Attorney Docket: PSD589
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`PACIFIC SURF DESIGNS, INC.
`Petitioner
`v.
`
`LIGHT WAVE, LTD.
`Patent Owner
`____________
`
`Case IPR2016-_____
`
`Patent No. 6,491,589
`__________________
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 6,491,589
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`

`
`TABLE OF CONTENTS
`
`I.
`
`Page
`MANDATORY NOTICES, STANDING, AND FEES.................................1
`A.
`Real Party-In-Interest: 37 C.F.R. § 42.8(b)(1).....................................1
`B.
`Related Matters: 37 C.F.R. § 42.8(b)(2) ..............................................1
`C.
`Petitioner’s Lead And Back-up Counsel And Service
`Information: 37 C.F.R. § 42.8(b)(3) & (4)...........................................2
`Grounds For Standing: 37 C.F.R. § 42.104(a).....................................2
`D.
`Payment Of Fees: 37 C.F.R. § 42.103..................................................3
`E.
`IDENTIFICATION OF CHALLENGE .........................................................3
`II.
`III. OVERVIEW OF THE ‘589 PATENT ...........................................................5
`A.
`Invention Of The ‘589 Patent...............................................................5
`B.
`Prosecution Of The ‘589 Patent ...........................................................7
`SUMMARY OF THE PRIOR ART...............................................................9
`A.
`U.S. Patent No. 3,598,402 To Frenzl (Frenzl) .....................................9
`B.
`U.S. Patent No. 6,019,547 to Hill (Hill).............................................10
`C.
`U.S. Patent No. 5,213,547 to Lochtefeld (Lochtefeld 547) ...............12
`D.
`U.S. Patent No. 5,738,590 to Lochtefeld (Lochtefeld 590) ...............14
`E.
`Petitioner Presents Prior Art That Was Not Previously Applied
`Against The Challenged Claims.........................................................16
`CLAIM CONSTRUCTION: 37 C.F.R. § 42.104(b)(3) ...............................16
`A.
`Applicable Law ..................................................................................16
`B.
`Person Of Skill In The Art .................................................................16
`C.
`Proposed Construction Of Claim Terms ............................................17
`1.
`“nozzle”/“sluice”/“sluice gate” (Claims 17, 24, 37)................17
`2.
`“biased downward”/“urged downward”/“biasing . . .
`downwards” (Claims 1, 17, 37, 38, 42) ...................................18
`“tongue” (Claims 1, 26, 37-38)................................................19
`“removably connected”/“removably affix[ed]” (Claims 3,
`17, 42) ......................................................................................19
`
`3.
`4.
`
`IV.
`
`V.
`
`i
`
`

`
`TABLE OF CONTENTS
`(continued)
`
`Page
`
`“a plurality of transportable modules and associated
`components”/“transportable [propulsion/ride surface]
`modules” (Claims 31-33, 50-53) .............................................20
`“contoured” (Claims 16-17, 24, 31, 36, 42).............................20
`“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”
`(Claims 1, 24, 31, 37-38) .........................................................21
`VI. DETAILED EXPLANATION OF PROPOSED GROUNDS.....................22
`A.
`Ground 1: Claims 1, 3, 13, 16-17, 24-27, 29, 37-38, 40, And
`42-43 Are Rendered Obvious By Frenzl............................................22
`Ground 2: Claims 16, 31-36, 50, And 54-55 Are Rendered
`Obvious By Frenzl In View Of Lochtefeld 547.................................36
`1.
`A Person Of Ordinary Skill Would Be Motivated To
`Combine Frenzl And Lochtefeld 547 ......................................36
`Claims 16, 31-36, 50, And 54-55 Are Invalid Over Frenzl
`In View Of Lochtefeld 547......................................................37
`Ground 3: Claims 1, 3, 13, 16-17, 24-27, 29, 31-38, 40, 42-43,
`50, And 54-55 Are Rendered Obvious By Frenzl In View Of
`Lochtefeld 547 And Further In View Of Lochtefeld 590 ..................43
`1.
`A Person Of Ordinary Skill Would Be Motivated To
`Combine Frenzl, Lochtefeld 547 And Lochtefeld 590............43
`Claims 1, 3, 13, 16-17, 24-27, 29, 31-38, 40, 42-43, 50,
`And 54-55 Are Invalid Over Frenzl In View Of Lochtfeld
`547 And Lochtefeld 590 ..........................................................44
`Ground 4: Claims 1, 3, 13, 15-17, 24-27, 29-30, 37-38, And 40-
`43 Are Rendered Obvious By Hill.....................................................45
`Ground 5: Claims 16, 31-32, 34-36, 50, And 54-55 Are
`Rendered Obvious By Hill In View Of Lochtefeld 547 ....................58
`
`B.
`
`C.
`
`D.
`
`E.
`
`5.
`
`6.
`7.
`
`2.
`
`2.
`
`ii
`
`

`
`TABLE OF CONTENTS
`(continued)
`
`Page
`
`1.
`
`2.
`
`A Person Of Ordinary Skill Would Be Motivated To
`Combine Hill And Lochtefeld 547 ..........................................58
`Claims 16, 31-32, 34-36, 50, And 54-55 Are Invalid Over
`Hill In View Of Lochtefeld 547...............................................58
`Ground 6: Claims 1, 13, 13, 15-17, 24-27, 29-32, 34-38, 40-43,
`50, And 54-55 Are Rendered Obvious By Hill In View of
`Lochtefeld 547 And Further In View Of Lochtefeld 590 ..................64
`1.
`A Person Of Ordinary Skill Would Be Motivated To
`Combine Hill, Lochtefeld 547 And Lochtefeld 590................64
`Claims 1, 13, 13, 15-17, 24-27, 29-32, 34-38, 40-43, 50,
`And 54-55 Are Invalid Over Hill In View Of Lochtefeld
`547 And Further In View Of Lochtefeld 590 ..........................65
`VII. CONCLUSION.............................................................................................66
`
`F.
`
`2.
`
`iii
`
`

`
`TABLE OF EXHIBITS1
`
`Exhibit No. Exhibit
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`U.S. Patent No. 6,491,589 to Lochtefeld (‘589 Patent)
`
`Declaration of Edward M. Pribonic with Curriculum Vitae
`
`U.S. Patent No. 3,598,402 to Frenzl (Frenzl)
`
`U.S. Patent No. 5,213,547 to Lochtefeld (Lochtefeld 547)
`
`U.S. Patent No. 5,738,590 to Lochtefeld (Lochtefeld 590)
`
`U.S. Patent No. 6,019,547 to Hill (Hill)
`
`Prosecution History of U.S. Patent No. 6,491,589
`
`Complaint, D.I. 1 in Case No. 15cv1879 (S.D. Cal. Aug. 24, 2015)
`
`Flowrider Surf, Ltd.’s Notice of Dismissal, D.I. 8 in Case No.
`14cv1110 (S.D. Cal. June 30, 2014)
`
`Proof of Service of Summons, D.I. 6 in Case No. 15cv1879 (S.D.
`Cal. Sept. 2, 2015)
`
`Plaintiffs’ Opening Claim Construction Brief, D.I. 39 in Case No.
`15cv1879 (S.D. Cal. May 23, 2016)
`
`to Defendant’s Opening Claim
`Plaintiffs’ Responsive Brief
`Construction Brief, D.I. 43 in Case No. 15cv1879 (S.D. Cal. June 6,
`2016)
`
`1 For the Board’s convenience, this Table of Exhibits includes all references cited
`
`in this Petition and in the Declaration. Accordingly, the Table of Exhibits in the
`
`Petition and Declaration are identical.
`
`iv
`
`

`
`Pursuant to 35 U.S.C. § 311 and 37 C.F.R. § 42.100, Petitioner Pacific Surf
`
`Designs, Inc. (“PSD” or “Petitioner”) petitions for inter partes review (“IPR”) 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 (Ex. 1001), currently owned by Light Wave, Ltd. (“Light Wave” or
`
`“Patent Owner”).
`
`I.
`
`MANDATORY NOTICES, STANDING, AND FEES
`
`A.
`
`Real Party-In-Interest: 37 C.F.R. § 42.8(b)(1)
`
`Petitioner PSD is the real party-in-interest.
`
`B.
`
`Related Matters: 37 C.F.R. § 42.8(b)(2)
`
`Flowrider Surf, Ltd. (“Flowrider”) is asserting the ‘589 Patent against
`
`Petitioner PSD in Flowrider Surf, Ltd. v. Pacific Surf Designs, Inc., Case No.
`
`15cv1879, currently pending in the Southern District of California.2 Patent Owner
`
`also previously asserted the ‘589 Patent against Petitioner in another action –
`
`Flowrider Surf, Ltd. v. Pacific Surf Designs, Inc., Case No. 14cv1110, also in the
`
`Southern District of California. Patent Owner dismissed that prior case without
`
`2 Flowrider is the exclusive licensee of the ‘589 Patent. Ex. 1008, ¶ 11. Although
`
`the PTO’s records show that Light Wave is the current owner, Flowrider alleged in
`
`the district court litigation that it “acquired a license to all rights in the ’589 Patent
`
`from Surf Park PTE, LTD.” Id. For the sake of simplicity, this Petition refers to
`
`Light Wave, Flowrider, and Surf Park PTE, LTD. collectively as “Patent Owner.”
`
`1
`
`

`
`prejudice. Ex. 1009.
`
`C.
`
`Petitioner’s Lead And Back-up Counsel And Service Information:
`37 C.F.R. § 42.8(b)(3) & (4)
`
`Petitioner’s lead counsel (Charan Brahma) and back-up counsel (Justin M.
`
`Barnes (pro hac vice to be filed) and Mark Mao (pro hac vice to be filed)) consent
`
`to
`
`be
`
`served
`
`by
`
`e-mail
`
`at
`
`charanjit.brahma@troutmansanders.com,
`
`justin.barnes@troutmansanders.com, and mark.mao@troutmansanders.com, or by
`
`mail at: Troutman Sanders LLP, 580 California Street, Ste. 1100, San Francisco,
`
`CA 92130, 415.477.5700 (phone), 415.477.5710 (fax). Petitioner also requests
`
`authorization to file a motion for Messrs. Barnes and Mao to appear pro hac vice.
`
`D.
`
`Grounds For Standing: 37 C.F.R. § 42.104(a)
`
`Petitioner hereby certifies that the ‘589 Patent is available for IPR and that
`
`the Petitioner is not time barred or estopped from requesting IPR challenging
`
`claims of the ‘589 Patent on the grounds identified herein. Although the earlier
`
`district court action against Petitioner was filed more than a year ago, that action
`
`was dismissed without prejudice, so this petition is not barred pursuant to 35
`
`U.S.C. § 315(b). Ex. 1009; Macauto v. BOS GmbH & KG, IPR2012-00004, Paper
`
`18 (PTAB Jan. 24, 2013). The currently pending action in district court was filed
`
`on August 24, 2015, and was served on August 28, 2015, less than one year ago.
`
`Ex. 1010. Petitioner has standing, and meets all requirements, to file this Petition
`
`under 35 U.S.C. §§ 315(a)(1), 315(b), 315(e)(1), and 325(e)(1); and 37 C.F.R. §§
`
`2
`
`

`
`42.101 and 42.102.
`
`E.
`
`Payment Of Fees: 37 C.F.R. § 42.103
`
`The undersigned authorizes the Director to charge any required fees,
`
`including those due under 37 C.F.R. § 42.15(a), to Deposit Account No. 20-1507.
`
`II.
`
`IDENTIFICATION OF CHALLENGE
`Petitioner requests inter partes review of Claims 1, 3, 13, 15-17, 24-27, 29-
`
`38, 40-43, 50, and 54-55 of the ‘589 Patent on the following grounds:
`
`Ground 1: Frenzl (Ex. 1003) alone renders obvious Claims 1, 3, 13, 16-17,
`
`24-27, 29, 37-38, 40, and 42-43;
`
`Ground 2: Frenzl in view of Lochtefeld 547 (Ex. 1004) renders obvious
`
`Claims 16, 31-36, 50, and 54-55;
`
`Ground 3: Frenzl
`
`in view of Lochtefeld 547 and further in view of
`
`Lochtefeld 590 (Ex. 1005) renders obvious Claims 1, 13, 16-17, 24-27, 29, 31-38,
`
`40, 42-43, 50, and 54-55;
`
`Ground 4: Hill (Ex. 1006) alone renders obvious Claims 1, 3, 13, 15-17, 24-
`
`27, 29-30, 37-38, and 40-43;
`
`Ground 5: Hill in view of Lochtefeld 547 renders obvious Claims 16, 31-
`
`32, 34-36, 50, and 54-55; and
`
`Ground 6: Hill in view of Lochtefeld 547 and further in view of Lochtefeld
`
`590 renders obvious Claims 1, 13, 13, 15-17, 24-27, 29-32, 34-38, 40-43, 50, and
`
`3
`
`

`
`54-55.
`
`Sections V and VI provide the required statements of precise relief requested
`
`for each claim challenged per 37 C.F.R. § 42.104(b). Petitioner presents six
`
`grounds of rejection, with Grounds 1-3 based on primary reference Frenzl while
`
`Grounds 4-6 are based on primary reference Hill. Grounds 1 and 4 (alleging that
`
`Frenzl and Hill render obvious the majority of the Challenged Claims) are directed
`
`to the nozzle cover and tongue claims of the ‘589 Patent. Grounds 2 and 5
`
`(combining Frenzl and Hill with Lochtefeld 547) are directed to the “transportable
`
`module” claims of the ‘589 Patent. Finally, Petitioner presents Grounds 3 and 6
`
`should Patent Owner allege, and the Board accept, that Frenzl and Hill do not
`
`disclose nozzles having an aperture or that those references do not disclose a
`
`nozzle over which a rider can ride. Although Petitioner contends that
`
`these
`
`limitations are disclosed or rendered obvious by Frenzl and Hill alone, Petitioner
`
`also combines Lochtefeld 590 with Lochtefeld 547 and either Frenzl or Hill to
`
`show that any alleged missing limitation would have been obvious to one of
`
`ordinary skill. Accordingly, the Board need only consider Grounds 3 and 6 should
`
`it find that Petitioner has not met its burden with respect to Grounds 1-2 and 4-5.
`
`4
`
`

`
`III. OVERVIEW OF THE ‘589 PATENT
`
`A.
`
`Invention Of The ‘589 Patent
`
`The ‘589 Patent issued on December 10, 2002, with 57 claims. Ex. 1001.
`
`The ‘589 Patent relates to “simulated wave water ride attractions.” Id. at 1:12-19. It
`
`purports to address two problems with prior art rides.
`
`The first problem is safety, for which it teaches a “sluice slide-over cover
`
`overlying a water ride injection nozzle or sluice gate for ensuring the safety of
`
`riders.” Id. FIG. 3A shows the disclosed cover (and tongue) assembly:
`
`The depicted assembly comprises “a nozzle or sluice gate 130 and a slide-
`
`over cover 150 which enables riders to safely slide over the nozzle 130 without
`
`risk of injury or interference with ride operation.” Id. at 8:44-47. The cover 150
`
`also includes tongue 160, which is:
`
`[P]referably urged downward to squeeze against the flow 138 and
`
`to seal or cover the nozzle area off from possible injurious contact
`
`5
`
`

`
`from a rider. Preferably, the pad 150 (or tongue 160) is spring-
`
`loaded in a downward direction to keep a light tension against the
`
`jetted water 138. Advantageously, this reduces or minimizes the
`
`possibility of a rider catching a finger underneath the pad 150 (or
`
`tongue 160) when sliding up and over the pad 150 (or tongue 160)
`
`and sluice gate 130.
`
`Id. at 10:38-46.
`
`The
`
`second purported problem is
`
`the
`
`transportability and on-site
`
`construction cost of such rides. As the ‘589 Patent explains, “the relatively large
`
`size of such ride attractions makes it difficult, if not impossible, and/or expensive
`
`to move them between different sites” and “these water ride attractions are
`
`typically constructed on-site which can cause noise and debris, and hence long-
`
`term inconvenience to and disruption in the activities of nearby residential and/or
`
`business communities. The on-site construction can also undesirably add to the
`
`cost.” Id. at 1:61-2:2. To address this issue, the ‘589 Patent teaches the use of
`
`modules that form the wave water ride:
`
`[I]n one preferred embodiment,
`
`the water ride attraction 100
`
`comprises a plurality of shippable modules, units or containers
`
`211, 212, 213, 214, 215, 216, 217 and 218. In one preferred
`
`embodiment,
`
`these
`
`containers
`
`comprise
`
`standard
`
`shipping
`
`6
`
`

`
`containers/crates. The independent modules 211, 212, 213, 214,
`
`215, 216, 217 and 218 along with other ride attraction components
`
`are transported to the designated site and preferably assembled on-
`
`site to form the water ride attraction 100.
`
`Id. at 12:62-13:4. Numerals 211-218 in FIG. 4A represent modules:
`
`B.
`
`Prosecution Of The ‘589 Patent
`
`The application for the ‘589 Patent was filed on August 2, 2000, claiming
`
`priority to Provisional App. No. 60/146,751, filed on August 2, 1999. Ex. 1001.
`
`The original application for the ‘589 Patent as-filed included 37 claims. Ex. 1007,
`
`32-35. On November 14, 2000, the applicant submitted an Information Disclosure
`
`Statement disclosing 24 U.S. patents, 1 foreign patent, and 1 printed publication.
`
`Id. at 75-78. Subsequently, on December 6, 2000, the applicant submitted a
`
`Supplemental Information Disclosure Statement disclosing 3 additional U.S.
`
`patents. Id. at 81-83.
`
`7
`
`

`
`The PTO issued a non-final Office Action on November 1, 2001, objecting
`
`to as-filed Claims 13, 14, 17-23, 27, 28, and 36 as indefinite under 35 U.S.C. §
`
`112. Id. at 86-90. The Office Action stated that the remaining Claims 1-12, 15, 16,
`
`24-26, 29-35, and 37 were allowed, and that the indefinite claims would be
`
`allowable if
`
`rewritten or amended. Id. Although the Examiner cited three
`
`references, they were not relied upon for any rejection. Id.
`
`On October 31, 2001 (the day before the first Office Action issued), the
`
`applicant mailed in a preliminary amendment that amended Claims 1 and 5 for
`
`clarity, and added new Claims 38-45. Id. at 92-94. On February 7, 2002 and
`
`following receipt of this preliminary amendment, the PTO issued another non-final
`
`Office Action (nearly identical to the first one), again rejecting Claims 13, 14, 17-
`
`23, 27, 28, and 36 as indefinite, and allowing Claims 1-12, 15, 16, 24-26, 29-35,
`
`and 37. Id. at 96-99. In response, on February 1, 2002, the applicant asked the PTO
`
`not to enter the amendment dated October 31, 2001, and instead amended the
`
`previously-rejected claims to overcome the definiteness rejections, and added new
`
`Claims 38-57. Id. at 101-110. The PTO subsequently issued a Notice of Allowance
`
`for all 57 claims. Id. at 111. None of the dependent claims of the ‘589 Patent were
`
`ever independently regarded as allowable; allowability of subject matter in the
`
`dependent claims of the ‘589 Patent directly related to the allowability of their
`
`respective independent claims.
`
`8
`
`

`
`IV.
`
`SUMMARY OF THE PRIOR ART
`
`A.
`
`U.S. Patent No. 3,598,402 To Frenzl (Frenzl)
`
`Frenzl was filed in the U.S. on July 1, 1968, claiming priority to a French
`
`application dated August 11, 1967. Ex. 1003. Frenzl issued on August 10, 1971. Id.
`
`Although Frenzl was cited during prosecution of the ‘589 Patent (in an IDS listing
`
`26 references), it was not discussed substantively or otherwise used to reject any
`
`claims during prosecution. Ex. 1007, 75-78. Frenzl qualifies as prior art under 35
`
`U.S.C. §§ 102(a) and (b) (pre-AIA) at least because it was patented or described in
`
`a printed publication in this country before the invention of the ‘589 Patent, and
`
`because it was patented in this country more than one year prior to the date of
`
`application of the ‘589 Patent in the U.S.
`
`Frenzl discloses “[a]n appliance for the practicing within a reduced area of
`
`aquatic sports such as surf-riding”. Ex. 1003, Abstract. FIG. 7 shows a surf-riding
`
`embodiment in which numeral 2 represents a nozzle configured to emit a flow of
`
`water on ride surface 1. Id. at 3:8-13. The flow of water is controlled by a nozzle
`
`cover and flap (tongue) assembly where “nozzle 2 may be closed by a pivoting flap
`
`25 the closed position of which is illustrated in FIG. 7 in dotted lines.” Id. at 4:74-
`
`75. The “speedy opening and closing of the nozzle 2” are controlled by “flap valve
`
`32 which connects a chamber 33 lying above the pivoting flap 25 closing the
`
`nozzle 2 selectively with a low-pressure area such as that 34 provided for the
`
`9
`
`

`
`draining of the water and with a high-pressure area such as the tank 36 through the
`
`port 35.” Id. at 5:14-19.
`
`B.
`
`U.S. Patent No. 6,019,547 to Hill (Hill)
`
`Hill was filed in the U.S. on October 6, 1997, claiming priority to
`
`Provisional Application No. 08/944,401 filed on October 8, 1996, and it issued on
`
`February 1, 2000. Ex. 1006. Although Hill was cited during prosecution of the
`
`‘589 Patent (in an IDS listing 26 references), it was not discussed substantively or
`
`otherwise used to reject any claims during prosecution. Ex. 1007, 75-78. Hill
`
`qualifies as prior art under 35 U.S.C. § 102(e) (pre-AIA) at least because it was
`
`described in an application before the priority date of the ‘589 Patent and later
`
`patented or described in a printed publication in this country before the ‘589 Patent
`
`was granted.
`
`10
`
`

`
`Hill is entitled “wave-forming apparatus.” Ex. 1006. In some embodiments
`
`(e.g., FIG. 3), Hill describes a water containment structure that emits a flow of
`
`water to the apparatus. The opening and closing of the containment structure is
`
`controlled by flap 48 (at the nozzle area). Hill describes that flap 48 may comprise
`
`rubber, and is “hingeably connected to an upper support 50 such as a steel tube of
`
`the like” and that the flap pivoting means can include “linear jacks, chain, belt or
`
`pulley drives.” Id. at 6:24-31.
`
`In another embodiment, Hill discloses an aerofoil structure (154) that is
`
`disposed within the water outlet to shape the flow of water. See, e.g., id. at FIG.
`
`8C.
`
`11
`
`

`
`Although the water may run over the top of the aerofoil structure, Claim 1
`
`also confirms that water can run beneath it, thereby disclosing a cover for the
`
`flowing water (serving as a nozzle beneath the aerofoil structure). Moreover, the
`
`aerofoil structure is placed upon an adjustable rudder (155) that can adjust the
`
`aerofoil structure (154) and thus the amount of water that is flowing onto the ride
`
`surface (122) from beneath the aerofoil (154), thereby making aerofoil structure
`
`(154) a nozzle. Id. at 17:48-52. Finally, Hill confirms that such structures disposed
`
`throughout the ride may be flexible “so as to cushion a rider’s fall and dissipate the
`
`impact throughout the area” and/or “[f]or additional safety … padded as deemed
`
`necessary” and thereby serve with safety measures. Id. at 17:14-23.
`
`C.
`
`U.S. Patent No. 5,213,547 to Lochtefeld (Lochtefeld 547)
`
`Lochtefeld 547 was filed in the U.S. on March 20, 1992, and issued on May
`
`25, 1993. Ex. 1004. It is a continuation of a U.S. patent application filed August
`
`12
`
`

`
`15, 1990. Id. Although Lochtefeld 547 was cited during prosecution of the ‘589
`
`Patent (in an IDS listing 26 references), it was not discussed substantively or
`
`otherwise used to reject any claims during prosecution. Ex. 1007, 75-78. It
`
`qualifies as prior art under 35 U.S.C. §§ 102(a) and (b) at least because it was
`
`patented or described in a printed publication in this country before the invention
`
`of the ‘589 Patent, and because it was patented in this country more than one year
`
`prior to the date of application of the ‘589 Patent in the U.S.
`
`Lochtefeld 547 is directed to improvements for water rides. Ex. 1004,
`
`Abstract. It describes using propulsion modules (21) “comprised of a high
`
`flow/high pressure water source 22; a flow control valve 23; a flow forming nozzle
`
`24 with adjustable aperture 28; a discrete jet-water flow 30 with arrow indicating
`
`the predetermined direction of motion; and a substantially smooth riding surface 25
`
`over which jet-water flow 30 flows.” Id. at 11:35-42. The modules can be
`
`connected via “bolting, gluing, or continuous casting of module 21 in an end to end
`
`fashion.” Id. at 11:50-52. Regarding the pump(s) for the nozzle of the module,
`
`Lochtefeld 547 teaches that “[w]here a series of modules are connected, a single
`
`high pressure source or pump with a properly designed manifold could provide the
`
`requisite service, or in the alternative, a separate pump for each module could be
`
`configured.” Id. at 12:13-17. Lochtefeld 547 also notes that the size of the module
`
`13
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`

`
`“can vary depending on desired operational performance characteristics and
`
`desired construction techniques or shipping parameters.” Id. at 12:3-5.
`
`D.
`
`U.S. Patent No. 5,738,590 to Lochtefeld (Lochtefeld 590)
`
`Lochtefeld 590 was filed in the U.S. on September 18, 1996, and issued on
`
`April 14, 1998. Ex. 1005. Although Lochtefeld 590 was cited during prosecution
`
`of the ‘589 Patent (in an IDS listing 26 references),
`
`it was not discussed
`
`substantively or otherwise used to reject any claims during prosecution. Ex. 1007,
`
`75-78. It qualifies as prior art under 35 U.S.C. §§ 102(a) and (b) at least because it
`
`was patented or described in a printed publication in this country before the
`
`invention of the ‘589 Patent, and because it was patented in this country more than
`
`one year prior to the date of application of the ‘589 Patent in the U.S.
`
`Lochtefeld 590, Lochtefeld 547, and the ‘589 Patent have the same inventor.
`
`Like the ‘589 Patent, Lochtefeld 590 discloses a simulated wave generating water
`
`ride that uses a nozzle assembly. Ex. 1005, Abstract. Lochtefeld 590’s nozzle
`
`assembly contains a cover and outlet aperture as shown in FIG. 8 depicting a tilted
`
`ride surface (74) covering an angled nozzle outlet (82) (with the nozzle and cover
`
`highlighted in red below):
`
`14
`
`

`
`FIG. 1 shows the nozzle area/nozzles (30) in one embodiment of the ride
`
`with a pool area (21) disposed immediately behind the nozzles (30) and a ride
`
`surface (20) disposed on the other side. Id. at 8:10-12, 8:56-59.
`
`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 the pool area.” Id. at Abstract.
`
`15
`
`

`
`E.
`
`Petitioner Presents Prior Art That Was Not Previously Applied
`Against The Challenged Claims
`
`Although the prior art references applied in this IPR petition were cited
`
`during prosecution in an IDS listing 26 prior art references, they were not applied
`
`against any claims, so 35 U.S.C. § 325(d) should not apply. See Microsoft Corp. v.
`
`Parallel Networks Licensing, LLC, IPR2015-00483 (Paper 10, 15) (“In addition,
`
`while SWEB 95 was listed on a lengthy Information Disclosure Statement initialed
`
`by the Examiner, the reference was not applied against the claims and there is
`
`no evidence that the Examiner considered the particular disclosures cited by
`
`Microsoft in the Petition.”) (emphasis added).
`
`V.
`
`CLAIM CONSTRUCTION: 37 C.F.R. § 42.104(B)(3)
`
`A.
`
`Applicable Law
`
`In an IPR, a claim “shall be given its broadest reasonable construction in
`
`light of the specification.” 37 C.F.R. § 42.100(b). The words of the claim are given
`
`their plain meaning to a person of skill unless that meaning is inconsistent with the
`
`specification. In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989).
`
`B.
`
`Person Of Skill In The Art
`
`A person of ordinary skill in the art applicable to the ‘589 Patent is a person
`
`with skill in designing, manufacturing, or refurbishing surfing simulation water
`
`rides. Ex. 1002, ¶ 20.
`
`16
`
`

`
`C.
`
`Proposed Construction Of Claim Terms
`
`Petitioner proposes constructions for certain claim terms that are consistent
`
`with Patent Owner’s proposed constructions in the district court proceeding and
`
`thus are in accordance with the broadest reasonable interpretation standard.3, 4
`
`1.
`
`“nozzle”/“sluice”/“sluice gate” (Claims 17, 24, 37)
`
`The broadest reasonable interpretation of “nozzle,” “sluice,” and “sluice
`
`gate” is “component for injecting water.” In the district court litigation, Patent
`
`Owner stated that “[b]ecause the ’589 Patent is directed to the safety cover, it is
`
`unconcerned with specifics of how water is delivered. Thus, a proper
`
`construction of “sluice” and “sluice gate” is ‘component for injecting water,’
`
`consistent with the Applicant’s clear intention for the term to identify, in
`
`general, some matter of providing water to the ride surface.” Ex. 1011, 11 (ll.
`
`3 Petitioner has previously proposed different constructions and Petitioner’s use of
`
`Patent Owner’s constructions from the related litigation for this Petition is not a
`
`concession that Patent Owner’s constructions should be adopted by a court.
`
`4 Although Petitioner contends that various claims challenged in this Petition fail to
`
`inform, with reasonable certainty, those skilled in the art about the scope of the
`
`invention, Petitioner applies the prior art discussed herein to those claims based on
`
`how Patent Owner applies those claims to the accused products in the district court
`
`litigation, without concession that the claims are not indefinite.
`
`17
`
`

`
`10-14) (emphasis added). Moreover, “nozzle” should be construed consistently as
`
`the ‘589 Patent repeatedly uses the terms interchangeably. As Patent Owner
`
`acknowledged, “the specification refers to numeral 30 as all of the following:
`
`‘nozzle 30,’ ‘nozzle or sluice 30,’ ‘nozzle or sluice gate 30,’ ‘nozzle outlet area
`
`30,’ ‘sluice gate 30,’ and, most explicit of the Applicant’s generic intent,
`
`‘nozzle/sluice 30’” and that “the specification refers to numeral 130 as a ‘nozzle
`
`130,’ ‘nozzle or sluice gate 130,’ ‘sluice gate 130,’ and even ‘jet 130.’” Id. at 11
`
`(ll. 5-10) (citing Ex. 1001, 6:60-10:18).
`
`2.
`
`“biased downward”/“urged downward”/“biasing .
`downwards” (Claims 1, 17, 37, 38, 42)
`
`.
`
`.
`
`The broadest reasonable interpretation of the “bias[ed/ing]” and “urged
`
`downward” terms is to cause to be oriented downward by any force, such as
`
`gravity. In the district court litigation, Patent Owner 1) argued that all three terms
`
`should have the same meaning and that 2) plain meaning controlled. Specifically,
`
`Patent Owner argued that plain meaning controlled because “a PHOSITA would
`
`readily understand its plain meaning (e.g., to cause to be oriented downward), in
`
`accordance with the intrinsic evidence.” Ex. 1012, 4 (ll. 19-21). Patent Owner
`
`further argued that the ‘589 Patent does not require any specific biasing means and
`
`that “a PHOSITA would understand that biasing would occur, in accordance with
`
`laws of nature (e.g., gravity acting on an end of a resilient pad) . . .” Id. at 4 (l. 27)-
`
`5 (l. 3) (citing Ex. 1001, 10:47-50; 11:5-11).
`
`18
`
`

`
`3.
`
`“tongue” (Claims 1, 26, 37-38)
`
`The broadest reasonable interpretation of “tongue,” as Patent Owner itself
`
`contends, is “a portion of a cover that extends out from one end.” In arguing that
`
`“plain meaning” controlled in the district court litigation, Patent Owner stated that
`
`“[i]n the context of the ’589 Patent, a ‘tongue’ is plainly understood by a
`
`PHOSITA to mean a portion of a cover that, like a human tongue, extends out
`
`from one end.” Ex. 1012, 5 (ll. 11-12) (emphasis added). See also Ex. 1001, FIG.
`
`3D; 10:31-35. Moreover, Patent Owner argued that the tongue can be integral with
`
`the cover: “FIG. 3D clearly illustrates the cover 150 having its ‘tongue portion
`
`160’ formed as a single piece and not as two, independent elements that are
`
`‘affixed’ or ‘cantilevered together.” Ex. 1012, 5 (ll. 18-20) (emphasis in original).
`
`4.
`
`“removably connected”/“removably affix[ed]” (Claims 3,
`17, 42)
`
`The broadest
`
`reasonable interpretation of “removably connected” and
`
`“removably affix[ed]” is “capable of being connected and removed.” Once again,
`
`this proposed construction is consistent with Patent Owner’s position in the district
`
`court litigation: “To be removably connected simply means capable of being
`
`connected and removed, as the words plainly state.” Ex. 1011, 16 (ll. 17-18). In
`
`support, Patent Owner pointed to the ‘589 Patent specification which states that the
`
`cover or pad “can be removably mechanically connected to the nozzle or jet 130 in
`
`19
`
`

`
`a wide variety of manners,” such as screws and others. Id. at 16 (ll. 18-24) (citing
`
`Ex. 1001, 10:51-53).
`
`5.
`
`transportable modules and associated
`“a plurality of
`components”/“transportable
`[propulsion/ride
`surface]
`modules” (Claims 31-33, 50-53)
`
`The broadest reasonable interpretation of the “transportable [propulsion/ride
`
`surface] modules” limitations is “transported [propulsion/ride surface] components
`
`to be installed on-site.” Again,
`
`this is identical
`
`to Patent Owner’s proposed
`
`construction in the district court litigation. Ex. 1011, 13 (ll. 9-10). According to
`
`Patent Owner,
`
`the “installation on-site of separate components provides for
`
`‘enhanced versatility, convenience, and also keeps costs low,’
`
`instead of
`
`transporting potentially unwieldy pre-assembled structures.” Id. at 13 (ll. 16-18)
`
`(citing Ex. 1001, 12:50-52).
`
`In the district court, Petitioner argued that the
`
`disputed terms required standardized units as “components” can be any part of the
`
`ride such as a screw or bolt. Patent Owner, however, disagreed saying that “[t]he
`
`specification always describes standardization as optional.” Ex. 1012, 3 (l. 3)
`
`(citing Ex. 1001, 12:62-67). Accordingly, Patent Owner’s proposed construction is
`
`the broadest reasonable interpretation.
`
`6.
`
`“contoured” (Claims 16-17, 24, 31, 36, 42)
`
`The broadest reasonable interpretation of “contoured” is “made or shaped.”
`
`This construction is identical to Patent Owner’s proposed construction in the
`
`20
`
`

`
`district court litigation. There, Patent Owner argued that the “specification and
`
`claims refer to both a cover/pad and a ride surface as being ‘contoured’ and makes
`
`clear that ‘contoured’ does not require any particular form or shape.” Ex.
`
`1011, 11 (ll. 19-22) (emphasis added) (citing Ex. 1001, 10:66-11:2). See also Ex.
`
`1001, 14:20-31. Patent Owner further argued that “no required shape or form is
`
`specified [sic] the ’589 Patent.” Ex. 1011, 12 (ll. 2-3).
`
`7.
`
`“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 operat