- Profrac Holding Corporation / U.S. Well Services, LLC v. Halliburton Energy Services, Inc.All claims unpatentablePTAB · Oct 29, 2024 · PGR2023-00023 · APJ Brent M Dougal · PGR · Final written decision
Claims 1–20 are unpatentable under §101 as directed to an abstract idea without significantly more; the Board did not reach the asserted §103 grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had a B.S. in Chemical Engineering, Mechanical Engineering, Materials Science, or Metallurgical Engineering or an equivalent field and at least two years of academic or industry experience in the oil and gas industry, including experience with process control systems. Further, a person with additional education but less professional experience, and vice-versa, may qualify. Pet. 23–24 (citing Ex. 1003 ¶ 4). Patent Owner adopts Petitioner’s definition. PO Resp. 6. We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’058 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this Decision.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In post-grant review, we construe claims using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.200(b) (2022). Neither Petitioner, nor Patent Owner, provides constructions of any claim terms. Pet. 25; PO Resp 6–7. We determine that no terms need to be construed. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 5
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“formation response data comprising data from one or more downhole sensors or surface sensors” and “selecting a representative system model based on the received formation response data and sequence of stimuli” are mental processes. We determine that the record supports that they are. The Background of the ’058 patent supports our finding that these steps are mental processes. In particular, the ’058 patent teaches that it was known that “a technician may review sensor data” and that “a representative system model may be used for determining pump settings based on sensor information; however, the representative system model is typically manually selected by a technician based on observed sensor data.” Id. at 22 (quoting Ex. 1001, 1:9–26); see also Dec. 23–24 (preliminarily finding these claimed patent). Regarding the claimed step of “controlling an electrical fracturing pump based on the representative system model,” Patent Owner does argue, and we agree, that it is not a mental process in that one of ordinary skill in the art would not have performed it in the human mind. PO Resp. 27. We also agree that the Petition does not expressly argue that the step of “generating a sequence of stimuli for application to a well environment” is a mental process. However, the ’058 patent explains that these two steps may be performed via a generic computer. Ex. 1001, 6:6–36, 6:65–7:33, 8:56–9:28. Requiring the use of a computer does not change the focus of the claim away from being directed towards an abstract idea. “[T]he inability for the human mind to perform each claim step does not alone confer patentability.” FairWarning IP, LLC v. Iatric Sys., 839 F.3d 1089, 1098 (Fed. Cir. 2016) (“As we have explained, ‘the fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter.’” (quoting Bancorp Servs. v. Sun Life Assur. Co., 687 F.3d 1266, 1278 (Fed. Cir. 2012)). See also Miller Mendel, Inc. v. City of Anna, Texas, 107 F.4th 1345, 1353 (Fed. Cir. 2024). (“We are not persuaded that claim 1 cannot be directed to an abstract idea even if certain steps cannot be completed in the mind or by pen and paper. . . . [R]equiring the use of a computer alone does not change the focus of a claim directed towards an abstract idea into one directed towards ‘a specific improvement to computer functionality.’ In re TLI Commc'ns LLC Pat. Litig., 823 F.3d 607, 612 (Fed. Cir. 2016).”” slip op. at 10
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
“4. Step 2B Under Step 2B, only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, [and] conventional” in the field; or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. 2019 Revised Guidance, 84 Fed. Reg. at 56. applying the … abstract idea using techniques that are, whether considered individually or as an ordered combination, well-understood, routine, and conventional.’ cxLoyalty Inc. v. Maritz Holdings Inc., 986 F.3d 1367, 1377 (Fed. Cir. 2021).” Pet. 97. The Petition cites the Background of the ’058 patent to support its argument that the specification admits that many of the claimed steps were known. Id. at 91. In the oil and gas industry, electric frac pumps are often controlled in order to achieve certain downhole environment responses. However, typically settings are performed manually based on manually appraised information retrieved from the downhole environment. For example, a technician may review sensor data and, based on experience, adjust various settings such as flow rate, pressure values, chemical compositions, etc., on an electric frac pump. In some cases, a representative system model may be used for determining pump settings based on sensor information; however, the representative system model is typically manually selected by a technician based on observed sensor data. Additionally, the representative system model may be a static construct and may not accurately reflect the well to which it has been deployed. Ex. 1001, 1:9–26 (emphasis added). From the above, it will be understood that much of claim 1 was well-understood, routine, and conventional, whether considered individually or as an ordered combination. The above paragraph makes clear that “controlling an electrical fracturing pump based on the representative system model” was known and conventional. In addition, adjusting settings on an electrical fracturing pump is also how the ’058 patent teaches to generate a sequence of stimuli. Ex. 1001, 2:25–33 (“A given stimulus of the sequence of stimuli can be achieved by adjusting . . . flow rates . . . . In some examples, a sequence can include a various amplitudes (e.g., high, medium, low, etc.).”). Thus, generating a sequence of stimuli is also acknowledged as being known in the Background. See also Dec. 22–23 (preliminarily finding that these limitations were known). Petitioner provides additional argument that other references also show that these limitations were known. See e.g., Pet. 94. However, it is not necessary for us to review these in view of the express acknowledgement of the state of the art in ’058 patent. Based on the record, we determine that claim 1 does not include any specific limitation beyond the judicial exception that is not “well-understood, routine, [and] conventional” in the field.” slip op. at 15
Patent outcomesUS 11,373,058 unpatentableClaim construction§ 101 eligibility§ 103 obviousnesscites Alice · Enfish · GrahamPatents in suitUS 11,373,058 - Profrac Holding Corporation / U.S. Well Services, LLC v. Halliburton Energy Services, Inc.InstitutedPTAB · Nov 1, 2023 · PGR2023-00023 · APJ Brent M Dougal · PGR · Institution
Instituted PGR of claims 1–20 because at least one challenged claim was more likely than not unpatentable under the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner bears the burden to demonstrate unpatentability under the more likely than not standard. 35 U.S.C. § 324(a); Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). A claim is unpatentable “if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious . . . to a person having ordinary skill in the art to which the claimed invention pertains.” 35 U.S.C. § 103; see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). We resolve the question of obviousness based on underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the prior art and the claims; (3) the level of skill in the art; and (4) when in evidence,” slip op. at 4
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention. Id. at 13, 17. Petitioner asserts that a person of ordinary skill in the art (POSA): would have had a B.S. in Chemical Engineering, Mechanical Engineering, Materials Science, or Metallurgical Engineering or an equivalent field and at least two years of academic or industry experience in the oil and gas industry, including experience with process control systems. Further, a person with additional education but less professional experience, and vice-versa, may qualify. Pet. 23–24 (citing Ex. 1003 ¶ 4). Patent Owner adopts Petitioner’s definition. Prelim. Resp. 15. We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’058 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this Decision.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.200(b) (2022). claim terms. Pet. 25; Prelim. Resp 15–16. We determine that no terms need to be construed at this time. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Petitioner also relies on Pankaj Figure 11 to disclose the preamble and the final limitation, with the exception of the fracturing pump/fracturing equipment being electrical. See Pet. 38–40 (discussing e.g., Pankaj’s control method in Figure 11, teachings of computer implementation), 49–51 (discussing e.g., Pankaj’s controlling of production operations, including a fracturing pump). As previously noted, Petitioner relies on Payne for teaching that the fracturing pump can be electrical. Id. at 31, 49–51. Petitioner also provides reasons why one of skill in the art would combine Payne’s electrical fracturing pump with Pankaj’s fracturing system. Id. at 31–38, 51. Patent Owner does not contest that the combination of Pankaj and Payne teaches the above noted limitations. See generally, Prelim. Resp. 50– 57.” slip op. at 9
Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Bilski · Berkheimer · Enfish · KSRPatents in suitUS 11,373,058 - Peloton Interactive, Inc. v. Mad Dogg Athletics, Inc.All claims unpatentablePTAB · Apr 5, 2023 · IPR2022-00016 · APJ Hubert C Lorin · IPR · Final written decision
The Board held claims 1–13, 16, and 17 unpatentable as obvious over Rice and Warner, Rice, Warner, and Sotokoshi, and Baudhuin-429 and Sotokoshi.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Accordingly, we accept as undisputed that the plain and ordinary meaning of “coupled” is attached, joined, or combined. In a vacuum, based solely on the plain and ordinary meaning of “coupled,” elements joined together only by a wired connection would be “coupled.” b. Intrinsic Evidence However, we cannot look at the ordinary meaning (i.e., joined) of “coupled” in a vacuum. “Rather, we must look at the ordinary meaning in the context of the written description and the prosecution history.” Phillips, 415 F.3d at 1313 (quoting Medrad, Inc. v. MRI Devices Corp., 401 F.3d 1313, 1319 (Fed. Cir. 2005)). The “proper definition is the definition that one of ordinary skill in the art could ascertain from the intrinsic evidence in the record.’” Id. at 1314 (quoting Unitherm Food Sys., Inc. v. Swift–Eckrich, Inc., 375 F.3d 1341, 351 (Fed. Cir. 2004)). The intrinsic evidence in the record includes the claims, the specification, and the prosecution history. Phillips, 415 F.3d at 1314. 1) Claims “Coupled to” appears in four limitations in claim 1 (and in similar limitations in claim 14): • “a set of handlebars that is coupled to the frame and that provides” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“2. Motivation to Combine Rice and Warner In order to demonstrate obviousness, a petitioner must demonstrate that a skilled artisan would have had a reason to combine the teachings of the prior art in the manner claimed in the patent and would have had a reasonable expectation of success in doing so. KSR, 550 U.S. at 406 (2007). “To facilitate review, this analysis should be made explicit. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (‘[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’).” Id. at 418.” slip op. at 69
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateNot shown unpatentable
“with Petitioner. “In an inter partes review, the burden of persuasion is on the petitioner to prove ‘unpatentability by a preponderance of the evidence,’ . . . and that burden never shifts to the patentee.” Dynamic Drinkware, 800 at 1378 (quoting 35 U.S.C. § 316(e)). Accordingly, Petitioner must show that the ’460 application does not provide written description support for the ’240 patent claims. (Consistent with the Petition, the following discussion will cite to Ex. 1017, which is a copy of U.S. Patent No. 8,021,277 B2, that issued from the ’460 application.)” slip op. at 80
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“1. Nexus Patent Owner contends that a presumption of nexus applies here. PO” slip op. at 87
Patent outcomesUS 9,694,240 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 9,694,240 - PTAB · Sep 23, 2022 · PGR2022-00030 · APJ James J Mayberry · PGR · Institution
Instituted PGR on claims 1–20 after finding it more likely than not that at least one challenged claim is unpatentable, including because Bucco anticipates claims 1, 2, 4–16, and 18–20.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We may not institute a post-grant review “unless . . . the information presented in the petition filed under section 321, if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a) (2011). Upon consideration of the arguments and evidence, we determine Petitioner has demonstrated that it is more likely than not that at least one of the Challenged Claims is unpatentable. Accordingly, we institute a post-grant review of the Challenged Claims of the ’486 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For the purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill in the art. We determine that Petitioner’s definition is more consistent with the prior art of record, and the skill reflected in the Specification of the ’486 patent, based on our review of the limited record. Specifically, we preliminarily find that the field of “consumer products,” as proposed by Patent Owner, is too broad, based on our review of the limited record before us, including the prior art of record, which is directed to razors and personal grooming devices. See Exs. 1003; 1005–1007; 1010; 1011; 2003–2007; 2010–2015. We note, however, that our conclusions in this Decision would not change if we applied Patent Owner’s definition of the level of ordinary skill.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Regardless of the parties’ proposed constructions, the parties do not dispute that the pivot member placement terms encompass embodiments beyond the embodiment illustrated in Figure 1 of the ’486 patent. See, e.g., Pet. 30–31 (“All . . . claims [other than claims 3 and 17] are necessarily broad enough to encompass a handle that includes the two opposed legs.”); Prelim. Resp. 49 (depicting embodiment where the two opposing legs are on a clevis attached to the handle). “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Accordingly, for the purposes of this Decision, we construe the pivot member placement terms to encompass embodiments beyond the embodiment illustrated in Figure 1 of the ’486 patent. We also determine, on the current record, that we need not construe any other claim term to resolve the parties’ dispute at this stage of the proceeding. See Realtime Data, LLC, 912 F.3d at 1375.” slip op. at 16
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateNot shown unpatentable
“Like in SunModo, the grandparent application expressly discloses the opposed legs attached to the cartridge and the pivot member attached to the arm of the handle only. The grandparent application does not describe the opposed legs as part of the handle. Nor does the application state that the position of the opposed legs and pivot member are flexible, such that they could be reversed. On the limited record before us, the lack of any disclosure in support of Patent Owner’s reversal of parts embodiment is fatal to Patent Owner’s position. Cf. SunModo, 890 F.3d at 1052 (“The lack of any disclosure of an assembly with a washer below the flashing, or statement on the flexibility of the position of the washer, is fatal to D Three’s argument.”). We have considered Patent Owner’s arguments and determine, on the current record, that they do not demonstrate a deficiency in Petitioner’s position. First, Patent Owner’s argument that reversal of parts is generally common practice within the level of ordinary skill goes to the obviousness of rearranging parts to reach what is now claimed, rather than the adequacy of the written description of what is now claimed. Cf. Lockwood, 107 F.3d at 1572: The question is not whether a claimed invention is an obvious variant of that which is disclosed in the specification. Rather, a prior application itself must describe an invention, and do so in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought. . . . One shows that one is “in possession” of the invention by describing the invention, with all its claimed limitations, not that which makes it obvious. Tellingly, Patent Owner relies, at least in part, on MPEP Section 2144.04. But this section is part of the MPEP directed to obviousness, not written description. See MPEP § 2144 (“Supporting a Rejection Under 35 U.S.C. 103”). Patent Owner’s reliance on the MPEP’s examining guidelines for written description is also unavailing. See Prelim. Resp. 50–51 (citing MPEP § 2163(II)(A)(3)(a), and quoting “If a skilled artisan would have understood the inventor to be in possession of the claimed invention at the time of filing, even if every nuance of the claims is not explicitly described in the specification, then the adequate description requirement is met.”). We preliminarily find that reversing the locations of the pivot member and opposed legs from those locations disclosed in the only embodiment described in detail in the specification represents more than a “nuance” of the claims. Instead, it represents a departure from the disclosed embodiment of Figure 1, a departure with no support in the actual written description in the grandparent application.” slip op. at 24
Claim construction§ 102 anticipation§ 112 disclosureDiscretionary denialPatents in suitUS 11,235,486 - PTAB · Apr 8, 2022 · IPR2022-00017 · APJ Hubert C Lorin · IPR · Institution
The Board instituted inter partes review of claims 1–5 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one ground.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“The Board uses a two-part framework for evaluating arguments under § 325(d): (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). “[T]he Becton, Dickinson factors provide useful insight into how to apply the framework under 35 U.S.C. § 325(d).” Id. at 9 (footnote omitted). The non-exclusive Becton, Dickinson factors are: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments.” slip op. at 9
- Skill levelSkill level petitioner adoptedOther
“Petitioner contends: A POSA in February of 2005 would have at least a bachelor’s degree in biomechanics or engineering (or equivalent) and about five years or more industry experience or equivalent experience in designing cardiovascular exercise equipment (such as treadmills, bicycles, steppers, ellipticals) or in a similar field. A POSA could substitute directly relevant additional education for experience, e.g., substituting an advanced degree relating to the design of cardiovascular exercise equipment (such as treadmills, bicycles, steppers, ellipticals) or biomechanics (or equivalent), for industry experience in a related field, and vice versa, substituting additional industry experience for a formal degree in a relevant field. Sargeant-328 ¶¶52-53. Pet. 4. Patent Owner states that “the Petition essentially repeats the same proposed standard [as in the District Court Action]. As such, there appears to be no significant dispute over the level of skill in the art possessed by a POSA.” Prelim. Resp. 11. Petitioner’s proposed definition of a person of ordinary skill in the art appears reasonable, and we adopt that definition for our analysis in this decision.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“When read in the context of the entirety of the first paragraph, the phrase “direct drive or fixed gear configuration” suggests that the two configurations are alternatives but it does not necessarily indicate that they equate to each other. When read in the context of the entirety of the second paragraph, the phrase “direct drive (fixed gear)” also does not necessarily suggest that they equate to each other. The entire phrase is “direct drive (fixed gear) and/or non direct drive e.g., freewheeling configuration.” Ex. 1002, 3:13–14; cited at Pet. Prelim. Reply 7. In other words, “direct drive (fixed gear)” configurations are not non–direct drive configurations, such as freewheeling configurations. Other than indicating that they are not non–direct drive configurations, there is insufficient additional indication that “direct drive” and fixed gear mechanisms equate to each other. Accordingly, the evidence at this stage more strongly supports Patent Owner’s argument that the ’328 patent does not disclose that “direct drive” configurations equate to fixed gear configurations. Given no other evidence at this stage to show that one of ordinary skill in the art would understand the ’328 patent’s disclosure of “direct drive (fixed gear)” (Ex. 1002, 3:13) and “a direct drive or fixed gear configuration” (id. at 2:10) to mean that 4 Warner (Ex. 1009). “direct drive” equates to fixed gear, Petitioner has not sufficiently shown that the ’328 patent equates “direct drive” to fixed gear configurations.” slip op. at 30
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION For the foregoing reasons, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of claims 1–5 of the ’328 patent. Accordingly, we grant the Petition and institute an inter partes review of the ’328 patent. Because a decision to institute is “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition,” PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 & n.2 (Fed. Cir. 2018) (citing SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018) and corresponding USPTO Guidance, https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-board/trials/guidance-impact-sas-aia-trial (Apr. 26, 2018)), and because we have determined that at least one ground set forth in the Petition satisfies the threshold for institution, trial is instituted on the proposed grounds based on Rice, Warner, Sotokoshi, and Baudhuin–429. IV. ORDER It is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a), inter partes review of claims 1–5 of the ’328 patent is instituted with respect to all grounds set forth in the Petition; and” slip op. at 70
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,137,328 - PTAB · Apr 8, 2022 · IPR2022-00016 · APJ Hubert C Lorin · IPR · Institution
The Board instituted IPR on claims 1–13, 16, and 17 on all petitioned grounds after finding a reasonable likelihood of success on at least one claim; claims 14 and 15 were disclaimed.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“(1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). “[T]he Becton, Dickinson factors provide useful insight into how to apply the framework under 35 U.S.C. § 325(d).” Id. at 9 (footnote omitted). The non-exclusive Becton, Dickinson factors are: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments.” slip op. at 12
- Adverse judgmentAdverse judgmentOther
“Based on our review of the Disclaimer and Office public records, we conclude that a disclaimer of claims 14 and 15 of the ’240 patent under 35 U.S.C. § 253(a) has been recorded in the Office as of February 22, 2022. Accordingly, claims 14 and 15 have been disclaimed under 35 U.S.C. § 253(a) in compliance with 37 C.F.R. § 1.321(a). As a result, no inter partes review shall be instituted as to claims 14 and 15. 37 C.F.R. § 42.107(e); Intuitive Surgical, Inc. v. Ethicon LLC, IPR2018-01248, Paper 7 at 2 n.1, 9–10 (PTAB Feb. 7, 2019) (discussing interplay of a disclaimed claim, Federal Circuit precedent, and our governing statutes and rules); Daikin Indus. Ltd. v. The Chemours Co., IPR2018-00993, Paper 12 at 5–7 (PTAB Nov. 13, 2018) (noting that adverse judgment following partial disclaimer was not appropriate at least because the nondisclaimed claims “ha[d] yet to be ‘decided.’”); cf. General Electric Co. v. United Techs. Corp., IPR2017-00491, Paper 9 (PTAB July 6, 2017) (precedential) (declining to institute inter partes review when all challenged claims were disclaimed under 35 U.S.C. § 253(a)). Accordingly, we treat claims 14 and 15 as having never been part of” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For the foregoing reasons, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of claims 1–13, 16 and 17 of the ’240 patent. Accordingly, we grant the Petition and institute an inter partes review of the ’240 patent. Because a decision to institute is “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition,” PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 & n.2 (Fed. Cir. 2018) (citing SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018) and corresponding USPTO Guidance, https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-board/trials/guidance-impact-sas-aia-trial (Apr. 26, 2018)), and because we have determined that at least one ground set forth in the Petition satisfies the threshold for institution, trial is instituted on the proposed grounds based on Rice, Warner, Sotokoshi, and Baudhuin–429. IV. ORDER It is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a), inter partes review of claims 1–13, 16 and 17 of the ’240 patent is instituted with respect to all grounds set forth in the Petition; and” slip op. at 78
- Skill levelSkill level petitioner adoptedOther
“A POSA in February of 2005 would have at least a bachelor’s degree in biomechanics or engineering (or equivalent) and about five years or more industry experience or equivalent experience in designing cardiovascular exercise equipment (such as treadmills, bicycles, steppers, ellipticals) or in a similar field. A POSA could substitute directly relevant additional education for experience, e.g., substituting an advanced degree relating to the design of cardiovascular exercise. Pet. 3–4 (citing Sargeant–240 Decl. ¶¶ 50–54). Patent Owner states that “the Petition essentially repeats the same proposed standard [as in the District Court Action]. As such, there appears to be no significant dispute over the level of skill in the art possessed by a POSA.” Prelim. Resp. 14. Petitioner’s proposed definition of a person of ordinary skill in the art appears reasonable, and we adopt that definition for our analysis in this decision.” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,694,240 - Tetra Tech Canada Inc. v. Georgetown Rail Equipment CompanyAll claims unpatentablePTAB · Aug 25, 2020 · IPR2019-00620 · APJ Kristina M Kalan · IPR · Final written decision
Claims 1–3, 7–13, and 16–20 are unpatentable as obvious; the contingent motion to amend with substitute claims 30–44 is denied.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art “would have a bachelor’s degree in electrical engineering, computer engineering, mechanical engineering, computer science, physics, or a related field, and at least four years of experience (or the academic equivalent) in the field of computer or machine vision.” Pet. 21 (citing Ex. 1004 ¶ 42). Patent Owner states that, for purposes of its Response, “Patent Owner does not contest the level of ordinary skill in the art asserted by Petitioner.” PO Resp. 3. Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of one of ordinary skill in the art. In light of the record now before us, we find that a person of ordinary skill in the art would be an individual with at least a bachelor’s degree in electrical engineering, computer engineering, mechanical engineering, computer science, physics, or a related field, and at least four years of experience (or the academic equivalent) in the field of computer or machine vision. Ex. 1004 ¶ 42. The level of ordinary skill in the art is also reflected by the references themselves. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific findings on the level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown.’”); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (finding that the Board of Patent Appeals and Interferences did not err in concluding that the level of ordinary skill in the art was best determined by the references of record).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“On the full record now before us, we determine it is not necessary to construe any claim term expressly to resolve the parties’ dispute. Vivid Techs., Inc., 200 F.3d at 803 (“Only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review). D. Prior Art” slip op. at 10
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Additionally, by providing the declaration of Ms. Watters, Petitioner has taken further steps to provide testimony that Uzarski was catalogued, shelved, and indexed before the critical date, and made available such that persons of ordinary skill in the art, exercising reasonable diligence, could have located it. Id. at 1–2. Ms. Watters, a librarian with the University of Wisconsin-Madison since 1998, provides details regarding her professional background leading to her current position as Director of Wisconsin TechSearch within the University of Wisconsin-Madison. Ex. 1038, 1. She testifies that, based on her knowledge, Uzarski “was received by Wendt Library, University of Wisconsin-Madison Libraries on February 11, 1994.” Id. at 2. She further testifies that, based on the information in Uzarski, “it is clear that the microfiche was received by the library on or before February 11, 1994, catalogued and available to library patrons within a few days or at most 2 to 3 weeks after February 11, 1994.” Id. The declaration concludes with an affidavit that Ms. Watters is aware that false statements are punishable by fine or imprisonment or both. Id.; see 37 C.F.R. § 1.68; 28 U.S.C. § 1746. We have reviewed the testimony of Ms. Watters supporting Uzarski’s public accessibility as of the critical date, and find that Ms. Watters provides credible testimony regarding the receipt of Uzarski by the University of Wisconsin-Madison Library and the cataloging and availability of Uzarski. On this complete record, we are persuaded that the indicia on Uzarski and the support provided by the Watters declaration demonstrate sufficiently that Uzarski was publicly accessible as of the critical date.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Petitioner and its declarant provide ample reasons that one of ordinary skill in the art would have been motivated to employ Villar’s processor to use Uzarski’s method, and ample reasons that one of ordinary skill in the art also would have known to look to Haas to determine what was “well-known to one of ordinary skill in the art at the relevant time to determine the condition of railroad ties,” and to identify and use the particular regulations referenced in Uzarski. Pet. 30 (citing Ex. 1004 ¶ 58), 37–38 (citing Ex. 1004 ¶ 70); see also Reply 6–12; Ex. 1004 ¶¶ 70–71; Ex. 1038, 18–20. On this complete record, and for the reasons provided by Petitioner and discussed above, we determine that Petitioner provides adequate reasoning to combine the three references in the manner proposed in the Petition with a reasonable expectation of success.” slip op. at 33
Patent outcomesUS 9,441,956 unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 9,441,956 - PTAB · May 12, 2015 · IPR2014-00242 · APJ Peter P Chen · IPR · Final written decision
The Board canceled claims 1–3, 5, and 6 and denied substitute claims 7–11 because the Patent Owner failed to establish written-description support for claim 10 and patentability over prior art for claims 7–9 and 11.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“Unlike examination, entry of the proposed substitute claims in an inter partes review is not automatic. As the moving party, Patent Owner must establish that it is entitled to the requested relief. See 37 C.F.R. § 42.20(c). In its Motion to Amend, Patent Owner bears the burden to show, inter alia, that a reasonable number of substitute claims is proposed, there is no broadening of scope, the proposed claims are supported adequately by the written description of the application as filed originally, and the proposed claims are patentable over the prior art. See 37 C.F.R. § 42.121; Idle Free Sys. Inc. v. Bergstrom, Inc., Case IPR2012-00027, slip op. at 5–6 (PTAB June 11, 2013) (Paper 26) (“Idle Free”). We address each of these requirements in turn.” slip op. at 10
- 112 supportDenied
“its Motion to Amend to set forth “[t]he support in the original disclosure of the patent for each claim that is added or amended,” and “[t]he support in an earlier-filed disclosure for each claim for which benefit of the filing date of the earlier filed disclosure is sought.” The test for written description support is “whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). The purpose of the written description requirement is to convey with reasonable clarity to those skilled in the art that, as of the filing date sought, applicant was in possession of the invention as now claimed. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991).” slip op. at 12
- ScopeDecided for patent owner
“2. No Broadening of Scope Proposed substitute claims in an inter partes review “may not enlarge the scope of the claims of the patent.” 35 U.S.C. § 316(d)(3); see 37 C.F.R. § 42.121(a)(2)(ii). In its Motion to Amend, Patent Owner proposes claim 7 as a substitute for claim 1, claim 8 as a substitute for claim 2, claim 9 as a substitute for claim 3, claim 10 as a substitute for claim 5, and claim 11 as a substitute for claim 6. Mot. 1–5. Each claim includes all of the limitations of the corresponding challenged claim for which it is a substitute, and adds additional limitations. Id. No limitations from the challenged claims were deleted in the proposed substitute claims. Patent Owner asserts that the proposed substitute claims do not enlarge the scope of the claims of the ’047 patent. See Mot. 1. Petitioner does not dispute this assertion (“patent owner’s proposed substitute claims . . . add ancillary features”). Opp. 1. We are persuaded that each of the proposed substitute claims does not enlarge the scope of each of the challenged patent claims it intends to replace.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In the Decision to Institute, we determined that no explicit construction was necessary for any of the claim terms beyond their ordinary and customary meanings. Dec. to Inst. 8–9. Neither party has challenged that determination, and based on the record adduced during trial, we see no reason to provide an express construction for any term. For the proposed substitute claims, Patent Owner states that: Like the terms in the original claims, all of [the newly added claim terms in the proposed substitute claims] are simple [claim terms] whose ordinary meaning applies and for which no construction is required, with the possible exception of “member” and “group.” As explained in the specification (Ex. 1) at 3:2–4, “The present invention comprises a method . . . for allowing on-line communications with members of a group of recipients for whom the invention has been implemented.” In the context of proposed independent claim [7], the claimed invention requires that “said first computer system storing information about said plurality of members in a database.” Thus, in the context of the proposed amended claims[,] a “group” is a group of a plurality of members for whom the first computer system has stored information in a database. Mot. 7. Petitioner does not propose alternative constructions for the claim terms “member” or “group.” We cannot discern how the constructions proffered by Patent Owner add any clarity to the terms “member” and “group,” which are simple and commonly understood terms. We decline to provide an express construction for either “member” or “group.”” slip op. at 8
Claim construction§ 101 eligibility§ 103 obviousnesscites AlicePatents in suitUS 8,499,047
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.