- Google LLC / LG Electronics, Inc. et al. v. Zipit Wireless, Inc.All claims unpatentablePTAB · Mar 9, 2021 · IPR2019-01568 · APJ Trevor M Jefferson · IPR · Final written decision
Claims 11, 12, 14–16, and 20 are unpatentable under § 103(a) over the instituted combinations of prior art.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioners adopt Patent Owner’s level of skill in the art asserted in the Blackberry ’837 IPR, stating that: A [person of ordinary skill in the art] has an accredited bachelor’s degree in computer science, electrical engineering, or a related discipline that included coverage of wireless communications and the use of communication protocols used for real-time communications, and also at least two years of industry experience. In lieu of specific academic training, a [person of ordinary skill in the art] may draw upon appropriate industry experience to meet the foregoing requirements. Pet. 6 (citing Ex. 1038, 48 (PO Resp. of the Blackberry ’837 IPR)). Patent Owner does not dispute the level of skill determination. In view of the full record, we adopt Petitioners’ articulation of the level of skill. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“1. “generating textual characters and graphical symbols in response to manipulation of keys on a data entry device” (claim 11) The Blackberry ’837 IPR construed the term “graphical symbols” as distinct from the textual characters that represent graphical emoticons. Blackberry ’837 IPR 16 (applying the broadest reasonable construction in light of the specification). We determined that “[t]he ’837 patent 2 See Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340, 51,343 (amending 37 C.F.R. § 42.100(b) effective November 13, 2018) (now codified at 37 C.F.R. § 42.100(b) (2019)). distinguishes the symbols shown in Figure 2 [of the ’837 patent], which include characters such as ‘$’ from ‘graphical symbols’ entered by an emoticon or programmable key.” Id. at 17 (citing Ex. 1001, 18:1–4, Fig. 2). In the present case, we agree with Patent Owner that under Phillips claim 11 distinguishes between textual characters and graphical symbols in accordance with the ’837 Specification. See PO Resp. 8–9; Ex. 1001, 3:26– 32, 4:50–5:3. Thus, we are persuaded that the meaning a person of ordinary skill in the art would have at the time of the invention, in light of the ’837 Specification, is that “graphical symbols” include “graphical emoticons” that differ from textual characters representing emoticons. We maintain that with respect to “graphical symbols” as recited in independent claim 11, we determine that “graphical symbols” refer to “graphical emoticons.” Our Decision on Institution further found that “entering textual characters and graphical symbols with a data entry device” is given its ordinary meaning in the context of the claims. Dec. on Inst. 12. We maintain this construction for this Final Written Decision. \” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundPlain and ordinary meaningDecided for petitioner
“We are also not persuaded by Patent Owner’s citation to arguments and testimony regarding the prosecution history. See PO Resp. 5–10. Patent Owner’s arguments before the Office during prosecution to distinguish a cited reference (“Rucinski”) by claiming an “integrated data entry device” are not a clear disavowal of claim scope. Cont’l Circuits LLC v. Intel Corp., 915 F.3d 788, 798 (Fed. Cir. 2019) (prosecution history disclaimer “must be clear and unambiguous, and constitute a clear disavowal of scope.”). Indeed, the portions of the discussion Patent Owner cites are specific to the reference being distinguished, Rucinski (Ex. 2052, 10–11, 72–73), and Patent Owner’s arguments focus on the protocols and software execution in Rucinski as compared to claim 11. PO Resp. 3–4. We agree with Petitioners (Reply 2–4) that Patent Owner’s argument to overcome the Rucinski art asserted that “Rucinski segregates the functions of data entry and display from the functions of wireless communication and protocol processing” and not that data entry was not integrated into an integrated housing. Ex. 1002, 117–119 (’837 file history) (discussing messaging protocols). Patent Owner’s evidence does not support that the data entry device is integrated into the terminal in claim 11 based on the intrinsic evidence. Accordingly, we give the term “a data entry device of a handheld terminal” its ordinary and customary meaning as a handheld terminal capable of data entry.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“In sum, Petitioners contend that “in view of Sinivaara’s and Werndorfer’s teachings, a POSA would have had multiple independent reasons to implement [Van Dok]’s IM device to generate messages in accordance with an IM protocol compatible with [Van Dok]’s IM service, and to wirelessly transmit those messages to a wireless access point for Internet transmission.” Pet. 17; see also Ex. 1004 ¶¶ 88–101. Based on the full record, Petitioners present sufficient and persuasive evidence establishing a rationale to combine the asserted references. See Pet. 11–17; Ex. 1003 ¶¶ 88–101.” slip op. at 16
Patent outcomesUS 7,894,837 unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 7,894,837 - Google LLC / LG Electronics, Inc. et al. v. Zipit Wireless, Inc.All claims unpatentablePTAB · Mar 9, 2021 · IPR2019-01567 · APJ Trevor M Jefferson · IPR · Final written decision
Claims 20, 21, and 24–30 are unpatentable under § 103 over the instituted combinations; Petitioners’ motion to exclude is denied.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioners adopt Patent Owner’s level of skill in the art asserted in the Blackberry IPR, stating that: A [person of ordinary skill in the art] has an accredited bachelor’s degree in computer science, electrical engineering, or a related discipline that included coverage of wireless communications and the use of communication protocols used for real-time communications, and also at least two years of industry experience. In lieu of specific academic training, a [person of ordinary skill in the art] may draw upon appropriate industry experience to meet the foregoing requirements. Pet. 5 (citing Ex. 1038, 47 (Blackberry IPR Prelim. Resp.)). Patent Owner does not dispute the level of skill determination. In view of the full record, we adopt Petitioners’ articulation of the level of skill. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languagePlain and ordinary meaningDisclaimer not foundDecided for petitioner
“We are not persuaded by Petitioners’ proposed construction that inserts “integrated” into the preamble of claim 20. Patent Owner’s argument importing limitations from the Specification is improper and not supported by the intrinsic evidence. Comark Commc’ns Inc. v. Harris Corp., 156 F.3d 1182, 1186–87 (Fed. Cir. 1998); Phillips, 415 F.3d at 1319–20. As Petitioners argue (Reply 4), the ’870 patent specifically claims and describes “a data entry device integrated in the terminal housing” in claim 1 of the ’870 patent (Ex. 1001, 25:16), indicating that the Patent Owner knew how to specifically claim the “integrated” device. See Kara Tech. Inc. v. Stamps.com Inc., 582 F.3d 1341, 1347 (Fed. Cir. 2009). We are also not persuaded by Patent Owner’s citation to arguments and testimony regarding the prosecution history. See PO Resp. 3–4. Patent Owner’s arguments before the Office during prosecution to distinguish a reference (“Rucinski”) by claiming an “integrated data entry device” are not a clear disavowal of claim scope. Cont’l Circuits LLC v. Intel Corp., 915 F.3d 788, 798 (Fed. Cir. 2019) (prosecution history disclaimer “must be clear and unambiguous, and constitute a clear disavowal of scope.”). Indeed, the portions of the discussion Patent Owner cites are specific to the reference being distinguished during prosecution, Rucinski (Ex. 2053), and Patent Owner’s arguments there focus on the protocols and software execution in Rucinski as compared to claim 20. PO Resp. 3–4 (citing Ex. 1002, 246–247). We agree with Petitioners (Reply 3–4) that Patent Owner’s argument to overcome the Rucinski art asserted that “Rucinski segregates the functions of data entry and display from the functions of wireless communication and protocol processing” and not that data entry was not integrated into an integrated housing. Ex. 1002, 246–247. Patent Owner’s evidence does not support that the data entry device is required to be integrated into the housing in claims 20 and 21 based on the intrinsic evidence. Accordingly, we give the term “a data entry device of a handheld terminal” its ordinary and customary meaning as a handheld terminal capable of data entry.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“20D, 20F, and 20G. Claim 20 recites “a local network through the wireless, Internet protocol access point” in limitation 20D, “the loss of a network connection” in limitation 20F, and “Internet protocol network beacons” in limitation 20G. Each recitation of “network” in claim 20 is slightly different, referring to “managing wireless network access” in the preamble, to “local network through the wireless, Internet protocol access point” in limitation 20[D], and “searching for wireless, Internet protocol network beacons” in limitation 20[F]. Ex. 1001, 26:53–65. Patent Owner’s argument asserts that the active conversations terminated by a loss of a network connection in limitation 20F, refers back to the connection of the messaging terminal to a local network through the wireless, Internet protocol access point of limitation. PO Resp. 5–6. Patent Owner does not address how the proposed claim construction affects the application of the asserted prior art to limitations 20[F]. See PO Resp. 4–5; Sur-reply 10–13. Whether network loss refers to a local network or Internet protocol access point networks is not at issue in the analysis of limitations 20[F] and 20[G]. PO Resp. 11–13, 28; Sur-reply 10–13. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Accordingly, we determine that this term does not require construction.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“3. ” entering textual characters and graphical symbols with a data entry device” (claim 20) The Blackberry IPR construed the term “graphical symbols” as distinct from the textual characters that represent graphical emoticons. Blackberry IPR 16 (applying the broadest reasonable construction in light of the specification). We determined that “[t]he’870 patent distinguishes the symbols shown in Figure 2 [of the ’870 patent], which include characters such as ’$’ from ‘graphical symbols’ entered by an emoticon or programmable key.” Id. (citing Ex. 1001, 18:47–48, Fig. 2). In the present case, we agree with Patent Owner that under a Phillips interpretation, claim 20 distinguishes between textual characters and graphical symbols in accordance with the ’870 Specification. See Prelim. Resp. 8–9; Ex. 1001, 3:26–32, 4:50–5:3. Thus, we determined in the Decision on Institution in the present case that the meaning a person of ordinary skill in the art would have at the time of the invention, in light of the ’870 Specification, is that “graphical symbols” include “graphical emoticons” that differ from textual characters representing emoticons. We maintain that construction with respect to “graphical symbols” as recited in independent claim 20; we determine that “graphical symbols” refer to “graphical emoticons.” Our Decision on Institution also rejected Patent Owner’s construction that “entering textual characters and graphical symbols with a data entry device” means “enter[ing] using emoticon keys or programmable keys, while textual characters are entered by typing on a keyboard.” Dec. on Inst. 14. For this Final Written Decision, we accord “entering textual characters and graphical symbols with a data entry device” its ordinary meaning in the context of the claims.” slip op. at 13
Patent outcomesUS 7,292,870 unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 7,292,870 - Choirock Contents Factory Co., Ltd. v. Spin Master Ltd.All claims unpatentablePTAB · Sep 24, 2020 · IPR2019-00900 · APJ Neil T Powell · IPR · Final written decision
Claims 1–20 are unpatentable under § 103 over Aprile and Shannon; the Board did not reach the other asserted grounds.
RulingsFinal written decision- Skill levelSkill level board ownOther
“In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation and internal quotation marks omitted). Based on the full record before us, we determine that one of ordinary skill in the art “would have a bachelor’s degree in mechanical engineering or a related field and at least three years of experience in toy design.” This level of skill in the art is consistent with the disclosure of the ’073 patent and the prior art of record.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“According to the applicable standard, claim terms “are generally given their ordinary and customary meaning” as understood by a person of ordinary skill in the art in question at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). “In determining the meaning of the disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). Extrinsic evidence is “less significant than the intrinsic record in determining ‘the legally operative meaning of claim language.’” Phillips, 415 F.3d at 1317. Only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. America Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Our analysis below does not require construing any claim term to resolve the parties’ dispute. Accordingly, we do not expressly construe any claim term.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“b. Analysis Considering the record as a whole, Petitioner’s evidence and arguments provide rational underpinning for its contentions that claims 1–20 would have been obvious in view of Aprile and Shannon. Weighing the parties’ evidence and arguments, Petitioner persuades us that a person of ordinary skill in the art would have had motivation to modify Shannon’s toy to have a magnetically released latch like Aprile’s. Additionally, Petitioner persuades us that there would have been a reasonable expectation of success for such a modification.” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“We also do not agree with Patent Owner’s assertion that Shannon teaches away from using a magnetically released fastener like Aprile’s. PO Resp. 23–29. A reference teaches away “when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Mouttet, 686 F.3d 1322, 1333– 34 (Fed. Cir. 2012)); DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006) (“We will not read into a reference a teaching away from a process where no such language exists.”). A reference does not teach away, however, if it merely expresses a general preference for an alternative invention but does not “criticize, discredit, or otherwise discourage” investigation into the invention claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Fulton further explains [O]ur case law does not require that a particular combination must be the preferred, or the most desirable, combination described in the prior art in order to provide motivation for the current invention. “[T]he question is whether there is something in the prior art as a whole to suggest the desirability, and thus the obviousness, of making the combination,” not whether there is something in the prior art as a whole to suggest that the combination is the most desirable combination available. 391 F.3d at 1200. Additionally, “obviousness must be determined in light of all the facts, and there is no rule that a single reference that teaches away will mandate a finding of nonobviousness. Likewise, a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine.” Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006).” slip op. at 28
Patent outcomesUS 9,868,073 unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,868,073 - Choirock Contents Factory Co., Ltd. v. Spin Master Ltd.All claims unpatentablePTAB · Sep 23, 2020 · IPR2019-00897 · APJ Hyun J Jung · IPR · Final written decision
Claims 1–5 are unpatentable as obvious based on Tomiyama alone, Shannon modified by Tomiyama, and Shannon, Tomiyama, and Aprile.
RulingsFinal written decision- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“8. Weighing the Graham Factors Based on the full record before us, we find that (1) Petitioner’s” slip op. at 87
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“8. Weighing the Graham Factors Based on the full record before us, we find that (1) Petitioner’s” slip op. at 87
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“filed a Petition (Paper 1, “Pet.”), requesting institution of an inter partes review of claims 1–5 of U.S. Patent No. 8,500,508 B2 (Ex. 1001, “the ’508 patent”). Concurrently with the Petition, Petitioner also filed a “Motion for Joinder to Related Inter Partes Review of U.S. Patent No. 8,500,508 ([Mattel, Inc. v. Spin Master Ltd.,] IPR2018-01672) Under 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b).” Paper 3. Spin Master Ltd. (“Patent Owner” or “Spin Master”) filed a Preliminary Response (Paper 14) and an Opposition to Petitioner’s Motion for Joinder to IPR2018-01672 (Paper 7). Petitioner thereafter filed a Reply to Patent Owner’s Opposition (Paper 8), and with our authorization (Paper 15), Petitioner further filed a Reply to Patent Owner’s Preliminary Response (Paper 16). Pursuant to 35 U.S.C. § 314, we instituted an inter partes review of the ’508 patent and at the same time denied the Motion for Joinder. Paper 17 (“Dec. to Inst.”).” slip op. at 2
Patent outcomesUS 8,500,508 unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,500,508 - Zscaler, Inc. v. Symantec CorporationAll claims unpatentablePTAB · Nov 13, 2019 · IPR2018-00920 · APJ Jeffrey S Smith · IPR · Final written decision
Claims 1–19 are unpatentable as obvious over Nortel, Nortel and Stone, Alles and Lin, or Alles, Lin, and Stone.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedDecided for petitioner
“We credit Dr. Jakobsson’s testimony, which is supported by evidence cited above, and determine the Petition and supporting evidence show that a person of ordinary skill in the art would have understood Nortel’s processing rules comprise software instructions to perform specific functions, and that a person of ordinary skill would have considered software instructions to perform specific functions to be applications. We rely on Nortel’s teaching of a processor group configured with processing rules to provide service policies such as security functions, and Dr. Jakobsson’s testimony and his supporting evidence that a person of ordinary skill in the art would have understood that security functions are provided by software applications, to determine that Nortel and the knowledge of a person of ordinary skill in the art teaches “a plurality of application processing hardware modules, each configured with an application for processing data packets” as recited in claim 1 and the corresponding limitation of 13. Ex. 1004, 3:5–9, 23:1–29, Fig. 6A; Ex. 1003 ¶¶ 80–85 (citing Ex. 1004, 3:5–9, 9:12–14, 9:16–19, 14:28–15:2, 15:4–6, 23:3–6, Fig. 6A; Ex. 1012, 4, 6; Ex. 1013, 4).” slip op. at 12
- BurdenFwd all claims unpatentableUnpatentable
“For the reasons given above, we determine that the Petition and supporting evidence show, by a preponderance of the evidence, that Nortel in view of the knowledge of a person of ordinary skill in the art would have rendered claims 1 and 13 obvious.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“applications includes parallel transmitting of the identified data packets to each of the identified application processor modules.” Claim 14 recites a similar limitation. Petitioner, relying on testimony of Dr. Jakobsson, contends the cited art renders these limitations obvious because it would have been obvious to a person of ordinary skill in the art to apply Stone’s teaching of parallel transmission to Nortel’s ISN, such that the switch fabric transmits data packets in parallel to the packet service cards. Pet. 37–38 (citing Ex. 1004, 21:1–5, 22:31–32, 23:1–29, Figs. 4, 6A; Ex. 1005, 12:58– 13:18, Fig. 4; Ex. 1003 ¶¶ 160–162), 42. Petitioner, relying on testimony of Dr. Jakobsson, contends a person of ordinary skill in the art would have applied Stone’s parallel data transfer to the switch fabric of Nortel for the benefit of increasing the speed of transmitting a subscriber’s data packets to the appropriate service cards. Pet. 43–46 (citing Ex. 1005, 11:59–61; Ex. 1003 ¶¶ 192–199). Dr. Jakobsson testifies that a person of ordinary skill in the art would have been motivated to transfer data packets in parallel between Nortel’s switch fabric and packet service cards in order to increase the operating speed and efficiency of the system. Ex. 1003 ¶¶ 190–192 (citing Ex. 1012, 8; Ex. 1005, 11:59–61). We credit Dr. Jakobsson’s testimony and determine the Petition and supporting evidence articulates a reason with a rational underpinning that a person of ordinary skill in the art would have applied Stone’s teaching of transferring data packets in parallel, to transfer data packets in parallel between Nortel’s switch fabric and packet service cards, for the benefit of increasing speed as taught by Stone. We determine that the Petition and supporting evidence show by a preponderance of the evidence that the combination of Nortel and Stone would have rendered claims 2 and 14 obvious.” slip op. at 24
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For purposes of this decision, we determine no terms need an explicit construction to resolve a controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only those terms which are in controversy need to be construed and only to the extent necessary to resolve the controversy). We address claim interpretation to the extent necessary within the unpatentability analysis.” slip op. at 7
Patent outcomesUS 9,525,696 unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,525,696 - Riot Games, Inc. v. Paltalk Holdings, Inc.All claims unpatentablePTAB · May 14, 2019 · IPR2018-00132 · APJ Thu A Dang · IPR · Final written decision
Claims 1, 3, 7, 12, 18, 22–27, 36, 41–46, 55, and 58–63 are unpatentable as obvious over the stated combinations of Aldred and RFC 1692 with Ulrich or Denzer.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“On this record, the ’686 Specification supports Petitioner’s argument that the claim term “aggregated message” or “server message,” consistent with its ordinary and plain meaning, includes a message having an aggregated payload and at least one header in addition to any additional headers that may happen to be within the aggregated payload. Here, Patent Owner’s past claim construction positions support this determination by showing, at the least, prior to this inter partes trial, how Patent Owner viewed the meaning of this claim term. See Ex. 1005, 396–97; Ex. 1006, 234–36; Ex. 1052, 108:8–24; Ex. 1054, and Ex. B, 1.13” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“primary guarantee of objectivity in an obviousness analysis. Al-Site Corp. v. VSI Int’l Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999) (citing Graham, 383 U.S. at 17–18; Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991)). Relying on the declaration of Dr. White, Petitioner asserts that a person of ordinary skill in the art at the time of the invention would have to be an individual with “at least a master’s degree (or equivalent course work) in computer science, computer engineering, or physics, and at least two years of experience related to networked interactive applications,” or a person with “at least a bachelor’s degree in computer science, computer engineering, or physics” who has “approximately four years’ experience in network[ing] interactive applications, or the equivalent, which would include experience in network programming.” Pet. 4 (citing Ex. 1007 ¶¶ 42–43). Patent Owner does not assess the level of ordinary skill in the art. We adopt the Petitioner’s, and Dr. White’s assessment of the level of ordinary skill in the art because it is consistent with the ’686 patent and the asserted prior art, and apply it to our obviousness evaluation below. We also observe that the prior art of record reflects the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 24
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“7. Prior Art Printed Publication Status of RFC 1692 Patent Owner does not challenge our initial determination in the Institution Decision that RFC 1692 (dated August 1994) was available to persons of ordinary skill interested in computer networking and security sufficiently to be deemed “publicly accessible” at the relevant time. See Inst. Dec. 25–30; SRI Int’l, Inc. v. Internet Security Sys., Inc., 511 F.3d 1186, 1194 (Fed. 21 Cir. 2008). For the reasons discussed in the Institution Decision, we maintain our preliminary determination that RFC 1692 qualifies as prior art printed publications.” slip op. at 32
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Nevertheless, as to Patent Owner’s contention that Petitioner has failed to consider “the effect of larger packets on the packet order of the CSP of Aldred if the TMux protocol is included” (PO Resp. 23), we are persuaded by Petitioner’s argument that “RFC 1692 discusses adding segments to a multiplexed message in the order they are received.” Pet. Reply 4 (citing 1010 ¶¶ 6–7). In particular, Petitioner argues that “RFC 1692 expressly discloses that large TCP segments can be added to the end of any pending multiplexed packet, such that all segments would be sent in the order received.” Pet. Reply 3. According to Petitioner, “RFC 1692 explains that when a segment that would not normally be multiplexed – such as a large segment – is received and a multiplexed message is under construction, ‘the extra segment can be added to the TMux message under construction, and this complete message should be sent immediately . . . .’” Id. (citing Ex. 1010, 8–9). That is, RFC 1692 discloses that “large and small TCP segments can be sent in-order by the multiplexing process.” Id. at 4 (citing Ex. 1053 ¶¶ 19–23). In its Sur-Reply, Patent Owner does not dispute Petitioner’s point and its declarant’s, Dr. White’s, testimony that the logical channels in Aldred guarantee order. See generally Sur-Reply; Reply 5; Ex.1053 ¶ 25. Rather, Patent Owner summarizes its position by, again, relying on its large packet argument. Sur-Reply 3 (arguing “smaller items would be removed from the serialization queue and added to the TMux buffer, and larger segments would be transmitted immediately”); see also id. at 3–4 (similar large packet arguments). However, in Aldred, after demultiplexing, to the extent TMux does not maintain packet order, the higher level channel logical channel layer maintains packet order. See Ex. 1009, 6 (defining a channel “by the sending application” and “with application specified transmission characteristics,” and stating “a receiving port . . . receives data packets from the channel in the order in which they were sent”). Furthermore, as Petitioner points out, by contending that combining” slip op. at 37
Patent outcomesUS 6,226,686 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,226,686 - Riot Games, Inc. v. Paltalk Holdings, Inc.All claims unpatentablePTAB · May 14, 2019 · IPR2018-01238 · APJ Thu A Dang · IPR · Final written decision
Claims 1–4, 7–21, 28–35, 39, 40, 47–54, 56, 57, and 64–70 are unpatentable under § 103 over Aldred and RFC 1692, with RFC 1459 for certain claims.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“primary guarantee of objectivity in an obviousness analysis. Al-Site Corp. v. VSI Int’l Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999) (citing Graham, 383 U.S. at 17–18; Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991)). Relying on the declaration of Dr. White, Petitioner asserts that a person of ordinary skill in the art at the time of the invention “would have had at least a master’s degree (or equivalent course work) in computer science, computer engineering, or physics, and at least two years’ experience related to networked interactive applications,” or “at least a bachelor’s degree in computer science, computer engineering, or physics, and approximately four years’ experience in networking interactive applications, or the equivalent, which would include experience in network programming.” Pet. 4 (citing Ex. 1007 ¶¶ 42–43). Patent Owner does not assess the level of ordinary skill in the art. We adopt the Petitioner’s, and Dr. White’s assessment of the level of ordinary skill in the art because it is consistent with the ’686 patent and the asserted prior art, and apply it to our obviousness evaluation below. We also observe that the prior art of record reflects the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“As an initial matter, we agree with Petitioner that Patent Owner “unjustifiably assumes that every embodiment of Aldred would require the use of ‘large’ TCP segments,” but “neither the challenged claims nor Aldred require ‘large’ packets,” wherein “both encompass scenarios where only small packets are generated.” Pet. Reply 7. According to Petitioner, Patent Owner’s “‘large’ packet scenario does not show nonobviousness when the claim and Aldred’s disclosure encompass systems that use only small packets.” Id. at 8 (citing Apple Inc. v VirnetX Inc., IPR2014-00237, paper 41, 40 (PTAB May 11, 2015)). That is, although Patent Owner contends that “Petitioner’s alleged motivation for this combination is based on its small packet centric argument that RFC 1692 provides benefits for systems generating a number of small packets” (PO Resp. 17 (citing Pet. 33)), nothing in the challenged claims preclude a scenario in which small packets are generated. We agree with Petitioner’s contention, to which Patent Owner does not contest, that, in scenarios where only small packets are generated, “[a]n Ordinary Artisan would have understood that Aldred’s system could likewise produce small packets that would benefit from RFC 1692’s multiplexing” (Pet. 33 (citing Ex. 1007 ¶146)) because the Ordinary Artisan would have realized that “[a]s combined with RFC 1692, Aldred’s messages would be multiplexed via TMux (‘aggregat[ed]’) into a single packet (‘aggregated payload’) prior to transmission from the CSP to each member of the serialising channel set associated with the Sharing Set.” Pet. 35 (citing Ex. 1007 ¶¶ 150–151).” slip op. at 35
Patent outcomesUS 6,226,686 unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,226,686 - Riot Games, Inc. v. Paltalk Holdings, Inc.All claims unpatentablePTAB · May 14, 2019 · IPR2018-00131 · APJ Thu A Dang · IPR · Final written decision
Claims 1–4, 7–21, 28–35, 39, 40, 47–54, 56, 57, and 64–70 are unpatentable under § 103 over Aldred and RFC 1692, with RFC 1459 for certain claims.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“On this record, the ’686 Specification supports Petitioner’s argument that the claim term “aggregated message” or “server message,” consistent with its ordinary and plain meaning, includes a message having an aggregated payload and at least one header in addition to any additional headers that may happen to be within the aggregated payload. Here, Patent Owner’s past claim construction positions support this determination by showing, at the least, prior to this inter partes trial, how Patent Owner viewed the meaning of this claim term. See Ex. 1005, 396–97; Ex. 1006, 234–36; Ex. 1052, 108:8–24; Ex. 1054, and Ex. B, 1.12” slip op. at 21
- Skill levelSkill level petitioner adoptedDecided for petitioner
“primary guarantee of objectivity in an obviousness analysis. Al-Site Corp. v. VSI Int’l Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999) (citing Graham, 383 U.S. at 17–18; Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991)). Relying on the declaration of Dr. White, Petitioner asserts that a person of ordinary skill in the art at the time of the invention “would have had at least a master’s degree (or equivalent course work) in computer science, computer engineering, or physics, and at least two years’ experience related to networked interactive applications,” or “at least a bachelor’s degree in computer science, computer engineering, or physics, and approximately four years’ experience in networking interactive applications, or the equivalent, which would include experience in network programming.” Pet. 4 (citing Ex. 1007 ¶¶ 42–43). Patent Owner does not assess the level of ordinary skill in the art. We adopt the Petitioner’s, and Dr. White’s assessment of the level of ordinary skill in the art because it is consistent with the ’686 patent and the asserted prior art, and apply it to our obviousness evaluation below. We also observe that the prior art of record reflects the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 24
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“6. Prior Art Printed Publication Status of RFC 1459, and RFC 1692 Patent Owner does not challenge our initial determination in the Institution Decision that RFC 1692 (dated August 1994) and RFC 1459 (dated May 1993) were available to persons of ordinary skill interested in computer networking and security sufficiently to be deemed “publicly accessible” at the relevant time. See Inst. Dec. 25–30; SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. 21 Cir. 2008). For the reasons discussed in the Institution Decision, we maintain our preliminary determination that RFC 1692 and RFC 1459 qualify as prior art printed publications.” slip op. at 31
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Based on the record before us, we are unpersuaded by Patent Owner’s contention that “Petitioner’s analysis has provided an insufficient bases for the combination of Aldred and RFC 1692.” PO Resp. 15. As an initial matter, we agree with Petitioner that Patent Owner “unjustifiably assumes that every embodiment of Aldred would require the use of ‘large’ TCP segments,” but “neither the challenged claims nor Aldred require ‘large’ packets,” wherein “both encompass scenarios where only small packets are generated.” Pet. Reply 7. According to Petitioner, Patent Owner’s “‘large’ packet scenario does not show nonobviousness when the claim and Aldred’s disclosure encompass systems that use only small packets.” Id. at 8 (citing Apple Inc. v VirnetX Inc., IPR2014-00237, paper 41, 40 (PTAB May 11, 2015)). That is, although Patent Owner contends that “Petitioner’s alleged motivation for this combination is based on its small packet centric argument that RFC 1692 provides benefits for systems generating a number of small packets” (PO Resp. 17 (citing Pet. 33)), nothing in the challenged claims preclude a scenario in which small packets are generated. We agree with Petitioner’s contention, to which Patent Owner does not contest, that, in scenarios where only small packets are generated, “[a]n Ordinary Artisan would have understood that Aldred’s system could likewise produce small packets that would benefit from RFC 1692’s multiplexing” (Pet. 33 (citing Ex. 1007 ¶146)) because the Ordinary Artisan would have realized that “[a]s combined with RFC 1692, Aldred’s messages would be multiplexed via TMux (‘aggregat[ed]’) into a single packet (‘aggregated payload’) prior to transmission from the CSP to each member of the serialising channel set associated with the Sharing Set.” Pet. 35 (citing Ex. 1007 ¶¶ 150–151).” slip op. at 34
Patent outcomesUS 6,226,686 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,226,686 - Weatherford International, LLC / Weatherford /Lamb, Inc. et al. v. Packers Plus Energy Services, Inc.All claims unpatentablePTAB · Apr 3, 2018 · IPR2016-01517 · APJ Neil T Powell · IPR · Final written decision
Claims 23 and 27 are unpatentable as obvious over Thomson, Ellsworth, and Yost because the Graham factors favoring obviousness outweigh the evidence of copying and industry praise.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“revenue from its IsoFrac and FracPoint well completion systems, are inadmissible under FRE 702 and 705. FRE 705 states that “an expert may state an opinion — and give the reasons for it — without first testifying to the underlying facts or data.” Further, 37 C.F.R. § 42.65(a) states that “[e]xpert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” Thus, Petitioner’s arguments with respect to Exhibits 2051 and 2081 go more to weight of the declarant’s testimony rather than admissibility. We do not, therefore exclude Exhibits 2051 and 2081. We appreciate that Mr. McGowen’s initial estimates are based on information not available to Petitioner in this proceeding. See Pet. Mot. 4, see also Ex. 2051 42, n. 65 (“In arriving at this revenue estimate, I identified, analyzed, and summarized Baker Hughes confidential data containing information on the cost and/or profit derived from the sale of equipment that was run into a well.”). However, Mr. McGowen’s subsequent reliance on only publically available Baker Hughes’s marketing sources and a cash estimate of “revenue per frac stage” is reasonably within Mr. McGowen’s experience and expertise in the field. See Ex. 2081, 23–24, 6 see also Ex. 2051, 1–3. Because the actual revenue value is admittedly a “rough estimate,” we accord little if any weight to the asserted financial figure itself. Id. We do credit, to some extent, Mr. McGowen’s inference that Baker Hughes has derived certain business revenue from its FracPoint system. See Ex. 2051, 41–42, see also Ex. 2081, 22–24.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“IV. ANALYSIS A. Claim Construction Petitioner proposes constructions for certain claim terms. Pet. 26–27. Patent Owner addresses the meaning of the claim language “solid body packer.” PO Resp. 3–5. For purposes of this decision, we need not construe explicitly any claim language to determine that Petitioner has demonstrated obviousness of claim 25 by a preponderance of the evidence. See 35 U.S.C. § 314(a); 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.”).” slip op. at 16
- Skill levelSkill level board ownDecided for petitioner
“ordinary skill in the art as discussed above, upon which the parties essentially agree, we determine that a person of ordinary skill in the art would have known that it was conventional to cement and line a wellbore with a cemented casing for a multi-stage fracturing completion. See Ex. 1036, 48 (“Options considered for isolating the individual zones included conventional cementing of the casing with perforations to access the individual zones.”). A person of ordinary skill in the art also would have known that there existed circumstances in which open hole multi-stage fracturing might also be successful. See Ex. 1002, 5 (Yost describing successful production increase from using multi-stage fracturing to achieve “zone isolation” in an “open hole” so as to “avoid the problems of formation damage associated with cementing and to eliminate the need for tubing-conveyed perforating of numerous treatment intervals”); Ex. 1042, 3 (“The horizontal section for the first well Shell Midale horizontal C9-3-6-11Wd was completed in a conventional manner with a cemented and perforated liner. Openhole completions were used in the next two horizontal wells.”); see also id. (noting “potential for selective acid stimulation of horizontal wells completed openhole, provided that good zonal isolation is maintained.”). The level of knowledge attributed to one of skill in the art by Mr. McGowen, Dr. Rao, and the prior art, illustrates, albeit in different ways, certain problems encountered in wellbore completion and how the industry addressed and overcame such problems prior to the filing of the ’505 patent. For instance, knowledge of both conventional fracturing through perforations in cemented casing completions as described by Mr. McGowen, and fracturing in open hole completions in McClellan, is consistent with the Federal Circuit’s admonition that the hypothetical person of ordinary skill in the art is attributed with knowledge “of all prior art in the field of the inventor’s endeavor and of prior art solutions for a common problem even if outside that field.” In re Nilssen, 851 F.2d 1401, 1403 (Fed. Cir. 1988). What we do not attribute to one of ordinary skill in the art based on the testimonial and prior art evidence in this proceeding, is Patent Owner’s contention that one of ordinary skill in the art would have understood that multi-stage fracturing required cemented casing completion. See PO Resp. 15 (“Thus, a [person of ordinary skill in the art] would also expect that cemented casing is necessary to avoid the formation of these complex fracture geometries.”). This position appears as mostly unsupported attorney argument. Although in his declaration Mr. McGowen opined that “Plug and Perf was deemed necessary partly because of the type of hydraulic fracturing treatments being pumped and partly because of the then current theories about the behavior of hydraulic fractures,” nowhere does Patent Owner point us to persuasive evidence that cased hole Plug and Perf completions were the sole option one of skill in the art would have considered for successful wellbore completions. Ex. 2051, 23; see also id. at 17 (Mr. McGowen states that “[t]he POSITA would consider many different well configurations, reservoir types, stimulation methods, downhole operations, and other factors.”).” slip op. at 30
- Expert testimonyPetitioner expert creditedPatent owner expert creditedMixed
“After reviewing the evidence, we give some credit to the testimony of both parties’ Declarants in this proceeding. For instance, we determine that one of ordinary skill in the art would have known that Plug and Perf using a cemented casing was a conventionally accepted method in the oil and gas industry for completing a hydraulically fractured horizontal well. See Ex. 2051, 22, (Mr. McGowen testified that “[a]s of 2001, Plug and Perf was the industry standard because it had been economically successful, rigorously tested, and widely accepted amongst industry experts.”). Various papers cited by Patent Owner lend credence to the assertion that in the industry cemented casings were commonly used and characterized by some as “a prerequisite to ensure adequate zonal isolation for multiple fracture treatments in horizontal wells.” Ex. 2079, 1, see also Ex. 2078, 2 (“Austin et al. emphasized the importance of casing and cementing the horizontal section to allow for fracture initiation points to place multiple fractures along the horizontal well.”). We also give certain credit, as well, to Dr. Rao, who testifies that “Yost specifically describes multi-stage open hole fracturing of horizontal wells using packers for zonal isolation” (Ex. 1007 ¶ 43), and that those of ordinary skill in the art understood that such multi-stage open hole fracturing could be performed successfully (id. at ¶¶ 44–56). We also credit Dr. Rao’s testimony that those of ordinary skill in the art “could readily discern when it was advisable to use a cased hole tool in open hole and when it was not.” Id. at ¶ 57. We find that such knowledge is not mutually exclusive. For example, both parties’ Declarants provide reasoning and exemplary prior art references detailing why one of ordinary skill in the art might consider a cased well and an uncased well in different circumstances. Compare Ex. 1007 ¶ 43, (Dr. Rao discussing Yost’s multi-stage hydraulic fracturing in horizontal open-hole completion to “avoid the problems of formation damage associated with cementing.”) with Ex. 2051, 22–23 (Mr. McGowen explains that the problem of “multiple complex fractures being initiated near the wellbore, could be better controlled through the precise placement of perforations, which requires cementing, perforating and the Plug and Perf method.”). Consistent with our finding, Mr. McGowen testified during his deposition that open hole completions would have been an option: Q. So going without cemented casing would have been an option to consider[?] A. It would have been an option to consider. But it’s something that had been -- in the early days of horizontal, there was hydraulic fracturing done in open holes and that was a more primitive completion system where they had no control over where the frac fluids were going, and then the industry progressed and became more sophisticated and developed methods to try to control where the fracture initiated.” slip op. at 29
Patent outcomesUS 7,134,505 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,134,505 - Weatherford International, LLC / Weatherford /Lamb, Inc. et al. v. Packers Plus Energy Services, Inc.All claims unpatentablePTAB · Apr 3, 2018 · IPR2016-01514 · APJ Neil T Powell · IPR · Final written decision
Claim 25 is unpatentable as obvious over Thomson, Ellsworth, and Yost because the prior art and first three Graham factors outweigh evidence of copying and industry praise.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“It is not clear that Mr. McGowen’s estimates of Baker Hughes’s revenue from its IsoFrac and FracPoint well completion systems, are inadmissible under FRE 702 and 705. FRE 705 states that “an expert may state an opinion — and give the reasons for it — without first testifying to the underlying facts or data.” Further, 37 C.F.R. § 42.65(a) states that “[e]xpert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” Thus, Petitioner’s arguments with respect to Exhibits 2051 and 2081 go more to weight of the declarant’s testimony rather than admissibility. We do not, therefore exclude Exhibits 2051 and 2081. We appreciate that Mr. McGowen’s initial estimates are based on information not available to Petitioner in this proceeding. See Pet. Mot. 4, see also Ex. 2051 42, n. 65 (“In arriving at this revenue estimate, I identified, analyzed, and summarized Baker Hughes confidential data containing information on the cost and/or profit derived from the sale of equipment that was run into a well.”). However, Mr. McGowen’s subsequent reliance on only publically available Baker Hughes’s marketing sources and a cash estimate of “revenue per frac stage” is reasonably within Mr. McGowen’s experience and expertise in the field. See Ex. 2081, 23–246, see also Ex. 2051, 1–3. Because the actual revenue value is admittedly a “rough estimate,” we accord little if any weight to the asserted financial figure itself. Id. We do credit, to some extent, Mr. McGowen’s inference that Baker Hughes has derived certain business revenue from its FracPoint system. See Ex. 2051, 41–42, see also Ex. 2081, 22–24.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“Patent Owner addresses the meaning of the claim language “solid body packer.” PO Resp. 3–5. For purposes of this decision, we need not construe explicitly any claim language to determine that Petitioner has demonstrated obviousness of claim 25 by a preponderance of the evidence. See 35 U.S.C. § 314(a); 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.”).” slip op. at 15
- Skill levelSkill level board ownPetitioner expert creditedDecided for petitioner
“After reviewing the evidence, we give some credit to the testimony of both parties’ Declarants this proceeding. For instance, we determine that one of ordinary skill in the art would have known that Plug and Perf using a cemented casing was a conventionally accepted method in the oil and gas industry for completing a hydraulically fractured horizontal well. See Ex. 2051, 22, (Mr. McGowen testified that “[a]s of 2001, Plug and Perf was the industry standard because it had been economically successful, rigorously tested, and widely accepted amongst industry experts.”). Various papers cited by Patent Owner lend credence to the assertion that in the industry cemented casings were commonly used and characterized by some as “a prerequisite to ensure adequate zonal isolation for multiple fracture treatments in horizontal wells.” Ex. 2079, 1, see also Ex. 2078, 2 (“Austin et al. emphasized the importance of casing and cementing the horizontal section to allow for fracture initiation points to place multiple fractures along the horizontal well.”). We also give certain credit, as well, to Dr. Rao who testifies that “Yost specifically describes multi-stage open hole fracturing of horizontal wells using packers for zonal isolation” (Ex. 1007 ¶ 43), and that those of ordinary skill in the art understood that such multi-stage open hole fracturing could be performed successfully (id. at ¶¶ 44–56). We also credit Dr. Rao’s testimony that those of ordinary skill in the art “could readily discern when it was advisable to use a cased hole tool in open hole and when it was not.” Id. at ¶ 57. We find that such knowledge is not mutually exclusive. For example, both parties’ Declarants provide reasoning and exemplary prior art references detailing why one of ordinary skill in the art might consider a cased well and an uncased well in different circumstances. Compare Ex. 1007 ¶ 43, (Dr. Rao discussing Yost’s multi-stage hydraulic fracturing in horizontal open-hole completion to “avoid the problems of formation damage associated with cementing.”) with Ex. 2051, 22–23 (Mr. McGowen explains that the problem of “multiple complex fractures being initiated near the wellbore, could be better controlled through the precise placement of perforations, which requires cementing, perforating and the Plug and Perf method.”). Consistent with our finding, Mr. McGowen testified during his deposition that openhole completions would have been an option: Q. So going without cemented casing would have been an option to consider[?] A. It would have been an option to consider. But it’s something that had been -- in the early days of horizontal, there was hydraulic fracturing done in open holes and that was a more primitive completion system where they had no control over where the frac fluids were going, and then the industry progressed and became more sophisticated and developed methods to try to control where the fracture initiated. Ex. 1034, 75:25–76:9.” slip op. at 28
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia with nexusDecided for patent owner
“We agree with Petitioner that claim 25 is a method claim, and that some of the evidence simply of commensurate tools and hardware between StackFRAC and the claimed invention may not necessarily express each claimed method step. See Pet. Reply, 18–19. However, Patent Owner’s evidence of objective indicia includes information and evidence that expresses the use of these tools and hardware in highly similar, if not the same, steps as claimed. For example, where claim 20 recites “running the tubing string into a wellbore in a desired position for treating the wellbore,” and claim 25 recites “when in a desired position the apparatus is adjacent an open hole section of the wellbore and the packers are set to seal the annulus between the apparatus and the wellbore wall,” a Packers Plus advertisement (Ex. 2017, 1) states “StackFRAC HD technology allows you to increase your production by running longer laterals with shorter stage lengths . . . open hole systems provide an excellent opportunity to complete two or more laterals off of one vertical wellbore.” Compare Ex. 1001, 16:17–18, 16:41– 44 with Ex. 2017, 1. The Packers Plus advertisement goes on to describe that the RockSEAL II solid-body packer “has a specially designed elastomer with the largest possible cross section to provide excellent expansion ratios for setting in oversized holes.” Ex. 2017, 3. This description is consistent with “the packers are set to seal the annulus between the apparatus and the wellbore wall,” as recited in claim 25. Ex. 1001, 16:43–44. In conclusion, Patent Owner presents evidence for which there is a strong nexus between the asserted merits of Packers Plus’s StackFRAC system and the merits of the claimed invention. See, e.g., Ex. 2004 (“StackFRAC, the company’s prize product and primary innovation, is an open hole ball drop completion system that’s widely credited with unlocking old resource plays that were thought to be too expensive or too technically challenging to tap.”). We will consider such evidence of the success and praise of the StackFRAC system as direct evidence of the success and praise of the claimed invention. See Ashland Oil, Inc. v. Delta Resins & Refractories, 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). Petitioner does not persuade us that there is no nexus between Patent Owner’s evidence and the claimed invention. See Pet. Reply 18–20. We now turn to the evidence alleging success and praise.” slip op. at 35
Patent outcomesUS 7,543,634 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,543,634
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.