Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
` IPR2014-00411 Paper 114
`IPR2014-00434 Paper 16
`IPR2015-00065 Paper 72
`Entered: September 3, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`FLIR SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`LEAK SURVEYS, INC.,
`Patent Owner.
`_______________
`
`Case IPR2014-00411/434 (Patents 8,426,813 B2 and 8,193,496 B2)
`Case IPR2015-00065 (Patent 8,426,813 B2)
`_______________
`
`
`
`Before FRED E. McKELVEY, JAMES T. MOORE, and
`TREVOR M. JEFFERSON, Administrative Patent Judges.
`
`JEFFERSON, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
` IPR2014-00411 Paper 114
`IPR2014-00434 Paper 16
`IPR2015-00065 Paper 72
`Entered: September 3, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`FLIR SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`LEAK SURVEYS, INC.,
`Patent Owner.
`_______________
`
`Case IPR2014-00411/434 (Patents 8,426,813 B2 and 8,193,496 B2)
`Case IPR2015-00065 (Patent 8,426,813 B2)
`_______________
`
`
`
`Before FRED E. McKELVEY, JAMES T. MOORE, and
`TREVOR M. JEFFERSON, Administrative Patent Judges.
`
`JEFFERSON, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2014-00411/434 Patents 8,426,813 B2; 8,193,496 B2
`Case IPR2015-00065 Patent 8,426,813 B2
`
`
`I. INTRODUCTION
`
`A. Background
`
`FLIR Systems, Inc. (“Petitioner” or “FLIR”) filed four petitions
`
`seeking inter partes review of U.S. Patent No. 8,426,813 B2 (“the ʼ813
`
`patent”) and U.S. Patent No. 8,193,496 B2 (“the ’496 patent”). Filed were a
`
`first petition in IPR2014-00411 (“IPR ʼ411”) and a second petition in
`
`IPR2014-00608 (“IPR ʼ608”) seeking inter partes review of claims 1–58 (all
`
`of the claims) of the ʼ813 patent. 35 U.S.C. § 311; Paper 2 (IPR ʼ411);
`
`Paper 2 (IPR ʼ608).1 Also filed were a third petition in IPR2014-00434
`
`(“IPR ʼ434”) and a fourth petition in IPR2014-00609 (“IPR ʼ609”) seeking
`
`inter partes review of claims 1–7 and 9–20 the ’496 patent. 35 U.S.C.
`
`§ 311; Paper 2 (IPR ʼ434); Paper 2 (IPR ʼ609).
`
`Leak Surveys, Inc. (“Patent Owner” or “LSI”) filed a Patent Owner’s
`
`Preliminary Response in IPR ʼ411 (Paper 6 corrected by Paper 8); IPR ʼ608
`
`(Paper 6 corrected by Paper 8); IPR ʼ434 (Paper 6); and IPR ʼ609 (Paper 7).
`
`In a consolidated Decision to Institute (Paper 9 in IPR ’411 and Paper
`
`9 in IPR ’434, “Dec. ’411”), we denied institution in IPR ’608 and IPR ’609
`
`and in IPR ’411 and IPR ’434 instituted this proceeding as to claims 1–22,
`
`31, 37–40, 42–56, and 58 of the ʼ813 patent and claims 1–7 and 9–20 of the
`
`ʼ496 patent. Dec. ’411, 35–36. Subsequently, we consolidated IPR2014-
`
`00434 with IPR2014-00411 and terminated the IPR2014-00434 proceeding.
`
`Paper 10 (IPR ’411); Paper 9 (IPR ’434).
`
`
`1 The IPR in parentheses after a paper number or exhibit number indicates
`the IPR docket that contains the numbered filing.
`
` 2
`
`
`
`
`
`
`
`Case IPR2014-00411/434 Patents 8,426,813 B2; 8,193,496 B2
`Case IPR2015-00065 Patent 8,426,813 B2
`
`
`In IPR2015-00065 (“IPR ’065”), FLIR filed a fifth petition,
`
`requesting inter partes review of claims 23–30, 32–36, 41, and 57 of the
`
`’813 patent pursuant to 35 U.S.C. §§ 311–319. Paper 2 (IPR ’065). FLIR
`
`subsequently withdrew claim 29 from the requested inter partes review, thus
`
`challenging only claims 23–28, 30, 32–36, 41, and 57 of the ’813 patent.
`
`Paper 10 (IPR ’065). LSI filed a Preliminary Response in two parts, Part 1
`
`(Paper 8 (IPR ’065)) and Part 2 (Paper 16 (IPR ’065)).
`
`Pursuant to 35 U.S.C. § 314, in our Decision to Institute (Paper 25,
`
`“Dec. ’065”), we instituted inter partes review as to claims 23–28, 30, 32–
`
`36, 41, and 57 of the ’813 patent. Dec. ’065, 18–19. We further combined
`
`IPR2014-00411 with IPR2015-00065 for purposes of scheduling, briefing,
`
`and trial. Paper 28, 7 (IPR ’065).
`
`LSI filed a Patent Owner Response as to all IPRs (Paper 65 (IPR
`
`’411), Paper 37 (IPR ’065), “PO Resp.”) and FLIR filed a Reply to the
`
`Patent Owner Response (Paper 77 (IPR ’411), Paper 42 (IPR ’065),
`
`“Reply”).2 A consolidated oral hearing for IPR2014-00411 and IPR2015-
`
`00065 (Paper 70 in IPR ’065 and Paper 112 in IPR ’411, “Tr.”) was held on
`
`July 2, 2015.
`
`For the reasons that follow, we determine that FLIR has shown by a
`
`preponderance of the evidence that claims 1–28 and 30–58 of the ’813
`
`patent and claims 1–7 and 9–20 of the ’496 patent, are unpatentable.
`
`
`2 All references herein to the Patent Owner Response (PO Resp.) are to the
`redacted Paper 66 (IPR ’411) and Paper 37 (IPR ’065).
`
` 3
`
`
`
`
`
`
`
`Case IPR2014-00411/434 Patents 8,426,813 B2; 8,193,496 B2
`Case IPR2015-00065 Patent 8,426,813 B2
`
`
`B. Related Cases
`
`FLIR states that the ’813 patent, which claims priority to the ’496
`
`patent, has been asserted by LSI in Leak Surveys, Inc. v. FLIR Systems, Inc.,
`
`Civil Action No. 3:13-CV-02897-L (N.D. Tex.) (filed July 25, 2013). Paper
`
`2, 1 (IPR ’411); Paper 4, 2 (IPR ’065).
`
`
`
`C. The Asserted Grounds
`
`In the consolidated IPRs, we instituted trial on the grounds that the
`
`following cited references3 render the challenged claims unpatentable as
`
`obvious pursuant to 35 U.S.C. § 103(a):
`
`References
`Merlin Brochure4 and
`Strachan5
`Merlin Brochure, Strachan,
`and Piety6
`Merlin Brochure and
`Strachan
`Merlin Brochure, Strachan,
`and Brengman7
`
`IPR
`
`IPR ’411
`
`Claim(s) Challenged
`’813 Patent: 1–4, 6, 8–22,
`31, 37–40, 42–56, 58
`
`IPR ’411
`
`’813 Patent: 5 and 7
`
`IPR ’434
`
`’496 Patent: 1–5 and 9–20
`
`IPR ’434
`
`’496 Patent: 6
`
`
`3 Exhibit numbers herein refer to exhibits filed in both IPR ’411 and IPR
`’065 that share the same number. An exhibit number followed by a specific
`IPR in parentheses denotes an exhibit filed in the identified IPR.
`4 Indigo Systems Corporation, Merlin: The ultimate combination of
`flexibility and value in high-performance Infrared Cameras (Rev. A 1/02),
`dated ©2002 (Ex. 1007, “Merlin Brochure”).
`5 D.C. Strachan et al., Imaging of Hydrocarbon Vapours and Gases by
`Infrared Thermography, 18 J. PHYS. E: SCI. INSTRUM. 492-498 (1995) (Ex.
`1008, “Strachan”).
`6 U.S. Patent No. 5,386,117 issued on January 31, 1995 (Ex. 1018, “Piety”).
`
` 4
`
`
`
`
`
`
`
`Case IPR2014-00411/434 Patents 8,426,813 B2; 8,193,496 B2
`Case IPR2015-00065 Patent 8,426,813 B2
`
`
`References
`Merlin Brochure, Strachan,
`and Hart8
`Merlin Brochure and
`Strachan
`Merlin Brochure, Strachan,
`and Spectrogon9
`Merlin Brochure, Strachan,
`and OCLI10
`Merlin User’s Guide11 and
`Kulp12
`Merlin User’s Guide, Kulp,
`and Spectrogon
`Merlin User’s Guide, Kulp,
`and OCLI
`
`
`IPR
`
`Claim(s) Challenged
`
`IPR ’434
`
`’496 Patent: 7
`
`IPR ’065
`
`’813 Patent: 23, 25, 28, 30
`
`IPR ’065
`
`’813 Patent: 27, 32–35, 41
`
`IPR ’065
`
`’813 Patent: 24, 26, 36, 57
`
`IPR ’065
`
`’813 Patent: 23, 33, 35
`
`IPR ’065
`
`’813 Patent: 25, 27, 28, 30,
`32, 34, 41
`
`IPR ’065
`
`’813 Patent: 24, 26, 36, 57
`
`
`
`7 U.S. Patent No. 3,662,171 issued on May 9, 1972 (Ex. 1013 (IPR ’434),
`“Brengman”).
`8 U.S. Patent No. 6,056,449 issued on May 2, 2000 (Ex. 1014 (IPR ’434),
`“Hart”).
`9 Spectrogon Catalog of Bandpass Filters (http://www.spectrogon.com
`/bandpass.html dated October 6, 2001) (Ex. 1017, “Spectrogon”).
`10 OPTICAL COATING LABORATORY, INC. SPECTRABAND STOCK PRODUCTS
`CATALOG, Vol. 5 (1994) (Ex. 1014, “OCLI”).
`TM
`11 Indigo Systems Corporation, MERLIN
` MID, INSB MWIR CAMERA,
`User’s Guide, Version 1.10, 414-0001-10 (Ex. 1011, “Merlin User’s
`Guide”).
`12 Thomas J. Kulp et al., Remote Imaging of Controlled Gas Release using
`Active and Passive Infrared Imaging Systems, 3061 SPIE 269 (1997) (Ex.
`1012, “Kulp”).
`
` 5
`
`
`
`
`
`
`
`Case IPR2014-00411/434 Patents 8,426,813 B2; 8,193,496 B2
`Case IPR2015-00065 Patent 8,426,813 B2
`
`
`D. The ’813 Patent and Illustrative Claims
`
`The ʼ813 patent is based on an application which is a continuation of
`
`the application that matured into the ʼ496 patent. Ex. 1001, 1:6–9.13 The
`
`ʼ813 patent relates to an infrared (IR) camera system which can be used to
`
`visually detect and identify chemical, gas, and petroleum product leaks.
`
`Ex. 1001, 1:27–29, 28:44–67.
`
`The ʼ813 invention is readily understood by reference to its drawings
`
`and exemplary claims 1, 23, and 24. Figs. 1 and 2 of the ʼ813 patent are
`
`reproduced below.
`
`Fig. 1 depicts a perspective view of a chemical leak detection system
`
`
`
`
`13 Ex. 1001 refers to the ’813 patent filed in both IPR ’411 and IPR ’065.
`
` 6
`
`
`
`
`
`
`
`Case IPR2014-00411/434 Patents 8,426,813 B2; 8,193,496 B2
`Case IPR2015-00065 Patent 8,426,813 B2
`
`
`
`
`Fig. 2 depicts a schematic of an infrared camera system of Fig. 1
`
`Figures 1 and 2 show infrared camera system 22, lens assembly 40,
`
`and lens 38. Ex. 1001, 5:34–38. Camera system 22 has refrigerated portion
`
`42 cooled by refrigeration system 60. Id. at 5:34–41, 5:66–67. The
`
`refrigerated portion 42 also comprises infrared sensor device 44 and optical
`
`bandpass filter 46. Id. at 5:41–43. The refrigeration cools optical bandpass
`
`filter 46, reducing the background noise of bandpass filter 46 as perceived
`
`by infrared sensor device 44. Id. at 6:45–47. Optical bandpass filter 46 is
`
`located along an optical path between lens 38 and infrared sensor device 44.
`
`Id. at 5:41–43. At least part of a pass band for optical bandpass filter 46 is
`
`within an absorption band for the detected chemical. The infrared image of
`
`the detected chemical passes through the lens and optical bandpass filter and
`
`the filtered infrared image of the leak is received with the infrared sensor
`
`device. Id. at 3:4–11. The visible image of the leak is produced by
`
`processing the filtered infrared image received by the infrared sensor device.
`
` 7
`
`
`
`Id.
`
`
`
`
`
`Case IPR2014-00411/434 Patents 8,426,813 B2; 8,193,496 B2
`Case IPR2015-00065 Patent 8,426,813 B2
`
`
`Independent claim 1 and dependent claims 23 and 24 are illustrative
`
`of the claimed subject matter of the ’813 patent.
`
`1. A system for producing a visible image of a leak of
`any one or more chemicals of a group of chemicals, the
`leak emanating from a component, including:
`
`a passive infrared camera system including:
`
`a lens assembly including a lens;
`
`a refrigerated portion including an interior;
`
`an infrared sensor device located in the interior of
`the refrigerated portion;
`
`a single filter configuration located in the interior
`of the refrigerated portion and including an optical
`bandpass filter fixed along an optical path between the
`lens assembly and the infrared sensor device;
`
`a refrigeration system that can cool the interior of
`the refrigerated portion;
`
`wherein at least part of the pass band for the single
`filter configuration is within an absorption band for each
`of the chemicals; and
`
`wherein the aggregate pass band for the single
`filter configuration is at least about 100 nm; and
`
`a processor that can process a signal representing
`the filtered infrared image captured by the infrared sensor
`device to produce a visible image of the chemical
`emanating from the component under variable ambient
`conditions of the area around the leak.
`
`23. The system of claim 1, wherein the aggregate
`pass band for the single filter configuration is at least
`about 200 nm.
`
`24. The system of claim 1, wherein the pass band
`for the filter configuration has a center wavelength
`located between about 3375 nm and about 3385 nm.
`
` 8
`
`
`
`Ex. 1001, 28:44–67, 30:3–7.
`
`
`
`
`
`Case IPR2014-00411/434 Patents 8,426,813 B2; 8,193,496 B2
`Case IPR2015-00065 Patent 8,426,813 B2
`
`
`
`
`E. The ’496 Patent and Illustrative Claim
`
`The ʼ496 patent relates to a method of using an IR camera system to
`
`visually detect and identify chemical, gas, and petroleum product leaks. Ex.
`
`1001, 1:25–27, 28:41–29:8.14 The drawings and written description portion
`
`of the Specification of the ʼ496 patent are essentially the same as the
`
`drawings and written description portion of the Specification of the ʼ813
`
`patent. Compare Ex. 1001 (IPR ’434) with Ex. 1001.
`
`Claim 1 is illustrative of the subject matter of the ’496 patent.
`
`1. A method of visually detecting a gas leak of any
`one or more chemicals of a group of predetermined
`chemicals, the gas leak emanating from a component of a
`group of components in different locations, the method
`comprising:
`
`aiming a passive infrared camera system towards
`the component, wherein the passive infrared camera
`system comprises:
`
`a lens,
`
`a refrigerated portion defined by the interior of a
`Dewar flask, the refrigerated portion comprising therein:
`
`an infrared sensor device; and
`
`a single filter configuration comprising at least one
`fixed optical bandpass filter, each filter fixed along an
`optical path between the lens and the infrared sensor
`device, wherein at least part of the aggregate pass band
`for the single filter configuration is within an absorption
`band for each of the predetermined chemicals and
`
`
`14 Ex. 1001 (IPR ’434) refers to the ’496 patent filed in IPR ’434.
`
` 9
`
`
`
`
`
`
`
`Case IPR2014-00411/434 Patents 8,426,813 B2; 8,193,496 B2
`Case IPR2015-00065 Patent 8,426,813 B2
`
`
`wherein the aggregate pass band for the single filter
`configuration is at least about 200 nm; and
`
`a refrigeration system adapted to cool the
`refrigerated portion, the refrigeration system comprising
`a closed-cycle Stirling cryocooler;
`
`filtering an infrared image associated with the area
`of the gas leak under normal operating and ambient
`conditions for the component with the at least one optical
`bandpass filter;
`
`receiving the filtered infrared image of the gas leak
`with the infrared sensor device;
`
`electronically processing the filtered infrared
`image received by the infrared sensor device to provide a
`visible image of the gas leak under variable ambient
`conditions of the area around the leak; and
`
`visually detecting the leak based on the visible
`image under the variable ambient conditions.
`
`
`Ex. 1001 (IPR ’434), 28:40–29:8.
`
`
`
`II. ANALYSIS
`
`A. Claim Construction
`
`The Board interprets claims of an unexpired patent using the broadest
`
`reasonable construction in light of the specification of the patent in which
`
`they appear. See 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC,
`
`793 F.3d 1268, 1278–79 (Fed. Cir. 2015). Claim terms generally are given
`
`their ordinary and customary meaning, as would be understood by one of
`
`ordinary skill in the art in the context of the entire disclosure. See In re
`
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`
`
`
`
`
`
`
`10
`
`
`
`Case IPR2014-00411/434 Patents 8,426,813 B2; 8,193,496 B2
`Case IPR2015-00065 Patent 8,426,813 B2
`
`
`1. “leak”
`
`In the preliminary Decision to Institute, we found that “leak” is broad
`
`enough to include both fugitive and non-fugitive emissions. Dec. ’411, 17.
`
`Thus, on the preliminary record we agreed with FLIR that “leak” should be
`
`defined as any chemical emission including (1) an unwanted (“fugitive”)
`
`chemical emission and (2) a known (“non-fugitive”) chemical emission,
`
`such as a chemical gas emission from an exhaust outlet of an airplane or a
`
`smokestack. Paper 2, 12 (IPR ’411); Paper 2, 10 (IPR ’434); Paper 2, 12–13
`
`(IPR ’065). We found that the ʼ813 patent states that “[a]n embodiment of
`
`the present invention may be used to inspect any of a wide variety of
`
`components having [a] chemical . . . of interest . . . , including (but not
`
`limited to) a pipe, a compressor, . . . a flare, an exhaust outlet, . . . [or] a vent
`
`for a blow-off valve.” Ex. 1001, 12:17–25.
`
`LSI disagrees with our preliminary construction and argues that the
`
`construction of “leak” deviates from the ordinary meaning of the term. PO
`
`Resp. 31–33. LSI relies on extrinsic evidence to supports its contention that
`
`the ordinary meaning of “leak” as recited in the ’813 and ’496 patents is
`
`limited to unintended or fugitive emissions. PO Resp. 33. LSI’s contention
`
`fails to recognize and distinguish the express teaching that chemicals of
`
`interest from flares, exhausts, vents or blow off valves are expressly
`
`described as uses of the claimed invention. Ex. 1001, 12:17–25. Indeed,
`
`one portion of the specification that LSI relies on to distinguish known
`
`versus unknown emissions, indicates that the invention is used to survey
`
`known emissions of gas from vents. Ex. 1001, 20:28–31; see PO Resp. 34.
`
`Although LSI admits that exhaust valves and flares will have known
`
`emissions and that the invention is used to survey these structures (PO Resp.
`
`
`
`
`11
`
`
`
`Case IPR2014-00411/434 Patents 8,426,813 B2; 8,193,496 B2
`Case IPR2015-00065 Patent 8,426,813 B2
`
`
`32), LSI argues that the term “leak” does not include the known emissions
`
`from these structures, as the ordinary use of the term is limited to fugitive or
`
`unknown emissions. We disagree, concluding that a person of ordinary skill
`
`in the art would understand that the specification describes a chemical of
`
`interest that is present in valves and exhausts that have known emissions.
`
`Ex. 1001, 12:22, 20:28–32.15
`
`Under the broadest reasonable interpretation, LSI’s extrinsic evidence
`
`does not persuade us that a person of ordinary skill in the art would
`
`understand that “leak” as used in the specification and claims is limited to
`
`only unknown or fugitive emissions. Accordingly, on the full record, we
`
`maintain our construction of “leak” as including both fugitive and non-
`
`fugitive emissions.
`
`
`
`2. “produce a visible image of the chemical emanating from the component
`under variable ambient conditions of the area around the leak”
`
`In the Decision to Institute, we preliminarily construed “produce a
`
`visible image of the chemical emanating from the component under variable
`
`ambient conditions of the area around the leak” means “being able to
`
`produce a visible image under the ambient conditions of the area around the
`
`
`15 In addition, we note that LSI’s claims using the term “leak” were rejected
`over intended or known emissions from a smokestack. See Ex. 1002, 319,
`416–419. Patent Owner disputed and overcame the Examiner’s rejection on
`different grounds, but did not dispute the Examiner’s application of
`smokestack emissions to gas leaks. See id. Thus, at least during
`prosecution, the term leak was determined by the Examiner to include
`known emissions.
`
`
`
`12
`
`
`
`
`
`Case IPR2014-00411/434 Patents 8,426,813 B2; 8,193,496 B2
`Case IPR2015-00065 Patent 8,426,813 B2
`
`
`leak.” Dec. ’411, 17–18. LSI does not dispute this construction, but instead
`
`argues that
`
`POSITA [i.e., a person having ordinary skill in the art,] would
`understand this claim limitation to require that the claimed
`invention be capable of operating under a full range of normal
`operating conditions, such as different temperatures or sunlight;
`and it would not encompass prior art systems that could image
`gases only within a narrow range of field conditions, such as
`temperature.
`
`PO Resp. 27. Specifically, LSI argues that “in the context of the full claims,
`
`this limitation should be construed to mean that an infringing method must
`
`operate to image gas leaks under real-world field conditions, without taking
`
`steps to artificially control any variables such as background temperature,
`
`wind, etc.” Id. at 25. LSI does not provide any argument or evidence that
`
`the patent describes the range of “real-world” versus “artificially controlled”
`
`conditions. Instead, LSI’s construction merely seeks to eliminate any
`
`conditions obtained in a lab or test setting from ambient conditions in other
`
`settings.
`
`We are not persuaded that the patent claims’ references to variable
`
`ambient conditions are limited to “real-world” conditions. As we previously
`
`noted, a person having ordinary skill in the art would understand that the
`
`claimed system and method would typically be used outdoors, where
`
`environmental conditions change, at the point where a leak may occur. Dec.
`
`’411, 18. For example, in the summer, a chemical of interest may be present
`
`at higher temperature than the same chemical of interest in the winter. Id.
`
`Similarly, exhaust temperature may vary depending on conditions.
`
`
`
`13
`
`
`
`
`
`Case IPR2014-00411/434 Patents 8,426,813 B2; 8,193,496 B2
`Case IPR2015-00065 Patent 8,426,813 B2
`
`
`LSI admits that “the claim does not specify what the normal operating
`
`conditions would be” under given circumstances. Oral Argument Transcript
`
`(“Tr.”) 62:23–24. LSI also admits that a smokestack, for example, would
`
`have “a different range of normal operating conditions.” Tr. 63:6–8.
`
`Because these conditions vary and the ’813 and ’496 patent specifications
`
`are silent on the range or limits of normal operating conditions, we are not
`
`persuaded by LSI’s attempt to exclude controlled environments from the
`
`claimed ambient conditions. See PO Resp. 26–27. We find no support for
`
`LSI’s contention that “variable ambient conditions” or “normal operating in
`
`variable ambient conditions” is limited to those instances that are not
`
`constrained or controlled in some artificial manner. Id.
`
`On the full record, we maintain our constructions of “produce a
`
`visible image of the chemical emanating from the component under variable
`
`ambient conditions of the area around the leak” as meaning “being able to
`
`produce a visible image under the ambient conditions of the area around the
`
`leak.”
`
`
`
`B. Asserted Prior Art
`
`1. Merlin Brochure (Ex. 1007)
`
`The Merlin Brochure discloses a mid-wavelength (MWIR) infrared
`
`camera (“Merlin-MID”) that includes an infrared sensor device (InSb focal
`
`plane array) and a 3-5 μm bandpass cold filter within a refrigeration portion
`
`defined by the interior of a Dewar flask. Ex. 1007, 3, 6; see Ex. 1011, 1.
`
`The Merlin-MID also includes a refrigeration system (a closed-cycle Stirling
`
`cryocooler) that cools the refrigeration portion of the Merlin-MID and the
`
`filter. Ex. 1007, 6.
`
`
`
`
`
`14
`
`
`
`Case IPR2014-00411/434 Patents 8,426,813 B2; 8,193,496 B2
`Case IPR2015-00065 Patent 8,426,813 B2
`
`
`The ’813 patent states that “[a] preferred infrared camera system 22,
`
`for example, for use in an embodiment of the present invention is a Merlin™
`
`mid-wavelength infrared (MWIR) high-performance camera available from
`
`Indigo Systems, Inc. in California.” Ex. 1001, 6:19–23. The Merlin-MID
`
`camera described in the brochure is the Merlin MWIR camera discussed in
`
`the ’813 patent. Ex. 1001, at [56] (citing Merlin Brochure by Indigo
`
`Systems Corp. (2002)), 6:19–23 (citing Merlin mid-wavelength infrared
`
`MWIR camera as the preferred embodiment of camera system 22).
`
`
`
`2. Merlin User’s Guide (Ex. 1011)
`
`The Merlin User’s Guide describes features of the Merlin Brochure
`
`MID InSb camera. The Merlin User’s Guide discloses a passive infrared
`
`camera with a refrigeration portion including an interior. Ex. 1011, 2, 51.
`
`Merlin User’s Guide describes both a cold filter and infrared sensor device
`
`located in the interior of the refrigeration portion. Id. at 51.
`
`The Merlin User’s Guide states:
`
`Merlin Mid is a mid-wavelength infrared (MWIR) high-
`performance camera offered by Indigo systems Corp. The
`camera consists of a Stirling-cooled Indium Antimonide (InSb)
`Focal Plane Array (FPA) built on an Indigo Systems ISC9705
`Readout Integrated Circuit (ROIC) using indium bump
`technology. The FPA is a 320 x 256 matrix or ‘staring’ array of
`detectors that are sensitive in the 1.0 μm to 5.4 μm range. The
`standard camera configuration incorporates a cold filter that
`restricts the camera’s spectral response to the 3.0-5.0 micron
`band. The FPA is enclosed in an all-metal evacuated [D]ewar
`assembly cooled by a closed-cycle Stirling cryocooler, and is
`thermally stabilized at a temperature of 77 K.
`
`
`
`
`15
`
`
`
`
`
`Case IPR2014-00411/434 Patents 8,426,813 B2; 8,193,496 B2
`Case IPR2015-00065 Patent 8,426,813 B2
`
`
`Ex. 1011, 1. “The lens-to-camera interface is shown in Appendix B” (Ex.
`
`1011, 3) reproduced below.
`
`Depicted above is the Merlin InSb camera,
`mechanical and optical interface.
`
`
`
`The filter is located in the general area of the “aperture” and the filter
`
`bandpass is identified as 3.6 to 4.9 or 3.0 to 5.0 depending on the aperture
`
`diameter. Ex. 1101, 51. The IR sensor is located in the general area
`
`identified as FPA (focal point array) sensor. The refrigerated area is the
`
`space between the filter and the IR sensor.
`
`
`
`3. Kulp (Ex. 1012)
`
`Kulp discloses “results of field tests of an active backscatter
`
`absorption gas imaging (BAGI) system and a passive imager on a Ga:Si
`
`infrared focal-plane array.” Ex. 1012, 269 (Abstract). The passive imager
`
`on an infrared focal-plane array “images gases through temperature or
`
`emissivity differences.” Id.
`
`
`
`16
`
`
`
`
`
`Case IPR2014-00411/434 Patents 8,426,813 B2; 8,193,496 B2
`Case IPR2015-00065 Patent 8,426,813 B2
`
`
`Specifically, Kulp discloses a camera equipped with a narrow
`
`bandpass cold filter to detect sulfur hexafluoride (SF6) gas. Ex. 1012, 270.
`
`Figure 2 of Kulp shows that the cold filter has an aggregate passband of
`
`about 570 nm between wavenumber 920 (about 10870 nm) and wavenumber
`
`970 (about 10300 nm). Id. at 270 (Figure 2). In addition, Figure 9 of Kulp
`
`shows that the Ga:Si passive infrared camera provides a visible image of the
`
`SF6 gas at different times of day at different temperatures. Id. at 277.
`
`Figure 9 is depicted below.
`
`
`
`Figure 9 shows passive images collected of gas releases at two
`
`different times of the day. The graph plots the target and air temperature
`
`during the day. Id. Kulp states that “[the passive IR approaches] are
`
`attractive because of its unlimited range and spectral bandwidth, and its
`
`simplicity . . . . Its use must, however, be accompanied by the assumption
`
`
`
`17
`
`
`
`
`
`Case IPR2014-00411/434 Patents 8,426,813 B2; 8,193,496 B2
`Case IPR2015-00065 Patent 8,426,813 B2
`
`
`that the required temperature and/or emissivity differences between the gas
`
`and background will always exist.” Ex. 1012, 277.
`
`
`
`4. Strachan (Ex. 1008)
`
`Strachan discloses a demonstration of “an infrared imaging technique
`
`for the visualization of hydrocarbon gases and vapours.” Ex. 1008, 1
`
`(Abstract). Strachan describes “a qualitative imaging approach to
`
`gas/vapour detection.” Id. at 1 (Section 1). Strachan states:
`
`The technique is based on real-time infrared imaging
`(thermography), which produces images of objects from their
`own infrared heat radiation. By selecting spectral absorption
`windows characteristic of hydrocarbon vapours and gases it is
`possible to visualise such gases against a background thermal
`scene. The approach and its limitations in terms of
`hydrocarbon detection and instrument development
`requirements for ambient temperature operations are discussed.
`
`Id. Figure 3 shows the schematic of a hydrocarbon imaging system
`
`disclosed in Strachan.
`
`“Figure 3 indicates schematically the operation of a hydrocarbon detection
`
`system.” Ex. 1008, 493. Figure 3 shows “a detector is housed in its own
`
`Dewar flask, which contains a small quantity of liquid nitrogen coolant.
`
`
`
`
`
`18
`
`
`
`
`
`Case IPR2014-00411/434 Patents 8,426,813 B2; 8,193,496 B2
`Case IPR2015-00065 Patent 8,426,813 B2
`
`
`Infrared radiation from the source object is imaged by a multi-element lens,
`
`generally silicon or germanium.” Ex. 1008, 493. Strachan states:
`
`The detector signal is then processed electronically to
`produce a real-time infrared television picture or thermogram.
`. . . . The camera views the thermal background scene around
`and through any intervening hydrocarbon cloud. Providing
`background and cloud are not in total thermal equilibrium with
`each other, then it is possible to visualise the gas cloud against
`the background.
`
`Id. Strachan disclosed an infrared imaging system fitted with a specific filter
`
`for detecting hydrocarbon gases, discussing two different example filters,
`
`having bandwidths centered approximately at 3.4 μm, for detecting
`
`hydrocarbon gases. Id. Furthermore, Strachan discloses the use catalogs of
`
`infrared absorption spectra for various hydrocarbon vapors. Id.
`
`
`
`5. Hart (Ex. 1014 (IPR ’434)
`
`Hart is a U.S. patent, issued on May 2, 2000, titled “Frame Assembly
`
`For Supporting A Camera.” Figure 1 of Hart is reproduced below.
`
`
`
`
`
`19
`
`
`
`
`
`Case IPR2014-00411/434 Patents 8,426,813 B2; 8,193,496 B2
`Case IPR2015-00065 Patent 8,426,813 B2
`
`
`Figure 1 of Hart shows a camera supported by a frame assembly that
`
`includes frame 4, 7, shoulder rest 3, and handle 5, 6 extending from the
`
`frame. Ex. 1014 (IPR ’434), 4:41–45, 52–55, 5:24–25. Figure 1 of Hart
`
`also discloses that aiming the camera towards a component is performed by
`
`a person holding the infrared camera system.
`
`
`
`6. Spectrogon (Ex. 1017) and OCLI (Ex. 1014)
`
`Spectrogon shows a catalog of bandpass filters available at the time of
`
`the invention. Ex. 1017. The Optical Coating Laboratory, Inc. (“OCLI”)
`
`products catalog likewise discloses a catalog of optical filters available at the
`
`time of invention. Ex. 1014.
`
`
`
`7. Piety (Ex. 1018)
`
`Piety is a U.S. patent issued in 1995, titled “Infrared Thermography
`
`System Including Mobile Unit,” and discloses a mobile infrared
`
`thermography unit that includes a data processing device operable to record
`
`user notes. Ex. 1018, 14: 18-22. Specifically, Piety discloses:
`
`The mobile infrared thermography unit includes an infrared
`camera, a storage device such as a videotape recorder for at
`least recording thermographic images captured by the infrared
`camera, and a mobile unit computer. The mobile unit computer
`includes a touch screen display for presenting information to a
`thermographer and for receiving data and command inputs from
`the thermographer.
`
`Ex. 1018, Abstract ll. 4–11.
`
`
`
`
`
`
`
`20
`
`
`
`Case IPR2014-00411/434 Patents 8,426,813 B2; 8,193,496 B2
`Case IPR2015-00065 Patent 8,426,813 B2
`
`
`8. Brengman (Ex. 1013 (IPR ’434))
`
`Brengman is a U.S. patent that issued in 1972, titled “Methane Gas
`
`Detection System Using Infrared.” Brengman discloses using an infrared
`
`gas detection system mounted on an airborne platform to detect methane gas
`
`leaks in buried gas pipelines. Ex. 1013 (IPR ’434), 1:70–72, 4:12–15.
`
`Brengman further discloses that the airborne platform may be a helicopter.
`
`Id. at 7:38–40.
`
`
`
`C. Merlin References as Prior Art and Printed Publication
`
`FLIR contends that the Merlin Brochure (Ex. 1007) is a prior art
`
`printed publication. Paper 2, 10 (IPR ’65); Paper 2, 8–9 (IPR ’411). At the
`
`time of filing the Response, LSI contested whether the Merlin Brochure is
`
`publicly available prior art. PO Resp. 70–73. At oral argument, LSI
`
`withdrew its argument that the Merlin Brochure was not publicly available.
`
`Tr. 40:1–9 (stating that LSI no longer contends that the Merlin Brochure was
`
`not publicly available).
`
`With respect to the Merlin User’s Guide (Ex. 1011), FLIR argues that
`
`testimony evidence shows that the guide was distributed with sales of the
`
`Merlin camera. Ex. 1016 ¶ 7 (stating that “[t]he Merlin User’s Guide is a
`
`user guide that describes the Merlin-MID camera sold by Indigo” and
`
`“distributed to customers with the Merlin-MID camera”).
`
`LSI argues that because the Merlin User’s Guide was only delivered
`
`to purchasers of the expensive Merlin MID camera (citing Ex. 2063 at
`
`LSI0000483, LSI0000816, LSI0000853), it was not available such that
`
`ordinarily skilled artisans could locate it by exercising reasonable diligence.
`
`See In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). LSI further
`
`
`
`
`21
`
`
`
`Case IPR2014-00411/434 Patents 8,426,813 B2; 8,193,496 B2
`Case IPR2015-00065 Patent 8,426,813 B2
`
`
`argues that publications that are available only at high costs render the
`
`document effectively inaccessible to members of the general public. PO
`
`Resp. 70 (citing Virginia Innovation Scis., Inc. v. Samsung Elecs. Co., 983
`
`F. Supp. 2d 713, 738 (E.D. Va. 2014)). We note that LSI acknowledges that
`
`a Merlin user’s guide with the same title as the Merlin User’s Guide (Ex.
`
`1011) was previously considered during prosecution. PO Resp. 73. LSI also
`
`acknowledges that FLIR’s witnesses state the Merlin User’s Guide (Ex.
`
`1011) was available to purchasers of the Merlin MID as of the critical date.
`
`PO Resp. 71. Despite this evidence of public availability, LSI argues that
`
`the guide was only available to purchasers of the camera and the expense of
`
`buying the camera means the Merlin User’s Guide (Ex. 1011) is not a
`
`printed publication freely accessible to the public prior to the cri
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
