- Dynamic Air Inc. v. M-I Drilling Fluids UK Ltd.Some claims unpatentablePTAB · May 23, 2017 · IPR2016-00264 · APJ William V Saindon · IPR · Final written decision
Claims 1–10 and 12–30 are unpatentable as obvious over the Dietzen-led combination; claim 11 was not shown unpatentable because Toth did not establish the ISO-container limitation.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“1. “adapted to” This term appears in claims 11 and 18–20. Petitioner proposes “adapted to” means “capable of.” Pet. 9. We agree, insofar as these limitations require structure to have qualities or features allowing it to meet the claim language. For example, claim 18 would require a vessel that actually can “withstand a pressure of about 4 bar to about 8 bar.” In other words, the “adapted to” language distinguishes from those structures that are not physically capable of meeting the limitation. Patent Owner argues that Petitioner’s construction is overly broad. PO Resp. 17–19. Reviewing Patent Owner’s arguments, however, is not clear to us what Patent Owner disputes to be the effective difference. We determine that no explicit construction of “adapted to” is necessary.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Patent Owner that Petitioner’s initial construction, now abandoned, was too broad. Specifically, Petitioner’s abandoned construction did not account for the fact that the mixture comes from a particular origin (drilling of an oil well) and that the “some resistance to flow” aspect was also too broad given the particular materials involved. However, the aspect of Patent Owner’s proposed construction that would require a gravity test is not supported by the ’217 patent. Instead, we adopt a construction that is essentially a combination of Petitioner’s new claim construction (see Pet. Reply 10) and Patent Owner’s claim construction, for the reasons below. The ’217 patent does not describe drill cuttings or paste with any reference to flow in relation to gravity. The ’217 patent describes the material conveyed therein in several different ways, but it is always referring to the same material. The labels that the ’217 patent gives to this material are: “thick heavy paste” (Ex. 1001, 1:6, 22–23, 28, 32, 42–43, 2:43), “drill cuttings” (id. at 1:28, 43; see also id. at 1:21 (simply, “cuttings”)), “non-free flowing paste” (id. at 1:38, 42), and “thick and/or heavy paste or clay like material” (id. at 1:42–43). These labels are often equated to one another in the ’217 patent: “cuttings . . . in the form of a very thick heavy paste[]” (id. at 1:21–23), “thick heavy pastes . . . e.g. drill cuttings” (id. at 1:28), “non- free flowing paste[] . . . e.g. oil rig drill cuttings” (id. at 1:42–43). As such, the ’217 patent considers drill cuttings to be a thick heavy paste as well as a non-free flowing paste. Thus, using the terms from the ’217 patent, drill cuttings are a non-free flowing paste. We do not adopt Patent Owner’s proposed construction, which involves adding some sort of gravity test to the material to determine whether or not it is a non-free flowing paste. According to ’217 patent, the non-free flowing paste is drill cutting material, which in turn is a screened material generated by the drilling of an oil well. Ex. 1001, 1:19–23,15 28, 42–43. The ’217 patent, therefore, defines the relevant “paste” material, e.g., drill cuttings, by the way in which it arrives at the pressure vessel (screening), consistent with our construction in IPR2016-00256, and not by any particular gravity test. See Ex. 2055 ¶ 10 (Patent Owner’s declarant, Mr. Lauder, testifying that “[t]he material coming out of the shaker house is referred to as drill cuttings and often has the consistency of a thick, heavy paste, or as claimed in the ‘217 patent, non-free flowing, heterogeneous, multicomponent, earth extracted paste”). Thus, we are not persuaded that the claim requires a gravity test, as none is mentioned or alluded to in the specification, and is not needed given the way that the relevant material is described in the specification.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Although both parties agree that the level of ordinary skill involves a bachelor’s degree and familiarity with similar subject matter, Petitioner proposes experience in the design of systems, whereas Patent Owner merely proposes experience with the systems themselves. We agree with Petitioner that a person of ordinary skill in the art designs devices, rather than is merely familiar with them (e.g., an operator or a manufacturer), as proposed by Patent Owner. See Ex. 1031 ¶ 28; Ex. 1002, 2:25–27 (indicating that those skilled in the art would understand “that the critical cone angle will vary depending upon the material being conveyed”). Accordingly, we adopt Petitioner’s proposed level of ordinary skill; though we note this difference would not affect our analysis.” slip op. at 15
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“testimony of Petitioner’s expert, Dr. Carson, taken out of context, and also on the unsupported testimony of its expert, Dr. Brown. PO Resp. 12–15. As to the testimony of Dr. Carson, Patent Owner points out that one of Dr. Carson’s colleagues once used the term “free-flowing” in a paper. Id. at 12 (citing Ex. 1016). During cross examination relating to this paper (which was on powders, not pastes), Dr. Carson agreed that “it is possible” “to define non-free flowing in terms of gravity.” Ex. 2021, 88:17–21.16 Even if it is possible to define “non-free flowing” in terms of gravity in some context, that does not mean it is possible to define it in all contexts, let alone this particular context.17 Or, if possible, that such a definition is reasonable. Thus, we do not find the testimony of Dr. Carson to support Patent Owner’s requirement for a gravity test. As to Dr. Brown, Patent Owner relies on his testimony that a person of ordinary skill in the art “would understand that these pastes would not generally flow as a result of gravity.” PO Resp. 13 (citing Ex. 2060 ¶ 83). Dr. Brown’s cited testimony is as follows: 16 Notably, Dr. Carson does not testify with respect to pastes, drill cuttings, or anything related to the claimed material at hand. Patent Owner distinguishes pastes and drill cuttings from powders when arguing that the prior art powder-conveying pressure vessels could not be expected to convey pastes or drill cuttings. See, e.g., PO Resp. 27 (arguing that “granular solids are distinct from the non-free flowing . . . paste . . . of the claims”). 17 Exhibit 1016 is directed to the flowability of powder, not pastes, and states that “the term free flowing, so commonly used, becomes meaningless unless the specific equipment handling the material is specified.” Ex. 1016, 62. To the extent this teaching applies to pastes, what it shows is that what is “free flowing” on one piece of equipment may not be so on another, and supports Petitioner’s argument that adding a gravity test would render the term indefinite. Pet. Reply 12. The ’217 Patent goes further to establish that “thick heavy paste material[s]” are different from “relatively free flowing material” or “small batches of wet sticky materials.” Ex. 1002 at 1:35-36. Because the material conveyed in the ’217 Patent is contrasted with “relatively free flowing material,” the ’217 Patent’s use of the term “non-free flowing” is consistent with what a person of ordinary skill in the art would understand it to mean, and that is “does not generally flow freely by gravitational force.” Ex. 2060 ¶ 83. Dr. Brown’s testimony does not provide any credible evidence in support of his conclusion that the ’217 patent’s contrast between “thick heavy paste” and “free flowing material” has something to do with gravity. Similarly, his testimony that “‘non-free flowing’ is used to describe a material that ‘does not generally flow freely by gravitational force’” lacks supporting evidence or explanation. Id. ¶ 80; 37 C.F.R. § 42.65(a). We do not find his testimony persuasive.” slip op. at 12
Patent outcomesUS 6,709,217 mixedClaim construction§ 103 obviousnessPatents in suitUS 6,709,217 - Dynamic Air Inc. v. M-I Drilling Fluids UK Ltd.Some claims unpatentablePTAB · May 23, 2017 · IPR2016-00263 · APJ William V Saindon · IPR · Final written decision
Claims 1–10 and 12–49 are unpatentable as obvious over the Dietzen-led grounds; claim 11 was not shown unpatentable.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“1. “adapted to” This term appears in claims 11, 17–19, and 30–49. Petitioner proposes “adapted to” means “capable of.” Pet. ’262, 10; Pet. ’263, 10. We agree, insofar as these limitations require structure to have qualities or features allowing it to meet the claim language. For example, claim 17 would require a vessel that actually can “withstand a pressure of about 4 bar to about 8 bar.” In other words, the “adapted to” language distinguishes from those structures that are not physically capable of meeting the limitation. Patent Owner argues that Petitioner’s construction is overly broad. PO Resp. ’262, 17–19; PO Resp. ’263, 16–19. Reviewing Patent Owner’s arguments, however, is not clear to us what Patent Owner disputes to be the effective difference. We determine that no explicit construction of “adapted to” is necessary.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITADecided for patent owner
“Reviewing the arguments and evidence before us, we agree with Patent Owner that Petitioner’s initial construction, now abandoned, was too broad. Specifically, Petitioner’s abandoned construction did not account for the fact that the mixture comes from a particular origin (drilling of an oil well) and that the “some resistance to flow” aspect was also too broad given the particular materials involved. However, Patent Owner’s proposed construction, which would require a gravity test, is not supported by the ’062 patent. Instead, we effectively adopt a combination of Patent Owner’s proposed construction and Petitioner’s, for the reasons explained below.” slip op. at 12
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Term construed patent owner constructionDecided for patent owner
“3. “means for transporting” This term appears in claims 39, 40, 46, and 47. Petitioner proposes the term is a means-plus-function limitation having a function of “transporting [the] pressure vessel to a discharge station” and corresponding structure of “a ship, crane, and road vehicle.” Pet. ’263, 12 (citing Ex. 1004, Fig. 1, Fig. 6, 5:8–11, 5:59–63, 6:17–31). Patent Owner proposes a similar construction. PO Resp. ’263, 20 (using the term “boat” instead of “ship”). The constructions are effectively identical. Our Decision does not turn on which proposed construction we choose; we adopt the Patent Owner’s proposed construction. 4. “means for transferring” This term appears in claims 44 and 45. Petitioner proposes the term is a means-plus-function limitation having a function of “transferring the nonfree flowing drill cuttings from a second vessel to a third vessel” and corresponding structure of “a conduit, pipe, or flexible hose.” Pet. ’263, 12– 13 (citing Ex. 1004, Fig. 1, Fig. 6, 5:8–11, 5:59–63, 6:17–31). Patent Owner proposes a similar construction, but with more exemplary corresponding structures. PO Resp. ’263, 21 (also including “compressed gas[/air],” “a connector,” and “a hose”). Petitioner’s Reply does not discuss the construction of “means for transferring.” Our Decision does not turn on which proposed construction we choose; we adopt Patent Owner’s proposed construction because it is a slightly broader reasonable interpretation.” slip op. at 18
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner
“The original claims of the ’217 patent were rejected as anticipated by Curtis, which had pulsed-jet aerators in the cone of the pressure vessel. Ex. 2017, 232, 3:7–11, 6:59–64. After a telephone interview, during which the Examiner and Patent Owner “[d]iscussed [a] proposed amendment” (id. at 284), the Examiner proposed an Examiner’s Amendment adding that the conveyance gas was “the sole means for inducing movement [of the material]” (see, e.g., id. at 322). The Examiner set forth the scope of the “sole means” limitation: “heat addition, aerating action (i.e. chopping up of material, applying a screw conveyor, etc.), or the addition of a fluidizing agent are precluded. The conveyance gas is not a fluidizing agent.” Id. Amending the claims to include the “sole means” limitation, along with the Examiner’s accompanying explanation of its scope, are clearly and unmistakably the reasons for issuance of the ’217 patent. See Edwards Lifesciences LLC v. Cook Inc., 582 F.3d 1322, 1327 (Fed. Cir. 2009) (prosecution history “provides evidence of how the [PTO] and the inventor understood the patent” (quoting Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005) (en banc) (alteration in original)).” slip op. at 19
Patent outcomesUS 7,186,062 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 7,186,062 - Dynamic Air Inc. v. M-I Drilling Fluids UK Ltd.Some claims unpatentablePTAB · May 23, 2017 · IPR2016-00262 · APJ William V Saindon · IPR · Final written decision
Claims 1–10 and 12–49 are unpatentable as obvious; claim 11 is not unpatentable because the obviousness grounds did not establish its ISO-frame limitation.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“1. “adapted to” This term appears in claims 11, 17–19, and 30–49. Petitioner proposes “adapted to” means “capable of.” Pet. ’262, 10; Pet. ’263, 10. We agree, insofar as these limitations require structure to have qualities or features allowing it to meet the claim language. For example, claim 17 would require a vessel that actually can “withstand a pressure of about 4 bar to about 8 bar.” In other words, the “adapted to” language distinguishes from those structures that are not physically capable of meeting the limitation. Patent Owner argues that Petitioner’s construction is overly broad. PO Resp. ’262, 17–19; PO Resp. ’263, 16–19. Reviewing Patent Owner’s arguments, however, is not clear to us what Patent Owner disputes to be the effective difference. We determine that no explicit construction of “adapted to” is necessary.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Reviewing the arguments and evidence before us, we agree with Patent Owner that Petitioner’s initial construction, now abandoned, was too broad. Specifically, Petitioner’s abandoned construction did not account for the fact that the mixture comes from a particular origin (drilling of an oil well) and that the “some resistance to flow” aspect was also too broad given the particular materials involved. However, Patent Owner’s proposed construction, which would require a gravity test, is not supported by the ’062 patent. Instead, we effectively adopt a combination of Patent Owner’s proposed construction and Petitioner’s, for the reasons explained below. The ’062 patent describes the material conveyed therein in several different ways, but it is always referring to the same material. The labels that the ’062 patent gives to this material are: “thick heavy paste” (Ex. 1004, 1:29, 1:46–47, 1:64, 2:1, 3:11), “drill cuttings” (id. at 1:65, 2:12; see also id. at 1:45 (simply, “cuttings”)), “non-free flowing paste” (id. at 2:7–8, 11), and “thick and/or heavy paste or clay like material” (id. at 2:11–12). These labels are often equated to one another: “cuttings . . . in the form of a very thick heavy paste” (id. at 1:45–47), “thick heavy paste . . . e.g. drill cuttings” (id. at 1:64–65), “non-free flowing paste . . . e.g. oil rig drill cuttings” (id. at 2:11–12). As such, the ’062 patent considers screened drill cuttings to be a thick heavy paste as well as a non-free flowing paste and, thus, considers a thick heavy paste to be a non-free flowing paste. The ’062 patent does not discuss “non-free flowing drill cuttings,” or relate it to gravity. However, given that the ’062 patent considers “drill cuttings” to be “non-free flowing paste,” the “drill cuttings” are already “non-free flowing” according to the ’062 patent. Thus, when the claims add “non-free flowing” to “drill cuttings,” we find that they do not provide a further limitation, but rather just provide an extra description that a person of ordinary skill in the art would already understand is present if they were to read the specification. The ’062 patent is simply providing many ways to describe the same thing. There is no persuasive evidence that a person of ordinary skill in the art would understand “non-free flowing” to otherwise be a term of art. Indeed, Patent Owner’s expert, Dr. Brown, points to the exact same physical material samples to provide examples of “drill cuttings,” “non-free flowing paste,” and “non-free flowing drill cuttings.” Compare Ex. 2014 ¶ 53 with Ex. 2056 ¶ 53 with Ex. 2059 ¶ 53 with Ex. 2060 ¶ 53 (each using the same picture to describe the material).18” slip op. at 12
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Other
“3. “means for transporting” This term appears in claims 39, 40, 46, and 47. Petitioner proposes the term is a means-plus-function limitation having a function of “transporting [the] pressure vessel to a discharge station” and corresponding structure of “a ship, crane, and road vehicle.” Pet. ’263, 12 (citing Ex. 1004, Fig. 1, Fig. 6, 5:8–11, 5:59–63, 6:17–31). Patent Owner proposes a similar construction. PO Resp. ’263, 20 (using the term “boat” instead of “ship”). The constructions are effectively identical. Our Decision does not turn on which proposed construction we choose; we adopt the Patent Owner’s proposed construction. 4. “means for transferring” This term appears in claims 44 and 45. Petitioner proposes the term is a means-plus-function limitation having a function of “transferring the nonfree flowing drill cuttings from a second vessel to a third vessel” and corresponding structure of “a conduit, pipe, or flexible hose.” Pet. ’263, 12– 13 (citing Ex. 1004, Fig. 1, Fig. 6, 5:8–11, 5:59–63, 6:17–31). Patent Owner proposes a similar construction, but with more exemplary corresponding structures. PO Resp. ’263, 21 (also including “compressed gas[/air],” “a connector,” and “a hose”). Petitioner’s Reply does not discuss the construction of “means for transferring.” Our Decision does not turn on which proposed construction we choose; we adopt Patent Owner’s proposed construction because it is a slightly broader reasonable interpretation.” slip op. at 18
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner
“The original claims of the ’217 patent were rejected as anticipated by Curtis, which had pulsed-jet aerators in the cone of the pressure vessel. Ex. 2017, 232, 3:7–11, 6:59–64. After a telephone interview, during which the Examiner and Patent Owner “[d]iscussed [a] proposed amendment” (id. at 284), the Examiner proposed an Examiner’s Amendment adding that the conveyance gas was “the sole means for inducing movement [of the material]” (see, e.g., id. at 322). The Examiner set forth the scope of the “sole means” limitation: “heat addition, aerating action (i.e. chopping up of material, applying a screw conveyor, etc.), or the addition of a fluidizing agent are precluded. The conveyance gas is not a fluidizing agent.” Id. Amending the claims to include the “sole means” limitation, along with the Examiner’s accompanying explanation of its scope, are clearly and unmistakably the reasons for issuance of the ’217 patent. See Edwards Lifesciences LLC v. Cook Inc., 582 F.3d 1322, 1327 (Fed. Cir. 2009) (prosecution history “provides evidence of how the [PTO] and the inventor understood the patent” (quoting Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005) (en banc) (alteration in original)). The application that was issued as the ’062 patent is a direct continuation of the application that issued as the ’217 patent. The claims in the ’062 patent application did not have the “sole means” limitation required by the Examiner for allowance of the ’217 patent. Instead, the claims included the “without employing non-pneumatic means” limitation. The ’062 patent application received an obviousness-type double patenting rejection in the first Office Action, where the Examiner stated “[a]lthough the [claims in the ’217 patent and the present application] are not identical, they are not patently distinct from each other because the instant apparatus claim(s) are too close in scope with the patented method claim(s).” Ex. 2019, 629. Patent Owner did not traverse that rejection and filed a terminal disclaimer; the claims were thereafter allowed. Our understanding of the prosecution history of the ’062 patent is that the Examiner did not consider the “without employing” limitation to be meaningfully broader than the “sole means” limitation, or the Examiner would have re-instated the Curtis rejection. Instead, the Examiner stated the claims were “not patently distinct.” Ex. 2019, 629. In other words, the Examiner considered the claims in the ’062 patent to also have “precluded” “heat addition, aerating action (i.e. chopping up of material, applying a screw conveyor, etc.), or the addition of a fluidizing agent.” Ex. 2017, 322. Patent Owner acquiesced to the Examiner’s statement that the claims are not patentably distinct by not traversing the double patenting rejection and filing a terminal disclaimer to secure allowance of the claims. Ex. 2019, 651 (“please find enclosed a TERMINAL DISCLAIMER in response to the double patenting rejection”). See Biogen Idec, Inc. v. GlaxoSmithKline LLC, 713 F.3d 1090, 1097 n.6 (Fed. Cir. 2013) (disclaimer arose where the applicants “let[ ] stand an examiner’s narrow characterization of a claim term” and “adopt[ed] ... that characterization to overcome the examiner’s ... rejection”); TorPharm Inc. v. Ranbaxy Pharm., Inc., 336 F.3d 1322, 1330 (Fed.Cir.2003) (“Whether the patentee chooses to dispute the examiner’s view of matters is relevant to claim interpretation, for there a court may need to ascertain exactly what subject matter was actually examined and allowed by the PTO.”). Thus, the prosecution history of the ’062 patent simply continues the prosecution history of the ’217 patent, and leaves intact the Examiner’s and Patent Owner’s understanding regarding the scope of the amendment responsible for allowance. Accordingly, we construe the “without employing” limitation the same as the “sole means” limitation of the ’217 patent: heat addition, aerating action (i.e. chopping up of material, applying a screw conveyor, etc.), or the addition of a fluidizing agent are precluded. The conveyance gas is not a fluidizing agent.” slip op. at 19
Patent outcomesUS 7,186,062 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 7,186,062 - Dynamic Air Inc. v. M-I Drilling Fluids UK Ltd.All claims unpatentablePTAB · May 23, 2017 · IPR2016-00260 · APJ Richard E Rice · IPR · Final written decision
Claims 1–20 are unpatentable as obvious over Dietzen I, Dietzen II, Ciaffone, Laster, and Pneumatic Conveying.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We do not agree with Patent Owner that Petitioner’s definition of the person of ordinary skill in the art is unreasonably high, and we adopt Petitioner’s definition for purposes of our Final Written Decision. While Petitioner’s definition requires five years of design experience at the bachelor’s degree level of education, Patent Owner’s definition does not require any design experience at all. We agree with Petitioner that a person of ordinary skill in the art designs devices, and, thus, actively monitors the relevant technical literature, rather than is merely familiar with devices (e.g., an operator or a manufacturer), as proposed by Patent Owner. See Ex. 1032 ¶ 28; Ex. 1003, 2:59–61 (indicating that those skilled in the art would understand “that the critical cone angle will vary depending upon the material being conveyed”). Accordingly, we adopt Petitioner’s proposed level of ordinary skill.” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“1. Claim Preambles The preambles of independent claims 1 and 12 recite, respectively, “[a]n apparatus adapted for use on an oil well drilling rig for conveying nonfree flowing drill cuttings” and “[a] system for conveying non-free flowing oil well drill cuttings.” In the Institution Decision, we determined preliminarily that the preambles are limiting. Inst. Dec. 8. As neither party proposes any change to our interpretation, and our review of the full record developed at trial does not indicate that any change is necessary, we maintain that interpretation.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITADecided for patent owner
“We agree with aspects of both parties’ proposed claim constructions. We agree with Petitioner that the term “non-free flowing drill cuttings” refers to the resultant mixture of cuttings and drilling mud after screening (which we understand to include similar processing to separate drill cuttings from drilling mud, such as centrifuging). See Ex. 1003, 1:42–46, 62–64; 6:15–16; cf. Ex. 2053 ¶10; Ex. 2058 ¶ 86. We agree with Patent Owner that the source of the resultant mixture is the drilling of an oil well, and that the mixture includes earth (drill cuttings) and drilling fluid or oil.12 See Ex. 1003, 1:31–46; Ex. 2058 ¶¶ 85–88. We do not agree with Patent Owner’s proposal to construe “non-free flowing drill cuttings” as drill cuttings that do not generally flow freely by gravitational force. There is insufficient support in the Specification for that proposal. The Specification does not distinguish between different types of screened drill cuttings, for example, screened drill cuttings that generally flow freely by gravitational force and those that do not. While the Specification describes screened drill cuttings in various ways, it is always referring to the same material. For example, the Specification refers explicitly to “thick, heavy pastes which are normally difficult to move and handle” (Ex. 1003, 1:28–29), “[screened] cuttings . . . transported ashore in the form of a very thick heavy paste” (id. at 1:42–46), “thick heavy paste material (e.g., drill cuttings)” (id. at 1:63–64), “a thick heavy paste” (id. at 1:67), “a non-free flowing paste” (id. at 2:6–7), “[t]he non-free flowing 12 See Ex 1003, 1:35–38 (calling drilling fluid a special type of oil used as a lubricant”). paste may be a thick and/or heavy paste or clay like material, e.g. oil rig drill cuttings” (id. at 2:10–11), and “a thick heavy paste” (id. at 3:9–10). As such, the Specification characterizes screened drill cuttings as a thick heavy paste as well as a non-free flowing paste and, thus, considers a thick heavy paste to be a non-free flowing paste. We determine that the broadest reasonable interpretation consistent with the Specification of “non-free flowing drill cuttings” is “screened drill cuttings, i.e., screened material, generated by the drilling of an oil well, including a mixture of earth and drilling fluid or oil.”” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Conventional terms ('about', 'substantially', 'a'/'an', 'configured to')Term construed board ownDecided for patent owner
“We disagree. The disclosure in the Specification that the pressure vessel for conveying non-free flowing drill cuttings may be “similar to” the Clyde vessel indicates that the vessels have characteristics in common, but does not indicate clearly that the Clyde vessel could be used, without modification, to convey non-free flowing drill cuttings. For the reasons given above and in the Institution Decision, we maintain our interpretation that “adapted [for/to]” as used in the claims means “made [for/to]” or “designed [for/to].” See Inst. Dec. 9.” slip op. at 13
Patent outcomesUS 7,033,124 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,033,124 - Dynamic Air Inc. v. M-I Drilling Fluids UK Ltd.Some claims unpatentablePTAB · May 23, 2017 · IPR2016-00259 · APJ Richard E Rice · IPR · Final written decision
Claims 1, 2, and 4–9 are unpatentable as obvious over Dietzen I and II, Ciaffone, Laster, Pneumatic Conveying, and Toth; claim 3 was not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We do not agree with Patent Owner that Petitioner’s definition of the person of ordinary skill in the art is unreasonably high, and we adopt Petitioner’s definition for purposes of our Final Written Decision. While Petitioner’s definition requires five years of design experience at the bachelor’s degree level of education, Patent Owner’s definition does not require any design experience at all. We agree with Petitioner that a person of ordinary skill in the art designs devices, and, thus, actively monitors the relevant technical literature, rather than is merely familiar with devices (e.g., an operator or a manufacturer), as proposed by Patent Owner. See Ex. 1034 ¶ 28; Ex. 1005, 2:62–64 (indicating that those skilled in the art would understand “that the critical cone angle will vary depending upon the material being conveyed”). Accordingly, we adopt Petitioner’s proposed level of ordinary skill.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“We do not agree with Patent Owner’s proposal to construe “non-free flowing drill cuttings” as drill cuttings that do not generally flow freely by gravitational force. There is insufficient support in the Specification for that proposal. The Specification does not distinguish between different types of screened drill cuttings, for example, screened drill cuttings that generally flow freely by gravitational force and those that do not. While the Specification describes screened drill cuttings in various ways, it is always referring to the same material. For example, the Specification refers explicitly to “thick, heavy pastes which are normally difficult to move and 12 See Ex 1005, 1:37–39 (calling drilling fluid a special type of oil used as a lubricant.) handle” (Ex. 1005, 1:31–32), “[screened] cuttings . . . transported ashore in the form of a very thick heavy paste” (id. at 1:44–48), “thick heavy paste material (e.g., drill cuttings)” (id. at 1:66–67), “a thick heavy paste” (id. at 2:3), “a non-free flowing paste” (id. at 2:9–10), “[t]he non-free flowing paste may be a thick and/or heavy paste or clay like material, e.g. oil rig drill cuttings” (id. at 2:13–14), and “a thick heavy paste” (id. at 3:10–11). As such, the Specification characterizes screened drill cuttings as a thick heavy paste as well as a non-free flowing paste and, thus, considers a thick heavy paste to be a non-free flowing paste. We determine that the broadest reasonable interpretation consistent with the Specification of “non-free flowing drill cuttings” is “screened drill cuttings, i.e., screened material, generated by the drilling of an oil well, including a mixture of earth and drilling fluid or oil.”” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Patent Owner’s arguments do not respond adequately to Petitioner’s persuasive obviousness rationale that a POSITA would have substituted a positive-pressure conveyance system in place of the negative-pressure conveyance system of Dietzen I and II because negative pressure systems are generally limited to shorter distances and lower material volumes than positive systems. Further, Patent Owner’s arguments do not address sufficiently Ciaffone’s teaching that a positive-pressure vessel with a conical bottom section can be used to convey materials without the need for bins, hoppers, hydraulic rams, screw feeders, conveyor belts, and the like. See Ex. 1006, 1:70–2:6. As explained by Petitioner, Dietzen II uses an auger to augment use of negative pressure for moving settled materials horizontally from the bottom of a vessel. Pet. Reply 15; Ex. 2021 ¶¶ 154:6–155:5. In contrast with Dietzen II’s relatively low-pressure vacuum system, a positive- pressure system such as taught by Ciaffone, with an operating pressure of up to 6.89 bar, blows materials out of the conical bottom section of the vessel. See supra Section II.C.1.b. Patent Owner further argues that a “POSITA would have discounted positive pressure given th[at] non-free flowing drill cuttings cannot be fragmented.” PO Resp. 22 (citing Ex. 2057 ¶¶ 44, 150). We find this argument unpersuasive because Ciaffone’s blow vessel does not require fragmentation of the material to be conveyed. Rather, Ciaffone teaches compaction of the material in a tightly knit unit that can be acted upon by the full force of the pressurized air, in contrast with dispersion of the waste such that air is diffused among the separated particles resulting in diminution in the applied air pressure conveying the total charge. Ex. 1006, 3:11–19. Further, Pneumatic Conveying teaches that “small capacity blow vessels are designed on the basis of conveying material as a series of discrete plugs rather than as a continuous stream.” Ex. 1009, 282, Fig. 7.32. Pneumatic Conveying further explains: “As such, the capacity of the vessel is selected such that on discharge a plug is formed which is just long enough to prevent blocking [of the conveying line].” Id. Pneumatic Conveying discloses that “[i]f the material to be conveyed is unusually cohesive, a plug forming system will yield good results” and, “[a]s the plugs are relatively impermeable, they remain separated even over long conveying distances.” Id. at 346. Based on these teachings, a POSITA would not have understood that it was necessary to fragment non-free flowing drill cuttings, contrary to Patent Owner’s argument. For the reasons given, Petitioner has provided a sufficient reason with rational underpinning for combining Dietzen I and II, Ciaffone, Laster, and Pneumatic Conveying. See KSR, 550 U.S. at 418 (“‘[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’”) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).” slip op. at 23
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Pneumatic Conveying does not provide information on “anything close to ‘non-free flowing [oil well drill/drill] cuttings’ or a ‘thick, heavy paste,’” and, thus, a POSITA “would not look to designs presented in Pneumatic Conveying.” Ex. 2057 ¶ 185. We give little weight to this testimony because, as discussed above, we credit Dr. Carson’s testimony that Pneumatic Conveying identifies hundreds of materials, including paste and cohesive material. See supra Section II.C.1.e(2). We also credit Dr. Carson’s testimony that Pneumatic Conveying explains that pressure vessels increasingly were being used to convey materials with “bad” flow properties, and that “Pneumatic Conveying would have also shown those of ordinary skill in the art that pneumatic conveying with a positive pressure system would be an effective way to transport non-free flowing drill cuttings, including in the form of a paste or sludge.” Ex. 1034 ¶ 124. Dr. Brown also testifies that the information in Pneumatic Conveying with respect to mass flow concerns granular solids. Ex. 2057 ¶ 185 (citing Ex. 1009, 411). He further testifies that because “the flow behavior of nonfree flowing [oil well drill/drill] cuttings is distinct from that of granular solids . . . a person of ordinary skill in the art would gain no insight in designing a vessel for paste to produce mass flow from a vessel designed to contain granular solids.” Id. We give little weight to this testimony because Dr. Brown does not address all of the information in Pneumatic Conveying that is relevant to mass flow, as discussed further below. In contrast with Dr. Brown, Dr. Carson testifies: “As explained in Pneumatic Conveying, those of ordinary skill in the art knew that the cone angle is an important variable to adjust in order to achieve mass flow.” Ex. 1034 ¶ 144 (citing Ex. 1009, 280–282, 410–420; Ex. 1046, 68–74, 147– 151). Consistent with Dr. Carson’s testimony, the ’018 Patent discloses that “[i]t is well known that the critical cone angle [to achieve mass flow] will vary depending upon the material being conveyed [and] as such would be well understood by those skilled in the art.” Ex. 1005, 2:61–63. We credit the testimony of Dr. Carson over the conflicting testimony of Dr. Brown because Dr. Carson’s testimony addresses the full Pneumatic Conveying disclosure, and is consistent with that disclosure, while Dr. Brown’s testimony does not address the full Pneumatic Conveying disclosure, and is not completely consistent with that disclosure. For example, under the subheading “Factors influencing blow vessel performance,” Pneumatic Conveying teaches that “[t]he increased use of blow vessels for feeding materials with ‘bad’ flow properties necessitates the selection of a suitable cone angle.” Ex. 1009, 279. Pneumatic Conveying further explains that “[v]essels with incorrectly designed cone angles will result in either ‘ratholing’ or ‘bridging’ problems.” Id. at 279, Fig. 7.30. These teachings of Pneumatic Conveying are not limited to granular solids, contrary to Dr. Brown’s testimony.” slip op. at 32
Patent outcomesUS 7,544,018 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,544,018 - Dynamic Air Inc. v. M-I Drilling Fluids UK Ltd.All claims unpatentablePTAB · May 23, 2017 · IPR2016-00256 · APJ William V Saindon · IPR · Final written decision
Claims 1–9 are unpatentable under § 103 over Dietzen I, Ciaffone, Laster, Dietzen II, and Pneumatic Conveying; the Board did not reach the other ground.
RulingsFinal written decision- Expert testimonyOther
“person of ordinary skill in the art would have had a reason to look to positive pressure conveyance vessels to replace the negative pressure conveyance vessels in Dietzen I and II. We have reviewed Patent Owner’s arguments to the contrary, but do not find them persuasive. See PO Resp. 43–49. Patent Owner argues that “Petitioner fails to provide any motivation as to why the POSITA would consider pneumatic conveyance nor why the POSITA would have a reasonable expectation of success.” Id. at 45. We disagree, because Petitioner has shown that a person of ordinary skill in the art would recognize that positive pressure systems are stronger than negative pressure systems. Ex. 1030 ¶ 131; Ex. 1015, 27. If one is conveying difficult to handle materials, it makes sense to consider stronger conveying systems. Indeed, Dietzen II suggests using positive pressure “to assist the flow of cuttings” already in the tubes; the implication is that if the negative pressure is not strong enough, the positive pressure would be. Ex. 1013, 5:14–16. Thus, there is a reason to combine with some rational underpinnings. In addition, Petitioner has shown a reasonable expectation of success. Specifically, Dietzen I and II already convey drill cuttings through tubes using negative pressure. Patent Owner attempts to characterize the auger of Dietzen II as the means for conveying the drill cuttings, but fails to address the fact that there are vacuums that are described as conveying materials through the tubes. We acknowledge that there is an auger, but as shown in Dietzen II, we find the purpose of the auger is to convey the material from the bottom of a horizontal tank to the suction tube, where it is then suctioned along the tube; there is no auger in the tube to convey the material and, in any event, the proposed combination uses a positive pressure vessel and would not incorporate Dietzen II’s auger. As to Dietzen I, there is no auger; the drill cuttings are suctioned from the bottom of a trough into the storage tank where they are left without further transfer. Positive pressure pneumatic conveyance systems are known to convey difficult-to-handle materials. See, e.g., Ex. 1006, 1:18–32 (describing difficult materials to convey), 1:70–75 (“[w]e have now surprisingly found that it is possible to use air pressure to pneumatically convey [such] materials”); Ex. 1008, 21 (“conveying ‘clays . . . coupled with high-moisture contents [that] form a sticky, difficult-to-handle material’”); Ex. 1009, 279 (describing the design parameters of positive pressure vessels used “for feeding materials with ‘bad’ flow properties”); Ex. 1014, 1:11–29 (discussing the difficulty in pumping “thick viscous fluid known as drilling mud”), 2:25–31 (conveying that material with sufficient pressurized air). Given that Dietzen I and Dietzen II convey drill cuttings using their weaker negative pressure system, we are persuaded by Petitioner’s argument that there would be a reasonable expectation of success using a stronger positive pressure system.” slip op. at 25
- Skill levelSkill level petitioner adoptedDecided for petitioner
“along with at least 5 years of experience in the design of systems for the handling of bulk solid and fluid materials, including through the use of pneumatic conveyance.” Pet. 12; see also id. (allowing for fewer years of experience with an advanced degree); Ex. 1030 ¶ 27. Patent Owner proposes a lower level of skill, “at least a bachelor’s degree in mechanical engineering or a similar discipline, at least two years of experience with systems that convey materials, and [knowledge of] the flow and behavior of granular solids, slurries, and pastes.” PO Resp. 4; see also id. (allowing for fewer years of experience with an advanced degree). Although both parties agree that the level of ordinary skill involves a bachelor’s degree and familiarity with similar subject matter, Petitioner proposes experience in the design of systems, whereas Patent Owner merely proposes experience with the systems themselves. We agree with Petitioner that a person of ordinary skill in the art designs devices, rather than is merely familiar with them (e.g., an operator or a manufacturer), as proposed by Patent Owner. See Ex. 1030 ¶ 27; Ex. 1004, 2:57–59 (indicating that those skilled in the art would understand “that the critical cone angle will vary depending upon the material being conveyed”). Accordingly, we adopt Petitioner’s proposed level of ordinary skill.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We agree with Patent Owner that “drill cuttings” would not include mixtures of liquid and earth extracted material that did not come from the drilling of an oil well. In other words, drill cuttings as claimed are limited to material from the drilling of an oil well. A problem with Patent Owner’s proposed construction, however, is that it is missing the “screened” aspect of Petitioner’s proposed construction. From the context of the specification, the ’539 patent considers “drill cuttings” to have been screened. The cuttings from the drilling process are brought up to the rig and then some” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Reviewing Petitioner’s assertions and evidence above, we find that a person of ordinary skill in the art would have had a reason to look to positive pressure conveyance vessels to replace the negative pressure conveyance vessels in Dietzen I and II. We have reviewed Patent Owner’s arguments to the contrary, but do not find them persuasive. See PO Resp. 43–49. Patent Owner argues that “Petitioner fails to provide any motivation as to why the POSITA would consider pneumatic conveyance nor why the POSITA would have a reasonable expectation of success.” Id. at 45. We disagree, because Petitioner has shown that a person of ordinary skill in the art would recognize that positive pressure systems are stronger than negative pressure systems. Ex. 1030 ¶ 131; Ex. 1015, 27. If one is conveying difficult to handle materials, it makes sense to consider stronger conveying systems. Indeed, Dietzen II suggests using positive pressure “to assist the flow of cuttings” already in the tubes; the implication is that if the negative pressure is not strong enough, the positive pressure would be. Ex. 1013, 5:14–16. Thus, there is a reason to combine with some rational underpinnings. In addition, Petitioner has shown a reasonable expectation of success. Specifically, Dietzen I and II already convey drill cuttings through tubes using negative pressure. Patent Owner attempts to characterize the auger of Dietzen II as the means for conveying the drill cuttings, but fails to address the fact that there are vacuums that are described as conveying materials through the tubes. We acknowledge that there is an auger, but as shown in Dietzen II, we find the purpose of the auger is to convey the material from the bottom of a horizontal tank to the suction tube, where it is then suctioned along the tube; there is no auger in the tube to convey the material and, in any event, the proposed combination uses a positive pressure vessel and would not incorporate Dietzen II’s auger. As to Dietzen I, there is no auger; the drill cuttings are suctioned from the bottom of a trough into the storage tank where they are left without further transfer. Positive pressure pneumatic conveyance systems are known to convey difficult-to-handle materials. See, e.g., Ex. 1006, 1:18–32 (describing difficult materials to convey), 1:70–75 (“[w]e have now surprisingly found that it is possible to use air pressure to pneumatically convey [such] materials”); Ex. 1008, 21 (“conveying ‘clays . . . coupled with high-moisture contents [that] form a sticky, difficult-to-handle material’”); Ex. 1009, 279 (describing the design parameters of positive pressure vessels used “for feeding materials with ‘bad’ flow properties”); Ex. 1014, 1:11–29 (discussing the difficulty in pumping “thick viscous fluid known as drilling mud”), 2:25–31 (conveying that material with sufficient pressurized air). Given that Dietzen I and Dietzen II convey drill cuttings using their weaker negative pressure system, we are persuaded by Petitioner’s argument that there would be a reasonable expectation of success using a stronger positive pressure system.” slip op. at 25
Patent outcomesUS 6,702,539 unpatentableClaim construction§ 103 obviousnessPatents in suitUS 6,702,539 - Fisher & Paykel Healthcare Limited v. Resmed LimitedInstitution deniedPTAB · May 3, 2017 · IPR2017-00218 · APJ James J Mayberry · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, upon considering the Petition, Patent Owner Preliminary Response, and supporting evidence, we conclude that the information presented in the Petition fails to establish a reasonable likelihood that Fisher will prevail with respect to at least 1 of the Challenged Claims, and we do not institute inter partes review on any of the Challenged Claims.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“’316 patent pertains is “a bachelor’s degree in mechanical engineering, biomedical engineering, or other similar type of engineering degree, combined with at least two years of experience in the field of masks, respiratory therapy, patient interfaces, or relevant product design experience.” Pet. 13 (citing Ex. 1107 (Decl. of Jason Eaton) ¶ 27). ResMed does not dispute this characterization of the level of ordinary skill at this time. Factual indicators of the level of ordinary skill in the art include “the various prior art approaches employed, the types of problems encountered in the art, the rapidity with which innovations are made, the sophistication of the technology involved, and the educational background of those actively working in the field.” Jacobson Bros., Inc. v. United States, 512 F.2d 1065, 1071 (Ct. Cl. 1975); see also Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1011 (Fed. Cir. 1983) (quoting with approval Jacobson Bros.). We find, based on our review of the record before us, that Fisher’s asserted level of ordinary skill in the art is reasonable and, for the purposes of this Decision, we adopt Fisher’s definition.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“As discussed above in our brief summary of the prosecution history, each of the independent claims challenged in the Petition (claims 33, 38, 41, 46, 75, and 78) includes a variation of the “fixed, non-adjustable position” limitation. This amendment distinguished Matula’s mask system, which includes an adjustment mechanism that adjusts the position of its cushion component relative to its frame. We agree with ResMed that the plain and customary meaning of the “fixed, non-adjustable position” limitations, in view of the Specification and prosecution history, limits the claimed structure to a structure where the engagement between the cushion component and common frame prevents relative movement and adjustment between the cushion component and common frame. We adopt this claim interpretation for this Decision.” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We do not read the “fixed, non-adjustable position” limitations of claims 33, 38, 41, 46, 75, and 78 so broadly. As ResMed correctly argues, at all times, Berthon-Jones’s adjustment wheel 530 is available to adjust mask 510, causing relative motion between cushion/secondary frame 514 and chassis 512. See Prelim. Resp. 28–29. As such, the disclosed structure is not in a “non-adjustable” configuration as required by claims 33, 38, 41, 46, 75, and 78. Finally, ResMed argues that the structure of Berthon-Jones, including an adjustment mechanism, was disclaimed during the prosecution of the application that matured into the ’316 patent. Prelim. Resp. 29–30. As ResMed illustrates in its Preliminary Response, the claims of the ’316 patent were amended to distinguish the Matula reference, with its adjustment mechanism. See id. at 30–31. We agree that ResMed disclaimed a mask system with an adjustment mechanism that adjusts the relative position of a cushion component and a frame. Accordingly, for the reasons above, we find that the Petition fails to establish a reasonable likelihood that Berthon-Jones discloses the subject matter of the “fixed, non-adjustable position” limitations of claims 33, 38, 41, 46, 75, and 78.” slip op. at 20
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,381,316 - Fisher & Paykel Healthcare Limited v. Resmed LimitedInstitution deniedPTAB · Apr 11, 2017 · IPR2017-00065 · APJ Richard E Rice · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 4–8, 10–22, 25, 26, 28–32, 46, 51, 53–56, and 65 were unpatentable over the asserted §103 grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314, an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon considering the Petition and the evidence filed therewith, we determine that Petitioner has not shown a reasonable likelihood that it would prevail with respect to any of challenged claims 1, 4–8, 10–22, 25, 26, 28– 32, 46, 51, 53–56, and 65. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(“PHOSITA”) “would have at least a bachelor’s degree in mechanical engineering, biomedical engineering or other similar type of engineering degree combined with at least two years of experience in the field of masks, respiratory therapy, patient interfaces or relevant product design experience.” Pet. 16–17 (citing Ex. 1312 ¶ 27). Based on our review of the Petition and evidence, including Mr. Eaton’s testimony, we find that 6 US 6,631,718 B1, iss. Oct. 14, 2003 (Ex. 1311, “Lovell”). 7 WO 2007/045008 A1, pub. Apr. 26, 2007 (Ex. 1306, “Worboys”). 8 US 6,412,488 B1, iss. July 2, 2002 (Ex. 1309, “Barnett”). 9 US 2004/0226566 A1, pub. Nov. 18, 2004 (Ex. 1304, “Gunaratnam-II”). Petitioner’s asserted level of skill in the art is reasonable and, for the purposes of this Decision, we adopt that definition.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“protruding vent arrangement” claim term would be satisfied by adding a vent to a portion of Matula-I’s cushion frame 1260 that extends through opening 1250 of body portion 1240. Id. at 27–28, 33–34, 69–71; see Ex. 1312 ¶¶ 63–67. As such, Petitioner contends, implicitly, that the “protruding vent arrangement” claim term broadly encompasses a vent in a portion of the frame that extends through an opening in the shroud module. We disagree with Petitioner’s implicit claim construction. Petitioner’s construction is contrary to the plain language of the claim term, which requires the frame to have a “vent arrangement” that is “protruding” (rather than reciting that the frame has a protruding portion that includes a vent arrangement having a plurality of holes). Petitioner’s construction also is inconsistent with the Specification. As described in the Specification and depicted in Figure 3 (reproduced above on page 3), protruding vent arrangement 1076 is a discrete vent structure that extends above the surrounding surface of frame 1040 and contains a plurality of vent holes. Ex. 1301, 7:18–23 (“The top end of the shroud 1020 . . . includes an opening or vent receiving hole 1021 to accommodate the vent arrangement 1076 that protrudes from the frame 1040.” (emphasis added)), Fig. 3. Contrary to Petitioner’s implicit claim construction, protruding vent arrangement 1076 is described in the Specification as extending from the surface of the frame, and not merely as extending through an opening in shroud 1020. See id. slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentable
“Matula-I’s mask, so as to include the protruding vent arrangement limitation, by adding a vent to a portion of Matula-I’s cushion frame 1260 that protrudes through opening 1250 of body portion 1240. Petitioner’s analysis, however, is based on an improper claim construction, as discussed above. See supra Section II.B.1. Under a proper claim interpretation, the limitation requires a discrete vent structure that extends above the surrounding surface of the frame and contains a plurality of vent holes or gas washout holes. See id. Petitioner does not contend that either Matula-I or Gunaratnam-I specifically teaches or suggests a protruding vent arrangement having a plurality of vent holes or gas washout holes. Rather, Petitioner contends that both references teach positioning a vent in the nasal bridge region of a mask. Merely positioning a vent in a portion of Matula-I’s mask that protrudes through opening 1250 of body portion 1240, such as the nasal bridge region, would not result in a discrete vent structure that extends above the surrounding surface of the frame and contains a plurality of vent holes or gas washout holes, as required under our claim interpretation. The vent would be flush with the surrounding surface of the frame, for example, in the nasal bridge region of the frame. We are unpersuaded, therefore, that the combination of Matula-I and Gunaratnam-I teaches or suggests the protruding vent arrangement limitation. For the reasons given, we determine that Petitioner has not established a reasonable likelihood of prevailing on its challenges to claims 1, 4–8, 10– 22, 25, 26, 28–32, 46, 51, 53–56, and 65, each of which requires the protruding vent arrangement limitation.” slip op. at 13
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,119,931 - Carefusion Corporation v. Baxter International, Inc.Rehearing deniedPTAB · Mar 27, 2017 · IPR2016-01463 · APJ Richard E Rice · IPR · Rehearing
The Board denied rehearing of institution on the Bollish–TITRATOR obviousness ground for claims 1–3, 6, 7, and 16, finding no abuse of discretion or overlooked matter.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. DISCUSSION A. Applicable Requirements A request for rehearing will be reviewed for abuse of discretion. 37 C.F.R. § 42.71(c). The request must identify specifically all matters that a party believes the Board misapprehended or overlooked, and the place in the record where each matter was previously addressed. 37 C.F.R. § 42.71(d); see Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). In the present case, the burden of persuasion falls on Patent Owner as the moving party. 37 C.F.R. § 42.71(d).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Contrary to Patent Owner’s argument, an actual, physical substitution of elements in not required for obviousness. In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (“It is well-established that a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.”). Nor does obviousness depend upon precise teachings directed to the specific subject matter of the challenged claims. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[T]he [obviousness] analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.”). Moreover, in arguing that one of ordinary skill in the art would not have been motivated to make the asserted combination, Patent Owner relies on its own arguments and testimonial evidence, but does not address the arguments and evidence of Petitioner that we found sufficient at this stage of the proceeding to support Petitioner’s challenge to claims 1–3, 6, 7, and 16 as obvious over Bollish and TITRATOR.” slip op. at 3
§ 103 obviousnesscites KSRPatents in suitUS 6,231,560 - Fisher & Paykel Healthcare Limited v. Resmed LimitedInstitution deniedPTAB · Mar 16, 2017 · IPR2017-00057 · APJ James J Mayberry · IPR · Institution
The Board denied institution because Fisher did not show a reasonable likelihood of prevailing on any challenged claim, primarily for lack of a reasoned motivation to modify Gunaratnam using Lovell.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, upon considering the Petition and evidence, we conclude that the information presented in the Petition fails to establish a reasonable likelihood that Fisher will prevail with respect to at least 1 of the Challenged Claims, and we do not institute inter partes review on any of the Challenged Claims.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Factual indicators of the level of ordinary skill in the art include “the various prior art approaches employed, the types of problems encountered in the art, the rapidity with which innovations are made, the sophistication of the technology involved, and the educational background of those actively working in the field.” Jacobson Bros. v. United States, 512 F.2d 1065, 1071 (Ct. Cl. 1975); see also Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1011 (Fed. Cir. 1983) (quoting with approval Jacobson Bros.). We find, based on our review of the limited record before us, that Fisher’s 2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 296–307 (2011), took effect on September 16, 2012. Because the application for the patent at issue in this proceeding has an effective filing date before that date, we refer to the pre-AIA versions of the statute. asserted level of ordinary skill in the art is reasonable and, for the purposes of this Decision only, we adopt Fisher’s definition.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Fisher contends that the terms of the Challenged Claims “should be accorded their ‘broadest reasonable construction’ in light of the specification of the ’196 [p]atent” and does not offer any express constructions for any term in the Challenged Claims. See Pet. 11. Because the parties do not dispute the construction of any terms, we need not expressly construe any term to resolve a controversy between the parties. Accordingly, we do not offer any express constructions here.3 See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (construing explicitly only those claim terms in controversy and only to the extent necessary to resolve the controversy).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“having a bore and an interfacing structure associated with the bore. As Fisher contends, the terms of claim 23 are entitled to the broadest reasonable construction in light of the Specification of the’196 patent. We determine, for the purposes of this Decision, however, that the term “bore” is not broad enough to encompass the opening in clip 800—that is, Fisher’s implicit construction of the term “bore” to encompass the opening in clip 800 is unreasonably broad. As seen in annotated Figure 7a from Gunaratnam, reproduced above, clip 800 forms a frame corresponding to the outline shape of frame 160. Clip 800 includes an interior of the frame that is open. In contrast, the term “bore” would be understood to be a hole or opening, typically cylindrical, formed in a structure by or as if by boring. See, e.g., MERRIAM-WEBSTER ONLINE DICTIONARY, available at https://www.merriam-webster.com/dictionary/bore, last visited Mar. 9, 2017 (defining “bore” as “a usually cylindrical hole made by or as if by the turning or twisting movement of a tool: a hole made by or as if by boring”). This understanding of the term “bore” is consistent with the Specification of the ’196 patent, which identifies cylindrical openings as bores. See, e.g., Ex. 1001, Fig. 2A, 6:21–38 (identifying central bore 224). Fisher points us to nothing in the Specification or prosecution history, or in any extrinsic evidence, to support its broader interpretation.” slip op. at 18
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,960,196
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.