• Sony Interactive Entertainment LLC v. Quantum Imaging LLCNo claims unpatentable
  PTAB · Dec 9, 2024 · IPR2023-00996 · APJ Scott A Daniels · IPR · Final written decision

  Claims 1–3, 5–8, 10–12, and 18 were not shown unpatentable as obvious over Pisanich or the PSO Manual because neither adequately taught the claimed QIE module.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “The Board has broad discretion to assign weight to be accorded expert testimony. Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010). However, the testimony must be based on sufficient facts and data. Fed. R. Evid. 702(b). “Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a).” slip op. at 33

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Pet. 8–9 (citing Ex. 1004 ¶ 43). Patent Owner’s asserted level of ordinary skill in the art mirrors Petitioner’s except that Patent Owner contends that “a general knowledge of advertising and virtual reality . . . do not specifically apply to the ‘165 Patent.” PO Resp. 5. The ’165 patent claims and describes a “virtual thematic environment” in detail. Indeed, the ’165 patent describes in one embodiment “a method of integrating holographic images into a virtual thematic environment using a computerized system” and “that the computer system of the present invention provides product placement in a virtual thematic environment.” Id. at 3:32–33, 40–45. Although virtual reality and advertising are not claim elements in this case and do not play a specific role in our analysis below, because the ’165 patent specifically contemplates the integration of advertising and virtual environments we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’165 patent and the asserted prior art, and we apply it in our obviousness evaluations below. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art). We note that we would reach the same conclusions applying either Petitioner’s or Patent Owner’s definition of the level of skill in the art.” slip op. at 11

  • Prior constructionPrior construction adoptedNo construction neededDecided for patent owner

    “Having considered the complete record now before us, and where both parties have deferred to the District Court’s constructions, there is no actual dispute as to the meaning of any specific claim terms in this proceeding and we determine that no express additional claim construction is necessary for any particular claim term. Like the parties, for purposes of this Decision we adopt, and where appropriate refer to, the District Court’s claim constructions and also to Patent Owner’s additional interpretations of “client” and “server.” We note that neither “software layer” nor “types,” as set forth in the District Court’s construction of the QIE module is recited in the claims of the ’165 patent. To the extent necessary, we address the terms “types,” “software layer,” “client,” and “server” in our analysis below in the context of the claims and written description of the ’165 patent. See, e.g., Ex. 1001, 12:34–37 (The ’165 patent describing that “[i]n a client-server environment, at least one client and at least one server are each connected to a network such as a Local Area Network (LAN), Wide Area Network (WAN), and/or the Internet, over a communication link.”). We make another observation regarding the claimed “quantum imaging environment (QIE) module” referenced as 202/211 in Figure 2 of the ’165 patent. A QIE is discussed throughout the specification as relating to both a “QIE engine” and a “(QIE) module.” Id. at 6:6, 16:47. Apart from the broad description that QIE 202/211 is a software layer, and includes “an interpreter” which “allows developers to develop objects and applications from the interpreter,” and that the “interpreter [] will take all of the rich content, interpret the information into objects to be manipulated and accessed via any device and place these objects or information in the the software architecture of the QIE itself and how it actually handles, manipulates, or converts information or content into specific formats. Id. at 15:55–59.7 Apart from adopting the District Court’s claim constructions, we need not further expressly construe any claim terms to resolve the parties’ disputes. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only 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))).” slip op. at 14

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “In summary, we find that Pisanich discloses to a person of ordinary skill in the art a computer game system that incorporates real world data into multiple games, and even games with different themes, but not a QIE for accomplishing these tasks for different devices. Ex. 1004 ¶ 17. We find insufficient evidence by Petitioner and Mr. Crane that a person of ordinary skill in the art, considering Pisanich, would have understood that multiple games included multiple games on different devices as required by the District Court’s claim construction of a “QIE module”—that is “a software layer which receives and interprets content such that the content is manipulated so as to be accessible on different types of devices for use within the virtual thematic environment.” Ex. 1009, 4–7 (emphasis added). Independent Claim 18 Independent claim 18 recites the same limitation of “providing a quantum imaging environment (QIE) module in one of the client or the server system” as in claim 1[b]. Consequently, our analysis of the corresponding limitations of claim 1[b] applies also to claim 18. For the reasons given for claim 1, we find that Petitioner has failed to show by a preponderance of the evidence that claim 18 would have been obvious over Pisanich.” slip op. at 36

  Patent outcomesUS 10,991,165 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,991,165
• SNF S.A. v. Chevron U.S.A., Inc.No claims unpatentable
  PTAB · Apr 18, 2024 · IPR2022-01534 · APJ Barry L Grossman · IPR · Final written decision

  Claims 1–25 were not shown unpatentable on any asserted ground because the evidence failed to establish the claimed filter ratio or support the proposed combinations.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “In our Decision to Institute this proceeding, we adopted Dr. Barati’s proposed level of skill based on the prior art, the sophistication of the technology disclosed in the ’320 patent, and Dr. Barati’s opinion testimony. Dec. Inst. 17 (“we adopt Dr. Barati’s definition of the level of ordinary skill”). Patent Owner states it “does not dispute the level of skill applied by the Board in its institution decision.” PO Resp. 7. Accordingly, in this Decision, based on the evidence and the arguments of the parties, we maintain and adopt the level of ordinary skill stated in the Decision to Institute. In this proceeding, a person of ordinary skill would have had a Ph.D. in Chemical or Petroleum Engineering (or related science or engineering discipline) with 2-3 years of experience in the design and implementation of methods for hydrocarbon recovery including use of polymer compositions in such recovery methods. Alternatively, a person of ordinary skill might substitute several years of actual design or implementation experience for the advanced degree. See Ex. 1012 ¶ 18.” slip op. at 16

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

    “Claims must be construed “only to the extent necessary to resolve the controversy.” AstraZeneca AB v. Mylan Pharms. Inc., 19 F.4th 1325, 1345 (Fed. Cir. 2021) (quoting Vivid Techs., Inc. v. American Science & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (citations omitted)). We determine that a specific construction of the claims is not necessary to reach a decision in this inter partes review of the challenged claims.” slip op. at 18

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable

    “To serve as an anticipation when the reference is silent about the asserted inherent characteristic, such gap in the reference may be filled with recourse to extrinsic evidence. Such evidence must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill. Cont’l Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991). Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient. [Citations omitted.] If, however, the disclosure is sufficient to show that the natural result flowing from the operation as taught would result in the performance of the 17 Again, to avoid confusion, this citation format is to page 15 of Exhibit C, which is an attachment to Exhibit 1012 in this proceeding. questioned function, it seems to be well settled that the disclosure should be regarded as sufficient. Id. at 1260 (quoting In re Oelrich, 666 F.2d 578, 581 (CCPA 1981)).” slip op. at 23

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “Petitioner fails to provide any persuasive evidence or argument that claims 1, 2, 13–15, and 20–25 would have been obvious in view of Li. As discussed above, anticipation and obviousness are different grounds, requiring different analyses, and different evidence. Petitioner fails to establish what modifications in Li would have been obvious and why it would have been obvious to make the modifications with a reasonable expectation of success. The word “obvious” appears in Ground 1 only in the analysis of claim 24, clause D, on page 37 of the Petition, where Petitioner merely states the conclusion that this clause “would be obvious” [sic, the statute requires a temporal component to establish the claim “would have been obvious”]. Accordingly, we determine that Petitioner fails to provide the requisite evidence and arguments that claims 1, 2, 13–15, and 20–25 would have been obvious in view of Li.” slip op. at 28

  Patent outcomesUS 10,626,320 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,626,320
• Oticon Medical AB / Oticon Medical LLC et al. v. Cochlear LimitedNo claims unpatentable
  PTAB · Oct 14, 2020 · IPR2019-00975 · APJ James A Worth · IPR · Final written decision

  Claims 1–12, 14, 16, 17, 25, 28, 33–35, 37–41, and 45–47 were not shown unpatentable because Petitioner failed to establish a rationale to combine Westerkull ’794 and Choi.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “At the oral hearing, Petitioner acknowledged that the differences between the parties’ assertions regarding the level of skill in the art would not be dispositive. Tr. 25:12–26:11. In view of the lack of material dispute on this issue, we adopt Patent Owner’s asserted level of skill, which we find to be supported by the testimony of Dr. Rentschler. See Ex. 2037 ¶¶ 54–55; see also Tr. 26:10–11 (Counsel for Petitioner: “We agree that the issues really here are highly mechanical.”).” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “We now turn to the issue of whether the preamble of claim 1 is limiting. Petitioner argues that the preamble recites an intended use because the body of claim 1 recites the structural limitations but the preamble does not. Pet. Supp. Br. 3. Petitioner also argues that the preamble recites an intended use because, in another case between the same parties involving a different claim relating to the same subject matter, the court concluded that the preamble recited an intended use. Id. at 3 (citing Cochlear Bone Anchored Sols. AB v. Oticon Med. AB, 958 F.3d 1348, 1355 (Fed. Cir. 2020)). Patent Owner argues that the preamble is limiting because the phrase “the bone” has its antecedent basis in the phrase “a skull bone” in the preamble. PO Supp. Br. 3 (citing Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir. 2008)). We determine, as a matter of reading the words of the claim, that the antecedent basis for “the bone” is “a skull bone” in the preamble of claim 1. See Ex. 1001, 5:56–57. Accordingly, we determine that the preamble is limiting. See Energizer Holdings, Inc. v. Int’l Trade Comm’n, 436 F.3d 1366 (Fed. Cir. 2006) (“anode gel” was understood to be the antecedent basis for “said zinc anode”).9 In other words, it is a requirement that the prosthesis is structured so that it is appropriate for being anchored into the skull bone. See Catalina 9 Patent Owner also argues that the cases relied on in the Petition to argue that the preamble is not limiting stand for the opposite proposition because, in those cases, the preambles were limiting because they introduced or defined terms later used in the claims. PO Supp. Br. 4 n.1 (citing Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305–06 (Fed. Cir. 1999); Rowe v. Dror, 112 F.3d 473, 478-79 (Fed. Cir. 1997)). We agree with Patent Owner that the statement of law in the Petition, i.e., that a preamble may recite an intended use when the body of the claim recites all structural elements (see Pet. 19), is not dispositive of this case because the body of the claim refers back to the preamble. Marketing International, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (“dependence on a particular disputed preamble phrase for antecedent basis may limit claim scope because it indicates a reliance on both the preamble and claim body to define the claimed invention.”). 2. the preamble: “bone fixture configured to anchor to bone” (claim 8) For similar reasons as for the preamble of claim 1, we determine that the preamble of claim 8 is limiting, i.e., because it provides antecedent basis for “the bone” in the body of the claim. However, the preamble of claim 8 only refers to “bone” and not to “a skull bone” and therefore does not itself impose a limitation of a “skull bone.” Compare Ex. 1001, 6:22, with id. at 5:56–57.” slip op. at 12

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

    “means “a channel, distinct from the screw thread and distinct from the flange, extending around the cylindrical portion of the main body of the anchor, having an inner diameter and an outer diameter.” Pet. 20. Petitioner also asserts that a person of ordinary skill would understand that a circumferential groove is provided to “exert a compressive radial force on the skull bone to improve stability of the anchoring fixture.” Id. (citing Ex. 1013, 3; Ex. 1002 ¶ 36). The District Court construed “circumferential groove” to mean “a narrow channel extending around the cylindrical periphery of the main body of the implant.” Ex. 3001, 33.10” slip op. at 13

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “In response to our question inviting further briefing, Petitioner submits that “periphery” refers to the widest portion of the fixture inserted into the skull and distinct from the flange. See Pet. Reply 2. Patent Owner does not comment on the question. See PO Resp. 15–17. For purposes of this Decision, we determine that it is not necessary to further construe the term “periphery.” See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (claims are construed only to the extent necessary to resolve a dispute). 4. “wherein the anchoring fixture is configured for anchoring a hearing” slip op. at 14

  Patent outcomesUS 9,838,807 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 9,838,807
• Kranos Corporation v. Riddell, Inc.No claims unpatentable
  PTAB · Jul 11, 2019 · IPR2016-01646 · APJ James J Mayberry · IPR · Remand

  On remand, the Board found claims 1–7, 11, 13, 25–28, 30, 32–37 not shown unpatentable on the added grounds; it also denied Riddell’s motion to exclude as moot.

  RulingsRemand decision

  • RemandOther

    “motion to terminate the appeal in IPR2016-01646 and remand the proceeding, in light of SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018), and the Director’s Guidance on the Impact of SAS on AIA Trial Proceedings, for us to address claims and grounds that we had not instituted.3 In response, we modified our Decision on Institution to institute trial for all challenged claims and all grounds. Paper 32, 3 (the “November 9, 2018, Order”). We ordered briefing on those claims and grounds added to the trial in the November 9, 2018, Order. See Paper 32, 3–7.” slip op. at 3

  • PTAB / AIA Trials › Motions to amend / substitute claimsAdverse judgmentGranted

    “certain claims and grounds added to the trial in our November 9, 2018, Order. Paper 33. In the motion, Kranos “requests adverse judgment as to . . . [c]laims 3, 4, 7, 13, and 36.” Id. at 2. The motion continues that claims 6 and 26 remain in this proceeding for the grounds of “[o]bviousness over each of Sears or Rappleyea in combination with Ispas.” Id. As to claims 3, 4, 7, 13, and 36, Kranos’s motion is granted. Accordingly, we will enter the following judgment as to those claims: (1) claim 13 is not proven unpatentable as anticipated by Sears; (2) claim 13 is not proven unpatentable as anticipated by Rappleyea; (3) claim 13 is not proven unpatentable as anticipated by Zeller; (4) claim 36 is not proven unpatentable as obvious over Sears, Rappleyea, or Monica and Halstead; and (5) claims 3, 4, and 7 are not proven unpatentable over Sears or Rappleyea and Ispas.” slip op. at 9

  • Skill levelSkill level board ownDecided for petitioner

    “record before us, and ultimately found that a person having ordinary skill in the art to which the ’118 patent pertains would have at least a Bachelor’s degree in engineering or physics and at least one year of experience in designing protective equipment, protective helmets, or plastic parts including the design of protective or structural plastic elements. Final Wrtn. Dec. 9–10. We also found that additional experience (at least three years) may be substituted for a formal engineering degree. Id. at 10. We found that the prior art of record reflects this level of ordinary skill in the art. Id. at 10–11. We noted that our patentability analysis presented below would reach the same findings and determinations under Kranos’s or Mr. Shewchenko’s definition of the level of ordinary skill in the art. Id. at 11. In the supplemental briefing, neither party argued for a different definition of the level of ordinary skill than the definition adopted in our Final Written Decision, nor do we discern any reason, based on the supplemental record, to change this definition.” slip op. at 12

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

    “The term “aligned along” does not appear in any claim addressed in this Supplemental Final Written Decision. See, e.g., Final Wrtn. Dec. 11 (indicating that the term “aligned along” appears in independent claim 34). In the Final Written Decision, we determined that we did not need to expressly construe the term “integrally formed” to resolve the parties’ dispute. See id. at 16. As will be apparent from our analysis below, we need not address this term further here.” slip op. at 13

  Patent outcomesUS 8,528,118 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,528,118
• Seadrill Americas, Inc. / Seadrill Gulf Operations Auriga, LLC et al. v. Transocean Offshore Deepwater Drilling, Inc.No claims unpatentable
  PTAB · May 18, 2017 · IPR2015-01990 · APJ William V Saindon · IPR · Final written decision

  The Board found claims 10–13 and 30 of the ’781 patent, claim 10 of the ’851 patent, and claims 17–19 of the ’069 patent not shown unpatentable over the asserted grounds.

  RulingsFinal written decision

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

    “The words “to the seabed” in claim 30 require that the second means for advancing tubular members must have a structure in practice that, without modification, allows it to perform that function. See Typhoon Touch Tech’s, Inc. v. Dell, Inc., 659 F.3d 1376, 1380 (Fed. Cir. 2011) (listing cases that reject the notion that a prior art structure that could be modified to infringe would infringe).18 Petitioner asserts that, to anticipate, Lund merely of the deck. Thus, of the 30 m long stand, a little more than 10 m of tube would be above the deck and a little less than 20 m would be below the deck, depending on how and where exactly the torqueing device held onto the second and third tubes to fasten them. 18 We recognize that Typhoon was concerned with a question of infringement, but the principles discussed therein are also relevant to a patentability analysis because “[t]hat which infringes, if later, would needs to perform this function at some depth, not every depth. Pet. Reply 5– 6. We agree with Petitioner on this point, at least in general.19 See, e.g., Bell Commc’ns Research, Inc. v. Vitalink Commc’ns Corp., 55 F.3d 615, 622–23 (Fed. Cir. 1995) (“an accused product that sometimes, but not always, embodies a claimed method nonetheless infringes”). We are not persuaded, however, that Petitioner has shown that Lund is capable of lowering a tubular string to the seabed at some depth. First, Petitioner has not offered evidence that Lund actually describes lowering tubulars to the seabed. The disclosure in Lund cautioning to be careful not to strike structures (Ex. 1002, 9:58–65) does not actually describe whether the structures are undersea, let alone at the seabed. Instead, Lund simply describes a “possible occurrence of well heads and other structures in the area around the well centre.” Id. Patent Owner has provided evidence that Lund could be referring to structures above the surface of the water or on the drilling rig itself, which Patent Owner shows are not uncommon in shallow-water operations. PO Resp. 7–9 (citing, e.g., Ex. 2075 ¶¶ 68–74; Ex. 2088, 47:15–52:19). This evidence rebuts the testimony of Mr. Schaaf upon which we relied in determining that Petitioner had a reasonable likelihood of success. See Pet. 42 (citing Ex. 1007 ¶ 94); Ex. 1007 ¶ 94 (citing to Ex. 1002, 9:58–64 as allegedly disclosing that the hoist in Lund could reach the seabed); Dec. on Inst. 19 (relying on the testimony at Ex. anticipate, if earlier.” Peters v. Active Mfg. Co., 129 U.S. 530, 537 (1889). 19 The depth would have to be a depth at which a drilling rig would be used, for example. If drilling rigs were not used at a certain depth, for example, then it would make no sense to construe the limitation in a way to require such a depth. 1007 ¶ 94). Based on the record now before us, we find that it is not necessarily the case that Lund was describing interference with structures in the sea or at the seabed, as it is possible Lund was describing interference with structures above the waterline or on the rig itself.” slip op. at 25

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

    “into a drilling hoist. Pet. 23–24. A reason for doing this is for the ability to have two drilling stations, such as shown in Horn. Id. (citing Ex. 1007 ¶ 72); see also id. at 23 (citing Ex. 1012 ¶ 41; Ex 1014, I-191, I-193; Ex. 1015, each of which show examples of drilling rigs having two drilling stations). Given the examples of drilling rigs having two drilling stations under one derrick (e.g., Horn, Chevron S-55), we find that a person of ordinary skill in the art has a reasonable expectation of success in converting Lund’s preparation hoist into a drilling station. Patent Owner’s arguments focus on whether a person of ordinary skill in the art would have considered such a modification in the first place. PO Resp. 15–16, 22–24. Patent Owner first argues that Horn does not explain why a person of ordinary skill in the art would modify Lund’s rig to have a second drilling hoist. Id. at 15–16. Petitioner’s Petition addresses that argument, when it states that the proposed modification “would have had the added advantage of being able to have each hoist run its own drill string to the seabed,” exactly as taught in Horn. Pet. 24. In other words, making the second hoist drill-worthy would be following Horn, such as to enable the Lund rig to drill two wells at the same time. Patent Owner misunderstands KSR when it argues that Petitioner cannot use drill two wells as a rationale. See PO Resp. 15 (citing KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)); KSR, 550 U.S. at 418 (“[I]t can be important to identify a reason . . . to combine the elements in the way the claimed new invention does.”). When it states that there must be a reason to combine the elements “in the way the claimed new invention does,” the Supreme Court means that there must be a reason to combine to arrive at the claimed invention (i.e., to meet each limitation, as arranged in the claim). This understanding of KSR is apparent by reading the next page, where the Supreme Court explicitly rejected the theory that a reason for combination must be the same as the inventor’s: “[i]n determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls.” KSR, 550 U.S. at 419. Accordingly, we do not see any deficiency in Petitioner’s reasoning with respect to Petitioner’s reliance on a desire to have two drill stations for two wells, as taught in Horn and for the benefits described therein. As such, we find that Petitioner has articulated a reason with rational underpinnings for modifying Lund’s rig to have two drill stations, as taught in Horn.” slip op. at 32

  • Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia with nexusObjective indicia outweighedDecided for patent owner

    “that also are called “dual activity,” it is difficult to discern whether any given feature is in reference to a feature of the claimed version or the prior art version in isolation. Accordingly, we cannot agree with Petitioner that there is no nexus, but we also cannot presume that “dual activity” refers to the claimed invention in every instance. In effect, we find that there is some nexus between the phrase “dual activity” and the claims, but with the caveat that we must be careful to discern how the phrase is used in the evidence.” slip op. at 46

  • ExcludeMotion to exclude, deniedDenied

    “B. Motion to Exclude Petitioner filed a Motion to Exclude Evidence (Paper 80), to which Patent Owner filed a Response (Paper 84) and Petitioner filed a Reply (Paper 85). Petitioner moves to exclude the testimony of Claude E. Cooke, Jr., Ph.D., in Exhibit 2077. Paper 80, 17. Patent Owner relies on the testimony of Dr. Cooke for purposes of analysis of its secondary considerations evidence, specifically as to the nexus. Paper 84, 2. In our Decision below, we do not rely on Dr. Cooke’s testimony except in one instance in which we find his testimony not credible. Accordingly, we deny Petitioner’s Motion to Exclude as moot, as we do not rely on it.” slip op. at 14

  Patent outcomesUS 6,068,069 not shown unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 6,068,069
• Seadrill Americas, Inc. / Seadrill Gulf Operations Auriga, LLC et al. v. Transocean Offshore Deepwater Drilling, Inc.No claims unpatentable
  PTAB · May 18, 2017 · IPR2015-01989 · APJ William V Saindon · IPR · Final written decision

  The Board found no challenged claims of the ’781, ’851, or ’069 patents unpatentable; Lund did not anticipate claim 30, and objective evidence defeated the obviousness grounds.

  RulingsFinal written decision

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner

    “Specifically, we construe “second means . . . for advancing tubular members” as a means-plus-function limitation with the function of advancing tubular members simultaneously with said first means into the body of water to the seabed and with a corresponding structure as a drawworks and equivalent structures. IPR2015-01989, Paper 8, 7–9. We construe “means . . . for transferring tubular assemblies” as a means-plus-function limitation with the function of transferring tubular assemblies and with a corresponding structure of a rail supported pipe handling system, a rugged overhead crane structure within the derrick, or structural equivalents. Id. at 9–10.” slip op. at 17

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

    “The words “to the seabed” in claim 30 require that the second means for advancing tubular members must have a structure in practice that, without modification, allows it to perform that function. See Typhoon Touch Tech’s, Inc. v. Dell, Inc., 659 F.3d 1376, 1380 (Fed. Cir. 2011) (listing cases that reject the notion that a prior art structure that could be modified to infringe would infringe).18 Petitioner asserts that, to anticipate, Lund merely of the deck. Thus, of the 30 m long stand, a little more than 10 m of tube would be above the deck and a little less than 20 m would be below the deck, depending on how and where exactly the torqueing device held onto the second and third tubes to fasten them. 18 We recognize that Typhoon was concerned with a question of infringement, but the principles discussed therein are also relevant to a patentability analysis because “[t]hat which infringes, if later, would needs to perform this function at some depth, not every depth. Pet. Reply 5– 6. We agree with Petitioner on this point, at least in general.19 See, e.g., Bell Commc’ns Research, Inc. v. Vitalink Commc’ns Corp., 55 F.3d 615, 622–23 (Fed. Cir. 1995) (“an accused product that sometimes, but not always, embodies a claimed method nonetheless infringes”). We are not persuaded, however, that Petitioner has shown that Lund is capable of lowering a tubular string to the seabed at some depth.” slip op. at 25

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

    “into a drilling hoist. Pet. 23–24. A reason for doing this is for the ability to have two drilling stations, such as shown in Horn. Id. (citing Ex. 1007 ¶ 72); see also id. at 23 (citing Ex. 1012 ¶ 41; Ex 1014, I-191, I-193; Ex. 1015, each of which show examples of drilling rigs having two drilling stations). Given the examples of drilling rigs having two drilling stations under one derrick (e.g., Horn, Chevron S-55), we find that a person of ordinary skill in the art has a reasonable expectation of success in converting Lund’s preparation hoist into a drilling station. Patent Owner’s arguments focus on whether a person of ordinary skill in the art would have considered such a modification in the first place. PO Resp. 15–16, 22–24. Patent Owner first argues that Horn does not explain why a person of ordinary skill in the art would modify Lund’s rig to have a second drilling hoist. Id. at 15–16. Petitioner’s Petition addresses that argument, when it states that the proposed modification “would have had the added advantage of being able to have each hoist run its own drill string to the seabed,” exactly as taught in Horn. Pet. 24. In other words, making the second hoist drill-worthy would be following Horn, such as to enable the Lund rig to drill two wells at the same time. Patent Owner misunderstands KSR when it argues that Petitioner cannot use drill two wells as a rationale. See PO Resp. 15 (citing KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)); KSR, 550 U.S. at 418 (“[I]t can be important to identify a reason . . . to combine the elements in the way the claimed new invention does.”). When it states that there must be a reason to combine the elements “in the way the claimed new invention does,” the Supreme Court means that there must be a reason to combine to arrive at the claimed invention (i.e., to meet each limitation, as arranged in the claim). This understanding of KSR is apparent by reading the next page, where the Supreme Court explicitly rejected the theory that a reason for combination must be the same as the inventor’s: “[i]n determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls.” KSR, 550 U.S. at 419. Accordingly, we do not see any deficiency in Petitioner’s reasoning with respect to Petitioner’s reliance on a desire to have two drill stations for two wells, as taught in Horn and for the benefits described therein. As such, we find that Petitioner has articulated a reason with rational underpinnings for modifying Lund’s rig to have two drill stations, as taught in Horn.” slip op. at 32

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusMixed

    “invention disclosed and claimed in the patent.” Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988). Moreover, “[w]hen the thing that is commercially successful is not coextensive with the patented invention—for example, if the patented invention is only a component of a commercially successful machine or process—the patentee must show prima facie a legally sufficient relationship between that which is patented and that which is sold.” Id. Here, the product sold by Patent Owner is a lease of a drillship, of which the claimed invention is a subcomponent. We credit the testimony of Mr. Childers on this point, who provides an analysis of the testimony of various individuals associated with Patent Owner, and who discuss the many other major features of a drillship. Ex. 1038 ¶¶ 40–43. We recognize that the derrick configuration is one of the principal components of the drillship, however, as evidenced by the fact that the drillships are often referenced by the capabilities of the derrick, e.g., “single activity” or “dual activity.” Nevertheless, because of the myriad components and marketable features of a drillship, we cannot afford Patent Owner the presumption that its drillship “is the invention disclosed and claimed in the patent.” J.T. Eaton, 106 F.3d at 1571. Patent Owner’s nexus arguments are an attempt to show that the phrase “dual activity” “is industry parlance for [Patent Owner’s] invention.” PO Resp. 27. In other words, Patent Owner argues that each time we see the phrase “dual activity,” we should think of the claimed subject matter. We have reviewed Patent Owner’s arguments and evidence (id. at 26–40), and Petitioner’s rebuttal (Pet. Reply 13–16), and for the reasons expressed below, we find that “dual activity” is a generic term in the industry and is not the claimed invention. Because of this, we find that we cannot consider “dual activity” industry parlance for Patent Owner’s invention. However, we find that “dual activity” is sometimes used to refer to the claimed invention, and that what structures give rise to “dual activity” in the evidence are generally a subset of the features of the claimed invention. Accordingly, each piece of evidence must be evaluated on its own merits in terms of nexus. WBIP, 829 F.3d at 1331 (“Questions of nexus are highly fact-dependent . . . . ‘It is within the province of the fact-finder to resolve these factual disputes regarding whether a nexus exists between commercial success of the product and its patented features, and to determine the probative value of evidence of secondary considerations.’”) (citing Pro- Mold & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1574 (Fed. Cir. 1996)). For example, to the extent a reference is ambiguous as to the form of “dual activity” being discussed, the nexus between that reference and the claims, and hence its probative value of non-obviousness, is diminished. See Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 306 (Fed. Cir. 1985) (holding that the weight attributed to the secondary evidence is proportional to its nexus to the merits of the invention, implying that a weak nexus requires some discount factor to the evidence, but a strong nexus does not).” slip op. at 39

  Patent outcomesUS 6,085,851 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 6,085,851
• Daifuku Co., Ltd. / Daifuku America Corp. v. Murata Machinery, Ltd.No claims unpatentable
  PTAB · May 3, 2016 · IPR2015-00085 · APJ Brian P Murphy · IPR · Final written decision

  Claims 6–11 and 14 were not shown unpatentable as obvious over JPAP 213 and JPAP 237 because the petitioner did not establish a reasoned motivation to combine.

  RulingsFinal written decision

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

    “A conclusion of obviousness requires more than a mere showing that the prior art includes separate references covering each separate limitation in a claim under examination. Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011). Rather, obviousness requires the additional showing that a person of ordinary skill at the time of the invention would have selected and combined the prior art elements in the normal course of their work to yield the claimed invention. Id. We have rejected Petitioner’s interpretation of JPAP Paragraph 7 that underpins its motivation to combine argument and Dr. Sturges’ corresponding testimony. See Section II.B.3–4 above. Although Petitioner and Dr. Sturges do provide evidence of known alternatives for laterally transferring semiconductor cassette pods in overhead rail conveyance systems (Pet. 41 (citing Ex. 1028 ¶ 162)), their analysis of a reason or motivation to combine the systems in the manner claimed in the ’153 patent is lacking. The insufficiency of the evidence and analysis is particularly acute when the assertion that JPAP 213 paragraph 7 “expressly contemplates” such a combination is removed from the analysis. Petitioner’s remaining argument, that it would have been obvious for a person of ordinary skill to make the asserted modification because it was one of a “finite number of identified, predictable solutions” and “an arrangement of old elements . . . yielding no more than one would expect from such an arrangement,” is little more than a conclusory summary of KSR without the incumbent analysis based on the facts and evidence of the present case. Pet. 41–42 (citing Ex. 1028 ¶ 164); Reply 6–7, 11–13 (citing Ex. 1028 ¶¶ 162–165). For example, Petitioner argues that “any mechanical engineer would have understood that the number of moving mechanisms should always be reduced when possible” in support of its motivation to combine argument. Reply 11 (citing Ex. 1005 ¶ 7; Ex. 1028 ¶ 165). Petitioner’s cited evidence does not support the statement; rather it relies on an incorrect interpretation of JPAP 213 paragraph 7. Dr. Sturges also acknowledges in his deposition that paragraph 165 of his Declaration relies only on Petitioner’s incorrect interpretation of JPAP 213 paragraph 7. Ex. 1034, 165:9–17 (“Q. [L]ooking at paragraph 165, I don’t see any reference to anything besides paragraph 7 of the ’213 reference. Right? A. No. 165 doesn’t have any other cite.”). Neither Petitioner nor Dr. Sturges, moreover, provides a meaningful mechanical analysis or explanation beyond citing JPAP 213 paragraph 7 in support of Petitioner’s motivation to combine argument. In short, Petitioner’s conclusory paraphrasing of KSR is insufficient to satisfy its burden, particularly without the support of Petitioner’s interpretation of JPAP 213 paragraph 7. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”) (quoted with approval in KSR, 550 U.S. at 418). Therefore, for the reasons given above, we determine that Petitioner has not satisfied its burden of proving the asserted obviousness of claims 6–11 and 14 over JPAP 213 and JPAP 237 by a preponderance of the evidence.14” slip op. at 28

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “We also credit the Declaration testimony of Dr. Bottoms and Patent Owner’s translator, Mr. Yazaki, and the deposition testimony of Petitioner’s translator, Mr. Chu. Mr. Chu testifies that JPAP 213 paragraph 7 does not “say anything about the transfer means moving an article laterally.” Ex. 1035, 30:23–31:5. Mr. Yazaki’s Declaration states that paragraph 7 expresses only that “the transfer means is on the moving body side, as opposed to being on the article retaining unit side” of the conveyance system and “not . . . that the transfer means is on a lateral surface of the moving body facing the article retaining unit.” Ex. 2019 ¶ 5. Dr. Bottoms testifies that a person of ordinary skill would have understood the translated phrase “on the side of the moving body” in paragraph 7 to refer to the transfer means (the hoist) being located on the moving body side of the system rather than the storage side of the system, not physically positioning the transfer means on the lateral side of moving body 3. Ex. 2013 ¶ 114. Dr. Bottoms also explains how JPAP 213 distinguishes between vertical movement of the retaining unit transfer means and lateral movement of the article movement means MS. Id. ¶ 116 (citing Ex. 1005 ¶ 22). Contrary to Petitioner’s argument, Dr. Bottoms’ deposition testimony is not inconsistent with his declaration testimony clarifying the interpretation of JPAP 213 paragraph 7, as discussed above. Reply 9 (citing Ex. 1043, 109:7–14). His deposition testimony is consistent with the disclosure of the retaining unit transfer means as a vertical hoist, not a lateral transfer mechanism. Dr. Sturges’ Declaration testimony, relied upon by Petitioner to rebut Patent Owner’s argument and evidence (Reply 9), provides no analysis of paragraph 7, claim 4, or the relevant description in JPAP 213. Rather, it mimics the error of the Petition in asserting that JPAP 213 “already contemplates modifying the Fig. 1 system . . . to do the work of moving [articles] B to and from the overhead locations BS, 11.” Ex. 1028 ¶ 165.11 Therefore, for the reasons given above, we find that JPAP 213” slip op. at 19

  • ExcludeMotion to exclude, deniedDenied

    “14 In view of our determination, we need not consider Patent Owner’s objective evidence of nonobviousness. See Transocean Offshore Deepwater Drilling, Inc., v. Maersk Drilling USA, Inc., 699 F.3d 1340, 1349 (Fed. Cir. 2012) (“objective evidence of nonobviousness . . . may be sufficient to disprove or rebut a prima facie case of obviousness”). PO Resp. 30–45; Reply 17–24. of Exhibit 1038. Petitioner relies on Exhibit 1038 and paragraphs 3–4 of Exhibit 1040 to rebut Patent Owner’s argument that Petitioner copied Patent Owner’s invention claimed in the ’153 patent. Reply 18–19, 21, 23. Patent Owner seeks to exclude Exhibit 1038 and paragraphs 3–4 of Exhibit 1040 as irrelevant (Fed. R. Evid. 401, 402), inadmissible hearsay (Fed. R. Evid. 801(c)), and unauthenticated (Fed. R. Evid. 901). Mot. Excl. 2–8. We do not rely on or address Patent Owner’s asserted objective evidence of nonobviousness or Petitioner’s rebuttal evidence in our Decision. Therefore, Patent Owner’s motion to exclude Exhibits 1038 and paragraphs 3–4 of Exhibit 1040 is dismissed as moot.” slip op. at 30

  • Skill levelSkill level petitioner adoptedDecided for petitioner

  Patent outcomesUS 7,771,153 not shown unpatentable
  § 103 obviousnesscites KSR
  Patents in suitUS 7,771,153
• Kinetic Technologies, Inc. v. Skyworks Solutions, Inc.No claims unpatentable
  PTAB · Oct 19, 2015 · IPR2014-00690 · APJ Scott A Daniels · IPR · Final written decision

  The Board held claims 4–6, 8–20, and 23–29 not shown unpatentable because LT1932 was not proven publicly accessible before the priority date.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable

    “Reimund “[t]he documents were made publicly available shortly after the footer dates were applied.” Id. A “printing date” is not, however, without more, sufficient evidence of public accessibility as of that particularly date. See e.g., LG Elecs., Case IPR2015-00329 (Paper 13, 13) (Declarant’s “unsupported opinion that EIFUFAL501 ‘was more than likely published on or about March 24, 1998’ (id.) is insufficient to demonstrate a reasonable likelihood that EIFUFAL501 was published before June 1, 1998.”) The bare testimony of Mr. Reimund that the printing date “‘1201’ indicates that the datasheet was made public, and Linear customers and members of the public were able to access the datasheet no later than December 2001” (Ex. 1012 ¶ 6) is not persuasive evidence that the “printing date” can be equated to the publication date. In his Declaration, Mr. Reimund stated that such documents “were made publicly available shortly after the footer dates were applied.” Ex. 1012 ¶ 5 (emphasis added). Mr. Reimund’s testimony, however, provides no further explanation as to what time period, hours, days or months etc., is encompassed by the term “shortly after.” Giving some weight to Mr. Reimund’s testimony that it was common business practice for documents to bear a printing date such as “1201” indicative of a printing date of December 2001, his opinion that LT1932 was publicly available “shortly after” that date is vague and insufficient by itself to demonstrate that LT1932 was accessible to the public prior to the filing of the ’474 provisional application on March 28, 2002. Mr. Reimund further states that “Linear maintains and I have reviewed a database reflecting the dates that such documents were made publicly available.” Id. ¶ 5. The database referred to by Mr. Reimund is not part of the record in these proceedings and this explicit reference to purported important corroborating evidence is ambiguous without the specific database and dates he reviewed. Overall, Mr. Reimund’s testimony does not state any facts or circumstances relating to specific dates, or even a general time frame, after December 2001 that LT1932 was in fact publicly accessible. Mr. Reimund’s testimony alleging that LT1932 was publicly available “shortly after” December 2001, does not sufficiently temporally link the December 2001 printing date to the alleged public availability of the reference prior to March 28, 2002. Consequently, on this record we are not persuaded that Petitioner has demonstrated by a preponderance of the evidence that LT1932 is a printed publication available before the priority date.” slip op. at 19

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner

    “We determine that the priority date, for purposes of this Decision, is March 28, 2002, the filing date of the ’474 provisional application that became the ’275 patent.10 Patent Owner provides persuasive evidence that 10 Patent Owner provides evidence of conception and reduction to practice of the invention claimed in the ’275 patent prior to December 31, 2001, and also evidence of diligence leading to the filing of the ’474 provisional application on March 28, 2002. See PO Resp. 35–57. Based on this the 60/368,474 (“’474”) provisional application contains essentially identical disclosure to that of the ’275 patent and that each of the claims at issue is supported by disclosure in the ’474 provisional application. PO Resp. 54– 57, compare Ex. 2016, with Ex. 1001; Ex. 2030 ¶¶ 54–55; Ex. 2028 ¶ 90.” slip op. at 17

  • ExcludeMotion to exclude, deniedDenied

    “to exclude is properly related to the admissibility of evidence (e.g., authenticity or hearsay). See Bloomberg Inc. v. Markets-Alert Pty Ltd., CBM2013-00005, slip op. at 5 (PTAB Nov. 15, 2013) (Paper 56). Patent Owner’s Motion to Exclude Evidence is directed, however, to the sufficiency of evidence concerning whether or not LT1932 is prior art to the claimed subject matter in the ’275 patent. Patent Owner argues in its Motion that “[t]he Petition asserted, without evidentiary support, that Exhibit 1004 ‘was published at least as early as 2001.’” Mot. 2 (citing Pet. 5). Although Patent Owner states that Petitioner does not establish the necessary “foundation,” the arguments presented by Patent Owner are directed specifically to the sufficiency of the copyright date of 2001 as evidence of a publication date, and hence public accessibility, of LT1932. See id. at 2–4. Arguments related to whether a copyright date is sufficient evidence of public accessibility so that LT1932 is, or is not, a “printed publication” under 35 U.S.C. § 102 are properly presented in a reply rather than in a motion to exclude. With respect to Patent Owner’s argument that Mr. Reimund’s Declaration should be excluded as irrelevant under Fed. R. Evid. 402, this admissibility objection is based on Patent Owner’s assertion that Petitioner’s evidence is insufficient to establish LT1932 as prior art where Patent Owner has provided evidence of conception prior to December 31, 2001. Mot. 5. For example, Patent Owner argues in its Motion that “Petitioner cannot carry its burden to show that the claims of the patent are invalid unless it presents sufficient evidence in the Petition itself that a relied upon reference is prior art to the ’275 Patent.” Id. (emphasis added) (original emphasis omitted). Such an argument addressing the sufficiency of Petitioner’s temporal evidence is misplaced in a motion to exclude. Accordingly, Patent Owner’s Motion to Exclude Evidence is denied.” slip op. at 15

  • PTAB / AIA Trials › Motions to amend / substitute claimsDenied

    “Renewed Joint Motion to Terminate Proceedings under 35 U.S.C. § 317(a) on June 12, 2015. Accompanying the Motion, the parties filed a true copy of a settlement agreement (Ex. 2040) along with a joint request to treat the settlement agreement as business confidential (Paper 40), to be kept separate from the patent file pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Based on the facts of this case and because the settlement was not concluded until after the oral hearing and we had substantially decided the merits of the proceeding, we exercise our discretion not to terminate this proceeding. The Renewed Joint Motion to Terminate Proceedings is denied.” slip op. at 20

  Patent outcomesUS 8,539,275 not shown unpatentable
  § 102 anticipationcites Phillips
  Patents in suitUS 8,539,275

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.