• Dynamic Air Inc. v. M-I Drilling Fluids UK Ltd.Some claims unpatentable
  PTAB · May 23, 2017 · IPR2016-00264 · APJ William V Saindon · IPR · Final written decision

  Claims 1–10 and 12–30 are unpatentable as obvious over the Dietzen-led combination; claim 11 was not shown unpatentable because Toth did not establish the ISO-container limitation.

  RulingsFinal written decision

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

    “1. “adapted to” This term appears in claims 11 and 18–20. Petitioner proposes “adapted to” means “capable of.” Pet. 9. We agree, insofar as these limitations require structure to have qualities or features allowing it to meet the claim language. For example, claim 18 would require a vessel that actually can “withstand a pressure of about 4 bar to about 8 bar.” In other words, the “adapted to” language distinguishes from those structures that are not physically capable of meeting the limitation. Patent Owner argues that Petitioner’s construction is overly broad. PO Resp. 17–19. Reviewing Patent Owner’s arguments, however, is not clear to us what Patent Owner disputes to be the effective difference. We determine that no explicit construction of “adapted to” is necessary.” slip op. at 8

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

    “Patent Owner that Petitioner’s initial construction, now abandoned, was too broad. Specifically, Petitioner’s abandoned construction did not account for the fact that the mixture comes from a particular origin (drilling of an oil well) and that the “some resistance to flow” aspect was also too broad given the particular materials involved. However, the aspect of Patent Owner’s proposed construction that would require a gravity test is not supported by the ’217 patent. Instead, we adopt a construction that is essentially a combination of Petitioner’s new claim construction (see Pet. Reply 10) and Patent Owner’s claim construction, for the reasons below. The ’217 patent does not describe drill cuttings or paste with any reference to flow in relation to gravity. The ’217 patent describes the material conveyed therein in several different ways, but it is always referring to the same material. The labels that the ’217 patent gives to this material are: “thick heavy paste” (Ex. 1001, 1:6, 22–23, 28, 32, 42–43, 2:43), “drill cuttings” (id. at 1:28, 43; see also id. at 1:21 (simply, “cuttings”)), “non-free flowing paste” (id. at 1:38, 42), and “thick and/or heavy paste or clay like material” (id. at 1:42–43). These labels are often equated to one another in the ’217 patent: “cuttings . . . in the form of a very thick heavy paste[]” (id. at 1:21–23), “thick heavy pastes . . . e.g. drill cuttings” (id. at 1:28), “non- free flowing paste[] . . . e.g. oil rig drill cuttings” (id. at 1:42–43). As such, the ’217 patent considers drill cuttings to be a thick heavy paste as well as a non-free flowing paste. Thus, using the terms from the ’217 patent, drill cuttings are a non-free flowing paste. We do not adopt Patent Owner’s proposed construction, which involves adding some sort of gravity test to the material to determine whether or not it is a non-free flowing paste. According to ’217 patent, the non-free flowing paste is drill cutting material, which in turn is a screened material generated by the drilling of an oil well. Ex. 1001, 1:19–23,15 28, 42–43. The ’217 patent, therefore, defines the relevant “paste” material, e.g., drill cuttings, by the way in which it arrives at the pressure vessel (screening), consistent with our construction in IPR2016-00256, and not by any particular gravity test. See Ex. 2055 ¶ 10 (Patent Owner’s declarant, Mr. Lauder, testifying that “[t]he material coming out of the shaker house is referred to as drill cuttings and often has the consistency of a thick, heavy paste, or as claimed in the ‘217 patent, non-free flowing, heterogeneous, multicomponent, earth extracted paste”). Thus, we are not persuaded that the claim requires a gravity test, as none is mentioned or alluded to in the specification, and is not needed given the way that the relevant material is described in the specification.” slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Although both parties agree that the level of ordinary skill involves a bachelor’s degree and familiarity with similar subject matter, Petitioner proposes experience in the design of systems, whereas Patent Owner merely proposes experience with the systems themselves. We agree with Petitioner that a person of ordinary skill in the art designs devices, rather than is merely familiar with them (e.g., an operator or a manufacturer), as proposed by Patent Owner. See Ex. 1031 ¶ 28; Ex. 1002, 2:25–27 (indicating that those skilled in the art would understand “that the critical cone angle will vary depending upon the material being conveyed”). Accordingly, we adopt Petitioner’s proposed level of ordinary skill; though we note this difference would not affect our analysis.” slip op. at 15

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “testimony of Petitioner’s expert, Dr. Carson, taken out of context, and also on the unsupported testimony of its expert, Dr. Brown. PO Resp. 12–15. As to the testimony of Dr. Carson, Patent Owner points out that one of Dr. Carson’s colleagues once used the term “free-flowing” in a paper. Id. at 12 (citing Ex. 1016). During cross examination relating to this paper (which was on powders, not pastes), Dr. Carson agreed that “it is possible” “to define non-free flowing in terms of gravity.” Ex. 2021, 88:17–21.16 Even if it is possible to define “non-free flowing” in terms of gravity in some context, that does not mean it is possible to define it in all contexts, let alone this particular context.17 Or, if possible, that such a definition is reasonable. Thus, we do not find the testimony of Dr. Carson to support Patent Owner’s requirement for a gravity test. As to Dr. Brown, Patent Owner relies on his testimony that a person of ordinary skill in the art “would understand that these pastes would not generally flow as a result of gravity.” PO Resp. 13 (citing Ex. 2060 ¶ 83). Dr. Brown’s cited testimony is as follows: 16 Notably, Dr. Carson does not testify with respect to pastes, drill cuttings, or anything related to the claimed material at hand. Patent Owner distinguishes pastes and drill cuttings from powders when arguing that the prior art powder-conveying pressure vessels could not be expected to convey pastes or drill cuttings. See, e.g., PO Resp. 27 (arguing that “granular solids are distinct from the non-free flowing . . . paste . . . of the claims”). 17 Exhibit 1016 is directed to the flowability of powder, not pastes, and states that “the term free flowing, so commonly used, becomes meaningless unless the specific equipment handling the material is specified.” Ex. 1016, 62. To the extent this teaching applies to pastes, what it shows is that what is “free flowing” on one piece of equipment may not be so on another, and supports Petitioner’s argument that adding a gravity test would render the term indefinite. Pet. Reply 12. The ’217 Patent goes further to establish that “thick heavy paste material[s]” are different from “relatively free flowing material” or “small batches of wet sticky materials.” Ex. 1002 at 1:35-36. Because the material conveyed in the ’217 Patent is contrasted with “relatively free flowing material,” the ’217 Patent’s use of the term “non-free flowing” is consistent with what a person of ordinary skill in the art would understand it to mean, and that is “does not generally flow freely by gravitational force.” Ex. 2060 ¶ 83. Dr. Brown’s testimony does not provide any credible evidence in support of his conclusion that the ’217 patent’s contrast between “thick heavy paste” and “free flowing material” has something to do with gravity. Similarly, his testimony that “‘non-free flowing’ is used to describe a material that ‘does not generally flow freely by gravitational force’” lacks supporting evidence or explanation. Id. ¶ 80; 37 C.F.R. § 42.65(a). We do not find his testimony persuasive.” slip op. at 12

  Patent outcomesUS 6,709,217 mixed
  Claim construction§ 103 obviousness
  Patents in suitUS 6,709,217
• Dynamic Air Inc. v. M-I Drilling Fluids UK Ltd.Some claims unpatentable
  PTAB · May 23, 2017 · IPR2016-00263 · APJ William V Saindon · IPR · Final written decision

  Claims 1–10 and 12–49 are unpatentable as obvious over the Dietzen-led grounds; claim 11 was not shown unpatentable.

  RulingsFinal written decision

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

    “1. “adapted to” This term appears in claims 11, 17–19, and 30–49. Petitioner proposes “adapted to” means “capable of.” Pet. ’262, 10; Pet. ’263, 10. We agree, insofar as these limitations require structure to have qualities or features allowing it to meet the claim language. For example, claim 17 would require a vessel that actually can “withstand a pressure of about 4 bar to about 8 bar.” In other words, the “adapted to” language distinguishes from those structures that are not physically capable of meeting the limitation. Patent Owner argues that Petitioner’s construction is overly broad. PO Resp. ’262, 17–19; PO Resp. ’263, 16–19. Reviewing Patent Owner’s arguments, however, is not clear to us what Patent Owner disputes to be the effective difference. We determine that no explicit construction of “adapted to” is necessary.” slip op. at 10

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

    “Reviewing the arguments and evidence before us, we agree with Patent Owner that Petitioner’s initial construction, now abandoned, was too broad. Specifically, Petitioner’s abandoned construction did not account for the fact that the mixture comes from a particular origin (drilling of an oil well) and that the “some resistance to flow” aspect was also too broad given the particular materials involved. However, Patent Owner’s proposed construction, which would require a gravity test, is not supported by the ’062 patent. Instead, we effectively adopt a combination of Patent Owner’s proposed construction and Petitioner’s, for the reasons explained below.” slip op. at 12

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Term construed patent owner constructionDecided for patent owner

    “3. “means for transporting” This term appears in claims 39, 40, 46, and 47. Petitioner proposes the term is a means-plus-function limitation having a function of “transporting [the] pressure vessel to a discharge station” and corresponding structure of “a ship, crane, and road vehicle.” Pet. ’263, 12 (citing Ex. 1004, Fig. 1, Fig. 6, 5:8–11, 5:59–63, 6:17–31). Patent Owner proposes a similar construction. PO Resp. ’263, 20 (using the term “boat” instead of “ship”). The constructions are effectively identical. Our Decision does not turn on which proposed construction we choose; we adopt the Patent Owner’s proposed construction. 4. “means for transferring” This term appears in claims 44 and 45. Petitioner proposes the term is a means-plus-function limitation having a function of “transferring the nonfree flowing drill cuttings from a second vessel to a third vessel” and corresponding structure of “a conduit, pipe, or flexible hose.” Pet. ’263, 12– 13 (citing Ex. 1004, Fig. 1, Fig. 6, 5:8–11, 5:59–63, 6:17–31). Patent Owner proposes a similar construction, but with more exemplary corresponding structures. PO Resp. ’263, 21 (also including “compressed gas[/air],” “a connector,” and “a hose”). Petitioner’s Reply does not discuss the construction of “means for transferring.” Our Decision does not turn on which proposed construction we choose; we adopt Patent Owner’s proposed construction because it is a slightly broader reasonable interpretation.” slip op. at 18

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner

    “The original claims of the ’217 patent were rejected as anticipated by Curtis, which had pulsed-jet aerators in the cone of the pressure vessel. Ex. 2017, 232, 3:7–11, 6:59–64. After a telephone interview, during which the Examiner and Patent Owner “[d]iscussed [a] proposed amendment” (id. at 284), the Examiner proposed an Examiner’s Amendment adding that the conveyance gas was “the sole means for inducing movement [of the material]” (see, e.g., id. at 322). The Examiner set forth the scope of the “sole means” limitation: “heat addition, aerating action (i.e. chopping up of material, applying a screw conveyor, etc.), or the addition of a fluidizing agent are precluded. The conveyance gas is not a fluidizing agent.” Id. Amending the claims to include the “sole means” limitation, along with the Examiner’s accompanying explanation of its scope, are clearly and unmistakably the reasons for issuance of the ’217 patent. See Edwards Lifesciences LLC v. Cook Inc., 582 F.3d 1322, 1327 (Fed. Cir. 2009) (prosecution history “provides evidence of how the [PTO] and the inventor understood the patent” (quoting Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005) (en banc) (alteration in original)).” slip op. at 19

  Patent outcomesUS 7,186,062 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 7,186,062
• Dynamic Air Inc. v. M-I Drilling Fluids UK Ltd.Some claims unpatentable
  PTAB · May 23, 2017 · IPR2016-00262 · APJ William V Saindon · IPR · Final written decision

  Claims 1–10 and 12–49 are unpatentable as obvious; claim 11 is not unpatentable because the obviousness grounds did not establish its ISO-frame limitation.

  RulingsFinal written decision

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

    “1. “adapted to” This term appears in claims 11, 17–19, and 30–49. Petitioner proposes “adapted to” means “capable of.” Pet. ’262, 10; Pet. ’263, 10. We agree, insofar as these limitations require structure to have qualities or features allowing it to meet the claim language. For example, claim 17 would require a vessel that actually can “withstand a pressure of about 4 bar to about 8 bar.” In other words, the “adapted to” language distinguishes from those structures that are not physically capable of meeting the limitation. Patent Owner argues that Petitioner’s construction is overly broad. PO Resp. ’262, 17–19; PO Resp. ’263, 16–19. Reviewing Patent Owner’s arguments, however, is not clear to us what Patent Owner disputes to be the effective difference. We determine that no explicit construction of “adapted to” is necessary.” slip op. at 10

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

    “Reviewing the arguments and evidence before us, we agree with Patent Owner that Petitioner’s initial construction, now abandoned, was too broad. Specifically, Petitioner’s abandoned construction did not account for the fact that the mixture comes from a particular origin (drilling of an oil well) and that the “some resistance to flow” aspect was also too broad given the particular materials involved. However, Patent Owner’s proposed construction, which would require a gravity test, is not supported by the ’062 patent. Instead, we effectively adopt a combination of Patent Owner’s proposed construction and Petitioner’s, for the reasons explained below. The ’062 patent describes the material conveyed therein in several different ways, but it is always referring to the same material. The labels that the ’062 patent gives to this material are: “thick heavy paste” (Ex. 1004, 1:29, 1:46–47, 1:64, 2:1, 3:11), “drill cuttings” (id. at 1:65, 2:12; see also id. at 1:45 (simply, “cuttings”)), “non-free flowing paste” (id. at 2:7–8, 11), and “thick and/or heavy paste or clay like material” (id. at 2:11–12). These labels are often equated to one another: “cuttings . . . in the form of a very thick heavy paste” (id. at 1:45–47), “thick heavy paste . . . e.g. drill cuttings” (id. at 1:64–65), “non-free flowing paste . . . e.g. oil rig drill cuttings” (id. at 2:11–12). As such, the ’062 patent considers screened drill cuttings to be a thick heavy paste as well as a non-free flowing paste and, thus, considers a thick heavy paste to be a non-free flowing paste. The ’062 patent does not discuss “non-free flowing drill cuttings,” or relate it to gravity. However, given that the ’062 patent considers “drill cuttings” to be “non-free flowing paste,” the “drill cuttings” are already “non-free flowing” according to the ’062 patent. Thus, when the claims add “non-free flowing” to “drill cuttings,” we find that they do not provide a further limitation, but rather just provide an extra description that a person of ordinary skill in the art would already understand is present if they were to read the specification. The ’062 patent is simply providing many ways to describe the same thing. There is no persuasive evidence that a person of ordinary skill in the art would understand “non-free flowing” to otherwise be a term of art. Indeed, Patent Owner’s expert, Dr. Brown, points to the exact same physical material samples to provide examples of “drill cuttings,” “non-free flowing paste,” and “non-free flowing drill cuttings.” Compare Ex. 2014 ¶ 53 with Ex. 2056 ¶ 53 with Ex. 2059 ¶ 53 with Ex. 2060 ¶ 53 (each using the same picture to describe the material).18” slip op. at 12

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Other

    “3. “means for transporting” This term appears in claims 39, 40, 46, and 47. Petitioner proposes the term is a means-plus-function limitation having a function of “transporting [the] pressure vessel to a discharge station” and corresponding structure of “a ship, crane, and road vehicle.” Pet. ’263, 12 (citing Ex. 1004, Fig. 1, Fig. 6, 5:8–11, 5:59–63, 6:17–31). Patent Owner proposes a similar construction. PO Resp. ’263, 20 (using the term “boat” instead of “ship”). The constructions are effectively identical. Our Decision does not turn on which proposed construction we choose; we adopt the Patent Owner’s proposed construction. 4. “means for transferring” This term appears in claims 44 and 45. Petitioner proposes the term is a means-plus-function limitation having a function of “transferring the nonfree flowing drill cuttings from a second vessel to a third vessel” and corresponding structure of “a conduit, pipe, or flexible hose.” Pet. ’263, 12– 13 (citing Ex. 1004, Fig. 1, Fig. 6, 5:8–11, 5:59–63, 6:17–31). Patent Owner proposes a similar construction, but with more exemplary corresponding structures. PO Resp. ’263, 21 (also including “compressed gas[/air],” “a connector,” and “a hose”). Petitioner’s Reply does not discuss the construction of “means for transferring.” Our Decision does not turn on which proposed construction we choose; we adopt Patent Owner’s proposed construction because it is a slightly broader reasonable interpretation.” slip op. at 18

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner

    “The original claims of the ’217 patent were rejected as anticipated by Curtis, which had pulsed-jet aerators in the cone of the pressure vessel. Ex. 2017, 232, 3:7–11, 6:59–64. After a telephone interview, during which the Examiner and Patent Owner “[d]iscussed [a] proposed amendment” (id. at 284), the Examiner proposed an Examiner’s Amendment adding that the conveyance gas was “the sole means for inducing movement [of the material]” (see, e.g., id. at 322). The Examiner set forth the scope of the “sole means” limitation: “heat addition, aerating action (i.e. chopping up of material, applying a screw conveyor, etc.), or the addition of a fluidizing agent are precluded. The conveyance gas is not a fluidizing agent.” Id. Amending the claims to include the “sole means” limitation, along with the Examiner’s accompanying explanation of its scope, are clearly and unmistakably the reasons for issuance of the ’217 patent. See Edwards Lifesciences LLC v. Cook Inc., 582 F.3d 1322, 1327 (Fed. Cir. 2009) (prosecution history “provides evidence of how the [PTO] and the inventor understood the patent” (quoting Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005) (en banc) (alteration in original)). The application that was issued as the ’062 patent is a direct continuation of the application that issued as the ’217 patent. The claims in the ’062 patent application did not have the “sole means” limitation required by the Examiner for allowance of the ’217 patent. Instead, the claims included the “without employing non-pneumatic means” limitation. The ’062 patent application received an obviousness-type double patenting rejection in the first Office Action, where the Examiner stated “[a]lthough the [claims in the ’217 patent and the present application] are not identical, they are not patently distinct from each other because the instant apparatus claim(s) are too close in scope with the patented method claim(s).” Ex. 2019, 629. Patent Owner did not traverse that rejection and filed a terminal disclaimer; the claims were thereafter allowed. Our understanding of the prosecution history of the ’062 patent is that the Examiner did not consider the “without employing” limitation to be meaningfully broader than the “sole means” limitation, or the Examiner would have re-instated the Curtis rejection. Instead, the Examiner stated the claims were “not patently distinct.” Ex. 2019, 629. In other words, the Examiner considered the claims in the ’062 patent to also have “precluded” “heat addition, aerating action (i.e. chopping up of material, applying a screw conveyor, etc.), or the addition of a fluidizing agent.” Ex. 2017, 322. Patent Owner acquiesced to the Examiner’s statement that the claims are not patentably distinct by not traversing the double patenting rejection and filing a terminal disclaimer to secure allowance of the claims. Ex. 2019, 651 (“please find enclosed a TERMINAL DISCLAIMER in response to the double patenting rejection”). See Biogen Idec, Inc. v. GlaxoSmithKline LLC, 713 F.3d 1090, 1097 n.6 (Fed. Cir. 2013) (disclaimer arose where the applicants “let[ ] stand an examiner’s narrow characterization of a claim term” and “adopt[ed] ... that characterization to overcome the examiner’s ... rejection”); TorPharm Inc. v. Ranbaxy Pharm., Inc., 336 F.3d 1322, 1330 (Fed.Cir.2003) (“Whether the patentee chooses to dispute the examiner’s view of matters is relevant to claim interpretation, for there a court may need to ascertain exactly what subject matter was actually examined and allowed by the PTO.”). Thus, the prosecution history of the ’062 patent simply continues the prosecution history of the ’217 patent, and leaves intact the Examiner’s and Patent Owner’s understanding regarding the scope of the amendment responsible for allowance. Accordingly, we construe the “without employing” limitation the same as the “sole means” limitation of the ’217 patent: heat addition, aerating action (i.e. chopping up of material, applying a screw conveyor, etc.), or the addition of a fluidizing agent are precluded. The conveyance gas is not a fluidizing agent.” slip op. at 19

  Patent outcomesUS 7,186,062 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 7,186,062
• Dynamic Air Inc. v. M-I Drilling Fluids UK Ltd.Some claims unpatentable
  PTAB · May 23, 2017 · IPR2016-00259 · APJ Richard E Rice · IPR · Final written decision

  Claims 1, 2, and 4–9 are unpatentable as obvious over Dietzen I and II, Ciaffone, Laster, Pneumatic Conveying, and Toth; claim 3 was not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We do not agree with Patent Owner that Petitioner’s definition of the person of ordinary skill in the art is unreasonably high, and we adopt Petitioner’s definition for purposes of our Final Written Decision. While Petitioner’s definition requires five years of design experience at the bachelor’s degree level of education, Patent Owner’s definition does not require any design experience at all. We agree with Petitioner that a person of ordinary skill in the art designs devices, and, thus, actively monitors the relevant technical literature, rather than is merely familiar with devices (e.g., an operator or a manufacturer), as proposed by Patent Owner. See Ex. 1034 ¶ 28; Ex. 1005, 2:62–64 (indicating that those skilled in the art would understand “that the critical cone angle will vary depending upon the material being conveyed”). Accordingly, we adopt Petitioner’s proposed level of ordinary skill.” slip op. at 12

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

    “We do not agree with Patent Owner’s proposal to construe “non-free flowing drill cuttings” as drill cuttings that do not generally flow freely by gravitational force. There is insufficient support in the Specification for that proposal. The Specification does not distinguish between different types of screened drill cuttings, for example, screened drill cuttings that generally flow freely by gravitational force and those that do not. While the Specification describes screened drill cuttings in various ways, it is always referring to the same material. For example, the Specification refers explicitly to “thick, heavy pastes which are normally difficult to move and 12 See Ex 1005, 1:37–39 (calling drilling fluid a special type of oil used as a lubricant.) handle” (Ex. 1005, 1:31–32), “[screened] cuttings . . . transported ashore in the form of a very thick heavy paste” (id. at 1:44–48), “thick heavy paste material (e.g., drill cuttings)” (id. at 1:66–67), “a thick heavy paste” (id. at 2:3), “a non-free flowing paste” (id. at 2:9–10), “[t]he non-free flowing paste may be a thick and/or heavy paste or clay like material, e.g. oil rig drill cuttings” (id. at 2:13–14), and “a thick heavy paste” (id. at 3:10–11). As such, the Specification characterizes screened drill cuttings as a thick heavy paste as well as a non-free flowing paste and, thus, considers a thick heavy paste to be a non-free flowing paste. We determine that the broadest reasonable interpretation consistent with the Specification of “non-free flowing drill cuttings” is “screened drill cuttings, i.e., screened material, generated by the drilling of an oil well, including a mixture of earth and drilling fluid or oil.”” slip op. at 10

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

    “Patent Owner’s arguments do not respond adequately to Petitioner’s persuasive obviousness rationale that a POSITA would have substituted a positive-pressure conveyance system in place of the negative-pressure conveyance system of Dietzen I and II because negative pressure systems are generally limited to shorter distances and lower material volumes than positive systems. Further, Patent Owner’s arguments do not address sufficiently Ciaffone’s teaching that a positive-pressure vessel with a conical bottom section can be used to convey materials without the need for bins, hoppers, hydraulic rams, screw feeders, conveyor belts, and the like. See Ex. 1006, 1:70–2:6. As explained by Petitioner, Dietzen II uses an auger to augment use of negative pressure for moving settled materials horizontally from the bottom of a vessel. Pet. Reply 15; Ex. 2021 ¶¶ 154:6–155:5. In contrast with Dietzen II’s relatively low-pressure vacuum system, a positive- pressure system such as taught by Ciaffone, with an operating pressure of up to 6.89 bar, blows materials out of the conical bottom section of the vessel. See supra Section II.C.1.b. Patent Owner further argues that a “POSITA would have discounted positive pressure given th[at] non-free flowing drill cuttings cannot be fragmented.” PO Resp. 22 (citing Ex. 2057 ¶¶ 44, 150). We find this argument unpersuasive because Ciaffone’s blow vessel does not require fragmentation of the material to be conveyed. Rather, Ciaffone teaches compaction of the material in a tightly knit unit that can be acted upon by the full force of the pressurized air, in contrast with dispersion of the waste such that air is diffused among the separated particles resulting in diminution in the applied air pressure conveying the total charge. Ex. 1006, 3:11–19. Further, Pneumatic Conveying teaches that “small capacity blow vessels are designed on the basis of conveying material as a series of discrete plugs rather than as a continuous stream.” Ex. 1009, 282, Fig. 7.32. Pneumatic Conveying further explains: “As such, the capacity of the vessel is selected such that on discharge a plug is formed which is just long enough to prevent blocking [of the conveying line].” Id. Pneumatic Conveying discloses that “[i]f the material to be conveyed is unusually cohesive, a plug forming system will yield good results” and, “[a]s the plugs are relatively impermeable, they remain separated even over long conveying distances.” Id. at 346. Based on these teachings, a POSITA would not have understood that it was necessary to fragment non-free flowing drill cuttings, contrary to Patent Owner’s argument. For the reasons given, Petitioner has provided a sufficient reason with rational underpinning for combining Dietzen I and II, Ciaffone, Laster, and Pneumatic Conveying. See KSR, 550 U.S. at 418 (“‘[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’”) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).” slip op. at 23

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Pneumatic Conveying does not provide information on “anything close to ‘non-free flowing [oil well drill/drill] cuttings’ or a ‘thick, heavy paste,’” and, thus, a POSITA “would not look to designs presented in Pneumatic Conveying.” Ex. 2057 ¶ 185. We give little weight to this testimony because, as discussed above, we credit Dr. Carson’s testimony that Pneumatic Conveying identifies hundreds of materials, including paste and cohesive material. See supra Section II.C.1.e(2). We also credit Dr. Carson’s testimony that Pneumatic Conveying explains that pressure vessels increasingly were being used to convey materials with “bad” flow properties, and that “Pneumatic Conveying would have also shown those of ordinary skill in the art that pneumatic conveying with a positive pressure system would be an effective way to transport non-free flowing drill cuttings, including in the form of a paste or sludge.” Ex. 1034 ¶ 124. Dr. Brown also testifies that the information in Pneumatic Conveying with respect to mass flow concerns granular solids. Ex. 2057 ¶ 185 (citing Ex. 1009, 411). He further testifies that because “the flow behavior of nonfree flowing [oil well drill/drill] cuttings is distinct from that of granular solids . . . a person of ordinary skill in the art would gain no insight in designing a vessel for paste to produce mass flow from a vessel designed to contain granular solids.” Id. We give little weight to this testimony because Dr. Brown does not address all of the information in Pneumatic Conveying that is relevant to mass flow, as discussed further below. In contrast with Dr. Brown, Dr. Carson testifies: “As explained in Pneumatic Conveying, those of ordinary skill in the art knew that the cone angle is an important variable to adjust in order to achieve mass flow.” Ex. 1034 ¶ 144 (citing Ex. 1009, 280–282, 410–420; Ex. 1046, 68–74, 147– 151). Consistent with Dr. Carson’s testimony, the ’018 Patent discloses that “[i]t is well known that the critical cone angle [to achieve mass flow] will vary depending upon the material being conveyed [and] as such would be well understood by those skilled in the art.” Ex. 1005, 2:61–63. We credit the testimony of Dr. Carson over the conflicting testimony of Dr. Brown because Dr. Carson’s testimony addresses the full Pneumatic Conveying disclosure, and is consistent with that disclosure, while Dr. Brown’s testimony does not address the full Pneumatic Conveying disclosure, and is not completely consistent with that disclosure. For example, under the subheading “Factors influencing blow vessel performance,” Pneumatic Conveying teaches that “[t]he increased use of blow vessels for feeding materials with ‘bad’ flow properties necessitates the selection of a suitable cone angle.” Ex. 1009, 279. Pneumatic Conveying further explains that “[v]essels with incorrectly designed cone angles will result in either ‘ratholing’ or ‘bridging’ problems.” Id. at 279, Fig. 7.30. These teachings of Pneumatic Conveying are not limited to granular solids, contrary to Dr. Brown’s testimony.” slip op. at 32

  Patent outcomesUS 7,544,018 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,544,018
• Microsoft Corporation v. Iplearn-Focus, LLCSome claims unpatentable
  PTAB · Apr 11, 2016 · IPR2015-00095 · APJ Richard E Rice · IPR · Final written decision

  Claims 1, 2, 18, 22, 37, and 39 are unpatentable; claims 38, 40–42, 48, 55, and 56 are patentable, based on anticipation and obviousness grounds.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “in the art (“POSITA”). According to Petitioner’s expert, Dr. David Forsyth, a POSITA would have had a combination of experience and education in computer vision and the design of human-computer interfaces. This typically would consist of a minimum of a bachelor of science in Computer Science or Electrical Engineering (or a related engineering field) plus either a year of graduate training or 2-4 years of relevant experience. The POSITA also would have been familiar with the design of, theory behind, principles of operation of, intended use of, and the underlying technology used in computer vision and human-computer interfaces. Ex. 1003 ¶ 27. In contrast, Patent Owner’s expert, Mr. David Crane, testifies that a POSITA “would have had a bachelor’s degree or equivalent in the field of computer engineering, computer science or electrical engineering and at least two to three years of experience relating to humanmachine interface design.” Ex. 2009 ¶ 15. Based on the competing arguments and evidence of record, we largely accept Patent Owner’s proposed definition. The definition proposed by Petitioner appears to be overly narrow because of its focus on “computer vision.” We have made minor modifications to Patent Owner’s definition to clarify the educational requirement, and to broaden the experience requirement to include at least a year of graduate training as an alternative to work experience, consistent with the background of researchers in the field as indicated by prior art references such as Hutchinson. See Ex. 1004, 1533–1534. We determine that a POSITA would have had at least a bachelor’s degree in computer engineering, computer science, electrical engineering, or an equivalent field, and at least a year of graduate training, or two years of work experience, relating to human-machine interfaces.” slip op. at 8

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

    “(emphasis added). In the Institution Decision, we determined that the broadest reasonable interpretation consistent with the Specification of the term “window” is a bounded sub-region of a computer display that is capable of displaying a distinctly different type of information than one or more other sub-regions of the computer display. Inst. Dec. 8 (citing Ex. 1001, 8:20–42). Neither of the parties proposes any change to that interpretation, and our review of the evidence does not indicate that any change is necessary. Consequently, we maintain our previous interpretation.” slip op. at 10

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “the parties, we determine that Petitioner has shown by a preponderance of the evidence that Hutchinson anticipates claim 1. See Pet. 14–15, 29–32; Pet. Reply 3–6; Ex. 1003 ¶¶ 46–51. As set forth in Petitioner’s claim chart, Hutchinson discloses each limitation of claim 1, including the “acquiring,” “analyzing,” “determining,” and “adjusting” steps. See Pet. 29–32. For example, the “adjusting” step requires “adjusting, by the computing device, materials for presenting to the user if the determining determines that the volitional input suggests the user not paying attention to materials in the first window.” Corresponding to that step, Hutchinson discloses that, after the user gazes for a period of time at a menu option in a display window, a tone sounds and an icon (cursor) appears in the display window in line with the gaze, but the enabled option is aborted if the user does not continue to gaze at the menu option for an additional period of time. Ex. 1004, 1530; see Pet. 31–32; Pet. Reply 3–6; Ex. 1003 ¶¶ 49–50. The abort mechanism of Hutchinson’s computing device discloses the “adjusting” step by aborting the enabled option (“adjusting . . . materials for presenting to the user”) if the computing device determines, itself, that the user is not directing his or her gaze at the menu option in the window (“if the determining determines that the volitional input suggests the user not paying attention to materials in the first window”). See Ex. 1004, 1530; supra Section II.A.5.” slip op. at 21

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableNot shown unpatentableMixed

    “claim 2. Pet. 20, 41–42; Pet. Reply 5–6; Ex. 1003 ¶¶ 52–55. We agree, for example, that Hutchinson discloses “waiting for a period of time before adjusting,” as required by claim 2, “so that the user has a moment to alter his or her gaze before the system adjusts what is being presented.” Pet. 20, 41 (citing Ex. 1004, 1530; Ex. 1003 ¶ 52). With respect to the “network” requirement, we also agree that a person of ordinary skill in the art would have known to retrieve materials from another computing device over a network. Id. at 20, 42 (citing Ex. 1003 ¶¶ 9, 15, 55). There is evidence of record that Black, for example, discloses such retrieval. Ex. 1003 ¶ 97. Further, we agree that Hutchinson discloses “adjusting comprises switching to alternative materials that are different from materials that would have been presented,” and that including “materials on a product” would have been obvious, as Petitioner contends. Pet. 20, 41–42 (citing Ex. 1004, 1530– 1531; Ex. 1003 ¶¶ 52–55). Patent Owner responds that: “the ‘waiting before adjusting’ step must be performed after the ‘determining’ step and, additionally, be a distinct step from the ‘determining step’”; and that “Hutchinson . . . does not disclose a ‘waiting before adjusting step’ that is either separate and distinct from the ‘determining’ step or subsequent to it.” PO Resp. 29. Patent Owner argues that, “[a]t most, Hutchinson discloses waiting as part of the determining step.” Id. at 30. Patent Owner’s argument is not consistent with our interpretation that claim 2 encompasses “waiting for a period of time” as part of the “determining” step. See supra Section II.A.4. Hutchinson’s system satisfies the “waiting for a period of time before adjusting” step by allowing the user “a moment” to change or abort an enabled option before the system performs it. Ex. 1004, 1530 (emphasis added). The system performs the option only if the user continues to stare at the enabled option for a period of time (“a moment”) after a tone sounds and an icon appears. Id. For the reasons given, we conclude that Petitioner has shown by a preponderance of the evidence that Hutchinson renders obvious claim 2.” slip op. at 27

  Patent outcomesUS 8,475,174 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,475,174
• Microsoft Corporation v. Iplearn-Focus, LLCSome claims unpatentable
  PTAB · Mar 23, 2016 · IPR2015-00097 · APJ Richard E Rice · IPR · Final written decision

  Claims 13, 34, and 35 are unpatentable as anticipated by Hutchinson; claims 39 and 44 are unpatentable as obvious over Hutchinson and Krueger; claims 36 and 37 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Ex. 1003 ¶ 27. In contrast, Patent Owner’s expert, Mr. Crane, testifies that a POSITA “would have had a bachelor’s degree or equivalent in the field of computer engineering, computer science or electrical engineering and at least two to three years of experience relating to human-machine interface design.” Ex. 2007 ¶ 15. Based on the competing arguments and evidence of record, we largely accept Patent Owner’s proposed definition. The definition proposed by Petitioner appears to be overly narrow because of its focus on “computer vision.” We have made minor modifications to Patent Owner’s definition to clarify the educational requirement, and to broaden the experience requirement to include at least a year of graduate training as an alternative to work experience, consistent with the background of researchers in the field as indicated by prior art references such as Hutchinson. See Ex. 1004, 1533–1534. We determine that a POSITA would have had at least a bachelor’s degree in computer engineering, computer science, electrical engineering, or an equivalent field, and at least a year of graduate training, or two years of work experience, relating to human-machine interfaces.” slip op. at 8

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

    “We find that the ordinary meanings of “content” are “[s]omething contained, as in a receptacle: the contents of my desk drawer; the contents of an aerosol can,”2 and “[i]nformation, such as text, video, and sound, usually as contrasted with its format of presentation: a television producer looking for content that was more entertaining.”3 Although the Specification does not define or use the term “content,” it sheds light on the meaning of the term, by describing a calibration technique utilizing the text and graphics (the content) of a message box to direct the user’s attention and to take a reference image. See Ex. 1001, 8:55–60 (describing a preferred embodiment 1 Exhibit 1033 does not contain Petitioner’s asserted definition, although, as referenced below, we found essentially the same definition on-line. 2 Ex. 1033. 3 http://search.credoreference.com/content/entry/hmdictenglang/content_ 1/0?searchId=4da7a984-e49d-11e5-9bca-0e58d2201a4d&result=5 (last visited March 8, 2016). in which a reference image of the student’s face is taken when the student is looking at a message box containing the message “LOOK AT ME” and a picture of two eyes staring at the student; “the digital camera 180 takes a reference image of the student’s face, who typically looks at the two eyes”). Accordingly, we determine that the broadest reasonable construction consistent with the Specification of “content presented by the display” is “something contained within a portion of the display,” including, but not limited to, what is advocated for by Petitioner, i.e., “information, such as text, video, and sound.”” slip op. at 9

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “processor coupled to the imaging sensor and the display, the processor to analyze, relative to the display, at least the first set of measurements to identify whether the user is not paying attention to content presented by the display.” Specifically, as disclosed in Hutchinson, after the user gazes for a period of time at a menu box on the display, a tone sounds and an icon (cursor) appears in the menu box in line with the gaze, but the option associated with the menu box is aborted if the user does not continue to gaze at the box for an additional period of time. Ex. 1004, 1530; see Pet. 36 (citing Ex. 1003 ¶ 71). Hutchinson’s processor meets the claim requirement for “a processor . . . to identify whether the user is not paying attention to content presented by the display” because, to implement the abort mechanism, the processor determines, itself, whether the user is not directing his or her gaze at the icon contained in the menu box, in accordance with our claim interpretation. See Ex. 1004, 1530; supra Section II.A.3.” slip op. at 19

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

    “We agree with Petitioner and Dr. Forsyth that a POSITA would have been motivated to combine the teachings of Hutchinson and Krueger. As Petitioner argues, Hutchinson expressly contemplates using Erica with 7 Richard Epworth, Eye Movements, for a Bidirectional Human Interface, ICL TECHNICAL JOURNAL 384–411 (1990) (Ex. 1026). “hardware alternatives . . . such as head-tracking systems.” Ex. 1004, 1532 (emphasis added); see Pet. Reply 13 (citing Ex. 1004, 1532 and Ex. 2008, 108:21–109:7). Krueger not only discloses head-tracking, but touts its VIDEOTOUCH system as an improvement that identifies human-body features such as the head in real time, and without use of intrusive markers. Ex. 1008, 2:44–3:44, 4:5–10. We credit Dr. Forsyth’s deposition testimony explaining how Hutchinson’s eye-gaze system would have worked in combination with a head-tracking system. Ex. 2008, 93:16–102:1, 108:21– 109:7, 109:22–128:17. For example, we credit the following testimony:” slip op. at 29

  Patent outcomesUS 8,538,321 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,538,321
• Saint-Gobain Abrasives, Inc. v. 3M Innovative Properties CompanySome claims unpatentable
  PTAB · Feb 23, 2016 · IPR2014-01281 · APJ Richard E Rice · IPR · Final written decision

  Claims 1–8, 12, 23, 24, and 29–33 are unpatentable as obvious over Spitznagel and De Schrijver; the remaining challenged claims were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “Petitioner agrees that the level of ordinary skill in the art includes a bachelor’s degree in mechanical engineering, or a similar field, or at least two years of experience designing fluid-dispensing devices, but disputes Patent Owner’s contention that the level of ordinary skill includes at least two years of experience operating fluid-dispensing devices. Pet. Reply 3 (citing Ex. 1002 ¶ 16). Petitioner argues that Patent Owner’s definition “is so low that it is met by a person operating a garden hose for two years.” Pet. Reply 3. Based on the competing arguments and evidence of record we determine that a POSA would have had at least a bachelor’s degree in mechanical engineering, or a similar field, or at least two years of work experience in mechanical engineering, or a similar field.” slip op. at 11

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

    “1. “adapter” Patent Owner proposes three dictionary definitions for “adapter”: (1) “a device for connecting pieces of equipment that cannot be connected directly”; (2) “a device, mechanism, or fitting used to mate two parts of different design, shape, or size to each other”; and (3) a “device for connecting parts that will not mate.” PO Resp. 16–17 (citing Exs. 2003, 2004, 2005). Petitioner does not dispute the proposed dictionary definitions. See Pet. Reply 5. We are persuaded that Patent Owner’s proposed dictionary definitions establish the ordinary and customary meanings of “adapter” as would be understood by one of ordinary skill in the art in the context of the entire disclosure and adopt them, collectively, as the broadest reasonable interpretation consistent with the ’780 Patent Specification.” slip op. at 12

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

    “Third, we determine that Petitioner has provided articulated reasoning with rational underpinning sufficient to support the legal conclusion of obviousness. Pet. 20–21; see KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Based on Mr. Leinsing’s testimony, one of skill in the art would have been motivated to use a bayonet coupling as disclosed by De Schrijver at the cup end of Spitznagel’s adapter, instead of a threaded connection, for its known benefit of providing a relatively quick mechanism to attach and remove a paint cup to and from a gravity-fed spray gun. See Ex. 1002 ¶¶ 96–99. We have considered Patent Owner’s opposing arguments, but find them unpersuasive. We disagree, for example, that De Schrijver teaches away. PO Resp. 37 (citing Ex. 1009, 8:18–25). While De Schrijver expresses a general preference for self-contained portable guns, Patent Owner has not shown sufficiently that De Schrijver criticizes, discredits, or otherwise discourages investigation into the invention claimed. See Depuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (citing In re Fulton, 391 F.3d 1195, 1201 (Fed.Cir.2004)). Patent Owner’s argument that the gravity-fed paint spray gun of Spitznagel is “fundamentally different” from, and “technically incompatible” with, the aerosol application gun of De Schrijver is largely unresponsive to the relevant De Schrijver teaching that threaded and bayonet connections are substitutable. See Pet. Reply 6–7 (citing Ex. 1002 ¶ 99). As discussed above, that teaching is not limited to connections between an adapter and the aerosol container of De Schrijver’s application gun, but extends to connections between an adapter and other types of fluid containers such as the paint pot of Spitznagel’s gravity-fed paint spray gun. See In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (holding that “it is not necessary that the inventions of the references be physically combinable to render obvious the invention under review”).” slip op. at 24

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “We have considered Patent Owner’s opposing arguments, but find them unpersuasive. We disagree, for example, that De Schrijver teaches away. PO Resp. 37 (citing Ex. 1009, 8:18–25). While De Schrijver expresses a general preference for self-contained portable guns, Patent Owner has not shown sufficiently that De Schrijver criticizes, discredits, or otherwise discourages investigation into the invention claimed. See Depuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (citing In re Fulton, 391 F.3d 1195, 1201 (Fed.Cir.2004)). Patent Owner’s argument that the gravity-fed paint spray gun of Spitznagel is “fundamentally different” from, and “technically incompatible” with, the aerosol application gun of De Schrijver is largely unresponsive to the relevant De Schrijver teaching that threaded and bayonet connections are substitutable. See Pet. Reply 6–7 (citing Ex. 1002 ¶ 99). As discussed above, that teaching is not limited to connections between an adapter and the aerosol container of De Schrijver’s application gun, but extends to connections between an adapter and other types of fluid containers such as the paint pot of Spitznagel’s gravity-fed paint spray gun. See In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (holding that “it is not necessary that the inventions of the references be physically combinable to render obvious the invention under review”).” slip op. at 24

  Patent outcomesUS 8,424,780 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,424,780
• NHK Seating Of America, Inc. v. Lear CorporationSome claims unpatentable
  PTAB · Feb 2, 2016 · IPR2014-01202 · APJ Mitchell G Weatherly · IPR · Final written decision

  Claims 2, 4, 6, 8, 9, and 28–31 are unpatentable as anticipated by JP ’468; the remaining challenged claims are not held unpatentable.

  RulingsFinal written decision

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

    “The Specification describes two embodiments in which structures are “joined or fastened” to the seatback frame, namely, a first embodiment in which plate 10 having clamped ends 14 with clips 16, and springs 18 are joined to the frame 2, id. at 1:54–64, and a second embodiment in which spring 18, clips 32, and cam guides 46 are joined to frame 2, id. at 2:15–24. Headrest cushion 6 never touches frame 2 in either embodiment, but instead is connected to posts 8 (first embodiment) or 30 (second embodiment). “[T]he presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim.” Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (citation omitted). Dependent claims 6 and 59 recognize that the posts are structures different than the headrest by reciting that the headrest “is separated from the seatback frame by a post.” Ex. 1001, C1 1:52–54 (claim 6), C1 4:31–32 (claim 59). The principle of claim differentiation instructs us to interpret “headrest” in claims 2 and 57 to refer to the headrest without the posts. Even if we were to interpret “headrest” to encompass the posts, however, posts 8 (first embodiment) and posts 30 (second embodiment) also never touch the seatback frame. Instead, the posts along with other structures functionally link the headrest to the frame.” slip op. at 10

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “NHK persuades us by a preponderance of evidence that JP ’468 describes a headrest that is pivotally attached with the seatback frame. For the reasons expressed in part II.A above, we interpret “headrest pivotally attached with the seatback frame” more broadly than proposed by Lear. We interpret “pivotally attached with” to encompass a relationship between the headrest and seatback frame that involves the headrest being functionally linked via intervening structures to the seatback frame so that the headrest rotates forward in response to a rearward force applied to an impact target. Under our interpretation, JP ’468 describes “a headrest pivotally attached with the seatback frame.” We find that intervening structures physically join headrest 15 of JP ’468 to its frame member 8. Frame member 8, with its supporting arm 9 (the alleged seatback frame), is pivotally joined at axis 10 to bracket 5 of seat cushion support member 4 (the alleged bun frame), which is joined to floor 1 and thus also floor member 1′. Ex. 1008, 3–5, Figure 1. Headrest 15 is connected to arm 16, which is pivotally joined via pin 17 to bracket 18 “at the top part of floor member 1′.” Id. at 5. Headrest 15 is attached to frame 8 via the intervening structures described above and pivots about the recited axis. Accordingly, we find that a preponderance of evidence demonstrates that headrest 15 is “pivotally attached with the seatback frame” as recited in claims 2 and 57.” slip op. at 19

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

    “Similarly, we are not persuaded by NHK’s argument that using Ferrara’s spring would decrease the risk of whiplash injury. To the extent that Ferrara improves a headrest, it does so by providing the compliance that Dr. Viano recognized to reduce the risk of impact-based head injury in highspeed collisions. Ferrara never describes its spring, which softens a blow to the occupant’s head, as reducing the risk of whiplash injury, and the testimony from Dr. Viano that NHK cites does not support such a conclusion. Rather, Dr. Viano merely testifies that it is “possible” for “some blows to the head” to cause whiplash, Ex. 1018, 51:1–52:2, and whether such a blow causes whiplash “depends on so many factors,” id. at 52:4–53:1. Dr. Viano never testifies that Ferrara’s spring reduces the risk of whiplash injury, and NHK cites no evidence to support such a conclusion. Because NHK fails to establish that using Ferrara’s spring in Mertens’s headrest would “mitigate whiplash risk,” NHK’s proffered rationale for using Ferrara’s spring in Mertens’s headrest and, thus, NHK’s obviousness challenge is unpersuasive. “[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). A challenge “on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” Id. (quoting In re Kahn, 441 F.3d 977, 988 (C.A.Fed.2006)). The argument and evidence proffered by NHK does not establish any credible reason to combine Ferrara’s spring with Mertens’s headrest. Nor does NHK proffer any evidence to establish whether a skilled artisan would have considered Ferrara’s spring 48 to have been an obvious substitute for Mertens’s torsion member 85 to permit rearward rotation of the headrest in severe collisions. NHK bears the burden of proving obviousness of the challenged claims by a preponderance of evidence, and we conclude that it has failed to do so in this case. Accordingly, we conclude that NHK has failed to establish that the combination of Mertens and Ferrara renders claims 2, 4, 6, 8, 9, 13–20, 31, 43–49, 55–60, 62–68, 70, 81, 84–90, 93, and 94 unpatentable as obvious under 35 U.S.C. § 103.” slip op. at 28

  • ExcludeMotion to exclude, deniedDenied

    “IV. LEAR’S MOTION TO EXCLUDE We have reviewed Lear’s Motion to Exclude, NHK’s Opposition to the Motion, and Lear’s Reply in support of the Motion. Based on our review, we deny the Motion in all respects for one or both of the following reasons: (1) the Motion is moot because it seeks to exclude evidence not considered or relied upon in rendering this Decision or (2) the Motion addresses issues more appropriate to determining the weight ascribed to the evidence rather than the admissibility of evidence. In rendering this Decision, we determine and ascribe the appropriate weight to all proffered evidence and, when appropriate, comment upon the weight ascribed.” slip op. at 29

  Patent outcomesUS 5,378,043 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 5,378,043
• NHK Seating Of America, Inc. v. Lear CorporationSome claims unpatentable
  PTAB · Dec 15, 2015 · IPR2014-00925 · APJ Mitchell G Weatherly · IPR · Final written decision

  Claims 1, 3, and 4 are unpatentable as obvious over DE ’017 and DE ’826; claim 2 was not shown unpatentable because the combination lacks the claimed tab.

  RulingsFinal written decision

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

    “Not all surfaces guide a path of travel. We imposed this limitation based upon our review of the Specification. The pertinent portion of Figure 5 from the ’818 patent (reproduced at right) illustrates ramp 132 having two cam surfaces 134a and 134b (highlighted in green). These two cam surfaces together comprise cam surface 134. Ex. 1001, 8:65–9:2. Although we agree with Lear that the combination of cam surfaces 134a, 134b “changes the trajectory of travel” of the ends of lower crossbar 120, Lear fails to persuade us that the Specification justifies reading such a limitation into “cam surface.” The Specification specifically counsels against reading such a limitation into the claims by stating: “Those having ordinary skill in the art will appreciate that the ramp 132 can include any number of cam surfaces oriented in any manner toward the upper armature 50 without departing from the scope of the invention.” Ex. 1001, 9:9–13 (emphasis added). Accordingly, either of cam surfaces 134a or 134b is within the “scope of the invention” because either one constitutes “any number of cam surfaces oriented in any manner.” Second, we are not persuaded by Lear’s argument that, by interpreting “cam surface” as meaning “a surface that guides a path of travel,” we render “to slide the transverse bar along the cam surface” superfluous. Resp. 33– 35. We read “to slide the transverse bar along the cam surface” as specifying which “path of travel” the “cam surface” guides, namely, the path of travel of the “transverse bar.” Because we are unpersuaded by Lear’s arguments for altering our preliminary interpretation of “cam surface,” we maintain our interpretation of “cam surface” as meaning “a surface that guides a path of travel.”” slip op. at 7

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundMotivation foundDecided for petitioner

    “would render it inoperable for its intended purpose. First, we determine that both references have the same intended purpose, namely to move the head rest to a supportive position in response to a rear-end collision. Ex. 1004, Abstract, ¶¶ 15, 16, 18; Ex. 1006 ¶¶ 27–30. Second, we determine that DE ’017 and DE ’826 both operate according to principles that efficiently translate the forces applied by the occupant to the seat back during a collision into movement of the head rest. Ex. 1004, Abstract, ¶ 5, claim 1; Ex. 1006 ¶¶ 27–30. Third, we determine that both DE ’017 and DE ’826 do not move the head rest in response to forces encountered in normal, non-collision, conditions. Both systems respond only to forces large enough to overcome biasing forces imparted by springs that hold the head rest in the non-actuated position during normal conditions. Ex. 1004 ¶ 17; Ex. 1006 ¶ 25; Ex. 1012, 25:11–23; Ex. 1013 ¶¶ 27–29. Accordingly, we are not persuaded that NHK’s proposed modification of DE ’017 would render DE ’017 inoperable for its intended purpose.” slip op. at 18

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedOther

    “annotated figure is not a “tab” but instead an eyebolt. Because DE ’017 never directly describes or discusses this uppermost “tab” structure, Lear supports its argument with testimony from Dr. Viano. Surreply 3 (citing Ex. 2019 ¶¶ 19–22). The only portion of DE ’017 relating to this uppermost structure is a passage stating “At the end of the pivot lever 2d, opposite the pivotal axis 4, the coupling element 6b of the connection device 6 is suspended in an articulate fashion.” Ex. 1004 ¶ 17. Dr. Viano testifies that, because of the way that this uppermost structure is illustrated in Figure 2b and the functional description of the connection between coupling element 6b and lever 2d, a skilled artisan would conclude that this uppermost structure is akin to an eyebolt. Ex. 2019 ¶ 22. Dr. Kent testifies that concluding that the uppermost structure is “drawn as a tab” is a “reasonable inference . . . based on the way it is characterized in the drawing and the mechanical function it performs.” Ex. 2020, 19:6–17. Dr. Kent offers no further explanation for his inference that the uppermost structure is a “tab.” We accept Dr. Viano’s tesimony on how a skilled artisan would view the uppermost structure that NHK identifies in the annotated version of Figure 2b of DE ’017 as being more credible, thorough, and reasoned than Dr. Kent’s. On the record before us, we are persuaded by Lear’s argument and evidence that the uppermost structure does not constitute the claimed “tab.”” slip op. at 24

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed

    “surface” because slot 17 guides a path of travel for pin 18, which is operatively connected to impact plate 10 of DE ’826. Pet. 25, 31–32. On the record before us, and under our interpretation of “cam surface,” we are persuaded by NHK’s argument. Accordingly, we conclude that NHK has established by a preponderance of evidence that DE ’826 describes the “cam surface” recited in claim 1.” slip op. at 21

  Patent outcomesUS 8,434,818 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,434,818
• Igb Automotive Ltd. / I.G. Bauerhin GmbH v. Gentherm GmbHSome claims unpatentable
  PTAB · Oct 21, 2015 · IPR2014-00668 · APJ Josiah C Cocks · IPR · Final written decision

  Claims 1–3, 6, 14–15, 17, 21, and 23–26 are unpatentable as anticipated by Gendron; the remaining challenged claims were not shown unpatentable.

  RulingsFinal written decision

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

    “We are mindful of the evidence cited by Gentherm, both intrinsic and extrinsic, as to the meaning of “adjacent.” We do not discern, however, that the evidence imposes a requirement of immediate or direct contact between components, such as layers, that are adjacent. To that end, we observe that other extrinsic sources provide additional context for the ordinary meaning of “adjacent.” For instance, one dictionary sets forth that the meaning of the term “adjacent” may include “nearby” and, in its discussion of synonyms of “adjacent,” explains that the term “may or may not imply contact but always implies absence of anything of the same kind in between.”7 In that respect, the ordinary meaning of “adjacent” in the context of layers would include non-contacting layers that are close to or nearby one another, but are not separated by an intervening layer. We conclude that such ordinary meaning is consistent with the Specification of the ’576 patent, as well as the evidentiary record as a whole that is before us. Accordingly, we construe “adjacent” in connection with layers of the ’576 patent as including non-contacting layers that lie close or nearby one another, but excluding the presence of an intervening layer between those non-contacting layers.” slip op. at 8

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). There is evidence in the record before us that reflects the knowledge level of a person with ordinary skill in the art. Gentherm’s Declarant, Dr. James G. Rice, attests that a person with ordinary skill in the art would have the following background or experience:  Vocational training in mechanical or electrical engineering or related field plus 3-4 years of experience designing consumer heating, cooling, or ventilation systems; or  a B.S. in mechanical or electrical engineering or related field, plus 1-2 years of experience designing consumer heating, cooling, or ventilation systems Ex. 2002 ¶ 34. 10 The court in Graham further noted “[s]uch secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented.” 383 U.S. at 18. In this proceeding, however, evidence of “secondary considerations” has not been offered for evaluation by the panel. IGB does not dispute Dr. Rice’s assessment of the level of ordinary skill in the art. For purpose of this Final Written Decision, we accept Dr. Rice’s characterization of the level of ordinary skill in the art.” slip op. at 19

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “We are cognizant of Dr. Rice’s testimony in favor of the opposite conclusion. See Ex. 2002 ¶¶ 53–55. For example, Dr. Rice generally opines that “[o]ne of ordinary skill would understand that Gendron’s extension 16 does not need to be an extension of any of the various pad layers.” Id. ¶ 55. We are not persuaded, however, that Dr. Rice provides adequate underlying support for his opinion. To that end, we also are not satisfied that Dr. Rice has taken into account appropriately the express teachings of Gendron concerning the composition of extension 16, including those discussed above. Accordingly, in considering the record before us, we conclude that Gendron discloses the “tongue portion” and “tongue” features required by claims 1–3, 6, 14–17, and 21–27.” slip op. at 13

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “At the outset, we observe that IGB’s anticipation ground does not rest on a theory that Gendron’s extension inherently includes the layers. Rather, IGB bases its anticipation theory on the express disclosures of Gendron, itself. Pet. 24–25. To that end, Gendron makes clear that back portion 12, bottom portion 14, middle portion 15 and extension 16 “are formed as an integral member.” Ex. 1005, 2:13–15. Gendron’s Figure 2 is described as showing a front view of a “ventilated seat pad,” and that Figure depicts all of elements 12, 14, 15, and 16. Furthermore, during oral argument, and after inquiry from the panel, counsel for Gentherm agreed that Gendron’s pad includes all of those elements, including extension 16.9 Thus, there is no dispute that pad 10 includes extension 16. Gendron’s Figure 3 is described as “an enlarged sectional view of the ventilated seat pad of FIGS. 1 and 2, illustrating five layers.” Id. at 2:54–55. A reference stands for all of its specific teachings, as well as the inferences one of ordinary skill in this art reasonably would have been expected to draw therefrom. In re Fritch, 972 F.2d 1260, 1264–65 (Fed. Cir. 1992). In this case, given at least the above-noted disclosures of Gendron, we conclude that a skilled artisan would infer reasonably that because extension 16 is disclosed as a part of pad 10, which includes five layers, and extension 16 is formed as an “integral member” with the other pad components, the extension also is composed of the layers.” slip op. at 12

  Patent outcomesUS 6,840,576 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Graham
  Patents in suitUS 6,840,576

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