by the inventor.” Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1300 (Fed. Cir. 2003). Based on the context in which threshold is used in claims 1 and 8, we consider the most relevant definition to be “a level, point, or value above which something is true or will take place and below which it is not or will not.” Merriam- Webster.com/dictionary/threshold (accessed July 30, 2024). The claim context also indicates that threshold encompasses the opposite situation, i.e., the threshold may be a value below which something is true or will take place and above with it is not true or will not take place. Thus, a flow-rate value and time value are “thresholds” when there is an action that will or will not take place (or something is or is not true) depending on whether those values are met. The Specification identifies one particular action that occurs when these thresholds are met: performance of a CP swap from hydraulically fracturing the n1 well (i.e., a first well) to hydraulically fracturing the n1+1 well (i.e., a second well). Ex. 1001, 13:28–52, Figs. 1B, 12. To perform a CP swap, according to the Specification, zipper valves for the n1+1 well are opened while fluid is being pumped to the n1 well, allowing hydraulic fracturing fluid to flow to both wells, after which zipper valves for the n1 well are closed. Id. at 14:14–38, Figs. 15, 16A, 16B, 16C. This procedure is precisely what claims 1 and 8 recite. In addition to requiring “determining that the flow rate is below a flow-rate threshold . . . for a threshold amount of time,” claims 1 and 8 recite, e.g., “(c) during pumping of the fluid into the first well via the first valve, opening a second valve associated with a second well,” and “(e) during pumping of the fluid into the second well via the second valve, closing the first valve associated with the first well.” Ex. 1001, claims 1, 8. Thus, in the context of these claims, a flow-rate threshold and threshold amount of time would be flow-rate and time values that determine whether or not a second valve associated with a second well is opened during pumping of fluid into the first well via the first valve.” slip op. at 9

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

    “We are not persuaded that Ciezobka teaches or suggests limitation [1.3]. First, we agree with Patent Owner that this limitation necessarily requires comparing the measured flow rate to a threshold. Petitioner also appears to agree that such a comparison is necessary to perform limitation [1.3]. See Pet. 15 (“Ciezobka discloses determining the flowrate of the fluid and comparing the determined flowrate to certain thresholds . . . , and therefore discloses determining that the flow rate of the fluid being pumped into the first well is below a flowrate threshold.”) (emphasis added). Ciezobka does not, however, teach such a comparison. Assuming that the initial flow rate can be considered a “threshold,” Ciezobka’s teaching of the existence of an initial flow rate followed by the existence of a lower pulse flow rate does not constitute a teaching of a comparison of the two flow rates. Second, Petitioner has not established that the “initial flow rate” is a “threshold.” As discussed above, we construe “flow rate threshold” in the context of claim 1 to mean a flow rate value that an actual flow rate must drop below for a threshold amount of time in order for a second valve associated with a second well to be opened. See Section II.C. Ciezobka does not teach that a measured flow rate must drop below the initial flow rate or any other specific flowrate before one of valves 218 or 219 is opened. Instead, the valve is opened after a specific period of time and without comparing the actual flow rate to the initial flow rate. See Ex. 1037, 12:8– 12 (teaching that a pressure pulse is created by closing valve 219 “for a short period of time” ranging from 1 minute to 1 second, preferably 10 seconds). Indeed, opening valve 218/219 causes flow rate drop to one of the wells; it does not occur as a result of the flow-rate drop.” slip op. at 15

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 11,401,779
• Jpmorgan Chase Bank, N.A. v. Identitii LimitedInstitution denied
  PTAB · Aug 26, 2024 · IPR2024-00593 · APJ Meredith C Petravick · IPR · Institution

  Institution was denied because Petitioner did not show a reasonable likelihood that claims 1–20 were unpatentable over the asserted grounds.

  RulingsInstitution decision

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

    “We determine that the information presented fails to show a reasonable likelihood that Petitioner would prevail in establishing that claims 1–2 and 4–20 are unpatentable over Kennedy and Kurani-816. 2. Ground 2 — Kennedy, Kurani-816, and Yago Claim 3 depends from claim 1. We determine that Petitioner has not met its burden to show a reasonable likelihood that claim 3 would have been obvious over Kennedy, Kurani-816, and Yago. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“[D]ependent claims are nonobvious if the independent claims from which they depend are nonobvious.”).” slip op. at 20

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

    “We agree with Patent Owner. We are not persuaded by Petitioner that it would have been obvious to a POSITA, based on the disclosures of Kennedy and Kurani-816, to store a digital title in memory 228 of processing server 102 for the purpose of record keeping. See Ex. 2013 ¶ 91. Kennedy discloses that processing server 102 includes a memory 228 for storing data used to perform its function, such as encryption keys, algorithms, and application programs. Ex. 1033 ¶ 46. Kennedy does not disclose memory 228 being a document store for record keeping of transaction messages or other transaction data. See id. In Kennedy, a private blockchain 206 stores data record 208 containing the transaction data. See e.g., id. ¶¶ 48–51; Fig. 2. Kurani-816 discloses digital titles that are specific to an asset and not to a particular financial transaction. Ex. 1034, 3:13–15. The digital titles are stored in a database at a digital title company and provided to the seller or buyer during a transaction. See e.g., id. at 6:34–9:7. Kurani-816 does not disclose transmitting the digital title to a financial transaction processing server, like processing server 102. Id. Thus, neither Kennedy nor Kurani-816 teaches transmitting documents pertaining to a financial transaction and a token corresponding to a financial transaction to identify the document to a first document store, as required by claim elements 1 and 6. For the reasons above, we are not persuaded by Petitioner that claim 1 would have been obvious to a POSITA over Kennedy and Kurani-816.” slip op. at 19

  • Parallel petitionsNot reached

    “Because we have denied institution in IPR2024-00590 and deny institution in this proceeding based on the patentability merits, we do not need to reach the issue of whether both Petitions should be instituted.” slip op. at 3

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportNot reached

    “patent applications, including one filed on August 14, 2015. Ex. 1001, code (30). Petitioner asserts that the ’413 patent is not entitled to priority to August 14, 2015 because the provisional applications do not provide written description support for certain claim terms. Pet. 6–15. Patent Owner disputes Petitioner’s assertion. Prelim. Resp. 20, n.7. As both Kennedy and Kurani-816 were filed after August 14, 2015 (see Ex. 1033, code (22); Ex. 1034, code (22)), if the ’413 patent is entitled to priority to August 14, 2015, then neither Kennedy nor Kurani-816 is available as prior art. We do not need to reach this issue because, regardless of whether Kennedy and Kurani-816 are available as prior art, Petitioner has not shown a reasonable likelihood that it would have been obvious to a POSITA to combine Kennedy and Kurani-816 as proposed by Petitioner.” slip op. at 5

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,984,413
• I4f Licensing NV v. Vilox ABInstitution denied
  PTAB · Aug 21, 2024 · IPR2024-00602 · APJ Neil T Powell · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–15 were anticipated by Miller or obvious over Miller alone or Miller and Roy.

  RulingsInstitution decision

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

    “An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons explained below, we do not institute an inter partes review.” slip op. at 2

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

    “Considering all of the arguments and evidence, we agree with Patent Owner that Petitioner insufficiently supports its position that Miller discloses a locking recess with a curved horizontal locking surface. Petitioner does not cite any text in Miller that discloses a locking recess with a curved horizontal locking surface. E.g., Pet. 7–8, 14–23. Instead, Petitioner relies on Miller’s Figure 3 as allegedly showing a curved horizontal locking surface. E.g., id. at 15–18, 21–23. We do not find that Miller’s Figure 3 shows a locking recess with a curved horizontal locking surface in the location identified by Petitioner, i.e., the location of the curved red arrow that Petitioner added to Miller’s Figure 3. E.g., Pet. 15, 22. Even assuming that this portion of Miller’s drawing shows a very subtle rise (which we do not find), it does not show clearly a curve, as opposed to, for example, a slightly inclined flat surface. Moreover, we agree with Patent Owner that, at the point of Petitioner’s curved red arrow, Figure 3’s overlapping representation of the tongue’s lower surface and the groove’s upper surface prevents distinguishing one from the other. Prelim. Resp. 45 (“In Figure 3, the lines merge so that no conclusion can reasonably be made by a [person of ordinary skill in the art] as to whether a locking recess is present in the groove or not.”). Accordingly, Figure 3 does not allow discerning a curve in the groove’s upper surface at the point identified by Petitioner.” slip op. at 17

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

    “Additionally, Petitioner does not provide a persuasive reason that a person of ordinary skill in the art would have had to configure Miller’s panel with a curved horizontal locking surface, in addition to an inclined horizontal locking surface, as required by independent claim 1. Pet. 34–39; Prelim. Resp. 54. In support of its argument that it was well-known to use curved locking surfaces, Petitioner provides a vague string cite of evidence that dubiously includes Miller (which has not been shown to disclose a curved horizontal locking surface). Pet. 37 (citing Ex. 1002 ¶¶ 25–26, 56; Ex. 1006, Figs. 2–4, 9, and 10 and associated description; Ex. 1004; Ex. 1006; Ex. 1005; Ex. 1009; Ex. 1010; Ex. 1011; Ex. 1012; Ex. 1013; Ex. 1014). Moreover, to the extent Petitioner is correct that it was well-known and easy to configure a panel with a curved locking surface, that may show that a person of ordinary skill in the art could have added a curved horizontal locking surface to Miller’s panel. But that does not show sufficiently that such a modification would have been obvious, as it does not demonstrate why a person of ordinary skill in the art would have modified Miller’s cladding panel to add a curved horizontal locking surface. See Belden v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (stating that “obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention”) (citing InTouch Techs., Inc. v. VGo Commc’ns, Inc., 751 F.3d 1327, 1351–1352 (Fed. Cir. 2014)). Additionally, to the extent that Petitioner is correct that a person of ordinary skill in the art would have recognized a strength benefit of having two locking recesses, that does not explain why a person of ordinary skill in the art would have added a curved locking surface, as opposed to, for example, another substantially planar locking surface like the one at Miller’s contact point 42. Pet. 36–39; Ex. 1004, 5:19–34. And Petitioner does not identify, much less substantiate, any other reason that a person of ordinary skill in the art would have had for combining a curved locking surface with an inclined horizontal locking surface in Miller’s cladding panel. Pet. 36–39. Because Petitioner has not persuasively addressed claim 1’s requirement that its dual locking recesses include one with a curved horizontal locking surface, Petitioner has not demonstrated a reasonable likelihood of prevailing on its assertion that independent claim 1 would have been obvious over Miller. E.g., Pet. 7–8, 34–39. Additionally, this deficiency is not remedied in Petitioner’s challenges to dependent claims 2–15 based on Miller. E.g., Pet. 34, 40–50. Accordingly, Petitioner does not establish a reasonable likelihood of prevailing on its position that dependent claims 2–15 would have been obvious over Miller.” slip op. at 23

  § 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 11,421,425
• Intelligent Wellhead Systems, Inc. v. Downing Wellhead Equipment, LLCInstitution denied
  PTAB · Jun 5, 2024 · IPR2024-00256 · APJ Benjamin D M Wood · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing: Krupa was not established as prior art, and the other grounds failed to show key claim limitations.

  RulingsInstitution decision

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

    “We have authority under 35 U.S.C. § 314, which provides that an inter partes review may not be instituted “unless . . . 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). Upon considering the Petition, we determine that Petitioner has not satisfied this threshold requirement, and therefore we do not institute inter partes review of claims 1–3, 6, 8–10, 13, 15–18, 25–28, 31, and 36 of the ’779 patent.” slip op. at 2

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artDecided for patent owner

    “Here, however, Krupa’s actual filing date is after the ’779 patent’s filing date. Compare Ex. 1003, code (22) (Krupa filed Feb. 18, 2022) with Ex. 1001, code (22) (’779 patent filed Jul. 29, 2021). Petitioner therefore must seek the benefit of the earlier February 25, 2021 filing date of the Krupa Provisional. 35 U.S.C. § 102(d)(2). Pet. 6. Under subsection 102(d)(2), to qualify as prior art, a reference patent or published patent application is considered effectively filed as of the filing date of its provisional application only to the extent that the provisional “describes the subject matter” relied on in the reference patent document. We cannot presume that the Krupa Provisional describes the subject matter in Krupa that the Petition relies on, however. See Dynamic Drinkware, 800 F.3d at 1380 (“[B]ecause the PTO does not examine priority claims unless necessary, the Board has no basis to presume that a reference patent is necessarily entitled to the filing date of its provisional application.”). The burden to make this showing thus falls squarely on Petitioner. But Petitioner does not explain how the Krupa Provisional supports the relevant subject matter relied on in Krupa. In fact, Petitioner did not introduce the Krupa Provisional into the record, so it would not be possible to do so.7 Accordingly, Petitioner has not adequately shown that Krupa is prior art, and therefore Petitioner does not have a reasonable likelihood of prevailing with respect to any of the claims challenged in Grounds 1, 2, and 4, which grounds rely on Krupa in whole or substantial part.” slip op. at 11

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

    “We are not persuaded that Kajaria teaches limitation [1.5] or limitation [8.7]. First, Kajaria does not expressly teach these limitations, and, indeed, Petitioner does not appear to contend as much. Instead, Petitioner contends that one of ordinary skill in the art would have understood paragraph 35 of Kajaria as “includ[ing]” this step. But paragraph 35 teaches that “it may be desirable to provide pressurized fluid to a particular well at a particular time or place in the frac cycle, while simultaneously stopping the flow of fluid into another well that is in a different place in the frac cycle.” Ex. 1004 ¶ 35 (emphasis added). Providing pressurized fluid to one well which simultaneously stopping flow to another well suggests that fluid flow is not being provided to both wells at the same time. Second, “direct[ing] flow between wells continuously” is not the same as pumping flow to wells continuously, as Petitioner’s argument suggests. Paragraph 35 of Kajaria states that it is possible to direct flow between wells continuously “simply by opening or closing the valves 66 associated with individual wells,” and is silent regarding whether the frac pumps are on. This suggests that “direct[ing] flow between wells continuously” only refers to the valve lineup—i.e., at least one valve 66 is open “continuously’’—and does not mean providing fluid flow continuously. Interpreting the “continuously” statement in paragraph 35 in this manner is consistent with our interpretation of the “simultaneously stopping” sentence in the same paragraph, discussed above.” slip op. at 17

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

    “At this stage of the proceeding, we do not perceive the need to expressly construe any claim terms, as the threshold question of institution can be decided without doing so. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (approving Board decision not to construe claim language where construction is not material to the dispute). See Pet. 14; see also Prelim. Resp. 40.” slip op. at 9

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 11,401,779
• Mercedes-Benz USA, LLC v. Westport Fuel Systems Canada Inc.Institution denied
  PTAB · Jun 20, 2023 · IPR2023-00351 · APJ Frances L Ippolito · IPR · Institution

  The Board denied institution on all challenged claims because the claims receive the provisional’s earlier priority date, making Gottlieb unavailable as prior art.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition, Preliminary Response, and the evidence of record, we determine that the information presented in the Petition does not establish a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we do not institute inter partes review of claims 1–3, 6, 13, 14, 16–22, 26–28, and 41 of the ’138 patent based on the grounds raised in the Petition.” slip op. at 2

  • Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner

    “Reading the ’791 provisional’s description of the hydraulic link in conjunction with Figure 2, one skilled in the art reasonably would have surmised that, in order for the trapped fluid within the cavity to act as a solid and transmit force, its thickness must remain unchanged, or, in the words of claim 1, be “substantially constant.” Indeed, according to the ’791 provisional, the fluid acts as a solid because O-ring seals and extremely small clearances between needle piston 72 and chamber cap 86 prevent the trapped fluid from flowing around the piston upon actuation of the force, which clearly supports that the thickness of the fluid must remain substantially constant. Those disclosures reasonably convey to one skilled in the art that the inventor had possession of the hydraulic link limitation of claim 1, including it having a substantially constant thickness, as of the ’791 provisional’s filing date. Likewise, we observe that claim 41 recites that the “hydraulic fluid acts as an incompressible solid so that movement caused by the actuation of said dimensionally responsive member is transmitted through said fluid layer.” Ex. 1001, 20:53–56 (emphases added). Again, the ’791 provisional discloses that the “trapped fluid acts as a solid and transmits the movement of the magnetostrictive material 40 to the needle valve 14, causing it to lift against the needle spring 16.” Id. at 12:5–13:14 (emphases added). We find, based on this description of the hydraulic link, with Figure 2, one skilled in the art reasonably would have surmised that, in order for the trapped fluid within the cavity to act as a solid and transmit force, it would act as an incompressible solid. Petitioner does not further dispute that the ’791 provisional discloses the remaining limitations of the challenged claims. As such, the evidence of record demonstrates sufficient written description support in the ’791 provisional for the challenged claims. Thus, the challenged claims are entitled to an effective filing date of October 15, 1999, which means that Gottlieb does not qualify as prior art. And because Gottlieb forms the basis of all the challenges, its exclusion is fatal to the Petition.” slip op. at 12

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

    “Reading the ’791 provisional’s description of the hydraulic link in conjunction with Figure 2, one skilled in the art reasonably would have surmised that, in order for the trapped fluid within the cavity to act as a solid and transmit force, its thickness must remain unchanged, or, in the words of claim 1, be “substantially constant.” Indeed, according to the ’791 provisional, the fluid acts as a solid because O-ring seals and extremely small clearances between needle piston 72 and chamber cap 86 prevent the trapped fluid from flowing around the piston upon actuation of the force, which clearly supports that the thickness of the fluid must remain substantially constant. Those disclosures reasonably convey to one skilled in the art that the inventor had possession of the hydraulic link limitation of claim 1, including it having a substantially constant thickness, as of the ’791 provisional’s filing date. Likewise, we observe that claim 41 recites that the “hydraulic fluid acts as an incompressible solid so that movement caused by the actuation of said dimensionally responsive member is transmitted through said fluid layer.” Ex. 1001, 20:53–56 (emphases added). Again, the ’791 provisional discloses that the “trapped fluid acts as a solid and transmits the movement of the magnetostrictive material 40 to the needle valve 14, causing it to lift against the needle spring 16.” Id. at 12:5–13:14 (emphases added). We find, based on this description of the hydraulic link, with Figure 2, one skilled in the art reasonably would have surmised that, in order for the trapped fluid within the cavity to act as a solid and transmit force, it would act as an incompressible solid. Petitioner does not further dispute that the ’791 provisional discloses the remaining limitations of the challenged claims. As such, the evidence of record demonstrates sufficient written description support in the ’791 provisional for the challenged claims. Thus, the challenged claims are entitled to an effective filing date of October 15, 1999, which means that Gottlieb does not qualify as prior art. And because Gottlieb forms the basis of all the challenges, its exclusion is fatal to the Petition.” slip op. at 12

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artNot reached

    “Petitioner does not further dispute that the ’791 provisional discloses the remaining limitations of the challenged claims. As such, the evidence of record demonstrates sufficient written description support in the ’791 provisional for the challenged claims. Thus, the challenged claims are entitled to an effective filing date of October 15, 1999, which means that Gottlieb does not qualify as prior art. And because Gottlieb forms the basis of all the challenges, its exclusion is fatal to the Petition.” slip op. at 13

  § 102 anticipation§ 112 disclosure
  Patents in suitUS 6,575,138
• Mercedes-Benz USA, LLC v. Westport Fuel Systems Canada Inc.Institution denied
  PTAB · Jun 20, 2023 · IPR2023-00352 · APJ Carl M Defranco · IPR · Institution

  The Board denied institution because the challenged claims are entitled to the provisional’s earlier filing date, making Gottlieb unavailable as prior art for every asserted ground.

  RulingsInstitution decision

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

    “For a patent to claim the benefit of the filing date of its provisional application, the provisional application must comply with the written description requirement of 35 U.S.C. § 112. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To show sufficient written description support, the provisional must reasonably convey to those skilled in the art that the inventor had possession of the later-claimed subject matter as of the provisional’s filing date. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The written description inquiry is a question of fact, and, as such, “the level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.” Ariad, 598 F.3d at 1351.” slip op. at 9

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner

    “The hydraulic link 22 consists of a hydraulic cavity 84 formed by hydraulic chamber 28 and hydraulic chamber cap 86. The cavity 84 is filled with viscous fluid. Within the chamber 28 is located the hydraulic piston part 72 of the needle valve 15. The chamber 28 is fitted around the hydraulic piston 72. O-ring seals 90 are located in the hydraulic chamber cap 86 and in the bottom of the hydraulic chamber 28 to prevent the fluid from leaking out of the cavity 84. The diametrical clearance between the outside diameter of the hydraulic piston 72 and the inside diameter of the hydraulic chamber 28 is extremely small (on the order of 50 to 250 microns). The exact clearance is dependent on the viscosity of the chosen fluid. The hydraulic flow in this clearance . . . is very small. The hydraulic fluid . . . acts as a solid during fast motions, because there is little flow going around the needle piston. Because the actuation occurs suddenly (on the order of 200 μs), the hydraulic fluid between the hydraulic chamber 28 and the needle valve piston 72 does not have the time to flow around the piston 72. Instead, the trapped fluid acts as a solid and transmits the movement of the magnetostrictive material 40 to the needle valve 14, causing it to lift against the needle spring 16. Id. at 12:5–13:14 (emphases added). Reading the ’791 provisional’s description of the hydraulic link in conjunction with Figure 2, one skilled in the art reasonably would have surmised that, in order for the trapped fluid within the cavity to act as a solid and transmit force, its thickness must remain unchanged, or, in the words of claim 1, be “substantially constant.” Indeed, according to the ’791 provisional, the fluid acts as a solid because O-ring seals and extremely small clearances between needle piston 72 and chamber cap 86 prevent the trapped fluid from flowing around the piston upon actuation of the force, which clearly supports that the thickness of the fluid must remain substantially constant. Those disclosures reasonably convey to one skilled in the art that the inventor had possession of the hydraulic link limitation of claim 1, including it having a substantially constant thickness, as of the ’791 provisional’s filing date.” slip op. at 10

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

    “conjunction with Figure 2, one skilled in the art reasonably would have surmised that, in order for the trapped fluid within the cavity to act as a solid and transmit force, its thickness must remain unchanged, or, in the words of claim 1, be “substantially constant.” Indeed, according to the ’791 provisional, the fluid acts as a solid because O-ring seals and extremely small clearances between needle piston 72 and chamber cap 86 prevent the trapped fluid from flowing around the piston upon actuation of the force, which clearly supports that the thickness of the fluid must remain substantially constant. Those disclosures reasonably convey to one skilled in the art that the inventor had possession of the hydraulic link limitation of claim 1, including it having a substantially constant thickness, as of the ’791 provisional’s filing date. Mercedes does not further dispute that the ’791 provisional discloses the remaining limitations of the challenged claims. As such, the evidence of record demonstrates sufficient written description support in the ’791 provisional for the challenged claims. Thus, the challenged claims are entitled to an effective filing date of October 15, 1999, which means that Gottlieb does not qualify as prior art. And because Gottlieb forms the basis of all the challenges, its exclusion is fatal to the Petition.” slip op. at 11

  § 102 anticipation§ 112 disclosure
  Patents in suitUS 6,298,829
• Whitewater West Industries, Ltd. v. American Wave Machines, Inc.Institution denied
  PTAB · Nov 16, 2022 · IPR2022-01032 · APJ Carl M Defranco · IPR · Institution

  The Board denied institution because WhiteWater did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted prior art.

  RulingsInstitution decision

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

    “Because Black does not disclose or otherwise suggest the claim limitations requiring “a wave-damping trough . . . wherein when the wave generator is actuated, . . . the wave energy is dampened by the static body of water retained in the wave-damping trough,” we determine that WhiteWater’s Petition fails to support a reasonable likelihood that claim 1 is unpatentable as anticipated by, or obvious over, Black. And because WhiteWater’s challenge of dependent claims 2, 4–6, and 9 suffers the same deficiency, we likewise determine that WhiteWater falls short in demonstrating a reasonable likelihood that those dependent claims are unpatentable as anticipated by, or obvious over, Black.” slip op. at 12

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

    “Having reviewed the parties’ proposed constructions, we do not perceive the need to expressly construe any of these claim terms, as the threshold question of institution can be decided regardless of their construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor 6 AWM indicated in an email to the Board, dated Sept. 16, 2022, that it “intends to file a request for a Certificate of Correction” relating to this apparent typographical error. See 37 C.F.R. § 1.323. Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (approving Board decision not to construe claim language where the construction is not material to the dispute).” slip op. at 7

  • Skill levelSkill level petitioner adoptedOther

    “WhiteWater asserts that one skilled in the art of wave pools “would have knowledge and familiarity with: (i) design of mechanical structures and (ii) fluid characteristics and the interaction of fluid forces upon mechanical structures” and that this knowledge “could be obtained by successfully completing a Master’s degree in Mechanical Engineering or at least 5 years of experience in a job working with control systems, including designing or implementing such wave generation machines and wave-dampening pool structures.” Pet. 28. AWM does not contest that assertion. See Prelim. Resp. 5–6. Nor do we discern any reason to question its credibility. Thus, for purposes of institution, we review the asserted prior art mindful of the level of skill in the art as stated by WhiteWater.” slip op. at 8

  • Expert testimonyPatent owner expert creditedOther

    “Foremost, we note that neither WhiteWater nor its declarant points to any credible evidence for why one skilled in the art would understand Mount Olympus’s trough to have a wave-damping effect. See Pet. 44, 47. Indeed, there is absolutely no disclosure in Mount Olympus, express or otherwise, of a wave traveling over the island, let alone being dampened by water in the trough. More likely, the configuration and contours of the trough, and its location behind the island, suggest an area of shallow water where people can safely congregate without entering the deeper surf pool where waves are generated. See Ex. 1005, 16 (depicting cross-sectional views of the trough area of the pool relative to the surf area of the pool). Also, there is no indication whatsoever that, upon activation of the wave generator, a wave “travels over” Mount Olympus’s island, i.e., mound, and is dampened by a “static body of water,” as required by claim 1. Instead, Mount Olympus’s figures show the water in the trough at the same elevation as the water in the surf pool, namely, 842’-0,” which indicates that the trough is nothing more than a channel for water to flow around the island. See Ex. 2004 ¶¶ 89–92, 107–108 (annotating Mount Olympus’s figure on page 11 to show as much). And because there is no separation between the water in the surf pool and the water in the trough, meaning they are indivisible, water from the deeper surf pool would necessarily flow around, and circulate through, Mount Olympus’s trough. See id. ¶¶ 112– 113. As such, we fail to see how one skilled in the art would view Mount Olympus’s trough as meeting the “static body of water” limitation.” slip op. at 14

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 10,662,663
• Zak Designs, Inc. v. Camelbak Products, LLCInstitution denied
  PTAB · Oct 25, 2022 · IPR2022-00803 · APJ Carl M Defranco · IPR · Institution

  The Board denied institution because Zak did not show a reasonable likelihood that any challenged claim was unpatentable under the asserted anticipation or obviousness grounds.

  RulingsInstitution decision

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

    “Yamashita meets each of the recited claim elements. See id. at 15–42. Based on our review of Zak’s mapping, however, we find that Zak fails to show that Yamashita discloses or otherwise suggests element [1.11] of claim 1, namely, “a user release mechanism adapted to automatically disengage the first and second catch structures upon actuation of the user release mechanism and thereby release the mouthpiece assembly to move via its bias from the stowed configuration to the dispensing configuration.”” slip op. at 10

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

    “But, although Figures 7 and 9 of Yamashita depict the catch structures engaged for stowed configuration of straw 20 and disengaged for dispensing configuration of the straw, Zak ignores intervening Figure 8 of Yamashita, which shows that merely sliding user release mechanism 33 to the left does not “automatically disengage the first and second catch structures” so as “to release of mouthpiece assembly 20 to move via its bias from the stowed configuration to the dispensing configuration,” as required by claim 1. That is because, in addition to user release mechanism 33 on the left-most end of rotating hood 35, Yamashita’s Figure 8 shows a snap-fit closure in the form of a protrusion and corresponding recess on the right-most end of hood 35 that keeps the hood in a closed state despite actuation of user release mechanism 33.6 See Ex. 1006, Fig. 8. Indeed, Yamashita explains that the straw remains in a “closed state,” i.e., a stowed configuration, despite the leftward movement of user release mechanism 33: “when the slider 33 moves to the left in the direction of the arrow X shown in FIG. 8, the hood stopper 33d separates from the hood 35 . . . [a]t this moment, [] the opening of the straw 20 is in the closed state due to the closed hood 35.” Id. at 19– 20. That hood 35 is still “closed” after actuation of user release mechanism 33 can only mean that the snap-fit closure on the right-most end of hood 35 must be actuated to automatically open the hood and release the straw from a stowed configuration to a dispensing configuration.” slip op. at 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not found

    “We find that Zak’s reasoning for the asserted combination lacks rational basis. In particular, we fail to comprehend why one skilled in the art would look to Dall’Agnese’s elastic tab given that Yamashita’s snap-fit closure is already pressure-actuated for conveniently popping open hood 35. Indeed, Zak’s declarant expressly admits that one skilled in the art would have known from “studying the other teachings in Yamashita and from the general context” that “the user might apply pressure to the hood with the thumb to disengage these catch structures and pop the hood open.” Ex. 1003 ¶115 (citing Ex. 1006 ¶ 59). So, given Zak’s admission that Yamashita’s snap-fit closure already has the capability of being pressure-actuated, there is no need to add Dall’Agnese’s user release mechanism for performing the same function. Thus, Zak fails to provide sufficient reasoning with evidentiary underpinning for combining Dall’Agnese’s elastic tab with Yamashita’s snap-fit closure. As such, Zak fails to demonstrate a reasonable likelihood of showing that claims 1 and 21 are unpatentable as obvious over Yamashita and Dall’Agnese. And, because Zak’s challenge of dependent claims 2 and 5–9, which are not argued separately, suffers the same deficiency of a reason to combine Yamashita and Dall’Agnese t. 83–90), we likewise determine that Zak falls short in demonstrating a reasonable likelihood that those dependent claims are unpatentable as obvious over Manganiello and Dall’Agnese.” slip op. at 15

  § 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 9,782,028
• Cartessa Aesthetics, LLC / Aesthetics Biomedical, Inc. v. Serendia, LLCInstitution denied
  PTAB · Aug 12, 2022 · IPR2022-00593 · APJ Scott Raevsky · IPR · Institution

  Institution was denied on the merits because neither asserted obviousness combination showed a reasonable likelihood of rendering claims 1–18 unpatentable.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless it is determined that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. Upon consideration of the evidence and arguments in the Petition (including its supporting testimonial evidence) as well as the evidence and arguments in the Preliminary Response, for the reasons below, we determine that the Petition fails to show a reasonable likelihood that Petitioner would prevail with respect to any of the challenged claims. We thus deny institution of inter partes review.” slip op. at 2

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

    “The claims recite, “apply energy to body segments around each electrode rather than to body segments between the electrodes.” Ex. 1001, 10:56–58 (independent claim 1, emphasis added); see also id. at 11:22–25 (independent claim 10). The plain and ordinary meaning of this limitation, as indicated by the phrase “rather than,” precludes applying energy to body segments that extend continuously from one electrode to another electrode. This construction is consistent with the Specification, for example, Figure 5, a copy of which we reproduce below: As shown in Figure 5 of the ’379 patent, energy field 909 occurs around each individual needle 301, without extending from needle-to-needle. See supra § II.B (summarizing Figure 5). The Specification describes certain embodiments in which “the temperature is raised about the tip of each needle, not between needles.” Ex. 1001, 3:32–33 (emphasis added). We understand that by raising the temperature “about the tip of each needle,” while not raising temperature “between needles,” the application of energy would only occur “around each electrode rather than . . . between the electrodes,” as recited in the claims. Id.” slip op. at 13

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

    “Turning to our analysis, we agree with Patent Owner that Petitioner’s own annotated Figures (that is, Mehta’s Figures 13A and 13B) depict energy application that extends continuously between electrodes. As explained above, we construe “apply energy to body segments around each electrode rather than to body segments between the electrodes” to mean that energy application occurs around each electrode without such energy application fully extending from one electrode to another electrode. In other words, the energy application must be configured such that energy application between electrodes does not extend continuously between the electrodes. Instead, Mehta discloses, and Figures 13A and 13B depict, fractional lesions 2 that extend continuously between pairs of electrode probes 105. See Mehta ¶ 241 (referencing Figure 13A); see also id. ¶ 242 (referencing Figure 13B). Mehta discloses that Figures 13A and 13B “show[] an example illustration of an array of probes 108 comprising five electrode pairs 105 inserted into a reticular dermis layer 19 to create a series of discrete fractional lesions 2 leaving tissue in the adjacent epidermal layer 16 and subcutaneous layer 12 undamaged.” Id. ¶ 241; see also id. ¶ 242. Mehta explains that “[t]his is accomplished by passing current 107 between adjacent electrodes 104 of opposite polarity in the electrode pair.” Id. ¶ 241. We refer again to Petitioner’s annotated copy of Mehta Figure 13A, below: As we noted above, Mehta’s Figure 13A above depicts energy application by five bipolar electrodes. Pet. 47; Ex. 1005 ¶¶ 173, 243. Petitioner’s annotation (1) asserts that no energy is deposited in body segments between each electrode, and depicts a green highlighted section between the first pair of bipolar electrodes. Pet. 47. This annotation is unpersuasive because below it in red, energy concentration is shown between that electrode pair. Consequently, energy is applied to body segments between those electrodes, so it is not the case that energy is applied around each of those electrodes “rather than”—i.e., instead of—“body segments between the electrodes.”” slip op. at 21

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityOther

    “To that end, our reviewing court and this Board repeatedly point to the case of In re Wyer, 655 F.2d 221 (CCPA 1981) for the proposition that a video is a “printed publication” so long as it is publicly accessible. There, the court explained that “printed publication” should be approached as a unitary concept. The traditional dichotomy between “printed” and “publication” is no longer valid. Given the state of technology in document duplication, data storage, and data retrieval systems, the “probability of dissemination” of an item very often has little to do with whether or not it is “printed” in the sense of that word when it was introduced into the patent statutes in 1836. . . . [T]he printed publication provision was designed to prevent withdrawal by an inventor, as the subject matter of a patent, of that which was already in the possession of the public. Thus, the question to be examined under [the statute] is the accessibility to at least the pertinent part of the public, of a perceptible description of the invention, in whatever form it may have been recorded. Id. at 226 (emphases added). In other words, accessibility to the relevant public is the “criterion” by which a prior art reference is judged when resolving the “printed publication” inquiry, not whether the reference is “printed” in the word’s strictest sense. See In re Klopfenstein, 380 F.3d 1345, 1350 n.2 (Fed. Cir. 2004).” slip op. at 40

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,058,379
• Askeladden L.L.C. v. Mobile Equity Corp.Institution denied
  PTAB · Jun 1, 2022 · IPR2022-00380 · APJ Hyun J Jung · IPR · Institution

  Institution was denied because Petitioner failed to show a reasonable likelihood of prevailing on any challenged claim 1–19.

  RulingsInstitution decision

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

    “In inter partes reviews, the petitioner bears the burden of proving unpatentability of the challenged claims, and the burden of persuasion never shifts to the patent owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To institute an inter partes review, a petitioner must show “a reasonable likelihood” of prevailing with respect to at least one of the challenged claims. 35 U.S.C. § 314.” slip op. at 7

  • Skill levelSkill level petitioner adoptedOther

    “Petitioner asserts that one of ordinary skill in the art “would have a bachelor’s degree in computer science, computer engineering, data science, electrical engineering, or a related study, and would have at least one or two years of experience with point-of-sale and payment processing systems, and systems.” Pet. 17 (citing Ex. 1002 ¶¶ 82–84). For purposes of the Preliminary Response, Patent Owner does not dispute Petitioner’s proposed level of ordinary skill and does not propose its own level of ordinary skill. Prelim. Resp. 30 n.24. We adopt Petitioner’s asserted level of ordinary skill only to determine whether there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition. This level of skill in the art is consistent with the disclosure of the ’236 patent and the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (Citing Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 8

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

    “Petitioner proposes interpretations for “mobile device,” “point-of-sale terminal,” “mobile enablement center,” “service data point,” and “register.” Pet. 10–16. Patent Owner responds that “[t]he Board does not need to expressly construe any claim elements to deny the Petition.” Prelim. Resp. 10. likelihood of prevailing does not depend on a particular interpretation for any claim term, we determine that no claim term requires express interpretation. 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)).” slip op. at 9

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

    “asserted merchant identifier in Krasnyansky, the site’s creditID, identifies a merchant terminal, as required by claim 1. As Patent Owner points out, Krasnyansky expressly discloses that creditID identifies an account in a database, not a terminal. Prelim. Resp. 31–36. In particular, Krasnyansky teaches that “both the Wallet and the seller-site must present a unique identifier to the Payserver,” the identifiers “are the key[s] to all accounts in the Payserver’s database,” “each account has a pair of identifiers, both uniquely identifying the account in the database,” “[o]ne of the two identifiers is used in all account-debiting operations,” the identifiers “are seller-site requires the debitID of the Wallet and the creditID of the site.” Ex. 1005, 9:10–18; see also id. at 36:28–37:8 (describing similarly). Petitioner appears to argue that identifying an account in a database would also identify the merchant and merchant terminal. See Pet. 24–26. Petitioner, however, does not point to any portion of Krasnyansky that supports a site’s creditID further identifying a Web site or the computer hosting the Web site. See id. Krasnyansky, instead, only provides express support for the site’s creditID identifying the account. See Ex. 1005, 9:10–18. Krasnyansky also indicates that a site nickname, rather than the site’s creditID, identifies the Web site in one embodiment (see id. at 15:20–22), which further undermines Petitioner’s argument that identifying the account would identify the Web site and the computer running and hosting a Web site. Furthermore, Krasnyansky describes using site nickname and creditID to complete the transaction without any need for identifying the computer running and hosting debit-site 400. See id. at 15:12–16:22. Petitioner does not address these portions of Krasnyansky. See Pet. 24–26. Petitioner, thus, does not argue sufficiently that Krasnyansky requires identifying the computer running and hosting a site to complete any transaction. See id.” slip op. at 19

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,589,236

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.