- Twinstrand Biosciences, Inc. v. Guardant Health, Inc.Institution deniedPTAB · Dec 30, 2022 · IPR2022-01115 · APJ Susan L C Mitchell · IPR · Institution
The Board denied institution on all grounds because Petitioner did not show a reasonable likelihood of proving the challenged claims obvious, including the claimed tagging efficiency.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon considering the argument and evidence presented by the parties, we determine that Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of at least one claim challenged in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(i) a Ph.D. in molecular biology, genetics, bioinformatics, or a related field, and have at least about two years of experience in the use and development of sequencing technologies; or (ii) a Master’s degree in one of the same fields with at least about five years of the same experience.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner sets forth a proposed construction for “a number of double- stranded cfDNA molecules that map to the mappable base position,” recited in claim 1. Pet. 18–19. Petitioner asserts that a “POSA [person of ordinary skill in the art] would understand that the number of double-stranded cfDNA molecules that map to the mappable base position will vary, depending on the number of haploid genome equivalents (HGEs) in the sample.” Id. at 19 (citing Ex. 1002 ¶¶ 133–136). Patent Owner does not dispute Petitioner’s construction. Prelim. Resp. 32–33. that it is unnecessary to expressly construe any claim terms for purposes of rendering this Decision. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“40–60% tagging efficiency, Petitioner fails to sufficiently explain why a person of ordinary skill in the art would have expected Meyer’s tagging efficiency to apply to Schmitt’s DCS method when used with Narayan’s sequencing of cfDNA. For example, Petitioner fails to address the differences between Meyer’s adapters and Schmitt’s adapters and how those differences affect the tagging efficiency. Meyer’s barcodes comprise “single self-hybridized palindromic oligonucleotides, carrying an Srf I restriction site in the middle (GCCCGGGC), a sequence tag at the 3’ end and the reverse complementary tag sequence at the 5’ end.” Ex. 1005, Fig. 1. Schmitt, on the other hand, teaches a “hybrid method” of tagging that uses a combination of the sheared ends of the DNA fragments and a “shorter n-mer the adaptor.” Ex. 1009 ¶ 38.” slip op. at 14
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,801,063 - Twinstrand Biosciences, Inc. v. Guardant Health, Inc.Institution deniedPTAB · Dec 30, 2022 · IPR2022-01116 · APJ Tina E Hulse · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood that the claims were obvious over the asserted prior art.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon considering the argument and evidence presented by the parties, we determine that Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of at least one claim challenged in the Petition. Accordingly, we decline to institute an inter partes review of any claim of the ’858 patent on any ground.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(i) a Ph.D. in molecular biology, genetics, bioinformatics, or a related field, and have at least about two years of experience in the use and development of sequencing technologies; or (ii) a Master’s degree in one of the same fields with at least about five years of the same experience.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner sets forth a proposed construction for “a number of double- stranded cfDNA molecules that map to the mappable base position,” recited in claims 22 and 24. Pet. 19. Petitioner asserts that a “POSA would understand that the number of double-stranded cfDNA molecules that map to the mappable base position will vary, depending on the number of haploid genome equivalents (HGEs) in the sample.” Id. (citing Ex. 1002 ¶¶ 133– 136). Patent Owner does not dispute Petitioner’s constructions. Prelim. Resp. 24. that it is unnecessary to expressly construe any claim terms for purposes of rendering this Decision. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“40–60% tagging efficiency, Petitioner fails to explain sufficiently why a person of ordinary skill in the art would have expected Meyer’s tagging efficiency to apply to Schmitt’s DCS method when used with Narayan’s sequencing of cfDNA. For example, Petitioner fails to address the differences between Meyer’s adapters and Schmitt’s adapters and how those differences affect the tagging efficiency. Meyer’s barcodes comprise “single self-hybridized palindromic oligonucleotides, carrying an Srf I restriction site in the middle (GCCCGGGC), a sequence tag at the 3’ end and the reverse complementary tag sequence at the 5’ end.” Ex. 1005, Fig. 1. Schmitt, on the other hand, teaches a “hybrid method” of tagging that uses a combination of the sheared ends of the DNA fragments and a “shorter n-mer tag (such as 1 or 2 or 3 or 4 or more degenerate or semi-degenerate bases) in the adaptor.” Ex. 1009 ¶ 38. Moreover, as Patent Owner notes, Petitioner is silent as to how the references’ different starting sample sizes affect tagging efficiency. Prelim. Resp. 37–38. According to the KAPA data sheet submitted by Petitioner, “[t]he proportion of fragmented DNA that is successfully converted to adapter-ligated molecules decreases as input is reduced.” Ex. 1015, 4. The KAPA data sheet states that “[w]hen starting library construction (end repair) with >100 ng fragmented DNA, 15–40% of input DNA is typically recovered as adapter-ligated molecules, whereas the recovery typically ranges from 0.5 to 15% for libraries constructed from 100 pg–100 ng DNA.”” slip op. at 14
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,889,858 - PTAB · Dec 27, 2022 · IPR2022-01147 · APJ Jason M Repko · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving any challenged claim obvious over the asserted reference combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute an inter partes review, we must determine “that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons discussed below, Petitioner has not shown a reasonable likelihood that it would prevail with respect to any claim challenged in the Petition. Thus, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“at least a bachelor of science in electrical engineering, computer engineering, computer science, or a related discipline, with at least two years of relevant experience in a field related to acoustics, speech recognition, speech detection, or signal processing.” Pet. 4 (citing Ex. 1003 ¶ 22). Petitioner also asserts that “[a]dditional education or industry experience may compensate for a deficit in one of the other aspects of the requirements stated above.” Id. Patent Owner adopts Petitioner’s proposed level of ordinary skill in the art at this stage of the proceeding. Prelim. Resp. 6–7. To determine whether to institute, we also apply Petitioner’s proposed definition.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Claim Construction We need only construe terms that are in controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 6
- Expert testimonyPetitioner expert discountedOther
“The closest that Petitioner comes to addressing the recited VAD with Weinstein is by stating that “[a] POSITA would have understood that ‘there is no coupling of the desired signal into the reference sensor, i.e., when the actual coupling system H21 is zero,’ occurs when the desired signal, e.g., speech, is absent.” Id. at 25 (citing Ex. 1003 ¶ 92). Notably, the only support for this conclusion is the Kenny Declaration, which simply repeats this statement verbatim without any citation to the evidence of record. Compare id., with Ex. 1003 ¶ 92. We agree with Patent Owner that the “conclusion is wholly unsupported by evidence.” PO Resp. 12. And “[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.” 37 C.F.R. § 42.65(a). But, even assuming Petitioner’s conclusion is correct and crediting Dr. Kenny’s testimony, the Petition does not explain sufficiently how a VAD signal in the Hietanen-Burnett combination is related to the period in which speech is alleged to be absent in Weinstein. See Pet. 25.” slip op. at 12
Claim construction§ 103 obviousnessPatents in suitUS 8,019,091 - Amazon.Com, Inc. / Amazon.Com Services, LLC et al. v. Voip.Pal.Com, Inc.Institution deniedPTAB · Dec 22, 2022 · IPR2022-01179 · APJ Mitchell G Weatherly · IPR · Institution
The Board denied institution on all challenged claims because the substantively identical petition did not show a reasonable likelihood of proving any claim unpatentable, and denied joinder.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“After consideration of the arguments and evidence in the Petition and the Preliminary Response in the 1073 proceeding, we denied institution, because “Petitioner [in the 1073 proceeding] had not shown that the cited art disclose[d] all the limitations of any challenged claim” and that, therefore, “there [wa]s not a reasonable likelihood that the Petitioner would prevail with respect at least one of the claims challenged in the Petition.” IPR2022- 01073 Paper 10, 23. Because the arguments and the evidence in this proceeding are substantively identical to the arguments and evidence in the 1073 proceeding, we deny institution in this proceeding for the reasons set forth in the Decision Denying Institution in the 1073 proceeding. IPR2022- 01073 Paper 10. B. Motion for Joinder” slip op. at 4
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“The Director may grant a motion for joinder and allow the movant to “join as a party” an existing proceeding only “[i]f the Director institutes an inter partes review” in the proceeding to which joinder as a party is sought. 35 U.S.C. § 315(c). Petitioner implicitly recognized this prerequisite to granting its Motion for Joinder when it requested that the Petition be granted: “only if, an IPR is instituted in the 1073 proceeding.” Mot. 1. Because we did not institute review in the 1073 proceeding, we deny the Motion for Joinder.” slip op. at 5
NonePatents in suitUS 8,630,234 - Amazon.Com, Inc. / Amazon.Com Services, LLC et al. v. Voip.Pal.Com, Inc.Institution deniedPTAB · Dec 22, 2022 · IPR2022-01178 · APJ Mitchell G Weatherly · IPR · Institution
The Board denied institution on all challenged claims because the identical petition and evidence had not shown a reasonable likelihood of prevailing, and denied joinder.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“After consideration of the arguments and evidence in the Petition and the Preliminary Response in the 1072 proceeding, we denied institution, because “Petitioner [in the 1072 proceeding] had not shown that the cited art disclose[d] all the limitations of any challenged claim” and that, therefore, “there [wa]s not a reasonable likelihood that the Petitioner would prevail with respect at least one of the claims challenged in the Petition.” IPR2022- 01072 Paper 10, 23. Because the arguments and the evidence in this proceeding are substantively identical to the arguments and evidence in the 1072 proceeding, we deny institution in this proceeding for the reasons set forth in the Decision Denying Institution in the 1072 proceeding. IPR2022- 01072 Paper 10. B. Motion for Joinder” slip op. at 4
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“The Director may grant a motion for joinder and allow the movant to “join as a party” an existing proceeding only “[i]f the Director institutes an inter partes review” in the proceeding to which joinder as a party is sought. 35 U.S.C. § 315(c). Petitioner implicitly recognized this prerequisite to granting its Motion for Joinder when it requested that the Petition be granted: “only if, an IPR is instituted in the 1072 proceeding.” Mot. 1. Because we did not institute review in the 1072 proceeding, we deny the Motion for Joinder.” slip op. at 5
NonePatents in suitUS 8,630,234 - Amazon.Com, Inc. / Amazon.Com Services, LLC et al. v. Voip-Pal.Com, Inc.Institution deniedPTAB · Dec 22, 2022 · IPR2022-01181 · APJ Terrence W Mcmillin · IPR · Institution
The Board denied institution on all challenged claims because the substantively identical petition in IPR2022-01075 failed to show the cited art disclosed every claim limitation; it also denied joinder.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“After consideration of the arguments and evidence in the Petition and the Preliminary Response in the 1075 proceeding, we denied institution, because “Petitioner [in the 1075 proceeding] ha[d] not shown that the cited art disclose[d] all the limitations of any challenged claim” and that, prevail with respect at least one of the claims challenged in the Petition.” IPR2022-01075 Paper 10, 20–21. Because the arguments and the evidence in this proceeding are substantively identical to the arguments and evidence in the 1075 proceeding, we deny institution in this proceeding for the reasons set forth in the Decision Denying Institution (IPR2022-01075 Paper 10) in the 1075 proceeding.” slip op. at 4
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“B. Motion for Joinder The Director may grant a motion for joinder and allow the movant to “join as a party” an existing proceeding only “[i]f the Director institutes an inter partes review” in the proceeding to which joinder as a party is sought. 35 U.S.C. § 315(c). Petitioner implicitly recognized this prerequisite to granting its Motion for Joinder when it stated: “Petitioners request that . . . the motion be granted only if, an IPR is instituted in the 1075 proceeding.” Mot. for Joinder 1. Because we did not institute review in the 1075 proceeding, we deny the Motion for Joinder.” slip op. at 5
NonePatents in suitUS 10,880,721 - Amazon.Com, Inc. / Amazon.Com Services, LLC et al. v. Voip-Pal.Com, Inc.Institution deniedPTAB · Dec 22, 2022 · IPR2022-01180 · APJ Terrence W Mcmillin · IPR · Institution
The Board denied institution on all challenged claims because the substantively identical petition and evidence had not shown that the cited art disclosed every limitation of any challenged claim; it also denied joinder.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“the Preliminary Response in the 1074 proceeding, we denied institution, because “Petitioner [in the 1074 proceeding] ha[d] not shown that the cited art disclose[d] all the limitations of any challenged claim” and that, prevail with respect at least one of the claims challenged in the Petition.” IPR2022-01074 Paper 10, 25. Because the arguments and the evidence in this proceeding are substantively identical to the arguments and evidence in the 1074 proceeding, we deny institution in this proceeding for the reasons set forth in the Decision Denying Institution (IPR2022-01074 Paper 10) in the 1074 proceeding.” slip op. at 4
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“B. Motion for Joinder The Director may grant a motion for joinder and allow the movant to “join as a party” an existing proceeding only “[i]f the Director institutes an inter partes review” in the proceeding to which joinder as a party is sought. 35 U.S.C. § 315(c). Petitioner implicitly recognized this prerequisite to granting its Motion for Joinder when it stated: “Petitioners request that . . . the motion be granted only if, an IPR is instituted in the 1074 proceeding.” Mot. for Joinder 1. Because we did not institute review in the 1074 proceeding, we deny the Motion for Joinder.” slip op. at 5
NonePatents in suitUS 10,880,721 - U.S. Well Services, LLC v. Halliburton Energy Services, Inc.Institution deniedPTAB · Dec 20, 2022 · IPR2022-01165 · APJ Hubert C Lorin · IPR · Institution
Institution was denied on both obviousness grounds because the petition did not show that the cited art teaches sensing a pumping system’s output rate, for claims 1–14.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“inter partes review may not be instituted unless the information presented in the Petition and the Preliminary Response shows that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2021).” slip op. at 2
- BurdenDecided for patent owner
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the 3 The parties have not directed us to any such objective evidence. Petitioner indicates that “Patent Owner has advanced certain ‘secondary indicia’ arguments tied to the claimed invention of the ’949 Patent in an interrogatory response in the USWS litigation.” Pet. 62. But, according to Petitioner, “the record in the USWS litigation has not been fully developed showing objective indicia of nonobviousness.” Id. Patent Owner has not advanced any secondary considerations in the Preliminary Response. See generally Prelim. Resp. grounds for the challenge to each claim”)). Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“patent . . . shall be construed using the same claim construction standard that would be used to construe the [claims] in a civil action under 35 U.S.C. § 282(b), including construing the [claims] in accordance with the ordinary and customary meaning of such claims as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100 (2021); see also Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005). Petitioner does not submit constructions for any claim terms. Pet. 12. “Patent Owner does not dispute Petitioner’s constructions for the purposes of [the] preliminary response.” Prelim. Resp. 1–2. 1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Because the challenged claims of the ’949 patent have an effective filing date before the effective date of the applicable AIA amendments, we refer to the pre-AIA versions of 35 U.S.C. § 103 throughout this Decision. 2 “HAL-FCP” refers to the combined “two (2) Society of Petroleum Engineers (“SPE”) publications detailing Phase I (SPE17315) and Phase II (SPE-26220) of a Fracturing Process Control and Automation design.” Pet. 5–6; Exs. 1005 and 1006, respectively. Only those terms that are in controversy need to be construed, and 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). We determine that no claims require express construction for purposes of this Decision.” slip op. at 9
Claim constructioncites Phillips · KSR · GrahamPatents in suitUS 7,836,949 - U.S. Well Services, LLC v. Halliburton Energy Services, Inc.Institution deniedPTAB · Dec 20, 2022 · IPR2022-01162 · APJ Hubert C Lorin · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–12 obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). C. Level of Ordinary Skill in the Art slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends: A person of ordinary skill in the art (“PHOSITA”) in the relevant field relating to the ʼ333 Patent, in December 2011, would have a Bachelor of Science in Mechanical Engineering, Materials Science, or Metallurgical Engineering or an equivalent field and at least two years of academic or industry experience in the oil and gas industry, including experience with corrosion science. Pet. 12–13. Patent Owner applies Petitioner’s definition only for the purposes of the Preliminary Response. Prelim. Resp. 18. 6 The parties have not directed us to any such objective evidence. Petitioner indicates that “Patent Owner has advanced certain ‘secondary indicia’ arguments tied to the claimed invention of the ’333 Patent in an interrogatory response in the USWS litigation.” Pet. 40. But, according to Petitioner, “the record in the USWS litigation has not been fully developed showing objective indicia of nonobviousness.” Id. Patent Owner has not advanced any secondary considerations in the Preliminary Response. See generally Prelim. Resp. appears reasonable, and we adopt that definition for our analysis in this decision. Accordingly, for the purposes of this Decision, we adopt Petitioner’s proposal regarding the level of one of ordinary skill in the art with the exception of the open-ended phrase “at least,” which expands the range of experience indefinitely without an upper bound. We determine that the level reflected in the prior art is consistent with Petitioner’s definition. D. Overview of the Prior Art References” slip op. at 10
- BurdenNot shown unpatentable
“However, as Patent Owner contends, there is no explanation in the Petition or the Ely Declaration why one of ordinary skill in the art would “know” to use Harvey’s fluid end at pressures up to 50,000 psi in order to fracture a formation with an aqueous-based fluid as Norman teaches. Prelim. Resp. 24. As Patent Owner points out, there is no mention of hydraulic fracturing in Harvey, only “water blasting,” albeit the water-blasting could be conducted in “oil field operations.” Id.; Ex. 1004, 1:14. Harvey does disclose high pressure quintuplex pumps and Petitioner does provide evidence that such pumps “are known to a PHOSITA to be utilized in hydraulic fracturing to pump fluid including salts.” Pet. 14 (citing, inter alia, Ex. 1004, 2:45–50, 7:30–35; Ex. 1007, p. 211 ¶¶ 5–7). But the evidence provides only a general description of using quintuplex pumps “in hydraulic fracturing,” without any mention of pressures. Ex. 1007, p. 211 ¶¶ 5–7. And Harvey discloses pumps in a quintuplex configuration that have a wide “range of pressures from relatively low to relatively high pressures, e.g. from 4000 to 15000 p.s.i.,” without any mention of hydraulic fracturing. Ex. 1004, 2:45–47. Based on these broad disclosures alone, Petitioner does not demonstrate that one of ordinary skill psi to fracture a formation with an aqueous-based fluid as Norman teaches. Because there is insufficient explanation and evidence showing why one of ordinary skill in the art would “know” to use Harvey’s fluid end at pressures up to 50,000 psi in order to fracture a formation with an aqueousbased fluid as Norman teaches, there is insufficient support for Petitioner’s apparent position that one of ordinary skill in the art would have been led to incorporate Harvey into Norman and thereby reach limitation [1d].” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“However, as Patent Owner contends, there is no explanation in the Petition or the Ely Declaration why one of ordinary skill in the art would “know” to use Harvey’s fluid end at pressures up to 50,000 psi in order to fracture a formation with an aqueous-based fluid as Norman teaches. Prelim. Resp. 24. As Patent Owner points out, there is no mention of hydraulic fracturing in Harvey, only “water blasting,” albeit the water-blasting could be conducted in “oil field operations.” Id.; Ex. 1004, 1:14. Harvey does disclose high pressure quintuplex pumps and Petitioner does provide evidence that such pumps “are known to a PHOSITA to be utilized in hydraulic fracturing to pump fluid including salts.” Pet. 14 (citing, inter alia, Ex. 1004, 2:45–50, 7:30–35; Ex. 1007, p. 211 ¶¶ 5–7). But the evidence provides only a general description of using quintuplex pumps “in hydraulic fracturing,” without any mention of pressures. Ex. 1007, p. 211 ¶¶ 5–7. And Harvey discloses pumps in a quintuplex configuration that have a wide “range of pressures from relatively low to relatively high pressures, e.g. from 4000 to 15000 p.s.i.,” without any mention of hydraulic fracturing. Ex. 1004, 2:45–47. Based on these broad disclosures alone, Petitioner does not demonstrate that one of ordinary skill psi to fracture a formation with an aqueous-based fluid as Norman teaches. Because there is insufficient explanation and evidence showing why one of ordinary skill in the art would “know” to use Harvey’s fluid end at pressures up to 50,000 psi in order to fracture a formation with an aqueousbased fluid as Norman teaches, there is insufficient support for Petitioner’s apparent position that one of ordinary skill in the art would have been led to incorporate Harvey into Norman and thereby reach limitation [1d].” slip op. at 20
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,435,333 - U.S. Well Services, LLC v. Halliburton Energy Services, Inc.Institution deniedPTAB · Dec 20, 2022 · IPR2022-01164 · APJ Kristina M Kalan · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of proving the claims obvious over the asserted references.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute inter partes review, we must determine that the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons discussed below, after considering the parties’ submissions and the evidence of record, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’695 patent, and we do not institute inter partes review.” slip op. at 2
- BurdenNot shown unpatentable
“limitations 56[d] (Pet. 37) and 84[e] (Pet. 11)), which requires “using a transfer pump to transfer the fluid to a down hole pump,” Petitioner argues that Heilman discloses “that the final fracturing fluid is directed to a pumping grid 111 and from the pumping grid 111 to two multiple manifold trailers 701 and 702” and a POSITA “would have understood that the pumping grid 111 transfers the fracturing fluid to the pump trucks 703” and in the alternative “would know a portion of the pumps of the pumping grid 111 are transfer pumps and a portion of another portion of the pumps of the pumping grid 111 are downhole pumps.” Pet. 14–16 (citing Ex. 1004 ¶¶ 26, 28, 32; Ex. 1003 generally). As Patent Owner argues, and as we agree, Heilman’s referenced disclosure only describes “that pumping grid 111 is connected to and provides fluid to one or more manifolds,” i.e., 107, 405, 701, or 702, but “there is no indication in Heilman that any of the treatment fluid is transferred from pumping grid 111 to pump trucks 703. Prelim. Resp. 32–33. We also agree that Heilman does not show a “portion of the pumps” being a certain type of pump, i.e. a downhole pump or a transfer pump. Id. at 33–34. We also note the prosecution history of the ’695 Patent, in which the USPTO specifically found that “HEILMAN fails to teach or suggest a transfer pump to transfer the fluid to a downhole pump.” Ex. 1002, 72 (Detailed Reissue Action). Petitioner has not provided any compelling rationale for why we should revisit this determination, or any reasoning that would persuade us to reach a different conclusion.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“secondary references is insufficient and fails to provide the necessary factual support. In making a determination of obviousness, it is not enough that each claimed limitation be found in one or more prior art references. In re Kotzab, 217 F.3d 1365, 1371 (Fed. Cir. 2000) (explaining that obviousness “cannot be predicated on the mere identification . . . of individual components of claimed limitations”). Instead, Petitioner must also show that the skilled artisan would have had a reason to combine each of the prior art references to achieve the claimed subject matter and a reasonable expectation of success in making the combination. PAR Pharm., Inc. v. TWi Pharm., Inc., 773 F.3d 1186, 1193 (Fed. Cir. 2014). A generic reason to combine references fails to “explain why a person of ordinary skill in the art would have combined elements from specific references in the way the claimed invention does.” ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1328 (Fed. Cir. 2012); see also Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc., 381 F.3d 1371, 1377 (2004) (explaining that “[r]ecognition of a need does not render obvious the achievement that meets that need” because “[t]here is an important distinction between the general motivation to cure an uncured disease . . . and the motivation to create a particular cure”). “[A] clear, evidence-supported account of the contemplated workings of the combination is a prerequisite” to concluding “that a relevant skilled artisan would have been motivated to make the combination and reasonably expect success in doing so.” Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 994 (Fed. Cir. 2017).” slip op. at 20
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Petitioner also relies on the testimony of Mr. Ely, but Mr. Ely’s testimony similarly falls short. Prelim. Resp. 39 (comparing Pet. 26–27, 32, 35, 40, 42, with Ex. 1003 ¶¶ 83–84, 94, 100, 121, 128). As noted above, Petitioner’s citations to Mr. Ely’s testimony in refer generally to “Ex. 1003” without more particularity, hindering the Board’s ability to determine on which portions of Mr. Ely’s testimony Petitioner intends to rely. See, e.g., Pet. 27–31 (Ground 2), 31–34 (Ground 3), 34–37 (Ground 4). To the extent we have reviewed Mr. Ely’s testimony in connection with the Petition, Mr. Ely’s testimony is entitled to little weight because it fails to explain how one of ordinary skill would have been motivated to make the proposed combination, and it is not otherwise apparent that it does. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“It is within the discretion of the trier of fact to give each item of evidence such weight as it feels appropriate.”); cf. Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (“Lack of factual support for expert opinion going to factual determinations, however, may render the testimony of little probative value in a validity determination.”).” slip op. at 22
Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
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.