- Tennant Company v. Oxygenator Water Technologies, Inc.No claims unpatentablePTAB · Feb 28, 2025 · IPR2021-00625 · APJ Kristina M Kalan · IPR · Remand
Claims 13, 14, and 17–27 were not shown unpatentable because Tennant did not establish that Wikey or Davies inherently disclosed the claimed microbubbles and nanobubbles.
RulingsRemand decision- RemandOther
“The Federal Circuit vacated and remanded our anticipation determinations as to claims 13, 14, and 17–27. Tennant, 11.1 The Federal Circuit further stated: “Because we vacate and remand to the Board to consider Tennant’s anticipation argument, we do not reach Tennant’s obviousness arguments (which depends on its contention that either Wikey or Davies produce nanobubbles).” Id. at 11. On September 19, 2024, we authorized the parties to file supplemental briefing, stating also that the “parties are not authorized to present new factual assertions, provide additional exhibits, or raise new arguments beyond those directed to the issues raised in the remand.” Ex. 3001. Pursuant to this authorization, Petitioner filed an Opening Brief on Remand (Paper 61; “Pet. Br. Rem.”) in support of its contentions. Patent Owner filed a Lead Brief on Remand (Paper 62; “PO Br. Rem.”) in support of its contentions. Petitioner filed a Reply Brief on Remand (Paper 66; “Pet. Reply Br. Rem.”). Patent Owner filed a Responsive Brief on Remand (Paper 65; “PO Resp. Br. Rem.”).” slip op. at 3
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentable
“Accordingly, and in line with our previous determination that “Wikey appears to disclose each limitation of claim 13 except ‘microbubbles and nanobubbles having a bubble diameter of less than 50 microns’” (Final Dec. 20), we determine that Petitioner has not demonstrated that Wikey inherently discloses microbubbles or nanobubbles. Accordingly, Petitioner has not demonstrated that Wikey discloses every limitation of claim 13.” slip op. at 56
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“The Federal Circuit vacated and remanded our anticipation determinations as to claims 13, 14, and 17–27. Tennant, 11.1 The Federal Circuit further stated: “Because we vacate and remand to the Board to consider Tennant’s anticipation argument, we do not reach Tennant’s obviousness arguments (which depends on its contention that either Wikey or Davies produce nanobubbles).” Id. at 11.” slip op. at 3
Patent outcomesUS RE45,415 not shown unpatentable§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham - Permian Global Inc. / Manticore Fuels, LLC v. Fuel Automation Station, LLCAll claims unpatentablePTAB · Feb 26, 2025 · IPR2023-01236 · APJ Carl M Defranco · IPR · Final written decision
Claims 1–18 are unpatentable as obvious; the Board did not reach the alternative Van Vliet, Shoap, and Hosecraft ground for claims 12–13.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Permian submits that one skilled in the art would have had 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. 16–17 (citing Ex. 1003 ¶¶ 75–78). FAS responds that it “does not dispute Petitioner’s definition of the level of ordinary skill in the art.” PO Resp. 11. Permian’s proposed definition appears consistent with the 1 US 2011/0197988 A1, published Aug. 18, 2011 (Ex. 1004, “Van Vliet”). 2 COXREELS, INC., Coxreels 1125 Series “Competitor” Hand Crank and Motorized Hose Reels, https://web.archive.org/web/20140408035634/ http://www.coxreels.com/products/hand-crank/1125-series, published Apr. 08, 2014 (Ex. 1005, “Coxreels”). 3 US 7,819,345 B2, issued Oct. 26, 2010 (Ex. 1006, “Shoap”). 4 HOSECRAFT USA, Clamps Accessories, https://web.archive.org/web/ 20130702084457/http:/www.hosecraftusa.com/accessory-category/ Hose_Clamps, published July 2, 2013 (Ex. 1007, “Hosecraft”). problems and solutions described in the challenged patent and the prior art of record. As such, we adopt the level of skill in the art as defined by Permian.” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Here, the specification of the ’118 patent does not suggest that the tube and sleeve are anything but physically separate and distinct structures— [T]he tube 62 may be a flexible elastomeric tube and the sleeve 64 may be a flexible fabric sleeve. The sleeve 64 is generally loosely arranged around the tube 62, although the sleeve 64 may closely fit on the tube 62 to prevent substantial slipping of the sleeve 64 relative to the tube 62 during use and handling. * * * In this example, the [sensor communication] line 66 is routed 40 through the hose 40 between (radially) the tube 62 and the sleeve 64. The sleeve 64 thus serves to secure and protect the line 66, and the sleeve 64 may limit spill and spewing if there is a hose 40 rupture. Ex. 1001, 5:21–44. Those descriptions in the specification—(1) that the tube and sleeve are made of different materials, one being “elastomeric” and the other “fabric,” (2) that the sleeve is “arranged around” the tube, (3) that a sensor line is routed “between” the tube and sleeve, and (4) that the sleeve “limit[s]” spillage in the event a rupture in the tube—clearly support that the tube and sleeve are physically separate structures such that the sleeve serves as a protective cover for the tube. Nowhere do we discern, nor does Permian explain, where the specification indicates that the tube and sleeve might also be one and the same structure. Thus, in light of the specification, we maintain that the only reasonable construction is that the tube and sleeve, as recited in claims 5, 10, and 15, are separate and distinct structures.” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We agree with FAS. Although indisputably the schematic of Van Vliet’s fuel delivery system shows the flow passage running through manifolds 36, 38 and hoses 24, nowhere do we discern that Van Vliet definitively discloses or otherwise suggests that the flow passage runs through reels 30, as required by claim 1. Indeed, even Permian’s expert acknowledges that Van Vliet’s schematic “is a high-level representation and is not intended to depict the physical appearance or form” of the various components. Ex. 1003 ¶ 112 n.146. At best, Van Vliet discloses that “hoses 24 are preferably stored on reels 30,” but is otherwise silent insofar as any flow stream or passage running through the reels. Ex. 1004 ¶ 15 (emphasis added). Indeed, in order for the reel to be a part of the system’s fluid stream, there would need to be some disclosure or suggestion in Van Vliet that hose 24 is actually connected to the reel as opposed to being merely stored on the reel. But there is no such disclosure. To the contrary, Van Vliet explains that “each hose 24 is connected to a fuel outlet 22 by a dry connection 60 and to a cap 26 by a dry connection 62.” Id. ¶ 22 (emphases added). In other words, the flow stream through Van Vliet’s hose 24 cannot be connected to reel 30 if the ends of the hose are connected to dry connections 60 and 62, which indisputably are not part of the reel. Thus, we reject the notion that Van Vliet’s reel 30 is “part of a single fluid stream that includes manifolds 36/38, fluid outlet 22, and hose 24,” as Permian surmises from simply looking at Van Vliet’s schematic. See Pet. Reply 3–4. As such, we find that Permian fails to demonstrate that Van Vliet’s discloses or otherwise suggests a flow passage “running through a respective one of the reels” or being connected “via a respective one of the reels,” as required by claim elements 1(e) and 1(f).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We disagree that one skilled in the art would have deemed Coxreels’s teachings to be unsuitable or unacceptable for Van Vliet’s fuel delivery system. In our view, FAS’s unsuitability argument focuses improperly on the physical incorporation into Van Vliet’s system of every component and material described in Coxreels. But the test for obviousness is whether “a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention,” not whether the physical features of one reference may be bodily incorporated into the structure of another reference. See Allied Erecting & Dismantling Co. v. Genesis Attachments, LLC, 825 F.3d 1373, 1381 (Fed. Cir. 2016). Indeed, whether one reference can be incorporated in another is “basically irrelevant” since the test for obviousness asks only “whether the claimed inventions are rendered obvious by the teachings of the prior art as a whole.” In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc). Here, rather than relying on every feature of Coxreels, Permian makes clear that it is relying on Coxreels’s teaching of “a reel for storing hoses that has a built-in ‘fluid path.’” Pet. 36–38 (citing Ex. 1003 ¶¶ 149–152). More specifically, according to Permian, one skilled in the art “would have recognized advantages of the flow passage in Coxreels’ reels (e.g., ‘a non-crimping, flat smooth hose wrap’) to facilitate connection to the manifolds and hoses of Van Vliet’s system.” Pet. Reply 7. Thus, FAS’s argument of physical incorporation of an ancillary feature of Coxreels’s reel is irrelevant to Permian’s reliance on incorporating Coxreels’s teaching of a built-in flow passage running through a hose reel with Van Vliet’s system that already includes flow path connections suitable for diesel fuel. Moreover, “[a] person of ordinary skill is also a person of ordinary” slip op. at 14
Patent outcomesUS 10,815,118 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 10,815,118 - Permian Global Inc. / Manticore Fuels, LLC v. Fuel Automation Station, LLCAll claims unpatentablePTAB · Feb 26, 2025 · IPR2023-01237 · APJ Carl M Defranco · IPR · Final written decision
Claims 1–22 are unpatentable as obvious over Van Vliet and Cable because the combination teaches the claimed arrangement, and the secondary-consideration evidence does not outweigh that showing.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Permian proposes that one skilled in the art would have had either: (1) a Bachelor of Science in Mechanical Engineering, Electrical Engineering, Petroleum Engineering or an equivalent field and 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. 12–13 (citing Ex. 1003 ¶ 105). FAS responds that it “does not dispute Petitioner’s definition of the level of ordinary skill in the art.” PO Resp. 11. 1 US 2011/0197988 A1, published Aug. 18, 2011 (Ex. 1004, “Van Vliet”). 2 US 3,810,487, issued May 14, 1974 (Ex. 1005, “Cable”). 3 AFD PETROLEUM LTD., AFD Onsite Refueling Systems, http://web.archive.org/web/20150922012312/https://www.afdpetroleum.com /fuel/onsite_refuelling (Sept. 22, 2015), published Sep. 22, 2015 (Ex. 1007, “AFD”). 4 COXREELS, INC., Coxreels 1125 Series “Competitor” Hand Crank and Motorized Hose Reels, https://web.archive.org/web/20140408035634/ http://www.coxreels.com/products/hand-crank/1125-series, published Apr. 08, 2014 (Ex. 1008, “Coxreels”). 5 US 2018/0057348 A1, published Mar. 1, 2018 (Ex. 1006, “Lowrie”). Permian’s proposed definition appears consistent with the problems and solutions described in the challenged patent and the prior art of record. As such, we adopt the level of skill in the art as defined by Permian.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Permian applies “the ordinary and customary meanings of the claims terms,” and, thus, maintains that “[e]xpress constructions are not required here.” Pet. 20–21. FAS likewise submits that “no constructions are necessary in order to resolve the issues at hand and that the claim terms be given their ordinary and customary meanings.” PO Resp. 8. The specification and prosecution history of the ’805 patent, as well as the asserted prior art, adequately inform us as to the plain and ordinary meaning of the claim terms. Thus, we need not construe any claim terms expressly, as we can decide patentability without further construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (approving Board decision not to construe claim language where construction is not material to controversy).” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Though Cable and Van Vliet may have some different concerns and focuses, the mere existence of such differences does not alone negate Permian’s reason to combine Van Vliet and Cable. In fact, it is expected that different references would have different concerns and focuses. But, [w]hen a work is available in one field, design incentives and other market forces can prompt variations of it, either in the same field or in another. If a person of ordinary skill in the art can implement a predictable variation, and would see the benefit of doing so, § 103 likely bars its patentability. Moreover, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond that person’s skill. A court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions. KSR, 550 U.S. at 401. Here, FAS does not contend that Van Vliet and Cable are in meaningfully different fields, but merely identifies several differences in focus and application. That is not enough to defeat Permian’s reason for the asserted combination. As Permian’s expert credibly testifies, one skilled in the art would consider that “[i]ncorporating Cable’s . . . reel configuration into Van Vliet’s mobile fuel delivery system would merely involve combining prior art elements according to known methods to yield predictable results.” Ex. 1003 ¶ 140.” slip op. at 12
- Expert testimonyPetitioner expert creditedDecided for petitioner
“focus and application. That is not enough to defeat Permian’s reason for the asserted combination. As Permian’s expert credibly testifies, one skilled in the art would consider that “[i]ncorporating Cable’s . . . reel configuration into Van Vliet’s mobile fuel delivery system would merely involve combining prior art elements according to known methods to yield predictable results.” Ex. 1003 ¶ 140.” slip op. at 13
Patent outcomesUS 9,586,805 unpatentableClaim construction§ 103 obviousnessPatents in suitUS 9,586,805 - Permian Global Inc. / Manticore Fuels, LLC v. Fuel Automation Station, LLCAll claims unpatentablePTAB · Feb 26, 2025 · IPR2023-01238 · APJ Brent M Dougal · IPR · Final written decision
Claims 1–20 are unpatentable: claims 1–5, 11, and 12 as obvious over Van Vliet and Cable; claims 6–10 and 14–20 as obvious over combinations including LCR references; and claim 13 as obvious over Van Vliet, …
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Patent Owner notes the discrepancies between these two levels of skill and argues for that of Petitioner’s declarant. PO Resp. 10–13. Petitioner does not respond to Patent Owner’s arguments. See generally, Reply. We are persuaded, on the present record, that Petitioner’s declarant’s proposal is consistent with the problems and solutions in the ’955 patent and prior art of record. We adopt this definition of the level of skill for the purposes of this Decision.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We construe “those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.” Realtime Data, LLC v. Iancu, & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Here, though the parties dispute the construction of certain claim terms (see PO Resp. 13–16; Reply 1–4; Sur-reply 1–3), resolution of these disputes is unnecessary to resolve the present controversy.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“Differences in [Cable and Van Vliet’s] exemplary applications would not have discouraged a POSITA from combining their teachings. Reply 8. And: a POSITA is “a person of ordinary creativity, not an automaton,” and would consider Cable’s arrangement of equipment and reel components potentially useful in Vliet. See EX1003, ¶¶172-175; KSR, 550 U.S. at 421 (cannot assume “that a [POSITA] attempting to solve a problem will be led only to those elements of prior art designed to solve the same problem”). Id. at 9. We agree. Though the inventors of Cable and Van Vliet may have had different concerns and focuses, this does not negate Petitioner’s argument that the combination is a simple substitution with predictable results. In fact, it is expected that different references would have different concerns and focuses. But, this fact does not of itself render the combination non-obvious. The Supreme Court’s guidance in KSR is instructive as to why Petitioner has the better argument. When a work is available in one field, design incentives and other market forces can prompt variations of it, either in the same field or in another. If a person of ordinary skill in the art can implement a predictable variation, and would see the benefit of doing so, § 103 likely bars its patentability. Moreover, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond that person's skill. A court use of prior art elements according to their established functions.” slip op. at 14
Patent outcomesUS 10,974,955 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,974,955 - Verizon Connect Inc. v. Omega Patents, LLCAll claims unpatentablePTAB · Jan 28, 2025 · IPR2023-01162 · APJ Amber L Hagy · IPR · Final written decision
Claims 1–22 are unpatentable as obvious over Flick ’885 and Flick ’561; the Board found the combination motivated with a reasonable expectation of success and the objective evidence of nonobviousness weak.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In our Institution Decision, we adopted Petitioner’s articulation of the level of ordinarily skill in the art, noting that it is consistent with the ’278 patent and the asserted prior art, and we applied it in our obviousness evaluations therein. Dec. 23–24 (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (noting that the prior art, itself, can reflect appropriate level of ordinary skill in art)). Patent Owner states, in its Response, that it has applied Petitioner’s articulated level of ordinary skill for the purposes of this proceeding, and notes that application of this level of ordinary skill “is sufficient for the PTAB to evaluate the Petition Grounds.” PO Resp. 13. We maintain our determination of the level of ordinary skill in the art as stated in our Institution Decision, and we apply it herein.” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“In our Institution Decision, we stated that we saw no reason, at that stage of the proceeding, to depart from the Board’s previous construction of this term in Omega Patents I, which was adopted by the Board in the 504 IPR. Dec. 25. Noting that the Board’s previous construction was “soundly premised on the written description of the ’278 patent, in accordance with Phillips,” we preliminarily adopted that construction for purposes of institution. See id. (citing 504 IPR DI at 25). In so doing, we noted that our construction was preliminary, and we advised the parties (as the Board did in the 504 IPR) that “[t]he parties may further develop the record at trial as to how an ordinarily skilled artisan, at the time of the invention, would have interpreted ‘enabling data’ in light of the written description of the ’278 patent, and more clearly explain any relevant differences between their respective interpretations.” Id. at 26 (citing 504 IPR DI at 27).” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“We determine that no express claim construction is necessary for any other claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“identify a commonly shared problem nor suggest the combination” (PO Resp. 21), we agree with Petitioner that Flick ’561 and Flick ’885 each contain disclosures leading toward their combination (see Pet. 19–20). In particular, Flick ’885 discloses vehicle sensors for detecting vehicle movement (Ex. 1003, 1:27–28, 1:32–33), and Flick ’561 discloses use of GPS to more broadly track vehicle movement (Ex. 1004, 1:25–28 (such as to enable recovery of a stolen vehicle)). Patent Owner argues, however, that “detecting local vehicle movement is not the same as tracking vehicle movement,” and thus “doing something with ‘movement’ does not provide any leading, or motivation, toward a combination” of Flick ’885 and Flick ’561. PO Resp. 25. Patent Owner’s assessment oversimplifies these disclosures in discounting their similarities and overlap. Flick ’885 broadly discloses use of “[v]ehicle security systems” to deter, e.g., “vehicle theft,” and notes use of sensors to monitor movement in and around the vehicle. Ex. 1003, 1:21–33. Flick ’561 also broadly discloses use of vehicle security systems to deter theft, and notes use of tracking devices to aid in recovery of a vehicle should it be stolen. Ex. 1004, 1:23–29. Thus, these patents share many commonalities of disclosure relating to vehicle security systems, and particularly detecting movement to aid in vehicle security, suggesting that the ordinarily skilled artisan would have been motivated to combine their disclosures toward a common purpose of improving vehicle security. Another commonality, persuasively argued by Petitioner, is that Flick ’561 describes an objective of its system is to “permit ready interface to devices in the vehicle, such as those devices which may be part of an existing vehicle security system,” which discloses a motivation to look to a MVCC, such as disclosed in Flick ’885. Pet. 22 (citing Ex. 1004, 2:16–18). Given the substantial overlap of disclosures and purposes, we are not persuaded by Patent Owner’s arguments that Petitioner’s rationale to combine is the result of “hindsight” or is premised on a mere “technical possibility.” See PO Resp. 22–26 (emphasis omitted). And, in any event, the Federal Circuit has explained even pre-KSR that a motivation to combine may be found where the “combination of references results in a product or process that is more desirable, for example because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient.” DyStar Textilfarben GmbH v. C.H. Patrick Co., 464 F.3d 1356, 1365 (Fed. Cir. 2006). We do not, however—contrary to Patent Owner’s criticism (PO Resp. 26)—find that the combination of Flick ’885 and Flick ’561 would have been motivated merely by the desire to make a “better” product; rather, that motivation is supported by the overlapping disclosures and purposes of the cited references as well as the technical motivations we identify above. Although we have considered Patent Owner’s arguments and expert testimony carefully, we find that, for the foregoing reasons, Petitioner has shown by a preponderance of the evidence on the complete record that an ordinarily skilled artisan at the time of the claimed invention would have had sufficient reason to combine the teachings of Flick ’885 and Flick ’561 to achieve the claimed invention with a reasonable expectation of success.” slip op. at 28
Patent outcomesUS 8,032,278 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 8,032,278 - Brycer, LLC / Brycer Management, Inc. v. Tegris, Inc.All claims unpatentablePTAB · Jan 16, 2025 · IPR2023-01196 · APJ Hubert C Lorin · IPR · Final written decision
Claims 8–16 are unpatentable under §103 over Key, Chauhan, Sweeney, and McKinney; Patent Owner’s motion to exclude is denied.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“patentable weight. See II.C.4.b. Accordingly, it is sufficient that Petitioner has shown that Key discloses a management software that meets the claim but for processing information about, for example, pressure vessels rather than fire hydrants. Ex. 1005 ¶ 15. Even if we assume arguendo that “fire hydrant” should be given patentable weight, Petitioner shows that Chauhan discloses software for managing information about assets such as fire hydrants. “Chauhan discloses a ‘UtilityCenterTM [that] is an integrated GIS [geographic information system] suite of applications that manages information across the entire utility.’” Pet. 24 (citing Ex. 1016 ¶¶ 39–42, Fig. 1; Ex. 1003 ¶¶ 84–86, 128–129) (alterations in original). Petitioner contends that Chauhan is intended for “‘fire hydrant inspections’” and that there is a “‘HYDRANT Theme’ that allows an inspector to ‘edit and view inspection fields.’” Id. at 24–25 (citing Ex. 1016 ¶ 207; Ex. 1003 ¶¶ 85, 127). According to Petitioner, “Chauhan discloses that its UtilityCenter has wide applicability and that the ‘same technology’ can be used for various other assets and applications including . . . ‘fire and police departments . . . .’” Id. at 25 (citing Ex. 1016 ¶¶ 42, 218; Ex. 1003 ¶¶ 114–115, 130). According to Petitioner, this renders obvious the use of management software to manage information concerning fire hydrant assets. This discussion sufficiently addresses the “fire hydrant management software” limitation consistent with Petitioner’s (and our) view that the phrase “fire hydrant” relates to the content of the data the software processes. See supra § II.C.4.a. In regards to Chauhan, Patent Owner argues that it “relates to a different technical field.” PO Resp. 49. While Mr. MacInnes notes Chauhan states that the same technology “has been tailored to the specific needs of public agencies, such as fire and police departments” (see EX1003, ¶130), Chauhan nowhere explains the needs of the fire department or how the utility outage management system was modified, or why a fire department would need a power outage management system, as described in Chauhan. Id. at 49–50. We are unpersuaded. Given that Key and Chauhan both teach” slip op. at 54
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusObjective indicia outweighedDecided for petitioner
“Accordingly, we do not apply a presumption of nexus that the ’966 patent’s claims are linked to the objective indicia of nonobviousness, because Patent Owner has not shown that TegrisFire and Brycer products embody and are coextensive with the claims. Nexus may still be shown if the evidence of secondary considerations is the direct result of the unique characteristics of the claimed invention. See Fox Factory, 944 F.3d at 1373–74 (“[T]he patent owner is still afforded an opportunity to prove nexus by showing that the evidence of secondary considerations is the direct result of the unique characteristics of the claimed invention.” (emphasis added)). However, for the following reasons, that, too, has not been sufficiently established. 2. Unexpected Results Regarding unexpected results, Patent Owner relies on two case studies, one of Lynwood, WA Fire Department (Ex. 2004) and the other of Richland, WA Fire Department (Ex. 2025). According to Patent Owner a number of benefits were seen from using the TegrisFire product, such as the number of licensed inspectors increased. Ex. 2004 (9 (“147.5%”)); Ex. 2025 (9 (“200%)”). Other improvements were seen in the decreased number of impaired assets and in the increased communication between owners and inspectors. PO Resp. 63–64 (citing Ex. 2004, 9–11; Ex. 2015 ¶ 128; Ex. 2025; Ex. 2015 ¶ 155). But there is insufficient evidence suggesting that any of these” slip op. at 72
- ExcludeMotion to exclude, deniedDenied
“We have not discussed the provisional applications from which the ‘966 patent claims priority and therefore have not relied Mr. MacInnes’s testimony about said priority. For the foregoing reasons, the Motion to Exclude is denied.” slip op. at 85
Patent outcomesUS 11,126,966 unpatentable§ 103 obviousnesscites Phillips · KSRPatents in suitUS 11,126,966 - PTAB · Jan 13, 2025 · IPR2024-01162 · APJ Eric C Jeschke · IPR · Institution
The Board instituted IPR on claims 1–7, 9–13, and 15 on all asserted grounds, finding a reasonable likelihood of success on claims 1 and 9 over Butler and Jianan.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2024) (“The Board institutes the trial on behalf of the Director.”). Inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314. Upon consideration of the evidence and arguments in the record, for the reasons below, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one of challenged claims 1–7, 9–13, and 15. We thus institute inter partes review on all challenged claims on all asserted grounds. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1354, 1359–60 (2018); 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner “does not challenge” Petitioner’s proposed definition of the level of ordinary skill in the art, but “reserves the right to provide an alternative definition . . . if IPR is instituted.” Prelim. Resp. 2. For purposes of this Decision, we adopt the definition of the level of ordinary skill in the art proposed by Petitioner, which appears consistent with the record at this stage of the proceeding, including the prior art. See GPAC Inc., 57 F.3d at 1579.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. Claim Construction In inter partes reviews, the Board interprets claim language using the same claim construction standard that would be used in a civil action under 35 U.S.C. § 282(b), as described in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b). Under that standard, we generally give claim terms their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history. See Phillips, 415 F.3d at 1313–14. Although extrinsic evidence, when available, may also be useful when construing claim terms under this standard, extrinsic evidence should be considered in the context of the intrinsic evidence. See id. at 1317–19. Neither Petitioner nor Patent Owner proposes constructions for any claim terms. See Pet. 12; Prelim. Resp. 2. Based on the current record, we need not construe explicitly any claim terms because doing so would not change the outcome of the analysis below. 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 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“On the current record, Petitioner adequately explains the reasons to combine Butler with Jianan to arrive at the first two alternative devices. The discussion on the reasons to combine Butler and Jianan spans over nine pages of the Petition, with approximately twenty paragraphs of the Giachetti Declaration supporting that discussion. See Pet. 13–22; Giachetti Decl. ¶¶ 78–98. Patent Owner selects one statement from Petitioner’s discussion and asserts that that single statement is inadequate. Moreover, Patent Owner relies on mere conclusory attorney argument as to the alleged technical issues that would have been identified by one of ordinary skill in the art. See Elbit Sys., 881 F.3d at 1359. On the current record, we determine that Petitioner has made a sufficient showing that a person of ordinary skill in the art would have had reason to modify Butler and Jianan as proposed and that the articulated reasoning is supported by rational underpinning, at least as to the first two alternative devices (as discussed above).” slip op. at 25
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 11,903,546 - PTAB · Jan 13, 2025 · IPR2024-01151 · APJ Eric C Jeschke · IPR · Institution
The Board instituted IPR on claims 1–18 and all asserted grounds, finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2024) (“The Board institutes the trial on behalf of the Director.”). Inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314. Upon consideration of the evidence and arguments in the record, for the reasons below, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one of challenged claims 1–18. We thus institute inter partes review on all challenged claims on all asserted grounds. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1354, 1359–60 (2018); 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner “does not challenge” Petitioner’s proposed definition of the level of ordinary skill in the art, but “reserves the right to provide an alternative definition . . . if IPR is instituted.” Prelim. Resp. 2. For purposes of this Decision, we adopt the definition of the level of ordinary skill in the art proposed by Petitioner, which appears consistent with the record at this stage of the proceeding, including the prior art. See GPAC Inc., 57 F.3d at 1579.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither Petitioner nor Patent Owner proposes constructions for any claim terms. See Pet. 13; Prelim. Resp. 2. Based on the current record, we need not construe explicitly any claim terms because doing so would not change the outcome of the analysis below. 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 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“At this stage of the proceeding, Petitioner adequately explains the reasons to combine Dimbylow and Howes. The discussion on these issues spans eight pages of the Petition, with approximately nine paragraphs of the Giachetti Declaration supporting that discussion. In contrast, Patent Owner relies on mere conclusory attorney argument as to the Petition’s alleged failings. See Elbit Sys., 881 F.3d at 1359. Moreover, the relied-upon prior art need not expressly teach or suggest the proposed combination and also need not identify modified components as a “problem.” See KSR Int’l, 550 U.S. at 418 (discussing how the obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ”). Second, Patent Owner argues that because Dimbylow discloses a hand vacuum and Howes discloses an upright vacuum with no attachable cleaning tool, “there is no evidence a [person of ordinary skill in the art] would have looked to Howes to fill in alleged gaps in Dimbylow.” Prelim. Resp. 14–15. On the current record, this argument does not identify a deficiency in Petitioner’s position. As an initial matter, Patent Owner has not adequately explained why the overall form factor of the devices in the relied-upon prior art—i.e., a hand vacuum versus upright vacuum—would impact the motivation to combine when the aspects relied on from Howes relate more narrowly to structures allowing opening of dust collection units (a problem common to both hand vacuums and uprights). See, e.g., Pet. 18 (discussing why one of ordinary skill in the art “would have been particularly motivated to look at similar references (including cyclonic vacuum-cleaner references having the same assignee, Dyson) that teach mechanisms to release a similar component (door catch) on a similar device (dirt collection chamber) to accomplish a similar goal (hygienic and convenient bin emptying)” (citing Giachetti Decl. ¶ 84)); see also In re Paulsen, 30 F.3d 1475, 1481–82 (Fed. Cir. 1994) (affirming rejection of a laptop computer hinge as obvious over hinged cabinets, piano lids, etc., because the “problem is not unique to portable computers”). Patent Owner’s conclusory statement that “no evidence” has been presented does not address Petitioner’s positions.” slip op. at 24
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 11,910,984 - Cambridge Mobile Telematics, Inc. v. Sfara, Inc.Institution deniedPTAB · Dec 13, 2024 · IPR2024-00966 · APJ John F Horvath · IPR · Institution
The Board denied institution because the Petition did not explain whether the component limitations invoke § 112(f) or identify corresponding structure, as required by Rule 42.104(b)(3).
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“The Consolidated Trial Practice Guide[1,2](“CTPG”) . . . instructs that “[w]here claim language may be construed according to 35 U.S.C. § 112(f), a petitioner must provide a construction.” CTPG 45 (emphases added) (citing 37 C.F.R. § 42.104(b)(3)). The CTPG advises that a party “may choose to elaborate why § 112(f) should or should not apply to the limitation at issue.” Id. Notably, the CTPG warns that “[a] petitioner who chooses not to address construction under § 112(f) risks failing to satisfy the requirement of 37 C.F.R. § 42.104(b)(3).” Id.” slip op. at 6
- BurdenDenied
“Given these facts, we determine that rule 104(b)(3) mandates that the Petition either identify “the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function” recited in the “component” term limitations or explain why the “component” term limitations are not subject to a means-plus-function construction. This, it fails to do. To be clear, we note that our rules do not prohibit a petitioner from taking inconsistent claim construction positions before the Board and a district court. See 10x Genomics, Inc. v. Bio-Rad Labs, Inc., IPR2020- 00086, Paper 8 at 18 (PTAB Apr. 27, 2020). However, where, as here, a petitioner has proposed a claim term be construed solely as a means-plus-function limitation in a district court proceeding and emphasized that the issue is not only “most significant” but potentially “case . . . dispositive,” we determine the petition is obliged to either apply that construction in this proceeding or explain why that construction is not applicable. Accordingly, we find the Petition to be deficient under rule 104(b)(3).4” slip op. at 8
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Other
“connote a definite structure. See Williamson, 792 F.3d at 1350 (identifying words such as “mechanism,” “element,” “device,” and others as verbal constructs that do not connote sufficiently definite structures). Indeed, the Specification discloses all of the “components” recited in claims 1, 8, and 15, including the “comparing component,” can be “implemented as a computer having tangible computer-readable media for carrying or having computer-executable instructions or data structures stored thereon.” Ex. 1001, 5:35–43. Thus, like the word “module,” a recognized nonce word, each of the recited “components” is nothing more than “a generic description for software or hardware that performs a specified function” and their recitation “operate[s] as a substitute for ‘means’ in the context of § 112, para. 6.” Williamson, 792 F.3d at 1350. Accordingly, we construe the “comparing component” limitation recited in claims 1, 8, and 15 as a meansplus-function limitation whose function is “generating a comparison signal.”2” slip op. at 14
- Skill levelNot reached
Claim constructionDiscretionary denialcites MarkmanPatents in suitUS 9,333,946 - PTAB · Dec 13, 2024 · IPR2024-00990 · APJ Hubert C Lorin · IPR · Institution
The Board instituted IPR of claims 1–12 and 14–23 on all petitioned grounds after finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner, we are persuaded that Petitioner has demonstrated, under 35 U.S.C. § 314(a), a reasonable likelihood that it would prevail in showing the unpatentability of at least one challenged claim. Accordingly, we grant Petitioner’s request and institute an inter partes review of claims 1–12 and 14–23 of the ’007 patent.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“near the heel in a 5,000-feet horizontal wellbore, than the shunt tubes in the lower-pressure side.” Id. (citing Ex. 1005, 28:17–24, 30:16–20; Ex. 1003 ¶ 292). Petitioner points out that Yeh “express disclos[es] that a ‘certain surrounding wall thickness is required’ ‘to stay within the burst, bending, and collapse ratings.” Id. at 42 (quoting Ex. 1005, 28:20–23; citing Ex. 1017, 24 (Equation (14) showing burst pressure roughly directly proportional to wall thickness), Ex. 1003 ¶ 295). Mr. Chambers provides support, explaining that Yeh “expressly taught that ‘to maintain the mechanical integrity (that is, to stay within the burst, bending, and collapse ratings) of the secondary flow paths, a certain surrounding wall thickness is required.’” Ex. 1003 ¶ 291 (quoting Ex. 1005, 28:20–24). According to Mr. Chambers, “a POSITA understood that containing internal pressure within tubing required a certain wall thickness, wall thickness being one of three parameters (wall thickness, tubing material, and tubing outside diameter) that could be adjusted to meet pressure containment requirements.” Id. “[A] POSITA would understand that the tubing wall thickness in the eccentric screens would be less than the tubing wall thickness in the concentric screens due to the lower pressure requirement.” Id. at ¶ 295. Given said disclosures and supporting testimony, at this stage, Petitioner sufficiently shows on this record that Yeh suggests limitation 1[e].” slip op. at 29
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends: [at] the time of the alleged invention in 2018, a POSITA[3] would have had a B.S. degree in mechanical or petroleum engineering or a similar technical discipline, with at least five years of experience in oil or gas well drilling, completion, and/or subsurface production operations or in technical support of such operations including at least some experience in unconsolidated formations utilizing sand control methods and means. Also, additional education in a relevant technical discipline could compensate for less experience in the relevant field, and vice versa. Pet. 31–32 (citing Ex. 1003 ¶¶ 36–40). 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 10
§ 103 obviousnesscites GrahamPatents in suitUS 11,333,007
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.