- Mcwane, Inc. v. Tom W. WaughAll claims unpatentablePTAB · May 23, 2017 · IPR2016-00266 · APJ Jeffrey W Abraham · IPR · Final written decision
Claims 10–13 are unpatentable under § 103 over Waugh and Ludwig; the contingent motion to amend claims 14–16 is denied as obvious.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“After considering the parties’ arguments and evidence presented during the course of this trial, we determine that it is not necessary to construe this phrase for purposes of this Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”). As discussed in further detail 7 John F. Wallace, Engineering Aspects of Centrifugal Casting, 61 TRANSACTIONS OF THE AMERICAN FOUNDRYMEN’S SOCIETY, 701–18 (1953) (Ex. 1018). below, whether we treat claim 10 as a product by process claim, as Petitioner suggests, or consider it to be a positive limitation and adopt Patent Owner’s construction, the outcome is the same in view of the disclosure of centrifugal casting in the prior art references.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We agree with Petitioner that Patent Owner’s proposed construction imports limitations into the claims. The claim language itself does not limit a running ring to a flange having a surface that engages a running rail in an annealing oven or allows the pole on which it is formed to be placed in a cylindrical pipe for transport through an annealing oven. If Patent Owner intended for the claim to include these alleged “specific structural requirements” of the running ring, it could have done so by explicitly claiming the subject matter (as it proposes in its Motion to Amend). Not having done so, Patent Owner may not import the various limitations based on desired functions into the single term “running ring” to impart a meaning different from what is indicated by the plain language of the claims and the written description. Liebel-Flarsheim Co. v. Medrad, Inc., 358 F. 3d 898, 904 (Fed. Cir. 2004) (“[I]t is improper to read a limitation from the specification into the claims.”); E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003) (“The problem is to interpret claims ‘in view of the specification’ without unnecessarily importing limitations from the specification into the claims.”); CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (“Generally speaking, we indulge a ‘heavy presumption’ that a claim term carries its ordinary and customary meaning.”). Furthermore, the intrinsic evidence of record does not present a “clear indication . . . that the patentee intended the claims to be” limited to the embodiments identified by Patent Owner. Liebel-Flarsheim, 358 F.3d at 913. Patent Owner derives its proposed construction from structural features associated with a “post-cast annealing process,” but claim 10 does not mention annealing at all. Instead, it is directed to a centrifugally cast, hollow pole. And, as Petitioner points out, the portions of the Specification upon which Patent Owner relies relate to what the running ring does, not what it is. Reply 6. The Specification does contain a description of what the running ring is, stating that “[t]he flange is simply a larger based circle, or ring, cast at the pole’s large diameter end.” Ex. 1001, 4:7–9. Accordingly, we see no reason to modify our prior determination in light of the record developed at trial. We, therefore, maintain that the broadest reasonable interpretation of “running ring that extends outward from the second end” is a circular or ring-shaped flange extending outwardly from the second end of the pole member.” slip op. at 10
- Skill levelSkill level board ownOther
“skill in the art at the time of the alleged invention would have had “(i) an undergraduate degree in engineering or a technical field (e.g., mechanical engineering or materials science) and (ii) approximately three years of work experience in the design and manufacture of hollow structural members (e.g., ductile iron pipe), including specific experience with centrifugal casting using the de Lavaud process.” Ex. 1004 ¶ 13 (emphasis omitted). Patent Owner’s declarant, Mr. Podbel, testifies that a person of ordinary skill in the art would have “(1) a B.S. degree in mechanical engineering, materials science or equivalent training; and (2) approximately 3 years or more of direct experience in the design and manufacture of centrifugally cast ductile iron hollow members.” Ex. 2003 ¶ 16. We credit the testimony provided by the declarants for both parties and find that one of skill in the art would possess an undergraduate degree in mechanical engineering, materials science, or a related discipline, and at least three years of work experience in the design and manufacture of centrifugally cast, hollow structural members (e.g., ductile iron pipe). This level of ordinary skill is reflected not only by the information presented by the parties, but also by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 12
- Expert testimonyPetitioner expert creditedPatent owner expert creditedOther
“We credit the testimony provided by the declarants for both parties and find that one of skill in the art would possess an undergraduate degree in mechanical engineering, materials science, or a related discipline, and at least three years of work experience in the design and manufacture of centrifugally cast, hollow structural members (e.g., ductile iron pipe). This level of ordinary skill is reflected not only by the information presented by the parties, but also by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 13
Patent outcomesUS RE45,329 unpatentableClaim construction§ 103 obviousnesscites KSR · Graham - Seadrill Americas, Inc. / Seadrill Gulf Operations Auriga, LLC et al. v. Transocean Offshore Deepwater Drilling, Inc.No claims unpatentablePTAB · May 18, 2017 · IPR2015-01990 · APJ William V Saindon · IPR · Final written decision
The Board found claims 10–13 and 30 of the ’781 patent, claim 10 of the ’851 patent, and claims 17–19 of the ’069 patent not shown unpatentable over the asserted grounds.
RulingsFinal written decision- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“The words “to the seabed” in claim 30 require that the second means for advancing tubular members must have a structure in practice that, without modification, allows it to perform that function. See Typhoon Touch Tech’s, Inc. v. Dell, Inc., 659 F.3d 1376, 1380 (Fed. Cir. 2011) (listing cases that reject the notion that a prior art structure that could be modified to infringe would infringe).18 Petitioner asserts that, to anticipate, Lund merely of the deck. Thus, of the 30 m long stand, a little more than 10 m of tube would be above the deck and a little less than 20 m would be below the deck, depending on how and where exactly the torqueing device held onto the second and third tubes to fasten them. 18 We recognize that Typhoon was concerned with a question of infringement, but the principles discussed therein are also relevant to a patentability analysis because “[t]hat which infringes, if later, would needs to perform this function at some depth, not every depth. Pet. Reply 5– 6. We agree with Petitioner on this point, at least in general.19 See, e.g., Bell Commc’ns Research, Inc. v. Vitalink Commc’ns Corp., 55 F.3d 615, 622–23 (Fed. Cir. 1995) (“an accused product that sometimes, but not always, embodies a claimed method nonetheless infringes”). We are not persuaded, however, that Petitioner has shown that Lund is capable of lowering a tubular string to the seabed at some depth. First, Petitioner has not offered evidence that Lund actually describes lowering tubulars to the seabed. The disclosure in Lund cautioning to be careful not to strike structures (Ex. 1002, 9:58–65) does not actually describe whether the structures are undersea, let alone at the seabed. Instead, Lund simply describes a “possible occurrence of well heads and other structures in the area around the well centre.” Id. Patent Owner has provided evidence that Lund could be referring to structures above the surface of the water or on the drilling rig itself, which Patent Owner shows are not uncommon in shallow-water operations. PO Resp. 7–9 (citing, e.g., Ex. 2075 ¶¶ 68–74; Ex. 2088, 47:15–52:19). This evidence rebuts the testimony of Mr. Schaaf upon which we relied in determining that Petitioner had a reasonable likelihood of success. See Pet. 42 (citing Ex. 1007 ¶ 94); Ex. 1007 ¶ 94 (citing to Ex. 1002, 9:58–64 as allegedly disclosing that the hoist in Lund could reach the seabed); Dec. on Inst. 19 (relying on the testimony at Ex. anticipate, if earlier.” Peters v. Active Mfg. Co., 129 U.S. 530, 537 (1889). 19 The depth would have to be a depth at which a drilling rig would be used, for example. If drilling rigs were not used at a certain depth, for example, then it would make no sense to construe the limitation in a way to require such a depth. 1007 ¶ 94). Based on the record now before us, we find that it is not necessarily the case that Lund was describing interference with structures in the sea or at the seabed, as it is possible Lund was describing interference with structures above the waterline or on the rig itself.” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“into a drilling hoist. Pet. 23–24. A reason for doing this is for the ability to have two drilling stations, such as shown in Horn. Id. (citing Ex. 1007 ¶ 72); see also id. at 23 (citing Ex. 1012 ¶ 41; Ex 1014, I-191, I-193; Ex. 1015, each of which show examples of drilling rigs having two drilling stations). Given the examples of drilling rigs having two drilling stations under one derrick (e.g., Horn, Chevron S-55), we find that a person of ordinary skill in the art has a reasonable expectation of success in converting Lund’s preparation hoist into a drilling station. Patent Owner’s arguments focus on whether a person of ordinary skill in the art would have considered such a modification in the first place. PO Resp. 15–16, 22–24. Patent Owner first argues that Horn does not explain why a person of ordinary skill in the art would modify Lund’s rig to have a second drilling hoist. Id. at 15–16. Petitioner’s Petition addresses that argument, when it states that the proposed modification “would have had the added advantage of being able to have each hoist run its own drill string to the seabed,” exactly as taught in Horn. Pet. 24. In other words, making the second hoist drill-worthy would be following Horn, such as to enable the Lund rig to drill two wells at the same time. Patent Owner misunderstands KSR when it argues that Petitioner cannot use drill two wells as a rationale. See PO Resp. 15 (citing KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)); KSR, 550 U.S. at 418 (“[I]t can be important to identify a reason . . . to combine the elements in the way the claimed new invention does.”). When it states that there must be a reason to combine the elements “in the way the claimed new invention does,” the Supreme Court means that there must be a reason to combine to arrive at the claimed invention (i.e., to meet each limitation, as arranged in the claim). This understanding of KSR is apparent by reading the next page, where the Supreme Court explicitly rejected the theory that a reason for combination must be the same as the inventor’s: “[i]n determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls.” KSR, 550 U.S. at 419. Accordingly, we do not see any deficiency in Petitioner’s reasoning with respect to Petitioner’s reliance on a desire to have two drill stations for two wells, as taught in Horn and for the benefits described therein. As such, we find that Petitioner has articulated a reason with rational underpinnings for modifying Lund’s rig to have two drill stations, as taught in Horn.” slip op. at 32
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia with nexusObjective indicia outweighedDecided for patent owner
“that also are called “dual activity,” it is difficult to discern whether any given feature is in reference to a feature of the claimed version or the prior art version in isolation. Accordingly, we cannot agree with Petitioner that there is no nexus, but we also cannot presume that “dual activity” refers to the claimed invention in every instance. In effect, we find that there is some nexus between the phrase “dual activity” and the claims, but with the caveat that we must be careful to discern how the phrase is used in the evidence.” slip op. at 46
- ExcludeMotion to exclude, deniedDenied
“B. Motion to Exclude Petitioner filed a Motion to Exclude Evidence (Paper 80), to which Patent Owner filed a Response (Paper 84) and Petitioner filed a Reply (Paper 85). Petitioner moves to exclude the testimony of Claude E. Cooke, Jr., Ph.D., in Exhibit 2077. Paper 80, 17. Patent Owner relies on the testimony of Dr. Cooke for purposes of analysis of its secondary considerations evidence, specifically as to the nexus. Paper 84, 2. In our Decision below, we do not rely on Dr. Cooke’s testimony except in one instance in which we find his testimony not credible. Accordingly, we deny Petitioner’s Motion to Exclude as moot, as we do not rely on it.” slip op. at 14
Patent outcomesUS 6,068,069 not shown unpatentable§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 6,068,069 - Seadrill Americas, Inc. / Seadrill Gulf Operations Auriga, LLC et al. v. Transocean Offshore Deepwater Drilling, Inc.No claims unpatentablePTAB · May 18, 2017 · IPR2015-01929 · APJ William V Saindon · IPR · Final written decision
The Board found claims 10–13 and 30 of the ’781 patent, claim 10 of the ’851 patent, and claims 17–19 of the ’069 patent not shown unpatentable over the asserted anticipation and obviousness grounds.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for patent owner
“information, Patent Owner’s expert analyzing the data, Mr. Bratic, presumes that “dual activity” in the database means “rigs that incorporate the teachings of [Patent Owner’s] Dual-Activity Patents,” relying on the testimony of Dr. Cooke at paragraphs 42–43. Ex. 2080 ¶ 4. There, Dr. Cooke states that “[i]t is my opinion that the term ‘dual activity’ is a generally accepted term in the industry used to reference Transocean’s claimed invention.” Ex. 2077 ¶ 42. He later states that “dual activity” is not offline stand building (Lund) or having two drilling stations but not transfer means (Horn). Id. ¶ 43. For the reasons expressed above in our nexus analysis, Dr. Cooke’s testimony is overly simplistic, contradicted by evidence, and, therefore, not credible. Mr. Bratic’s analysis is thus similarly contradicted by evidence and not credible. Second, the fact that Patent Owner asked for an additional fee for using additional features of a rig, i.e., to use the “dual activity” feature of the rig, in and of itself, cannot show commercial success. To hold otherwise would be to find commercial success for virtually every additional feature not offered for free. See Cable Elec. Products, Inc. v. Genmark, Inc., 770 F.2d 1015, 1027 (Fed. Cir. 1985) (“this court . . . has unequivocally stated that for commercial success of a product embodying a claimed invention to have true relevance to the issue of non-obviousness, that success must be shown to have in some way been due to the nature of the claimed invention, as opposed to other economic and commercial factors unrelated to the technical quality of the patented subject matter.”) (overruled on other grounds in Midwest Industries, Inc. v. Karavan Trailers, Inc., 175 F.3d 1356 (Fed. Cir. 1999)). Further, as Petitioner explains, dayrates are driven by a number of factors, including ship design, reputation, and timing. Pet. Reply 18 (citing Ex. 1038 ¶¶ 43–61).25 Even if we were to ignore the deficiencies in Patent Owner’s reliance on the IHS Petrodata information, to attribute, without sufficient analysis, the price difference to one factor (presence of “dual activity”) out of many factors grossly oversimplifies the analysis and ignores the realities of the marketplace. Thus, Patent Owner’s IHS Petrodata analysis is not credible evidence of non-obviousness.” slip op. at 48
- Skill levelSkill level petitioner adoptedDecided for petitioner
“1. The Level of Ordinary Skill in the Art Petitioner proposes that a person of ordinary skill in the art typically had a bachelor’s degree in mechanical, chemical, or related engineering plus 5 years of experience in the oil production industry. Pet. 4 (citing Ex. 1007 ¶ 15). Patent Owner does not explicitly offer a level of ordinary skill in the art, but states in some of its briefing that the parties do not generally disagree on the level of ordinary skill. Paper 84 (Patent Owner’s Opposition to Motion to Exclude the testimony of Dr. Cooke), 3 (“[t]he parties also agree generally as to the level of ordinary skill”). Based on the testimony of Mr. Schaff (Ex. 1007 ¶ 15) and the disclosures of the prior art, we adopt Petitioner’s proposed definition of the level of ordinary skill in the art.” slip op. at 18
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“The words “to the seabed” in claim 30 require that the second means for advancing tubular members must have a structure in practice that, without modification, allows it to perform that function. See Typhoon Touch Tech’s, Inc. v. Dell, Inc., 659 F.3d 1376, 1380 (Fed. Cir. 2011) (listing cases that reject the notion that a prior art structure that could be modified to infringe would infringe).18 Petitioner asserts that, to anticipate, Lund merely of the deck. Thus, of the 30 m long stand, a little more than 10 m of tube would be above the deck and a little less than 20 m would be below the deck, depending on how and where exactly the torqueing device held onto the second and third tubes to fasten them. 18 We recognize that Typhoon was concerned with a question of infringement, but the principles discussed therein are also relevant to a patentability analysis because “[t]hat which infringes, if later, would needs to perform this function at some depth, not every depth. Pet. Reply 5– 6. We agree with Petitioner on this point, at least in general.19 See, e.g., Bell Commc’ns Research, Inc. v. Vitalink Commc’ns Corp., 55 F.3d 615, 622–23 (Fed. Cir. 1995) (“an accused product that sometimes, but not always, embodies a claimed method nonetheless infringes”). We are not persuaded, however, that Petitioner has shown that Lund is capable of lowering a tubular string to the seabed at some depth. First, Petitioner has not offered evidence that Lund actually describes lowering tubulars to the seabed. The disclosure in Lund cautioning to be careful not to strike structures (Ex. 1002, 9:58–65) does not actually describe whether the structures are undersea, let alone at the seabed. Instead, Lund simply describes a “possible occurrence of well heads and other structures in the area around the well centre.” Id. Patent Owner has provided evidence that Lund could be referring to structures above the surface of the water or on the drilling rig itself, which Patent Owner shows are not uncommon in shallow-water operations. PO Resp. 7–9 (citing, e.g., Ex. 2075 ¶¶ 68–74; Ex. 2088, 47:15–52:19). This evidence rebuts the testimony of Mr. Schaaf upon which we relied in determining that Petitioner had a reasonable likelihood of success. See Pet. 42 (citing Ex. 1007 ¶ 94); Ex. 1007 ¶ 94 (citing to Ex. 1002, 9:58–64 as allegedly disclosing that the hoist in Lund could reach the seabed); Dec. on Inst. 19 (relying on the testimony at Ex. anticipate, if earlier.” Peters v. Active Mfg. Co., 129 U.S. 530, 537 (1889). 19 The depth would have to be a depth at which a drilling rig would be used, for example. If drilling rigs were not used at a certain depth, for example, then it would make no sense to construe the limitation in a way to require such a depth. 1007 ¶ 94). Based on the record now before us, we find that it is not necessarily the case that Lund was describing interference with structures in the sea or at the seabed, as it is possible Lund was describing interference with structures above the waterline or on the rig itself.” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“into a drilling hoist. Pet. 23–24. A reason for doing this is for the ability to have two drilling stations, such as shown in Horn. Id. (citing Ex. 1007 ¶ 72); see also id. at 23 (citing Ex. 1012 ¶ 41; Ex 1014, I-191, I-193; Ex. 1015, each of which show examples of drilling rigs having two drilling stations). Given the examples of drilling rigs having two drilling stations under one derrick (e.g., Horn, Chevron S-55), we find that a person of ordinary skill in the art has a reasonable expectation of success in converting Lund’s preparation hoist into a drilling station. Patent Owner’s arguments focus on whether a person of ordinary skill in the art would have considered such a modification in the first place. PO Resp. 15–16, 22–24. Patent Owner first argues that Horn does not explain why a person of ordinary skill in the art would modify Lund’s rig to have a second drilling hoist. Id. at 15–16. Petitioner’s Petition addresses that argument, when it states that the proposed modification “would have had the added advantage of being able to have each hoist run its own drill string to the seabed,” exactly as taught in Horn. Pet. 24. In other words, making the second hoist drill-worthy would be following Horn, such as to enable the Lund rig to drill two wells at the same time. Patent Owner misunderstands KSR when it argues that Petitioner cannot use drill two wells as a rationale. See PO Resp. 15 (citing KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)); KSR, 550 U.S. at 418 (“[I]t can be important to identify a reason . . . to combine the elements in the way the claimed new invention does.”). When it states that there must be a reason to combine the elements “in the way the claimed new invention does,” the Supreme Court means that there must be a reason to combine to arrive at the claimed invention (i.e., to meet each limitation, as arranged in the claim). This understanding of KSR is apparent by reading the next page, where the Supreme Court explicitly rejected the theory that a reason for combination must be the same as the inventor’s: “[i]n determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls.” KSR, 550 U.S. at 419. Accordingly, we do not see any deficiency in Petitioner’s reasoning with respect to Petitioner’s reliance on a desire to have two drill stations for two wells, as taught in Horn and for the benefits described therein. As such, we find that Petitioner has articulated a reason with rational underpinnings for modifying Lund’s rig to have two drill stations, as taught in Horn.” slip op. at 32
Patent outcomesUS 6,047,781 not shown unpatentable§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 6,047,781 - Seadrill Americas, Inc. / Seadrill Gulf Operations Auriga, LLC et al. v. Transocean Offshore Deepwater Drilling, Inc.No claims unpatentablePTAB · May 18, 2017 · IPR2015-01989 · APJ William V Saindon · IPR · Final written decision
The Board found no challenged claims of the ’781, ’851, or ’069 patents unpatentable; Lund did not anticipate claim 30, and objective evidence defeated the obviousness grounds.
RulingsFinal written decision- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner
“Specifically, we construe “second means . . . for advancing tubular members” as a means-plus-function limitation with the function of advancing tubular members simultaneously with said first means into the body of water to the seabed and with a corresponding structure as a drawworks and equivalent structures. IPR2015-01989, Paper 8, 7–9. We construe “means . . . for transferring tubular assemblies” as a means-plus-function limitation with the function of transferring tubular assemblies and with a corresponding structure of a rail supported pipe handling system, a rugged overhead crane structure within the derrick, or structural equivalents. Id. at 9–10.” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“The words “to the seabed” in claim 30 require that the second means for advancing tubular members must have a structure in practice that, without modification, allows it to perform that function. See Typhoon Touch Tech’s, Inc. v. Dell, Inc., 659 F.3d 1376, 1380 (Fed. Cir. 2011) (listing cases that reject the notion that a prior art structure that could be modified to infringe would infringe).18 Petitioner asserts that, to anticipate, Lund merely of the deck. Thus, of the 30 m long stand, a little more than 10 m of tube would be above the deck and a little less than 20 m would be below the deck, depending on how and where exactly the torqueing device held onto the second and third tubes to fasten them. 18 We recognize that Typhoon was concerned with a question of infringement, but the principles discussed therein are also relevant to a patentability analysis because “[t]hat which infringes, if later, would needs to perform this function at some depth, not every depth. Pet. Reply 5– 6. We agree with Petitioner on this point, at least in general.19 See, e.g., Bell Commc’ns Research, Inc. v. Vitalink Commc’ns Corp., 55 F.3d 615, 622–23 (Fed. Cir. 1995) (“an accused product that sometimes, but not always, embodies a claimed method nonetheless infringes”). We are not persuaded, however, that Petitioner has shown that Lund is capable of lowering a tubular string to the seabed at some depth.” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“into a drilling hoist. Pet. 23–24. A reason for doing this is for the ability to have two drilling stations, such as shown in Horn. Id. (citing Ex. 1007 ¶ 72); see also id. at 23 (citing Ex. 1012 ¶ 41; Ex 1014, I-191, I-193; Ex. 1015, each of which show examples of drilling rigs having two drilling stations). Given the examples of drilling rigs having two drilling stations under one derrick (e.g., Horn, Chevron S-55), we find that a person of ordinary skill in the art has a reasonable expectation of success in converting Lund’s preparation hoist into a drilling station. Patent Owner’s arguments focus on whether a person of ordinary skill in the art would have considered such a modification in the first place. PO Resp. 15–16, 22–24. Patent Owner first argues that Horn does not explain why a person of ordinary skill in the art would modify Lund’s rig to have a second drilling hoist. Id. at 15–16. Petitioner’s Petition addresses that argument, when it states that the proposed modification “would have had the added advantage of being able to have each hoist run its own drill string to the seabed,” exactly as taught in Horn. Pet. 24. In other words, making the second hoist drill-worthy would be following Horn, such as to enable the Lund rig to drill two wells at the same time. Patent Owner misunderstands KSR when it argues that Petitioner cannot use drill two wells as a rationale. See PO Resp. 15 (citing KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)); KSR, 550 U.S. at 418 (“[I]t can be important to identify a reason . . . to combine the elements in the way the claimed new invention does.”). When it states that there must be a reason to combine the elements “in the way the claimed new invention does,” the Supreme Court means that there must be a reason to combine to arrive at the claimed invention (i.e., to meet each limitation, as arranged in the claim). This understanding of KSR is apparent by reading the next page, where the Supreme Court explicitly rejected the theory that a reason for combination must be the same as the inventor’s: “[i]n determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls.” KSR, 550 U.S. at 419. Accordingly, we do not see any deficiency in Petitioner’s reasoning with respect to Petitioner’s reliance on a desire to have two drill stations for two wells, as taught in Horn and for the benefits described therein. As such, we find that Petitioner has articulated a reason with rational underpinnings for modifying Lund’s rig to have two drill stations, as taught in Horn.” slip op. at 32
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusMixed
“invention disclosed and claimed in the patent.” Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988). Moreover, “[w]hen the thing that is commercially successful is not coextensive with the patented invention—for example, if the patented invention is only a component of a commercially successful machine or process—the patentee must show prima facie a legally sufficient relationship between that which is patented and that which is sold.” Id. Here, the product sold by Patent Owner is a lease of a drillship, of which the claimed invention is a subcomponent. We credit the testimony of Mr. Childers on this point, who provides an analysis of the testimony of various individuals associated with Patent Owner, and who discuss the many other major features of a drillship. Ex. 1038 ¶¶ 40–43. We recognize that the derrick configuration is one of the principal components of the drillship, however, as evidenced by the fact that the drillships are often referenced by the capabilities of the derrick, e.g., “single activity” or “dual activity.” Nevertheless, because of the myriad components and marketable features of a drillship, we cannot afford Patent Owner the presumption that its drillship “is the invention disclosed and claimed in the patent.” J.T. Eaton, 106 F.3d at 1571. Patent Owner’s nexus arguments are an attempt to show that the phrase “dual activity” “is industry parlance for [Patent Owner’s] invention.” PO Resp. 27. In other words, Patent Owner argues that each time we see the phrase “dual activity,” we should think of the claimed subject matter. We have reviewed Patent Owner’s arguments and evidence (id. at 26–40), and Petitioner’s rebuttal (Pet. Reply 13–16), and for the reasons expressed below, we find that “dual activity” is a generic term in the industry and is not the claimed invention. Because of this, we find that we cannot consider “dual activity” industry parlance for Patent Owner’s invention. However, we find that “dual activity” is sometimes used to refer to the claimed invention, and that what structures give rise to “dual activity” in the evidence are generally a subset of the features of the claimed invention. Accordingly, each piece of evidence must be evaluated on its own merits in terms of nexus. WBIP, 829 F.3d at 1331 (“Questions of nexus are highly fact-dependent . . . . ‘It is within the province of the fact-finder to resolve these factual disputes regarding whether a nexus exists between commercial success of the product and its patented features, and to determine the probative value of evidence of secondary considerations.’”) (citing Pro- Mold & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1574 (Fed. Cir. 1996)). For example, to the extent a reference is ambiguous as to the form of “dual activity” being discussed, the nexus between that reference and the claims, and hence its probative value of non-obviousness, is diminished. See Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 306 (Fed. Cir. 1985) (holding that the weight attributed to the secondary evidence is proportional to its nexus to the merits of the invention, implying that a weak nexus requires some discount factor to the evidence, but a strong nexus does not).” slip op. at 39
Patent outcomesUS 6,085,851 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 6,085,851 - The Toro Company v. MTD Products Inc.Rehearing deniedPTAB · Apr 11, 2017 · IPR2016-01352 · APJ William V Saindon · IPR · Rehearing
The Board denied Toro’s rehearing request and left institution denied because the Petition did not persuasively explain why a skilled artisan would combine Irikura’s steering assembly with Hauser.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Decision” or “Dec.”) denying institution of an inter partes review of U.S. Patent No. 9,254,865 (Ex. 1001, “the ’865 patent”). Paper 10 (“Req. Reh’g”). When rehearing a decision by the Board on whether to institute a trial, the Board reviews the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion has occurred if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The burden of showing that our Institution Decision should be modified lies with Petitioner, the party challenging the decision. See 37 C.F.R. § 42.71(d). In addition, “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id. This latter requirement is critical; requests for rehearing are not an opportunity to raise new arguments but rather an opportunity to point us to arguments we overlooked or misapprehended.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Hauser’s instruction to employ “sound engineering judgment” in the selection of a front steering assembly. Req. Reh’g 9–11. Regardless of any instruction in Hauser, what was missing in the Petition was an explicit and persuasive explanation of why a person of ordinary skill in the art would have looked to Irikura’s front wheel steering assembly. Irikura does not describe itself as a zero-degree turning vehicle, and as we found in our Decision, Petitioner has not explained why a person of ordinary skill in the art would have looked to it for modifying a zero-degree turning vehicle such as Hauser. Dec. 9. Petitioner points us to no passage in the Petition that we overlooked or misapprehended on this point, and instead merely offers additional arguments.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Hauser’s instruction to employ “sound engineering judgment” in the selection of a front steering assembly. Req. Reh’g 9–11. Regardless of any instruction in Hauser, what was missing in the Petition was an explicit and persuasive explanation of why a person of ordinary skill in the art would have looked to Irikura’s front wheel steering assembly. Irikura does not describe itself as a zero-degree turning vehicle, and as we found in our Decision, Petitioner has not explained why a person of ordinary skill in the art would have looked to it for modifying a zero-degree turning vehicle such as Hauser. Dec. 9. Petitioner points us to no passage in the Petition that we overlooked or misapprehended on this point, and instead merely offers additional arguments.” slip op. at 4
- Expert testimonyPetitioner expert discountedDecided for patent owner
“ZTR turns. Req. Reh’g 3–6. In our Decision, we found that “Petitioner does not direct us to evidence that Irikura itself is a ZTR vehicle or describes a steering assembly for zero-degree turns.” Dec. 7. In other words, we found that Irikura does not hold itself out as a ZTR-capable vehicle. Petitioner’s Request fails to identify any disclosure in Irikura that we misapprehended on this point. Instead, Petitioner’s Request points us to the testimony of its declarant, Mr. Smith. Regarding his testimony, we found in our Decision that “Petitioner’s evidence that Irikura’s steering assembly nonetheless is capable of zero-degree turns is unpersuasive.” Id. at 7–9. We considered Mr. Smith’s testimony that Irikura must provide a zero-degree turn in order not to scuff when providing a zero-degree turn to involve circular reasoning. Id. at 8. We also found that Mr. Smith’s testimony regarding the operation of Irikura’s front wheel gear assembly based on modified versions of the drawings to be improper. Id. at 8–9. Specifically, the analysis of Petitioner and Mr. Smith was based on projections of the behavior of components in Irikura that impermissibly relied on the precision of drawings, rather than on actual disclosure of Irikura (which was silent on the matter). As we stated in our Decision, absent indication in the specification (or other indications of dependability), extrapolations based on the precision and accuracy of the drawings are improper. Id. Petitioner now directs us to Mr. Smith’s testimony that allegedly stands for the premise Irikura provides a zero-degree turn because it has drive wheels capable of rotating in opposite directions. Req. Reh’g 3–4 (citing Ex. 1007 ¶¶ 75–76). Petitioner does not point to where this argument was developed in the Petition. See 37 C.F.R. § 42.71(d).” slip op. at 3
§ 103 obviousnessPatents in suitUS 9,254,865 - Zero Gravity Inside, Inc. v. Footbalance System OYNo claims unpatentablePTAB · Feb 3, 2017 · IPR2015-01769 · APJ Meredith C Petravick · IPR · Final written decision
Claims 1–7 were not shown unpatentable under §103 over either Dieckhaus and Foss or Eschweiler and Campbell because the evidence did not establish the MTP limitation.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“unexpired patent according to the broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable interpretation approach). Under that standard, and absent any special definitions, we give claim terms their ordinary and customary meaning, as they would be understood by one of ordinary skill in the art at the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Petitioner proposes constructions for multiple claim elements. See Pet. 14–20. For the purposes of our Decision, however, we need only address one. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”) (quotation omitted). Claim 1 recites “wherein the at least one layer of thermoplastic material is configured to reach out from under a heel of a foot only to the metatarsophalangeal joint of the foot.” Ex. 1001, 9:33–35 (“the MTP limitation”). The MTP limitation defines the end of the thermoplastic layer relative to the anatomy of a foot — “from under a heel of a foot only to the metatarsophalangeal joint.”” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Petitioner’s contentions in the Petition and Petitioner’s Reply are not persuasive. Petitioner’s contentions in the Petition are not persuasive because they are not based upon the broadest reasonable construction of the MTP limitation. As discussed above, we construe the MTP limitation to require a layer formed to extend to, but no further than, the location of the MTP joint of a specific foot. The location of the MTP joint is the junction of each of the heads of the metatarsal bones and the corresponding proximal phalanx. Petitioner contends that Dieckhaus discloses insoles having a ¾- length moldable support layer. Pet. 33. Petitioner, however, does not sufficiently show that an insole having a ¾-length moldable support layer teaches a layer formed to extend to, but no further than, the location of the MTP joint of a specific foot. Petitioner does not sufficiently show that a ¾- length layer would extend to the heads of the metatarsal bones and the corresponding proximal phalanx of a specific foot. According to Dr. Holt, “skilled artisans at the time of the ’433 Patent would not have thought of or described the MTP joints as being located three-quarters of the way down the foot.” Ex. 2016 ¶ 22. As discussed above, “the location of the MTP joint varies from foot to foot and person to person” (PO Resp. 22). See supra 3–6. Similarly, even assuming that “a POSA would understand that the length of the insole in Dieckhaus could be varied to include extending from the heel to just before the toe area” (Pet. 34), Petitioner does not sufficiently show that an insole that extends from the heel to just before the toe area teaches a thermoplastic layer formed to extend to, but no further than, the location of the MTP joint of a specific foot. See PO Resp. 23–24. Neither Petitioner nor Petitioner’s declaration from Dr. Mkandawire sufficiently explain how modifying Dieckhaus’s thermoplastic layer 6 to extend from the heel to the just before the toe area would result in thermoplastic layer 6 extending to, but no further than, the joint at the heads of the metatarsal bones and the corresponding proximal phalanx of a specific foot. See Pet. 26–36; Ex. 1030 ¶¶ 61, 66–67. Petitioner’s contentions in its Reply also are not persuasive. Dieckhaus discloses that thermoplastic layer 6 “extends from the back or heel portion of the insole, to approximately just short of the ball section of the foot” or “only extend[s] partially towards the front of the insert.” Ex. 1004, 7:14–17. Approximately just short of the ball section of the foot is not the location of the MTP joints (i.e., the location of the heads of the metatarsal bones and the corresponding proximal phalanx). See Ex. 1030 ¶ 65 (figure annotated by Dr. Mkandawire depicting the location of the ball section of the foot as starting a distance behind the MTP joints towards the heel). Further, Petitioner does not sufficiently show that it would have been obvious to one of ordinary skill in the art to modify Dieckhaus’s thermoplastic layer 6 to extend to, but no further than, the location of the MTP joint of a specific foot. Petitioner’s assertion that such a modification would have been obvious because Dieckhaus’s disclosure is “so close” is a mere conclusory statement. “To satisfy it burden of proving obviousness, a petitioner cannot employ mere conclusory statements. The petitioner must instead articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 892 F.3d 1364, 1380 (Fed. Cir. 2016) (citing KSR, 550 U.S. at 418).” slip op. at 15
- ExcludeOther
“III. MOTION TO EXCLUDE Patent Owner filed a Motion to Exclude Evidence requesting that lines 6–10 of page 59 of Exhibit 1055, Deposition Transcript of Kenneth G Holt, and page 15, line 14–page 16, line 9 of Exhibit 1056, Deposition Transcript of Robert Kimmel, be excluded. Paper 2–3. We do not rely upon Exhibits 1055 and 1056 in our analysis above. Patent Owner’s Motion to Exclude Evidence, thus, is dismissed as moot.” slip op. at 21
Patent outcomesUS 7,793,433 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,793,433 - The Toro Company v. MTD Products Inc.Institution deniedPTAB · Jan 4, 2017 · IPR2016-01352 · APJ William V Saindon · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of prevailing on any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner does not offer a threshold amount of evidence explaining why a person of ordinary skill in the art, looking to improve the ZTR vehicle of Hauser by adding steered wheels, would choose the front wheel steering assembly of Irikura. First, Petitioner does not direct us to evidence that Irikura itself is a ZTR vehicle or describes a steering assembly for zero-degree turns. Indeed, Patent Owner points out that Irikura is likely incapable of zero-degree turns, because Irikura describes a six-wheeled vehicle, and the back four fixed driving wheels would scuff in a zero-degree turn attempt. Prelim. Resp. 11–13 (citing Ex. 2002 ¶¶ 49, 50, 54, 209); see also Ex. 2002 ¶¶ 48–50 (stating the well-understood principle that the rotation axis of the wheel must intersect the turn radius in order not to scuff or slide), ¶¶ 207– 211 (explaining why the four fixed wheels indicate that the vehicle does not make zero-degree turns). On this record, Petitioner has not shown that the vehicle in Irikura is a ZTR vehicle or is designed purposefully for zero-degree turns because there is no discussion of such a feature, and the six-wheel nature of the vehicle indicates otherwise.” slip op. at 7
- BurdenDenied
“issue.”). Petitioner directs us to its declarant, Mr. Smith, who uses modified versions of Irikura’s drawings to depict various steering angles. Pet. 16 (citing Ex. 1007 ¶¶ 76–83). Mr. Smith’s analysis allegedly “show[s] the wheels and gears of Irikura’s front steering assembly able to turn the wheels to effect small and zero radius turns.” Ex. 1007 ¶ 76. His drawings then show several modified versions of Irikura’s assembly. Id. ¶¶ 77–81. Mr. Smith never explains, however, the factual basis for his belief that Irikura would be capable of zero-degree turns in the first instance. Instead, he simply modifies the drawings to show them performing zero-degree turns; there is insufficient technical explanation or evidence explaining why the steering assembly is capable of the movements shown in the modified drawings. In summary, we are not persuaded that a person of ordinary skill in the art would have considered modifying the front caster wheels of Hauser with the front steerable wheels of Irikura because Hauser is a ZTR vehicle and Petitioner has not established sufficiently that Irikura’s front steerable wheels are capable of providing zero-degree turns. For this reason, Petitioner has not shown a reasonable likelihood of prevailing on the ground of obviousness in view of Hauser and Irikura. This deficiency also applies to the Hauser-Irikura-Hoch ground, which makes use of the same combination of Hauser and Irikura. See Pet. 42 (stating that “the combination of Hauser and Irikura disclose[s] each and every element of claims 1-20,” but providing Hoch for limitations in claim 11 and 16, to the extent they are not disclosed).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“established a reason to modify the front wheels of Hauser’s ZTR vehicle with the front wheel steering assembly of Irikura because Petitioner has not established that Irikura’s steering assembly is capable of a zero-radius turn. Prelim. Resp. 27–29 (arguing Irikura does not disclose zero-radius turns), 10–16 (same), 55–63 (arguing no reason to combine). In other words, Patent Owner argues that a person of ordinary skill in the art would not look to Irikura’s non-ZTR steering assembly for use in the ZTR steering assembly in Hauser. For the reasons that follow, this argument is persuasive. Petitioner does not offer a threshold amount of evidence explaining why a person of ordinary skill in the art, looking to improve the ZTR vehicle of Hauser by adding steered wheels, would choose the front wheel steering assembly of Irikura. First, Petitioner does not direct us to evidence that Irikura itself is a ZTR vehicle or describes a steering assembly for zero-degree turns. Indeed, Patent Owner points out that Irikura is likely incapable of zero-degree turns, because Irikura describes a six-wheeled vehicle, and the back four fixed driving wheels would scuff in a zero-degree turn attempt. Prelim. Resp. 11–13 (citing Ex. 2002 ¶¶ 49, 50, 54, 209); see also Ex. 2002 ¶¶ 48–50 (stating the well-understood principle that the rotation axis of the wheel must intersect the turn radius in order not to scuff or slide), ¶¶ 207– 211 (explaining why the four fixed wheels indicate that the vehicle does not make zero-degree turns). On this record, Petitioner has not shown that the vehicle in Irikura is a ZTR vehicle or is designed purposefully for zero-degree turns because there is no discussion of such a feature, and the six-wheel nature of the vehicle indicates otherwise.” slip op. at 7
- Expert testimonyPetitioner expert discountedDecided for patent owner
“a six-wheel vehicle. See Pet. 16–18 (depicting Irikura as a four-wheel vehicle); Ex. 1007 ¶¶ 76–81 (Petitioner’s declarant, Mr. Smith, depicting Irikura as a four-wheel vehicle).5 Patent Owner points out that a six-wheel vehicle having four fixed wheels would not generally be considered capable of performing zero-degree turns because the back wheels would slide or scuff. Prelim. Resp. 11–13, 58 (citing Ex. 2002 ¶¶ 208–211). This makes Petitioner’s next faulty presumption more apparent. Petitioner’s second faulty presumption is that the drawings in Irikura can be used to measure particular, precise gearing relationships when the specification is silent as to the matter. Hockerson-Halberstadt, Inc. v. Avia Group Int’l, Inc., 222 F.3d 951, 956 (Fed. Cir. 2000) (“[P]atent drawings do not define the precise proportions of the elements and may not be relied on to show particular sizes if the specification is completely silent on the 5 To the extent these figures are intended to depict the Hauser vehicle, modified to have Irikura’s front steering assembly, Petitioner’s analysis still would not have considered the four rear wheels of Irikura. issue.”). Petitioner directs us to its declarant, Mr. Smith, who uses modified versions of Irikura’s drawings to depict various steering angles. Pet. 16 (citing Ex. 1007 ¶¶ 76–83). Mr. Smith’s analysis allegedly “show[s] the wheels and gears of Irikura’s front steering assembly able to turn the wheels to effect small and zero radius turns.” Ex. 1007 ¶ 76. His drawings then show several modified versions of Irikura’s assembly. Id. ¶¶ 77–81. Mr. Smith never explains, however, the factual basis for his belief that Irikura would be capable of zero-degree turns in the first instance. Instead, he simply modifies the drawings to show them performing zero-degree turns; there is insufficient technical explanation or evidence explaining why the steering assembly is capable of the movements shown in the modified drawings.” slip op. at 8
§ 103 obviousnessPatents in suitUS 9,254,865 - 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 - Asetek Danmark A/S v. Coolit Systems, Inc.No claims unpatentablePTAB · Dec 8, 2016 · IPR2015-01276 · APJ Michelle R Osinski · IPR · Final written decision
Claims 1–4, 6–8, 12, 14, 15, and 18–28 were not shown unpatentable under § 103 because Petitioner did not adequately explain the proposed modifications to Kang.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“The Specification does not provide an explicit definition of the claim term “adjacent.” See Tr. 37:20–21. Petitioner argues that the Specification does use the term “adjacent” to describe something more than simply “next to.” Id. at 7:14–26 (citing Ex. 1001, 4:38–43). In the ’330 patent, “[f]luid inlet opening 114 [is described as] be[ing] positioned adjacent . . . contact region 102b” (Ex. 1001, 4:31–33), even though fluid inlet opening 114 is separated from contact region 102b by walls 110 that extend upwardly from upper surface 102a of heat spreader plate 102 (id. at 3:7–15). We are not persuaded that this use of the term “adjacent” in the ’330 patent necessitates a broader construction than “next to.” This is because fluid inlet opening 114 is next to contact region 102b in that nearly the entirety of fluid inlet opening 114 overlies contact region 102b, as depicted by the dashed lines of Figure 1. Figure 2 shows that microchannel walls 110 define corresponding microchannels through which contact region 102b is positioned immediately below fluid inlet opening 114. Because all elements of thin fluid heat exchangers can be considered relatively close to each other due to the small size of these devices, we determine that “adjacent” in the ’330 patent must mean something more than “close to or nearby,” as asserted by Petitioner. See Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007) (explaining that a claim interpretation that renders a claim term or phrase superfluous is disfavored). We also are not persuaded that the absence of any intervening structure of the same kind therebetween is sufficient to consider two objects as adjacent to each other in the ’330 patent, as asserted by Petitioner. For example, we would not consider inlet header 112 to be adjacent outlet header 126 in the ’330 patent simply because there are no other elements labeled as “headers” between them. For the foregoing reasons, we construe “adjacent” as “next to” and determine this is the broadest reasonable construction of this term in light of the specification of the ’330 patent.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“The principle that a rearrangement of parts is a mere design choice finds its roots in In re Japikse, 181 F.2d 1019, 1023 (CCPA 1950). In Japikse, claims were held unpatentable because rearranging the position of a starting switch would not have modified the operation of the device. Id. Petitioner provides no evidence or persuasive technical reasoning that rearrangement of the inlet header so as to be next to a lateral side of Kang’s microfins (as opposed to opposite a topside of Kang’s microfins) would not have modified operation of the heat exchanger device. At most, Petitioner has provided conclusory expert testimony that rearrangement of the inlet header in Kang so that it would satisfy the requirements of claim 1 would not “enhance” the heat removal efficiency/performance of Kang’s heat exchanger device. Ex. 1002 ¶ 49. However, Petitioner has provided no expert testimony as to whether or not rearrangement of the inlet header might otherwise modify (e.g., reduce) the heat removal efficiency/performance of the heat exchanger device. When modifying Kang’s device to place inlet section 31 on a lateral side of microfins 14 (i.e., in contact with the microfins) and to place inlet openings 44 on the corresponding lateral side of flow distributor 40 (Pet. Reply 5), at least a portion of fluid is able to enter directly the microchannels formed by microfins 14 and, thus, bypass flow distributor 40. This is because inlet section 31 is placed next to a side of the fins that corresponds with the ends of the microchannels. Petitioner has not persuaded us that bypassing Kang’s flow distributor 40 would not modify the heat removal/efficiency performance of Kang’s heat exchanger device such that modified Kang would perform as equally well as the embodiment illustrated in Figures 1–3.4 Rather, we determine that bypassing flow distributor 40 would avoid “caus[ing] the fluid to change directions several times” (Ex. 1004 ¶ 30), which would affect mixing, which would, in turn, affect heat transfer (id. at Abstr.). Thus, we are not persuaded that modifying Kang’s 4 We note that when discussing the opposing outlet header (which is already asserted to be next to a lateral side of the microfins in Kang), Petitioner asserts that having fluid flow through the microchannels directly, as opposed to through the flow distributor as intended, would not matter because heat exchange happens in the microchannels. See Tr. 15:13–16:2. Although we do not disagree that heat exchange would take place in the microchannels even if fluid bypasses the flow distributor, we are not persuaded that this means that there would be no modification in the operation of the device. embodiment of Figures 1–3 so as to place inlet section 31 on a lateral side of microfins 14 is a mere design choice that would not affect operation of the device. For the foregoing reasons, we determine that Petitioner has not” slip op. at 18
- Obviousness (§103) › KSR rationalesNot shown unpatentableNot shown unpatentable
“Because Petitioner has not specified the orientation of the header regions to the microfins and microchannels in connection with its proposed modification of Kang, we determine that it is unclear if the rearrangement of the header regions proposed by Petitioner is merely a design choice that does not affect the heat removal efficiency/performance of the heat exchanger device. If the header regions of modified Kang are positioned on the sides of microfins 14 corresponding to the ends of the microchannels, at least a portion of fluid could directly enter the microchannels formed by microfins 14, and thus, bypass flow distributor 40 and affect operation of the device. Because the exact configuration of the inlet and outlet header regions in modified Kang has not been set forth with clarity in Petitioner’s challenge, we are not persuaded that the proposed modification to the header regions is merely a design choice, as alleged by Petitioner, that would not affect operation of the device. Similarly, although Petitioner has asserted that “a person of ordinary skill in the art would be easily able to modify Kang’s device to . . . have inlet openings 44 on the corresponding lateral side of flow distributor 40” and that Bhatti teaches this configuration (Pet. Reply 5 (citing Ex. 1002 ¶¶ 49, 212, 213; Ex. 1007, Figs. 1, 2); Tr. 38:13–21), Petitioner has not clarified the specific configuration and orientation of lateral side inlet openings in modified Kang. For example, it is unclear if Petitioner proposes to alter Kang to re-orient inlet channels 44 to extend from a first lateral side to an opposing second lateral side of flow distributor 40 (instead of extending from a top side to a bottom side) or to extend Kang’s inlet channels 44 to only one lateral side, and if so, whether modified inlet channels would extend from the top to bottom of the flow distributor on that one lateral side or only along a portion of the lateral side. Because Petitioner has not specified the exact manner in which Kang’s flow distributor 40 would include inlet channels 44 on a lateral side of flow distributor 40 in connection with its proposed modification of Kang, we determine that it is unclear if the modification of inlet channels 44 proposed by Petitioner is merely a design choice that does not affect the heat removal efficiency/performance of the heat exchanger device. If inlet channels 44 extend from a first lateral side to an opposing second lateral side, at least a portion of fluid would be able to bypass the microchannels and, thus, affect operation of the device. Because the exact configuration of inlet channels 44 in modified Kang has not been set forth with clarity in Petitioner’s challenge, we are not persuaded that the proposed modification to inlet channels 44 is merely a design choice, as alleged by Petitioner, that would not affect operation of the device. For the foregoing reasons, we determine that Petitioner has not provided sufficient detail in its challenge to support a conclusion that modifying Kang in light of the teachings of Bhatti would be a mere design choice that would not modify the heat exchange functionality of the device.” slip op. at 24
Patent outcomesUS 8,746,330 not shown unpatentableClaim construction§ 103 obviousnessPatents in suitUS 8,746,330 - Ima S.P.A. / Fillshape S.R.L. v. Indag Gesellschaft FÜR Industriebedarf MBH & Co. Betriebs KGInstitution deniedPTAB · Dec 7, 2016 · IPR2016-01153 · APJ Timothy J Goodson · IPR · Institution
The Board denied institution on all challenged claims because Petitioners did not show a reasonable likelihood of prevailing on any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“as to which portions of Resterhouse Petitioners rely on as teaching each element of claim 1. The rules governing this proceeding require that a petition “must specify where each element of the claim is found in the prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4). As the Federal Circuit has recently indicated, “[t]he Board is not free to disregard its own regulations.” Perfect Surgical Techniques, Inc. v. Olympus America, Inc., __ F.3d __, 2016 WL 6694956 at *1 (Fed. Cir. Nov. 15, 2016). The Federal Circuit has also emphasized the need, in AIA proceedings, for petitioners to articulate their challenges with specificity in their initial petitions. See Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’ 35 U.S.C. § 312(a)(3). . . . Unlike district court litigation—where parties have greater freedom to revise and develop their arguments over time and in response to newly discovered material—the expedited nature of IPRs bring with it an obligation for petitioners to make their case in their petition to institute.”). In this case, the Petition’s arguments concerning claim 1 fall short of the requirements of § 42.104(b)(4) because the Petition does not link each element of the claim to a particular disclosure or structure in the reference on which Petitioners rely. Specifically, it is unclear which portion of Resterhouse, in Petitioners’ theory, discloses a “transferring assembly” and which portion discloses an “apparatus.” The Petition’s analysis of limitations that include those elements simply reproduces selected excerpts of Resterhouse without linking the structures described in the excerpts to each element of the claim. See Pet. 13–18.” slip op. at 15
- BurdenDenied
“as to which portions of Resterhouse Petitioners rely on as teaching each element of claim 1. The rules governing this proceeding require that a petition “must specify where each element of the claim is found in the prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4). As the Federal Circuit has recently indicated, “[t]he Board is not free to disregard its own regulations.” Perfect Surgical Techniques, Inc. v. Olympus America, Inc., __ F.3d __, 2016 WL 6694956 at *1 (Fed. Cir. Nov. 15, 2016). The Federal Circuit has also emphasized the need, in AIA proceedings, for petitioners to articulate their challenges with specificity in their initial petitions. See Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’ 35 U.S.C. § 312(a)(3). . . . Unlike district court litigation—where parties have greater freedom to revise and develop their arguments over time and in response to newly discovered material—the expedited nature of IPRs bring with it an obligation for petitioners to make their case in their petition to institute.”). In this case, the Petition’s arguments concerning claim 1 fall short of the requirements of § 42.104(b)(4) because the Petition does not link each element of the claim to a particular disclosure or structure in the reference on which Petitioners rely. Specifically, it is unclear which portion of Resterhouse, in Petitioners’ theory, discloses a “transferring assembly” and which portion discloses an “apparatus.” The Petition’s analysis of limitations that include those elements simply reproduces selected excerpts of Resterhouse without linking the structures described in the excerpts to each element of the claim. See Pet. 13–18.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We also agree with Patent Owner that Petitioners have not shown why it would be obvious, based on the disclosures of Sugihara and Hiramoto, for a transferring assembly to simultaneously remove a single pouch and a single spout. We note that in both references, pouch and spout removal are sequential, not simultaneous. Further, Petitioners do not explain what modifications would be made to either reference to accomplish simultaneous removal, nor do Petitioners provide a persuasive reason why a skilled artisan would make such a modification.” slip op. at 23
§ 103 obviousnessPatents in suitUS 7,648,017
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.