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`Trials@uspto.gov
`Tel: 571-272-7822
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`Paper 12
`Entered: August 23, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`BROAD OCEAN TECHNOLOGIES, LLC,
`Petitioner,
`
`v.
`
`REGAL BELOIT AMERICA, INC.,
`Patent Owner.
`
`Case IPR2017-00803
`Patent 6,318,358 B1
`
`Before MITCHELL G. WEATHERLY, TIMOTHY J. GOODSON, and
`SCOTT C. MOORE, Administrative Patent Judges.
`
`WEATHERLY, Administrative Patent Judge.
`
`DECISION
`Instituting Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. §§ 42.4, 42.108
`
`I.
`
`INTRODUCTION
`
`A. BACKGROUND
`Broad Ocean Technologies, Inc. (“BOTI”) filed a petition (Paper 1,
`“Pet.”) to institute an inter partes review of claims 11 and 12 (the
`“challenged claims”) of U.S. Patent No. 6,318,358 B1 (Ex. 1001, “the
`’358 patent”). 35 U.S.C. § 311. Regal Beloit America, Inc. (“Regal”) timely
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`filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). With our prior
`authorization, BOTI filed a reply to Regal’s Preliminary Response
`addressing whether BOTI had failed to identify real parties in interest
`(“RPIs”). Paper 8 (“Reply”). Also with our authorization, Regal filed a
`surreply on the same RPI issue. Paper 9 (“Surreply”). At the panel’s
`request, Paper 10, BOTI filed a response to Regal’s argument raised in the
`Surreply that Broad-Ocean Motor (Hong Kong) Company, Ltd. (“BOM
`HK”) should have been named as an RPI. Paper 11 (“BOM HK Resp.”).
`Institution of an inter partes review is authorized by statute when “the
`information presented in the petition filed under section 311 and any
`response filed under section 313 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); 37 C.F.R. § 42.108. Based
`on our review of the record, we conclude that BOTI is reasonably likely to
`prevail with respect to at least one of the challenged claims.
`BOTI contends that the challenged claims are unpatentable under
`35 U.S.C. §§ 102 and/or 103 based on the following grounds (Pet. 12–32):
`
`References
`
`Basis Claims challenged
`
`U.S. Patent No. 5,839,374 (Ex. 1003,
`“Conner”)
`
`Conner
`
`U.S. Patent No. 5,060,720 (Ex. 1004,
`“Wollaber”)
`
`Wollaber
`
`Conner and Wollaber
`
`§ 102(b) 11 and 12
`
`§ 103
`
`11 and 12
`
`§ 102(b) 11 and 12
`
`§ 103
`
`§ 103
`
`11 and 12
`
`11 and 12
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`Generally, Regal contends that the Petition should be denied in its
`entirety for BOTI’s failure to name three alleged RPIs. For the reasons
`described below, we institute an inter partes review of claims 11 and 12 on
`the first four of the five challenges listed above, but not on the last challenge
`based upon a combination of Conner and Wollaber.
`B. RELATED PROCEEDINGS
`The parties identified as a related proceeding the co-pending district
`court litigation of Regal Beloit America, Inc. v. Broad Ocean Technologies,
`Inc., Case No. 4:16-CV-00111 (E.D. Mo.). Pet. 2; Paper 4, 2. BOTI
`identifies itself as the first-named defendant in this litigation, Pet. 2, but
`Regal identifies Broad Ocean Technologies, LLC (“BOTL”) as the first
`named defendant, Paper 4, 2. The original complaint identifies three
`defendants, including: BOTL, Broad Ocean Motor, LLC (“BOM”), and
`Zhongshan Broad Ocean Motor Co., Ltd. (“ZBOM”) as the defendants.
`Ex. 2002, 1–2.
`C. THE ’358 PATENT
`The ’358 patent is directed to “a draft inducing blower
`in a furnace, and, more particularly, . . . to an improvement in
`the blower design that provides internal cooling for a motor
`that drives the blower.” Ex. 1001, 1:6–9. The colorized
`version of a portion of Figure 7 from the ’358 patent shown at
`right and in the Petition, Pet. 4, illustrates many of the claimed
`components of the allegedly improved blower design. Motor 22 drives
`impeller 70, which includes blades 74 (blue) on one side of back plate 72
`(red) and blades 76 (green) on the other. Id. at 4:31–42, 4:67–5:1. Blades
`74 (blue) provide suction through shaft hole 64 to pull cooling air 110
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`through interior 40 of motor casing 26. Id. at 5:1–7. Blades 76 (green)
`provide suction that draws combustion products 106 through intake 66. Id.
`at 5:3–5, 5:42–45. Streams of gas 106, 110 are mixed and expelled through
`discharge exit 56. Id. at 5:8–11.
`Independent claim 11 and dependent claim 12 recite:
`11. A blower comprising:
`a motor having a shaft;
`an impeller housing operatively connected to the motor;
`an impeller contained in the impeller housing and mounted on
`the motor shaft, the impeller having
`a circular back plate with a center axis,
`a first set of blades arranged in a circular pattern on one side
`of the back plate and
`a second set of blades arranged in a circular pattern on an
`axially opposite side of the back plate,
`the blades of the first and second sets are fixed to the back
`plate and extend axially outward from opposite sides of
`the back plate; and
`the first and second sets of blades have axial lengths and the axial
`length of the first set of blades is smaller than the axial length
`of the second set of blades.
`12. The blower of claim 11, wherein:
`the first set of blades is on a side of the back plate that is adjacent
`the motor and the second set of blades is on a side of the back
`plate that is axially opposite the motor.
`Id. at 8:33–51 (with line breaks added to claim 11 for clarity).
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`II. ANALYSIS
`A. CLAIM INTERPRETATION
`“A claim in an unexpired patent that will not expire before a final
`written decision is issued shall be given its broadest reasonable construction
`in light of the specification of the patent in which it appears.” 37 C.F.R.
`§ 42.100(b); see also Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131,
`2144–46 (2016) (affirming that USPTO has statutory authority to construe
`claims according to Rule 42.100(b)). When applying that standard, we
`interpret the claim language as it would be understood by one of ordinary
`skill in the art in light of the specification. In re Suitco Surface, Inc., 603
`F.3d 1255, 1260 (Fed. Cir. 2010). Thus, we give claim terms their ordinary
`and customary meaning. See In re Translogic Tech., Inc., 504 F.3d 1249,
`1257 (Fed. Cir. 2007) (“The ordinary and customary meaning ‘is the
`meaning that the term would have to a person of ordinary skill in the art in
`question.’”). Only terms which are in controversy need to be construed, and
`then only to the extent necessary to resolve the controversy. Vivid Techs.,
`Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`Neither party proposes explicit interpretations of any particular claim
`term. We do not identify any claim terms that require explicit interpretation.
`Accordingly, we interpret the claims based on the standards set forth above.
`B. REAL PARTIES IN INTEREST
`Regal argues that the Petition should be denied because BOTI has
`failed to name three different entities as RPIs as required under 35 U.S.C.
`§ 312(a)(2), including: BOTL, BOM, and Broad Ocean Motor (Hong Kong)
`Company, Ltd. (“BOM HK”). See Prelim. Resp. 5–17 (addressing BOTL
`and BOM); Surreply 5–6 (addressing BOM HK). Regal also argues that if
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`BOTI were to name any of these parties as an RPI now, then the filing date
`of the Petition would require correction to the date on which the RPI was
`added. See Prelim. Resp. 11–12 (regarding adding BOM), 14–15 (regarding
`adding BOTL); Surreply 2 (regarding adding all three of BOM, BOTL, and
`BOM HK). Regal further argues that correction of the filing date as required
`would render the Petition barred under 35 U.S.C. § 315(b). Prelim.
`Resp. 14–17; Surreply 2.
`For the reasons expressed below, we will permit BOTI to correct the
`Petition to name BOTL as the petitioner without altering the filing date of
`the Petition. On the record before us at this stage of the proceeding, we are
`not persuaded that BOM or BOM HK must be named as RPIs.
`1. BOTL
`Regal argues that because it asserted infringement of the ’358 patent
`against BOTL, not BOTI, BOTL must be named as an RPI. Prelim.
`Resp. 12–13. Regal also argues that adding BOTL would necessarily require
`the filing date of the Petition to be amended to the date on which BOTL is
`added. Id. at 14–15. BOTI responds by admitting that BOTL, not BOTI,
`should have been identified as the petitioner and also an RPI because
`“counsel admittedly and inadvertently made a clerical error by erroneously
`substituting ‘Inc.’ for ‘LLC’ for Petitioner.” Reply 2. BOTI relies upon the
`testimony of lead counsel and back up counsel who prepared the Petition.
`Id. at 2–4 (citing Ex. 1010 ¶¶ 4–13, Ex. 1015 ¶¶ 6–12). This evidence is
`uncontroverted.
`To correct its error, BOTI seeks permission to file a motion pursuant
`to 37 C.F.R. § 42.104(c). Id. Section 42.104(c) states: “A motion may be
`filed that seeks to correct a clerical or typographical mistake in the petition.
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`The grant of such a motion does not change the filing date of the petition.”
`37 C.F.R. § 42.104(c). Regal argues that because BOTI’s error was not
`“clerical or typographical” in nature, BOTI cannot avail itself of Rule
`42.104(c) to correct an “inadvertent” error that is not “clerical or
`typographical” in nature. Surreply 2–4 (citing Ericsson Inc. v. Intellectual
`Ventures I LLC, Case IPR2014-01149, slip op. at 12 (PTAB, May 19, 2015)
`(Paper 31); Changes to Implement Inter Partes Review Proceedings, Post-
`Grant Review Proceedings, and Transitional Program for Covered Business
`Method Patents (“AIA Rules Notice”), 77 Fed. Reg. 48,680, at 48,699 (Aug.
`14, 2012)).
`Regal’s reliance on Ericsson and the AIA Rules Notice is
`unpersuasive because we determine that the error in the petition of
`“substituting ‘Inc.’ for ‘LLC’ for Petitioner BOT” is typographical in nature
`and amenable to correction under Rule 42.104(c). The portions of Ericsson
`and the AIA Rules Notice cited by Regal plainly relate to changes in a
`petition that are not “clerical or typographical in nature.” Ericsson,
`IPR2014-01149, slip op. at 13 (“We agree with Intellectual Ventures that the
`proposed corrections are so significant in their magnitude and extent that
`they are more properly characterized as substantive, not clerical or
`typographical.”); AIA Rules Notice, 77 Fed. Reg. at 48699 (“There is no
`provision allowing for the correction of a mistake that is not clerical or
`typographical in nature.”) Regal has been aware that BOTL is the proper
`name for Petitioner from the time before the Petition was filed. See
`Ex. 2001 (identifying BOTL as a defendant in the related litigation); see also
`Prelim. Resp. 10–11 (noting that BOTL and not BOTI is named as an RPI in
`the petitions filed in IPR2014-01121, IPR2014-01122, IPR2014-01123,
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`IPR2015-00465, IPR2015-00762, IPR2015-00763, IPR2015-01617, and
`IPR2015-01663). Moreover, changing the Petition to name BOTL rather
`than BOTI does not alter any substantive aspect of the Petition, which
`reveals the typographical nature of the error of referring to Broad Ocean
`Technologies as a corporation rather than a limited liability company.
`For the reasons expressed above, we determine that the references to
`BOTI in the Petition rather than BOTL is a typographical error that may be
`corrected pursuant to a motion under 37 C.F.R. § 42.104(c). The panel
`considers the Reply to be such a motion and the relevant portions of the
`Regal’s Preliminary Response and Surreply to be Regal’s opposition.
`Therefore, additional briefing is not required to grant BOTI’s request to
`correct its error. BOTI’s motion is granted and the filing date of the Petition
`shall remain January 27, 2017.1 Accordingly, all papers filed after the date
`of this Paper shall identify BOTL as Petitioner.
`2. BOM
`Regal argues that BOM must be named as an RPI because, as an
`entity that may be sued for infringement of the ’358 patent, BOM is a party
`that “desires review of the patent.” Prelim. Resp. 8 (quoting Office Patent
`Trial Practice Guide, 77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012) (“Trial
`Practice Guide”)). Regal quotes the Trial Practice Guide out of context, but
`also with an alteration that changes the meaning of the quoted passage. The
`full passage reads: “the ‘real party-in-interest’ is the party that desires
`
`
`1 Regal argued that the petition must be denied because BOTI is not a
`“person” entitled to file a petition under 35 U.S.C. § 311. Prelim. Resp. 14.
`Our grant of BOTI’s request to correct the Petition pursuant to 37 C.F.R.
`§ 42.104(c), to identify BOTL as the petitioner as of the original filing date
`renders this argument moot.
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`review of the patent. Thus, the ‘real party-in-interest’ may be the petitioner
`itself, and/or it may be the party or parties at whose behest the petition has
`been filed.” Trial Practice Guide, 77 Fed. Reg. at 48,759.
`Regal’s argument is unpersuasive. The Trial Practice Guide makes
`clear that an RPI “may be the petitioner itself, and/or . . . parties at whose
`behest the petition has been filed.” The reference to “party that desires
`review” does not impose a requirement that any party who may be sued for
`infringement must be named as an RPI. To hold otherwise would lead to the
`untenable result that every petitioner would need to find and identify as an
`RPI any other entity that might be sued for infringing the patent that is the
`subject of a petition for inter partes review. Simply being an entity that
`“desires review of the patent” does not transform that entity into an RPI.
`Rather, whether an entity is a real party in interest to a proceeding is a
`highly fact-dependent question. Office Patent Trial Practice Guide, 77 Fed.
`Reg. 48,756, 48,759 (Aug. 12, 2012) (citing Taylor v. Sturgell, 553 U.S. 880
`(2008)). “A common consideration is whether the non-party exercised or
`could have exercised control over a party’s participation in a proceeding.”
`77 Fed. Reg. at 48,759 (citing Taylor, 553 U.S. at 895). “The concept of
`control generally means that ‘it should be enough that the nonparty has the
`actual measure of control or opportunity to control that might reasonably be
`expected between two formal coparties.’” Id. (quoting CHARLES WRIGHT, ET
`AL., 18A FED. PRAC. & PROC. §§ 4449, 4451 (2d ed. 2011)).
`Regarding whether BOM exercises any control over BOTL in this
`proceeding, Regal contends that because Mr. Zhang is the General Manager
`of BOTL and BOM, “such control exists.” Prelim. Resp. 10 (citing Paper 2;
`Ex. 2004). Regal identifies no other evidence to support its contention. In
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`response, BOTI also contends that: the Petition was not filed by or at the
`behest of BOM; BOM had no involvement in the preparation of the Petition;
`BOM exercises no control and cannot exercise control over the Petition or
`this proceeding; BOM has not funded and will not fund any aspect of these
`proceedings; and BOM does not control BOTI or ZBOM. Reply 4. BOTI
`argues that BOTL and BOM “are completely separate and distinct legal
`entities” and that they “do not control one another.” Reply 4–5. BOTI relies
`upon testimony from Mr. Terry Zhang in his capacity as President of BOM
`and General Manager of BOTL and testimony from lead counsel. Id. (citing
`Ex. 1010 ¶¶ 14–20; Ex. 1011 ¶¶ 3–25; Ex. 1012 ¶¶ 3–22). This evidence is
`uncontroverted at this stage of the proceeding.
`Based on the record currently before us, Regal has failed to establish a
`sufficient level of control or participation in the proceeding by BOM to
`justify a finding that BOM should be named as an RPI. Accordingly,
`Regal’s argument that the Petition must be denied because BOM is not
`identified as an RPI is unpersuasive. The issue is not foreclosed, however,
`and Regal may seek discovery of evidence on the issue during the trial if it
`so desires.
`3. BOM HK
`Regal argues that the identification of BOM HK on “customs import
`records” reveals that “BOM HK has and does import thousands of the
`products accused of infringement in the district-court action.” Surreply 5–6
`(citing Ex. 2010 (customs record with part numbers of items imported);
`Ex. 1007 (identifying accused items by part number)). Regal apparently
`implies that BOM HK must be an RPI because it is an entity that “desires
`review of the patent.” As explained above in connection with BOM, Regal’s
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`argument is unpersuasive as hinging on an incorrect legal standard for
`determining whether an entity is an RPI.
`Regal also argues that BOM HK must be named as an RPI because it
`is wholly owned by ZBOM (an RPI) and it wholly owns BOTL (Petitioner)
`and BOM. Surreply 5–6. Regal cites testimony from Mr. Zhang as
`establishing the corporate relationships among ZBOM, BOM HK, BOTL,
`and BOM. Id. (citing Ex. 1011; Ex. 1012). Our review of Mr. Zhang’s
`testimony supports Regal’s characterization of BOM HK as a corporate
`entity that is wholly owned by ZBOM and that wholly owns each of BOTL
`and BOM. See Ex. 1011 ¶ 18 (regarding corporate relationships among
`BOTL, BOM HK, and ZBOM); Ex. 1012 ¶ 13 (regarding corporate
`relationships among BOM, BOM HK, and ZBOM). Regal also argues that
`because BOM HK is an “intervening (wholly owned)” entity, it must be
`named as an RPI. Surreply 6 (citing Amazon.com, Inc. v. Appistry, Inc.,
`IPR2015-00480, slip op. at 4–6 (PTAB July 13, 2015) (Paper 18)).
`To the extent that Regal argues that the Amazon decision demands that
`all intervening wholly owned entities must be named as an RPI, we disagree.
`In Amazon, the named RPIs, Amazon.com, Inc. (“Amazon”) and Amazon
`Web Services, Inc. (“AWS”) failed to name as RPIs two intervening wholly
`owned corporations. Amazon, IPR2015-00480, at 4–5. Patent Owner,
`Appistry, Inc., argued that these intervening corporations necessarily
`exercised control over AWS in the proceedings. Id. The panel agreed that
`Appistry had reasonably brought into question whether Amazon and AWS
`had met its obligation to name all RPIs and invited Amazon and AWS to
`supply evidence regarding the degree to which the unnamed entities
`controlled or participated in the proceedings. Amazon and AWS provided no
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`evidence, and the panel found that the only evidence of record justified
`denying the Petition for failure to name RPIs.
`Here, BOTI does provide evidence relating to whether BOM HK
`participates in or controls any aspect of the Petition. Specifically, BOTI
`contends that:
`(1) neither Petition was prepared at the behest of BOM
`HK; (2) BOM HK had no involvement with any decisions
`regarding the Petitions; (3) BOM HK has not exercised and will
`not exercise any control over the Petitions; (4) BOM HK has not
`funded the Petitions; (5) there are no agreements between BOT,
`ZBOM or BOM HK regarding the Petitions; and (6) BOM HK
`does not exercise control over BOT.
`BOM HK Resp. 2. BOTI relies upon testimony from Mr. Zhang to support
`each of its factual contentions listed above. Id. (citing Ex. 1016 ¶¶ 6–8, 10–
`13, 15). Mr. Zhang also testifies that BOM HK and BOTL are separate legal
`entities. Ex. 1016 ¶¶ 3–5. Mr. Zhang’s testimony is uncontroverted
`evidence at this stage of the proceeding.
`As previously explained, the legal standard for determining whether
`an entity is an RPI in an AIA proceeding focuses on whether that entity
`“exercised or could have exercised control over a party’s participation in a
`proceeding.” Based on the record currently before us, Regal has failed to
`establish a sufficient level of control or participation in the proceeding by
`BOM HK to justify a finding that BOM HK should be named as an RPI.
`Accordingly, Regal’s argument that the Petition must be denied because
`BOM HK is not identified as an RPI is unpersuasive. The issue is not
`foreclosed, however, and Regal may seek discovery of evidence on the issue
`during the trial if it so desires.
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`C. THE CHALLENGES TO THE CLAIMS
`BOTI challenges the patentability of claims 11 and 12 on the grounds
`that the claims are either anticipated or obvious. “A claim is anticipated
`only if each and every element as set forth in the claim is found, either
`expressly or inherently described, in a single prior art reference.” Verdegaal
`Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). The
`Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398
`(2007), reaffirmed the framework for determining obviousness as set forth in
`Graham v. John Deere Co., 383 U.S. 1 (1966). The KSR Court summarized
`the four factual inquiries set forth in Graham that we apply in determining
`whether a claim is reasonably likely to be unpatentable as obvious under
`35 U.S.C. § 103(a) as follows: (1) determining the scope and content of the
`prior art, (2) ascertaining the differences between the prior art and the claims
`at issue, (3) resolving the level of ordinary skill in the pertinent art, and
`(4) considering objective evidence indicating obviousness or
`nonobviousness. KSR, 550 U.S. at 406. With these standards in mind, we
`address each challenge below.
`1. Claims 11 and 12:
`Anticipation and Obviousness in View of Conner
`BOTI contends that Conner anticipates or renders obvious claims 11
`and 12. BOTI explains in detail the manner in which Conner describes
`every element of claims 11 and 12. Pet. 15–24 (citing Ex. 1003, 3:31–36,
`4:14–16, 4:30–32, 4:36–37, 4:41–43, 5:43–6:64, Figures 1–5). BOTI also
`relies upon testimony of Dr. Roger Fales to support its contentions. Id.
`(citing Ex. 1002 ¶¶ 13–16, 24, 25, 28–31). BOTI presents its contentions
`graphically in the comparison of a portion of Figure 7 from the ’358 patent
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`with a portion of Conner’s Figure 3,
`both of which are annotated with
`color and reproduced at right.
`Pet. 17. In these figures, BOTI
`identifies the claimed first set of
`blades in blue, the second set of
`blades in green, and the back plate
`in red. Id. BOTI also identifies the
`claimed motor, shaft, and impeller
`mounted on the shaft, as Conner’s
`motor 32, shaft 36, and blower fan
`20 respectively. Id. at 18–20. Regal
`does not respond to BOTI’s
`contentions that Conner describes every element of claims 11 and 12. See
`generally Prelim. Resp. (not addressing merits of BOTI’s challenges to
`patentability of claims 11 and 12).
`Upon consideration of BOTI’s argument and evidence, we determine
`that BOTI has demonstrated a reasonable likelihood of establishing that
`Conner anticipates claims 11 and 12.
`BOTI alternatively contends that Conner renders claims 11 and 12
`unpatentable as obvious. Pet. 23–24. We exercise our discretion under
`37 C.F.R. § 42.108 and also institute inter partes review of these claims for
`this challenge. By exercising our discretion in this regard, we seek to
`achieve a final resolution of the dispute between the parties at the Board.
`See Intex Recreation Corp. v. Bestway Inflatables & Material Corp., Case
`No. IPR2016-00180, 2016 WL 8377184, at *3–5 (PTAB Jun. 6, 2016)
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`(exercising discretion to institute on all challenged claims after determining
`reasonable likelihood that at least one claim is unpatentable). We note,
`however, that the burden remains on BOTL to demonstrate unpatentability.
`See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378
`(Fed. Cir. 2015).
`2. Claims 11 and 12:
`Anticipation and Obviousness in View of Wollaber
`BOTI contends that Wollaber anticipates or renders obvious claims 11
`and 12. BOTI explains in detail the manner in which Wollaber describes
`every element of claims 11 and 12. Pet. 24–30 (citing Ex. 1004, 1:8–10,
`2:59–60, 3:29–33, 4:52, Figures 1, 3, 4). BOTI also relies upon testimony of
`Dr. Fales to support its contentions. Id. (citing Ex. 1002 ¶¶ 17–24, 26–31).
`BOTI presents its contentions graphically in the comparison of a portion of
`Figure 7 from the ’358 patent with a portion of Wollaber’s Figure 4 (flipped
`horizontally to facilitate
`comparison), both of which are
`annotated with color and reproduced
`at right. Pet. 27. In these figures,
`BOTI identifies the claimed first set
`of blades in blue, the second set of
`blades in green, and the back plate
`in red. Id. BOTI also identifies the claimed motor, shaft, and impeller
`mounted on the shaft, as Wollaber’s motor 72, shaft 74, and blower 52
`respectively. Id. at 27–28. Regal does not respond to BOTI’s contentions
`that Wollaber describes every element of claims 11 and 12. See generally
`Prelim. Resp. (not addressing merits of BOTI’s challenges to patentability of
`claims 11 and 12).
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`Upon consideration of BOTI’s argument and evidence, we determine
`that BOTI has demonstrated a reasonable likelihood of establishing that
`Wollaber anticipates claims 11 and 12.
`BOTI also contends that Wollaber alone renders claims 11 and 12
`unpatentable as obvious. Pet. 29–30. We exercise our discretion under
`37 C.F.R. § 42.108 and also institute inter partes review of these claims for
`this challenge for the reasons expressed in Part II.C.1 above. We note,
`however, that the burden remains on BOTL to demonstrate unpatentability.
`See Dynamic Drinkware, 800 F.3d at 1378.
`3. Claims 11 and 12:
`Obviousness in View of Conner and Wollaber
`BOTI contends that it would have been obvious for an ordinarily
`skilled artisan to have combined teachings of Conner and Wollaber to “come
`up with the identical solution as set forth and claimed in at least Challenged
`Claims 11 and 12.” Pet. 30. However, BOTI fails to identify sufficiently
`how or why an ordinarily skilled artisan would have combined teachings
`from Conner and Wollaber or which elements of Conner or Wollaber would
`have been selected to “come up with the identical solution.” See id. at 30–
`32. BOTI relies upon the similarity of the problems being addressed by
`Conner and Wollaber as the reason that an ordinarily skilled artisan would
`have been motivated to combine teachings from these references. Id. at 31.
`It is apparent that BOTI’s allegation of obviousness over the combination of
`Conner and Wollaber is a placeholder. We find that BOTI has failed to set
`forth this challenge in accordance with its obligations to identify “[h]ow the
`. . . claim is unpatentable . . . . [and] where each element is found in the prior
`art” as required under 37 C.F.R. § 42.104(b)(4). BOTI’s failure to provide
`details underlying its challenge based on the combination of Conner and
`
`16
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`IPR2017-00803
`Patent 6,318,358 B1
`
`Wollaber prevents us from determining that BOTI demonstrated a
`reasonable likelihood of establishing that the combination of Conner and
`Wollaber renders claims 11 and 12 unpatentable as obvious. Accordingly,
`we do not institute inter partes review of claims 11 and 12 as obvious over
`Conner and Wollaber.
`
`III. CONCLUSION
`For the reasons expressed above, we determine that the information in
`the Petition demonstrates a reasonable likelihood of showing that the
`challenged claims are unpatentable on the first four of the five challenges to
`patentability listed in the Table in Part I.A above. This Decision does not
`reflect a final determination on the patentability of any claim.
`IV. ORDER
`For the reasons given, it is:
`ORDERED that inter partes review is instituted of claims 11 and 12
`of the ’358 patent with respect to the following grounds of unpatentability:
`(1) Conner anticipates claims 11 and 12 under 35 U.S.C. § 102(b);
`(2) Conner renders claims 11 and 12 unpatentable as obvious under
`35 U.S.C. § 103;
`(3) Wollaber anticipates claims 11 and 12 under 35 U.S.C. § 102(b);
`(4) Wollaber renders claims 11 and 12 unpatentable as obvious under
`35 U.S.C. § 103;
`FURTHER ORDERED that inter partes review is not instituted with
`respect to any other grounds of unpatentability alleged in the Petition;
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter
`partes review of the ʼ358 patent is instituted commencing on the entry date
`
`17
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`
`
`IPR2017-00803
`Patent 6,318,358 B1
`
`of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4,
`notice is given of the institution of a trial; and
`FURTHER ORDERED that the Petition is hereby corrected pursuant
`to 37 C.F.R. § 42.104(c) to identify Broad Ocean Technologies, LLC as the
`petitioner as of the original filing date.
`
`18
`
`
`
`IPR2017-00803
`Patent 6,318,358 B1
`
`PETITIONER:
`
`David Roodman
`Robert G. Lancaster
`Emma Harty
`Daniel A. Crowe
`BRYAN CAVE LLP
`daroodman@bryancave.com
`rglancaster@bryancave.com
`emma.harty@bryancave.com
`dacrowe@bryancave.com
`
`PATENT OWNER:
`
`Alan H. Norman
`Anthony F. Blum
`THOMPSON COBURN LLP
`anorman@thompsoncoburn.com
`ablum@thompsoncoburn.com
`
`19
`
`
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