Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 12
`Entered: February 22, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PACIFIC SURF DESIGNS, INC.,
`Petitioner,
`
`v.
`
`Owner of U.S. Patent 6,491,589.
`____________
`
`Case IPR2016-01674
`Patent 6,491,589 B1
`____________
`
`Before PHILLIP J. KAUFFMAN, WILLIAM V. SAINDON, and
`JASON W. MELVIN, Administrative Patent Judges.
`
`MELVIN, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`571-272-7822
`
`
`Paper No. 12
`Entered: February 22, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PACIFIC SURF DESIGNS, INC.,
`Petitioner,
`
`v.
`
`Owner of U.S. Patent 6,491,589.
`____________
`
`Case IPR2016-01674
`Patent 6,491,589 B1
`____________
`
`Before PHILLIP J. KAUFFMAN, WILLIAM V. SAINDON, and
`JASON W. MELVIN, Administrative Patent Judges.
`
`MELVIN, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`Case IPR2016-01674
`Patent 6,491,589 B1
`
`
`INTRODUCTION
`I.
`Petitioner, Pacific Surf Designs, Inc., filed a Petition (Paper 2, “Pet.”)
`requesting inter partes review of claims 1, 3, 13, 15–17, 24–27, 29–38, 40–
`43, 50, and 54–55 of U.S. Patent No. 6,491,589 B1 (Ex. 1001, “the ’589
`patent”).1 No Preliminary Response was filed. Pursuant to 35 U.S.C. § 314
`and 37 C.F.R. § 42.4(a), we have jurisdiction to determine whether to
`institute review.
`An inter partes review may not be instituted unless “the information
`presented in the petition . . . and any 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). For the
`reasons set forth below, we conclude that the Petition does not show a
`reasonable likelihood that Petitioner would prevail in establishing the
`unpatentability of any challenged claim. We therefore do not institute inter
`partes review.
`
`A. RELATED MATTERS
`Petitioner identifies the following pending judicial matter as relating
`to the ’589 patent: Flowrider Surf, Ltd. v. Pacific Surf Designs, Inc., Case
`No. 15cv1879 (S.D. Cal.). Pet. 1.
`
`B. REAL PARTIES IN INTEREST
`Petitioner identifies no additional real party-in-interest. Pet. 1.
`Although the patent owner of record appears to be Surf Park PTE. LTD.,
`that entity has not filed a paper in this proceeding. Rather, both Surf Waves,
`Ltd., and FlowRider Surf, Ltd. filed mandatory notices, claiming to be the
`
`
`1 See Certificate of Correction at Ex. 1001, 26–27.
`
`2
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`patent owner and “exclusive worldwide licensee,” respectively. Papers 5, 8;
`see Order (Paper 9). Although we noted in our October 31, 2016, Order that
`“the true patent owner must file the required papers to represent its interest
`in in this proceeding” (Paper 9), no such paper was filed. Patent Owners are
`not, however, required to file a Preliminary Response (see 37 C.F.R.
`§ 42.107(a)), so we proceed to consider the merits of the Petition.
`
`C. THE ’589 PATENT
`The ’589 patent is titled “Mobile Water Ride Having Sluice Slide-
`Over Cover,” was filed Aug 2, 2000, issued December 10, 2002, and claims
`priority to a provisional application filed August 2, 1999. Ex. 1001, [54],
`[22], [45], 1:6–8. The ’589 patent describes two improvements in water
`rides: nozzles having “slide-over covers for ensuring the safety of riders”
`(id. at [57], 2:10–22); and a transportable design (id. at [57], 2:5–9).
`The ’589 patent describes that water is introduced to a ride through
`nozzles, and that the ride surface sloping up away from the nozzles causes
`riders to move towards the nozzles, thus requiring a horizontal transition
`surface “to provide an energy-absorbing buffer between the upward sloped
`ride surface and the lower end of the ride surface.” Id. at 1:22–48. To
`eliminate or minimize that transition surface, the ’589 patent teaches a
`“slide-over cover” that “enables riders to safely slide over the nozzle without
`risk of injury or interference with ride operation.” Id. at 8:40–47 (reference
`number omitted); see id. 8:39–12:26. Figure 3A is reproduced below:
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`Figure 3A depicts a preferred embodiment of an “injection nozzle assembly”
`in which water from a pump 144 moves through nozzle 130 to the ride
`surface 120; the nozzle has a slide-over cover 150, which itself includes a
`tongue 160 that contacts the water exiting the nozzle. Id. at 10:19–50.
`Biasing or urging the tongue portion down towards the water exiting the
`nozzle “reduces or minimizes the possibility of a rider catching a finger
`underneath the pad 150 (or tongue 160) and sluice gate [i.e., nozzle] 130.”
`Id. at 10:38–50.
`The ’589 patent also describes an aspect of water rides such that the
`rides may be transported more easily. Id. at 12:27–16:40. To that end, the
`’589 patent discloses using a set of transportable modules that “can be
`quickly assembled on-site without the need for a time-consuming long,
`drawn out construction process.” Id. at 12:44–50. Figure 4A is reproduced
`below:
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`Figure 4A depicts a water ride attraction 100 formed from “a plurality of
`shippable modules, units or containers 211, 212, 213, 214, 215, 216, 217,
`and 218.” Id. at 12:62–65. Four of the modules depicted in Figure 4A
`contain a circulation pump “in fluid communication with a respective flow
`forming nozzle 130.” Id. at 13:25–28. Various portions of the ride surface
`are associated with certain modules such that the connected modules form an
`overall ride surface. See id. at Fig. 4A, 13:39–14:9.
`
`D. CHALLENGED CLAIMS
`Petitioner challenges 1, 3, 13, 15–17, 24–27, 29–38, 40–43, 50, and
`54–55 of the ’589 patent. Pet. 1. Claims 1, 17, 24, 31, 37, 38, 42, and 50 are
`independent. Ex. 1001, 16:53–20:31. Claims 1 and 31 (reproduced below)
`are illustrative:
`1. A nozzle assembly for a water ride attraction, comprising:
`a nozzle having an outlet aperture adapted to emit a jet of
`water onto a ride surface; and
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`a nozzle cover comprising a padded material substantially
`covering said nozzle and including a flexible tongue
`which is biased downward against the flow of the water
`to prevent injury to riders riding over said nozzle.
`Id. at 16:53–60.
`31. A mobile water ride attraction, comprising:
`a plurality of nozzle assemblies with each nozzle assembly
`comprising:
`a nozzle having an aperture and being adapted to inject a
`jet of water;
`a nozzle cover comprising a flexible padded material to
`protect riders from possible injurious contact with
`said nozzle; and
`a plurality of transportable modules and associated
`components which when assembled form a ride surface
`which is contoured to form a predetermined or
`preselected wave structure and/or flow pattern.
`Id. at 18:3–14.
`
`E. ASSERTED PRIOR ART AND PROPOSED GROUNDS OF UNPATENTABILITY
`Petitioner relies on the following references:
`
`Reference
`Exhibit
`1003 U.S. Pat. No. 3,598,402, iss. Aug. 10, 1971 (“Frenzl”)
`1004 U.S. Pat. No. 5,213,547, iss. May 25, 1993 (“Lochtefeld 547”)
`1005 U.S. Pat. No. 5,738,590, iss. Apr. 14, 1998 (“Lochtefeld 590”)
`1006 U.S. Pat. No. 6,019,547, iss. Feb. 1, 2000 (“Hill”)
`
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`Petitioner asserts the following grounds of unpatentability under
`35 U.S.C. § 103(a):2
`
`Reference(s)
`
`Frenzl
`
`Frenzl and Lochtefeld 547
`Frenzl, Lochtefeld 547, and
`Lochtefeld 590
`
`Hill
`
`Hill and Lochtefeld 547
`Hill, Lochtefeld 547, and
`Lochtefeld 590
`
`Challenged Claims
`1, 3, 13, 16, 17, 24–27, 29, 37, 38, 40,
`42, 43
`16, 31–36, 50, 54, 55
`1, 3, 13, 16, 17, 24–27, 29, 31–38, 40,
`42, 43, 50, 54, 55
`1, 3, 13, 15–17, 24–27, 29, 30, 37, 38,
`40–43
`16, 31, 32, 34–36, 50, 54, 55
`1, 3, 13, 15–17, 24–27, 29–32, 34–38,
`40–43, 50, 54, 55
`
`F. LEGAL PRINCIPLES
`An invention is not patentable “if the differences between the subject
`matter sought to be patented and the prior art are such that the subject matter
`as a whole would have been obvious at the time the invention was made to a
`person having ordinary skill in the art to which said subject matter pertains.”
`35 U.S.C. § 103(a). The question of obviousness is resolved on the basis of
`underlying factual determinations including: (1) the scope and content of
`the prior art; (2) any differences between the claimed subject matter and the
`prior art; (3) the level of skill in the art; and, (4) where in evidence, so-called
`secondary considerations, including commercial success, long-felt but
`
`
`2 The Leahy-Smith America Invents Act (“AIA”) included revisions to
`35 U.S.C. § 100 et seq. effective on March 16, 2013. Because the ’016
`Patent issued from an application filed before March 16, 2013, we apply
`the pre-AIA versions of the statutory bases for unpatentability.
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`unsolved needs, and failure of others. Graham v. John Deere Co., 383 U.S.
`1, 17−18 (1966). When evaluating a combination of teachings, we must also
`“determine whether there was an apparent reason to combine the known
`elements in the fashion claimed by the patent at issue.” KSR Int’l Co. v.
`Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441, F.3d 977,
`988 (Fed. Cir. 2006)). Whether a combination of elements produces a
`predictable result weighs in the ultimate determination of obviousness. KSR,
`550 U.S. at 416–17. We analyze Petitioner’s proposed grounds, which are
`based on obviousness, in accordance with the above-stated principles.
`
`II. DISCUSSION
`
`A. CLAIM CONSTRUCTION
`Before the Board, claims in an unexpired patent are interpreted
`according to their broadest-reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Under
`that standard, we generally give a claim term its “ordinary and customary
`meaning,” which is “the meaning that the term would have to a person of
`ordinary skill in the art in question” at the time of the invention. In re
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). The
`specification may impose a specialized meaning, departing from the
`ordinary and customary meaning, by defining a term with reasonable clarity,
`deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
`1994). Further, a party may prove “the existence of a ‘clear and
`unmistakable’ disclaimer” that narrowed a term’s definition in the
`prosecution history of a challenged patent. TriVascular, Inc. v. Samuels,
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`812 F.3d 1056, 1063–64 (Fed. Cir. 2016) (quoting Elbex Video, Ltd. v.
`Sensormatic Elecs. Corp., 508 F.3d 1366, 1371 (Fed. Cir. 2007)).
`Petitioner proposes constructions for the following terms:
`
`Term(s)
`
`“nozzle” / “sluice” / “sluice gate”
`“biased downward” / “urged downward” /
`“biasing . . . downwards”
`“tongue”
`“removable connected” / “removably affix[ed]”
`“a plurality of transportable modules and associated
`components” / “transportable [propulsion/ride surface]
`modules”
`
`“contoured”
`
`“to prevent injury to riders riding over said nozzle” /
`“to prevent riders from possibly colliding with or riding
`over said sluice and/or interfering with the ride operation” /
`“to protect riders from possible injurious contact with said
`nozzle” /
`“to seal off said sluice gate outlet from possible injurious
`contact with a rider”/
`“to shield the outlet aperture from contact with riders
`riding over said nozzle”
`
`
`Appearing in
`claims
`17, 24, 37
`
`1, 17, 37, 38, 42
`
`1, 26, 37, 38
`3, 17, 42
`
`31–33, 50–53
`
`16, 17, 24, 31,
`36, 42
`
`1, 24, 31, 37, 38
`
`We address two of those terms below, along with one additional term
`that impacts our analysis. Having considered the evidence presented, for all
`other terms we conclude that no express claim construction is necessary for
`our determination of whether to institute review of the challenged claims.
`See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
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`1999) (“[O]nly those terms need be construed that are in controversy, and
`only to the extent necessary to resolve the controversy.”).
`
`1. “nozzle” / “sluice” / “sluice gate”
`All claims of the ’589 patent recite “nozzle,” “sluice,” or “sluice
`gate.” See Ex. 1001, 16:53–20:31. Petitioner asserts that “nozzle,” “sluice,”
`or “sluice gate” means “component for injecting water.” Pet. 17–18 (relying
`on assertions made in the related district-court litigation, citing Ex. 1011,
`11). We conclude that Petitioner’s construction is consistent with the
`specification and adopt it for purposes of this decision. See Ex. 1001, 1:39–
`41.
`
`2. “biased downward” / “urged downward” / “biasing . . . downwards”
`Independent claims 1, 17, 37, 38, and 42 recite that the claimed
`flexible tongue is: “biased downward against the flow of the water”
`(claim 1), “urged downward against the flow of water” (claims 17 and 42),
`“biased downward toward the jet of water” (claim 38), or the step of
`“biasing said tongue downwards to squeeze said tongue against the flow of
`water.” Id. at 16:53–60, 17:29–37, 18:26–38, 18:39–47, 18:55–64.
`Petitioner asserts that “biased downward” and “urged downward” should be
`construed as “to cause to be oriented downward by any force, such as
`gravity.” Pet. 18 (relying on assertions made in the related district-court
`litigation, citing Ex. 1012, 4). We conclude that Petitioner’s construction is
`consistent with the specification and adopt it for purposes of this decision.
`See Ex. 1001, 10:38–50.
`
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`3. “inject”
`Independent claims 24 and 31 recite “a sluice sized and configured to
`inject a flow of water onto said ride surface” and “a nozzle having an
`aperture and being adapted to inject a jet of water,” respectively. Id. at
`17:50–57, 18:3–14. For purposes of this decision, we adopt a plain and
`ordinary meaning of “inject” as “introduce.” See Inject, Merriam-
`Webster.com, https://www.merriam-webster.com/dictionary/inject, (last
`visited February 14, 2017); Ex. 3001.
`
`B. OBVIOUSNESS BASED ON FRENZL
`Petitioner presents three grounds based on Frenzl: obviousness over
`Frenzl alone (Pet. 22–35); obviousness over Frenzl combined with
`Lochtefeld 547 (id. at 36–43); and obviousness over Frenzl combined with
`Lochtefeld 547 and Lochtefeld 590 (id. at 43–45). Among the grounds
`based on Frenzl, Petitioner challenges claims 1, 3, 13, 16, 17, 24–27, 29, 31–
`38, 40, 42, 43, 50, 54, and 55.
`Having reviewed Petitioner’s contentions and supporting evidence, we
`are not persuaded Petitioner has demonstrated a reasonable likelihood of
`prevailing on grounds based on Frenzl. Each claim of the ’589 patent recites
`a nozzle cover in one form or another, e.g., “nozzle cover” (claims 1, 31, 38,
`and 42), “cover for a water ride sluice gate” (claim 17), “cover which covers
`and extends over the top surface of said sluice” (claim 24), “covering said
`sluice gate with a padded material” (claim 37), “padded cover [that] extends
`over at least one of the nozzles” (claim 50). Petitioner asserts that Frenzl
`“discloses a nozzle cover (shaded in red by Petitioner)” and provides an
`annotated portion of Frenzl’s Figure 7, which is reproduced below:
`
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`The annotated portion of Figure 7 depicts what Frenzl describes as a
`“discharge nozzle 2” and “pivoting flap 25” along with the surrounding
`structures, where Petitioner has shaded the pivoting flap blue and shaded a
`portion of the surrounding structure red. Pet. 24; Ex. 1003, 4:74–5:20. We
`do not agree that the portion shaded red by Petitioner reasonably discloses a
`“cover” to Frenzl’s nozzle. At best, it depicts part of the structure
`comprising the nozzle. Stated otherwise, the portion Petitioner relies on as
`disclosing a nozzle cannot be both a nozzle and a cover for that same nozzle,
`and Petitioner fails to explain how various parts of the structure fulfill each
`requirement.
`Because each challenged claim recites a nozzle cover but Petitioner
`has not adequately identified disclosure of the claimed structure in Frenzl,
`we conclude that the Petition does not show a reasonable likelihood that
`Petitioner would prevail for any claim challenged based on Frenzl alone or
`in combination with Lochtefeld 547. Petitioner does not assert that
`Lochtefeld 547 teaches the claimed nozzle cover. See Pet. 36–45. We
`address Petitioner’s contentions regarding Lochtefeld 590 (see id. at 44–45)
`below. In light of the foregoing, we do not institute review based on Frenzl
`alone or in combination with Lochtefeld 547.
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`C. OBVIOUSNESS BASED ON HILL
`Petitioner presents three grounds based on Hill: obviousness over Hill
`alone (id. at 45–57); obviousness over Hill combined with Lochtefeld 547
`(id. at 58–64); and obviousness over Hill combined with Lochtefeld 547 and
`Lochtefeld 590 (id. at 64–66). Among the grounds based on Hill, Petitioner
`challenges claims 1, 3, 13, 15, 16, 17, 24–27, 29–32, 34–38, 40–43, 50, 54,
`and 55.
`Petitioner asserts that Hill discloses two different nozzles: one shown
`in Figure 3 and the other shown in Figure 8c. Id. at 46–47. We separately
`address Petitioner’s arguments regarding these two embodiments.
`
`1. The Figure 3 “nozzle” does not include
`both a nozzle and a nozzle cover
`Hill’s Figure 3 is reproduced below:
`
`
`Figure 3 depicts a “variable penstock 44 . . . installed upon the uppermost
`rim 46 of the water tower 30” including a flap 48 “hingeably connected to an
`upper support 50 such as a steel tube or the like.” Ex. 1006, 6:22–31.
`Petitioner asserts that “in FIG. 3, a flow of water is emitted from a tower
`onto a flume to the ride surface.” Pet. 46 (citing Ex. 1006, 6:22-31). Thus,
`according to Petitioner, Hill’s Figure 3 discloses: a nozzle in “the opening
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`created by flap (48)”; a nozzle cover in “upper support 50”; and a flexible
`tongue in “flap 48.” Id. at 46, 47.
`As discussed above, we adopt Petitioner’s proposed construction of
`“nozzle” for purposes of this decision, requiring “a component for injecting
`water.” See supra at 10, section A.1. We conclude that Petitioner fails to
`show Hill’s Figure 3 discloses the claimed elements because an opening is
`not a component; stated otherwise, the claimed “component for injecting
`water” requires a physical component, not just an opening left by the
`absence of other components. The specification supports this reading, by
`distinguishing between “an outlet aperture” and the “nozzle.” Ex. 1001
`2:24–25 (“The nozzle assembly comprises a nozzle having an outlet aperture
`adapted to emit a jet of water onto a ride surface.”). In Petitioner’s mapping,
`“upper support 50” creates the aperture, but Petitioner relies on the upper
`support as the claimed cover. The upper support, as claimed, cannot be both
`a nozzle and a cover for that nozzle, and Petitioner fails to explain how
`different parts of the upper support would function as the multitude of
`claimed elements.
`Accordingly, we conclude that Petitioner has not shown it is
`reasonably likely to succeed with any challenge asserting that Hill’s Figure 3
`discloses a both a nozzle and a nozzle cover (all independent claims). We
`therefore do not institute review on any ground relying on Hill’s Figure 3.
`
`2. The Figure 8c “nozzle”
`Petitioner also asserts that Hill’s Figure 8c discloses a nozzle. Pet.
`46–47. Hill’s Figure 8c is reproduced below:
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`Figure 8c depicts “one or more aerofoils 154” as one component to create a
`“simulated natural standing wave 145.” Ex. 1006, 16:33–36. It also depicts
`that “an adjustable rudder 155 may be provided under the aerofoil 154 to
`further shape the flow of water.” Id. at 17:48–50.
`a. The Figure 8c “nozzle” does not inject water
`As discussed above, claims 24 and 31 require that the nozzle or sluice
`be adapted to “inject” water, which we construe to require the nozzle
`introduce water to the ride. See supra at 11, section A.3. We conclude that
`Petitioner fails to show that Hill discloses the “inject” limitations of claims
`24 and 31. For both claims, Petitioner relies on its contentions regarding
`Hill’s teachings provided for claim 1. Pet. 53, 60. But Petitioner asserts
`only that some of the water already on the ride surface passes under Hill’s
`aerofoil. Id. at 47. The “inject” limitations require that water be introduced
`to the ride through the nozzle, not merely that some water already on the ride
`surface pass through the nozzle. See supra at 11, section A.3. Because
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`Petitioner has not shown that that water is introduced to the ride from under
`Hill’s aerofoil, we find that Hill does not teach the “inject” limitations.
`Accordingly, we conclude that Petitioner is not likely to succeed with
`its challenges to claims 24 or 31 based on Hill’s Figure 8c. We therefore do
`not institute review of those claims on any ground relying on Hill’s
`Figure 8c.
`b. The Figure 8c “nozzle” does not disclose a nozzle cover
`tongue that is “biased/urged downward”
`Independent claims 1, 17, 37, 38, and 42 require the nozzle cover
`include a tongue that is “biased downward” (claim 1, 37, 38, 42) or “urged
`downward” (claim 17). Petitioner asserts that the nozzle disclosed in Hill’s
`Figure 8c includes such a tongue because the “aerofoil (154) comprises both
`a cover and a flexible tongue at its downstream end extending over the water
`flow from the nozzle.” Pet. 48. Petitioner identifies the trailing edge of
`Hill’s aerofoil as the claimed tongue and asserts that “Hill’s cover and
`tongue configuration are biased downward because it is brought downward
`by a gravitational force according to Patent Owner’s interpretation.” Id. at
`48–49. We accept Petitioner’s proposed construction that gravity may act as
`a biasing force. See id. at 18; supra at 10, section A.2. But without
`evidence that gravity causes movement in the trailing edge of the aerofoil, or
`even movement of the aerofoil as a whole, such that the tongue is “oriented
`downward” (see supra at 10, section A.2), Petitioner has not shown that
`gravity causes a bias in the aerofoil. Indeed, gravity acts on all objects, so
`the mere presence of gravity cannot show that this limitation is met.
`Petitioner asserts that Hill’s cover and tongue are biased downward
`also because they are “attached to ‘adjustable rudder 155’ to raise and lower
`the aerofoil (154).” Id. at 48–49 (citing Ex. 1006, 17:48–52; Ex. 1002
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`¶ 112). We do not agree with this additional assertion because Hill states
`that the rudder is provided “to further shape the flow of water” (Ex. 1006,
`17:48–52) and depicts the rudder as a flow-altering surface separate from the
`aerofoil (id. at Fig. 8c), not that it may “raise and lower the aerofoil” as
`Petitioner asserts. If anything, it appears from the Hill’s Figure 8c that the
`rudder directs water laterally relative to the flow field. Thus, we do not
`agree with Petitioner that the rudder biases or urges the aerofoil downwards.
`Because we do not agree that Petitioner has identified a tongue that is
`“biased downward,” we conclude that Petitioner has not shown a reasonable
`likelihood of succeeding with its challenges to claims 1, 17, 37, 38, or 42
`based on Hill’s Figure 8c. We therefore do not institute review of those
`claims on any ground relying on Hill’s Figure 8c.
`
`D. OBVIOUSNESS INCLUDING LOCHTEFELD 547
`Petitioner presents four grounds that include Lochtefeld 547:
`obviousness over Frenzl combined with Lochtefeld 547 (Pet. 36–43);
`obviousness over Frenzl combined with Lochtefeld 547 and Lochtefeld 590
`(id. at 43–45); obviousness over Hill combined with Lochtefeld 547 (id.
`at 58–64); and obviousness over Hill combined with Lochtefeld 547 and
`Lochtefeld 590 (id. at 64–66). Among the grounds based on Hill, Petitioner
`challenges claims 1, 3, 13, 15, 16, 17, 24–27, 29–32, 34–38, 40–43, 50, 54,
`and 55. Because Petitioner does not rely on Lochtefeld 547 in a way that
`could remedy the defects we discuss above with Petitioner’s contentions
`regarding claims 1, 3, 13, 15, 16, 17, 24–27, 29, 30, 37, 38, and 40–43, we
`do not separately address those claims here. Rather, we address Petitioner’s
`contentions for independent claims 31 and 50 (and thus for the claims that
`depend from those independent claims).
`
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`Case IPR2016-01674
`Patent 6,491,589 B1
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`
`Claim 31 requires “a plurality of nozzle assemblies with each nozzle
`assembly comprising: a nozzle . . . [and] a nozzle cover.” Ex. 1001, 18:3–
`14. It further requires “a plurality of transportable modules and associated
`components which when assembled form a ride surface which is contoured
`to form a predetermined or preselected wave structure and/or flow pattern.”
`Id. Claim 50 requires “a plurality of transportable propulsion modules”
`where each includes “a circulation pump” and “a flow forming nozzle,” and
`where the modules “are configured to be connected to one another to form a
`water propulsion system.” Id. at 19:14–33. It further requires “a plurality of
`transportable ride surface modules . . . configured to be connected to one
`another to form a ride surface.” Id.
`Petitioner asserts that a variety of teachings in the prior art disclosed
`the limitations of claims 31 and 50. For example, Petitioner asserts that
`Lochtefeld discloses a plurality of nozzle assemblies, that Hill and
`Lochtefeld 547 each discloses the claimed nozzle, and that Hill discloses or
`renders obvious the nozzle cover. Pet. 59–60, 61–63. Petitioner further
`asserts that Hill in view of Lochtefeld 547 discloses the claimed “plurality of
`transportable modules” that “form a ride surface.” Id. at 60, 62–63.
`Petitioner argues that “a person of ordinary skill would have been
`motivated to implement the ‘modular’ approach taught by Lochtefeld 547 to
`Hill to facilitate” Hill’s transportability. Id. at 58. Petitioner asserts that
`using Lochtefeld 547’s transportable modules would “improve
`transportability” of Hill’s ride in the way those modules operated in
`Lochtefeld 547. Id. But Petitioner has relied on Hill and Lochtefeld 547 in
`a more particular manner, drawing elements from each as explained above.
`As described above, Petitioner does not rely on Lochtefeld 547 simply for its
`
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`teaching of a “modular approach.” Thus, without providing some rationale
`why a person of skill would have looked to each of the teachings from
`Lochtefeld 547 and Hill, Petitioner has failed to articulate the proposed
`ground of unpatentability with sufficient particularity. See 35 U.S.C.
`§ 312(a)(3), 37 C.F.R. § 42.104(b). We conclude that the Petition does not
`show a reasonable likelihood that Petitioner would prevail for any claim
`challenged in a ground including Lochtefeld 547. We therefore do not
`institute review of those claims on any ground relying on Lochtefeld 547.
`
`E. OBVIOUSNESS INCLUDING LOCHTEFELD 590
`Petitioner presents two grounds that include Lochtefeld 590:
`obviousness over Frenzl combined with Lochtefeld 590 (Pet. 43–45), and
`obviousness over Hill combined with Lochtefeld 590 (id. at 64–66).
`Petitioner argues that “Lochtefeld 590 discloses ‘a unique nozzle outlet area
`which is at or slightly below the elevation of the water surface in the pool, so
`that riders may skim over the nozzle area and onto the riding surface directly
`from the pool area.’” Id. at 44–45 (emphasis omitted) (quoting Ex. 1005,
`[57]). Petitioner also argues that Lochtefeld 590’s “FIG. 8 shows ‘angled
`nozzle 82 outlet’ that contains a cover and aperture through which it injects a
`flow of water.” Id. at 45 (quoting Ex. 1005, 13:37–38). According to
`Petitioner, a person of skill “would be motivated to apply Lochtefeld 590’s
`nozzle assembly (with nozzle cover and aperture) to Frenzl’s nozzle
`assembly.” Id. at 43–44; accord id. at 44 (“A person of skill would therefore
`be motivated to further improve safety by additionally incorporating
`Lochtefeld 590’s nozzle assembly”), 65 (same, applied to Hill and
`Lochtefeld 590).
`
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`We do not agree with Petitioner’s assertions regarding
`Lochtefeld 590. Lochtefeld 590 discloses that the nozzle is “at or slightly
`below the elevation of the water surface” and thus does not protrude from
`the water. Ex. 1005, [57]; accord id. at 10:15–17 (“As can be seen in FIG.
`2a, the nozzle outlet area 30 is substantially level or beneath the water level
`of the pool area 21. This allows riders to skim over the nozzle and to be
`propelled up the incline from the pool area.”). Although Petitioner cites
`Lochtefeld 590’s Figure 8 as showing “‘angled nozzle 82 outlet’ that
`contains a cover” (Pet. 45, 66), we do not agree that the figure supports such
`a finding. Petitioner has identified no disclosure in Lochtefeld 590 that
`teaches the claimed nozzle cover. Accordingly, we conclude that the
`Petition does not show a reasonable likelihood that Petitioner would prevail
`for any claim challenged in a ground including Lochtefeld 590. We
`therefore do not institute review on any ground relying on Lochtefeld 590.
`
`III. CONCLUSION
`For the foregoing reasons, we determine that the information
`presented in the Petition does not establish a reasonable likelihood that
`Petitioner would prevail in showing claims 1, 3, 13, 15–17, 24–27, 29–38,
`40–43, 50, or 54–55 unpatentable.
`
`IV. ORDER
`
`Accordingly, it is:
`ORDERED that the Petition for inter partes review of the ’589 patent
`is denied.
`
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`
`PETITIONER:
`
`Charanjit Brahma
`TROUTMAN SANDERS LLP
`charanjit.brahma@troutmansanders.com
`
`PATENT OWNER:
`
`Barry Schindler
`Lennie Bersh
`Erik Squier Squier
`GREENBERG TRAURIG, LLP
`schindlerb@gtlaw.com
`bershl@gtlaw.com
`squiere@gtlaw.com
`
`
`
`
`
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