- PTAB · Sep 25, 2017 · IPR2016-00788 · APJ Neil T Powell · IPR · Final written decision
The Board held that claims 15, 18, and 20 were not shown unpatentable over Johnson or Hitt because neither reference disclosed containment walls standing on the floor.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“broadest reasonable interpretation of the disputed claim language requires that the containment walls stand “on” the floor. In the recitation “containment walls standing upwardly from said floor,” the word “from” indicates that the containment walls are disposed “on” the floor. Consistent with this, all of the various embodiments of the invention disclosed by the ’611 patent consistently show sidewalls of a rail car that stand or rest on underlying floor of the car, as Patent Owner notes. See, e.g., PO Resp. 7–12; Ex. 1001, Figs. 1–10. Patent Owner also relies on the testimony of Mr. Long, in discussing the meaning of “standing upwardly from.” See, e.g., PO Resp. 17–21 (citing Ex. 2118 ¶¶ 101–102, 144–161). Specifically, Mr. Long testifies that a person of ordinary skill in the art would have recognized that in the ’611 patent, the term “standing” is used in “its positional sense,” citing, for instance, to a dictionary definition of “standing” as “to rest or remain upright on a base or lower end.” Ex. 2118 ¶ 145 (citing Ex. 2112, 7). Mr. Long’s testimony and the underlying support for that testimony shed favorable light on the meaning of “standing upwardly from” that is urged by Patent Owner.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“containment walls standing upwardly from said floor.” Pet. 24–28. The Petition notes that Johnson discloses floor 26 and side sheet 16. Id. at 24– 25. The Petition contends that “[b]ased on the vertical direction of the ‘side frame assembly,’ . . . , a [person of ordinary skill in the art] would have understood Johnson to teach that the containment walls stand ‘upwardly from said floor.’” Id. at 25. Showing the uncorrected versions of Figures 1 and 2 of Johnson, the Petition elaborates that “[t]his is further shown, e.g., in Fig. 2, where wall 16 is generally perpendicular with respect to the floor 26.” Id. at 25–26 (citing Ex. 1106, Fig. 2; Ex. 1103 ¶ 132). These statements do not indicate, much less prove, that Johnson discloses a containment wall that stands on a floor. Observing the vertical direction of side frame 12 and the perpendicular orientation of side sheet 16 to floor 26 does not establish that side frame 12 or side sheet 16 is disposed on floor 26. The cited testimony of Mr. Miller notes that Figure 2 shows “side sheet 16 is shown as standing normal to the floor.” Ex. 1103 ¶ 132. This too facially does not indicate, much less prove, that side sheet 16 is disposed on floor 26. slip op. at 13
- Strike new argumentNew argument disregardedDenied
“Petitioner’s citation of Johnson’s Figure 5 in the Reply is unavailing. When addressing the claim limitations “containment walls standing upwardly from said floor,” the Petition does not cite Figure 5 of Johnson. See Pet. 24–28. This section of the Petition cites paragraphs 54–56, 130– 132, 134, and 135 of Mr. Miller’s testimony (id.), and none of this testimony cites to or addresses Figure 5 of Johnson, either (see Ex. 1103 ¶¶ 54–56, 130–132, 134–135). Furthermore, it is not apparent that Figure 5 of Johnson shows the same embodiment as Figure 2; Johnson identifies Figure 5 as a cross-section of Figure 4, which Johnson introduces as “a partial side elevation view of a gondola railcar having a bolster.” Ex. 1106, 3:7–8. We determine that Petitioner’s citation of Johnson’s Figure 5 in the Reply is unavailing because it constitutes an improper new argument. In that respect, we do not regard Petitioner’s new reliance on Johnson’s Figure 5 in an attempt to address a deficiency raised by Patent Owner in its Patent Owner Response as constituting a proper response envisioned by our rules. See 37 C.F.R. § 42.23(b). Furthermore, even if Petitioner’s citation of Figure 5 were a proper response, it would not demonstrate, by a preponderance of the evidence, that Johnson discloses the claimed relationship. We are persuaded that, without any other supporting evidence, Figure 5 of Johnson does not show the relationship between containment walls and a floor clearly enough to support, by a preponderance of the evidence, Petitioner’s contention that Johnson discloses containment walls that stand on a floor.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“For the foregoing reasons, Petitioner has not persuaded us that Johnson discloses containment walls that stand on the floor, as required by independent claim 15. Additionally, Petitioner has not asserted that it would have been obvious to modify Johnson’s railcar to have such a configuration, much less provided evidence and reasoning persuading us that it would have been obvious to do so. See, e.g., Pet. 24–28. Accordingly, Petitioner has not demonstrated by a preponderance of the evidence that claims 15, 18, and 20 are unpatentable over Johnson.” slip op. at 19
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,757,611 - Freightcar America, Inc. v. National Steel Car, LimitedNo claims unpatentablePTAB · Sep 22, 2017 · IPR2016-00787 · APJ Josiah C Cocks · IPR · Final written decision
Claims 1, 2, 7–10, and 13 were not shown unpatentable over Hitt; claims 7–10 and 13 were not shown unpatentable over White because the floor structure limitation was not established.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“NSC, however, has now taken the opportunity to articulate more thorough reasoning, and provide a more substantive basis, for its position that the proposed meaning of “standing upwardly of” as “standing on and rising in an upward direction” is also the broadest reasonable construction of the term in the context of the ’600 patent. The ’600 patent depicts various embodiments of its disclosed invention. See, e.g., Ex. 1001, Figures 1–10. In reviewing those depictions, and as noted by NSC (see, e.g., PO Resp. 7–9), they consistently show sidewalls of a rail car that stand or rest on the underlying flooring of the car. NSC also relies on the testimony of its declarant, Mr. Jack Long, in discussing the meaning of “standing upwardly of.” See, e.g., PO Resp. 12– 16 (citing Ex. 2018 ¶¶ 160–165, 167–178). Specifically, Mr. Long testifies that a person of ordinary skill in the art would have recognized that in the ’600 patent the term “standing” is used in “its positional sense,” citing, for instance, to a dictionary definition of “standing” as “to rest or remain upright on a base or lower end.” Ex. 2018 ¶ 164 (citing Ex. 2013, 5). Mr. Long’s testimony and the underlying support for that testimony shed favorable light on the meaning of “standing upwardly of” that is urged by NSC.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“exclusively on Hitt’s description of its “30-Ton Metal Wagon.” Pet. 22–23. More particularly, FreightCar takes the position that the above-noted claim requirement concerning sidewalls “standing upwardly of” is shown in the two Figures of Hitt designated Figures 6188 and 6189. Id. Those figures, however, are not a model of clarity when it comes to ascertaining the relationship of the sidewalls and the flooring of a rail car. We observe also that FreightCar seemingly bases its challenge to claims 1 and 2 on the premise that sidewalls that extend on the sides of the flooring are within the scope of those claims. Indeed, FreightCar’s own declarant, Mr. Keith Miller, provides testimony to that effect, i.e., that the sidewalls of the rail car depicted in Hitt’s Figures 6188 and 6189 do not rest or stand on the flooring or the car, but rather, lie to the sides of the flooring. See Ex. 1003 ¶ 124. As discussed above, we now conclude that claims 1 and 2 require a sidewall that stands on the flooring of a rail car. NSC maintains that such a configuration is not shown in the portions of Hitt on which FreightCar relies in its Petition. PO Resp. 22–31. NSC also relies on the testimony of its declarant, Mr. Long, in advocating that Hitt’s 30-Ton Metal Wagon embodiment does not meet the sidewall and flooring configuration required by claims 1 and 2. Id. (citing Ex. 2018 ¶¶ 195–208). We find Mr. Long’s testimony explaining the disclosure of Hitt’s Figures 6188 and 6189 credible. Although FreightCar does contend, as a part of its Reply to NSC’s Patent Owner Response, that Hitt’s 30-Ton Wagon includes “stanchions” as a part of a peripheral sidewall, we are not persuaded on that basis of the unpatentability of claims 1 and 2. It is not apparent readily that such position was taken by FreightCar as a part of its Petition, nor does FreightCar explain adequately why, even if true, such a circumstance constitutes a peripheral sidewall standing upwardly of flooring, as is required by claims 1 and 2 of the ’600 patent. Having thoroughly considered the record that has been developed at trial, we conclude that FreightCar’s Petition does not establish, by a preponderance of the evidence, that claims 1 and 2 are unpatentable over Hitt. More specifically, we are not persuaded that Hitt’s “30-Ton Metal Wagon” embodiment sets forth a “peripheral sidewall standing upwardly of said flooring” as required by claim 1. Accordingly, we are not persuaded that Hitt anticipates that claim, or dependent claim 2, nor does FreightCar offer any adequate explanation as to why the claims would have been obvious in view of Hitt.” slip op. at 15
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“exclusively on Hitt’s description of its “30-Ton Metal Wagon.” Pet. 22–23. More particularly, FreightCar takes the position that the above-noted claim requirement concerning sidewalls “standing upwardly of” is shown in the two Figures of Hitt designated Figures 6188 and 6189. Id. Those figures, however, are not a model of clarity when it comes to ascertaining the relationship of the sidewalls and the flooring of a rail car. We observe also that FreightCar seemingly bases its challenge to claims 1 and 2 on the premise that sidewalls that extend on the sides of the flooring are within the scope of those claims. Indeed, FreightCar’s own declarant, Mr. Keith Miller, provides testimony to that effect, i.e., that the sidewalls of the rail car depicted in Hitt’s Figures 6188 and 6189 do not rest or stand on the flooring or the car, but rather, lie to the sides of the flooring. See Ex. 1003 ¶ 124. As discussed above, we now conclude that claims 1 and 2 require a sidewall that stands on the flooring of a rail car. NSC maintains that such a configuration is not shown in the portions of Hitt on which FreightCar relies in its Petition. PO Resp. 22–31. NSC also relies on the testimony of its declarant, Mr. Long, in advocating that Hitt’s 30-Ton Metal Wagon embodiment does not meet the sidewall and flooring configuration required by claims 1 and 2. Id. (citing Ex. 2018 ¶¶ 195–208). We find Mr. Long’s testimony explaining the disclosure of Hitt’s Figures 6188 and 6189 credible. Although FreightCar does contend, as a part of its Reply to NSC’s Patent Owner Response, that Hitt’s 30-Ton Wagon includes “stanchions” as a part of a peripheral sidewall, we are not persuaded on that basis of the unpatentability of claims 1 and 2. It is not apparent readily that such position was taken by FreightCar as a part of its Petition, nor does FreightCar explain adequately why, even if true, such a circumstance constitutes a peripheral sidewall standing upwardly of flooring, as is required by claims 1 and 2 of the ’600 patent. Having thoroughly considered the record that has been developed at trial, we conclude that FreightCar’s Petition does not establish, by a preponderance of the evidence, that claims 1 and 2 are unpatentable over Hitt. More specifically, we are not persuaded that Hitt’s “30-Ton Metal Wagon” embodiment sets forth a “peripheral sidewall standing upwardly of said flooring” as required by claim 1. Accordingly, we are not persuaded that Hitt anticipates that claim, or dependent claim 2, nor does FreightCar offer any adequate explanation as to why the claims would have been obvious in view of Hitt.” slip op. at 15
- ExcludeOther
“D. Motion to Exclude NSC filed a Motion to Exclude various exhibits offered by FreightCar in support of its Petition. Specifically, NSC seeks to exclude, in part or in total, exhibits 1003, 1007, 1011, 1012, 1014, and 1022. In reaching our determination in this Decision that FreightCar’s Petition does not establish the unpatentability of any of claims 1, 2, 7–10 and 13, we either: (1) did not rely on any of the content that NSC seeks to exclude, or; (2) evaluated that content in NSC’s favor. We conclude that the circumstances here do not require us to consider the substantive merits of NSC’s Motion to Exclude, and, instead, we dismiss that Motion as moot.” slip op. at 23
Patent outcomesUS 7,461,600 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,461,600 - PTAB · Sep 5, 2017 · IPR2017-00072 · APJ James A Tartal · IPR · Rehearing
The Board denied rehearing, leaving in place its discretionary denial of institution because the petition presented the same or substantially the same art or arguments previously presented to the Office.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“When reconsidering a decision on institution, we review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The party requesting rehearing has the burden of showing the decision should be modified, which includes specifically identifying all matters the party believes we misapprehended or overlooked. See 37 C.F.R. § 42.71(d).” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Sabbaghian, disclosing an adjustable socket wrench, and Baker, disclosing a tube pointer, were not considered during prosecution. See Pet. 37, 41. Petitioner relies on Sabbaghian and Baker as disclosing dies arranged to form a variable-sized polygonal aperture, the only claimed feature Petitioner argues is missing from the alleged Applicant Admitted Prior Art. Pet. 3– 4, 37–43. According to Petitioner, “the polygonal-shaped die configuration is nothing new,” and “[f]or more than a century, skilled artisans have used such a configuration.” Id. at 4. Petitioner concedes that “[t]he die configuration disclosed in Sabbaghian and Baker is not unique. Such a die configuration is common in the prior art.” Id. at 93 (under the heading “The Claimed Die Configuration Was Ubiquitous In The Prior Art”). Although Sabbaghian and Baker were not considered, Petitioner notes that during examination Whitesell was applied as disclosing a crimper with a “substantially regular polygonal shape.” Pet. 22. Similarly, Tuberman was considered during prosecution as teaching a device with “an aperture of a substantially regular polygonal shape.” See Prelim. Resp. 19 (quoting Ex. 1002, 45). For the foregoing reasons we determine that the alleged Applicant Admitted Prior Art and Morales were previously presented to the Office. Additionally, the Petition further presents information from Sabbaghian and Baker, generally described by Petitioner as “ubiquitous” in the prior art, which we find to be the same or substantially the same as information considered during prosecution in the context of other references, including Whitesell and Tuberman. Id. at 10–11. According to Petitioner, “[t]he only distinction between the AAPA and the challenged claims is the shape and arrangement of the blades that form the claimed ‘polygonal aperture.’” Pet. 37 (citing Ex. 1011 ¶ 94). Petitioner argues that Whitesell can be distinguished from the asserted prior art in this proceeding because it does not teach “the straight-sided die/polygonal aperture limitation.” Req. Reh’g. 7. However, Petitioner does not dispute that Tuberman discloses this feature. See id. at 7–8. Thus, Petitioner has not shown a substantial difference between the art previously considered by the Office and the alleged prior art asserted in the Petition. Instead, Petitioner argues that the Examiner did not apply Tuberman in combination with the alleged Applicant Admitted Prior Art. According to Petitioner, “the Examiner applied Tuberman individually as an anticipatory reference,” and “[i]t is irrelevant to speculate why the Examiner did not make a combination that is so readily apparent.” Req. Reh’g. 8, 11.” slip op. at 4
Discretionary denialPatents in suitUS 6,915,560 - Baker Hughes Incorporated / Baker Hughes Oilfiled Operations, Inc. v. Packers Plus Energy Services, Inc.No claims unpatentablePTAB · Aug 31, 2017 · IPR2016-00650 · APJ Carl M Defranco · IPR · Final written decision
The Board held that claims 14 and 17–26 were not shown unpatentable because Thomson lacked the claimed first sleeve and the combinations lacked a reason to add Echols’s sleeves.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“At the institution stage, we construed the term “engaged” according to its plain and ordinary meaning as defined in the dictionary—“involved in activity.” See Merriam-Webster’s Dictionary, 383 (10th ed. 2000) (Ex. 3001). Thus, in the context of the claims, we found that the first sleeve must be actively involved in moving the sliding sleeve, as distinguished from standing simply in physical contact with the sliding sleeve. In other words, as used in the claims, the term “engaged” connotes some sort of dynamic action on the part of the first sleeve relative to the sliding sleeve. Neither party disputes that construction. Indeed, both parties agree that our construction is consistent with “a process of two events that are temporally linked,” first, “the physical relationship between the first sleeve and the sliding sleeve changes to one of engagement,” and second, “the first sleeve moves the sliding sleeve.” Pet. 19; see also PO Resp. 2 (agreeing that the Board’s construction is consistent with the petitioner’s proposed construction of “engaged and moved”).” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“As construed above, and agreed to by the parties, the term “engaged and moved” as used in claims 14 and 25 requires that the first sleeve act independently of the sliding sleeve to move the sliding sleeve away from the port. In contrast, the sliding sleeve arrangement of Thomson—shown in figure 5—includes an internal first sleeve (light grey) that acts as a “ball seat” for the sliding sleeve. Ex. 1002, 1, 2, Fig. 5. Rather than actuating sliding sleeve, Thomson’s internal first sleeve is “threaded” permanently within the sliding sleeve, and thus cannot act to engage and move the sliding sleeve away from the port, as required by claims 14 and 25. With that distinction in mind, we are not persuaded that Thomson anticipates claims 14 and 25.6 C.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“According to Packers Plus, because Thomson describes a completion system where the wellbore is cemented and cased, the “the number of sleeves per zone does not dictate the number of injection points into the formation. Rather, the number of perforations in the casing dictates the number of injection points, whether there is a single sleeve per zone or multiple sleeves per zone.” Id. at 4. As such, Packers Plus argues, there is no reason to employ more sleeves in each of Thomson’s perforated zones, when the single sleeve per zone already disclosed by Thomson suffices to do the job. Id. We agree. As shown and described in Thomson, the wellbore is lined with cement, and perforations are made in the cement casing for each zone to be treated. Ex. 1002, 3 (“Before running the completion, each well was perforated with tubing-conveyed perforating (TCP) guns.”); Fig. 3 (showing cement-lined wellbore). The tubing string is then run into the perforated, cased wellbore, “with isolation of each zone being achieved by hydraulic-set packers positioned on each side of an MSAF tool,” which Thomson describes as “a sliding sleeve device” that is “the ‘heart’ of the completion system.” Id. at 1, 2. Fracturing fluid is pumped into the tubing string, and “once the sleeve is moved to an open position,” it is ejected “into the tubing liner annulus” between the tubing string and the cased wellbore. Id. at 2 (emphasis added). But to ultimately reach the formation, the fracturing fluid in the annulus must pass through the perforations in Thomson’s cased wellbore. Given that fracturing fluid can only escape from the annulus and into the formation through the perforations in the cement casing, increasing the number of sleeves in each zone, as Baker Hughes suggests, would not equate to an increase of injection points into the formation. Instead, that is dictated by the number of perforations in the casing, as evidenced by the testimony of Packers Plus’s expert, Mr. McGowen, [i]t would be immediately clear to a POSITA the use of multiple Echols sleeves in a Thomson zone would not provide additional injection points into the formation. The only injection points into the casing are through perforations. If a POSITA wanted to modify Thomson to add additional injection points, he or she could add additional perforations in the casing, but there would be no reason to add additional sliding sleeves in a particular zone. Ex. 2003, 15:4─8 We find this testimony persuasive. With the perforations in the casing dictating the number of points where fluid can enter the formation, we find that a skilled artisan would not have have considered that additional sleeves in a particular zone would translate to a benefit of additional injection points.” slip op. at 14
- Expert testimonyPatent owner expert creditedDecided for patent owner
“to an increase of injection points into the formation. Instead, that is dictated by the number of perforations in the casing, as evidenced by the testimony of Packers Plus’s expert, Mr. McGowen, [i]t would be immediately clear to a POSITA the use of multiple Echols sleeves in a Thomson zone would not provide additional injection points into the formation. The only injection points into the casing are through perforations. If a POSITA wanted to modify Thomson to add additional injection points, he or she could add additional perforations in the casing, but there would be no reason to add additional sliding sleeves in a particular zone. Ex. 2003, 15:4─8 We find this testimony persuasive. With the perforations in the casing dictating the number of points where fluid can enter the formation, we find that a skilled artisan would not have have considered that additional sleeves in a particular zone would translate to a benefit of additional injection points.” slip op. at 15
Patent outcomesUS 6,907,936 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,907,936 - Baker Hughes Incorporated / Baker Hughes Oilfield Operations, Inc. v. Packers Plus Energy Services, Inc.All claims unpatentablePTAB · Aug 29, 2017 · IPR2016-00656 · APJ Neil T Powell · IPR · Final written decision
Claims 1–13 are unpatentable: anticipated by Themig and Flores; claims 4, 8, 9, and 13 also are obvious over Flores and over Flores with Whiteley.
RulingsFinal written decision- Skill levelOther
“ordinary skill in the art would have recognized the possibility of making various design changes. See PO Resp. 13–16. Patent Owner rests this argument on the testimony on page 12 of Mr. McGowen’s declaration, where he opines about various design changes that could be made. See id. We afford this particular testimony little weight because Mr. McGowen does not cite any underpinning evidence for his assertions about the possible variations. See Ex. 2006, 12; 37 C.F.R. § 42.65 (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). We also note that this testimony discusses a number of possible variations, but does not discuss omitting the port-opening sleeve as a possible variation. See id. Thus, even if we credit Mr. McGowen’s testimony, it provides limited support for the proposition that the ’807 application demonstrates possession of a system without a portopening sleeve. Moreover, as Petitioner notes, Mr. McGowen indicated the variations he discussed would have been “obvious,” which is not enough to establish written description support. See ICU Medical, 558 F.3d at 1378– 1379.” slip op. at 14
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“Although the Specifications of the ’009 patent and the ’807 patent do not use the word “necessary,” we are persuaded that, just as a person of ordinary skill in the art would have understood that the spike was necessary in ICU Medical, a person of ordinary skill in the art would have understood that the port opening sleeve (i.e., sleeve 322) is necessary here. See ICU Medical, 558 F.3d at 1378; see also LizardTech. Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336, 1344–45 (Fed. Cir. 2005) (The disclosure of only one way to create a seamless DWT—by maintaining updated sums—did not provide written description support for claims that did not recite maintaining updated sums.). As Petitioner explains, the original claims of the ’807 application all require a “port-opening sleeve,” as recited in independent claims 1 and 15. Ex. 1019, 39–42; Pet. 22. Similarly, the Abstract of the ’807 application describes a tubing string assembly that includes closures, in which “[t]he closures are openable by a sleeve drivable through the tubing string inner bore.” Ex. 1019, 43. These disclosures would have strongly suggested to a person of ordinary skill in the art that a port-opening sleeve was a necessary component in the invention. See ICU Medical, 558 F.3d at 1378 (noting claims omitting spike recitation not filed with original application, but added years later during prosecution). Consistent with this, Petitioner persuades us that the only way the ’807 application teaches the claimed requirement of allowing a plug to open and then pass through a sleeve or sleeves is by using a port-opening sleeve, such as sleeve 322. Pet. 24; Reply 7. Petitioner argues that the Figure 6 embodiment cannot function without the port-opening sleeve. Pet. 24. Petitioner explains that port-closure sleeves 325a, 325b “have an inner diameter that ‘is generally equal’ to the inner diameter of the tubing string, meaning that any ball or plug that can traverse the tubing string will—in the absence of an intermediate port-opening sleeve—necessarily also pass through the port-closure sleeves [without opening them].” Id. (citing Ex. 1001, 10:1–6, Fig. 6); see also Ex. 1019, 34 (Disclosing that “sleeve 325a is selected to have an inner diameter that is generally equal to the tubing string inner diameter.”).” slip op. at 12
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner
“Although the Specifications of the ’009 patent and the ’807 patent do not use the word “necessary,” we are persuaded that, just as a person of ordinary skill in the art would have understood that the spike was necessary in ICU Medical, a person of ordinary skill in the art would have understood that the port opening sleeve (i.e., sleeve 322) is necessary here. See ICU Medical, 558 F.3d at 1378; see also LizardTech. Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336, 1344–45 (Fed. Cir. 2005) (The disclosure of only one way to create a seamless DWT—by maintaining updated sums—did not provide written description support for claims that did not recite maintaining updated sums.). As Petitioner explains, the original claims of the ’807 application all require a “port-opening sleeve,” as recited in independent claims 1 and 15. Ex. 1019, 39–42; Pet. 22. Similarly, the Abstract of the ’807 application describes a tubing string assembly that includes closures, in which “[t]he closures are openable by a sleeve drivable through the tubing string inner bore.” Ex. 1019, 43. These disclosures would have strongly suggested to a person of ordinary skill in the art that a port-opening sleeve was a necessary component in the invention. See ICU Medical, 558 F.3d at 1378 (noting claims omitting spike recitation not filed with original application, but added years later during prosecution). Consistent with this, Petitioner persuades us that the only way the ’807 application teaches the claimed requirement of allowing a plug to open and then pass through a sleeve or sleeves is by using a port-opening sleeve, such as sleeve 322. Pet. 24; Reply 7. Petitioner argues that the Figure 6 embodiment cannot function without the port-opening sleeve. Pet. 24. Petitioner explains that port-closure sleeves 325a, 325b “have an inner diameter that ‘is generally equal’ to the inner diameter of the tubing string, meaning that any ball or plug that can traverse the tubing string will—in the absence of an intermediate port-opening sleeve—necessarily also pass through the port-closure sleeves [without opening them].” Id. (citing Ex. 1001, 10:1–6, Fig. 6); see also Ex. 1019, 34 (Disclosing that “sleeve 325a is selected to have an inner diameter that is generally equal to the tubing string inner diameter.”).” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Petitioner’s assertions and evidence persuade us that Themig anticipates each of claims 1–13. Pet. 24–33. Patent Owner’s sole argument that Themig does not anticipate claims 1–13 is that the claims are entitled to the filing date of the ’807 application, such that Themig is not prior art to claims 1–13. PO Resp. 21. For the reasons, explained above in Section III.B, we find this argument unpersuasive.” slip op. at 16
Patent outcomesUS 8,657,009 unpatentable§ 102 anticipation§ 103 obviousness§ 112 disclosurePatents in suitUS 8,657,009 - Baker Hughes Incorporated / Baker Hughes Oilfield Operations, Inc. v. Packers Plus Energy Services, Inc.All claims unpatentablePTAB · Aug 29, 2017 · IPR2016-00657 · APJ Neil T Powell · IPR · Final written decision
Claims 1–8 are unpatentable as anticipated by Themig and Flores, and obvious over Flores and Flores with Whiteley; obviousness over Echols with Thomson, with or without Whiteley, was not shown.
RulingsFinal written decision- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“Petitioner persuades us that the ’807 application does not provide written description support for the challenged claims of the ’451 patent. Aside from the Figure 6 embodiment of the ’451 patent and ’807 application, no other disclosed embodiment falls within the scope of the challenged claims. As noted in our Institution Decision and in Section III.A above, each of the challenged claims requires an apparatus or method with a sleeve (or multiple sleeves) actuatable or opened by a plug, where the sleeve (or multiple sleeves) allows the plug to pass through the sleeve in the open position. Inst. Dec. 5–6. Aside from the Figure 6 embodiment, we do not find (and Patent Owner does not argue) that any of the other embodiments teaches a sleeve or sleeves that allow a plug to pass through in the open position of the sleeve or sleeves. In view of this, Petitioner persuades us that none of the disclosed embodiments other than Figure 6 of the ’807 application could potentially provide written description support for the challenged claims of the ’451 patent.” slip op. at 11
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner
“Petitioner persuades us that the ’807 application does not provide written description support for the challenged claims of the ’451 patent. Aside from the Figure 6 embodiment of the ’451 patent and ’807 application, no other disclosed embodiment falls within the scope of the challenged claims. As noted in our Institution Decision and in Section III.A above, each of the challenged claims requires an apparatus or method with a sleeve (or multiple sleeves) actuatable or opened by a plug, where the sleeve (or multiple sleeves) allows the plug to pass through the sleeve in the open position. Inst. Dec. 5–6. Aside from the Figure 6 embodiment, we do not find (and Patent Owner does not argue) that any of the other embodiments teaches a sleeve or sleeves that allow a plug to pass through in the open position of the sleeve or sleeves. In view of this, Petitioner persuades us that none of the disclosed embodiments other than Figure 6 of the ’807 application could potentially provide written description support for the challenged claims of the ’451 patent.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Petitioner’s assertions and evidence persuade us that Themig anticipates each of claims 1–8. Patent Owner’s sole argument that Themig does not anticipate claims 1–8 is that the claims are entitled to the filing date of the ’807 application, such that Themig is not prior art to claims 1–8. PO Resp. 21. For the reasons, explained above in Section II.B, we find this argument unpersuasive.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Patent Owner persuades us that Petitioner has not provided rational underpinning for its contention that it would have been obvious to add multiple examples of Echols’ sleeve to each interval of Thomson’s system. We find unpersuasive Petitioner’s argument that neither the claims nor the challenge requires a cement casing in the well. Regardless of what the claims require, Petitioner chose Thomson and Echols as the prior art to support its obviousness contention. On this record, we are persuaded that Thomson discloses using its tubing string in a well lined with a cement casing. Thomson discloses that “[b]efore running the completion, each well was perforated with tubing-conveyed perforating (TCP) guns.” Ex. 1005, 3. Thomson also discusses “installation into the horizontal section of the liner,” and admonishes that “[t]he well in general and liner in particular needs to be properly cleaned and conditioned. This is essential for running ten packers in a horizontal liner.” Id. at 3–4. These disclosures indicate that Thomson’s system includes a cement liner in the wellbore. Consistent with this, Figure 3 of Thomson, reproduced below, appears to show a liner at the periphery of the wellbore.” slip op. at 26
Patent outcomesUS 9,074,451 unpatentable§ 102 anticipation§ 103 obviousness§ 112 disclosurePatents in suitUS 9,074,451 - Apple Inc. v. Immersion CorporationInstitution deniedPTAB · Aug 17, 2017 · IPR2017-00897 · APJ Neil T Powell · IPR · Institution
The Board denied institution on claims 1–26 under § 314(a), finding the second petition strategically delayed without persuasive justification after the Board and Patent Owner had responded to the first petition.
RulingsInstitution decision- Other 314aInstitution denied discretionary otherInstitution denied
“These explanations, without more, do not justify permitting Petitioner to wait to file its Second Petition until after it has had the advantage of seeing our Decision on Institution in the First Petition. Contrary to Petitioner’s suggestion, the decision to file two separate petitions to challenge the claims asserted in the related ITC and the district court would not appear to conserve either the Board’s or the parties’ resources. Rather, it would appear to expend more resources than challenging all of the claims in one Petition. Indeed, it would appear Petitioner could have simultaneously challenged all of the claims asserted in the related ITC and district court proceedings, as the prior Petition demonstrates Petitioner knew of both the ITC and the district court actions when the prior Petition was filed. See Case IPR2016-01381, Paper 1, 1–2. Consequently, this factor also weighs against institution. Weighing the Factors for Discretionary Non-Institution Under § 314(a) We view Petitioner’s strategy in this particular case as burdensome to Patent Owner and the Board with no persuasive explanation of why it should be allowed. Petitioner does not even attempt to assert that it could not have raised the challenges in the Second Petition simultaneously with the challenges raised in the prior Petition. And we find Petitioner’s explanation of why it chose to delay filing the Second Petition unpersuasive. We do not take lightly denying a petition on grounds unrelated to its substantive patentability challenges. Nor do we hold that multiple petitions against the same claims of the same patent are never permitted. Here, however, we view the prejudice to Patent Owner to be greater than that to Petitioner. We, therefore, decline to institute inter partes review under 35 U.S.C. § 314(a).” slip op. at 12
Discretionary denialPatents in suitUS 8,773,356 - Life Technologies Corporation v. Unisone Strategic IP, Inc.All claims unpatentablePTAB · Jun 23, 2017 · CBM2016-00025 · APJ Hyun J Jung · CBM · Final written decision
Claims 1, 14, 19, 22–28, 32, 34–36, and 45 are unpatentable under § 101 as patent-ineligible subject matter.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“II. ANALYSIS A. Claim Construction Although Petitioner presents constructions for several claim terms (Pet. 39), we determine that no terms require express construction for purposes of this Decision. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy).” slip op. at 9
- BurdenFwd all claims unpatentableUnpatentable
“Patent Owner presents no arguments regarding Petitioner’s challenge that claims 1, 14, 19, 22–28, 32, 34–36, and 45 are directed to patent-ineligible subject matter under 35 U.S.C. § 101. Patent Owner acknowledges that the Scheduling Order (Paper 8, 3) cautions that “any arguments for patentability not raised in the response will be deemed waived.” Paper 15, 5. Patent Owner’s counsel also stated that “Patent owner has been advised of all the orders from the board.” Ex. 1037, 6:9–12. In view of the record before us, we determine that Patent Owner has been cautioned and advised regarding waiver of patentability arguments, and because Patent Owner has not raised any arguments for patentability, we find that it has waived its arguments regarding Petitioner’s challenge of claims 1, 14, 19, 22–28, 32, 34–36, and 45 as directed to patent-ineligible subject matter. Therefore, the record now is the same as with our Decision on Institution. For the reasons stated in that decision, we conclude that claims 1, 14, 19, 22–28, 32, 34–36, and 45 are unpatentable under 35 U.S.C. § 101.” slip op. at 23
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Unpatentable
“Patent Owner presents no arguments regarding Petitioner’s challenge that claims 1, 14, 19, 22–28, 32, 34–36, and 45 are directed to patent-ineligible subject matter under 35 U.S.C. § 101. Patent Owner acknowledges that the Scheduling Order (Paper 8, 3) cautions that “any arguments for patentability not raised in the response will be deemed waived.” Paper 15, 5. Patent Owner’s counsel also stated that “Patent owner has been advised of all the orders from the board.” Ex. 1037, 6:9–12. In view of the record before us, we determine that Patent Owner has been cautioned and advised regarding waiver of patentability arguments, and because Patent Owner has not raised any arguments for patentability, we find that it has waived its arguments regarding Petitioner’s challenge of claims 1, 14, 19, 22–28, 32, 34–36, and 45 as directed to patent-ineligible subject matter. Therefore, the record now is the same as with our Decision on Institution. For the reasons stated in that decision, we conclude that claims 1, 14, 19, 22–28, 32, 34–36, and 45 are unpatentable under 35 U.S.C. § 101.” slip op. at 23
Patent outcomesUS 6,996,538 unpatentableClaim construction§ 101 eligibilityPatents in suitUS 6,996,538 - Adva Optical Networking, Inc. v. Rad Data Communications Ltd.Institution deniedPTAB · Mar 9, 2017 · IPR2016-01848 · APJ James A Worth · IPR · Institution
The Board denied institution on all challenged claims because the asserted prior art and arguments were the same or substantially similar to those considered during prosecution under § 325(d).
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“35 U.S.C. § 314(a) is guided, in part, by the further language of 35 U.S.C. § 325(d), which provides: “In determining whether to institute or order a proceeding under this chapter, chapter 30, or chapter 31, the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d); see generally Integrated Global Concepts, Inc. v. Advanced Messaging Tech., Inc., Case IPR2014- 01027, slip op. 7–8 (Paper 16) (PTAB Dec. 22, 2014) (declining to institute proceeding on claim where same prior art and substantially the same arguments were presented to the Office previously in reexamination). We agree with Patent Owner that the same prior art (i.e., AAPA and Rivaud) and substantially the same arguments were presented in the original prosecution of the ’689 patent. Petitioner’s asserted ground is identical to a rejection that was applied by the Examiner in the course of prosecution. The Examiner cited Admitted Prior Art as disclosing “a primary reference time clock that provides a reference time of day and a reference frequency,” and the Examiner relied upon Rivaud to “show a housing 1112 which houses the primary reference time clock and packet master clock.” Ex. 1007, 4. On this record, we find that the prior art submitted in the Petition is indeed the same as prior art submitted to the Office.” slip op. at 19
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied 325dInstitution denied
“information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see also 37 C.F.R. § 42.108. For the reasons set forth below, we do not institute an inter partes review for the challenged claims.” slip op. at 2
Discretionary denialcites KSRPatents in suitUS 9,276,689 - Gopro, Inc. v. Contour IP Holding LLCRehearing deniedPTAB · Feb 16, 2017 · IPR2015-01080 · APJ Justin T Arbes · IPR · Rehearing
The Board denied GoPro’s rehearing request, leaving intact its determination that claims 1, 2, and 11–30 were not shown unpatentable because the GoPro Catalog was not proven publicly accessible.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision should be modified. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“the Reply and at the oral hearing. Mere disagreement with a decision is not a proper basis for rehearing when a party’s arguments were considered and addressed in the decision. As we stated in the Final Decision, although some cases, such as In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989), refer simply to “the public interested in the art,” the majority of cases define the standard as accessibility to persons interested and ordinarily skilled in the art. Dec. 19–21. We remain persuaded that the appropriate standard is that set forth in Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016): “A reference will be considered publicly accessible if it was ‘disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it’” (citation omitted).2” slip op. at 4
- BurdenDecided for patent owner
“decision should be modified. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 2
§ 102 anticipationPatents in suitUS 8,890,954
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.