• Juniper Networks, Inc. / Brocade Communications Systems, Inc. et al. v. Mobile Telecommunications Technologies, LLCAdverse judgment
  PTAB · Oct 31, 2017 · IPR2017-00640 · APJ Meredith C Petravick · IPR · Adverse judgment

  Claims 1–5 were cancelled and adverse judgment was entered against Patent Owner after it requested cancellation of all claims at trial.

  RulingsAdverse judgment

  • Adverse judgmentAdverse judgmentGranted

    “proceeding. 37 C.F.R. § 42.73(b). Actions construed as a request for entry of adverse judgment include “[c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial.” 37 C.F.R. § 42.73(b)(2). Patent Owner requests cancellation of claims 1–5 of U.S. Patent No. 5,659,891 (“the ’891 patent) and entry of adverse judgment against it. Paper 20. Claims 1–5 are all claims of the ’891 patent and all claims at trial. We determine that entry of adverse judgment against Patent Owner is appropriate. Accordingly, it is: ORDERED that claims 1–5 of U.S. Patent No. 5,659,891 are cancelled; ORDERED that adverse judgment is entered under 37 C.F.R. § 42.73(b) against Patent Owner; and FURTHER ORDERED that this Order constitutes a final written decision under 35 U.S.C. § 318(a).” slip op. at 1

  None
  Patents in suitUS 5,659,891
• General Electric Company v. United Technologies CorporationSome claims unpatentable
  PTAB · Oct 26, 2017 · IPR2016-00952 · APJ Hyun J Jung · IPR · Final written decision

  Claim 11 was held unpatentable as obvious over Davies; Petitioner did not show claims 1, 2, 4, 5, 7, and 8 unpatentable on the instituted grounds.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner

    “Claim 1 recites “wherein said row of propulsor blades has a solidity value (R) defined as CD/CP that is between 0.6 and 0.9.” Ex. 1001, 4:59– 60. Similarly, now disclaimed independent claim 9 recites “wherein said row of propulsor blades has a solidity value (R) defined as CD/CP.” Id. at 6:9–10. Thus, according to the claims, “solidity value (R)” is defined as “CD/CP,” or chord dimension CD divided by circumferential pitch CP. Also, as pointed out by Patent Owner (PO Resp. 15), the specification of the ’412 patent states that the “solidity value is defined as a ratio (R) of CD/CP (i.e., CD divided by CP).” Ex. 1001, 3:24–25; see also Mathioudakis Decl. ¶ 19 (Patent Owner’s declarant testifying that the ’412 patent defines solidity as the ratio of CD and CP). Patent Owner also quotes a portion of the specification that describes chord dimension CD as the “length that extends between the leading edge 82 and the trailing edge 84 at the tip” (Ex. 1001, 3:5–7) and circumferential pitch CP as “equivalent to the arc distance between the tips 80 of neighboring propulsor blades” (id. at 3:8– 10). PO Resp. 15. In view of these portions of the specification, we find that the ’412 patent provides a clear, deliberate, and precise definition of “solidity value.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (Any special definitions for claim terms or phrases must be set forth with reasonable clarity, deliberateness, and precision). Also, as discussed above, claim 1 similarly relates “solidity value” to “CD/CP.” Compare Ex. 1001, 4:59–60 with id. at 3:24–25.” slip op. at 8

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “art would use fan dimensions given to “illustrate the magnitude of the problem” of restraining blades in the hub to calculate a value of tip solidity, which has already been disclosed in a list of “main features of the chosen design” for the V.P. fan. The tip solidity of 0.83 comes immediately after Davies discusses the “aerodynamic design philosophy” of fixed pitch fans (Ex. 1005, 6) and V.P. fans (id. at 6–8). Davies also states that “[i]n order to achieve a design pressure ratio of say 1.27:1 . . . , a transonic blade design was required with a tip solidity of .8.” Id. at 7. The fan diameter and blade chord at the tip, which Petitioner uses to calculate its tip solidity value, come from a discussion in Davies regarding the hub, in particular restraining V.P. blades in the hub. Id. at 9. Davies states, at the design speed, each aerofoil part exerts 15 tons of centrifugal force, and a “total restraint of about 40 tons” would be required. Id. at 9–10. The numbers that Petitioner uses to calculate its tip solidity value are numbers that Davies uses “[t]o illustrate the magnitude of the problem” in designing its hub. Pet. 29–30; Ex. 1005, 9–10. Thus, we find that Davies gives fan dimensions sufficient to calculate that each fan blade exerts 15 tons of centrifugal force and hence a needed “total restraint of about 40 tons.” See id. We find that these statements would indicate to one of ordinary skill in the art that the numbers given for the fan dimensions are for purposes of estimating what the hub is required to restrain, and not sufficient for calculating tip solidity value, which was previously listed as 0.83 and as one of the “main features” after discussing aerodynamic design philosophy for its V.P. fan. See id. at 7–8; Mathioudakis Decl. ¶¶ 57, 69, 70 (“One would not attempt to use the approximate chord lengths and blade diameters in Section 6 to derive or interpret from Davies a substitute solidity value”). The Petition also does not explain sufficiently why one of ordinary skill in the art would understand Davies to disclose a tip solidity value of 0.74 instead of the expressly disclosed tip solidity of 0.83. See Pet. 29–30 (citing Abhari Decl. ¶¶ 80–82). The Petition and the cited portions of the Abhari Declaration do not address the disclosed tip solidity of 0.83. See Pet. 29–30; Abhari Decl. ¶¶ 80–82. Thus, given the entire context of Davies, a “Solidity Tip” of 0.83 as one of the “main features,” and Petitioner’s tip solidity calculated from fan dimensions given for illustration purposes, the full record does not persuade us that one of ordinary skill in the art would understand that Davies discloses a tip solidity value of 0.74, as argued by Petitioner, for its V.P. fan. One of ordinary skill in the art would understand, instead, that the fan dimensions provided for illustration purposes are not sufficiently specific to calculate a tip solidity value because they are given for evaluating the restraint the hub must provide. See Mathioudakis Decl. ¶ 69. Also, the record provides insufficient basis for determining that one of ordinary skill in the art would have accepted the calculated value of 0.74 over the listed value of 0.83 for tip solidity.” slip op. at 19

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “Davies indicates, as Patent Owner argues, that chord length, circumferential pitch, and solidity are interrelated and one of ordinary skill in the art considers implications of varying one parameter on other parameters of a V.P. fan. See, e.g., Ex. 1005, 6–8; Mathioudakis Decl. ¶¶ 72–76. However, Patent Owner’s argument that Petitioner’s proposed modification would lead to larger, heavier, fan blades (PO Resp. 36) does not show a deficiency in Petitioner’s reason for modifying the blade chord of Davies to achieve a ratio of N/R of 15.7 (Abhari Decl. ¶ 95), which would be within the recited range 15 to 16. Petitioner argues, and its Declarant states, that “blade chord dimension can be varied in order to balance the stability, efficiency, and weight of the fan section.” Pet. 39; Abhari Decl. ¶ 94 (citing Ex. 1021). Petitioner’s Declarant acknowledges that increasing chord length would “result in increased weight” but indicates that “increasing the chord length can lead to improved efficiency and stability margin.” Abhari Decl. ¶ 94 (citing Ex. 1021). Petitioner’s reason for modification, thus, acknowledges and anticipates that increasing the chord length to achieve a ratio of N/R equal to 15.7 would lead to heavier blades, but also greater efficiency and stability margin. See Pet. 39; Abhari Decl. ¶¶ 94–95. Also, the arguments and evidence before us persuade us that Petitioner’s proposed modification to achieve a ratio of N/R of 15.7 would not render Davies inoperable for its intended purpose, as argued by Patent Owner (PO Resp. 34, 37, 38). Davies states that the “requirement of reverse thrust via fine pitch implies that the blade solidity must be less than unity since the blades must pass each other.” Ex. 1005, 7. Davies also indicates that “to achieve a design pressure ratio of say 1.27:1 . . . a transonic blade design was required with a tip solidity of .8,” thus indicating that a different design pressure ratio requires a different tip solidity. Id.; see also id. at 5 (“The precise choice of pressure ratio . . . is not particularly important.”). Davies determines a taper ratio based on a “hub solidity near 1 and a tip solidity of 0.8.” Id. We, thus, find that Davies teaches or suggests that a taper ratio can be determined for a hub solidity near 1 and a different tip solidity for a different design pressure ratio in view of the requirement of blade solidity less than unity so that blades can pass. Therefore, we find that Petitioner’s proposed modification to achieve a ratio of N/R of 15.7 would not render Davies inoperable for its intended purpose. Further, based on the statements that the “precise choice of pressure ratio for technology demonstration fan design is not particularly important” (Ex. 1005, 5) and that “[i]n order to achieve a design pressure ratio of say 1.27:1 . . . a transonic blade design was required with a tip solidity of 0.8” (id. at 7), we find that one of ordinary skill in the art would understand that the pressure ratio depends on the application and that one of ordinary skill in the art has the skill to choose an appropriate pressure ratio, and thereby, determine an appropriate tip solidity value and blade chord, as was done in Davies with a design pressure ratio of 1.27:1. We find that, other than the requirement of blade solidity less than unity so that blades can pass, Davies does not preclude increasing the chord length for a different design pressure ratio or for greater efficiency and stability margin to achieve a ratio of N/R between 15 and 16, as proposed by Petitioner. Also, we agree with Petitioner that the record shows that increasing chord dimension to achieve a ratio of N/R of 15.7 would increase blade efficiency and stability margin. Abhari Decl. ¶ 94; Ex. 1021, 1:30–33. We are not pointed to any part of the record that indicates increasing chord dimension would degrade blade efficiency. See PO Resp. 34–44. For the reasons above, we agree with Petitioner that, for claim 11, one of ordinary skill would have modified Davies’ N/R ratio to be 15.7 or between 15 and 16 because the modification can “lead to improved efficiency and stability margin” (Pet. 39 (citing Abhari Decl. ¶ 94; Ex. 1021 1:30–33)). We, thus, determine that Petitioner has shown by a preponderance of the evidence that claim 11 is unpatentable over Davies.” slip op. at 31

  • Skill levelSkill level petitioner adoptedOther

    “A. Level of Ordinary Skill Petitioner’s Declarant provides a level of ordinary skill. Abhari Decl. ¶ 4. Patent Owner’s Declarant generally agrees to that level of ordinary skill. Mathioudakis Decl. ¶ 16. We note that, to the extent there are any differences in the parties’ proposed level of ordinary skill, such differences do not impact our analysis.” slip op. at 25

  Patent outcomesUS 9,121,412 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,121,412
• Arris Group, Inc. / Aruba Networks, Inc. et al. v. Mobile Telecommunications Technologies, LLCAll claims unpatentable
  PTAB · Sep 20, 2017 · IPR2016-00766 · APJ Meredith C Petravick · IPR · Final written decision

  Claims 1–5 are unpatentable: claims 1–5 are anticipated by Petrovic, and claim 5 is also obvious over Petrovic, Raith, and Alakija.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “The asymmetrical condition recites “the band edge of the mask defining the channel,” referring to the “single mask-defined, bandlimited channel” also recited by the claims. A channel is a range or band of frequencies. See Pet. 5–6; see also Ex. 2001 ¶ 49; Ex. 2011 ¶ 48 (testimony of Patent Owner’s declarant Dr. Kesan that “[t]he word ‘band’ of ‘band edge’ refers to a frequency band or range.”). The language of the claims, themselves, thus indicates that “the band edge” is the edge of the mask that defines the range or band of frequencies of the channel. For example, in Annotation B of Figure 3B the left vertical line 31a and right vertical line 31b are the edges of the mask that define the range or band of frequencies of the channel. In other words, the entire range or band of frequencies of the channel are between left vertical line 31a and right vertical line 31b.” slip op. at 9

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Third, according to Dr. Kesan, example masks described in the specification of the ’891 and other extrinsic evidence support Patent Owner’s proposed construction. PO Resp. 21–33 (citing Ex. 2011). Dr. Kesan’s testimony is unpersuasive because it is not adequately supported by the cited evidence. See Pet Reply. 6–13. For example, Dr. Kesan testifies that “FCC emission masks can have multiple band edges,” meaning “all points along the edge of the mask that limits the frequency band” (Ex. 2011 ¶¶ 48–51 (citing id. at Appendix C). However, the material cited by Dr. Kesan does not mention the term “the band edges.” See id. at Appendix C. As another example, Dr. Kesan testifies that drawing the mask depicted in Figure 4 of the ’891 patent on Figure 5A of the ’891 patent proves that “not choosing the nearest band edges of the mask of Figure 4 would cause the two carriers of Figure 5A to exceed the diagonal band edges of the masks when the carriers are modulated.” PO Resp. 28–30 (citing Ex. 2011 ¶¶ 71– 76). Dr. Kesan, however, does not sufficiently explain why his placement of the Figure 4 mask on Figure 5A is the correct placement. See generally Ex. 2011 ¶¶ 71–76; see also Ex. 1018 ¶¶ 20–25 (testimony of Dr. Kakaes indicating the Dr. Kesan’s placement is incorrect). Further, Patent Owner’s argument that a POSITA would construe “the band edge” according to its proposed construction is unpersuasive. See generally PO Resp. 21–30. Patent Owner relies upon the testimony of Dr. Kesan for support. Id. We give Dr. Kesan’s testimony little weight because it is not credible due to inconsistency in his testimony. For example, in its Preliminary Response, Patent Owner points to an annotation of Figure 3B of the ’891 patent by Dr. Kesan in related district court litigation. See Prelim. Resp. 27 (reproducing a figure from Ex. 20106, 5). Annotated Figure 3B from the related district court litigation is reproduced below.” slip op. at 14

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Upon review of Petitioner’s evidence and analysis, which we agree with and hereby adopt, we determine that Petitioner has shown by a preponderance of the evidence that claims 1, 3, and 5 are anticipated by Petrovic. Pet. 13–14, 23–26; Pet. Reply 16–28. In particular, we are persuaded by Dr. Kakaes’s testimony that Petrovic meets the asymmetric condition. Dr. Kakaes testifies that in Petrovic: the frequency difference between the center frequency of the outer most of the carriers and the band edge of the mask defining said channel (which is greater than 7.5 kHz) is more than half the frequency difference between the center frequencies of each adjacent carrier (which is 5 kHz), as required by claim 1. Ex. 1003 ¶ 22. Dr. Kakaes’s testimony is based upon Petrovic’s description of doubling the 25 kHz bandwidth to 50 kHz to provide “a 35 kHz pass band in the middle of the channel and 7.5 kHz guard bands on each side,” with eight subcarriers spaced 5 kHz apart.” Ex. 1013 1. Further, we are persuaded by Petitioner that Petrovic describes transmitting the carriers from the same location. Petrovic states that “[e]ach transmitter has four subtransmitters capable of 4-FSK over a subset of the 8 frequencies. Outputs of the subtransmitters are combined and sent to a common antenna.” Id. at 2; see also Ex. 1003 ¶¶ 25, 26. We are not persuaded by Patent Owner that Petrovic fails to anticipate claims 1, 3, and 5 because Patent Owner’s arguments are not commensurate with the scope of the claims. See PO Resp. 41–52. First, Patent Owner contends that Petrovic does not meet the asymmetric condition when “the band edge of the mask” is construed, according to Patent Owner’s proposed construction, as “the nearest band edge of the mask,” where “the nearest band edge” is defined as “the band edge that is nearest to the center frequency of each outer most carrier at the highest power level of each outer most carrier.” Id. at 42–50. As discussed above, however, we determine that Patent Owner’s proposed construction of “the band edge of the mask” is not the correct construction. Second, Patent Owner argues that Petrovic does not describe transmitting the carriers from the same location because it does not describes transmitting multiple carriers from the same location at the same time. PO Resp. 51–52. As also discussed above, claims 1, 3, and 5 do not require the carriers to be transmitted at the same time. Claims 1, 3, and 5 do not recite any temporal requirement, i.e., that all the carriers must be transmitted at the same time, only that the carriers must be transmitted from the same location. Patent Owner’s arguments, thus, are not commensurate with the scope of the claims. After consideration of both Petitioner’s and Patent Owner’s argument and evidence, Petitioner has shown by a preponderance of the evidence that claims 1, 3, and 5 are anticipated by Petrovic.” slip op. at 22

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable

    “In addition, we are persuaded by Petitioner that the combination of Petrovic, Raith, and Alakija teaches the claimed co-locating. Petrovic describes an experiment in which two transmitters are located seven miles apart and synchronized to provide a simulcast overlap area. Ex. 1013, 2. Raith describes a similar cellular digital mobile radio system with plural base station transmitters. Pet. 33 (citing Ex. 1014, Title). Raith describes diving a geographical area into multiple cells and providing two transmitters, which simultaneously transmit the same message information to mobile stations, in each cell. Ex. 1014, Abstract, 6:1–3; Ex. 1003 ¶ 30. For adjacent cells, Raith teaches co-locating groups of three base transmitters to transmit information to contiguous cells. See Ex. 1014, 6:11–15; see also Pet. 33 (reproducing Figure 1 of Raith with annotations to illustrate the co-located transmitters). Dr. Kakaes testifies that a POSITA would have been motivated to expand the experimental paging system configuration described in Petrovic to include multiple adjacent paging cells/regions similar to the structure illustrated in Figure 1 of Raith . . . in order to provide messaging services to a larger geographic area and a larger number of mobile devices. Ex. 1003 ¶¶ 31–32; Ex. 1018 ¶ 73. Alakija describes a “mobile communications base station antenna, which utilizes a cylindrical array design.” Ex. 1015, Abstract. Alakija describes that, “[b]y combining a number of feed networks into a single antenna system, an antenna with multiple independently steerable beams is achieved.” Ex. 1015, 1–2; see also id. at Fig. 6. Dr. Kakaes testifies that a POSITA would have been motivated to utilize a single cylindrical antenna structure to emit the output signals of the three co-located transmitters described by Petrovic in view of Raith instead of three separate antennas, because a single antenna structure “[c]an be used to realize advantages such as...hardware savings, low manufacturing costs, [and] low installation costs,” as recognized by Alakija. Ex. 1003 ¶ 36 (quoting Ex. 1015, 3); Ex. 1018 ¶ 73.” slip op. at 27

  Patent outcomesUS 5,659,891 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 5,659,891
• Arris Group, Inc. / Aruba Networks, Inc. et al. v. Mobile Telecommunications Technologies, LLCAll claims unpatentable
  PTAB · Sep 20, 2017 · IPR2016-00768 · APJ Meredith C Petravick · IPR · Final written decision

  Claims 1–5 are unpatentable: claims 1–5 as anticipated by Petrovic, and claim 5 also as obvious over Petrovic, Raith, and Alakija.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “The asymmetrical condition recites “the band edge of the mask defining the channel,” referring to the “single mask-defined, bandlimited channel” also recited by the claims. A channel is a range or band of frequencies. See Pet. 5–6; see also Ex. 2001 ¶ 49; Ex. 2011 ¶ 48 (testimony of Patent Owner’s declarant Dr. Kesan that “[t]he word ‘band’ of ‘band edge’ refers to a frequency band or range.”). The language of the claims, themselves, thus indicates that “the band edge” is the edge of the mask that defines the range or band of frequencies of the channel. For example, in Annotation B of Figure 3B the left vertical line 31a and right vertical line 31b are the edges of the mask that define the range or band of frequencies of the channel. In other words, the entire range or band of frequencies of the channel are between left vertical line 31a and right vertical line 31b.” slip op. at 9

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “with and hereby adopt, we determine that Petitioner has shown by a preponderance of the evidence that claims 1, 3, and 5 are anticipated by Petrovic. Pet. 13–14, 23–26; Pet. Reply 16–28. In particular, we are persuaded by Dr. Kakaes’s testimony that Petrovic meets the asymmetric condition. Dr. Kakaes testifies that in Petrovic: the frequency difference between the center frequency of the outer most of the carriers and the band edge of the mask defining said channel (which is greater than 7.5 kHz) is more than half the frequency difference between the center frequencies of each adjacent carrier (which is 5 kHz), as required by claim 1. Ex. 1003 ¶ 22. Dr. Kakaes’s testimony is based upon Petrovic’s description of doubling the 25 kHz bandwidth to 50 kHz to provide “a 35 kHz pass band in the middle of the channel and 7.5 kHz guard bands on each side,” with eight subcarriers spaced 5 kHz apart.” Ex. 1013 1. Further, we are persuaded by Petitioner that Petrovic describes transmitting the carriers from the same location. Petrovic states that “[e]ach transmitter has four subtransmitters capable of 4-FSK over a subset of the 8 frequencies. Outputs of the subtransmitters are combined and sent to a common antenna.” Id. at 2; see also Ex. 1003 ¶¶ 25, 26. We are not persuaded by Patent Owner that Petrovic fails to anticipate claims 1, 3, and 5 because Patent Owner’s arguments are not commensurate with the scope of the claims. See PO Resp. 41–52. First, Patent Owner contends that Petrovic does not meet the asymmetric condition when “the band edge of the mask” is construed, according to Patent Owner’s proposed construction, as “the nearest band edge of the mask,” where “the nearest band edge” is defined as “the band edge that is nearest to the center frequency of each outer most carrier at the highest power level of each outer most carrier.” Id. at 42–50. As discussed above, however, we determine that Patent Owner’s proposed construction of “the band edge of the mask” is not the correct construction. Second, Patent Owner argues that Petrovic does not describe transmitting the carriers from the same location because it does not describes transmitting multiple carriers from the same location at the same time. PO Resp. 51–52. As also discussed above, claims 1, 3, and 5 do not require the carriers to be transmitted at the same time. Claims 1, 3, and 5 do not recite any temporal requirement, i.e., that all the carriers must be transmitted at the same time, only that the carriers must be transmitted from the same location. Patent Owner’s arguments, thus, are not commensurate with the scope of the claims. After consideration of both Petitioner’s and Patent Owner’s argument and evidence, Petitioner has shown by a preponderance of the evidence that claims 1, 3, and 5 are anticipated by Petrovic. 3. Dependent claims 2 and 4 With respect to the additional limitations of dependent claims 2 and 4, Petitioner proffers annotated versions of Petrovic’s Figure 1 (Pet. 22–23) to show that adjacent carriers (claim 2) and subchannels (claim 4) “overlap with each other,” as recited in these claims. Id. at 21–23, 27. Figure 6 and Figure 7, the annotated versions of Petrovic’s Figure 1, are reproduced sideby-side below. Figure 6 depicts Petrovic’s Figure 1 with annotations to show transmission levels if subchannels 1–8 are all on. Pet. 21; Ex. 1003 ¶ 23. Figure 7 depicts a portion of Petrovic’s Figure 1 around carrier 1 and carrier 2 and has been annotated to highlight the overlap. According to Patent Owner, to meet claims 2 and 4, Petrovic must “teach overlap of the carriers that could be recognized by a receiver as the carrier except for near-far interference.” PO Resp. 53–59. Patent Owner argues that Petrovic does not teach overlapping carriers, because Petrovic’s overlap is caused by near-far interference and is at a very low power. PO Resp. 53–56 (citing Ex. 2011 ¶¶ 112, 115–120). Patent Owner argues that overlap must be overlap of those portions of a carrier that could be recognized by a receiver as the carrier except for near-far interference. Id. at 54.” slip op. at 22

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “In addition, we are persuaded by Petitioner that the combination of Petrovic, Raith, and Alakija teaches the claimed co-locating. Petrovic describes an experiment in which two transmitters are located seven miles apart and synchronized to provide a simulcast overlap area. Ex. 1013, 2. Raith describes a similar cellular digital mobile radio system with plural base station transmitters. Pet. 33 (citing Ex. 1014, Title). Raith describes diving a geographical area into multiple cells and providing two transmitters, which simultaneously transmit the same message information to mobile stations, in each cell. Ex. 1014, Abstract, 6:1–3; Ex. 1003 ¶ 30. For adjacent cells, Raith teaches co-locating groups of three base transmitters to transmit information to contiguous cells. See Ex. 1014, 6:11–15; see also Pet. 33 (reproducing Figure 1 of Raith with annotations to illustrate the co-located transmitters). Dr. Kakaes testifies that a POSITA would have been motivated to expand the experimental paging system configuration described in Petrovic to include multiple adjacent paging cells/regions similar to the structure illustrated in Figure 1 of Raith . . . in order to provide messaging services to a larger geographic area and a larger number of mobile devices. Ex. 1003 ¶¶ 31–32; Ex. 1018 ¶ 73. Alakija describes a “mobile communications base station antenna, which utilizes a cylindrical array design.” Ex. 1015, Abstract. Alakija describes that, “[b]y combining a number of feed networks into a single antenna system, an antenna with multiple independently steerable beams is achieved.” Ex. 1015, 1–2; see also id. at Fig. 6. Dr. Kakaes testifies that a POSITA would have been motivated to utilize a single cylindrical antenna structure to emit the output signals of the three co-located transmitters described by Petrovic in view of Raith instead of three separate antennas, because a single antenna structure “[c]an be used to realize advantages such as...hardware savings, low manufacturing costs, [and] low installation costs,” as recognized by Alakija. Ex. 1003 ¶ 36 (quoting Ex. 1015, 3); Ex. 1018 ¶ 73.” slip op. at 27

  Patent outcomesUS 5,659,891 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 5,659,891
• General Electric Company v. United Technologies CorporationAll claims unpatentable
  PTAB · Sep 15, 2017 · IPR2016-00862 · APJ George R Hoskins · IPR · Final written decision

  Claims 1–11 and 13–21 are unpatentable: claims 1–7, 9–11, 13–18, 20, and 21 as anticipated by Bunker; claims 8 and 19 as obvious over Bunker and Liang.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “Thus, there is agreement as to educational background and years of experience. There is disagreement as to the type of experience required — gas turbine airfoil cooling (per Dr. Eaton) or heat transfer in general (per Dr. Faghri). We determine a person of ordinary skill in the art pertaining to the ’568 patent may have the requisite years of experience in the field of gas turbine airfoil cooling, or in the heat transfer field more generally. We are not persuaded by Petitioner’s argument that a person with at least three years of experience in the heat transfer field would require yet more experience in the specific context of gas turbine engine cooling, to achieve a level of ordinary skill as to the ’568 patent. Moreover, our analysis would be the same based on either party’s proposed level of ordinary skill in the art.” slip op. at 6

  • Expert testimonyDecided for patent owner

    “given no weight,” because he “is an expert in heat pipe design, which has absolutely nothing to do with . . . airfoil cooling hole design.” Pet. Reply 2, 14–15. Petitioner’s Reply in effect urges us to exclude Dr. Faghri’s testimony without providing Patent Owner the procedural safeguards set forth in 37 C.F.R. §§ 42.64(b)–(c) & 42.23 for motions to exclude evidence. We are, also, unpersuaded that testimony from a heat transfer expert would not help us to understand the evidence or to determine a fact at issue in this proceeding. See id. § 42.62; Fed. R. Evid. 702(a). Thus, we will not exclude Dr. Faghri’s testimony. We have, however, taken the respective educational and experiential backgrounds of Dr. Eaton and Dr. Faghri into account when weighing the evidence presented in this proceeding.” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “We determine a broadest reasonable construction of claim 1 does not require the sidewalls to be a component or part of the lobes. First, the claim plainly recites “a diffusing section . . . comprising” a first lobe, a second lobe, upstream and downstream ends located at an outlet, and first and second sidewalls. Ex. 1001, 13:50–14:8. Thus, claim 1 indicates that the lobes and the sidewalls are parts of the diffusing section, not that the sidewalls are part of the lobes. In requiring the sidewall edges to extend to a downstream end trailing edge of a corresponding lobe (e.g., id. at 13:65–67), claim 1 merely specifies a spatial inter-relationship between the sidewall edges and the trailing edges of the lobes, and does not require that the sidewalls are part of the lobes. It is true, as Patent Owner points out, that each embodiment illustrated in the ’568 patent figures includes diffusing section sidewalls being a component of the lobes in the diffusing section. See, e.g., id. at 7:38–50, Fig. 5. Nonetheless, we must be careful not to read a particular embodiment appearing in the specification into the claim, if the claim language is broader than the embodiment. See Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1117 (Fed. Cir. 2004) (“particular embodiments appearing in the written description will not be used to limit claim language that has broader effect”); In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (“[L]imitations are not to be read into the claims from the specification.”). Furthermore, the ’568 patent specification, like the language of claim 1, indicates the lobes and the sidewalls are parts of the diffusing section, not that the sidewalls are part of the lobes. Ex. 1001, Abstract, 3:12–21, 12:2–11. Unlike the situation presented in Toro, the ’568 patent specification does not describe any advantage of the sidewalls being a component or part of the lobes. See Toro, 199 F.3d at 1298, 1301 (patent at issue emphasized permanent attachment between ring and cover, with ring as part of cover). Patent Owner does not cite, and we cannot find, any disclosure in the ’568 patent specification informing a person of ordinary skill in the art of any special significance of the sidewalls being a part of the lobes, versus other characteristics of the cooling hole illustrated in Figure 5 of the ’568 patent (for example). Patent Owner’s assertion that the “advantages to the ’568 cooling hole design attach to the entire shape of the cooling hole” (PO Resp. 56–57) proves too much. Taken to its logical conclusion, it requires importation into claim 1 of every aspect of the entire shape and configuration of the cooling hole illustrated in Figure 5 of the ’568 patent. For example, it requires importation of the exact shape of lobes 124 and 126 and outlet 116 as shown therein, without deviation as to the width of the lobes or the exact curvature of the outlet. It further requires importation of the specific inclined portions 148 and 150, and interlobe region 142, shown in Figure 5. However, it is a “fundamental principle that claims define the scope of patent protection,” which “presupposes that a patent applicant defines his invention in the claims, not in the specification.” Johnson & Johnson Assocs. Inc. v. R.E. Serv. Co., 285 F.3d 1046, 1052 (Fed. Cir. 2002) (en banc) (citations omitted). For the foregoing reasons, we determine a broadest reasonable” slip op. at 9

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “We determine Petitioner’s position as to the location of the downstream end in Bunker’s Figure 5 is the correct one. This is so regardless of whether we apply Patent Owner’s proffered definition of the downstream end (i.e., the end of the outlet in the direction of cooling airflow) or Petitioner’s proffered definition (i.e., the point where the end of the diffusing section meets the second wall surface). Under either definition, the downstream end of Bunker’s Figure 5 must include at least the downstream ends of troughs 86 and 88. Troughs 86 and 88 are part of the diffusing section in Figure 5, and their downstream ends both meet wall surface 82 / 93. See Ex. 1005, Fig. 5, ¶ 52. A person of ordinary skill in the art would understand that cooling air flows within troughs 86 and 88 to be diffused along outer surface 82 / 93 at their downstream ends. Ex. 1005 ¶¶ 6–8, 38, 40, 42, 45, and claim 20; Ex. 1003 ¶¶ 26–27, 45. Patent Owner’s contention that the front face of plateau 92 is the downstream end of the diffusing section cannot be correct, because troughs 86 and 88 extend within passage hole 80 further downstream than that front face. See Ex. 1005, Fig. 5.3 As Patent Owner recognizes, the front face of plateau 92 causes at least some of the cooling airstream to split, laterally, into troughs 86 and 88. See PO Resp. 19–20 (discussing prosecution history of Bunker); Tr. 19:19– 20:24. Also, Patent Owner’s position as to the downstream end location in Bunker’s Figure 5 is not supported by testimony from Dr. Faghri, who does not opine on the location of the downstream end. Thus, Patent Owner’s position in this regard is supported only by attorney argument, not by evidentiary testimony. Moreover, claim 1 of the ’568 patent fails to specify any particular structure(s) between the two lobes. Thus, whether Bunker’s plateau 92 forces some of the cooling airstream upwardly into the hot airstream is irrelevant to the structure recited in claim 1. 3 Figure 6 of the ’568 patent illustrates downstream end 160 being “spaced from,” and therefore not axially coextensive with, trailing edges 136 and 138 of lobes 124 and 126. Ex. 1001, Fig. 6, 8:7–11, 10:21–33. However, in ’568 patent Figure 6, downstream end 160 is downstream of trailing edges 136 and 138. Patent Owner’s alleged downstream end in Bunker’s Figure 5, by contrast, is upstream of the trailing edges of lobes 86 and 88. We find further that, in some configurations of plateau 92 in Figure 5, the top surface of plateau 92 (i.e., the roughly trapezoid-shaped surface in Figure 5 surrounding “92”) slopes downwardly into the cooling hole, below wall surface 82 / 93. Figure 5 shows a line extending between the trailing edges of troughs 86 and 88. Ex. 1005, Fig. 5. That line indicates there is a defined, angled edge between outer surface 93 and the top surface of plateau 92. If there were no such angled edge, there would be no line in Figure 5. See, e.g., PO Resp. 61 (“There is necessarily some form of plane between the side of the troughs [86, 88] and the edge of the outlet[], otherwise the green-shaded portions [reproduced at PO Resp. 61] would not be visible to a viewer looking down on passage hole 80.”) Bunker also discloses that plateau 92 in Figure 5 “can generally lie in the same plane as outer surface region 93, although the figure seems to show plateau 92 as being angled upwardly from region 93,” and plateau 92 “can vary in height, relative to surface 82.” Ex. 1005 ¶ 52 (emphases added). Bunker further indicates, more generally, that the shape, size and orientation of its plateau surfaces or faces (such as in plateau 92 of Figure 5) can vary considerably. Id. ¶ 49. In light of these disclosures, a person of ordinary skill in the art would appreciate that the top surface of plateau 92 will slope downwardly into the diffusing section of the cooling hole in some configurations. See Tr. 23:1–23:19. In at least such configurations, the edge defining the transition between the top surface of plateau 92 and valley 90 underneath plateau 92 is located down within the diffusing section below wall surface 82 / 93, and therefore is not at the downstream end of the diffusing section.” slip op. at 29

  Patent outcomesUS 8,689,568 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,689,568
• Baker Hughes Incorporated / Baker Hughes Oilfiled Operations, Inc. v. Packers Plus Energy Services, Inc.No claims unpatentable
  PTAB · Aug 31, 2017 · IPR2016-00650 · APJ Carl M Defranco · IPR · Final written decision

  The Board held that claims 14 and 17–26 were not shown unpatentable because Thomson lacked the claimed first sleeve and the combinations lacked a reason to add Echols’s sleeves.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “At the institution stage, we construed the term “engaged” according to its plain and ordinary meaning as defined in the dictionary—“involved in activity.” See Merriam-Webster’s Dictionary, 383 (10th ed. 2000) (Ex. 3001). Thus, in the context of the claims, we found that the first sleeve must be actively involved in moving the sliding sleeve, as distinguished from standing simply in physical contact with the sliding sleeve. In other words, as used in the claims, the term “engaged” connotes some sort of dynamic action on the part of the first sleeve relative to the sliding sleeve. Neither party disputes that construction. Indeed, both parties agree that our construction is consistent with “a process of two events that are temporally linked,” first, “the physical relationship between the first sleeve and the sliding sleeve changes to one of engagement,” and second, “the first sleeve moves the sliding sleeve.” Pet. 19; see also PO Resp. 2 (agreeing that the Board’s construction is consistent with the petitioner’s proposed construction of “engaged and moved”).” slip op. at 6

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “As construed above, and agreed to by the parties, the term “engaged and moved” as used in claims 14 and 25 requires that the first sleeve act independently of the sliding sleeve to move the sliding sleeve away from the port. In contrast, the sliding sleeve arrangement of Thomson—shown in figure 5—includes an internal first sleeve (light grey) that acts as a “ball seat” for the sliding sleeve. Ex. 1002, 1, 2, Fig. 5. Rather than actuating sliding sleeve, Thomson’s internal first sleeve is “threaded” permanently within the sliding sleeve, and thus cannot act to engage and move the sliding sleeve away from the port, as required by claims 14 and 25. With that distinction in mind, we are not persuaded that Thomson anticipates claims 14 and 25.6 C.” slip op. at 7

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “According to Packers Plus, because Thomson describes a completion system where the wellbore is cemented and cased, the “the number of sleeves per zone does not dictate the number of injection points into the formation. Rather, the number of perforations in the casing dictates the number of injection points, whether there is a single sleeve per zone or multiple sleeves per zone.” Id. at 4. As such, Packers Plus argues, there is no reason to employ more sleeves in each of Thomson’s perforated zones, when the single sleeve per zone already disclosed by Thomson suffices to do the job. Id. We agree. As shown and described in Thomson, the wellbore is lined with cement, and perforations are made in the cement casing for each zone to be treated. Ex. 1002, 3 (“Before running the completion, each well was perforated with tubing-conveyed perforating (TCP) guns.”); Fig. 3 (showing cement-lined wellbore). The tubing string is then run into the perforated, cased wellbore, “with isolation of each zone being achieved by hydraulic-set packers positioned on each side of an MSAF tool,” which Thomson describes as “a sliding sleeve device” that is “the ‘heart’ of the completion system.” Id. at 1, 2. Fracturing fluid is pumped into the tubing string, and “once the sleeve is moved to an open position,” it is ejected “into the tubing liner annulus” between the tubing string and the cased wellbore. Id. at 2 (emphasis added). But to ultimately reach the formation, the fracturing fluid in the annulus must pass through the perforations in Thomson’s cased wellbore. Given that fracturing fluid can only escape from the annulus and into the formation through the perforations in the cement casing, increasing the number of sleeves in each zone, as Baker Hughes suggests, would not equate to an increase of injection points into the formation. Instead, that is dictated by the number of perforations in the casing, as evidenced by the testimony of Packers Plus’s expert, Mr. McGowen, [i]t would be immediately clear to a POSITA the use of multiple Echols sleeves in a Thomson zone would not provide additional injection points into the formation. The only injection points into the casing are through perforations. If a POSITA wanted to modify Thomson to add additional injection points, he or she could add additional perforations in the casing, but there would be no reason to add additional sliding sleeves in a particular zone. Ex. 2003, 15:4─8 We find this testimony persuasive. With the perforations in the casing dictating the number of points where fluid can enter the formation, we find that a skilled artisan would not have have considered that additional sleeves in a particular zone would translate to a benefit of additional injection points.” slip op. at 14

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “to an increase of injection points into the formation. Instead, that is dictated by the number of perforations in the casing, as evidenced by the testimony of Packers Plus’s expert, Mr. McGowen, [i]t would be immediately clear to a POSITA the use of multiple Echols sleeves in a Thomson zone would not provide additional injection points into the formation. The only injection points into the casing are through perforations. If a POSITA wanted to modify Thomson to add additional injection points, he or she could add additional perforations in the casing, but there would be no reason to add additional sliding sleeves in a particular zone. Ex. 2003, 15:4─8 We find this testimony persuasive. With the perforations in the casing dictating the number of points where fluid can enter the formation, we find that a skilled artisan would not have have considered that additional sleeves in a particular zone would translate to a benefit of additional injection points.” slip op. at 15

  Patent outcomesUS 6,907,936 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 6,907,936
• Baker Hughes Incorporated / Baker Hughes Oilfield Operations, Inc. v. Packers Plus Energy Services, Inc.All claims unpatentable
  PTAB · Aug 29, 2017 · IPR2016-00656 · APJ Neil T Powell · IPR · Final written decision

  Claims 1–13 are unpatentable: anticipated by Themig and Flores; claims 4, 8, 9, and 13 also are obvious over Flores and over Flores with Whiteley.

  RulingsFinal written decision

  • Skill levelOther

    “ordinary skill in the art would have recognized the possibility of making various design changes. See PO Resp. 13–16. Patent Owner rests this argument on the testimony on page 12 of Mr. McGowen’s declaration, where he opines about various design changes that could be made. See id. We afford this particular testimony little weight because Mr. McGowen does not cite any underpinning evidence for his assertions about the possible variations. See Ex. 2006, 12; 37 C.F.R. § 42.65 (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). We also note that this testimony discusses a number of possible variations, but does not discuss omitting the port-opening sleeve as a possible variation. See id. Thus, even if we credit Mr. McGowen’s testimony, it provides limited support for the proposition that the ’807 application demonstrates possession of a system without a portopening sleeve. Moreover, as Petitioner notes, Mr. McGowen indicated the variations he discussed would have been “obvious,” which is not enough to establish written description support. See ICU Medical, 558 F.3d at 1378– 1379.” slip op. at 14

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner

    “Although the Specifications of the ’009 patent and the ’807 patent do not use the word “necessary,” we are persuaded that, just as a person of ordinary skill in the art would have understood that the spike was necessary in ICU Medical, a person of ordinary skill in the art would have understood that the port opening sleeve (i.e., sleeve 322) is necessary here. See ICU Medical, 558 F.3d at 1378; see also LizardTech. Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336, 1344–45 (Fed. Cir. 2005) (The disclosure of only one way to create a seamless DWT—by maintaining updated sums—did not provide written description support for claims that did not recite maintaining updated sums.). As Petitioner explains, the original claims of the ’807 application all require a “port-opening sleeve,” as recited in independent claims 1 and 15. Ex. 1019, 39–42; Pet. 22. Similarly, the Abstract of the ’807 application describes a tubing string assembly that includes closures, in which “[t]he closures are openable by a sleeve drivable through the tubing string inner bore.” Ex. 1019, 43. These disclosures would have strongly suggested to a person of ordinary skill in the art that a port-opening sleeve was a necessary component in the invention. See ICU Medical, 558 F.3d at 1378 (noting claims omitting spike recitation not filed with original application, but added years later during prosecution). Consistent with this, Petitioner persuades us that the only way the ’807 application teaches the claimed requirement of allowing a plug to open and then pass through a sleeve or sleeves is by using a port-opening sleeve, such as sleeve 322. Pet. 24; Reply 7. Petitioner argues that the Figure 6 embodiment cannot function without the port-opening sleeve. Pet. 24. Petitioner explains that port-closure sleeves 325a, 325b “have an inner diameter that ‘is generally equal’ to the inner diameter of the tubing string, meaning that any ball or plug that can traverse the tubing string will—in the absence of an intermediate port-opening sleeve—necessarily also pass through the port-closure sleeves [without opening them].” Id. (citing Ex. 1001, 10:1–6, Fig. 6); see also Ex. 1019, 34 (Disclosing that “sleeve 325a is selected to have an inner diameter that is generally equal to the tubing string inner diameter.”).” slip op. at 12

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner

    “Although the Specifications of the ’009 patent and the ’807 patent do not use the word “necessary,” we are persuaded that, just as a person of ordinary skill in the art would have understood that the spike was necessary in ICU Medical, a person of ordinary skill in the art would have understood that the port opening sleeve (i.e., sleeve 322) is necessary here. See ICU Medical, 558 F.3d at 1378; see also LizardTech. Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336, 1344–45 (Fed. Cir. 2005) (The disclosure of only one way to create a seamless DWT—by maintaining updated sums—did not provide written description support for claims that did not recite maintaining updated sums.). As Petitioner explains, the original claims of the ’807 application all require a “port-opening sleeve,” as recited in independent claims 1 and 15. Ex. 1019, 39–42; Pet. 22. Similarly, the Abstract of the ’807 application describes a tubing string assembly that includes closures, in which “[t]he closures are openable by a sleeve drivable through the tubing string inner bore.” Ex. 1019, 43. These disclosures would have strongly suggested to a person of ordinary skill in the art that a port-opening sleeve was a necessary component in the invention. See ICU Medical, 558 F.3d at 1378 (noting claims omitting spike recitation not filed with original application, but added years later during prosecution). Consistent with this, Petitioner persuades us that the only way the ’807 application teaches the claimed requirement of allowing a plug to open and then pass through a sleeve or sleeves is by using a port-opening sleeve, such as sleeve 322. Pet. 24; Reply 7. Petitioner argues that the Figure 6 embodiment cannot function without the port-opening sleeve. Pet. 24. Petitioner explains that port-closure sleeves 325a, 325b “have an inner diameter that ‘is generally equal’ to the inner diameter of the tubing string, meaning that any ball or plug that can traverse the tubing string will—in the absence of an intermediate port-opening sleeve—necessarily also pass through the port-closure sleeves [without opening them].” Id. (citing Ex. 1001, 10:1–6, Fig. 6); see also Ex. 1019, 34 (Disclosing that “sleeve 325a is selected to have an inner diameter that is generally equal to the tubing string inner diameter.”).” slip op. at 12

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Petitioner’s assertions and evidence persuade us that Themig anticipates each of claims 1–13. Pet. 24–33. Patent Owner’s sole argument that Themig does not anticipate claims 1–13 is that the claims are entitled to the filing date of the ’807 application, such that Themig is not prior art to claims 1–13. PO Resp. 21. For the reasons, explained above in Section III.B, we find this argument unpersuasive.” slip op. at 16

  Patent outcomesUS 8,657,009 unpatentable
  § 102 anticipation§ 103 obviousness§ 112 disclosure
  Patents in suitUS 8,657,009
• Baker Hughes Incorporated / Baker Hughes Oilfield Operations, Inc. v. Packers Plus Energy Services, Inc.All claims unpatentable
  PTAB · Aug 29, 2017 · IPR2016-00657 · APJ Neil T Powell · IPR · Final written decision

  Claims 1–8 are unpatentable as anticipated by Themig and Flores, and obvious over Flores and Flores with Whiteley; obviousness over Echols with Thomson, with or without Whiteley, was not shown.

  RulingsFinal written decision

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner

    “Petitioner persuades us that the ’807 application does not provide written description support for the challenged claims of the ’451 patent. Aside from the Figure 6 embodiment of the ’451 patent and ’807 application, no other disclosed embodiment falls within the scope of the challenged claims. As noted in our Institution Decision and in Section III.A above, each of the challenged claims requires an apparatus or method with a sleeve (or multiple sleeves) actuatable or opened by a plug, where the sleeve (or multiple sleeves) allows the plug to pass through the sleeve in the open position. Inst. Dec. 5–6. Aside from the Figure 6 embodiment, we do not find (and Patent Owner does not argue) that any of the other embodiments teaches a sleeve or sleeves that allow a plug to pass through in the open position of the sleeve or sleeves. In view of this, Petitioner persuades us that none of the disclosed embodiments other than Figure 6 of the ’807 application could potentially provide written description support for the challenged claims of the ’451 patent.” slip op. at 11

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner

    “Petitioner persuades us that the ’807 application does not provide written description support for the challenged claims of the ’451 patent. Aside from the Figure 6 embodiment of the ’451 patent and ’807 application, no other disclosed embodiment falls within the scope of the challenged claims. As noted in our Institution Decision and in Section III.A above, each of the challenged claims requires an apparatus or method with a sleeve (or multiple sleeves) actuatable or opened by a plug, where the sleeve (or multiple sleeves) allows the plug to pass through the sleeve in the open position. Inst. Dec. 5–6. Aside from the Figure 6 embodiment, we do not find (and Patent Owner does not argue) that any of the other embodiments teaches a sleeve or sleeves that allow a plug to pass through in the open position of the sleeve or sleeves. In view of this, Petitioner persuades us that none of the disclosed embodiments other than Figure 6 of the ’807 application could potentially provide written description support for the challenged claims of the ’451 patent.” slip op. at 11

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Petitioner’s assertions and evidence persuade us that Themig anticipates each of claims 1–8. Patent Owner’s sole argument that Themig does not anticipate claims 1–8 is that the claims are entitled to the filing date of the ’807 application, such that Themig is not prior art to claims 1–8. PO Resp. 21. For the reasons, explained above in Section II.B, we find this argument unpersuasive.” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “Patent Owner persuades us that Petitioner has not provided rational underpinning for its contention that it would have been obvious to add multiple examples of Echols’ sleeve to each interval of Thomson’s system. We find unpersuasive Petitioner’s argument that neither the claims nor the challenge requires a cement casing in the well. Regardless of what the claims require, Petitioner chose Thomson and Echols as the prior art to support its obviousness contention. On this record, we are persuaded that Thomson discloses using its tubing string in a well lined with a cement casing. Thomson discloses that “[b]efore running the completion, each well was perforated with tubing-conveyed perforating (TCP) guns.” Ex. 1005, 3. Thomson also discusses “installation into the horizontal section of the liner,” and admonishes that “[t]he well in general and liner in particular needs to be properly cleaned and conditioned. This is essential for running ten packers in a horizontal liner.” Id. at 3–4. These disclosures indicate that Thomson’s system includes a cement liner in the wellbore. Consistent with this, Figure 3 of Thomson, reproduced below, appears to show a liner at the periphery of the wellbore.” slip op. at 26

  Patent outcomesUS 9,074,451 unpatentable
  § 102 anticipation§ 103 obviousness§ 112 disclosure
  Patents in suitUS 9,074,451
• General Electric Company v. United Technologies CorporationAll claims unpatentable
  PTAB · Aug 3, 2017 · IPR2016-00534 · APJ George R Hoskins · IPR · Final written decision

  Claims 1 and 4–8 are unpatentable as anticipated by Willis; claims 3 and 7 are also unpatentable as obvious over Willis and Harner, and Willis, respectively, and claim 6 over Willis and Gisslen.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “claim, “target operability line,” read in light of the ’513 patent Specification. The Specification repeatedly uses the terms “operability” and “operating.” Ex. 1001, Abstract, 1:5–7, 1:16–40, 1:46–49, 1:54–58, 3:24–37. These discussions suggest a difference in meaning between a fan’s target operability line and a fan’s operating line. In particular, the Specification uses the term “operability” in the context of optimizing “fuel consumption, engine performance, and/or fan operability margin.” Id. at Abstract, 1:16– 19, 1:24–36, 1:37–40, 1:47–49, 3:24–30. The Specification uses the term “operating line” in the context of “mov[ing],” “control[ing],” or “manipulat[ing]” the fan operating line, by changing the nozzle exit area, in order to achieve operability optimization. Id. at Abstract, 1:19–24, 1:31–32, 1:54–58, 3:30–33. Thus, the specific term “target operability line” is described as “provid[ing] desired fuel consumption, engine performance, and/or fan operability margin,” by “mov[ing] the operating line.” Id. at Abstract, 1:46–49, 1:54–58, 3:30–33. As one example, the Specification indicates one may “move the operating line toward the stall or flutter boundary of the turbofan 20 to a target operability line,” to achieve “[b]etter fuel consumption.” Id. at 3:24–37 (emphasis added). Based on these disclosures in the Specification, we maintain our construction from the Institution Decision that the broadest reasonable interpretation of a “target operability line” corresponds to a specific operating line that is defined by the series of points on a fan map at which the fan section of a turbofan engine, or turbofan, is designed to operate. The term “target” reflects that the target operability line is a fan operating line selected to optimize fuel consumption, engine performance, and/or fan operability margin. Ex. 1001, Abstract, 1:37–40, 1:47–49. The target operability line may, therefore, be the current fan operating line, or some other fan operating line achievable by changing the current nozzle exit area, thereby improving upon the fuel consumption, engine performance, and/or fan operability margin in comparison to the current fan operating line. The term “operability” reflects that the target operability line is a fan operating line selected to ensure a sufficiently safe operability margin away from the fan stall or flutter boundary. Id. at 1:16–19, 1:58–61 (referring to avoiding “unnecessarily large” fan operability margins), 3:24–30 (same).” slip op. at 12

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed

    “3. Remaining Claim Terms No further explicit constructions of any claim terms are needed to resolve the issues presented by the arguments and evidence of record. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“claim terms need only be construed ‘to the extent necessary to resolve the controversy’”) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). This includes the terms “core nacelle” and “fan nacelle” (see Pet. 18–20), “turbofan” (see id. at 20–21), “spool” (see id. at 21–22), “flow control device” (see id. at 24–25), “idle condition” (see id. at 26–27), and “throttle” (see id. at 27). See also PO Resp. 41 (“[i]t is unnecessary to construe these terms for purposes of this proceeding” and “each of these terms is clear in the context of the ’513 patent and should receive its plain meaning”).” slip op. at 17

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “A preponderance of the evidence supports Petitioner’s contention that Willis discloses achieving a target operability line, as we have construed that term supra. That is, we find the Willis UTW Engine achieves a specific operating line — either the SLS Operating Line, or the Altitude Cruise Operating Line — both of which are defined by a series of points on a fan map at which the fan section is designed to operate. We further find the Willis UTW Engine achieves the SLS Operating Line to “keep jet velocity low for reduced noise” (Ex. 1011.038), thereby providing a desired “engine performance” as described in the ’513 patent (Ex. 1001, Abstract, 1:47–49). Similarly, the Willis UTW Engine achieves the Altitude Cruise Operating Line to “increase thrust at altitude” (Ex. 1011.038), thereby providing a desired “engine performance” as described in the ’513 patent (Ex. 1001, Abstract, 1:47–49). Patent Owner’s rebuttal relies on a claim construction that we have rejected for reasons provided above.” slip op. at 23

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Decided for petitioner

    “After weighing the arguments presented, we do not perceive any persuasive reason why we should not adopt Dr. Attia’s definition of the level of ordinary skill, with which Dr. Benini agrees. Patent Owner fails to provide a substantive rationale for why Dr. Attia’s definition might be deficient. We appreciate that our rules proscribe incorporating arguments by reference. 37 C.F.R. § 42.6(a)(3). Nonetheless, under the circumstances of this case, in which the amount of incorporated material is very small (one short paragraph) and further is very clearly set forth in the evidence of record (Ex. 1003 ¶ 4), we decide to adopt Dr. Attia’s definition of the level of ordinary skill, which seems reasonable. See 37 C.F.R. § 42.5(b).” slip op. at 32

  Patent outcomesUS 8,365,513 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,365,513
• General Electric Company v. United Technologies CorporationNo claims unpatentable
  PTAB · Aug 2, 2017 · IPR2016-00526 · APJ Hyun J Jung · IPR · Final written decision

  Claims 4–20 were not shown unpatentable over Young or McGarry because the evidence did not establish the proposed turbine heat-pipe modifications or a motivation to make them.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “In summary, we find that the evidence cited by Patent Owner indicates that the ordinary and customary meaning of “turbine flowpath,” as would be understood by one of ordinary skill in the art in the context of the entire disclosure of the ’807 patent is “a section of the turbine through which combustion gases flow.” Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2011) (“Even under the broadest reasonable interpretation, the Board’s construction ‘cannot be divorced from the specification and the record evidence,’ and ‘must be consistent with the one that those skilled in the art would reach.’”). Accordingly, based on the complete record before us, we interpret “turbine flowpath” to mean “a section of the turbine through which combustion gases flow,” and we determine that “turbine flowpath” does not encompass a flowpath outside of a turbine.” slip op. at 18

  • Skill levelOther

    “Attia Decl. ¶ 4. Patent Owner argues that Petitioner “improperly define[s] the level of skill not to require heat pipe experience.” PO Resp. 14. In this case, the submitted prior art itself amply reflects an appropriate level of skill. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific findings on the level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown’”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). Furthermore, the asserted differences in the level of skill do not affect our ultimate findings and conclusions. Patent Owner also argues that Dr. Attia has no relevant experience with heat pipes, Dr. Faghri is a “leader in the field of heat pipe design,” and Dr. Attia’s testimony should not outweigh Dr. Faghri’s testimony. PO Resp. 11–15. As discussed below in more detail, we consider each declarant’s testimony against the full record and find it to be unpersuasive in some instances. If the testimony is in conflict with other evidence, we give it appropriate weight. See, e.g., Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (holding the Board has discretion to give more weight to one item of evidence over another “unless no reasonable trier of fact could have done so”); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”).” slip op. at 20

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “likely would transfer more heat to the bypass flowpath, the full record indicates that Petitioner provides insufficient argument or evidence as to how “significant gains in thrust production” can be achieved in view of the effects on the turbine explicitly described by Young. In its description of “cooling of turbine nozzle guide vanes,” Young teaches to limit the amount of heat taken from these vanes to “avoid cooling the working fluid flowing through the vanes, because this would adversely affect the efficiency of the downstream stages of the turbine.” Ex. 1005, 3:48–60; see also Spakovszky Decl. ¶¶ 38–44; Ex. 2020, 96:1–3 (Dr. Attia testifying that “[i]f you extract too much heat, you then do not have enough heat to extract the amount of work to spin the compressor and the fan”), 96:8–13 (Dr. Attia testifying that “[i]f you don’t give the turbine all the thermal energy it needs, it cannot produce the required mechanical work” and “you have to be very careful not to do that while attempting to cool the turbine”). Petitioner also notes that Young recognizes “cooling of the hot gas flow upstream of the last turbine stage can reduce the amount of work performed by the turbine” but contends it would not impact adversely turbine efficiency. Pet. Reply 10–11 (citing Attia Reply Decl. ¶ 6). Petitioner cites to paragraph 6 of the Attia Reply Declaration, which explains without evidentiary support that, because Young discloses “waste heat,” heat in the turbine can be transferred without adversely impacting turbine efficiency, in contradiction to Young’s express teachings to limit the amount of heat taken from turbine nozzle guide vanes (see Ex. 1005, 3:55– 60). Young teaches heat transfer to the bypass flow can increase thrust but also teaches cooling turbine nozzle guide vanes adversely affects downstream stages of a turbine that, in turn, would adversely affect bypass flow so as to reduce thrust. See Ex. 1005, 3:48–60, 4:71–74. Patent Owner’s Declarant testifies with support from a textbook (Exhibits 1014 and 20143) that Petitioner’s proposed modification may not increase thrust. Spakovszky Decl. ¶¶ 45–57 (citing Ex. 1014, 21, 28, 57–59; Ex. 2014, 6, 12, 10). We are persuaded by Dr. Spakovszky’s conclusion that “[i]f one were to move Young’s heat exchanger upstream into the turbine stages . . . there would be less energy available to spin the turbine wheel and therefore to spin the fan” which “would reduce the amount of thrust being generated by the fan.” Spakovszky Decl. ¶ 54. In view of the full record before us, Petitioner provides insufficient argument and evidence that the heat taken from turbine nozzle guide vanes can increase thrust without adversely affecting downstream turbine stages. Petitioner provides insufficient argument and evidence that transferring heat from a vane in the turbine to the bypass flow would produce enough thrust to compensate for the reduction in thrust from a less efficient turbine so as to result in “significant gains in thrust production.” Moreover, the full record provides insufficient argument and evidence that Petitioner’s proposed modification of Young would produce any more thrust than Young’s unmodified heat pipes in its exhaust flow.” slip op. at 29

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away foundDecided for patent owner

    “likely would transfer more heat to the bypass flowpath, the full record indicates that Petitioner provides insufficient argument or evidence as to how “significant gains in thrust production” can be achieved in view of the effects on the turbine explicitly described by Young. In its description of “cooling of turbine nozzle guide vanes,” Young teaches to limit the amount of heat taken from these vanes to “avoid cooling the working fluid flowing through the vanes, because this would adversely affect the efficiency of the downstream stages of the turbine.” Ex. 1005, 3:48–60; see also Spakovszky Decl. ¶¶ 38–44; Ex. 2020, 96:1–3 (Dr. Attia testifying that “[i]f you extract too much heat, you then do not have enough heat to extract the amount of work to spin the compressor and the fan”), 96:8–13 (Dr. Attia testifying that “[i]f you don’t give the turbine all the thermal energy it needs, it cannot produce the required mechanical work” and “you have to be very careful not to do that while attempting to cool the turbine”). Petitioner also notes that Young recognizes “cooling of the hot gas flow upstream of the last turbine stage can reduce the amount of work performed by the turbine” but contends it would not impact adversely turbine efficiency. Pet. Reply 10–11 (citing Attia Reply Decl. ¶ 6). Petitioner cites to paragraph 6 of the Attia Reply Declaration, which explains without evidentiary support that, because Young discloses “waste heat,” heat in the turbine can be transferred without adversely impacting turbine efficiency, in contradiction to Young’s express teachings to limit the amount of heat taken from turbine nozzle guide vanes (see Ex. 1005, 3:55– 60). Young teaches heat transfer to the bypass flow can increase thrust but also teaches cooling turbine nozzle guide vanes adversely affects downstream stages of a turbine that, in turn, would adversely affect bypass flow so as to reduce thrust. See Ex. 1005, 3:48–60, 4:71–74.” slip op. at 29

  Patent outcomesUS 7,966,807 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 7,966,807

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