- BJ Energy Solutions, LLC v. Yantai Jereh Petroleum Equipment & Technologies Co., Ltd.Institution deniedPTAB · Sep 7, 2021 · PGR2021-00060 · APJ Ryan H Flax · PGR · Institution
The Board denied institution because the petition did not show claims 1–7 likely unpatentable, and a possible § 112(a) issue for claims 8–9 did not justify instituting on all claims and grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“not demonstrated with particularity that it is more likely than not that most claims challenged in the petition are unpatentable under the asserted grounds. Although there is a reasonable argument that claims 8 and 9 may be unpatentable under 35 U.S.C. § 112(a), as discussed above, this analysis is applicable to only these two dependent claims under a single ground for unpatentability, leaving Petitioner’s other ten grounds insufficient regarding independent claim 1 and dependent claims 2–7. As discussed above, instituting trial under these circumstances would not be an efficient use of the Board’s or the parties’ time and resources. See Chevron, IPR2018- 00923, Paper 9, 10–11; Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper 7, 41–43 (PTAB Jan. 24, 2019) (informative). Our decision at this stage derives from our review of the record presented. In accordance with the Court’s decision in SAS (138 S. Ct. at 1359– 60) and Office guidance, we deny institution of a post-grant review of the challenged claims of the ’631 patent on any grounds alleged by Petitioner. This decision does not reflect a final determination on the patentability of any claim.” slip op. at 66
- Other 314aInstitution denied discretionary otherInstitution denied
“Even when a petitioner satisfies the minimum statutory institution standard (e.g., demonstrating a reasonable likelihood of prevailing with respect to one or more claims in an inter partes review or that it is more likely than not that at least one claim is unpatentable in a post-grant review), institution of review remains discretionary. SAS Inst. v. Iancu, 138 S. Ct. 1348, 1356 (2018); Harmonic, Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“First of all, the PTO is permitted, but never compelled, to institute an IPR proceeding.”). Under such circumstances, the Board takes into account other considerations, including efficiency and fundamental fairness for all parties. See Adaptics Limited v. Perfect Co., IPR2018-01596, Paper 20 at 17 (PTAB Mar. 6, 2019) (informative); Chevron Oronite Co. LLC v. Infineum USA L.P., IPR2018-00923, Paper 9 (PTAB Nov. 7, 2018) (informative); see also Consolidated Trial Practice Guide, 84 FR 64280, 53– 63 (2019) (addressing various considerations at institution phase, including efficiency and fundamental fairness for all parties).1 We conclude that Petitioner has not demonstrated in the petition that it is more likely than not that challenged claims 1–7 are unpatentable under any asserted grounds for unpatentability. Although it is a closer question as to whether Petitioner has demonstrated it is more likely than not that dependent claims 8 and 9 are unpatentable based on a single asserted unpatentability ground under § 112, we determine based on the record here that instituting a trial with respect to all challenged claims under all eleven asserted grounds for unpatentability is not an efficient use of the Board’s or the parties’ time and resources. Therefore, we do not institute post-grant review pursuant to 35 U.S.C. § 324. See SAS, 138 S. Ct. at 1359–60 (requiring institution on all claims, if any); see also Consolidated Trial Practice Guide, 55 (providing guidance in view of SAS).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“to read the concept of “flush with” into the claims. We agree with Petitioner’s position that such an interpretation is not supported by the ’631 patent’s written description, which illustrates and describes two embodiments, each having a turbine engine and reduction gearbox configured to be flush with one another, but refers to only the configuration of Embodiment 1 as being “directly connected” and refers to the configuration of Embodiment 2 as being merely “connected.” See Ex. 1001, 5:27–28, 5:62–6:2, Figs. 2, 3; see also Ex. 2001 ¶ 63 (Patent Owner’s expert witness confirming there is a difference between merely “connected” and “directly connected”). Thus, the intrinsic record supports a conclusion that the concept of “directly connected” is not related to whether one component is “flush with” another component. This disclosure of the ’631 patent also illuminates the meaning of “directly connected.” As shown in Embodiment 2, something may be connected with another thing even if there are intervening components, e.g., a transmission shaft or coupling; however, as shown in Embodiment 1, the ’631 patent uses the term “directly connected” only where no such intervening components are disclosed. Ex. 1001, 5:15– 6:19, Figs. 2, 3. Besides the guidance provided with respect to the embodiments discussed above, the ’631 patent does not otherwise expressly define the term “directly connected.” See generally Ex. 1001. Thus, we consider what the ordinarily skilled artisan would consider to be its ordinary and customary meaning. In this respect, Patent Owner also uses the word “uninterrupted” to describe “directly connected.” See Prelim. Resp. 6; see also Ex. 2001 ¶¶ 61–71. We conclude based on this record that the concept of “uninterrupted” is more apt than the concept of “flush with,” and find it to be a better description for the ordinary and customary meaning of “directly connected.” For example, the ’631 patent describes, in Embodiment 1, “the turbine engine 19 is connected to the plunger pump 18.” Ex. 1001, 5:26–27 (emphasis added). However, it is without question that Embodiment 1 positions a reduction gearbox between the turbine engine and plunger pump; thus, the engine and pump may be connected, but they are not directly connected. See, e.g., Fig. 2. On the other hand, regarding this same Embodiment 1, the ’631 patent describes that “the turbine engine 19 is directly connected to an input end of the reduction gearbox 24,” and there are no components illustrated or described as being between the turbine engine and reduction gearbox. Id. at 5:28–30 (emphasis added), Fig. 3. The connection between the turbine engine and reduction gearbox shown in Embodiment 1 is more aptly described as being uninterrupted. Thus, this illuminates the meaning of “directly connected.” In view of the above, we ascribe to the term “directly connected” its ordinary and customary meaning as it would have been understood by a person of ordinary skill in the art, and we find that ordinary and customary meaning to require that the turbine engine and reduction gearbox are connected with nothing intervening there-between so that their connection is uninterrupted.” slip op. at 29
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Petitioner’s evidence shows that the Apollo 1 apparatus has two gearboxes and a clutch between its turbine engine and plunger pump, thus the Apollo 1 does not meet the claim limitation “the plunger pump is a plunger pump integrated with a reduction gearbox, the turbine engine is directly connected to an input end of the reduction gearbox integrated on the plunger pump.” Ex. 1001, 6:51–54. Petitioner’s Exhibit 1017 is explained by Mr. Zhang11 as having these two gearboxes and clutch, where at least one of the gearboxes and the clutch forecloses the system from having a single reduction gearbox that is both integrated on a pump and directly connected to a turbine engine. Ex. 2010 ¶¶ 8–12. Petitioner presents no evidence contradicting Mr. Zhang’s understanding of the Apollo 1 configuration and, notably never attempted to explain exactly what is shown in the above-reproduced photograph from its own Exhibit 1017, even when given the opportunity to address Mr. Zhang’s testimony in its Reply. See generally Reply.” slip op. at 50
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · Graham · NautilusPatents in suitUS 10,865,631 - PTAB · Aug 12, 2021 · PGR2021-00026 · APJ Jamie T Wisz · PGR · Rehearing
The Board denied rehearing, leaving institution denied for claims 1–20 because Petitioner did not show error in the priority-support finding or improper burden shifting.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS Pursuant to 37 C.F.R. § 42.71(d): A party dissatisfied with a decision may file a single request for rehearing without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. When reconsidering a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion exists where a “decision [i]s based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988). A rehearing request is not an opportunity for the requesting party to reargue its case or merely to express disagreement with the underlying decision. Nor is it an opportunity for the moving party to present new arguments that were not in its original submissions.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“The ’611 provisional application discloses a first side (8) and a second side (9) of the beveled platform (5)/distal member wherein the first lateral blade (10) and the second lateral blade (11) are “along the sides of said beveled platform.” Ex. 1007, 38. As shown in the annotated figures below, the ’611 provisional application depicts right and left edges, which are the lines/borders between the sides (8, 9) and top of the distal member, wherein these edges extend towards the rearward end from the tip (6). Decision 39–40 (citing Prelim. Resp. 21, 45–46 (citing Ex. 1007, Figs. 1, 3)). Annotated Figures 1 and 3 include added lines and labels indicating the edges of the distal member. Petitioner’s argument appears to hinge on the contention that the beveled nature of the platform prevents it from being an edge. See Req. Reh’g 4, 6. However, Petitioner provides no persuasive arguments or evidence for this contention. We understand that Petitioner disagrees with the Board’s assessment, but simple disagreement is not effective to demonstrate an abuse of discretion.” slip op. at 5
- Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner
“The ’611 provisional application discloses a first side (8) and a second side (9) of the beveled platform (5)/distal member wherein the first lateral blade (10) and the second lateral blade (11) are “along the sides of said beveled platform.” Ex. 1007, 38. As shown in the annotated figures below, the ’611 provisional application depicts right and left edges, which are the lines/borders between the sides (8, 9) and top of the distal member, wherein these edges extend towards the rearward end from the tip (6). Decision 39–40 (citing Prelim. Resp. 21, 45–46 (citing Ex. 1007, Figs. 1, 3)). Annotated Figures 1 and 3 include added lines and labels indicating the edges of the distal member.” slip op. at 5
- BurdenDecided for patent owner
“We are not persuaded by Petitioner’s arguments. Contrary to Petitioner’s assertions, Patent Owner’s arguments regarding the claim terms raised by Petitioner were not limited to only showing support in the ’391 patent. In fact, Patent Owner’s Preliminary Response discusses in detail where these claim terms are supported in the ’611 provisional application. See Prelim. Resp. 12–24, 39–41, 43–59. We also disagree with Petitioner’s contention that Patent Owner only provided “conclusory remarks” that the challenged claims were supported by priority applications other than the ’611 provisional. Req. Reh’g 11. For example, the Preliminary Response discusses how the challenged claim terms are supported by U.S. Patent No. 15/207,329 (“the ’329 application”). See Prelim. Resp. 24–27, 61, 63–64. Further, as noted in our Decision, Patent Owner also submitted a claim chart providing exemplary excerpts from the ’611 provisional, the ’329 application, and the ’391 patent to establish support for all elements of several exemplary challenged claims. See Decision 26 n.4 (citing Prelim. Resp., Appx. A). Petitioner has not demonstrated that we improperly shifted the burden to Petitioner. Instead, we concluded that the record before us supported Patent Owner’s contention that the non-disclaimed ’391 patent claims should receive priority to the ’611 provisional application. Decision 42.” slip op. at 8
§ 112 disclosurePatents in suitUS 10,786,391 - SZ Dji Technology Co., Ltd. / Parrot Inc. v. Drone-Control, LLCAll claims unpatentablePTAB · Jun 11, 2019 · IPR2018-00207 · APJ Frances L Ippolito · IPR · Final written decision
Claims 1–15 are unpatentable: claims 1, 3–6, 8–11, and 13–15 are anticipated by Thornberg ’983; claims 2, 7, and 12 are obvious over Thornberg ’983 and Karem. The motion to amend is denied.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner did not file a Patent Owner Response and has not otherwise disputed Petitioner’s proposed level of skill. See Tr. 77:1–6. We find, based on our review of the complete record, that the evidence of record supports a level of ordinary skill in the art consistent with Petitioner’s definition. Our findings are supported by the level of ordinary skill in the art reflected by the prior art of record and the ’116 patent. See Ex. 1001, 1:36–37 (“This invention relates generally to radio controlled toys such as airplanes and helicopters.”); Ex. 1006, 1:8–10 (“The present invention relates to the control of remotely operated vehicles, and more particularly to a variable reference for the control of a remotely operated vehicle.”), see id. at 3:41–44 (“The system provides for the referencing of vehicle commands based on an operator frame of reference so that control commands provided by the operator remain intuitive and independent of the orientation of the vehicle with respect to the operator.”). Thus, we adopt Petitioner’s proposed level of ordinary skill in the art and apply it to our discussion below.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Ex. 1006, 5:22–29. We further observe that once the disclosed pitch/roll commands (i.e., command data) are provided to the pitch axis and roll axis transformation functions, the pitch axis transformation 410 and roll axis transformation 412 use transformation equations to determine a transformed pitch stick signal (TPSS) and a transformed roll stick signal (TRSS). See Ex. 1006, 6:17–28. In other words, the flight control computer transforms received command pitch/roll data into TPSS and TRSS commands. In performing this transformation, the pitch axis transformation function 410 and the roll axis transformation function 412 also receive a transformation angle (θ) input. Id. at 5:30–32. Thornberg ’983 teaches that the transformation angle θ is determined based on the true heading of the vehicle as determined by the navigation system 36 and the desired vehicle reference and vehicle reference mode. Id. at 5:31–35. As discussed above, we find that the true heading of the vehicle as determined by navigation system 36 provides motion data generated by a sensor. Thornberg ’983 teaches that the transformations into TPSS and TRSS take into account transformation angle (θ), which Thornberg ’983 teaches is determined based on the true heading (i.e., motion data) of the vehicle and the control data (pitch/roll commands) received from control panel 200 of the remote operator control. See Ex. 1006, 4:29–33, 5:23–25, 5:36–38. Further, in the operator reference mode, the orientation of the operator/remote control upon activation of the operator mode is used as the reference axis (i.e., operator’s coordinate system). Additionally, as noted in the Petition (see Pet. 30–31), Thornberg ’983 teaches a variable operator reference mode in which the operator reference changes based on changes in the orientation of the operator control panel. Ex. 1006, 7:32–35. Based on the disclosure discussed above, we find that the pitch and roll commands received at lines 405, 415 in the operator mode teach command data in “a first coordinate system from a perspective of the remote control device” as recited in claim 1. Moreover, we find that Thornberg ’983 teaches that the received pitch/roll command data is transformed into control data in “a second coordinate system that is from a perspective of the RC aircraft.” Specifically, Thornberg ’983 teaches that the transformation equations 1 and 2 transform the pitch command and roll command based on the difference between the aircraft heading and the reference heading. See Ex. 1066, 7:9–11, 7:19–24. Further, Dr. Hansman testifies that TPSS and TRSS control data control the vehicle in the vehicle’s coordinate system, which is from the perspective of the vehicle. Ex. 1003 ¶ 411. We credit Dr. Hansman’s undisputed testimony in this regard because this testimony is consistent with the disclosure of Thornberg ’983, which teaches, among other things, that “[t]he system provides for the referencing of vehicle commands based on an operator frame of reference so that control commands provided by the operator remain intuitive and independent of the orientation of the vehicle with respect to the operator.” Ex. 1006, 3:41–44.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentableUnpatentable
“[a] POSITA would have been motivated to modify Thornberg’s control panel 200 to “control” the UAV 100 in a hovering state, i.e., by sending appropriate lift command data to the vehicle when the operator releases the input controls as Karem teaches, in order to facilitate aerial tasks that may involve a hovering state, such as airborne surveillance, inspection, maintenance, and repair, that Thornberg teaches were “well known” uses of UAVs. Ex. 1006, 1:15-24; Ex. 1003, ¶443. Pet. 45. We are persuaded that Petitioner’s rationale and evidence demonstrate by a preponderance of the evidence that claims 2, 7, and 12 would have been obvious in view of Thornberg ’983 and Karem. For example, Petitioner’s arguments are supported by the disclosure of Karem, which teaches a remotely-operated vehicle in a hovering state (Ex. 1008, 7:13–23, 32–39, and Thornberg ’983 teaches remotely operated vehicles include helicopters (Ex. 1006, 1:14–17). Further, Petitioner’s arguments are supported by Dr. Hansman’s undisputed testimony that a POSITA would have been motivated to modify Thornberg ’983’s control panel 200 to control UAV 100 in a hovering state, i.e., by sending appropriate lift command data to the vehicle when the operator releases the input controls as Karem teaches, in order to facilitate aerial tasks that may involve a hovering state, such as airborne surveillance, inspection, maintenance, and repair. Ex. 1003 ¶ 443. This testimony is supported by Thornberg ’983’s teaching that (1) airborne surveillance, inspection, maintenance, and repair were well known uses of UAVs; and (2) remote operation of UAVs apply to remotely operated helicopters. See Ex. 1006, 1:15–24.” slip op. at 29
- Expert testimonyPetitioner expert creditedOther
“In the same manner described in the ’116 patent, we find that the orientation of the control panel in Thornberg ’983 indicates the angular displacement (i.e., position data) of the vehicle relative to the operator mode reference axis because the control panel is directed toward the vehicle. Thornberg ’983’s Figure 2 discloses that the control panel is directly facing the remotely operated vehicle, which is nearly identical to placement of the remote control device and RC aircraft in Figure 5 of the ’116 patent. Ex. 1001, 3:67–4:2, Fig. 5; Ex. 1006, Fig. 2.” slip op. at 50
Patent outcomesUS 9,079,116 unpatentable§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 9,079,116 - Telebrands Corp. v. Tinnus Enterprises, LLCAll claims unpatentablePTAB · Dec 30, 2016 · PGR2015-00018 · APJ Richard E Rice · PGR · Final written decision
Claims 1–6, 8, and 10–14 are unpatentable as indefinite under § 112(b); the Board did not reach the § 103(a) grounds.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“II. ANALYSIS A. Level of Skill in the Art Petitioner contends that a person of ordinary skill in the art (“POSA”) “would have been a person having a general knowledge about and experience with expandable containers, including without limitation balloons, and at least an associate’s degree in science or engineering.” Pet. 15–16 (citing Ex. 1015 ¶¶ 10–13; Ex. 1016 ¶¶ 10–13). Patent Owner responds that “the Board should limit Petitioner’s overly broad definition of a POSA from having an associate’s degree in any science or engineering to having an associate’s degree in mechanical engineering.” See, e.g., PO Resp. 12. According to Patent Owner, “Petitioner’s proposed definition should be limited because the inclusion of persons with an associate’s degree in any science or engineering fails to take into account the scope of the relevant art, which indisputably utilizes mechanical engineering principles.” Id. Upon consideration of the parties’ contentions, we determine that a POSA would have been a person having a general knowledge about and experience with expandable containers, including without limitation balloons, and at least an associate’s degree in mechanical engineering, or the equivalent.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“1. “elastic fastener” In our Institution Decision, we preliminarily determined that the broadest reasonable interpretation consistent with the Specification of the claim term “elastic fastener” is an elastic element for attaching things together. Inst. Dec. 7–8. As neither party proposes any change to our interpretation, and our review of the evidence does not indicate that any change is necessary, we maintain that interpretation.” slip op. at 8
- Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteUnpatentable
“We determine that the test for indefiniteness that is applied in patent examination and reexamination matters, approved in Packard, should be applied in this post-grant review AIA proceeding, rather than the Nautilus requirement. The different approaches to indefiniteness before the PTO and the courts stem from the distinct roles that the PTO and the courts play in the patent system.12 In AIA proceedings, as in patent examination and reexamination matters, applying the broadest reasonable interpretation standard, coupled with an opportunity to amend the claims, is an approach that is fair to the patent holder and protects the public. See Cuozzo, 136 S. Ct. at 2145–46; Packard, 751 F.3d at 1312–14. This approach serves to ensure precision in patent claims, thereby helping the public to understand the limits of the claims and keeping the rights afforded by patents within their legitimate scope. See Cuozzo, 136 S. Ct. at 2144–45; Packard, 751 F.3d at 1313. Accordingly, among the reasons supporting application of the Packard-approved indefiniteness test in this AIA proceeding are those recognized by the Supreme Court in Cuozzo as supporting use of the broadest reasonable interpretation standard in inter partes review AIA proceedings. See Cuozzo, 136 S. Ct. at 2143–2146. Of these, the most important is the opportunity to amend the claims to correct any ambiguity. See id. at 2145 (“The patent holder may, at least once in the process, make a motion to do just what he would do in the examination process, namely, necessary) that a person of ordinary skill in the art would not consider the claim language unclear.” 12 See Packard, 751 F.3d at 1325 (Plager, J., concurring) (stating that “unlike courts which have a full prosecution record to consider, the prosecution record before the USPTO is in development and not fixed during examination”). amend or narrow the claim.”) (citation omitted); 35 U.S.C. § 326(d); 37 C.F.R. § 42.221. An applicant’s ability to clarify claim language through amendment was a significant reason why the Federal Circuit in Packard approved of the indefiniteness test recited in the MPEP (i.e., a “claim is indefinite when it contains words or phrases whose meaning is unclear”). Packard, 751 F.3d at 1313–14.” slip op. at 18
- ExcludeMotion to exclude, deniedDenied
“III. MOTIONS TO EXCUDE In its Motion to Exclude (Paper 57), Patent Owner seeks to exclude Petitioner’s Exhibits 1031 and 1032. Paper 57, 1–3. We deny Patent Owner’s motion, as moot, because we did not consider the referenced exhibits in reaching our decision in this case. In its Motion to Exclude (Paper 59), Petitioner seeks to exclude Patent Owner’s Exhibits 2016–2018, 2020 (¶ 84), 2024, 2025 (¶ 39), 2026 (¶ 39), 2027–2070, 2073, 2074, 2078, and 2085. Paper 59, 1–8. We deny Petitioner’s motion, as moot, because we did not consider the referenced exhibits and paragraphs in reaching our decision in this case.” slip op. at 34
Patent outcomesUS 9,051,066 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites NautilusPatents in suitUS 9,051,066
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.