- PTAB · Mar 2, 2023 · IPR2021-01483 · APJ Michael T Cygan · IPR · Final written decision
Claims 1–18 are unpatentable; the revised motion to amend and both parties’ motions to exclude are denied.
RulingsFinal written decision- Skill levelOther
“B. Level of Skill in the Art Petitioner offers an assessment as to the level of skill in the art as of” slip op. at 10
- 112 supportMotion to amend, deniedDenied
“to . . . introduce new subject matter.” 35 U.S.C. § 316(d)(3); 37 C.F.R. § 41.121(a)(2)(ii); Lectrosonics, Paper 15 at 6–7. Accordingly, “the Board requires that a motion to amend set forth written description support in the originally filed disclosure of the subject patent for each proposed substitute claim, and also set forth support in an earlier filed disclosure for each claim for which benefit of the filing date of the earlier filed disclosure is sought.” Lectrosonics, Paper 15 at 7 (citing 37 C.F.R. § 42.121(b)(1)–(2)). For this requirement, Patent Owner must cite “to the original disclosure of the application, as filed, rather than to the patent as issued.” Id. at 8.” slip op. at 56
- ExcludeMotion to exclude, deniedDenied
“insufficiency in its showing that these documents are prior art is a legal determination to be made by the Board, and is not proper for a motion to exclude. Pet. Opp. PO Mot. Excl. 4 (citing Chicago Mercantile Exchange Inc. v. 5th Market, Inc., CBM2014-00114, Paper 35, at 52 (P.T.A.B. Aug. 18, 2015) (“a motion to exclude is not the proper vehicle to challenge the sufficiency of the evidence used to demonstrate that [an item] qualifies as a prior art printed publication . . .. Whether a reference qualifies as a printed publication . . . is a legal conclusion based on underlying factual determinations” and thus “the issue of whether there is sufficient evidence in the record . . . should be presented in the patent owner response—not a motion to exclude”).” slip op. at 64
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“claims 11, 17, and 18. Resp. 10 n. 2. We determine that Petitioner has shown the limitations of claims 11, 17, and 18 to be taught by the abovementioned portions of Chang and Geeks, and that a person of ordinary skill in the art would have reason to combine the references with a reasonable expectation of success. For these reasons, we determine that Petitioner has shown, by a preponderance of the evidence, that claims 11, 17, and 18 are unpatentable.” slip op. at 18
§ 103 obviousnesscites Phillips · KSR · Graham · NautilusPatents in suitUS 9,848,295 - PTAB · Feb 1, 2023 · IPR2021-01315 · APJ Lynne H Browne · IPR · Final written decision
The Board cancelled claims 1–19 and denied substitute claims 20–38 because their 5,000–15,000 psi limitation added new matter without written-description support.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“2. Level of Ordinary Skill in the Art Petitioner contends a person having ordinary skill in the art pertaining to the ’500 patent would have either: (1) a Bachelor of Science in Mechanical Engineering, Electrical Engineering, Petroleum Engineering or an equivalent field as well as at least 2 years of academic or industry experience in the oil and gas industry, including well drilling, completion, or production; or (2) at least four years of industry experience in the oil and gas industry, including well drilling, completion, or production. Pet. 13 (citing Ex. 1003 ¶ 19). Patent Owner utilizes Petitioner’s formulation of ordinary skill. See Mot. 11–12. Petitioner’s formulation of ordinary skill is consistent with the level of skill reflected in the ’500 patent and the prior art of record. We therefore apply it in the present Decision.” slip op. at 12
- Expert testimonyPatent owner expert discountedDecided for petitioner
“for several reasons. First, as seen from the deposition testimony quoted above, Patent Owner’s own witnesses cannot agree on a numerical definition of “high pressure.” Mr. Marscher says high pressure is between 5,000 psi and 15,000 psi (see Ex. 1033, 111:1–112:3), whereas Mr. Schaaf says high pressure is between 8,000 psi and 12,000 psi and specifically disagrees with Mr. Marscher’s testimony that high pressure can be below 8,000 psi (see Ex. 1030, 43:6–44:13). Thus, the testimony of Patent Owner’s own witnesses is contrary to Patent Owner’s position that a person of ordinary skill in the art would have understood that the ’694 Application’s disclosure of “high pressure” pumping demonstrates possession of a specific numerical range of pumping pressures. Second, neither Mr. Marscher nor Mr. Schaaf cites any objective evidence to support their respective notions of what “high pressure” might be, in the context of hydraulic fracturing. For example, neither cites to any published industry standards to support their respective opinions. This lack of objective evidentiary support weakens the persuasiveness of both witness’s testimony on this issue, especially because their opinions conflict with each other.” slip op. at 19
- 112 supportMotion to amend, deniedDenied
“specification that did not expressly claim that range, did not state either of the two end values (40% and 60%), and did not disclose the range (40– 60%). Indivior, 18 F.4th at 1325 (claim 1), 1327–30 (discussing claim 1). In particular: “In the case of a claimed range, a skilled artisan must be able to reasonably discern a disclosure of that range” in the specification at issue. Id. at 1328. We conclude Patent Owner’s reliance on the testimony of Mr. Marscher and Mr. Schaaf that a skilled artisan could reasonably discern the numerical pressure range at issue here, based on the bare disclosure in the ’694 Application of “high pressure” pumping, is not persuasive for the reasons provided above. The Indivior decision also considered a narrower claim directed to a film comprising “about 48.2 wt % to about 58.6 wt % of the water-soluble polymetric matrix,” and concluded that it also did not have written description support in the specification at issue, even though the specification provided examples of films having the two end point values of the range (48.2% and 58.6%). See Indivior, 18 F.4th at 1325 (claim 7), 1329–30 (discussing claim 7). The Court concluded that finding written description support on those facts would “amount[] to cobbling together numbers after the fact” whereas “[a] written description sufficient to satisfy the requirement of the law requires a statement of an invention, not an invitation to go on a hunting expedition to patch together after the fact a synthetic definition of an invention.” Id. at 1329. We conclude in the present case that Patent Owner’s witnesses went on a hunting expedition which conflicts with the Indivior decision.” slip op. at 20
- BurdenNot reached
“E. Petitioner’s Unpatentability Grounds In light of our determination above that proposed substitute claims 20–38 lack written description support in the application that issued as the ’500 patent, we do not reach the grounds of unpatentability set forth in Petitioner’s Opposition for these claims. See Mot. Opp. 5–6 (listing the grounds).” slip op. at 21
NonePatents in suitUS 9,893,500 - PTAB · Jan 24, 2023 · IPR2021-01066 · APJ George R Hoskins · IPR · Final written decision
The Board cancelled original claims 1–20 and denied substitute claims 21–40 because their numerical pressure ranges added new matter.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“The test for new matter is whether the original application’s disclosure “reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc); see also Senju Pharm. Co. v. Apotex Inc., 746 F.3d 1344, 1352 (Fed. Cir. 2014) (citing Ariad as providing the test for determining new matter under 35 U.S.C. § 132(a)). We perform “an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art,” to determine whether it demonstrates possession of the claimed subject matter. Ariad, 598 F.3d at 1351.” slip op. at 11
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateDenied
“The test for new matter is whether the original application’s disclosure “reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc); see also Senju Pharm. Co. v. Apotex Inc., 746 F.3d 1344, 1352 (Fed. Cir. 2014) (citing Ariad as providing the test for determining new matter under 35 U.S.C. § 132(a)). We perform “an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art,” to determine whether it demonstrates possession of the claimed subject matter. Ariad, 598 F.3d at 1351.” slip op. at 11
- Skill levelSkill level board ownDecided for petitioner
“to the ’711 patent would have either: “(1) a Bachelor of Science in Mechanical Engineering, Electrical Engineering, Petroleum Engineering or an equivalent field as well as at least 2 years of academic or industry experience in the oil and gas industry, including well drilling, completion, or production”; or (2) “at least four years of industry experience in the oil and gas industry including well drilling, completion, or production.” Pet. 18. Patent Owner utilizes the same formulation of ordinary skill. See Mot. 10–11. 2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. The parties’ agreed-upon formulation of ordinary skill is consistent with the level of skill reflected in the ’711 patent and the prior art of record. We therefore apply it in the present Decision.” slip op. at 11
- Expert testimonyPatent owner expert discountedDecided for petitioner
“disclosures of the ’656 Application into demonstrating possession of the numerical pressure ranges recited in proposed substitute claims 21 and 33 is unavailing, for several reasons. First, as seen from the deposition testimony quoted above, Patent Owner’s own witnesses cannot agree on a numerical definition of “high pressure.” Mr. Marscher says high pressure is between 5,000 psi and 15,000 psi (see Ex. 1020, 111:1–112:3), whereas Mr. Schaaf says high pressure is between 8,000 psi and 12,000 psi and specifically disagrees with Mr. Marscher’s testimony that high pressure can be below 8,000 psi (see Ex. 2014, 43:6–44:13). Thus, the testimony of Patent Owner’s own witnesses is contrary to Patent Owner’s position that a person of ordinary skill in the art would have understood that the ’656 Application’s disclosure of “high pressure” pumping demonstrates possession of a specific numerical range of pumping pressures. Second, neither Mr. Marscher nor Mr. Schaaf cites any objective evidence to support their respective notions of what “high pressure” might be, in the context of hydraulic fracturing. For example, neither cites to any published industry standards to support their respective opinions. This lack of objective evidentiary support weakens the persuasiveness of both witnesses’ testimony on this issue, especially because their opinions conflict with each other.” slip op. at 18
§ 103 obviousness§ 112 disclosurePatents in suitUS 10,020,711 - PTAB · Jan 17, 2023 · IPR2021-01036 · APJ Lynne H Browne · IPR · Final written decision
The Board granted cancellation of original claims 1–13, denied substitute claims 14–19 and 21 for new matter, and denied claims 20 and 22–26 as unpatentable.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“V. SUMMARY OF CONCLUSIONS We grant Patent Owner’s non-contingent request to cancel original claims 1–13 of the ’728 patent, and we deny Patent Owner’s request to add proposed substitute claims 14–26 to the ’728 patent.16 Thus, the result of this Decision is summarized by the following table. Motion to Amend Outcome Claim(s) Original Claims Canceled by Amendment 1–13 Substitute Claims Proposed in the Amendment 14–26 Substitute Claims: Motion to Amend Granted Substitute Claims: Motion to Amend Denied 14–26 Substitute Claims: Not Reached VI. ORDER In consideration of the foregoing, it is hereby: ORDERED that Patent Owner’s Motion to Amend is granted as to the non-contingent request to cancel original claims 1–13 of the ’728 patent; 16 Should Patent Owner wish to pursue amendment of the challenged claims in a reissue or reexamination proceeding subsequent to the issuance of this Decision, we draw Patent Owner’s attention to the April 2019 Notice Regarding Options for Amendments by Patent Owner Through Reissue or Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg. 16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application or a request for reexamination of the challenged patent, we remind Patent Owner of its continuing obligation to notify the Board of any such related matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2). FURTHER ORDERED that Patent Owner’s Motion to Amend is” slip op. at 39
- Skill levelSkill level petitioner adoptedDecided for petitioner
“2. Level of Ordinary Skill in the Art Petitioner contends a person having ordinary skill in the art pertaining to the ’728 patent would have either: (1) a Bachelor of Science in Mechanical Engineering, Electrical Engineering, Petroleum Engineering or an equivalent field as well as at least two years of academic or industry experience in the oil and gas industry, including well drilling, completion, or production; or (2) at least four years of industry experience in the oil and gas industry, including well drilling, completion, or production. 2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. Pet. 14–15. Patent Owner utilizes Petitioner’s formulation of ordinary skill. See Mot. 12–13. Petitioner’s formulation of ordinary skill is consistent with the level of skill reflected in the ’728 patent and the prior art of record. We therefore apply it in the present Decision. 3.” slip op. at 12
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateDenied
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“We see no evidence of improper hindsight. The Robinson/Broussard/ Henry combination does not disclose the claimed load box. Morris discloses mobile source of electricity 103 to supply electric power to fracturing equipment within mobile fracturing system 103 that includes at least one switchgear transport 112, a plurality of drive transports 104, at least one auxiliary power transport 106, at least one blender transport 110, at least one data van 114 and a plurality of fracturing pump transports 108 that deliver fracturing fluid through wellhead 101 to subsurface geological formations. Ex. 1037 ¶ 43. Morris discloses that “switch gear transport 112 may comprise a plurality of electrical disconnect switches, fuses, transformers, and/or circuit protectors to protect the fracturing equipment.” Id. Dr. Ehsani, Petitioner’s expert, testifies that “the switchgear (with switches, fuses, and circuit protectors) described in Morris is one example of a ‘load box’” comparing it to the ’728 patent’s disclosure that “tie ins for devices that operate at the stepped down voltage” are exemplary load boxes. Ex. 1041 ¶ 60 (citing Ex. 1001, 5:50–52). Dr. Ehsani further testifies that a person of ordinary skill in the art “would have recognized that lube oil heaters would be part of the fracturing pump transport or the additional auxiliary equipment to which power would be directed from switchgear.” Id. We credit Dr. Ehsani’s unrebutted testimony, which is supported by Morris’ disclosures discussed above. For these reasons, we determine that Petitioner has shown, by a preponderance of the evidence, that proposed substitute claim 20 is unpatentable over the combined teachings of Robinson, Broussard, Henry, and Morris.” slip op. at 35
§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 9,611,728 - PTAB · Jan 4, 2023 · IPR2021-01034 · APJ George R Hoskins · IPR · Final written decision
The Board cancelled original claims 1–11 and denied substitute claims 12–22 because their numerical pressure ranges introduced new matter unsupported by the original disclosure.
RulingsFinal written decision- 112 supportMotion to amend, deniedDenied
“The test for new matter is whether the original application’s disclosure “reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc); see also Senju Pharm. Co. v. Apotex Inc., 746 F.3d 1344, 1352 (Fed. Cir. 2014) (citing Ariad as providing the test for determining new matter under 35 U.S.C. § 132(a)). We perform “an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art,” to determine whether it demonstrates possession of the claimed subject matter. Ariad, 598 F.3d at 1351.” slip op. at 11
- Skill levelSkill level board ownDecided for petitioner
“2. Level of Ordinary Skill in the Art Petitioner contends a person having ordinary skill in the art pertaining to the ’308 patent would have either: “(1) a Bachelor of Science in Mechanical Engineering, Electrical Engineering, Petroleum Engineering or an equivalent field as well as at least 2 years of academic or industry experience in the oil and gas industry, including well drilling, completion, or production”; or (2) “at least four years of industry experience in the oil and gas industry, including well drilling, completion, or production.” Pet. 24–25. Patent Owner utilizes the same formulation of ordinary skill. See Mot. 8. The parties’ agreed-upon formulation of ordinary skill is consistent with the level of skill reflected in the ’308 patent and the prior art of record. We therefore apply it in the present Decision.” slip op. at 11
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“the ’085 Application into demonstrating possession of the numerical pressure ranges recited in proposed substitute claims 12 and 16 is unavailing, for several reasons. First, as seen from the deposition testimony quoted above, Patent Owner’s own witnesses cannot agree on a numerical definition of “high pressure.” Mr. Marscher says high pressure is between 5,000 psi and 15,000 psi (see Ex. 1059, 111:1–112:3), whereas Mr. Schaaf says high pressure is between 8,000 psi and 12,000 psi and specifically disagrees with Mr. Marscher’s testimony that high pressure can be below 8,000 psi (see Ex. 1061, 43:6–44:13). Thus, the testimony of Patent Owner’s own witnesses is contrary to Patent Owner’s position that a person of ordinary skill in the art would have understood that the ’085 Application’s disclosure of “high pressure” pumping demonstrates possession of a specific numerical range of pumping pressures. Second, neither Mr. Marscher nor Mr. Schaaf cites any objective evidence to support their respective notions of what “high pressure” might be, in the context of hydraulic fracturing. For example, neither cites to any published industry standards to support their respective opinions. This lack of objective evidentiary support weakens the persuasiveness of both witness’s testimony on this issue, especially because their opinions conflict with each other. We are instead persuaded by the testimony of Petitioner’s witness Dr. Durham that “[t]he mere disclosure of ‘high pressure’ in the [’085 Application] specification[] . . . does not allow a [person of ordinary skill in the art] to recognize the ranges of pressures in” proposed substitute claims 12 and 16. Ex. 1079 ¶ 24. Further according to Dr. Durham: “What might be ‘high’ pressure according to one POSITA may not be ‘high’ pressure to another POSITA” and “[t]here is no universally accepted definition of ‘high pressure,’” as demonstrated by the testimony of Mr. Marscher and Mr. Schaaf and the lack of objective evidentiary support for their respective opinions. Id.” slip op. at 18
- ExcludeNot reached
“V. PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE Patent Owner’s Motion to Exclude Evidence seeks to exclude evidence relating to Petitioner’s reliance on the S&S Proposal6 as a prior art 6 Stewart & Stevenson, Electric Fracturing Pump: Commercial Proposal, Quotation No., Rev. 4 (July 31, 2012) (Ex. 1056). reference to challenge the patentability of proposed substitute claims 11–22 under 35 U.S.C. § 103. See Papers 57 and 58 (moving to exclude Exs. 1071–1073). As discussed above, we do not reach these grounds of unpatentability, so we do not need to rule on the Motion to Exclude.” slip op. at 23
NonePatents in suitUS 10,337,308 - PTAB · Jan 4, 2023 · IPR2021-01032 · APJ George R Hoskins · IPR · Final written decision
The Board canceled original claims 1–14 and 17–21, denied substitute claims 22–40 for adding new matter, and did not reach the unpatentability grounds.
RulingsFinal written decision- 112 supportMotion to amend, deniedDenied
“Upon review of the foregoing, we agree with Petitioner’s position that the numerical pressure ranges recited in proposed substitute claims 22, 31, and 38 each introduce new matter into the ’689 Application. We have reviewed the ’689 Application disclosures cited by Patent Owner. See Ex. 1005, 19–40 (¶¶ 5, 7, 10, 11, 16–18, 20, 25–28, 31, 33, 35, Abstract, Figs. 1–2). These disclosures pertinently demonstrate possession only of “a system for hydraulically fracturing an underground formation” that is “configured to pump fluid into the wellbore at high pressure so that the fluid passes from the wellbore into the formation, and fractures the formation.” Ex. 1005, 22 (¶ 5) (emphases added); see also id. at 22–23 (¶ 7) (“pumping the hydraulic fracturing fluid at high pressure to crack the formation” (emphasis added)); id. at 24 (¶ 11) (“pumping fracturing fluid into the well with an electrically powered pump at a high pressure so that the fracturing fluid enters and cracks the formation” (emphasis added)); id. at 32–33 (¶ 33) (“The fracturing fluid can be pumped into the wellbore at a high enough pressure that the fracturing fluid cracks the formation, and enters into the cracks.” (emphasis added)). Thus, the ’689 Application demonstrates possession of pumping fluid at a “high pressure” to fracture an underground formation, but does not specify any particular numerical ranges of pressures that might correspond to the “high pressure,” including the three ranges specified in proposed substitute claims 22, 31, and 38. See, e.g., Tr. 44:11– 22.” slip op. at 18
- ExcludeNot reached
“V. PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE Patent Owner’s Motion to Exclude Evidence seeks to exclude evidence relating to Petitioner’s reliance on the S&S Proposal7 as a prior art reference to challenge the patentability of proposed substitute claims 22–40 under 35 U.S.C. § 103. See Papers 58 and 59 (moving to exclude Exs. 1071–1073). As discussed above, we do not reach these grounds of unpatentability, so we do not need to rule on the Motion to Exclude.” slip op. at 25
- Skill levelSkill level petitioner adoptedDecided for petitioner
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
NonePatents in suitUS 9,410,410
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.