• United Services Automobile Association v. Auto Telematics Ltd.Institution denied
  PTAB · Dec 14, 2023 · IPR2023-00858 · APJ Sean P O’Hanlon · IPR · Institution

  The Board denied institution because Petitioner did not show that Peng qualifies as prior art, so it failed to establish a reasonable likelihood of prevailing on any challenge to claims 1–55.

  RulingsInstitution decision

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

    “remaining limitations. As such, the Petition fails to establish that P3 does not provide sufficient written description support for the challenged claims. Thus, the Petition fails to satisfy Petitioner’s burden to establish that Peng qualifies as prior art. Petitioner’s failure is fatal to all of the Petition’s challenges, each of which relies on Peng as prior art. III. CONCLUSION For the foregoing reasons, we determine that Petitioner has not demonstrated a reasonable likelihood of showing that Peng qualifies as prior art to the ’879 patent. Therefore, we determine that Petitioner has failed to demonstrate a reasonable likelihood of prevailing on any of its challenges to claims 1–55 of the ’879 patent. We therefore deny institution of the petitioned inter partes review. IV. ORDER In consideration of the foregoing, it is hereby ordered that the Petition is denied, and no trial is instituted.” slip op. at 21

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner

    “Our reviewing court has explained that “[n]egative claim limitations are adequately supported when the specification describes a reason to exclude the relevant limitation.” Santarus, 694 F.3d at 1351. The Federal Circuit noted that such support need not rise to the level of disclaimer and that it is possible to support both the inclusion and exclusion of the same element. Id. In Inphi Corp. v. Netlist, Inc., 805 F.3d 1350 (Fed. Cir. 2015), the Federal Circuit expanded on the discussion of negative limitations, noting that “properly described, alternative features are sufficient to satisfy the written description standard of § 112, paragraph 1 for negative claim limitations.” Inphi, 805 F.3d at 1357; see also MPEP § 2173.05(i) (9th ed., Rev. 07.2022, Feb. 2023) (stating that, “[i]f alternative elements are positively recited in the specification, they may be explicitly excluded in the claims”). We agree with Patent Owner that P3 provides support for the subject limitation to satisfy the written description requirement of 35 U.S.C. § 112. In particular, P3 discloses the use of the Witness application on a mobile device and the Witness application receives sensor data “typical for modern smart-phones.” Ex. 1505, 5:25–35. These sensor/data inputs include G-force/accelerometer, GPS module (speed, location, elevation, direction, etc.), 3D compass, and camera. Id. Additionally, P3 discloses the processing of mobile phone sensor data to derive driving information such as driving speed and G-force. P3 discloses, Another setting that can be controlled in the Settings Screen is the G-force threshold at which the Witness application will assume that a crash has taken place. It is expected that different vehicles and driving styles will need different G-force thresholds to be set to ensure a reasonable sensitivity to crash forces whilst also prevent crash detection false positives.” slip op. at 15

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

    “3. Conclusion Petitioner does not argue that P3 does not disclose any of the remaining limitations. As such, the Petition fails to establish that P3 does not provide sufficient written description support for the challenged claims. Thus, the Petition fails to satisfy Petitioner’s burden to establish that Peng qualifies as prior art. Petitioner’s failure is fatal to all of the Petition’s challenges, each of which relies on Peng as prior art.” slip op. at 21

  § 102 anticipation§ 112 disclosurecites KSR · Graham
  Patents in suitUS 10,198,879
• United Services Automobile Association v. Auto Telematics Ltd.Institution denied
  PTAB · Nov 27, 2023 · IPR2023-00912 · APJ George R Hoskins · IPR · Institution

  The Board denied institution on claims 1–7 because Petitioner did not show a reasonable likelihood that Peng qualifies as prior art to the ’271 patent.

  RulingsInstitution decision

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

    “The Petition, to justify institution of review, must demonstrate a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim. See 35 U.S.C. § 314(a). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we determine the information presented does not establish a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we deny institution of the petitioned inter partes review.” slip op. at 2

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner

    “We find P3’s disclosure reasonably conveys to a person of ordinary skill in the art that the inventor had possession of the limitation in claim 1 that requires determining a start of a driving period during which a mobile device is removably attached to a vehicle and the vehicle is in use, based on inputs received by a user interface and sensor data from the mobile device’s sensor set.” slip op. at 22

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedNot shown unpatentable

    “B. Legal Standards—Priority of Filing Date A U.S. patent application is entitled to assert priority to the filing date of an earlier-filed foreign application “for the same invention.” 35 U.S.C. § 119(a). This requires that the earlier-filed foreign application must, among other requirements, provide written description support under 35 U.S.C. § 112 for the claimed subject matter in the later-filed U.S. application. See In re Ziegler, 992 F.2d 1197, 1200 (Fed. Cir. 1993) (“A foreign patent application must meet the requirements of 35 U.S.C. § 112, first paragraph, in order for a later filed United States application to be entitled to the benefit of the foreign filing date under 35 U.S.C. § 119.”). “To satisfy the written description requirement, a patent’s specification must ‘reasonably convey[] to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.”’ Novartis Pharms. Corp. v. Accord Healthcare, Inc., 38 F.4th 1013, 1016 (Fed. Cir. 2022) (alteration in original) (quoting Ariad Pharms., Inc. v. Eli Lily & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc)). The written description “test requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.” Ariad, 598 F.3d at 1351. “For negative claim limitations, . . . there is adequate written description when, for example, ‘the specification describes a reason to exclude the relevant [element].”’ Novartis, 38 F.4th at 1016 (second alteration in original) (quoting Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012)).” slip op. at 9

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

    “We mostly agree with Patent Owner. First, as a matter of claim construction, we agree with Patent Owner that the claimed “driving score” corresponds to an assessment of what type of driver an individual is. See id. at 28; Ex. 1001, 10:10–17 (stating “driving information can be matched to a particular driver” which is “particularly useful when assessing a risk profile of said driver” and “[t]he driving information may comprise the driving score”), 12:4–9 (stating “[t]he driving score may be used to determine a risk profile for at least one of the vehicle and driver”). However, to the extent that Patent Owner would limit a driving score to a “number” (Prelim Resp. 28), we disagree. The ’271 patent specification does not support such a construction. See Ex. 1001, 10:10–17, 12:4–9.” slip op. at 31

  Claim construction§ 102 anticipation§ 112 disclosure
  Patents in suitUS 9,311,271
• United Services Automobile Association v. Auto Telematics Ltd.Institution denied
  PTAB · Nov 8, 2023 · IPR2023-00769 · APJ Frances L Ippolito · IPR · Institution

  The Board denied institution on claims 1–27 because Petitioner did not show a reasonable likelihood that Peng qualifies as prior art.

  RulingsInstitution decision

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

    “A. Legal Standards – Priority 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 patent owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). For a claim in a later-filed U.S. patent application to be entitled to the filing date of an earlier U.S. or foreign patent application, the earlier application must, among other requirements, provide written description support under 35 U.S.C. § 112 for the claimed subject matter in the later-filed U.S. application. In re Ziegler, 992 F.2d 1197, 1200 (Fed. Cir. 1993) (“A foreign patent application must meet the requirements of 35 U.S.C. §112, first paragraph, in order for a later filed United States application to be entitled to the benefit of the foreign filing date under 35 U.S.C. § 119.”); Anascape, Ltd. v. Nintendo of Am. Inc., 601 F.3d 1333, 1335 (Fed. Cir. 2010) (explaining that, to obtain the benefit of a parent application’s filing date under section 120, “the claims of the later-filed application must be supported by the written description in the parent ‘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.’” (quoting Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997))). “To satisfy the written description requirement, a patent’s specification must ‘reasonably convey[] to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.”’ Novartis Pharms. Corp. v. Accord Healthcare, Inc., 38 F.4th 1013, 1016 (Fed. Cir. 2022) (alteration in original) (quoting Ariad Pharms., Inc. v. Eli Lily & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc)). “For negative claim limitations, . . . there is adequate written description when, for example, ‘the specification describes a reason to exclude the relevant [element].”’ Id. (quoting Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012)).” slip op. at 10

  • BurdenDecided for patent owner

    “Petitioner contends that “each priority document fails to provide support for at least [1.9]–[1.13] of independent claim 1 (nor the same limitations found in claims 26 and 27) of the ’369 patent.” Pet. 5. While Petitioner arguably provides some explanation for its challenge to limitation [1.9], we observe that Petitioner does not provide any evidence or supporting argument for limitations [1.10]–[1.13]. See Pet. 5–6; Prelim. Resp. 21. As discussed above, we determine that P3’s disclosure reasonably conveys to one skilled in the art that the inventor had possession of limitation [1.9] of claim 1 that requires “wherein the driving information is derived without data from vehicle sensors.” Ex. 1001, 31:63–64. With respect to limitations [1.10]–[1.13], we determine that the Petition is incomplete and lacks sufficient explanation for Petitioner’s challenge to these limitations.” slip op. at 19

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner

    “Our reviewing court has explained that “[n]egative claim limitations are adequately supported when the specification describes a reason to exclude the relevant limitation.” Santarus, 694 F.3d at 1351. The Federal Circuit noted that such support need not rise to the level of disclaimer and that it is possible to support both the inclusion and exclusion of the same element. Id. In Inphi Corp. v. Netlist, Inc., 805 F.3d 1350 (Fed. Cir. 2015), the Federal Circuit expanded on the discussion of negative limitations, noting “that properly described alternative features are sufficient to satisfy the written description standard of § 112, paragraph 1 for negative claim limitations.” Inphi, 805 F.3d at 1357; see also Manual of Patent Examining Procedure (“MPEP”) § 2173.05(i) (9th ed., Rev. 07.2022, Feb. 2023) (stating that, “[i]f alternative elements are positively recited in the specification, they may be explicitly excluded in the claims”). We agree with Patent Owner that P3 provides support for the limitation in question sufficient to satisfy the written description requirement of 35 U.S.C. § 112. In particular, P3 discloses the use of the Witness application on a mobile device and the Witness application receives sensor data “typical for modern smart-phones.” Ex. 1505, 5:25–35. These sensor/data inputs include G-force/accelerometer, GPS module (speed, location, elevation, direction, etc.), 3D compass, and camera. Id.” slip op. at 15

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

    “written description support for claims 1, 26, and 27, and so fails to satisfy Petitioner’s burden to establish that Peng qualifies as prior art. Therefore, we determine Petitioner has failed to demonstrate a reasonable likelihood of prevailing on its challenges of claims 1, 26, and 27, all of which are based on Peng. C. Claims 2–25 Petitioner does not separately dispute that P3 discloses the limitations in dependent claims 2–25. Therefore, the Petition fails to establish that P3 does not provide sufficient written description support for any one of these claims, and so fails to satisfy Petitioner’s burden to establish that Peng qualifies as prior art.” slip op. at 21

  § 103 obviousness§ 112 disclosure
  Patents in suitUS 10,192,369
• United Services Automobile Association v. Auto Telematics Ltd.Institution denied
  PTAB · Sep 21, 2023 · IPR2023-00519 · APJ Frances L Ippolito · IPR · Institution

  The Board denied institution on claims 1–13 because Petitioner did not show a reasonable likelihood that Peng qualifies as prior art, and all four grounds relied on Peng.

  RulingsInstitution decision

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

    “A. Legal Standards – Priority 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 patent owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). For a claim in a later-filed U.S. patent application to be entitled to the filing date of an earlier U.S. or foreign patent application, the earlier application must, among other requirements, provide written description support under 35 U.S.C. § 112 for the claimed subject matter in the later-filed U.S. application. In re Ziegler, 992 F.2d 1197, 1200 (Fed. Cir. 1993) (“A foreign patent application must meet the requirements of 35 U.S.C. §112, first paragraph, in order for a later filed United States application to be entitled to the benefit of the foreign filing date under 35 U.S.C. § 119.”); Anascape, Ltd. v. Nintendo of Am. Inc., 601 F.3d 1333, 1335 (Fed. Cir. 2010) (To obtain the benefit of a parent application’s filing date under section 120, “the claims of the later-filed application must be supported by the written description in the parent ‘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.’” (quoting Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997))). 35 U.S.C. § 112. “To satisfy the written description requirement, a patent’s specification must ‘reasonably convey[ ] to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.”’ Novartis Pharms. Corp. v. Accord Healthcare, Inc., 38 F.4th 1013, 1016 (Fed. Cir. 2022) (quoting Ariad Pharms., Inc. v. Eli Lily & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc)). “For negative claim limitations, . . . there is adequate written” slip op. at 8

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner

    “Our reviewing court has explained that “[n]egative claim limitations are adequately supported when the specification describes a reason to exclude the relevant limitation.” Santarus, 694 F.3d at 1351. The Federal Circuit noted that such support need not rise to the level of disclaimer and that it is possible to support both the inclusion and exclusion of the same element. Id. In Inphi Corp. v. Netlist, Inc., 805 F.3d 1350 (Fed. Cir. 2015), the Federal Circuit expanded on the discussion of negative limitations, noting “that properly described alternative features are sufficient to satisfy the written description standard of § 112, paragraph 1 for negative claim limitations.” Inphi, 805 F.3d at 1357; see also Manual of Patent Examining Procedure (“MPEP”) § 2173.05(i) (9th ed., Rev. 07.2022, Feb. 2023) (stating that, “[i]f alternative elements are positively recited in the specification, they may be explicitly excluded in the claims”). We agree with Patent Owner that P3 provides support for the limitation in question sufficient to satisfy the written description requirement of 35 U.S.C. § 112. In particular, P3 discloses the use of the Witness application on a mobile device and the Witness application receives sensor data “typical for modern smart-phones.” Ex. 1505, 5:25–35. These sensor/data inputs include G-force/accelerometer, GPS module (speed, location, elevation, direction, etc.), 3D compass, and camera. Id. Additionally, P3 discloses the processing of mobile phone sensor data to derive driving information such as the driving speed and G-force. P3 discloses that [a]nother setting that can be controlled in the Settings Screen is the G-force threshold at which the Witness application will assume that a crash has taken place. It is expected that different vehicles and driving styles will need different G-force thresholds to be set to ensure a reasonable sensitivity to crash forces whilst also prevent crash detection false positives. Ex. 1505, 14:19–23. Similarly, as discussed, P3 discloses that “the application may be arranged to detect the vehicle speed, and at a particular speed, switch off the screen entirely. It should be understood that the device will continue to record video, telemetry and other information even when the screen is switched off.” Id. at 15:5–8.” slip op. at 18

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

    “A. Legal Standards – Priority 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 patent owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). For a claim in a later-filed U.S. patent application to be entitled to the filing date of an earlier U.S. or foreign patent application, the earlier application must, among other requirements, provide written description support under 35 U.S.C. § 112 for the claimed subject matter in the later-filed U.S. application. In re Ziegler, 992 F.2d 1197, 1200 (Fed. Cir. 1993) (“A foreign patent application must meet the requirements of 35 U.S.C. §112, first paragraph, in order for a later filed United States application to be entitled to the benefit of the foreign filing date under 35 U.S.C. § 119.”); Anascape, Ltd. v. Nintendo of Am. Inc., 601 F.3d 1333, 1335 (Fed. Cir. 2010) (To obtain the benefit of a parent application’s filing date under section 120, “the claims of the later-filed application must be supported by the written description in the parent ‘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.’” (quoting Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997))). 35 U.S.C. § 112. “To satisfy the written description requirement, a patent’s specification must ‘reasonably convey[ ] to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.”’ Novartis Pharms. Corp. v. Accord Healthcare, Inc., 38 F.4th 1013, 1016 (Fed. Cir. 2022) (quoting Ariad Pharms., Inc. v. Eli Lily & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc)). “For negative claim limitations, . . . there is adequate written description when, for example, ‘the specification describes a reason to exclude the relevant [element].”’ Id. (quoting Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012)).” slip op. at 8

  § 102 anticipation§ 112 disclosure
  Patents in suitUS 9,633,487
• Halliburton Energy Services, Inc. v. U.S. Well Services, LLCAll claims unpatentable
  PTAB · Aug 30, 2023 · IPR2022-00610 · APJ George R Hoskins · IPR · Final written decision

  Claims 1–15 are unpatentable under § 103; the contingent motion to amend is denied for substitute claims 16–30.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner contends a person having ordinary skill in the art pertaining” slip op. at 8

  • Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateDenied

    “that the ’756 Application does not provide written description support for proposed substitute claim 23. See Prelim. Guid. 6–8. Petitioner’s Sur-reply agrees with that preliminary conclusion. See Mot. Sur-reply 1–7. For the following reasons, we now conclude again that the ’756 Application does not provide written description support for the limitation of claim 23 reciting “wherein a first orientation of the first helical coil is different from and perpendicular to a second orientation of the second helical coil.” Mot. App. A (pg. 9).” slip op. at 106

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “relies on as having been allowed due to objective indicia. See Ex. 1006, 7:19–8:60. At a high level, the independent claims each recite a system for hydraulically fracturing an underground well formation comprising at least one pump driven by one or more electric motors, and a variable frequency drive to control the speed of the motor(s) and perform motor diagnostics. See id. at 7:19–33 (claim 1), 7:57–8:10 (claim 10), 8:31–51 (claim 19). None of the parent ’410 patent’s claims recites swivel connections located in the pump’s discharge piping branch as recited in claim 1 of the ’824 patent at issue here. See id. at 7:19–8:60. And, claim 1 of the ’824 patent does not recite an electric motor, or a variable frequency drive, like the parent ’410 patent’s claims do. Thus, even if the prosecution history of the parent ’410 patent establishes a nexus between Clean Fleet product(s) and one or more claims of the ’410 patent, it is not at all clear to us how this nexus might also apply to claim 1 of the ’824 patent. We reached the same conclusion in the Institution Decision. See Inst. Dec. 41.” slip op. at 72

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableUnpatentable

    “leads to base swivel joint 26. See id. ¶ 14. “The jumper line 20 may comprise any combination of generally straight pipes and/or swivel joints . . . to isolate the base unit 24, and thus the articulated arm 22, from vibration and movement of the pumping unit 14.” Id. ¶ 15. Accordingly, first swivel joint 36 and second swivel joint 38 together “provide five degrees of freedom between the first pipe 34 and the base swivel 26” so “the base unit 24 will not be affected by vibration and movement of the pumping unit 14.” Id. ¶¶ 15–16.” slip op. at 32

  Patent outcomesUS 10,934,824 unpatentable
  § 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 10,934,824
• Halliburton Energy Services, Inc. v. U.S. Well Services, LLCOther
  PTAB · Apr 27, 2023 · IPR2022-00074 · APJ George R Hoskins · IPR · Final written decision

  Original claims 1–13 were canceled by amendment; proposed substitute claims 14–26 were denied because “high pressure” is indefinite under § 112.

  RulingsFinal written decision

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part

    “original claims 1–13 of the ’732 patent, which are all of the claims challenged in the Petition. See Mot. Caption (“NON-CONTINGENT”), 1 (stating the motion is “Non-Contingent”), 2 (“The claim listing cancels original claims 1–13 . . . .”); Mot. App. A, 1 (stating original claims 1–13 are “Cancelled”); Pet. 17. Petitioner does not oppose this portion of the Motion to Amend. See generally Mot. Opp. Therefore, we grant Patent Owner’s request to cancel original claims 1–13. As a result, we do not reach the unpatentability grounds asserted in the Petition against these original claims.” slip op. at 5

  • Skill levelSkill level board ownDecided for petitioner

    “b) Person of Ordinary Skill in the Art Petitioner contends a person having ordinary skill in the art pertaining to the ’732 patent would have either: “(1) a Bachelor of Science in Mechanical Engineering, Electrical Engineering, Petroleum Engineering or an equivalent field as well as at least two years of academic or industry experience in the oil and gas industry, including well drilling, completion, or production”; or “(2) at least four years of industry experience in the oil and gas industry, including well drilling, completion, or production.” Pet. 13. Patent Owner utilizes the same formulation of ordinary skill. See Mot. 13. 2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. The parties’ agreed-upon formulation of ordinary skill is consistent with the level of skill reflected in the ’732 patent and the prior art of record. We therefore apply it in the present Decision.” slip op. at 10

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “witnesses cannot agree on a numerical definition of “high pressure.” Mr. Marscher says high pressure is between 5,000 psi and 15,000 psi (see Ex. 1030, 111:1–112:3), whereas Mr. Schaaf says high pressure is between 8,000 psi and 12,000 psi and specifically disagrees with Mr. Marscher’s testimony that high pressure can be below 8,000 psi (see Ex. 1031, 43:6–44:13). Although there are overlapping values in the witness testimony, we agree with Petitioner that the testimony does not evidence clear boundaries for how an ordinarily skilled artisan would interpret “high pressure.” See Mot. Sur-reply 6 (citing Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 901–02 (2014); Interval Licensing, 766 F.3d at 1371). Thus, the testimony of Patent Owner’s own witnesses is contrary to Patent Owner’s position that an ordinarily skilled artisan would have understood the meaning of “high pressure.” Furthermore, neither Mr. Marscher nor Mr. Schaaf cites any objective evidence to support their respective notions of what “high pressure” might be, in the context of hydraulic fracturing. For example, neither witness cites to any published industry standards to support their respective opinions. This lack of objective evidentiary support weakens the persuasiveness of both witness’s testimony on this issue, especially because their opinions conflict with each other. We are instead persuaded by the testimony of Petitioner’s witness, Dr. Durham, who testifies that “[t]here is [no] general consensus about the precise boundaries of the term ‘high pressure,’ and different engineers can reasonably come to different conclusions as to the meaning of the term absent further guideposts.” Ex. 1036 ¶ 17; see also id. ¶ 19 (“There is no universally accepted definition of ‘high pressure.’”). Dr. Durham further testifies that “what might be sufficiently ‘high’ pressure for one fracturing application and according to one [person of ordinary skill in the art] may be not ‘high’ enough in another fracturing application and to another [such person].” Id. ¶ 18; see also id. ¶ 19 (“Merely stating that a pump fractures a formation says little to nothing about whether that pump should be deemed ‘high pressure’ or ‘not high pressure.’”).” slip op. at 30

  • BurdenUnpatentable

    “The intrinsic record does not “provide objective boundaries for those of skill in the art” to determine whether a given pressure is “high pressure” as recited in the proposed substitute claims. See Interval Licensing, 766 F.3d at 1370–71. Nor does the intrinsic record provide guidance to clarify the meaning of “high pressure.” As noted above, the ’732 patent refers only to “high pressure” without qualification or explanation as to how “high pressure” is determined. The prosecution history does not address “high pressure” in any meaningful way and, therefore, also fails to explain what pressures are “high” pressures. See generally Ex. 1003. Thus, the intrinsic record does not explain adequately what pressure(s) qualify as “high pressure,” nor differentiate “high pressure” from other pressures at which hydraulic fracturing can be performed.” slip op. at 27

  Claim construction§ 112 disclosurecites Nautilus
  Patents in suitUS 10,254,732
• Halliburton Energy Services, Inc. v. U.S. Well Services, LLCAll claims unpatentable
  PTAB · Feb 17, 2023 · IPR2021-01316 · APJ Sean P O’Hanlon · IPR · Final written decision

  Claims 1–17 are unpatentable over the stated anticipation and obviousness grounds; the motion to amend is denied because substitute claims 18–34 are indefinite, and claims 18–26 also lack written-description support.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedOther

    “We agree with Petitioner that, by their plain language, the claims recite a plurality of variable frequency drives, with each of the variable frequency drive connected to either the first motor or a second motor. See, e.g., Ex. 1001, 16:1–4; see also Ex. 2015 ¶ 48 (Patent Owner’s declarant testifying that “the ‘724 [patent] claims indicate that the plurality of electric control VFDs need to be coupled to either the first motor or the second motors.”). Coli discloses such an arrangement. Coli discloses that, “[b]ecause [its] electric motors are controlled by variable frequency drives, absolute control of all equipment on location can be maintained from one central point.” Ex. 1004, 11:10–12 (emphasis added). Coli discloses that “[t]ypically, each fracturing module 20 will be associated with a drive housing for controlling electric motor 21 and pumps 22, as well as an electrical transformer and drive unit 50.” Id. at 7:45–50. Petitioner’s declarant testifies that “the drive unit is the variable frequency drive.” Ex. 1003 ¶ 74. Coli discloses that “[b]lender module 40 can . . . include a control cabin 53 for housing equipment controls for first blender unit 47a and second blender unit 47b, and can further include appropriate drives and coolers as required.” Ex. 1004, 10:4–7 (emphasis added). Petitioner’s declarant interprets these “drives” to be variable frequency drives. Ex. 1003 ¶ 76. We credit this testimony of Dr. Durham, which neither Patent Owner nor its declarants address squarely. Accordingly, for the foregoing reasons, Coli and Dr. Durham’s” slip op. at 24

  • Skill levelSkill level petitioner adoptedOther

    “Patent Owner asserts that it “uses Petitioners’ proposed definition of a person of ordinary skill in the art.” PO Resp. 5. Based on the arguments presented and the cited references, we find Petitioner’s uncontested definition of the level of ordinary skill reasonable and for purposes of this Decision adopt it as our own.” slip op. at 10

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

    “We agree with Petitioner that, by their plain language, the claims recite a plurality of variable frequency drives, with each of the variable frequency drive connected to either the first motor or a second motor. See, e.g., Ex. 1001, 16:1–4; see also Ex. 2015 ¶ 48 (Patent Owner’s declarant testifying that “the ‘724 [patent] claims indicate that the plurality of electric control VFDs need to be coupled to either the first motor or the second motors.”). Coli discloses such an arrangement. Coli discloses that, “[b]ecause [its] electric motors are controlled by variable frequency drives, absolute control of all equipment on location can be maintained from one central point.” Ex. 1004, 11:10–12 (emphasis added). Coli discloses that “[t]ypically, each fracturing module 20 will be associated with a drive housing for controlling electric motor 21 and pumps 22, as well as an electrical transformer and drive unit 50.” Id. at 7:45–50. Petitioner’s declarant testifies that “the drive unit is the variable frequency drive.” Ex. 1003 ¶ 74. Coli discloses that “[b]lender module 40 can . . . include a control cabin 53 for housing equipment controls for first blender unit 47a and second blender unit 47b, and can further include appropriate drives and coolers as required.” Ex. 1004, 10:4–7 (emphasis added). Petitioner’s declarant interprets these “drives” to be variable frequency drives. Ex. 1003 ¶ 76. We credit this testimony of Dr. Durham, which neither Patent Owner nor its declarants address squarely. Accordingly, for the foregoing reasons, Coli and Dr. Durham’s testimony support Petitioner’s contentions. g. Conclusion For the foregoing reasons, we conclude that Petitioner has shown, by a preponderance of the evidence, that claims 1, 10, and 17 are anticipated by Coli.” slip op. at 24

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

    “blending of a fluid from the fluid source with a fluid additive from the fluid additive source to generate the fracturing fluid,” and that its “electric blending operation permits greater accuracy and control of fracturing fluid additives.” Ex. 1004, 3:14–17, 8:64–66. Petitioner’s declarant interprets this discussion to disclose a hydration unit. Ex. 1003 ¶ 140. Payne discloses a fracturing system with a hydration unit including an electric-motor drive and a programmable automation controller (PAC). Ex. 1006 ¶¶ 88–89. Payne discloses that its programmable automation controllers communicate with variable frequency drives. Id. ¶ 39. Petitioner’s declarant interprets Payne’s electric-motor drive to be a variable frequency drive. Ex. 1003 ¶ 141. Petitioner argues that it would have been obvious to include these features of Payne’s hydration unit in Coli’s system “because such an improvement represents the use of a known technique (i.e., the VFD-controlled and trailer-mounted hydration unit) to predictably improve a similar system (i.e., the system of Coli) in the same way.” Pet. 51 (citing Ex. 1003 ¶ 138; KSR, 550 U.S. at 416–186). 6 Petitioner cites to West’s Supreme Court Reporter (“127 S.Ct. 1727, 1740”) rather than the official United States Reports. Pet. 51. Accordingly, for the foregoing reasons and those set forth in § II.E above, we conclude that Petitioner has shown, by a preponderance of the evidence, that the limitations of claim 9 are disclosed by the combination of Coli and Payne, and that Petitioner has set forth reasoning with rational underpinning why it would have been obvious to combine the teachings of these references to arrive at the claimed subject matter. See, e.g., Pet. 51.” slip op. at 38

  Patent outcomesUS 10,280,724 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · Graham · Nautilus
  Patents in suitUS 10,280,724
• Halliburton Energy Services, Inc. v. U.S. Well Services, LLCOther
  PTAB · Jan 24, 2023 · IPR2021-01066 · APJ George R Hoskins · IPR · Final written decision

  The Board cancelled original claims 1–20 and denied substitute claims 21–40 because their numerical pressure ranges added new matter.

  RulingsFinal written decision

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part

    “The test for new matter is whether the original application’s disclosure “reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc); see also Senju Pharm. Co. v. Apotex Inc., 746 F.3d 1344, 1352 (Fed. Cir. 2014) (citing Ariad as providing the test for determining new matter under 35 U.S.C. § 132(a)). We perform “an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art,” to determine whether it demonstrates possession of the claimed subject matter. Ariad, 598 F.3d at 1351.” slip op. at 11

  • Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateDenied

    “The test for new matter is whether the original application’s disclosure “reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc); see also Senju Pharm. Co. v. Apotex Inc., 746 F.3d 1344, 1352 (Fed. Cir. 2014) (citing Ariad as providing the test for determining new matter under 35 U.S.C. § 132(a)). We perform “an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art,” to determine whether it demonstrates possession of the claimed subject matter. Ariad, 598 F.3d at 1351.” slip op. at 11

  • Skill levelSkill level board ownDecided for petitioner

    “to the ’711 patent would have either: “(1) a Bachelor of Science in Mechanical Engineering, Electrical Engineering, Petroleum Engineering or an equivalent field as well as at least 2 years of academic or industry experience in the oil and gas industry, including well drilling, completion, or production”; or (2) “at least four years of industry experience in the oil and gas industry including well drilling, completion, or production.” Pet. 18. Patent Owner utilizes the same formulation of ordinary skill. See Mot. 10–11. 2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. The parties’ agreed-upon formulation of ordinary skill is consistent with the level of skill reflected in the ’711 patent and the prior art of record. We therefore apply it in the present Decision.” slip op. at 11

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “disclosures of the ’656 Application into demonstrating possession of the numerical pressure ranges recited in proposed substitute claims 21 and 33 is unavailing, for several reasons. First, as seen from the deposition testimony quoted above, Patent Owner’s own witnesses cannot agree on a numerical definition of “high pressure.” Mr. Marscher says high pressure is between 5,000 psi and 15,000 psi (see Ex. 1020, 111:1–112:3), whereas Mr. Schaaf says high pressure is between 8,000 psi and 12,000 psi and specifically disagrees with Mr. Marscher’s testimony that high pressure can be below 8,000 psi (see Ex. 2014, 43:6–44:13). Thus, the testimony of Patent Owner’s own witnesses is contrary to Patent Owner’s position that a person of ordinary skill in the art would have understood that the ’656 Application’s disclosure of “high pressure” pumping demonstrates possession of a specific numerical range of pumping pressures. Second, neither Mr. Marscher nor Mr. Schaaf cites any objective evidence to support their respective notions of what “high pressure” might be, in the context of hydraulic fracturing. For example, neither cites to any published industry standards to support their respective opinions. This lack of objective evidentiary support weakens the persuasiveness of both witnesses’ testimony on this issue, especially because their opinions conflict with each other.” slip op. at 18

  § 103 obviousness§ 112 disclosure
  Patents in suitUS 10,020,711
• Halliburton Energy Services, Inc. v. U.S. Well Services, LLCOther
  PTAB · Jan 17, 2023 · IPR2021-01036 · APJ Lynne H Browne · IPR · Final written decision

  The Board granted cancellation of original claims 1–13, denied substitute claims 14–19 and 21 for new matter, and denied claims 20 and 22–26 as unpatentable.

  RulingsFinal written decision

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part

    “V. SUMMARY OF CONCLUSIONS We grant Patent Owner’s non-contingent request to cancel original claims 1–13 of the ’728 patent, and we deny Patent Owner’s request to add proposed substitute claims 14–26 to the ’728 patent.16 Thus, the result of this Decision is summarized by the following table. Motion to Amend Outcome Claim(s) Original Claims Canceled by Amendment 1–13 Substitute Claims Proposed in the Amendment 14–26 Substitute Claims: Motion to Amend Granted Substitute Claims: Motion to Amend Denied 14–26 Substitute Claims: Not Reached VI. ORDER In consideration of the foregoing, it is hereby: ORDERED that Patent Owner’s Motion to Amend is granted as to the non-contingent request to cancel original claims 1–13 of the ’728 patent; 16 Should Patent Owner wish to pursue amendment of the challenged claims in a reissue or reexamination proceeding subsequent to the issuance of this Decision, we draw Patent Owner’s attention to the April 2019 Notice Regarding Options for Amendments by Patent Owner Through Reissue or Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg. 16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application or a request for reexamination of the challenged patent, we remind Patent Owner of its continuing obligation to notify the Board of any such related matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2). FURTHER ORDERED that Patent Owner’s Motion to Amend is” slip op. at 39

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “2. Level of Ordinary Skill in the Art Petitioner contends a person having ordinary skill in the art pertaining to the ’728 patent would have either: (1) a Bachelor of Science in Mechanical Engineering, Electrical Engineering, Petroleum Engineering or an equivalent field as well as at least two years of academic or industry experience in the oil and gas industry, including well drilling, completion, or production; or (2) at least four years of industry experience in the oil and gas industry, including well drilling, completion, or production. 2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. Pet. 14–15. Patent Owner utilizes Petitioner’s formulation of ordinary skill. See Mot. 12–13. Petitioner’s formulation of ordinary skill is consistent with the level of skill reflected in the ’728 patent and the prior art of record. We therefore apply it in the present Decision. 3.” slip op. at 12

  • Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateDenied
  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “We see no evidence of improper hindsight. The Robinson/Broussard/ Henry combination does not disclose the claimed load box. Morris discloses mobile source of electricity 103 to supply electric power to fracturing equipment within mobile fracturing system 103 that includes at least one switchgear transport 112, a plurality of drive transports 104, at least one auxiliary power transport 106, at least one blender transport 110, at least one data van 114 and a plurality of fracturing pump transports 108 that deliver fracturing fluid through wellhead 101 to subsurface geological formations. Ex. 1037 ¶ 43. Morris discloses that “switch gear transport 112 may comprise a plurality of electrical disconnect switches, fuses, transformers, and/or circuit protectors to protect the fracturing equipment.” Id. Dr. Ehsani, Petitioner’s expert, testifies that “the switchgear (with switches, fuses, and circuit protectors) described in Morris is one example of a ‘load box’” comparing it to the ’728 patent’s disclosure that “tie ins for devices that operate at the stepped down voltage” are exemplary load boxes. Ex. 1041 ¶ 60 (citing Ex. 1001, 5:50–52). Dr. Ehsani further testifies that a person of ordinary skill in the art “would have recognized that lube oil heaters would be part of the fracturing pump transport or the additional auxiliary equipment to which power would be directed from switchgear.” Id. We credit Dr. Ehsani’s unrebutted testimony, which is supported by Morris’ disclosures discussed above. For these reasons, we determine that Petitioner has shown, by a preponderance of the evidence, that proposed substitute claim 20 is unpatentable over the combined teachings of Robinson, Broussard, Henry, and Morris.” slip op. at 35

  § 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 9,611,728
• Kiosoft Technologies, LLC / Techtrex, Inc. v. Payrange Inc.Some claims unpatentable
  PTAB · Dec 14, 2022 · PGR2021-00093 · APJ Ken B Barrett · PGR · Final written decision

  Claims 1–6, 8–10, 14, 15, and 18–25 are unpatentable under § 101; claims 7, 11–13, 16, and 17 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. The Level of Ordinary Skill in the Art In determining the level of ordinary skill in the art, various factors may be 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) (internal quotation marks and citation omitted). Petitioner contends: A [person of ordinary skill in the art (“POSITA” or “POSA”)] at the time of the earliest claimed filing date of the ’614 Patent would have had an education background of, or practical experience providing an equivalent to, a Bachelor of Science in Electrical Engineering, Computer Science, Information Technology, or a related/equivalent field and at least 3 years of academic or industry experience in electronic payment systems. Pet. 16 (citing Ex. 1003 ¶¶ 5–6). Patent Owner affirmatively states that it does not dispute Petitioner’s asserted educational background of a person of ordinary skill in the art. PO Resp. 7. Patent Owner does not dispute Petitioner’s proposed number of years of experience, instead contending that “the claims are patentable regardless of the number of years of work experience a POSA would have had.” Id. (citing Ex. 2019 ¶¶ 49–58). Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). We adopt Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 8

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

    “construction disputes to find that Petitioners have failed to satisfy their burden of proof.” PO Resp. 8. Patent Owner goes on to state its agreement with Petitioner’s proposed construction for the “identifying” limitation (id. at 9) and indicate its disagreement with certain of Petitioner’s proposals (id. at 9–14). Patent Owner confirmed at the oral argument that no claim term needs to be construed to reach a dispositive issue. Tr. 33:23–34:5. We determine that we need not expressly construe any claim terms to resolve the parties’ disputes.” slip op. at 11

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionDecided for petitioner

    “All of the claimed method steps of claim 1 occur “at the mobile device” (element 1.1), and the method includes a step of enabling user interaction with the user interface to complete the vending transaction (element 1.9). Id. at 46:61–65, 47:24–28. Claim 1 does not recite completing the purchase. The ’614 patent describes a commercial transaction completed at the payment accepting unit (i.e. the vending machine), not at the mobile device. Ex. 1001, 7:15–19; see also id. at 16:46–50; 17:57–59; 19:17–20; 19:35–38. We, thus, agree with Patent Owner that the claimed method does not require completing or conducting the transaction, but only enabling the completion of the transaction. On this complete record, we are persuaded that the elements block quoted above recite the concept of identifying a merchant and enabling completion of a purchase from the merchant. See Pet. 20 (arguing that the claimed method “is no less abstract than a customer noticing a store, making a purchase, and receiving a receipt.”); Pet. Reply 5 (arguing that the claim describes “nothing more than a customer noticing and identifying a store amongst multiple stores based on the unique visual image of that store, entering the store and communicating with the merchant, making a purchase, and receiving a receipt—all while using conventional tools.”). In particular, claim 1 recites a step for identifying a merchant based on its advertised presence—identifying a nearby vending machine that is available to accept payment from a mobile payment application, with that identifying involving the broadcasting of predefined radio messages.8 Claim 1 also recites steps for enabling completion of a purchase from the merchant— establishing a communication connection between the user’s device and the vending machine; displaying an interface that allows a user to select a vending machine, to trigger payment for the vending transaction, and to enable the completion of the transaction; and updating the user interface after receiving information from the vending machine regarding the transaction (which, as indicated by dependent claim 3, may be information indicating that the vending transaction was completed). Our slight revision of the abstract idea from what we previously stated in our Institution Decision does not impact the patentability analysis. Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241 (Fed. Cir. 2016).” slip op. at 17

  • Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptMixed

    “As discussed above, the Specification indicates that the short-range communication between the vending machine and mobile device can be not only conventional technologies such as Bluetooth, near-field communication (NFC), and radio frequency identification (RFID), but also could be “any wired or wireless technology that could be used to communicate a small distance (approximately a hundred feet or closer) that is known.” Ex. 1001, 9:57–67. The Specification ties that technology to the “broadcast” in claim 1 (id. at 47:2–5). For example, the Specification explains that “[e]ach adapter module 100 [of the vending machine] advertises its presence by broadcasting signals (advertising broadcast signals) to mobile devices in the zones 102, 104, 106.” Id. at 10:43–45. “The outermost range is the Bluetooth range 106 . . . [and] is the area in which the adapter module 100 is able to broadcast its presence.” Id. at 18:29–33. Further, Dr. Shamos testified that the Bluetooth protocol requires that two devices wishing to interact with each other identify themselves to each other. Ex. 1030, 102:3– 24. Dr. Shamos also testified that the Low prior art reference discloses that a vending machine identifies itself to the user. Id. at 100:9–20; see Ex. 1007, 2:25–28 (Low stating that, “in some embodiments, multiple machines may send their unique identifiers, such that the user is able to select one or more machines to purchase from.”). Thus, the abstract idea of identifying a merchant is implemented by nothing more than well-known, routine, and conventional wireless communications.” slip op. at 39

  Patent outcomesUS 10,891,614 mixed
  Claim construction§ 101 eligibility§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Mayo · Bilski · Phillips · KSR · Graham · Nautilus
  Patents in suitUS 10,891,614

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.