- PTAB · Jan 14, 2026 · IPR2025-00632 · APJ Mitchell G Weatherly · IPR · Remand
On remand, the Board reinstituted review of all challenged claims on all grounds after finding Petitioner sufficiently explained its differing claim-construction positions.
RulingsRemand decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Id. The Director neither addressed the merits of Petitioner’s challenges nor found that our prior consideration of those merits was faulty. Accordingly, we understand that we need not reconsider our conclusion that Petitioner had demonstrated a reasonable likelihood of proving that claims 1, 2, 7–9, 11, 12, and 20–24 were unpatentable or that the merits of patentability set forth in the Petition warranted institution of inter partes review.” slip op. at 5
- BurdenDecided for petitioner
“The question before us, therefore, is whether the Petitioner’s proffered explanation that it has proposed a different claim interpretation before the Board because the District Court may decline to adopt the narrower claim interpretations it advocates there is sufficient. We find that Petitioner’s explanation is sufficient because it follows the Director’s exemplary logic. Whether a district court has already or might in the future decline to adopt constructions that a petitioner proposes in related district court litigation merely reflects the timing of when a dispute over claim interpretation will be resolved. The Director and Patent Owner both recognize that, to resolve the dispute over claim interpretation that exists here, a decision-maker must determine “a single claim construction that best captures the true meaning of the patent claim.” Remand 4; PO Remand Br. 3. Based on the record presented by the parties to date in this proceeding, no dispute exists that the disputed claim terms mean what Patent Owner says they mean in the Litigation. Accordingly, we find that, at this stage of the proceeding, it is undisputed that Patent Owner’s interpretations of the claim terms represent the “single claim construction that best captures the true meaning of the patent claim.”8 Under that claim interpretation, we” slip op. at 8
NonePatents in suitUS 11,835,421 - PTAB · Jun 25, 2025 · IPR2024-01280 · APJ Jo-Anne M Kokoski · IPR · Remand
On remand, the Board denied institution under § 314(a), finding the Fintiv factors favored denial despite declining to deny under § 325(d).
RulingsRemand decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“Other than initials on a lengthy IDS, nothing in the record indicates that the Examiner substantively considered Takeuchi, Kim, Pienemann, or among over 1,000 other references listed on the IDS, which, as noted in the Director Review Decision, “is over 40 times the size of a typical IDS.” Pet. Remand Br. 5–6; DR Dec. 7 n.3 (citing Setting and Adjusting Patent Fees During Fiscal Year 2025, 89 FR 91898 at 91924 (Nov. 20, 2024)); Ex. 1002, 228–284. Petitioner also shows that the applicant did not respond to the Examiner’s request that the applicant specifically point out “any particular reference or portion of a reference in the [IDS] which the examiner should take [sic] pay particular attention to.” Ex. 1002, 174, 295– 302.” slip op. at 13
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“Patent Owner is likely correct that the ITC would not have been inclined to grant a stay if one had been requested at the time the Institution Decision issued. Moreover, the ITC conducted a full evidentiary hearing a month after the Institution Decision issued, and the target date for the ITC’s final determination is several months before the projected statutory deadline for the Board’s final written decision. PO Remand Br. 7. Accordingly, we determine that Fintiv factor 1 weighs in favor of discretionary denial. See also Klein Tools, Inc. v. Milwaukee Electric Tool Corp., IPR2024-01400, Paper 22 at 2 (PTAB June 9, 2025) (Acting Director Stewart determining that Fintiv factor 1 weighs in favor of discretionary denial when the ITC investigation is unlikely to be stayed, the ITC already conducted a full evidentiary hearing, and the ITC final determination is expected to issue six months before the statutory deadline for the Board’s final written decision).” slip op. at 19
Discretionary denialcites PhillipsPatents in suitUS 11,925,202 - PTAB · Jun 25, 2025 · IPR2024-01406 · APJ Jo-Anne M Kokoski · IPR · Remand
On remand, the Board denied institution of review of claims 1, 3, 4, 8–13, and 15 under § 314(a), finding the Fintiv factors favored discretionary denial.
RulingsRemand decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“stay or evidence exists that one may be granted if a proceeding is instituted.” Fintiv, Paper 11 at 6. A stay of litigation pending resolution of an inter partes review allays concerns about inefficiency and duplication of efforts, and strongly weighs against exercising our authority to deny institution. Fintiv, Paper 11 at 6. The Guidance Memo states that “the Board will apply the Fintiv factors when there is a parallel proceedings at the International Trade Commission.” Guidance Memo 2. Patent Owner asserts that a stay of the ITC Investigation had not been requested at the time of the Institution Decision,7 and argues that “the ITC does not stay investigations pending IPR.” PO Supp. Br. 4. Patent Owner also notes that the Institution Decision issued “just days before the ITC evidentiary hearing.” Id. Accordingly, Patent Owner argues that this factor favors denial. Id. Patent Owner is likely correct that the ITC would not have been inclined to grant a stay if one had been requested at the time the Institution Decision issued. Moreover, the ITC conducted a full evidentiary hearing less than three weeks after the Institution Decision issued, and the target date for the ITC’s final determination is four months before the statutory deadline for the Board’s final written decision. PO Supp. Br. 5. Accordingly, we” slip op. at 9
Discretionary denialPatents in suitUS 11,925,202 - PTAB · Apr 27, 2023 · IPR2022-00074 · APJ George R Hoskins · IPR · Final written decision
Original claims 1–13 were canceled by amendment; proposed substitute claims 14–26 were denied because “high pressure” is indefinite under § 112.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“original claims 1–13 of the ’732 patent, which are all of the claims challenged in the Petition. See Mot. Caption (“NON-CONTINGENT”), 1 (stating the motion is “Non-Contingent”), 2 (“The claim listing cancels original claims 1–13 . . . .”); Mot. App. A, 1 (stating original claims 1–13 are “Cancelled”); Pet. 17. Petitioner does not oppose this portion of the Motion to Amend. See generally Mot. Opp. Therefore, we grant Patent Owner’s request to cancel original claims 1–13. As a result, we do not reach the unpatentability grounds asserted in the Petition against these original claims.” slip op. at 5
- Skill levelSkill level board ownDecided for petitioner
“b) Person of Ordinary Skill in the Art Petitioner contends a person having ordinary skill in the art pertaining to the ’732 patent would have either: “(1) a Bachelor of Science in Mechanical Engineering, Electrical Engineering, Petroleum Engineering or an equivalent field as well as at least two years of academic or industry experience in the oil and gas industry, including well drilling, completion, or production”; or “(2) at least four years of industry experience in the oil and gas industry, including well drilling, completion, or production.” Pet. 13. Patent Owner utilizes the same formulation of ordinary skill. See Mot. 13. 2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. The parties’ agreed-upon formulation of ordinary skill is consistent with the level of skill reflected in the ’732 patent and the prior art of record. We therefore apply it in the present Decision.” slip op. at 10
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“witnesses cannot agree on a numerical definition of “high pressure.” Mr. Marscher says high pressure is between 5,000 psi and 15,000 psi (see Ex. 1030, 111:1–112:3), whereas Mr. Schaaf says high pressure is between 8,000 psi and 12,000 psi and specifically disagrees with Mr. Marscher’s testimony that high pressure can be below 8,000 psi (see Ex. 1031, 43:6–44:13). Although there are overlapping values in the witness testimony, we agree with Petitioner that the testimony does not evidence clear boundaries for how an ordinarily skilled artisan would interpret “high pressure.” See Mot. Sur-reply 6 (citing Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 901–02 (2014); Interval Licensing, 766 F.3d at 1371). Thus, the testimony of Patent Owner’s own witnesses is contrary to Patent Owner’s position that an ordinarily skilled artisan would have understood the meaning of “high pressure.” Furthermore, neither Mr. Marscher nor Mr. Schaaf cites any objective evidence to support their respective notions of what “high pressure” might be, in the context of hydraulic fracturing. For example, neither witness cites to any published industry standards to support their respective opinions. This lack of objective evidentiary support weakens the persuasiveness of both witness’s testimony on this issue, especially because their opinions conflict with each other. We are instead persuaded by the testimony of Petitioner’s witness, Dr. Durham, who testifies that “[t]here is [no] general consensus about the precise boundaries of the term ‘high pressure,’ and different engineers can reasonably come to different conclusions as to the meaning of the term absent further guideposts.” Ex. 1036 ¶ 17; see also id. ¶ 19 (“There is no universally accepted definition of ‘high pressure.’”). Dr. Durham further testifies that “what might be sufficiently ‘high’ pressure for one fracturing application and according to one [person of ordinary skill in the art] may be not ‘high’ enough in another fracturing application and to another [such person].” Id. ¶ 18; see also id. ¶ 19 (“Merely stating that a pump fractures a formation says little to nothing about whether that pump should be deemed ‘high pressure’ or ‘not high pressure.’”).” slip op. at 30
- BurdenUnpatentable
“The intrinsic record does not “provide objective boundaries for those of skill in the art” to determine whether a given pressure is “high pressure” as recited in the proposed substitute claims. See Interval Licensing, 766 F.3d at 1370–71. Nor does the intrinsic record provide guidance to clarify the meaning of “high pressure.” As noted above, the ’732 patent refers only to “high pressure” without qualification or explanation as to how “high pressure” is determined. The prosecution history does not address “high pressure” in any meaningful way and, therefore, also fails to explain what pressures are “high” pressures. See generally Ex. 1003. Thus, the intrinsic record does not explain adequately what pressure(s) qualify as “high pressure,” nor differentiate “high pressure” from other pressures at which hydraulic fracturing can be performed.” slip op. at 27
Claim construction§ 112 disclosurecites NautilusPatents in suitUS 10,254,732 - PTAB · Feb 1, 2023 · IPR2021-01315 · APJ Lynne H Browne · IPR · Final written decision
The Board cancelled claims 1–19 and denied substitute claims 20–38 because their 5,000–15,000 psi limitation added new matter without written-description support.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“2. Level of Ordinary Skill in the Art Petitioner contends a person having ordinary skill in the art pertaining to the ’500 patent would have either: (1) a Bachelor of Science in Mechanical Engineering, Electrical Engineering, Petroleum Engineering or an equivalent field as well as at least 2 years of academic or industry experience in the oil and gas industry, including well drilling, completion, or production; or (2) at least four years of industry experience in the oil and gas industry, including well drilling, completion, or production. Pet. 13 (citing Ex. 1003 ¶ 19). Patent Owner utilizes Petitioner’s formulation of ordinary skill. See Mot. 11–12. Petitioner’s formulation of ordinary skill is consistent with the level of skill reflected in the ’500 patent and the prior art of record. We therefore apply it in the present Decision.” slip op. at 12
- Expert testimonyPatent owner expert discountedDecided for petitioner
“for several reasons. First, as seen from the deposition testimony quoted above, Patent Owner’s own witnesses cannot agree on a numerical definition of “high pressure.” Mr. Marscher says high pressure is between 5,000 psi and 15,000 psi (see Ex. 1033, 111:1–112:3), whereas Mr. Schaaf says high pressure is between 8,000 psi and 12,000 psi and specifically disagrees with Mr. Marscher’s testimony that high pressure can be below 8,000 psi (see Ex. 1030, 43:6–44:13). Thus, the testimony of Patent Owner’s own witnesses is contrary to Patent Owner’s position that a person of ordinary skill in the art would have understood that the ’694 Application’s disclosure of “high pressure” pumping demonstrates possession of a specific numerical range of pumping pressures. Second, neither Mr. Marscher nor Mr. Schaaf cites any objective evidence to support their respective notions of what “high pressure” might be, in the context of hydraulic fracturing. For example, neither cites to any published industry standards to support their respective opinions. This lack of objective evidentiary support weakens the persuasiveness of both witness’s testimony on this issue, especially because their opinions conflict with each other.” slip op. at 19
- 112 supportMotion to amend, deniedDenied
“specification that did not expressly claim that range, did not state either of the two end values (40% and 60%), and did not disclose the range (40– 60%). Indivior, 18 F.4th at 1325 (claim 1), 1327–30 (discussing claim 1). In particular: “In the case of a claimed range, a skilled artisan must be able to reasonably discern a disclosure of that range” in the specification at issue. Id. at 1328. We conclude Patent Owner’s reliance on the testimony of Mr. Marscher and Mr. Schaaf that a skilled artisan could reasonably discern the numerical pressure range at issue here, based on the bare disclosure in the ’694 Application of “high pressure” pumping, is not persuasive for the reasons provided above. The Indivior decision also considered a narrower claim directed to a film comprising “about 48.2 wt % to about 58.6 wt % of the water-soluble polymetric matrix,” and concluded that it also did not have written description support in the specification at issue, even though the specification provided examples of films having the two end point values of the range (48.2% and 58.6%). See Indivior, 18 F.4th at 1325 (claim 7), 1329–30 (discussing claim 7). The Court concluded that finding written description support on those facts would “amount[] to cobbling together numbers after the fact” whereas “[a] written description sufficient to satisfy the requirement of the law requires a statement of an invention, not an invitation to go on a hunting expedition to patch together after the fact a synthetic definition of an invention.” Id. at 1329. We conclude in the present case that Patent Owner’s witnesses went on a hunting expedition which conflicts with the Indivior decision.” slip op. at 20
- BurdenNot reached
“E. Petitioner’s Unpatentability Grounds In light of our determination above that proposed substitute claims 20–38 lack written description support in the application that issued as the ’500 patent, we do not reach the grounds of unpatentability set forth in Petitioner’s Opposition for these claims. See Mot. Opp. 5–6 (listing the grounds).” slip op. at 21
NonePatents in suitUS 9,893,500 - PTAB · Jan 24, 2023 · IPR2021-01066 · APJ George R Hoskins · IPR · Final written decision
The Board cancelled original claims 1–20 and denied substitute claims 21–40 because their numerical pressure ranges added new matter.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“The test for new matter is whether the original application’s disclosure “reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc); see also Senju Pharm. Co. v. Apotex Inc., 746 F.3d 1344, 1352 (Fed. Cir. 2014) (citing Ariad as providing the test for determining new matter under 35 U.S.C. § 132(a)). We perform “an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art,” to determine whether it demonstrates possession of the claimed subject matter. Ariad, 598 F.3d at 1351.” slip op. at 11
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateDenied
“The test for new matter is whether the original application’s disclosure “reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc); see also Senju Pharm. Co. v. Apotex Inc., 746 F.3d 1344, 1352 (Fed. Cir. 2014) (citing Ariad as providing the test for determining new matter under 35 U.S.C. § 132(a)). We perform “an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art,” to determine whether it demonstrates possession of the claimed subject matter. Ariad, 598 F.3d at 1351.” slip op. at 11
- Skill levelSkill level board ownDecided for petitioner
“to the ’711 patent would have either: “(1) a Bachelor of Science in Mechanical Engineering, Electrical Engineering, Petroleum Engineering or an equivalent field as well as at least 2 years of academic or industry experience in the oil and gas industry, including well drilling, completion, or production”; or (2) “at least four years of industry experience in the oil and gas industry including well drilling, completion, or production.” Pet. 18. Patent Owner utilizes the same formulation of ordinary skill. See Mot. 10–11. 2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. The parties’ agreed-upon formulation of ordinary skill is consistent with the level of skill reflected in the ’711 patent and the prior art of record. We therefore apply it in the present Decision.” slip op. at 11
- Expert testimonyPatent owner expert discountedDecided for petitioner
“disclosures of the ’656 Application into demonstrating possession of the numerical pressure ranges recited in proposed substitute claims 21 and 33 is unavailing, for several reasons. First, as seen from the deposition testimony quoted above, Patent Owner’s own witnesses cannot agree on a numerical definition of “high pressure.” Mr. Marscher says high pressure is between 5,000 psi and 15,000 psi (see Ex. 1020, 111:1–112:3), whereas Mr. Schaaf says high pressure is between 8,000 psi and 12,000 psi and specifically disagrees with Mr. Marscher’s testimony that high pressure can be below 8,000 psi (see Ex. 2014, 43:6–44:13). Thus, the testimony of Patent Owner’s own witnesses is contrary to Patent Owner’s position that a person of ordinary skill in the art would have understood that the ’656 Application’s disclosure of “high pressure” pumping demonstrates possession of a specific numerical range of pumping pressures. Second, neither Mr. Marscher nor Mr. Schaaf cites any objective evidence to support their respective notions of what “high pressure” might be, in the context of hydraulic fracturing. For example, neither cites to any published industry standards to support their respective opinions. This lack of objective evidentiary support weakens the persuasiveness of both witnesses’ testimony on this issue, especially because their opinions conflict with each other.” slip op. at 18
§ 103 obviousness§ 112 disclosurePatents in suitUS 10,020,711 - PTAB · Jan 17, 2023 · IPR2021-01036 · APJ Lynne H Browne · IPR · Final written decision
The Board granted cancellation of original claims 1–13, denied substitute claims 14–19 and 21 for new matter, and denied claims 20 and 22–26 as unpatentable.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“V. SUMMARY OF CONCLUSIONS We grant Patent Owner’s non-contingent request to cancel original claims 1–13 of the ’728 patent, and we deny Patent Owner’s request to add proposed substitute claims 14–26 to the ’728 patent.16 Thus, the result of this Decision is summarized by the following table. Motion to Amend Outcome Claim(s) Original Claims Canceled by Amendment 1–13 Substitute Claims Proposed in the Amendment 14–26 Substitute Claims: Motion to Amend Granted Substitute Claims: Motion to Amend Denied 14–26 Substitute Claims: Not Reached VI. ORDER In consideration of the foregoing, it is hereby: ORDERED that Patent Owner’s Motion to Amend is granted as to the non-contingent request to cancel original claims 1–13 of the ’728 patent; 16 Should Patent Owner wish to pursue amendment of the challenged claims in a reissue or reexamination proceeding subsequent to the issuance of this Decision, we draw Patent Owner’s attention to the April 2019 Notice Regarding Options for Amendments by Patent Owner Through Reissue or Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg. 16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application or a request for reexamination of the challenged patent, we remind Patent Owner of its continuing obligation to notify the Board of any such related matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2). FURTHER ORDERED that Patent Owner’s Motion to Amend is” slip op. at 39
- Skill levelSkill level petitioner adoptedDecided for petitioner
“2. Level of Ordinary Skill in the Art Petitioner contends a person having ordinary skill in the art pertaining to the ’728 patent would have either: (1) a Bachelor of Science in Mechanical Engineering, Electrical Engineering, Petroleum Engineering or an equivalent field as well as at least two years of academic or industry experience in the oil and gas industry, including well drilling, completion, or production; or (2) at least four years of industry experience in the oil and gas industry, including well drilling, completion, or production. 2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. Pet. 14–15. Patent Owner utilizes Petitioner’s formulation of ordinary skill. See Mot. 12–13. Petitioner’s formulation of ordinary skill is consistent with the level of skill reflected in the ’728 patent and the prior art of record. We therefore apply it in the present Decision. 3.” slip op. at 12
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateDenied
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“We see no evidence of improper hindsight. The Robinson/Broussard/ Henry combination does not disclose the claimed load box. Morris discloses mobile source of electricity 103 to supply electric power to fracturing equipment within mobile fracturing system 103 that includes at least one switchgear transport 112, a plurality of drive transports 104, at least one auxiliary power transport 106, at least one blender transport 110, at least one data van 114 and a plurality of fracturing pump transports 108 that deliver fracturing fluid through wellhead 101 to subsurface geological formations. Ex. 1037 ¶ 43. Morris discloses that “switch gear transport 112 may comprise a plurality of electrical disconnect switches, fuses, transformers, and/or circuit protectors to protect the fracturing equipment.” Id. Dr. Ehsani, Petitioner’s expert, testifies that “the switchgear (with switches, fuses, and circuit protectors) described in Morris is one example of a ‘load box’” comparing it to the ’728 patent’s disclosure that “tie ins for devices that operate at the stepped down voltage” are exemplary load boxes. Ex. 1041 ¶ 60 (citing Ex. 1001, 5:50–52). Dr. Ehsani further testifies that a person of ordinary skill in the art “would have recognized that lube oil heaters would be part of the fracturing pump transport or the additional auxiliary equipment to which power would be directed from switchgear.” Id. We credit Dr. Ehsani’s unrebutted testimony, which is supported by Morris’ disclosures discussed above. For these reasons, we determine that Petitioner has shown, by a preponderance of the evidence, that proposed substitute claim 20 is unpatentable over the combined teachings of Robinson, Broussard, Henry, and Morris.” slip op. at 35
§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 9,611,728 - PTAB · Jan 4, 2023 · IPR2021-01034 · APJ George R Hoskins · IPR · Final written decision
The Board cancelled original claims 1–11 and denied substitute claims 12–22 because their numerical pressure ranges introduced new matter unsupported by the original disclosure.
RulingsFinal written decision- 112 supportMotion to amend, deniedDenied
“The test for new matter is whether the original application’s disclosure “reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc); see also Senju Pharm. Co. v. Apotex Inc., 746 F.3d 1344, 1352 (Fed. Cir. 2014) (citing Ariad as providing the test for determining new matter under 35 U.S.C. § 132(a)). We perform “an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art,” to determine whether it demonstrates possession of the claimed subject matter. Ariad, 598 F.3d at 1351.” slip op. at 11
- Skill levelSkill level board ownDecided for petitioner
“2. Level of Ordinary Skill in the Art Petitioner contends a person having ordinary skill in the art pertaining to the ’308 patent would have either: “(1) a Bachelor of Science in Mechanical Engineering, Electrical Engineering, Petroleum Engineering or an equivalent field as well as at least 2 years of academic or industry experience in the oil and gas industry, including well drilling, completion, or production”; or (2) “at least four years of industry experience in the oil and gas industry, including well drilling, completion, or production.” Pet. 24–25. Patent Owner utilizes the same formulation of ordinary skill. See Mot. 8. The parties’ agreed-upon formulation of ordinary skill is consistent with the level of skill reflected in the ’308 patent and the prior art of record. We therefore apply it in the present Decision.” slip op. at 11
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“the ’085 Application into demonstrating possession of the numerical pressure ranges recited in proposed substitute claims 12 and 16 is unavailing, for several reasons. First, as seen from the deposition testimony quoted above, Patent Owner’s own witnesses cannot agree on a numerical definition of “high pressure.” Mr. Marscher says high pressure is between 5,000 psi and 15,000 psi (see Ex. 1059, 111:1–112:3), whereas Mr. Schaaf says high pressure is between 8,000 psi and 12,000 psi and specifically disagrees with Mr. Marscher’s testimony that high pressure can be below 8,000 psi (see Ex. 1061, 43:6–44:13). Thus, the testimony of Patent Owner’s own witnesses is contrary to Patent Owner’s position that a person of ordinary skill in the art would have understood that the ’085 Application’s disclosure of “high pressure” pumping demonstrates possession of a specific numerical range of pumping pressures. Second, neither Mr. Marscher nor Mr. Schaaf cites any objective evidence to support their respective notions of what “high pressure” might be, in the context of hydraulic fracturing. For example, neither cites to any published industry standards to support their respective opinions. This lack of objective evidentiary support weakens the persuasiveness of both witness’s testimony on this issue, especially because their opinions conflict with each other. We are instead persuaded by the testimony of Petitioner’s witness Dr. Durham that “[t]he mere disclosure of ‘high pressure’ in the [’085 Application] specification[] . . . does not allow a [person of ordinary skill in the art] to recognize the ranges of pressures in” proposed substitute claims 12 and 16. Ex. 1079 ¶ 24. Further according to Dr. Durham: “What might be ‘high’ pressure according to one POSITA may not be ‘high’ pressure to another POSITA” and “[t]here is no universally accepted definition of ‘high pressure,’” as demonstrated by the testimony of Mr. Marscher and Mr. Schaaf and the lack of objective evidentiary support for their respective opinions. Id.” slip op. at 18
- ExcludeNot reached
“V. PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE Patent Owner’s Motion to Exclude Evidence seeks to exclude evidence relating to Petitioner’s reliance on the S&S Proposal6 as a prior art 6 Stewart & Stevenson, Electric Fracturing Pump: Commercial Proposal, Quotation No., Rev. 4 (July 31, 2012) (Ex. 1056). reference to challenge the patentability of proposed substitute claims 11–22 under 35 U.S.C. § 103. See Papers 57 and 58 (moving to exclude Exs. 1071–1073). As discussed above, we do not reach these grounds of unpatentability, so we do not need to rule on the Motion to Exclude.” slip op. at 23
NonePatents in suitUS 10,337,308 - PTAB · Jan 4, 2023 · IPR2021-01032 · APJ George R Hoskins · IPR · Final written decision
The Board canceled original claims 1–14 and 17–21, denied substitute claims 22–40 for adding new matter, and did not reach the unpatentability grounds.
RulingsFinal written decision- 112 supportMotion to amend, deniedDenied
“Upon review of the foregoing, we agree with Petitioner’s position that the numerical pressure ranges recited in proposed substitute claims 22, 31, and 38 each introduce new matter into the ’689 Application. We have reviewed the ’689 Application disclosures cited by Patent Owner. See Ex. 1005, 19–40 (¶¶ 5, 7, 10, 11, 16–18, 20, 25–28, 31, 33, 35, Abstract, Figs. 1–2). These disclosures pertinently demonstrate possession only of “a system for hydraulically fracturing an underground formation” that is “configured to pump fluid into the wellbore at high pressure so that the fluid passes from the wellbore into the formation, and fractures the formation.” Ex. 1005, 22 (¶ 5) (emphases added); see also id. at 22–23 (¶ 7) (“pumping the hydraulic fracturing fluid at high pressure to crack the formation” (emphasis added)); id. at 24 (¶ 11) (“pumping fracturing fluid into the well with an electrically powered pump at a high pressure so that the fracturing fluid enters and cracks the formation” (emphasis added)); id. at 32–33 (¶ 33) (“The fracturing fluid can be pumped into the wellbore at a high enough pressure that the fracturing fluid cracks the formation, and enters into the cracks.” (emphasis added)). Thus, the ’689 Application demonstrates possession of pumping fluid at a “high pressure” to fracture an underground formation, but does not specify any particular numerical ranges of pressures that might correspond to the “high pressure,” including the three ranges specified in proposed substitute claims 22, 31, and 38. See, e.g., Tr. 44:11– 22.” slip op. at 18
- ExcludeNot reached
“V. PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE Patent Owner’s Motion to Exclude Evidence seeks to exclude evidence relating to Petitioner’s reliance on the S&S Proposal7 as a prior art reference to challenge the patentability of proposed substitute claims 22–40 under 35 U.S.C. § 103. See Papers 58 and 59 (moving to exclude Exs. 1071–1073). As discussed above, we do not reach these grounds of unpatentability, so we do not need to rule on the Motion to Exclude.” slip op. at 25
- Skill levelSkill level petitioner adoptedDecided for petitioner
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
NonePatents in suitUS 9,410,410 - PTAB · Mar 4, 2016 · IPR2014-01368 · APJ Kalyan K Deshpande · IPR · Final written decision
Claims 1, 2, 5, and 10 of the ’469 patent were held unpatentable; the remaining challenged claims were not shown unpatentable because the cited art did not disclose the required current connection status.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“In Straight Path, the Federal Circuit held that the claim language “is connected to the computer network” has a facially clear meaning, that “the query transmitted to the server seeks to determine whether the second unit is connected at that time, i.e., connected at the time that the query is sent.” Straight Path, 806 F.3d at 1360.11 The Federal Circuit held that the query asks “whether the device ‘is’ connected, not whether it was connected or whether it is still registered as being connected even if that registration information is no longer accurate.” Id. The Federal Circuit further explained that “[i]t is not a reasonable interpretation of the claim language . . . to say that it is satisfied by a query that asks only for registration information, regardless of its current accuracy.” Id. The Federal Circuit explained, “[w]hen claim language has as plain a meaning on an issue as the language does here, leaving no genuine uncertainties on interpretive questions relevant to the case, it is particularly difficult to conclude that the specification reasonably supports a different meaning. The specification plays a more limited role than in the common situation where claim terms are uncertain in meaning in relevant respects.” Id. at 1361. Accordingly, the Federal Circuit construed the limitation “is connected to the computer network” as “is connected to the computer network at the time the query is transmitted to the server.” Id. at 1363.” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“and NetBIOS fail to determine whether a computer or process is connected to the computer network. PO Resp. 35, 49–51. In view of our construction of this claim limitation, we agree with Patent Owner. Microsoft Manual discloses that once a computer is registered with the WINS server (which is a NetBIOS Name Server (NBNS)) as active and on-line, the WINS server maintains a database of names and addresses as active and on-line by (1) releasing names once a computer is shut down properly and (2) requiring a renewal time period in which a computer must reregister. Ex. 1012, 62– 63, 68–69. Microsoft Manual discloses that in response to User Datagram Protocol (UDP) name queries, “a mapping in the database does not ensure that the related device is currently running.” Id. at 68. Microsoft Manual further explains that a “local WINS database should periodically be cleared of released entries and old entries that were registered at another WINS server but did not get removed from this WINS database for some reason.” Id. at 150. In other words, Microsoft Manual discloses that the WINS database may include entries of computers that are not currently connected to the WINS network. Accordingly, a query to as to whether a second process “is connected to the computer network” in Microsoft Manual will not determine whether the second process is connected to the WINS network at the time that the query is transmitted to the server. As discussed above in our claim construction analysis above (see Section I.E.1), a query as to whether a process “is connected to a computer network” or has an “on-line” status asks “whether the device ‘is’ connected, not whether it was connected or whether it is still registered as being connected even if that registration information is no longer accurate. It is not a reasonable interpretation of the claim language . . . to say that it is satisfied by a query that asks only for registration information, regardless of its current accuracy.” Straight Path, 806 F.3d at 1360. Microsoft Manual discloses that the WINS server has information that a process “was” connected to the computer network, and that information may no longer be accurate. See Ex. 1012, 68, 150. As such, we determine that Microsoft Manual does not disclose the claimed “is connected to the computer network,” “on-line status,” or “is accessible,” as construed herein. Similarly, NetBIOS discloses a registration process for resources or nodes to receive a unique name by registering a name. Ex. 1014, 379. During a name query (discovery), a datagram is sent requesting the name and address of another resource. Id. at 396. The NBNS maintains a database of resource names through explicit name deletion, where the node specifies a deletion function and implicit name deletion, which occurs when a node ceases operation. Id. at 379. NetBIOS explains that implicit name deletion “is a frequent occurrence.” Id. Implicit name deletion is managed by assigning nodes a specified lifetime for registered names, where a name is silently released if a node fails to refresh the registered name before the lifetime expires. Id. NetBIOS further discloses a mechanism where the NBNS may correct the information stored after an incorrect response is provided to a requesting node. See id. at 409. However, similar to Microsoft Manual, NetBIOS discloses that the information stored by the NBNS may be incorrect, and, therefore, will not determine whether a second process is connected to the computer network at the time that the query is transmitted to the server. Therefore, NetBIOS also does not disclose the claimed “is connected to the computer network,” “on-line status,” or “is accessible.” Given that the combination of Microsoft Manual and NetBIOS fails to teach or suggest the claims as construed, we need not reach the remaining arguments presented by Petitioner and Patent Owner.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Petitioner contends that “WINS is an implementation of NetBIOS” and, therefore, Petitioner contends that “one having skill in the art would have known about and been motivated to combine Microsoft Manual with NetBIOS.” Id. at 34 (citing 67 Ex. 1004 ¶¶ 88–89). We are persuaded by Petitioner that the combination is reasonable because Microsoft Manual demonstrates that Microsoft TCP/IP has combined the elements of NetBIOS and Microsoft Manual in the same manner in which Petitioner proposes to combine NetBIOS and Microsoft Manual. See 67 Ex. 1012, 3, 11. Microsoft Manual discloses that Microsoft TCP/IP for Windows NT provides support for application interfaces, including NetBIOS for establishing logical names and sessions on the network. Id. at 11. Microsoft Manual describes that “[w]hen WINS servers are in place on the network, NetBIOS over TCP/IP resolves names on a client computer by communication with the WINS server.” 67 Pet. 34 (quoting 67 Ex. 1012, 62). We are persuaded that Microsoft TCP/IP for Windows NT utilizes NetBIOS features for name resolution, as disclosed by Microsoft Manual, and a person with ordinary skill in the art would have readily combined the disclosures of Microsoft Manual and Microsoft Manual.” slip op. at 25
- BurdenFwd mixedUnpatentable
“8. Conclusion We have reviewed the Petition and supporting evidence and find that Petitioner has shown by a preponderance of the evidence that claims 1, 2, and 5 of the ʼ469 patent are obvious over Microsoft Manual and NetBIOS, and claim 10 is unpatentable because it depends from a cancelled claim. Accordingly, we determine that Petitioner has demonstrated by a preponderance of the evidence that claims 1, 2, 5, and 10 of the ʼ469 patent are unpatentable.” slip op. at 29
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 6,131,121
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.