- Valve Corporation v. Ironburg Inventions Ltd.Some claims unpatentablePTAB · Jan 26, 2023 · IPR2017-01928 · APJ Mitchell G Weatherly · IPR · Remand
Claims 1, 2, 9, 11–17, and 21–24 are unpatentable over Burns with Uy or AlphaGrip; claim 10 was not shown unpatentable because Burns does not teach detachable paddles.
RulingsRemand decision- RemandOther
“rendered claims 3–8 and 18–20 unpatentable. Valve, 8 F.4th at 1381. The Federal Circuit reversed our determination that Burns was not prior art. Id. at 1381. The Federal Circuit also vacated our determination that Valve had failed to prove that collectively claims 1, 2, 9–17, and 21–24 were unpatentable as obvious in view of Burns in combination with either Uy or AlphaGrip. Id. Accordingly, the Federal Circuit remanded the case to us to consider Valve’s challenges to the patentability of claims 1, 2, 9–17, and 21–24 of the ’229 patent as obvious based on the combinations of prior art listed in the table below. Claims6 35 U.S.C. § References 1, 2, 9, 10, 14–17, 21–24 103 Burns, Uy 1, 2, 9–17, 21, 22 103 Burns, AlphaGrip Id. C. Remand Background On remand, we authorized the parties to concurrently file an opening brief and then concurrently file responsive reply briefs. Paper 44, 4. The parties agreed, and we concurred, that no new evidence would be submitted during the remand proceeding. Id. at 3. Accordingly, we decide the issues on remand based on the record that was submitted during the original trial.” slip op. at 4
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 17. Valve contends that the ordinarily skilled artisan would have: a bachelor’s degree in an industrial design or engineering field, and approximately two years of relevant experience, for example. Alternatively, the same or an equivalent level of skill in the art could be obtained by end users or hobbyists who have substantial experience modifying or creating customized game controllers that include features to better suit their needs, even without any college education. Pet. 10 (citing Ex. 1009 ¶ 11). Ironburg, without expressly defining the level of ordinary skill, contends that a college degree of the type identified by Valve is not required. See Supp. PO Resp. 4–6. Ironburg notes that the level of ordinary skill is “relatively low” and the technology involved “is simple and straightforward.” Id. at 4 (citing Ex. 2016 ¶ 21). Ironburg’s contentions regarding the level of ordinary skill are consistent with Valve’s position, id. at 6, which we apply in our analysis. D. Whether AlphaGrip Is a Prior Art Printed Publication” slip op. at 11
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“We find Ironburg’s critique of Mr. Willner’s testimony unavailing. Valve persuasively responds that Mr. Willner testifies that he personally recalls reviewing AlphaGrip on the internet during 2006, which significantly predates the filing of the oldest application in the priority chain of the ’229 patent, May 22, 2013, by at least six years. Compare Ex. 1009 ¶ 3 (testifying that online publication of AlphaGrip happened in 2006), with Ex. 1001, code (60) (identifying provisional application filed May 22, 2013, as earliest-filed priority application). Mr. Willner testifies that he is the inventor and designer of the controller that is reviewed in AlphaGrip, which we find to qualify him as an ordinarily skilled artisan. Ex. 1009 ¶¶ 1–3. Besides expressly testifying that he viewed AlphaGrip online during 2006, Mr. Willner also testifies in some detail about his recollection of his interactions with the author of AlphaGrip, Ryan Paul, and the events surrounding the publication of Mr. Paul’s review on Arstechnica’s website. Id. ¶¶ 4–5. Mr. Willner also reviews the version of AlphaGrip that Valve submitted as prior art and testifies that it is a true and correct copy of the review that he remembers seeing online during 2006. Id. ¶¶ 6–7. We find Mr. Willner’s testimony to be reliable in part because he recalls being “delighted” by the praise Mr. Paul lavished on the AlphaGrip controller. Id. ¶ 8. The publication of AlphaGrip marked an important event for Mr. Willner’s company. Mr. Willner states that he immediately posted a link on his own company’s website to Arstechnica’s AlphaGrip review in 2006, and his company maintains the link to Arstechnica’s review of AlphaGrip “to this day.” Id. We find that all these facts increase the probative value of Mr. Willner’s testimony on the issue of whether AlphaGrip was published and could easily have been found by interested persons during 2006. Although Mr. Willner may not have been a webpage manager for Arstechnica or be able to testify about precisely how many people accessed AlphaGrip in 2006, we find his testimony, as one of skill in the art himself to be compelling. Not only has Ironburg failed to refute any of Mr. Willner’s testimony with countervailing evidence, Ironburg did not cross-examine Mr. Willner to test his memory of the specific events set forth in his testimony. See PO Resp. 16–18 (failing to provide countervailing evidence or cite cross examination testimony).” slip op. at 12
- ExcludeMotion to exclude, deniedMixed
“We also disagree with Ironburg that we should exclude as hearsay or irrelevant Dr. Rempel’s testimony on how flexible the Burns’ paddles were or the extensive body of objective evidence cited and relied upon by him to support his testimony.9 Mot. 12–13. To the contrary, we agree with Valve that Dr. Rempel may properly rely upon the cited exhibits even if they would otherwise be inadmissible hearsay because they constitute the types of information upon which an expert would reasonably rely under Fed. R. Evid. 703. Opp. 10. Accordingly, we deny-in-part the Motion to the extent that it seeks to strike or exclude testimony in Dr. Rempel’s second declaration or Exhibits 1020, 1025, 1026, 1031, 1036, 1042 cited by Dr. Rempel in support of his analysis.” slip op. at 18
Patent outcomesUS 9,352,229 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 9,352,229 - Ralph Lauren Corporation v. Lexos Media IP, LLCSome claims unpatentablePTAB · Mar 25, 2020 · IPR2018-01755 · APJ Sharon Fenick · IPR · Final written decision
Claims 27, 33, 40, 41, 72, 81, and 82 are unpatentable under § 103; the remaining challenged claims are not determined unpatentable.
RulingsFinal written decision- BurdenFwd mixedMixed
“Decision issues under 35 U.S.C. § 318(a). Having considered the evidence of record, and for the reasons discussed below, Petitioner has demonstrated by a preponderance of the evidence that claims 27, 33, 40, 41, 72, 81 and 82 of the ’449 patent are unpatentable under 35 U.S.C. § 103(a), but has not demonstrated by a preponderance of the evidence that claims 1–3, 5–7, 12– 15, 28, 29, 31, 32, 38, 39, 53–56, 58–63, 73–75, and 77–80 of the ’449 patent are unpatentable.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner proposes that a person of ordinary skill in the art would have had “at least a master’s degree in Computer Science, Computer Engineering, or a related field, or hold a bachelor’s degree in Computer 4 The record contains no evidence relating to secondary considerations. Science, Computer Engineering, or equivalent and have at least two years of relevant work experience in the fields of UI [(user interface)] design and OSs.” Pet. 10–11. In the Institution Decision, we preliminary adopted Petitioner’s proposed definition, noting that the prior art in this case demonstrated the level of ordinary skill in the art at the time of the invention. Inst. Dec. 10 (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)). Patent Owner does not comment on or dispute Petitioner’s proposal, and instead cites Okajima’s holding regarding the level of skill in the prior art without raising any issues regarding whether the prior art here reflects a level of ordinary skill different from that proposed by Petitioner. PO Resp. 10 (citing Okajima, 261 F.3d at 1355). We adopt Petitioner’s definition as consistent with the ’449 patent and the asserted prior art.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). The Petitioner proposed construction of several claim terms in the Petition. Pet. 12–18. However, none of these claim terms require construction to resolve the controversy. Petitioner also argued for a construction of an additional term (“wherein said specified content information further comprises information to be displayed on said display of said user’s terminal”) in its Reply. Pet. Reply 13. Patent Owner contends that this argument is a new argument raised improperly for the first time in the Reply. PO Sur-Reply 10–11. We agree. Pursuant to 37 C.F.R. § 42.23(b), a reply “may only respond to arguments raised in the corresponding ... patent owner response.” See also Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 775 (Fed. Cir. 2018) (concluding that the Board did not abuse its discretion in refusing to consider portions of a reply declaration “rais[ing] a new obviousness argument for [a claim] limitation that could have been made in the petition” but was not); Intelligent Bio-Sys., Inc. v. Illumina Cambridge, Ltd., 821 F.3d 1359, 1369–1370 (Fed. Cir. 2016) (concluding that the Board did not abuse its discretion in refusing to consider reply brief arguments advocating a “new theory” of unpatentability under 37 C.F.R. § 42.23(b)). Therefore, we will not address the new construction proposed for this claim term.” slip op. at 11
- Strike new argumentNew argument disregardedDecided for patent owner
“A petitioner must choose which grounds of invalidity to assert in the petition and “the expedited nature of IPRs bring with it an obligation for petitioners to make their case in their petition to institute.” Intelligent Bio- Sys., 821 F.3d at 1369 (Fed. Cir. 2016); Wasica Fin. GmbH v. Cont'l Auto. Sys., Inc., 853 F.3d 1272, 1286 (Fed. Circ. 2017) (a petitioner is foreclosed from “shifting” in post-petition arguments to a new theory of prima facie obviousness based on a different passage of a prior art reference than was used in the petition); see PTAB Consolidated Trial Practice Guide November 2019,5 73 (“Petitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g., to make out a prima facie 5 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated case of unpatentability.”); Trial Practice Guide Update August 2018,6 14 (same). Therefore, we evaluate Petitioner’s arguments with respect to limitation [c.i] relying upon Malamud’s message relating to a preview cursor in Malamud to teach the “specified content information.” Patent Owner does not make any arguments relating to whether Malamud’s message, in view of the teachings of Anthias, teaches limitation [c.i] of claim 1. See, e.g., PO Resp. 9–18.” slip op. at 19
Patent outcomesUS 6,118,449 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,118,449 - Maxlinear, Inc. v. Cresta Technology Corp. And CF Crespe LLCSome claims unpatentablePTAB · Apr 17, 2019 · IPR2015-00592 · APJ Patrick M Boucher · IPR · Remand
Claims 1–3, 5, and 10–20 are unpatentable by collateral estoppel; claims 4, 6–9, and 21 were not shown unpatentable because the combination rationale was insufficient.
RulingsRemand decision- RemandOther
“After this proceeding was remanded by the Federal Circuit, we invited the parties to address a proposed procedure that would include additional briefing regarding the impact of the prior holdings that claims 1–3, 5, and 10–20 are unpatentable, and the parties filed their respective proposals. Papers 78–80. In its proposal, Petitioner suggested that Patent Owner “has waived the right to address the patentability of claims 4, 8, and 9” because “Patent Owner never separately argued for the patentability of these claims.” Paper 79, 1; see MaxLinear, 880 F.3d at 1378 n.4 (“On remand, the Board may consider whether CRESPE has waived arguments concerning these claims.”). But those claims were not challenged in the earlier proceedings that held claims 1–3, 5, and 10–20 unpatentable. Rather, those claims were only challenged in this proceeding with respect to art that was not at issue in the earlier proceedings. In advancing its contention, Petitioner effectively makes the untenable argument that Patent Owner must provide separate reasons for the patentability of claims 4, 8, and 9, even when we determine that its own case-in-chief for those claims is insufficient. In addition, Petitioner’s proposal requests briefing on the issues of “whether claims 6, 7 and 20 materially alter the [unpatentability] analysis on which the prior [unpatentability] determinations rested.” Id. We have considered, and deny, that request. The Federal Circuit’s remand order noted that the fact that “MaxLinear was not a party to the other IPRs is . . . irrelevant since Cresta, the predecessor in interest to CRESPE, was party to the original determination.” MaxLinear, 880 F.3d at 1377. But the Federal Circuit’s order does not state or suggest that the fact that different prior art was considered in the earlier proceedings is similarly irrelevant. Indeed, we agree with Patent Owner that “[t]he Federal Circuit has not ordered the Board and the parties to start over from scratch, and certainly not with new prior art.” Paper 80, 3; see Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1367 (Fed. Cir. 2015) (“The Board may control its own proceedings, consistent with its governing statutes, regulations, and practice.”). Patent Owner is correct that “[a]llowing new prior art to be considered on remand after the Final Decision on the merits would essentially be starting a new IPR proceeding.” Paper 80, 9. As Patent Owner asserts, “[t]he parties and the Board would have to argue and consider new grounds, new expert testimony would have to be taken and presented, and a new Final Decision would have to be rendered.” Id. The Federal Circuit’s instruction is limited: “We remand this case to the Board so that it may consider the patentability of the surviving disputed dependent claims 4, 6-9, and 21.” MaxLinear, 880 F.3d at 1378. We have complied with this instruction in two ways: first, by applying the Federal Circuit’s instruction regarding the collateral-estoppel impact on challenged claims 1–3, 5, and 10–20; and, second, by clarifying that Petitioner’s argument regarding the combination of Van De Plassche and Ishikawa compels a conclusion that Petitioner’s showing is insufficient with respect to claims 4, 6–9, and 21, independent of any conclusion previously reached with respect to independent claims 1 and 17. While the Federal Circuit includes language in its remand order that might be construed as suggesting applying different prior art in the latter analysis, 880 F.3d at 1377, the scope of this proceeding is limited by the prior art and the arguments in the Petition here. SAS Institute, 138 S. Ct. at 1356 (“in an inter partes review the petitioner is master of its complaint”); see Paper 80, 8 (Patent Owner addressing potential ambiguity of Federal Circuit’s instruction).” slip op. at 35
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Experience is but one of several factors that may be considered when determining the level of ordinary skill in the art. See, e.g., In re GPAC, 57 F.3d 1573, 1579 (Fed. Cir. 1995) (identifying factors as including the “type of problems encountered in the art,” “prior art solutions to those problems,” “rapidity with which innovations are made,” “sophistication of the technology,” and “educational level of active workers in the field”). “In a given case, every factor may not be present, and one or more factors may predominate.” Id. Patent Owner’s distinction relates to a portion of one factor (education) in a determination that involves several factors. The significance of the level of ordinary skill in the art is the role it plays in an obviousness analysis. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention”); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991) (“The importance of resolving the level of ordinary skill in the art lies in the necessity of maintaining objectivity in the obviousness inquiry”). Patent Owner does not explain persuasively how the alleged omission by Petitioner impacts the obviousness analysis. We conclude that Petitioner’s proposed definition, which is consistent with the level of skill generally reflected by the prior art of record, reflects an appropriate skill level. See Okajima, 261 F.3d at 1355.” slip op. at 11
- ExcludeMotion to exclude, deniedDenied
“Importantly, we find that Patent Owner did not exhaust avenues available to it in attempting to secure answers to its questions from Dr. Hashemi. The line of questioning involving Exhibit 2008 occurred late in the day, “well after the close of business on the east coast,” and an attempt by the parties to telephone the Board during the deposition was unsuccessful. See Opp. 3; Ex. 2006, 154:24–155:4. The parties discussed contacting the Board the following day, and continuing the deposition the day after that, when Petitioner would make Dr. Hashemi available for further cross-examination after receiving guidance from the Board. Ex. 2006, 155:5–157:13. Rather than proceed in this fashion, Patent Owner decided to abandon the line of questioning and passed the witness for redirect: “I think after we talked about it a bit, I think we will withdraw our questions on this document and just move on to redirect.” Id. at 157: 22–25 (emphasis added). Dr. Hashemi could have answered the questions and sought a protective order that would insulate his answers from the public record, providing the Board with the information needed to perform a focused evaluation of the credibility and reliability of specific statements in his testimony. But a significant measure of responsibility for whether Dr. Hashemi’s testimony is tainted with bias lies with Patent Owner for declining to pursue the issue to a point of greater clarification. Indeed, we are limited in how strongly we can fault Petitioner for failing to submit a clarifying declaration from Dr. Hashemi, in light of Patent Owner’s decision to “withdraw” the questions at issue. Because the evidence is insufficiently developed, we are similarly limited in the degree to which we can draw adverse inferences from Dr. Hashemi’s refusal to answer questions, and unable to conclude, by a preponderance of the evidence, that Dr. Hashemi’s testimony is tainted by an undisclosed bias. Accordingly, we deny Patent Owner’s Motion to Exclude.” slip op. at 16
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Not reached
“C. Petitioner’s Motion to File Supplemental Information Pursuant to our authorization, Petitioner filed a Motion for Leave to File Exhibits 1213–17 as Supplemental Information, which Patent Owner opposes. Papers 83, 86. The Motion asserts that such information is “relevant to the issues in the case, specifically the lack of nexus between any purported secondary consideration, including surprising or unexpected results.” Paper 83, 1. We do not reach Patent Owner’s arguments regarding secondary considerations because we conclude that Petitioner’s case-in-chief is insufficient. Accordingly, we dismiss the Motion as moot.” slip op. at 17
Patent outcomesUS 7,075,585 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,075,585 - Van Der Hoeven Horticultural Projects B.V. v. Houweling Nurseries Oxnard, Inc.Some claims unpatentablePTAB · Jun 6, 2018 · IPR2017-00476 · APJ Jeremy M Plenzler · IPR · Final written decision
Claim 29 is unpatentable over Reisinger under § 103; claims 1–28 were not shown unpatentable because Reisinger’s ducting is not an end gable and the proposed combination lacked a sufficient rationale.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“and 2 above, the “gabled end” is a region at an end wall of the greenhouse separated from the growing section by a partition. The ’617 patent also explains that “the greenhouse can be arranged without a gabled end,” and provides an example of such an arrangement as one where “the first louver [is] arranged over the fans with the cooling mechanism located at the fans such that ambient air can be pulled directly into the tubes with the air passing the cooling mechanism for additional cooling” and “[p]ipes . . . provide an air passageway between the second vent and the fans during the mode when air from within the crop section is to be recycled.” Ex. 1001, 9:33–41 (emphases added). As noted above, in such arrangements, a direct flow path is provided between first vent 24/first louver 30 to draw ambient air into the system and piping provides a flow path from second vent 34/second louver 36 for air recirculation from growing section 16. We find that “piping,” as used in the ’617 patent, is ducting, as that term is used in the art. Consistent with that finding, Patent Owner’s declarant Mr. Turkewitsch distinguishes ducting from structure such as a plenum or a chamber. See, e.g., Ex. 1031 53:22–55:10. Accordingly, we determine that the alternate example from the ’617 patent noted above discloses use of a ducted system in place of gabled end 14 for air flow. Based on the Specification, therefore, we find that ducting or other piping is not considered an “end gable” in the ’617 patent. As discussed further below, for purposes of this decision, we do not need to determine the precise requirements of the term “end gable” in the claims in order to determine that Petitioner has failed to establish unpatentability of the claims including that term because we at least determine that, even under the broadest reasonable interpretation, an “end gable” does not include ducting.” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Petitioner contends that Reisinger’s fresh air inlet 2, for example, corresponds to the “one or more vents” and flap 10 corresponds to the “one or more mechanisms selectively moveable to cooperate with said one or more vents to control air flow through said one or more vents.” Pet. 64–65 (referencing discussion of similar limitations in claim 1 discussed on pages 35–40 of the Petition). Petitioner explains that Reisinger’s climate control system also meets the additional limitations directed to operation of the “climate control system” in claim 29. Id. (referencing discussion of similar limitations in claim 1 discussed on pages 40–44 of the Petition). We are persuaded by those contentions, which Patent Owner does not dispute.10 With respect to any requirement that the claim has regarding a roof and sidewalls, generally, we are also persuaded by Petitioner’s contentions in connection with those features. See, e.g., Pet. 32 (citing Ex. 1002 ¶¶ 86– 88). Petitioner explains, for example, that “a POSA would have understood Reisinger to disclose them because a greenhouse was known to include a ceiling, and Reisinger’s disclosed function of smoothly adjusting the ratio of fresh air and recirculated air would not work unless the air inlets 1 and 2 were enclosed on the sides.” Id. Patent Owner does not dispute those contentions, which, as stated above, we find persuasive.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Reisinger’s greenhouse and climate control system, because . . . Landstrom is in the same field of endeavor as Reisinger,” “there would have been a reasonable and predictable expectation of success to a POSA in combining the teachings of Reisinger and Landstrom to incorporate Landstrom’s end gable chamber into Reisinger,” and “incorporating Landstrom’s end gable chamber into Reisinger’s greenhouse and climate control system including vents, louver and airflow modes does not change the principle of operation of either component.” Id. at 79–81. Patent Owner disputes whether Landstrom teaches an “end gable” or an “end portion,” and contends that Petitioner has failed to establish that one skilled in the art would have combined Landstrom’s teachings asserted by Petitioner in connection with those features with Reisinger. PO Resp. 66– 72, 74–75. Even accepting Petitioner’s contentions that Landstrom teaches an “end gable” and an “end portion” as required by the claims, Petitioner has failed to establish sufficiently that one skilled in the art would have found it obvious to include those features from Landstrom in Reisinger’s system. Sufficient rationale for combing features from multiple references requires more than those references merely being in the same field of endeavor and that the combination would have had a reasonable expectation of success and not change the principle of operation. See Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011) (“obviousness requires the additional showing that a person of ordinary skill at the time of the invention would have selected and combined those prior art elements in the normal course of research and development to yield the claimed invention”). We are lacking any, let alone sufficient, rationale from Petitioner in this proceeding.” slip op. at 19
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“obviousness in Patent Owner’s Response fails to address any relation of the claim elements, or even any particular claim, to that evidence. See PO Resp. 76–80. Nevertheless, even if we were to assume some nexus, that nexus appears to be between Patent Owner’s evidence and the features of claims 1 and 17, rather than those of claim 29. For example, in its discussion of copying, Patent Owner asserts “the ModulAir design has the same ‘corridor’ (or ‘end gable’) design as that of the Ultra Clima®.” Id. at 78. As noted above, claim 29 recites an “end portion,” rather than the “end gable” recited in claims 1 and 17. Moreover, Patent Owner presents evidence of similar designs, rather than actual copying. See, e.g., id. (“the designs are almost identical”). “[C]opying requires the replication of a specific product.” Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1325 (Fed. Cir. 2004). That products are similar is not persuasive evidence of copying. See Iron Grip, 392 F.3d at 1325 (“Not every competing product that arguably falls within the scope of a patent is evidence of copying. Otherwise every infringement suit would automatically confirm the nonobviousness of the patent.”). With respect to industry praise, we note that evidence, too, is only relevant when it is directed to the merits of the invention claimed. See Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1311 (Fed. Cir. 2006). Patent Owner fails to provide any connection between the particular features of claim 29 and the alleged industry praise. Nevertheless, even if we were to assume sufficient nexus had been established by Patent Owner, when we weigh all of the evidence, for and against patentability, we determine that the preponderance of the evidence weighs in favor of unpatentability of claim 29. As explained above, we are persuaded that Reisinger, itself, in a single embodiment, teaches each of the features found in claim 29, other than expressly describing a roof and sidewalls. As also explained above, however, we are persuaded that one skilled in the art would readily appreciate that greenhouses include a roof and sidewalls, which Patent Owner does not dispute. Accordingly, Patent Owner’s evidence does not outweigh Petitioner’s evidence of obviousness.” slip op. at 16
Patent outcomesUS 8,707,617 mixedClaim construction§ 103 obviousnessPatents in suitUS 8,707,617 - Pacific Surf Designs, Inc. v. Surf Waves, Ltd.Some claims unpatentablePTAB · Jan 17, 2018 · IPR2016-01454 · APJ Jason W Melvin · IPR · Final written decision
Claims 1–5 and 7–20 are unpatentable; claim 6 was not shown unpatentable, based on the anticipation and obviousness grounds summarized by the Board.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Although the district court construed “activity section” as Petitioner describes, it also construed “curved sidewall extending substantially upwardly from [an/another] edge of the middle section,” which is part of the activity section, as “upwardly curved wall that the rider may traverse extending from [an/another] edge of the middle section.” Ex. 1013, 12–14. That said, it does not appear that the district court specifically considered whether to include “that the rider may traverse” in its construction. Id. It did, however, identify the issue regarding “activity section” as whether that term should include Petitioner/Defendant’s “additional proposed phrase ‘on 6 At the hearing, Patent Owner argued that the Lochtefeld 530 lacks the claimed sidewall because: the sidewall is “not to be designed [to be traversed]. But more than designed, there’s nothing in this reference that tells you that you should be traversing on it. So it’s more than just designed. There’s nothing in this reference that says you would traverse it.” Tr. 34:15–22. all of which a rider can ride.’” Ex. 1013, 10:1–4. It concluded that such language would be “superfluous and introduce[] ambiguity.” Id. at 10:9–12. We conclude the broadest-reasonable interpretation of “activity section” in light of the Specification does not require that a rider may traverse the entire activity section, including all portions of the sidewalls. Such a construction would be inconsistent with the Specification’s description that sidewalls may curve past vertical, as shown in Figure 12C. Ex. 1002, 4:5–6, Fig. 12C. In this regard, our construction comports with that of the district court. See Ex. 1013, 10:9–12. Beyond that, as discussed below (see infra at 41), whether the claims require that a rider may traverse some portion of the sidewall does not affect our conclusions regarding unpatentability. Thus, we do not further construe the “activity section.”” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Regarding the claim phrase “extending substantially upwardly,” Patent Owner’s expert takes the position that curvature must be measured “perpendicular to a tangent along the edge.” See Ex. 1014, 59:3–60:1. Patent Owner relies on its expert to argue that Lochtefeld 589 does not disclose the claimed sidewalls but provides no support for construing “extending substantially upwardly” in such a manner. Patent Owner’s expert does not provide any support for such a construction in his declaration. Instead, he asserts that Lochtefeld 589 discloses sidewalls that extend either downward or horizontally, without explaining how he comes to that conclusion. Ex. 2001 ¶ 23. We will not impose a limiting construction based solely on an expert’s unsupported statements. Without some reason to construe “extending substantially upwardly” as sought by Patent Owner, we consider the ordinary meaning of the phrase within the context of the claims and Specification. The Specification gives a very permissive and general description of the sidewalls. E.g., Ex. 1001, 3:15–22, 3:56–4:6. Thus, the Specification leads us to construe “extending substantially upwardly” as encompassing a sidewall that, at some point, extends above the edge of middle section corresponding to the side wall.” slip op. at 13
- Prior constructionTerm construed petitioner constructionDecided for petitioner
“3. “the first curved side” All claims recite that the “second curved sidewall” is opposite “the first curved side.” Although the claims do not provide antecedent basis for “the first curved side,” Petitioner proposes that the term be construed as “the first curved sidewall.” Pet. 20. Petitioner notes that Patent Owner argued in the related district court proceeding that “[i]t is beyond dispute that the claim term ‘the first curved side’ was intended to be ‘the first curved sidewall,’ both to comport with all of the disclosures of the ’016 Patent and also in accordance with proper antecedent basis.” Id. (citing Ex. 1010, 28:13–18). Patent Owner does not address this issue. A district court may “correct an error in a patent by interpretation of the patent where no certificate of correction has been issued . . . only if (1) the correction is not subject to reasonable debate based on consideration of the claim language and the specification and (2) the prosecution history does not suggest a different interpretation of the claims.” Novo Indus., LP v. Micro Molds Corp., 350 F.3d 1348, 1354 (Fed. Cir. 2003). We have applied this same standard in our proceedings. E.g., Apple Inc. v. Achates Reference Publ’g, Inc., Case IPR2013-00080, slip op at 10–12 (PTAB June 3, 2013) (Paper 22). Here, we conclude the claims are properly read such that “first curved side” refers to the “first curved sidewall” and that such correction is not subject to reasonable debate. Neither party has identified how the prosecution history suggests a different interpretation. Thus, we adopt Petitioner’s proposed construction, namely “first curved sidewall.”” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“1. The level of ordinary skill in the art Petitioner asserts that the applicable person of ordinary skill in the art is “a person with skill in designing, manufacturing, or refurbishing surfing simulation water rides.” Pet. 17. Petitioner’s expert declarant applies that definition in his analysis. Ex. 1002 ¶ 17. We adopted that definition in our institution decision and noted that the teachings of the prior art presented in the Petition reflect that level of skill. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Inst. 19. Patent Owner does not challenge Petitioner’s definition of the level of ordinary skill in the art, and we also adopt it here.” slip op. at 30
Patent outcomesUS 8,088,016 mixedClaim construction§ 103 obviousnessPatents in suitUS 8,088,016 - Valve Corporation v. Ironburg Inventions Ltd.Some claims unpatentablePTAB · Sep 22, 2017 · IPR2016-00949 · APJ Phillip J Kauffman · IPR · Final written decision
Claims 1–12 and 15–18, and 20 are unpatentable: claims 1, 3–12, 15–17, 19, and 20 as anticipated by Tosaki; claims 1–12, 15–18, and 20 as obvious over Enright and Tosaki.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“This Motion has no meaningful distinction from the Motion filed in IPR2016-00948, and we incorporate that analysis here. Consequently, we deny Patent Owner’s Motion.” slip op. at 4
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Patent Owner’s argument is that the ’770 patent expresses a clear intent to disavow controllers having a recessed portion that does not receive a user’s fingers. See PO Resp. 17–22. Stated in a positive sense, Patent Owner argues that the ’770 patent expresses a clear intent to cover only recessed portions that receive a user’s fingers. Patent Owner does not identify, nor do we discern, any explicit disclosure in the ’770 patent that the invention includes only recessed portions that receive a user’s fingers. The description that “preferably” each elongate member is mounted in a recess such that a user’s fingers may be received in the recess is an exemplary disclosure of a preferred embodiment. See Ex. 1011, 1:62–67. Likewise, the disclosures that the elongate members (e.g., paddles 11) are mounted within recesses so that a user may engage the elongate members with the tips of the fingers are exemplary. See Ex. 1011, 2:21–25, 3:39–44, Fig. 3. Consequently, the ’770 patent does not express a clear intent to limit the claimed invention to recessed portions that receive a user’s fingers. See e.g., SciMed Life Sys. Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed.Cir. 2001); see also Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed.Cir. 1988) (“Although the specification may aid the court in interpreting the meaning of disputed claim language, particular embodiments and examples appearing in the specification will not generally be read into the claims.”). In light of the disclosures above, the ordinary meaning that a recessed portion is an indentation is consistent with the Specification.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We agree with Petitioner (Pet. Reply 9–10) that nothing in claim 1 precludes the back of Tosaki’s steering wheel 14 from corresponding to the back of the controller as claimed. Claim 1 is an open-ended claim, so that additional components like base casing 10 with its bottom plate 11 are not precluded. Patent Owner’s assertion is not persuasive because it is not commensurate in scope with the claims. c) Conclusion Petitioner has demonstrated by a preponderance of the evidence that Tosaki anticipates independent claim 1.” slip op. at 23
- Skill levelSkill level patent owner adoptedDecided for patent owner
“We accept Patent Owner’s uncontested assertions regarding the education level of the inventors; however, this information provides an incomplete picture because other factors are involved. See e.g. Daiichi Sankyo Co. Ltd, Inc. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007) (enumerating a non-exhaustive list of six factors that are a guide to determining the level of skill in the art). For example, one concern is the type of problems encountered in the art, and the problem solved by the ’770 patent is but one type of problem encountered. Tosaki describes that removing a hand from the controller to manipulate switches makes prompt reaction difficult and degrades usability, and describing that repositioning the user’s hands can affect comfort. Ex. 1002, 1:54–67, 2:19–23. Tosaki describes an apparatus that permits manipulation of a plurality of switches while holding the controller. Id. at 3:20–23. Tosaki’s solution also includes switches on the back of the controller (shift levers) that are accessible to a user’s fingers. Id. at 3:36–4:8. Enright describes that controller had become more complex in that the number of functions and user input devices increased to the point that user’s had difficulty moving a finger to a desired button. Ex. 1003 ¶ 2. Enright describes that movement between input devices can be difficult. Id. at ¶¶ 3–4. As a solution, Enright disclosed a device that permits selection of discrete button commands without looking at or moving fingers from buttons. Id. ¶ 5. Enright’s solution includes switches (mode switches 32, 34) added to the underside (back) of the controller to reside near a user’s fingers for easy operation. Id. at ¶ 32. Enright also discloses that these switches may be located elsewhere is ergonomically desired. Id. In light of this, the prior art of record demonstrates that switch position on the controller, usability, and comfort were known problems in the art. Further, prior solutions included placing switches to be easily accessible to a user’s finger or thumb, and placing switches so that those switches are accessible without removing a finger or thumb from another switch. In particular, these solutions placed controls on the back of the controller to be accessible to a user’s fingers. The technology involved was placement of switches in ergonomically desired locations that permit usability.” slip op. at 37
Patent outcomesUS 9,089,770 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 9,089,770 - Valve Corporation v. Ironburg Inventions Ltd.Some claims unpatentablePTAB · Sep 22, 2017 · IPR2016-00948 · APJ Phillip J Kauffman · IPR · Final written decision
Claims 1, 6, 13, 14, 16, 17, 19, and 20 are unpatentable: Tosaki anticipates them, and Enright with Tosaki also renders claim 20 obvious.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“In our Decision to Institute, we explained that a preliminary response cannot serve as an effective objection for two reasons.2 Dec. 4–5 (entered on September 27, 2016). First, objections must be made after institution of trial. See 37 C.F.R. § 42.64(b)(1) (objections are due ten days from institution of trial). Second, an objection and a preliminary response may not be combined into a single document. See 37 C.F.R. § 42.6(a)(3) (prohibiting combined documents).” slip op. at 5
- Strike new argumentNew argument consideredDecided for petitioner
“The Petition fails to address a claimed characteristic of the elongate members (flexibility). See PO Resp. 39–41 (arguing that Enright does not disclose elongate members that are flexible as claimed). This cannot be corrected in Petitioner’s Reply. See Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,767 (Aug. 14, 2012) (a reply may not raise a new issue or belatedly present evidence); 35 U.S.C. § 312 (a)(3) (requiring petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”); 37 C.F.R. § 42.104(b)(4) (a petition for inter partes review must identify how the construed claim is unpatentable under the statutory grounds on which the petitioner challenges the claim and must specify where each element of the claim is found in the prior art patents or printed publications relied upon); Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1080 (Fed. Cir. 2015); see also Paper 39, 2 (pointing out that Petitioner is making a new argument).20 Petitioner has not demonstrated by a preponderance of the evidence that claim 1 is unpatentable under 35 U.S.C. § 103 as obvious over Enright and Tosaki. The same is true of claims 2–11, 13, 16, and 17 by virtue of their dependence from claim 1. 20 Petitioner argues that Patent Owner’s contention could not have been addressed earlier because the Board did not explicitly construe this claim limitation. Petitioner’s burden is not alleviated by the lack of a claim construction by the Board.” slip op. at 38
- Expert testimonyPetitioner expert discountedMixed
“In our Institution Decision, we observed that the Petition does not explain persuasively how observations from a UK patent examiner, which presumably are based on UK law and not United States law, are of use in our proceeding. Dec. 4. Petitioner asserts that Mr. Donohoe must be a person of ordinary skill because the level of ordinary skill is low, and because the UK Intellectual Property Office employed Mr. Donohoe to examine the video game controller art. Pet. Reply 16–17. Petitioner chose not to address our concern regarding the distinctions between United States and UK law. Because of those distinctions, Petitioner’s assertions and evidence with regard to Mr. Donohoe are entitled to little or no weight. This shortcoming is not fatal to this ground of unpatentability because, as explained below, the prior art of record is reflective of the level of skill in the art.” slip op. at 39
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Patent Owner contends that the level of skill in the art is relatively low and that “less than a year of experience or other training in controller assembly or tooling is required.” PO Resp. 34; Ex. 2002 ¶ 30 (Patent Owner’s expert opining that the level of skill is “no more than a year of experience or other training in controller assembly or tooling”). Patent Owner bases this level of skill on the education level of the inventor and the type of problems encountered in the art. PO Resp. 35. Regarding the education level of the inventors, Patent Owner provides evidence that the named inventors have degrees in unrelated fields. Id. (citing Ex. 2008, 3; Ex. 2009, 4). Patent Owner asserts the problem solved was that users of conventional game controllers were at risk of hand strain or injury from having to operate many different controls on the front of the controller with only a user’s thumbs. Id. at 35–36 (citing Ex. 2012 ¶ 10; Ex. 1001, 1:33–40, 3:56–61). Petitioner does not contest the education level of the inventors or the problem solved by the ’525 patent. Pet. Reply 15–16. Rather, Petitioner asserts that Patent Owner has taken the illogical position that the qualifications of a person of ordinary skill in the art are maximum levels of experience or training rather than minimums. Id. To the extent that Patent Owner’s assertion suggests that the level of skill may not exceed a year of experience or other training in controller assembly or tooling, we disagree. Patent Owner does not cite, nor are we aware, of any legal precedent supporting the assertion that education and experience levels are maximums that must not be exceeded. Regarding the problem solved by the ’525 patent, the portions cited by” slip op. at 40
Patent outcomesUS 8,641,525 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 8,641,525 - Dynamic Air Inc. v. M-I Drilling Fluids UK Ltd.Some claims unpatentablePTAB · May 23, 2017 · IPR2016-00264 · APJ William V Saindon · IPR · Final written decision
Claims 1–10 and 12–30 are unpatentable as obvious over the Dietzen-led combination; claim 11 was not shown unpatentable because Toth did not establish the ISO-container limitation.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“1. “adapted to” This term appears in claims 11 and 18–20. Petitioner proposes “adapted to” means “capable of.” Pet. 9. We agree, insofar as these limitations require structure to have qualities or features allowing it to meet the claim language. For example, claim 18 would require a vessel that actually can “withstand a pressure of about 4 bar to about 8 bar.” In other words, the “adapted to” language distinguishes from those structures that are not physically capable of meeting the limitation. Patent Owner argues that Petitioner’s construction is overly broad. PO Resp. 17–19. Reviewing Patent Owner’s arguments, however, is not clear to us what Patent Owner disputes to be the effective difference. We determine that no explicit construction of “adapted to” is necessary.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Patent Owner that Petitioner’s initial construction, now abandoned, was too broad. Specifically, Petitioner’s abandoned construction did not account for the fact that the mixture comes from a particular origin (drilling of an oil well) and that the “some resistance to flow” aspect was also too broad given the particular materials involved. However, the aspect of Patent Owner’s proposed construction that would require a gravity test is not supported by the ’217 patent. Instead, we adopt a construction that is essentially a combination of Petitioner’s new claim construction (see Pet. Reply 10) and Patent Owner’s claim construction, for the reasons below. The ’217 patent does not describe drill cuttings or paste with any reference to flow in relation to gravity. The ’217 patent describes the material conveyed therein in several different ways, but it is always referring to the same material. The labels that the ’217 patent gives to this material are: “thick heavy paste” (Ex. 1001, 1:6, 22–23, 28, 32, 42–43, 2:43), “drill cuttings” (id. at 1:28, 43; see also id. at 1:21 (simply, “cuttings”)), “non-free flowing paste” (id. at 1:38, 42), and “thick and/or heavy paste or clay like material” (id. at 1:42–43). These labels are often equated to one another in the ’217 patent: “cuttings . . . in the form of a very thick heavy paste[]” (id. at 1:21–23), “thick heavy pastes . . . e.g. drill cuttings” (id. at 1:28), “non- free flowing paste[] . . . e.g. oil rig drill cuttings” (id. at 1:42–43). As such, the ’217 patent considers drill cuttings to be a thick heavy paste as well as a non-free flowing paste. Thus, using the terms from the ’217 patent, drill cuttings are a non-free flowing paste. We do not adopt Patent Owner’s proposed construction, which involves adding some sort of gravity test to the material to determine whether or not it is a non-free flowing paste. According to ’217 patent, the non-free flowing paste is drill cutting material, which in turn is a screened material generated by the drilling of an oil well. Ex. 1001, 1:19–23,15 28, 42–43. The ’217 patent, therefore, defines the relevant “paste” material, e.g., drill cuttings, by the way in which it arrives at the pressure vessel (screening), consistent with our construction in IPR2016-00256, and not by any particular gravity test. See Ex. 2055 ¶ 10 (Patent Owner’s declarant, Mr. Lauder, testifying that “[t]he material coming out of the shaker house is referred to as drill cuttings and often has the consistency of a thick, heavy paste, or as claimed in the ‘217 patent, non-free flowing, heterogeneous, multicomponent, earth extracted paste”). Thus, we are not persuaded that the claim requires a gravity test, as none is mentioned or alluded to in the specification, and is not needed given the way that the relevant material is described in the specification.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Although both parties agree that the level of ordinary skill involves a bachelor’s degree and familiarity with similar subject matter, Petitioner proposes experience in the design of systems, whereas Patent Owner merely proposes experience with the systems themselves. We agree with Petitioner that a person of ordinary skill in the art designs devices, rather than is merely familiar with them (e.g., an operator or a manufacturer), as proposed by Patent Owner. See Ex. 1031 ¶ 28; Ex. 1002, 2:25–27 (indicating that those skilled in the art would understand “that the critical cone angle will vary depending upon the material being conveyed”). Accordingly, we adopt Petitioner’s proposed level of ordinary skill; though we note this difference would not affect our analysis.” slip op. at 15
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“testimony of Petitioner’s expert, Dr. Carson, taken out of context, and also on the unsupported testimony of its expert, Dr. Brown. PO Resp. 12–15. As to the testimony of Dr. Carson, Patent Owner points out that one of Dr. Carson’s colleagues once used the term “free-flowing” in a paper. Id. at 12 (citing Ex. 1016). During cross examination relating to this paper (which was on powders, not pastes), Dr. Carson agreed that “it is possible” “to define non-free flowing in terms of gravity.” Ex. 2021, 88:17–21.16 Even if it is possible to define “non-free flowing” in terms of gravity in some context, that does not mean it is possible to define it in all contexts, let alone this particular context.17 Or, if possible, that such a definition is reasonable. Thus, we do not find the testimony of Dr. Carson to support Patent Owner’s requirement for a gravity test. As to Dr. Brown, Patent Owner relies on his testimony that a person of ordinary skill in the art “would understand that these pastes would not generally flow as a result of gravity.” PO Resp. 13 (citing Ex. 2060 ¶ 83). Dr. Brown’s cited testimony is as follows: 16 Notably, Dr. Carson does not testify with respect to pastes, drill cuttings, or anything related to the claimed material at hand. Patent Owner distinguishes pastes and drill cuttings from powders when arguing that the prior art powder-conveying pressure vessels could not be expected to convey pastes or drill cuttings. See, e.g., PO Resp. 27 (arguing that “granular solids are distinct from the non-free flowing . . . paste . . . of the claims”). 17 Exhibit 1016 is directed to the flowability of powder, not pastes, and states that “the term free flowing, so commonly used, becomes meaningless unless the specific equipment handling the material is specified.” Ex. 1016, 62. To the extent this teaching applies to pastes, what it shows is that what is “free flowing” on one piece of equipment may not be so on another, and supports Petitioner’s argument that adding a gravity test would render the term indefinite. Pet. Reply 12. The ’217 Patent goes further to establish that “thick heavy paste material[s]” are different from “relatively free flowing material” or “small batches of wet sticky materials.” Ex. 1002 at 1:35-36. Because the material conveyed in the ’217 Patent is contrasted with “relatively free flowing material,” the ’217 Patent’s use of the term “non-free flowing” is consistent with what a person of ordinary skill in the art would understand it to mean, and that is “does not generally flow freely by gravitational force.” Ex. 2060 ¶ 83. Dr. Brown’s testimony does not provide any credible evidence in support of his conclusion that the ’217 patent’s contrast between “thick heavy paste” and “free flowing material” has something to do with gravity. Similarly, his testimony that “‘non-free flowing’ is used to describe a material that ‘does not generally flow freely by gravitational force’” lacks supporting evidence or explanation. Id. ¶ 80; 37 C.F.R. § 42.65(a). We do not find his testimony persuasive.” slip op. at 12
Patent outcomesUS 6,709,217 mixedClaim construction§ 103 obviousnessPatents in suitUS 6,709,217 - Dynamic Air Inc. v. M-I Drilling Fluids UK Ltd.Some claims unpatentablePTAB · May 23, 2017 · IPR2016-00263 · APJ William V Saindon · IPR · Final written decision
Claims 1–10 and 12–49 are unpatentable as obvious over the Dietzen-led grounds; claim 11 was not shown unpatentable.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“1. “adapted to” This term appears in claims 11, 17–19, and 30–49. Petitioner proposes “adapted to” means “capable of.” Pet. ’262, 10; Pet. ’263, 10. We agree, insofar as these limitations require structure to have qualities or features allowing it to meet the claim language. For example, claim 17 would require a vessel that actually can “withstand a pressure of about 4 bar to about 8 bar.” In other words, the “adapted to” language distinguishes from those structures that are not physically capable of meeting the limitation. Patent Owner argues that Petitioner’s construction is overly broad. PO Resp. ’262, 17–19; PO Resp. ’263, 16–19. Reviewing Patent Owner’s arguments, however, is not clear to us what Patent Owner disputes to be the effective difference. We determine that no explicit construction of “adapted to” is necessary.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITADecided for patent owner
“Reviewing the arguments and evidence before us, we agree with Patent Owner that Petitioner’s initial construction, now abandoned, was too broad. Specifically, Petitioner’s abandoned construction did not account for the fact that the mixture comes from a particular origin (drilling of an oil well) and that the “some resistance to flow” aspect was also too broad given the particular materials involved. However, Patent Owner’s proposed construction, which would require a gravity test, is not supported by the ’062 patent. Instead, we effectively adopt a combination of Patent Owner’s proposed construction and Petitioner’s, for the reasons explained below.” slip op. at 12
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Term construed patent owner constructionDecided for patent owner
“3. “means for transporting” This term appears in claims 39, 40, 46, and 47. Petitioner proposes the term is a means-plus-function limitation having a function of “transporting [the] pressure vessel to a discharge station” and corresponding structure of “a ship, crane, and road vehicle.” Pet. ’263, 12 (citing Ex. 1004, Fig. 1, Fig. 6, 5:8–11, 5:59–63, 6:17–31). Patent Owner proposes a similar construction. PO Resp. ’263, 20 (using the term “boat” instead of “ship”). The constructions are effectively identical. Our Decision does not turn on which proposed construction we choose; we adopt the Patent Owner’s proposed construction. 4. “means for transferring” This term appears in claims 44 and 45. Petitioner proposes the term is a means-plus-function limitation having a function of “transferring the nonfree flowing drill cuttings from a second vessel to a third vessel” and corresponding structure of “a conduit, pipe, or flexible hose.” Pet. ’263, 12– 13 (citing Ex. 1004, Fig. 1, Fig. 6, 5:8–11, 5:59–63, 6:17–31). Patent Owner proposes a similar construction, but with more exemplary corresponding structures. PO Resp. ’263, 21 (also including “compressed gas[/air],” “a connector,” and “a hose”). Petitioner’s Reply does not discuss the construction of “means for transferring.” Our Decision does not turn on which proposed construction we choose; we adopt Patent Owner’s proposed construction because it is a slightly broader reasonable interpretation.” slip op. at 18
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner
“The original claims of the ’217 patent were rejected as anticipated by Curtis, which had pulsed-jet aerators in the cone of the pressure vessel. Ex. 2017, 232, 3:7–11, 6:59–64. After a telephone interview, during which the Examiner and Patent Owner “[d]iscussed [a] proposed amendment” (id. at 284), the Examiner proposed an Examiner’s Amendment adding that the conveyance gas was “the sole means for inducing movement [of the material]” (see, e.g., id. at 322). The Examiner set forth the scope of the “sole means” limitation: “heat addition, aerating action (i.e. chopping up of material, applying a screw conveyor, etc.), or the addition of a fluidizing agent are precluded. The conveyance gas is not a fluidizing agent.” Id. Amending the claims to include the “sole means” limitation, along with the Examiner’s accompanying explanation of its scope, are clearly and unmistakably the reasons for issuance of the ’217 patent. See Edwards Lifesciences LLC v. Cook Inc., 582 F.3d 1322, 1327 (Fed. Cir. 2009) (prosecution history “provides evidence of how the [PTO] and the inventor understood the patent” (quoting Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005) (en banc) (alteration in original)).” slip op. at 19
Patent outcomesUS 7,186,062 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 7,186,062 - Dynamic Air Inc. v. M-I Drilling Fluids UK Ltd.Some claims unpatentablePTAB · May 23, 2017 · IPR2016-00262 · APJ William V Saindon · IPR · Final written decision
Claims 1–10 and 12–49 are unpatentable as obvious; claim 11 is not unpatentable because the obviousness grounds did not establish its ISO-frame limitation.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“1. “adapted to” This term appears in claims 11, 17–19, and 30–49. Petitioner proposes “adapted to” means “capable of.” Pet. ’262, 10; Pet. ’263, 10. We agree, insofar as these limitations require structure to have qualities or features allowing it to meet the claim language. For example, claim 17 would require a vessel that actually can “withstand a pressure of about 4 bar to about 8 bar.” In other words, the “adapted to” language distinguishes from those structures that are not physically capable of meeting the limitation. Patent Owner argues that Petitioner’s construction is overly broad. PO Resp. ’262, 17–19; PO Resp. ’263, 16–19. Reviewing Patent Owner’s arguments, however, is not clear to us what Patent Owner disputes to be the effective difference. We determine that no explicit construction of “adapted to” is necessary.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Reviewing the arguments and evidence before us, we agree with Patent Owner that Petitioner’s initial construction, now abandoned, was too broad. Specifically, Petitioner’s abandoned construction did not account for the fact that the mixture comes from a particular origin (drilling of an oil well) and that the “some resistance to flow” aspect was also too broad given the particular materials involved. However, Patent Owner’s proposed construction, which would require a gravity test, is not supported by the ’062 patent. Instead, we effectively adopt a combination of Patent Owner’s proposed construction and Petitioner’s, for the reasons explained below. The ’062 patent describes the material conveyed therein in several different ways, but it is always referring to the same material. The labels that the ’062 patent gives to this material are: “thick heavy paste” (Ex. 1004, 1:29, 1:46–47, 1:64, 2:1, 3:11), “drill cuttings” (id. at 1:65, 2:12; see also id. at 1:45 (simply, “cuttings”)), “non-free flowing paste” (id. at 2:7–8, 11), and “thick and/or heavy paste or clay like material” (id. at 2:11–12). These labels are often equated to one another: “cuttings . . . in the form of a very thick heavy paste” (id. at 1:45–47), “thick heavy paste . . . e.g. drill cuttings” (id. at 1:64–65), “non-free flowing paste . . . e.g. oil rig drill cuttings” (id. at 2:11–12). As such, the ’062 patent considers screened drill cuttings to be a thick heavy paste as well as a non-free flowing paste and, thus, considers a thick heavy paste to be a non-free flowing paste. The ’062 patent does not discuss “non-free flowing drill cuttings,” or relate it to gravity. However, given that the ’062 patent considers “drill cuttings” to be “non-free flowing paste,” the “drill cuttings” are already “non-free flowing” according to the ’062 patent. Thus, when the claims add “non-free flowing” to “drill cuttings,” we find that they do not provide a further limitation, but rather just provide an extra description that a person of ordinary skill in the art would already understand is present if they were to read the specification. The ’062 patent is simply providing many ways to describe the same thing. There is no persuasive evidence that a person of ordinary skill in the art would understand “non-free flowing” to otherwise be a term of art. Indeed, Patent Owner’s expert, Dr. Brown, points to the exact same physical material samples to provide examples of “drill cuttings,” “non-free flowing paste,” and “non-free flowing drill cuttings.” Compare Ex. 2014 ¶ 53 with Ex. 2056 ¶ 53 with Ex. 2059 ¶ 53 with Ex. 2060 ¶ 53 (each using the same picture to describe the material).18” slip op. at 12
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Other
“3. “means for transporting” This term appears in claims 39, 40, 46, and 47. Petitioner proposes the term is a means-plus-function limitation having a function of “transporting [the] pressure vessel to a discharge station” and corresponding structure of “a ship, crane, and road vehicle.” Pet. ’263, 12 (citing Ex. 1004, Fig. 1, Fig. 6, 5:8–11, 5:59–63, 6:17–31). Patent Owner proposes a similar construction. PO Resp. ’263, 20 (using the term “boat” instead of “ship”). The constructions are effectively identical. Our Decision does not turn on which proposed construction we choose; we adopt the Patent Owner’s proposed construction. 4. “means for transferring” This term appears in claims 44 and 45. Petitioner proposes the term is a means-plus-function limitation having a function of “transferring the nonfree flowing drill cuttings from a second vessel to a third vessel” and corresponding structure of “a conduit, pipe, or flexible hose.” Pet. ’263, 12– 13 (citing Ex. 1004, Fig. 1, Fig. 6, 5:8–11, 5:59–63, 6:17–31). Patent Owner proposes a similar construction, but with more exemplary corresponding structures. PO Resp. ’263, 21 (also including “compressed gas[/air],” “a connector,” and “a hose”). Petitioner’s Reply does not discuss the construction of “means for transferring.” Our Decision does not turn on which proposed construction we choose; we adopt Patent Owner’s proposed construction because it is a slightly broader reasonable interpretation.” slip op. at 18
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner
“The original claims of the ’217 patent were rejected as anticipated by Curtis, which had pulsed-jet aerators in the cone of the pressure vessel. Ex. 2017, 232, 3:7–11, 6:59–64. After a telephone interview, during which the Examiner and Patent Owner “[d]iscussed [a] proposed amendment” (id. at 284), the Examiner proposed an Examiner’s Amendment adding that the conveyance gas was “the sole means for inducing movement [of the material]” (see, e.g., id. at 322). The Examiner set forth the scope of the “sole means” limitation: “heat addition, aerating action (i.e. chopping up of material, applying a screw conveyor, etc.), or the addition of a fluidizing agent are precluded. The conveyance gas is not a fluidizing agent.” Id. Amending the claims to include the “sole means” limitation, along with the Examiner’s accompanying explanation of its scope, are clearly and unmistakably the reasons for issuance of the ’217 patent. See Edwards Lifesciences LLC v. Cook Inc., 582 F.3d 1322, 1327 (Fed. Cir. 2009) (prosecution history “provides evidence of how the [PTO] and the inventor understood the patent” (quoting Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005) (en banc) (alteration in original)). The application that was issued as the ’062 patent is a direct continuation of the application that issued as the ’217 patent. The claims in the ’062 patent application did not have the “sole means” limitation required by the Examiner for allowance of the ’217 patent. Instead, the claims included the “without employing non-pneumatic means” limitation. The ’062 patent application received an obviousness-type double patenting rejection in the first Office Action, where the Examiner stated “[a]lthough the [claims in the ’217 patent and the present application] are not identical, they are not patently distinct from each other because the instant apparatus claim(s) are too close in scope with the patented method claim(s).” Ex. 2019, 629. Patent Owner did not traverse that rejection and filed a terminal disclaimer; the claims were thereafter allowed. Our understanding of the prosecution history of the ’062 patent is that the Examiner did not consider the “without employing” limitation to be meaningfully broader than the “sole means” limitation, or the Examiner would have re-instated the Curtis rejection. Instead, the Examiner stated the claims were “not patently distinct.” Ex. 2019, 629. In other words, the Examiner considered the claims in the ’062 patent to also have “precluded” “heat addition, aerating action (i.e. chopping up of material, applying a screw conveyor, etc.), or the addition of a fluidizing agent.” Ex. 2017, 322. Patent Owner acquiesced to the Examiner’s statement that the claims are not patentably distinct by not traversing the double patenting rejection and filing a terminal disclaimer to secure allowance of the claims. Ex. 2019, 651 (“please find enclosed a TERMINAL DISCLAIMER in response to the double patenting rejection”). See Biogen Idec, Inc. v. GlaxoSmithKline LLC, 713 F.3d 1090, 1097 n.6 (Fed. Cir. 2013) (disclaimer arose where the applicants “let[ ] stand an examiner’s narrow characterization of a claim term” and “adopt[ed] ... that characterization to overcome the examiner’s ... rejection”); TorPharm Inc. v. Ranbaxy Pharm., Inc., 336 F.3d 1322, 1330 (Fed.Cir.2003) (“Whether the patentee chooses to dispute the examiner’s view of matters is relevant to claim interpretation, for there a court may need to ascertain exactly what subject matter was actually examined and allowed by the PTO.”). Thus, the prosecution history of the ’062 patent simply continues the prosecution history of the ’217 patent, and leaves intact the Examiner’s and Patent Owner’s understanding regarding the scope of the amendment responsible for allowance. Accordingly, we construe the “without employing” limitation the same as the “sole means” limitation of the ’217 patent: heat addition, aerating action (i.e. chopping up of material, applying a screw conveyor, etc.), or the addition of a fluidizing agent are precluded. The conveyance gas is not a fluidizing agent.” slip op. at 19
Patent outcomesUS 7,186,062 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 7,186,062
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.