• Edwards Lifesciences Corporation v. Boston Scientific Scimed, Inc.Some claims unpatentable
  PTAB · Oct 31, 2018 · IPR2017-01281 · APJ James A Tartal · IPR · Final written decision

  Claims 5, 6, 8–12, 14, 16, and 17 are unpatentable: claim 5 is anticipated by Dlugos; the remaining claims are obvious over the specified combinations.

  RulingsFinal written decision

  • BurdenMixed

    “evidence discussed in the Petition, including the declaration of Mr. Trotta. For the reasons that follow, we determine that Petitioner has shown by a preponderance of the evidence that claim 5 is anticipated by Dlugos and would have been obvious over Dlugos and Eskaros; that claim 8 would have been obvious over Dlugos, Eskaros, and Hijlkema; that claims 6, 14, and 16 would have been obvious over Dlugos, Eskaros, and Forman; that claims 9, 10, and 12 would have been obvious over Dlugos, Eskaros, and Traxler; that claim 11 would have been obvious over Dlugos, Eskaros, Traxler, and Forman; and that claim 17 would have been obvious over Dlugos, Eskaros, Forman, and Becker.” slip op. at 24

  • Expert testimonyPetitioner expert discountedOther

    “shown that Dlugos necessarily teaches first and second cone regions of the balloon having at least one fold in the fully inflated state. Moreover, we find Mr. Trotta’s testimony in support of Petitioner’s contention insufficient. According to Mr. Trotta: When folds are welded down, as shown in the figure 3, it would necessarily result in folds remaining in the transition/cone regions of the balloon when the balloon is inflated, and even when fully inflated to the specifications on the label. Because the folds are captured within the welded region, even when the balloon is fully inflated, the pressure will distribute such that there is more pressure in the working region and less pressure at the transition regions. Thus, there is insufficient pressure in the transition cone regions for the folds to be completely removed. Ex. 1005 ¶ 119. Mr. Trotta cites no support for his opinions and offers no plausible explanation for why “pressure will distribute such that there is more pressure in the working region and less pressure at the transition regions,” rather than equal pressure throughout the interior space of a balloon. Nor are we persuaded that statements by the Examiner during prosecution identified by Petitioner, which Patent Owner contends were later abandoned by the Examiner, are sufficient to establish the inherency of the claimed feature. See Pet. 39–40; Prelim. Resp. 14–15. Petitioner has not shown by a preponderance of the evidence that Dlugos teaches “first and second cone regions of the balloon having at least one fold in the fully inflated state” because Petitioner has not shown that Dlugos necessarily teaches any cone region having at least one fold in the fully inflated state, much less both a first and a second cone region, in the absence of a persuasive showing that Dlugos teaches welding both ends of the balloon to the shaft.” slip op. at 40

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “of the claimed invention would have had either of the following qualifications: (1) “an undergraduate degree in mechanical manufacturing or material science engineering, as well as at least five years of experience in the industry working with catheters and balloons and the manufacturing of those devices; or without an undergraduate degree,” or (2) “ten years of working experience designing, manufacturing and/or overseeing the processes for designing and/or manufacturing the tools and/or the devices.” Pet. 14. Mr. Trotta supports Petitioner’s contention with regard to the level of ordinary skill in the art. Ex. 1005 ¶ 57. Patent Owner does not contest Petitioner’s asserted level of ordinary skill in the art. See Prelim. Resp. 6 n.3. Based on the evidence provided, including the prior art of record, we agree with Petitioner’s proposed level of ordinary skill and also find that the prior art of record further reflects the level of ordinary skill in the art. See also Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (noting that the prior art of record may reflect the level of ordinary skill in the art).” slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner

    “For the following reasons, we find insufficiently supported and unreasonably broad Petitioner’s contention that “fold” broadly includes all “lobes,” “wraps,” “wrappings,” and “protrusions,” even if those terms appear in some context in patent applications incorporated by reference to the ’767 patent. Petitioner neither identifies precisely where that context can be found in the record of this proceeding nor offers any explanation of that context to demonstrate by a preponderance of the evidence that the term, reasonably construed in light of the Specification of the ’767 patent, defines “fold” as including all “lobes,” “wraps,” “wrappings,” and “protrusions.” The mere incorporation by reference of other applications into the Specification of the ’767, absent further persuasive explanation, does not sufficiently support the proposition that the term “fold” broadly encompasses, for example, any “protrusion.” Moreover, Petitioner provides no explanation for why “examples of methods of balloon folding” that “reference” the terms “lobes,” “wraps,” “wrappings,” and “protrusions” demonstrate that the meaning of “fold” encompasses those terms. Finally, the ’767 patent expressly states that the term “fold”’ includes “pleats, wings, and any similar structure.” Ex. 1001, 3:62–63. Petitioner, however, makes no persuasive showing supported by more than conclusory assertions that all “lobes,” “wraps,” “wrappings,” and “protrusions” constitute “similar structure” to folds, pleats, or wings. Accordingly, we find the term “fold” in the ’767 patent encompasses “pleats, wings, and any similar structure.” Thus, “fold” also encompasses lobes, wraps, wrappings, or protrusions (or any other feature) only to the extent such feature constitutes “similar structure” to folds, pleats, or wings.” slip op. at 14

  Patent outcomesUS 7,828,767 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,828,767
• Riot Games, Inc. v. Paltalk Holdings, Inc.Rehearing denied
  PTAB · Jun 29, 2018 · IPR2018-00129 · APJ Thu A Dang · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, finding no abuse of discretion in instituting review of claims 1–10, 16–18, and 31–47 based on the RFCs’ public accessibility.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. ANALYSIS When rehearing a decision on petition, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears the burden of showing an abuse of discretion, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “and slides) disseminated to members of even a somewhat closed group without restriction as to further dissemination may tend to indicate public accessibility of the documents, in light of other factors, even in the absence of indexing for search purposes. See Medtronic, Inc. v. Barry, No. 2017- 1169, 2018 WL 2769092, at **8–9 (Fed. Cir. June 11, 2018) (“Further, even if the Board were correct in its assumption that Medtronic only gave the Video and Slides to the SDSG members, it did not address whether the disclosures would remain confidential.”)4 On this preliminary record, Petitioner’s evidence shows sufficiently that mailing list members would have been apprised of a new RFC’s contents, at least via the Internet Society’s newsletter’s summary, if not via the mailing list (coupled with prior knowledge of the documents via group circulation thereof), with unrestricted access to the newly published RFC documents, and without any further restriction as to dissemination. See Ex. 1026 ¶¶ 18–24. In other words, prior to official publication of RFC documents, “[t]he Area Director . . . circulates the document to the wider IETF community, for comment, and” slip op. at 7

  § 102 anticipation
  Patents in suitUS 5,822,523
• Riot Games, Inc. v. Paltalk Holdings, Inc.Rehearing denied
  PTAB · Jun 29, 2018 · IPR2018-00130 · APJ Thu A Dang · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, finding no abuse of discretion in instituting inter partes review of claims 1, 11–15, and 19–30 based on the RFCs’ public accessibility.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “Based on the foregoing discussion, Patent Owner fails to show an overlooked or misapprehended material matter amounting to an abuse of discretion in determining Petitioner shows sufficiently that RFC 1692, RFC 1459, and RFC 791 qualify as prior art printed publications. III. CONCLUSION Patent Owner has not carried its burden of demonstrating that we misapprehended or overlooked any material matters in the Decision, and has not shown an abuse of discretion in the Decision to institute an inter partes review of the challenged claims of the ’523 patent. IV. ORDER In consideration of the foregoing, it is hereby ORDERED that Patent Owner’s Request for Rehearing is denied.” slip op. at 8

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “Crocker’s testimony that the RFCs were available generally prior to the critical date, wherein a skilled artisan could have determined how to access particular RFCs based on mailing lists and newsletters discussing the RFCs. See Dec. 30–32. In particular, Mr. Crocker’s testimony included the (numbered accordingly), the “situation” regarding RFCs and the IETF, as summarized by the court employing, in part, evidence including a 1997 SEC (Securities Exchange Commission”) filing, would not have changed materially prior to the critical date (February, 1996) involved here. following: 1) “an official summary of published RFCs appeared in each issue of the Internet Society’s newsletter” which “was well-known to members of the Internet technical community as a source for an official summary of published RFCs” (id. at 31 (citing Ex. 1026 ¶ 24)); 2) a well-known mailing list announced RFCs to which anyone could subscribe since the late 1980s (id. (citing Ex. 1026 ¶ 21)); and 3) an RFC Editor publication “summarize[d] the status of all Internet protocol and service specifications” wherein “[t]hese RFCs are made publicly available pursuant to the standard RFC publication process” (id. (citing Ex. 1026 ¶ 23)). Mr. Crocker further testifies as follows: “Since the early 1990s, the RFC Editor repository has been freely accessible to the general public with no login, password, or membership requirement, and was similarly available to the Internet technical community since the 1970s.” Id. (citing Ex. 1026 ¶ 26).” slip op. at 5

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “of our Decision (Paper 11, “Dec.”) to institute inter partes review of claims 1, 11–15, and 19–30 of (the “challenged claims”) of U.S. Patent No. 5,822,523 and 5,822,523 C1 (Ex. 1001, the “’523 patent”). In the Decision, we instituted a trial on the following grounds asserted by Petitioner: 1) claims 1, 15, and 19–27 of the ’523 patent for obviousness over Aldred and RFC 1692; and 2) claims 11–15, 23, and 27–30 of the ’523 patent for obviousness over Aldred, RFC 1692, and Ulrich. Dec. 49. For the reasons stated below, Patent Owner’s Request for Rehearing is denied.” slip op. at 2

  § 102 anticipation
  Patents in suitUS 5,822,523
• Edwards Lifesciences Corporation v. Boston Scientific Scimed, Inc.Some claims unpatentable
  PTAB · Jun 28, 2018 · IPR2017-00444 · APJ James A Tartal · IPR · Final written decision

  Claims 10, 11, 14, 15, 17–19, 23, 25–28, 31, 33–35, 37, 39, and 40 are unpatentable as obvious; claims 1, 2, 6, 8, and 9 were not shown obvious.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “seeks. See 37 C.F.R. 42.20(c) (“The moving party has the burden of proof to establish that it is entitled to the requested relief.”). First, a motion to exclude deals with the admissibility of evidence under the Federal Rules of Evidence. See 37 C.F.R. §§ 42.62 (applying the Federal Rules of Evidence to inter partes reviews), 42.64; Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,758 (August 14, 2012) (“Admissibility of evidence is generally governed by the Federal Rules of Evidence.”). As stated in the Office Patent Trial Practice Guide, the parties may submit motions to exclude regarding evidence “believed to be inadmissible.” Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,758. Further, a motion to exclude “must explain why the evidence is not admissible (e.g., relevance or hearsay).” Id. at 48,767. Patent Owner has made no showing that the Supplemental Declaration or Petitioner’s Reply are inadmissible. We further agree with prior panels of the Board, which have determined under similar circumstances that a “motion to exclude evidence filed for the purpose of striking or excluding an opponent’s brief and/or evidence that a party believes goes beyond what is permitted under 37 CFR § 42.23 is improper.” Palo Alto Networks, Inc. v. Finjan Inc., Case IPR2015-01979, Paper 62, 66 (PTAB Mar. 15, 2017) (stating that an “allegation that evidence does not comply with 37 CFR § 42.23 is not a sufficient reason under the Federal Rules of Evidence for making an objection and requesting exclusion of such evidence”); see also Blackberry Corp. v. Zipit Wireless, Inc., Case IPR2014-01508, Paper 49, 40 (PTAB Mar. 29, 2016) (“a motion to exclude is not a proper vehicle for a party to raise the issue of arguments exceeding the permissible scope of a reply”).” slip op. at 11

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Second, if “linear” motion were required, Petitioner has persuasively explained that the dies taught in Yasumi move in the same manner as the dies claimed in the ’560 patent. Ex. 1105 ¶¶ 95–104, 127–129, 136; Ex. 1127 ¶¶ 50–53. We credit the testimony of Mr. Sheehan over Dr. Solar on this point because we find Mr. Sheehan’s testimony to be most consistent with the teachings of Yasumi. Indeed, Patent Owner does not dispute that Yasumi teaches “a rotatable actuation device coupled to the dies,” as claimed, or that rotation of the actuation device causes the aperture to increase or decrease in size. See generally PO Resp. Patent Owner offers no plausible theory in rebuttal, much less any evidence, to suggest that the aperture of Yasumi formed by the inward facing straight sides of the dies increases and decreases with the rotation of the actuation device, but that the faces do not “move inward and reduce the size of the aperture or outward so as to increase the size of the aperture,” as claimed. To the extent Patent Owner is merely arguing that Petitioner has not made the necessary showing, we find such argument in this case unpersuasive as Petitioner has shown by a preponderance of the evidence that Yasumi teaches every limitation of claim 10. See, e.g., Pet. 66 (citing Ex. 1103, 8:42–54).” slip op. at 34

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner

    “We agree with Petitioner that the preamble recitation of “[a] stent crimper comprising” is not limiting as to any of the challenged claims. The preamble language merely provides a name to the claimed invention that describes a use for the invention, whereas the body of each claim describes a structurally complete invention. See Catalina Mktg., 289 F.3d at 809. Because “the preamble offers no distinct definition of any of the claimed invention’s limitations, but rather merely states . . . the purpose or intended use of the invention, . . . the preamble is of no significance to claim construction.” Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999), citing Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997); Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989); Kropa v. Robie, 187 F.2d 150, 152 (CCPA 1951). Moreover, contrary to Patent Owner’s arguments, the ’560 patent makes clear that the claimed invention is not intended to be limited to a stent crimper. As Petitioner notes, “the specification provides broad disclosure of multiple alternative applications for the invention,” including manipulating other medical devices and as a balloon mold. Pet. Reply. 7–8 (citing Ex. 1101, 2:48–55, 3:14–22, 3:36–37, 8:65–9:62, Figs. 12, 13); Ex. 1101, 2:48–55, 3:16–21, 3:36–37, 8:65–9:62, Figs. 12, 13.” slip op. at 16

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

    “To the extent Petitioner’s proposal divorces the recited “engaged” from the “operation” of the apparatus, we agree the meaning would be too broad. However, we discern little substantive difference in the arguments made by both parties with regard to what “operatively engaged” encompasses, even if they dispute the full scope of the meaning of the term. There is no reasonable dispute that an element is “operatively engaged” if it is engaged, directly or indirectly, in the operation of the device. See, e.g., Tr. 24:13–25:12; see also Ex. 1126, 60:18–25 (Dr. Solar equating operative engagement to “whether it’s fixed or connected in some manner that explains how that part works”). No further express construction is necessary.” slip op. at 19

  Patent outcomesUS 6,915,560 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,915,560
• Prairie Land Millwright Services, Inc. v. Sioux Steel CompanyNo claims unpatentable
  PTAB · Apr 4, 2018 · IPR2016-01873 · APJ Neil T Powell · IPR · Final written decision

  Claims 1–28 were not shown unpatentable because the proposed combinations did not establish the claimed pivot unit limitations.

  RulingsFinal written decision

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

    “In view of this, and consistent with the Specification, we understand that the claim language “configured to carry a portion of the succession of interconnected paddles” uses “carry” in accordance with its plain and ordinary meaning as supporting the paddles while they move. The pivot unit/drive unit embodiment shown in Figure 13 presents an example consistent with this. This pivot unit/drive unit includes rotatable driven member 60. See Ex. 1001, Fig. 13. Endless loop member 20 engages rotatable driven member 60. Id. at 9:65–67. Specifically, rotatable driven member 60 is engaged to an underside of upper stretch 23 of endless loop member 20, in a position to support a portion of the weight of endless loop member 20 and the weight of a portion of paddles 18. Id. at Fig. 13, Fig. 8. Accordingly, the embodiment of pivot unit/drive unit shown in Figure 13 is configured to support the weight of a portion of paddles 18 via rotatable driven member 60 while paddles 18 move. Indeed, the Specification consistently uses “carry” according to its plain and ordinary meaning. For example, the Specification discloses “endless loop member 20 carrying the paddles” (id. at 5:13–31) and that “power unit 26 may comprise a first base portion 28 which carries a portion of the succession of interconnected paddles 18” (id. at 5:41–43). Endless loop member 20 and first base portion 28 of power unit 26 support paddles 18 while they move. Endless loop 20 directly supports paddles 18, which mount to endless loop 20. See id. at 5:19–22, Figs. 8, 13. Base portion 28 of power unit 26 supports paddles 18 via endless loop 20, which mounts to rotatable driven member 30 of base portion 28. See id. at 5:41–51, Figs. 7, 8.” slip op. at 14

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

    “Figure 4 provides a cross-sectional view of Dixon’s sweep conveyor 27. Ex. 1007, 2:10–12, 2:38–45. Sprockets 49, 51 at the ends of Dixon’s sweep conveyor 27 carry (i.e., support) roller chain 57 and paddles 59. Id. at Fig. 4, 2:64–3:1, 3:16–22. Petitioner does not provide evidence or explanation demonstrating that the intermediate portion of Dixon’s sweep conveyor 27 carries, to any extent, roller chain 57 or the succession of paddles 59. Accordingly, Petitioner has not shown that making the intermediate portion of Dixon’s sweep a modular pivot unit (as Petitioner suggests would have been obvious) would produce a pivot unit “configured to carry a portion of the succession of interconnected paddles.” And Petitioner provides no reasoning or evidence persuading us that it would have been obvious, in addition to making Dixon’s intermediate portion a pivot unit, to further modify the intermediate portion to carry a portion of the succession of interconnected paddles. Thus, Petitioner’s assertion that it would have been obvious to make the intermediate portion of Dixon’s sweep a modular pivot unit fails to demonstrate obviousness of all of the limitations of claim 1.” slip op. at 23

  • BurdenNot shown unpatentable

    “been obvious for the pivot unit to be configured to carry a portion of the paddles (PO Resp. 16–17), Petitioner does not waiver from its position that the term “carry” has any meaning other than its plain and ordinary (see Pet. 11–12). Nor and does Petitioner offer persuasive evidence of how the allegedly obvious modifications would result in the claimed invention. Instead, Petitioner responds with nothing more than the conclusory assertion that modularizing Dixon’s sweep and adding a pivot would result in a pivot unit configured to carry a portion of the paddles. Pet. Reply 9–11. Petitioner cites no expert testimony to support this proposition. See id.; see also Pet. 19–20 (presenting substantially same proposition without citing expert testimony). The proposition presented by Petitioner cannot stand on the conclusory assertion Petitioner offers. Regarding dependent claims 2–4 and 6–11, Petitioner’s assertions do not cure the foregoing deficiencies in Petitioner’s contention that independent claim 1 would have been obvious. With respect to claim 4, for example, Petitioner asserts that it would have been obvious “to provide a pivot on the drive unit of the Dixon/Berreau/Borowski sweep discussed above with respect to claim 1 above, e.g., between the outer drive unit and an adjacent intermediate linking unit.” Pet. 21. Here again, Petitioner does not provide evidence or explanation of how the allegedly obvious modification would have resulted in “a pivot unit configured to carry a portion of the succession of interconnected paddles, the pivot unit including a pair of connected sections with each section being connected to an adjacent said unit of the array,” as required by claim 1 (and thus, claim 4). For example, in view of Petitioner identifying Dixon’s “drive unit” as being at outboard sweep end 37, Petitioner does not explain how including the drive unit as part of the pivot unit would result in the pivot unit including a pair of connected sections with each section being connected to an adjacent said unit of the array. For the foregoing reasons, Petitioner has not demonstrated by a preponderance of the evidence that claims 1–4 and 6–11 would have been obvious over Dixon, Berreau, and Borowski.” slip op. at 26

  Patent outcomesUS 8,967,937 not shown unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 8,967,937
• Weatherford International, LLC / Weatherford /Lamb, Inc. et al. v. Packers Plus Energy Services, Inc.All claims unpatentable
  PTAB · Apr 3, 2018 · IPR2016-01517 · APJ Neil T Powell · IPR · Final written decision

  Claims 23 and 27 are unpatentable as obvious over Thomson, Ellsworth, and Yost because the Graham factors favoring obviousness outweigh the evidence of copying and industry praise.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “revenue from its IsoFrac and FracPoint well completion systems, are inadmissible under FRE 702 and 705. FRE 705 states that “an expert may state an opinion — and give the reasons for it — without first testifying to the underlying facts or data.” Further, 37 C.F.R. § 42.65(a) states that “[e]xpert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” Thus, Petitioner’s arguments with respect to Exhibits 2051 and 2081 go more to weight of the declarant’s testimony rather than admissibility. We do not, therefore exclude Exhibits 2051 and 2081. We appreciate that Mr. McGowen’s initial estimates are based on information not available to Petitioner in this proceeding. See Pet. Mot. 4, see also Ex. 2051 42, n. 65 (“In arriving at this revenue estimate, I identified, analyzed, and summarized Baker Hughes confidential data containing information on the cost and/or profit derived from the sale of equipment that was run into a well.”). However, Mr. McGowen’s subsequent reliance on only publically available Baker Hughes’s marketing sources and a cash estimate of “revenue per frac stage” is reasonably within Mr. McGowen’s experience and expertise in the field. See Ex. 2081, 23–24, 6 see also Ex. 2051, 1–3. Because the actual revenue value is admittedly a “rough estimate,” we accord little if any weight to the asserted financial figure itself. Id. We do credit, to some extent, Mr. McGowen’s inference that Baker Hughes has derived certain business revenue from its FracPoint system. See Ex. 2051, 41–42, see also Ex. 2081, 22–24.” slip op. at 9

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

    “IV. ANALYSIS A. Claim Construction Petitioner proposes constructions for certain claim terms. Pet. 26–27. Patent Owner addresses the meaning of the claim language “solid body packer.” PO Resp. 3–5. For purposes of this decision, we need not construe explicitly any claim language to determine that Petitioner has demonstrated obviousness of claim 25 by a preponderance of the evidence. See 35 U.S.C. § 314(a); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 16

  • Skill levelSkill level board ownDecided for petitioner

    “ordinary skill in the art as discussed above, upon which the parties essentially agree, we determine that a person of ordinary skill in the art would have known that it was conventional to cement and line a wellbore with a cemented casing for a multi-stage fracturing completion. See Ex. 1036, 48 (“Options considered for isolating the individual zones included conventional cementing of the casing with perforations to access the individual zones.”). A person of ordinary skill in the art also would have known that there existed circumstances in which open hole multi-stage fracturing might also be successful. See Ex. 1002, 5 (Yost describing successful production increase from using multi-stage fracturing to achieve “zone isolation” in an “open hole” so as to “avoid the problems of formation damage associated with cementing and to eliminate the need for tubing-conveyed perforating of numerous treatment intervals”); Ex. 1042, 3 (“The horizontal section for the first well Shell Midale horizontal C9-3-6-11Wd was completed in a conventional manner with a cemented and perforated liner. Openhole completions were used in the next two horizontal wells.”); see also id. (noting “potential for selective acid stimulation of horizontal wells completed openhole, provided that good zonal isolation is maintained.”). The level of knowledge attributed to one of skill in the art by Mr. McGowen, Dr. Rao, and the prior art, illustrates, albeit in different ways, certain problems encountered in wellbore completion and how the industry addressed and overcame such problems prior to the filing of the ’505 patent. For instance, knowledge of both conventional fracturing through perforations in cemented casing completions as described by Mr. McGowen, and fracturing in open hole completions in McClellan, is consistent with the Federal Circuit’s admonition that the hypothetical person of ordinary skill in the art is attributed with knowledge “of all prior art in the field of the inventor’s endeavor and of prior art solutions for a common problem even if outside that field.” In re Nilssen, 851 F.2d 1401, 1403 (Fed. Cir. 1988). What we do not attribute to one of ordinary skill in the art based on the testimonial and prior art evidence in this proceeding, is Patent Owner’s contention that one of ordinary skill in the art would have understood that multi-stage fracturing required cemented casing completion. See PO Resp. 15 (“Thus, a [person of ordinary skill in the art] would also expect that cemented casing is necessary to avoid the formation of these complex fracture geometries.”). This position appears as mostly unsupported attorney argument. Although in his declaration Mr. McGowen opined that “Plug and Perf was deemed necessary partly because of the type of hydraulic fracturing treatments being pumped and partly because of the then current theories about the behavior of hydraulic fractures,” nowhere does Patent Owner point us to persuasive evidence that cased hole Plug and Perf completions were the sole option one of skill in the art would have considered for successful wellbore completions. Ex. 2051, 23; see also id. at 17 (Mr. McGowen states that “[t]he POSITA would consider many different well configurations, reservoir types, stimulation methods, downhole operations, and other factors.”).” slip op. at 30

  • Expert testimonyPetitioner expert creditedPatent owner expert creditedMixed

    “After reviewing the evidence, we give some credit to the testimony of both parties’ Declarants in this proceeding. For instance, we determine that one of ordinary skill in the art would have known that Plug and Perf using a cemented casing was a conventionally accepted method in the oil and gas industry for completing a hydraulically fractured horizontal well. See Ex. 2051, 22, (Mr. McGowen testified that “[a]s of 2001, Plug and Perf was the industry standard because it had been economically successful, rigorously tested, and widely accepted amongst industry experts.”). Various papers cited by Patent Owner lend credence to the assertion that in the industry cemented casings were commonly used and characterized by some as “a prerequisite to ensure adequate zonal isolation for multiple fracture treatments in horizontal wells.” Ex. 2079, 1, see also Ex. 2078, 2 (“Austin et al. emphasized the importance of casing and cementing the horizontal section to allow for fracture initiation points to place multiple fractures along the horizontal well.”). We also give certain credit, as well, to Dr. Rao, who testifies that “Yost specifically describes multi-stage open hole fracturing of horizontal wells using packers for zonal isolation” (Ex. 1007 ¶ 43), and that those of ordinary skill in the art understood that such multi-stage open hole fracturing could be performed successfully (id. at ¶¶ 44–56). We also credit Dr. Rao’s testimony that those of ordinary skill in the art “could readily discern when it was advisable to use a cased hole tool in open hole and when it was not.” Id. at ¶ 57. We find that such knowledge is not mutually exclusive. For example, both parties’ Declarants provide reasoning and exemplary prior art references detailing why one of ordinary skill in the art might consider a cased well and an uncased well in different circumstances. Compare Ex. 1007 ¶ 43, (Dr. Rao discussing Yost’s multi-stage hydraulic fracturing in horizontal open-hole completion to “avoid the problems of formation damage associated with cementing.”) with Ex. 2051, 22–23 (Mr. McGowen explains that the problem of “multiple complex fractures being initiated near the wellbore, could be better controlled through the precise placement of perforations, which requires cementing, perforating and the Plug and Perf method.”). Consistent with our finding, Mr. McGowen testified during his deposition that open hole completions would have been an option: Q. So going without cemented casing would have been an option to consider[?] A. It would have been an option to consider. But it’s something that had been -- in the early days of horizontal, there was hydraulic fracturing done in open holes and that was a more primitive completion system where they had no control over where the frac fluids were going, and then the industry progressed and became more sophisticated and developed methods to try to control where the fracture initiated.” slip op. at 29

  Patent outcomesUS 7,134,505 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,134,505
• Weatherford International, LLC / Weatherford /Lamb, Inc. et al. v. Packers Plus Energy Services, Inc.All claims unpatentable
  PTAB · Apr 3, 2018 · IPR2016-01514 · APJ Neil T Powell · IPR · Final written decision

  Claim 25 is unpatentable as obvious over Thomson, Ellsworth, and Yost because the prior art and first three Graham factors outweigh evidence of copying and industry praise.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “It is not clear that Mr. McGowen’s estimates of Baker Hughes’s revenue from its IsoFrac and FracPoint well completion systems, are inadmissible under FRE 702 and 705. FRE 705 states that “an expert may state an opinion — and give the reasons for it — without first testifying to the underlying facts or data.” Further, 37 C.F.R. § 42.65(a) states that “[e]xpert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” Thus, Petitioner’s arguments with respect to Exhibits 2051 and 2081 go more to weight of the declarant’s testimony rather than admissibility. We do not, therefore exclude Exhibits 2051 and 2081. We appreciate that Mr. McGowen’s initial estimates are based on information not available to Petitioner in this proceeding. See Pet. Mot. 4, see also Ex. 2051 42, n. 65 (“In arriving at this revenue estimate, I identified, analyzed, and summarized Baker Hughes confidential data containing information on the cost and/or profit derived from the sale of equipment that was run into a well.”). However, Mr. McGowen’s subsequent reliance on only publically available Baker Hughes’s marketing sources and a cash estimate of “revenue per frac stage” is reasonably within Mr. McGowen’s experience and expertise in the field. See Ex. 2081, 23–246, see also Ex. 2051, 1–3. Because the actual revenue value is admittedly a “rough estimate,” we accord little if any weight to the asserted financial figure itself. Id. We do credit, to some extent, Mr. McGowen’s inference that Baker Hughes has derived certain business revenue from its FracPoint system. See Ex. 2051, 41–42, see also Ex. 2081, 22–24.” slip op. at 9

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

    “Patent Owner addresses the meaning of the claim language “solid body packer.” PO Resp. 3–5. For purposes of this decision, we need not construe explicitly any claim language to determine that Petitioner has demonstrated obviousness of claim 25 by a preponderance of the evidence. See 35 U.S.C. § 314(a); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 15

  • Skill levelSkill level board ownPetitioner expert creditedDecided for petitioner

    “After reviewing the evidence, we give some credit to the testimony of both parties’ Declarants this proceeding. For instance, we determine that one of ordinary skill in the art would have known that Plug and Perf using a cemented casing was a conventionally accepted method in the oil and gas industry for completing a hydraulically fractured horizontal well. See Ex. 2051, 22, (Mr. McGowen testified that “[a]s of 2001, Plug and Perf was the industry standard because it had been economically successful, rigorously tested, and widely accepted amongst industry experts.”). Various papers cited by Patent Owner lend credence to the assertion that in the industry cemented casings were commonly used and characterized by some as “a prerequisite to ensure adequate zonal isolation for multiple fracture treatments in horizontal wells.” Ex. 2079, 1, see also Ex. 2078, 2 (“Austin et al. emphasized the importance of casing and cementing the horizontal section to allow for fracture initiation points to place multiple fractures along the horizontal well.”). We also give certain credit, as well, to Dr. Rao who testifies that “Yost specifically describes multi-stage open hole fracturing of horizontal wells using packers for zonal isolation” (Ex. 1007 ¶ 43), and that those of ordinary skill in the art understood that such multi-stage open hole fracturing could be performed successfully (id. at ¶¶ 44–56). We also credit Dr. Rao’s testimony that those of ordinary skill in the art “could readily discern when it was advisable to use a cased hole tool in open hole and when it was not.” Id. at ¶ 57. We find that such knowledge is not mutually exclusive. For example, both parties’ Declarants provide reasoning and exemplary prior art references detailing why one of ordinary skill in the art might consider a cased well and an uncased well in different circumstances. Compare Ex. 1007 ¶ 43, (Dr. Rao discussing Yost’s multi-stage hydraulic fracturing in horizontal open-hole completion to “avoid the problems of formation damage associated with cementing.”) with Ex. 2051, 22–23 (Mr. McGowen explains that the problem of “multiple complex fractures being initiated near the wellbore, could be better controlled through the precise placement of perforations, which requires cementing, perforating and the Plug and Perf method.”). Consistent with our finding, Mr. McGowen testified during his deposition that openhole completions would have been an option: Q. So going without cemented casing would have been an option to consider[?] A. It would have been an option to consider. But it’s something that had been -- in the early days of horizontal, there was hydraulic fracturing done in open holes and that was a more primitive completion system where they had no control over where the frac fluids were going, and then the industry progressed and became more sophisticated and developed methods to try to control where the fracture initiated. Ex. 1034, 75:25–76:9.” slip op. at 28

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia with nexusDecided for patent owner

    “We agree with Petitioner that claim 25 is a method claim, and that some of the evidence simply of commensurate tools and hardware between StackFRAC and the claimed invention may not necessarily express each claimed method step. See Pet. Reply, 18–19. However, Patent Owner’s evidence of objective indicia includes information and evidence that expresses the use of these tools and hardware in highly similar, if not the same, steps as claimed. For example, where claim 20 recites “running the tubing string into a wellbore in a desired position for treating the wellbore,” and claim 25 recites “when in a desired position the apparatus is adjacent an open hole section of the wellbore and the packers are set to seal the annulus between the apparatus and the wellbore wall,” a Packers Plus advertisement (Ex. 2017, 1) states “StackFRAC HD technology allows you to increase your production by running longer laterals with shorter stage lengths . . . open hole systems provide an excellent opportunity to complete two or more laterals off of one vertical wellbore.” Compare Ex. 1001, 16:17–18, 16:41– 44 with Ex. 2017, 1. The Packers Plus advertisement goes on to describe that the RockSEAL II solid-body packer “has a specially designed elastomer with the largest possible cross section to provide excellent expansion ratios for setting in oversized holes.” Ex. 2017, 3. This description is consistent with “the packers are set to seal the annulus between the apparatus and the wellbore wall,” as recited in claim 25. Ex. 1001, 16:43–44. In conclusion, Patent Owner presents evidence for which there is a strong nexus between the asserted merits of Packers Plus’s StackFRAC system and the merits of the claimed invention. See, e.g., Ex. 2004 (“StackFRAC, the company’s prize product and primary innovation, is an open hole ball drop completion system that’s widely credited with unlocking old resource plays that were thought to be too expensive or too technically challenging to tap.”). We will consider such evidence of the success and praise of the StackFRAC system as direct evidence of the success and praise of the claimed invention. See Ashland Oil, Inc. v. Delta Resins & Refractories, 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). Petitioner does not persuade us that there is no nexus between Patent Owner’s evidence and the claimed invention. See Pet. Reply 18–20. We now turn to the evidence alleging success and praise.” slip op. at 35

  Patent outcomesUS 7,543,634 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,543,634
• Weatherford International, LLC / Weatherford/Lamb, Inc. et al. v. Packers Plus Energy Services Inc.All claims unpatentable
  PTAB · Apr 3, 2018 · IPR2016-01509 · APJ Scott A Daniels · IPR · Final written decision

  Claims 1, 3–7, 9–10, 12, and 16 are unpatentable as obvious over Yost, Thomson, and Ellsworth, and also over Thomson and Ellsworth.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedPatent owner expert creditedOther

    “After reviewing the evidence, we give some credit to both Declarants’ testimony in this proceeding. For instance, we determine that one of ordinary skill in the art would have known that the plug and perf method using a cemented casing was the generally accepted method in the oil and gas industry for completing a hydraulically fractured horizontal well. See Ex. 2051, 22, (Mr. McGowen testified that “[a]s of 2001, Plug and Perf was the industry standard because it had been economically successful, rigorously tested, and widely accepted amongst industry experts.”). Various papers cited by Patent Owner lend credence to the assertion that in the industry cemented casings were commonly used and “considered a prerequisite to ensure adequate zonal isolation for multiple fracture treatments in horizontal wells.” Ex. 2079, 1, see also Ex. 2078, 2 (“Austin et al. emphasized the importance of casing and cementing the horizontal section to allow for fracture initiation points to place multiple fractures along the horizontal well.”). We also give certain credit, as well, to Dr. Rao who testifies that a person of ordinary skill in the art knew that wells could be either cased, i.e., lined with tubing that is cemented in place, or uncased without such cemented tubing, and “could readily discern when it was advisable to use a cased hole tool in open hole and when it was not.” Ex. 1007 ¶¶ 56, 176, 180–181 (citing Ex. Ex. 1001, 1:28–4; Ex. 1002; Ex. 1004). We find that such knowledge is not mutually exclusive, for example” slip op. at 27

  • Skill levelSkill level board ownOther

    “Therefore, in addition to the education and experience of one ordinary skill in the art as discussed above, upon which the parties essentially agree, we determine that a person of ordinary skill in the art would have known that it was conventional to cement and line a well bore with a cemented casing for a multi-stage fracing completion. See Ex. 1036, 48 (“Options considered for isolating the individual zones included conventional cementing of the casing with perforations to access the individual zones.”). A person of ordinary skill in the art also would have known that there existed circumstances in which open hole multi-stage fracing might also be successful. See Ex. 1002, 1, 4–5 (Yost describing successful production increase from using multistage fracturing to achieve “zone isolation” in an “open hole” so as “to avoid the problems of formation damage associated with cementing and to eliminate the need for tubing-conveyed perforating of numerous treatment intervals”); Ex. 1042, 3 (A publication by McClellan, in the April 1992 Journal of Canadian Petroleum Technology describes a comparison of cased and open hole well bores where “[t]he horizontal section for the first well Shell Midale horizontal C9-3-6-11Wd was completed in a conventional manner with a cemented and perforated liner. Openhole completions were used in the next two horizontal wells.”); see also id. (“McClellan summarized in the Abstract that there was “potential for selective acid stimulation of horizontal wells completed openhole, provided that good zonal isolation is maintained.”). The level of knowledge attributed to one of skill in the art by Mr. McGowen, Dr. Rao, and the prior art illustrates, albeit emphasizing different aspects of such knowledge, certain problems encountered in well bore completion and how the industry addressed and overcame such problems prior to the filing of the ’774 patent. For instance, acknowledging both the desire to closely control where fractures form in a cased well bore with perforations in a cemented casing as described by Mr. McGowen, (Ex. 2051, 12–13), and alternatively, ensuring zonal isolation in open hole completions in Yost and McClellan, (Ex. 1042, Abstract) is consistent with the Federal Circuit’s admonition that the hypothetical person of ordinary skill in the art is attributed with knowledge “of all prior art in the field of the inventor’s endeavor and of prior art solutions for a common problem even if outside that field.” In re Nilssen, 851 F.2d 1401, 1403 (Fed. Cir. 1988). What we do not attribute to one of ordinary skill in the art based on the testimonial and prior art evidence in this proceeding, is Patent Owner’s contention that one of ordinary skill in the art would have understood that multi-stage fracing required cemented casing completion. See PO Resp. 15 (“Thus, a POSITA would also expect that cemented casing is necessary to avoid the formation of these complex fracture geometries.”). Patent Owner’s position appears to be odds, to some extent, with their own explanation of “bullheading.” See id. at 11 (“The simplest form of hydraulic fracturing for a horizontal wellbore is to pump fluid into an open hole section of the wellbore (a process known as “bullheading.”). Although in his declaration Mr. McGowen opined that “Plug and Perf was deemed necessary partly because of the type of hydraulic fracturing treatments being pumped and partly because of the then current theories about the behavior of hydraulic fractures,” nowhere does Patent Owner point us to persuasive evidence that plug and perf completions were the sole option one of skill in the art would have considered for successful well bore completions. Ex. 2051, 23, see also id. at 17 (Mr. McGowen states that “[t]he POSITA would consider many different well configurations, reservoir types, stimulation methods, downhole operations, and other factors.).” slip op. at 29

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

    “including Yost, Thomson and Ellsworth, we are persuaded that although Yost, Thomson, and Ellsworth do not individually disclose all the limitations of claim 1, each of the limitations recited in claim 1 and in dependent claims 3–7, 9–10, 12 and 16 is disclosed and taught by one of Yost, Thomson, and Ellsworth. We find evidence that one of ordinary skill in the art would have known about both multi-stage open hole completions as well as cemented casing completions, and while cemented casings appear, arguably, to be conventional, we are not persuaded that one of ordinary skill in the art would have understood that horizontal well bore multi-stage fracturing required cemented casing completion. Petitioner also provided persuasive reasons and evidentiary underpinnings explaining why one of ordinary skill in the art would have been motivated to combine Yost, Thomson, and Ellsworth in an OHMS completion for a non-vertical well bore, and that doing so was well within the knowledge and skill of a person of ordinary skill in the art. We also considered the objective indicia of non-obviousness presented by Patent Owner and find evidence that the claims were embodied in the commercial embodiment of the claimed invention, i.e. StackFRAC, thus establishing the required nexus. We find also that there was evidence of industry praise for StackFRAC, because the system was apparently the first to use ball drop fracturing in open holes, as well as certain evidence of copying by competitors. We did not find, however, that there was strong evidence of commercial success and unexpected results, or that the claimed invention was contrary to the accepted wisdom of those of ordinary skill in the art. We are also not persuaded that the length of time between the asserted prior art references and the filing of the ’774 patent was sufficient evidence to establish a long felt but unsolved need. That fact that there was certain industry praise for StackFRAC and acknowledgment that the system was a viable commercial well completion technique by way of certain evidence of competitor copying is not, however, strengthened by the dearth of evidence of commercial success. So in part, we find a modicum of evidence supporting certain aspects of a secondary consideration analysis. Obviousness is, however, more so evinced by the elements of the claims being readily discussed and applied in a variety of oil and gas industry prior art, including OHMS completions, and the level and knowledge of one of ordinary skill in the art understanding that different completion techniques existed, including open hole multi-stage completion. Also, we are apprised of persuasive evidence that motivations to complete open hole wells existed and that combining the tools and techniques disclosed in the prior art was not difficult and was within the level of ordinary skill in the art. As a whole, the evidence of praise and copying is not sufficiently” slip op. at 55

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

    “We are not persuaded that either Yost reference can be extended so far as to support a lack of motivation or a teaching away. The gist of Patent Owner’s position is that the initial Yost reference, as cited by Petitioner, does not show sufficient economic benefits, e.g. increasing profitability of a well, such that one of ordinary skill in the art would have used open hole completions for multi-stage fracing in a commercial application. See id. at 49–50 (citing Ex. 2100, 211). We disagree. Reading Yost through the lens of one of ordinary skill in the art, it is clear that while cemented casings were more typical, open hole completions were an option that was known to those of ordinary skill in the art. See Section IV.A.3. Indeed, Yost details an open hole completion of a horizontal well including seven zones, and states that compared to cemented casings “[a]n alternative approach is zone isolation accomplished by the installation of external casing packers and port collars as an integral part of a casing string in the horizontal section.” Ex. 1002, 1. Yost recognizes that the benefit of using alternating packers and port collars to achieve zonal isolation in an “open hole” wellbore is “to avoid the problems of formation damage associated with cementing and to eliminate the need for tubing-conveyed perforating of numerous treatment intervals.” Ex. 1002, 1. A reasonable reading of Yost clearly discloses specific considerations of open hole completion for a multi-stage fracture operation, and expressly notes the success of such completions in the following conclusions: 1. This 2000 foot horizontal well in fractured Devonian shale has successfully demonstrated numerous folds of increase in production as compared to vertical wells in a pressure-depleted producing field. 2. Productivity improvements were successfully evaluated by actual flow rates, build-up analysis, and kin factor calculations. 3. This project represents the most extensively documented zone-to-zone production and stimulation testing of a long horizontal well in a naturally-fractured gas reservoir. 4. Both long horizontal drilling and multiple stimulations are required to achieve high folds of increase in production. Ex. 1002, 5. Patent Owner makes much of the fact that Yost is an experiment, and not a commercial implementation of open hole multi-stage fracture completion. See PO Resp. 58 (“Yost describes scientific experiments, not the results of a commercially viable fracturing operation.”). Yet Patent Owner has not pointed to any case law or precedent that stands for the proposition that distinguishing prior art as a test, or experiment, as compared to a commercial embodiment, has any particular relevance with respect to a finding of obviousness. We moreover agree with Petitioner’s argument that there is no necessity that prior art disclose a commercial system as opposed to a non-commercial system. Galderma Labs., L.P. v. Tolmar Inc., 737 F.3d 731, 737 (Fed. Cir. 2013) (“Nothing in the statute or our case law required Tolmar to prove obviousness by starting with a prior art commercial embodiment and then providing motivation to alter that commercial embodiment.”).” slip op. at 49

  Patent outcomesUS 7,861,774 unpatentable
  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,861,774
• Edwards Lifesciences Corporation / Edwards Lifesciences LLC et al. v. Boston Scientific Scimed, Inc.All claims unpatentable
  PTAB · Mar 23, 2018 · IPR2017-00060 · APJ James A Tartal · IPR · Final written decision

  Claims 1–4 are unpatentable as obvious over Spenser combined with Elliot, Thornton, or Cook; the Board also denied Patent Owner’s motion to exclude.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “of Dr. Buller, as well as objective evidence of nonobviousness provided by Patent Owner. For the foregoing reasons, Patent Owner’s Motion to Exclude Dr. Buller’s declarations is denied. Moreover, to the extent Patent Owner has improperly disputed the merits of Dr. Buller’s opinions under the pretext of the Motion to Exclude, those arguments will not be given consideration beyond the extent to which they were properly raised in Patent Owner’s Response to the Petition.” slip op. at 16

  • Skill levelOther

    “consider them collectively. The scope and content of the prior art, as well as the differences between the prior art and the challenged claims, heavily favor Petitioner’s contention that claims 1–4 of the ’608 patent would have been obvious over Spenser, in combination with either Elliot, Thornton, or Cook. Petitioner demonstrated that each of the claimed elements was taught in the prior art and that the differences between the prior art and the challenged claims were not significant. The level of ordinary skill in the art also heavily favors obviousness. The problem of paravalvular leakage was well known, and modifications to prevent such leakage would have been desirable while also taking into account other considerations, such as the compressed diameter of the prosthesis. Patent Owner has not shown the requisite nexus between the alleged objective indicia of nonobviousness and the challenged claims of the ’608 patent. Moreover, even if nexus had been shown, the objective evidence of nonobviousness identified by Patent Owner” slip op. at 76

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “’608 patent recites two distinct elements, “a replacement valve commissure support element” and an “expandable anchor,” and that the first must be attached to the second. Pet. Reply 21. We agree with Petitioner that Patent Owner has not sufficiently shown how both of these elements are present in the Sapien 3 because Patent Owner merely circles a portion of the expandable anchor of the Sapien 3 as the “replacement valve commissure support element.” Patent Owner offers no persuasive explanation for why the recited “support element” need not be a separate element from the recited “expandable anchor” or why the picture of the Sapien 3 shows a support element separate from the expandable anchor. Accordingly, we determine Patent Owner has not shown that the Sapien 3 practices claim 1 of the ’608 patent. We, therefore, determine that Patent Owner has not provided sufficient evidence to rely on the Sapien 3 in support of objective evidence of nonobviousness of the ’608 patent.” slip op. at 50

  • Obviousness (§103) › Objective indicia / secondary considerations › Long-felt need / failure of othersDecided for petitioner

    “was no long felt and unresolved need to address paravalvular leakage. Mr. Wood states that, prior to introduction of the Sapien 3, “close to 40% of patients who received either a SAPIEN or SAPIEN XT showed either no PVL or only trace PVL at 1 year [citing Ex. 2051 38] (SAPIEN = 38.2%, SAPIEN XT = 40.0%), and very few patients suffered severe paravalvular leakage.” Ex. 1046 ¶ 29. Mr. Wood also explains multiple solutions were applied to reduce PVL, including proper sizing and placement of the prosthesis. Id. ¶¶ 30–33. Again, it is apparent from the evidence that a reduction in PVL was an important consideration in the improvement of prosthetic valves, but that desire for marginal improvement does not demonstrate a long-felt need, particularly when the purported “solution” of a fabric seal with flaps was practiced, as shown by the asserted prior art, before the priority date of the ’608 patent. Accordingly, in consideration of all of the arguments and evidence, we find Patent Owner’s evidence of longfelt need provides very little credible support for nonobviousness of the challenged claims of the ’608 patent.” slip op. at 56

  Patent outcomesUS 8,992,608 unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,992,608
• Askeladden LLC v. Purple Leaf, LLCAll claims unpatentable
  PTAB · Feb 13, 2018 · IPR2016-01722 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 1–11 are unpatentable as obvious over four combinations; claims 12–17 are unpatentable as anticipated by Hughes.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Because it is consistent with the level of ordinary skill in the art reflected by the prior art of record, see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978), we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art.” slip op. at 6

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

    “II. CLAIM CONSTRUCTION Neither party proposes that we expressly construe any claim terms, and we determine that none of the claims terms require an express construction to resolve the issues before us. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 5

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

    “It would have been obvious to a person of ordinary skill in the art to combine the disclosures of Carlson and Stilp because Carlson discloses “transferring data . . . via [a] cellular network.” (Ex. 1003, 4:62–64.) As such, Carlson expressly discloses the combination of its payment system with conventional cellular systems, which are described by Stilp. Moreover, Stilp discloses a registration procedure that allows cellular devices to discover each other’s presence. (Ex. 1005, 2:46–64.) It would have been obvious for one skilled in the art to modify the payment processing network (310) or access device (e.g., a POS terminal) (Ex. 1003, 4:61–61[2]) of Carlson to include the process of searching for available wireless devices in a manner similar to the cellular telephone discovery and registration process disclosed by Stilp to enable the Carlson payment processing network or access device to discover mobile phone devices (such as mobile phone 304) to participate in a mobile payment system, as disclosed in Carlson. A person of ordinary skill in the art therefore would have combined Carlson and Stilp to make the” slip op. at 8

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

    “Anticipation by Hughes A prior art reference anticipates a patent claim if it “discloses each and every element of the claimed invention arranged or combined in the same way as in the claim.” Monsanto Tech. LLC v. E.I. DuPont de Nemours & Co., 878 F.3d 1336, 1342–43 (Fed. Cir. 2018) (internal quotation and citation omitted). Petitioner contends that Hughes discloses each and every element of claims 12–17. Pet. 23–31.” slip op. at 11

  Patent outcomesUS 8,744,963 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,744,963

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.