Trials@uspto.gov
`571.272.7822
`
`
`
`
`
` Paper No. 29
`March 18, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`POWER-PACKER NORTH AMERICA, INC.
`d/b/a GITS MANUFACTURING CO.,
`Petitioner,
`v.
`G.W. LISK CO., INC.,
`Patent Owner.
`____________
`
`Case IPR2017-02035
`Patent 6,601,821 B2
`____________
`
`
`Before BART A. GERSTENBLITH, GEORGE R. HOSKINS, and
`TIMOTHY J. GOODSON, Administrative Patent Judges.
`
`GERSTENBLITH, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a); 37 C.F.R. §42.73
`
`
`
`
`
`
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`

`

`IPR2017-02035
`Patent 6,601,821 B2
`
`
`I.
`
`INTRODUCTION
`
`Background
`
`Power-Packer North America, Inc. d/b/a GITS Manufacturing Co.
`(“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting institution of inter
`partes review of claims 12–22 of U.S. Patent No. 6,601,821 B2 (Ex. 1101,
`“the ’821 patent”). G.W. Lisk Company, Inc. (“Patent Owner”) filed a
`Preliminary Response (Paper 6). The Petition asserts the following grounds:
`Claim(s)
`challenged
`12–22
`19
`19
`12, 13, and 16–18
`12–22
`
`Ground
`1
`2
`3
`4
`5
`
`Reference(s)
`Martin1
`Martin
`Martin and Oleksiewicz2
`Eggers3
`Eggers and Martin
`
`Basis
`§ 102
`§ 103(a)
`§ 103(a)
`§ 102
`§ 103(a)
`
`Pet. 3.
`We instituted an inter partes review of all claims challenged in the
`Petition, but on only a subset of the asserted grounds—Grounds 1 and 4.
`See Paper 7, 40 (“Dec. on Inst.”). Specifically, we determined based on the
`preliminary record that Petitioner had demonstrated a reasonable likelihood
`of prevailing in all of its challenges, except for the challenges to claim 19 in
`Grounds 2 and 3 and claims 12–22 in Ground 5. Id. at 28–30, 36–40. In
`accordance with the Board’s practice at that time, we instituted review only
`
`
`1 U.S. Patent No. 4,201,116, issued May 6, 1980 (Ex. 1102, “Martin”).
`2 U.S. Patent No. 6,006,732, issued Dec. 28, 1999 (Ex. 1107,
`“Oleksiewicz”).
`3 German Published Examined Application No. 1268494, published May 16,
`1968 (Ex. 1103). Exhibit 1104 (“Eggers”) is the English-language
`translation, and also includes a certificate of translation.
`
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`IPR2017-02035
`Patent 6,601,821 B2
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`on the challenges for which Petitioner showed a reasonable likelihood of
`prevailing. Subsequently, pursuant to SAS Institute, Inc. v. Iancu, 138 S. Ct.
`1348, 1355–57 (2018),4 we modified the Decision on Institution to institute
`review of all grounds and claims presented in the Petition. Paper 9.
`After institution of trial, Patent Owner filed a Patent Owner Response
`(Paper 15, “PO Resp.”), and Petitioner filed a Reply (Paper 22, “Reply”).
`Petitioner supports its arguments with a declaration by Mr. Thomas J. Labus,
`dated August 30, 2017 (Ex. 1105, “the Labus Declaration”). Patent Owner
`supports its Response with a declaration by Dr. Kevin C. Craig, dated
`June 22, 2018 (Ex. 2103, “Second Craig Declaration”).5 Patent Owner
`submitted a Motion for Observations on Cross-Examination of Kevin C.
`Craig, Ph.D. (Paper 24), and Petitioner submitted a Response to Patent
`Owner’s Motion for Observations (Paper 25). Oral argument was held on
`December 12, 2018, a transcript of which is included in the record.6
`Paper 28 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. Petitioner bears the burden
`of proving unpatentability of the challenged claims, and the burden of
`persuasion never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l
`
`
`4 See also “Guidance on the Impact of SAS on AIA Trial Proceedings”
`(April 26, 2018), available at https://www.uspto.gov/patents-application-
`process/patent-trial-and-appeal-board/trials/guidance-impact-sas-aia-trial
`(explaining that a decision granting institution will institute on all challenged
`claims and on all grounds presented in a petition).
`5 Patent Owner previously submitted a declaration by Dr. Craig (Ex. 2101,
`“First Craig Declaration”) with its Preliminary Response and continues to
`rely on the First Craig Declaration in support of its Response. See, e.g., PO
`Resp. 30 (citing Ex. 2101, 13–14).
`6 We held oral argument in this case contemporaneously with oral argument
`in related case IPR2017-02034, creating a single transcript for both cases.
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`Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To prevail, Petitioner
`must prove unpatentability by a preponderance of the evidence. See 35
`U.S.C. § 316(e); 37 C.F.R. § 42.1(d). This Final Written Decision is issued
`pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons that
`follow, we determine that Petitioner has shown by a preponderance of the
`evidence that claims 12, 13, 16–18, and 20–22 of the ’821 patent are
`unpatentable, but has not shown by a preponderance of the evidence that
`claims 14, 15, and 19 are unpatentable. See 35 U.S.C. § 316(e).
`
`Related Proceedings
`
`The ’821 patent is the subject of an action between the parties in G.W.
`Lisk Co. v. GITS Manufacturing Co., No. 17-cv-00273 (S.D. Iowa). Pet. 74;
`Paper 4, 2. Additionally, Petitioner challenges the patentability of claims 1–
`11 of the ’821 patent in IPR2017-02034. Paper 4, 2.
`
`Real Parties in Interest
`
`The Petition identifies “Actuant Corporation and Power-Packer North
`America, Inc. d/b/a GITS Manufacturing Co.” as the real parties in interest.
`Pet. 74. Patent Owner identifies itself, “G.W. Lisk Company, Inc.,” as the
`sole real party in interest. Paper 4, 2.
`
`The ’821 Patent
`
`The ’821 patent is directed to “[a] two-stage proportional control
`valve assembly [that] regulates flow of a first fluid such as an engine exhaust
`gas using a second fluid such as engine oil for power.” Ex. 1101, [57]. The
`’821 patent explains that the two-stage proportional flow control valve
`assembly is “particularly useful for regulating exhaust flow rates in exhaust
`gas re-circulating systems of internal combustion engines.” Id. at 1:29–32.
`In short, exhaust gas recirculating valves divert metered amounts of exhaust
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`IPR2017-02035
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`gas to intake manifolds where exhaust gas is mixed with fresh air/fuel
`mixtures before being re-burned by the engine. Id. at 1:19–22. This
`recirculating process results in a lowering of combustion temperature and
`reduction of harmful compounds, thus lowering harmful emissions. Id. at
`1:16–19, 1:22–25.
`Figure 2 of the ’821 patent is reproduced below:
`
`
`Figure 2 of the ’821 patent is a side, cross-sectional view through an
`exemplary exhaust gas re-circulation valve. Id. at 3:42–44.
`As shown in Figure 2, two-stage proportional control valve
`assembly 10 has housing 12 that can be attached to an internal combustion
`engine exhaust manifold 16. Id. at 3:50–55. Within housing 12 is exhaust
`valve 20 and four-way servovalve 22 interconnected in succession by
`double-acting cylinder 24 and feedback compression spring 26. Id. at 3:55–
`58. Exhaust valve 20 regulates flows between two exhaust gas inlet
`passages 30 and 32 and a combined exhaust gas outlet passage 34 formed
`within housing 12. Id. at 3:61–63. Exhaust gas outlet passage 34 directs a
`metered flow of the exhaust gases toward an engine inlet manifold (not
`shown in Figure 2). Id. at 3:65–67. Flows between exhaust gas inlet
`
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`IPR2017-02035
`Patent 6,601,821 B2
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`passages 30 and 32 and combined exhaust gas exhaust outlet passage 34 are
`interrupted by a dual poppet head body 36. Id. at 4:1–4.
`The ’821 patent explains the following with respect to the operation of
`the two-stage proportional control valve assembly:
`A solenoid 116, which functions as an electrical force
`motor actuator, pushes the spool 82 against the feedback
`compression spring 26 through a limited range of travel. A
`coil 118 powered by a range of electrical currents regulated by
`an electronic control module (ECM) 120 generates a magnetic
`force on an armature 122, which is moveable along the central
`axis 38 within a solenoid guide bore 124. An actuator rod 126
`passing through an armature stop 128 connects the armature 122
`to the spool 82.
`. . . .
`Applying current to the solenoid 116 above a given take-
`off current moves the spool 82 away from the armature stop 128
`and further compresses the feedback spring 26. . . . At the
`actuated position, the annular recess 96 connects the supply
`passage 84 to the working passage 88 for charging the cylinder
`chamber 66, and the radial bore 102 connects the axial bore 90
`to the return passage 86 for discharging the cylinder chamber 68.
`The accumulating pressure in the cylinder chamber 66
`produces a hydraulic force against a distal face 134 of the piston
`head 62 that moves the piston head 62 together with the dual
`poppet head body 36 in a direction that compresses the feedback
`spring 26 and opens the exhaust valve 20.
`. . . .
`The minimum actuating force of the solenoid 116 (i.e., the
`takeoff current) required for opening the exhaust valve 20
`compresses the feedback spring 26 by an amount that moves the
`spool 82 just beyond the neutral position. The counter-acting
`hydraulic force generated by the double-acting cylinder 24
`moves the piston head 62 and with it the dual poppet head
`body 36 by an amount required to return the spool 82 to the
`neutral position. The exhaust valve 20 opens by the amount the
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`IPR2017-02035
`Patent 6,601,821 B2
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`
`feedback spring 26 is compressed by the movement of the
`spool 82 beyond the neutral position.
`. . . .
`The change in position of the piston head 62 along with
`the dual poppet head body 36 can be far beyond the limited range
`of spool travel and is substantially proportional to the change in
`the solenoid actuating force.
`Id. at 4:65–6:23.
`
`Illustrative Claim
`
`Claims 12 and 20 are the independent claims challenged in this
`proceeding and are reproduced below:
`12. A method of controlling flow rates of a first fluid utilizing
`fluid pressure supplied by a second fluid comprising the steps of:
`converting an electrical signal into a force imparted to a
`directional valve that controls a flow of the second fluid to a
`double-acting actuator;
`moving the directional valve in response to the force
`converted from the electrical signal between a first position that
`directs a flow of the second fluid to a first surface of the double
`acting actuator and a second position that directs a flow of the
`second fluid to a second surface of the double-acting actuator;
`providing feedback between the double-acting actuator
`and the directional valve that overcomes the force imparted to
`the directional valve and restores the directional valve to a
`neutral position at which differential flows of the second fluid to
`the first and second surfaces are blocked;
`moving the double-acting actuator through a range of
`positions corresponding to different amounts of the feedback
`between the double-acting actuator and the directional valve at
`the neutral position of the directional valve; and
`linking movement of the double-acting actuator to
`movement of a flow-regulating valve that controls flow rates of
`the first fluid for changing flow rates of the first fluid through the
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`IPR2017-02035
`Patent 6,601,821 B2
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`
`flow-regulating valve in response to changes in the electrical
`signal.
`20. A proportional control valve for regulating movement of a
`device comprising:
`a double-acting actuator movable under the influence of
`fluid power;
`the double-acting actuator being connected to the device
`for imparting corresponding movements to the device;
`the double-acting actuator having
`(a) a first surface arranged for exposure to fluid
`pressure for imparting movement to the double-acting
`actuator in a first direction and
`(b) a second surface arranged for exposure to fluid
`pressure for imparting movement to the double-acting
`actuator in a second direction;
`a directional valve that regulates flows of fluid to and from
`the first and second surfaces of the double-acting actuator;
`an electrical actuator that converts a control signal into a
`force acting on the directional valve;
`the directional valve being movable under influence of the
`electrical actuator between
`(a) a first position that directs flows of fluid to the
`first surface of the double-acting actuator and away from
`the second surface of the double-acting actuator for
`moving the double-acting actuator in the first direction,
`(b) a second position that directs flows of fluid to
`the second surface of the double-acting actuator and from
`the first surface of the double-acting actuator for moving
`the double-acting actuator in the second direction, and
`(c) a neutral position that blocks differential flows
`of fluid to and from the first and second surfaces of the
`double-acting actuator for preventing further movement of
`the double-acting actuator in the first and second
`directions;
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`IPR2017-02035
`Patent 6,601,821 B2
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`
`a feedback mechanism connecting the double-acting
`actuator to the directional valve for imparting a feedback force
`in response to movement of the double-acting actuator that
`restores the directional valve to a neutral position;
`a spacing between the double-acting actuator and the
`directional valve being related to the feedback force; and
`the feedback force being related to the force converted
`from the electrical signal for regulating movement of the device
`in accordance with the control signal.
`Ex. 1101, 8:36–64, 9:23–10:18.
`
`II.
`LEVEL OF ORDINARY SKILL IN THE ART
`Petitioner initially contended that a person of ordinary skill in the art
`would have had “at least a bachelor’s degree in mechanical engineering, or
`equivalent, with at least five years of professional work experience in the
`design of hydraulic and/or pneumatic devices.” Pet. 13 (citing Ex. 1105
`¶ 5). Patent Owner initially contended that a person of ordinary skill in the
`art would have had “at least a B.S. degree in mechanical engineering, or an
`equivalent field of study, with at least five years of professional work
`experience in the characterization and use of hydraulic and/or pneumatic
`devices.” Prelim. Resp. 10 (citing Ex. 2101, 3, 4). Both parties represented
`that advanced qualifications in either education or experience could
`compensate for a deficit in the other. Pet. 13; Prelim. Resp. 10.
`In the Decision on Institution, we recognized that the difference in the
`parties’ proposed level of ordinary skill in the art is in the type of work
`experience required. Dec. on Inst. 17. We did not view professional work
`experience in the use of such devices as completely distinct from
`professional work experience in the design of such devices because one
`working with or characterizing such devices would acquire some knowledge
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`of their design. Id. at 18. Consistent with the level of ordinary skill in the
`art reflected by the prior art of record, we adopted a combination of the
`parties’ positions as to the level of ordinary skill in the art in the Decision on
`Institution, determining that the ordinary level of skill in the art encompasses
`the characterization, use, and/or design of hydraulic and/or pneumatic
`devices. Id. at 18 (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed.
`Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re
`Oelrich, 579 F.2d 86, 91 (CCPA 1978)).
`In Patent Owner’s Response and Petitioner’s Reply, the parties agree
`with our preliminary finding regarding the level of ordinary skill in the art in
`the Decision on Institution. PO Resp. 12; Reply 2. Accordingly, we
`maintain our finding that a person of ordinary skill in the art at the time of
`the ’821 patent would have at least a B.S. degree in mechanical engineering
`or an equivalent field, and at least five years of professional work experience
`in the characterization, use, and/or design of hydraulic and/or pneumatic
`devices. See Dec. on Inst. 18.
`
`III. CLAIM CONSTRUCTION
`In an inter partes review based on a petition filed prior to
`November 13, 2018, claim terms in an unexpired patent are construed
`according to their broadest reasonable interpretation in light of the
`specification of the patent in which they appear. See 37 C.F.R. § 42.100(b)
`(2017);7 Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016).
`
`
`7 A recent amendment to this rule does not apply here because the Petition
`was filed before November 13, 2018. See Changes to the Claim
`Construction Standard for Interpreting Claims in Trial Proceedings Before
`the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018)
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`There is a presumption that claim terms are given their ordinary and
`customary meaning, as would be understood by a person of ordinary skill in
`the art in the context of the specification. See In re Translogic Tech. Inc.,
`504 F.3d 1249, 1257 (Fed. Cir. 2007). Nonetheless, if the specification
`“reveal[s] a special definition given to a claim term by the patentee that
`differs from the meaning it would otherwise possess[,] . . . the inventor’s
`lexicography governs.” Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed.
`Cir. 2005) (en banc) (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d
`1359, 1366 (Fed. Cir. 2002)). Another exception to the general rule that
`claims are given their ordinary and customary meaning is “when the
`patentee disavows the full scope of a claim term either in the specification or
`during prosecution.” Uship Intellectual Props., LLC v. United States, 714
`F.3d 1311, 1313 (Fed. Cir. 2013) (quoting Thorner v. Sony Comput. Entm’t
`Am., LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)). Additionally, only terms
`that are in controversy need to be construed, and these need be construed
`only to the extent necessary to resolve the controversy. See Vivid Techs.,
`Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`In the Decision on Institution, we considered five claim terms
`disputed by the parties: “proportional control valve,” “first fluid,” “second
`fluid,” “flow-regulating valve,” and “directional valve.” Dec. on Inst. 8–15.
`
`“proportional control valve” (claim 20)
`
`The preamble of claim 20 recites “[a] proportional control valve.”
`Ex. 1101, 9:23. Petitioner initially argued the preamble is not limiting.
`Pet. 16–17. During oral argument, Petitioner indicated it does not contest
`
`
`(amending 37 C.F.R. § 42.100(b) effective Nov. 13, 2018) (to be codified at
`37 C.F.R. pt. 42).
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`the Decision on Institution’s preliminary finding that the term “proportional”
`is limiting. Tr. 8:13–16. Thus, the parties now agree the term
`“proportional,” recited in the preamble of claim 20, is limiting. See, e.g., PO
`Resp. 14–19 (discussing the meaning of “proportional”).
`Petitioner contends “a ‘proportional’ valve should be construed to
`mean ‘a valve that moves in proportion with an input.’” Pet. 16. Petitioner
`points to the specification, asserting that it describes regulating valve
`position in a manner either “proportional to the control signal” or
`“proportional to the change in the solenoid actuating force.” Id. at 16–17
`(citing Ex. 1101, 1:53–55, 6:20–23). Petitioner asserts that one of ordinary
`skill in the art would have understood that “a ‘control signal’ and a ‘solenoid
`actuating force’” are each “a type of input that can be used for controlling
`valve position.” Id. at 17 (citing Ex. 1105 ¶ 17).
`In its Preliminary Response, Patent Owner argues that Petitioner’s
`construction is unreasonably broad. Prelim. Resp. 14. Patent Owner
`contends that the ’821 patent “interchangeably refers to the changes in
`position of the flow-regulating valve being proportional to the ‘control
`signal’ or to the ‘solenoid actuating force.’” Id. at 15. Patent Owner asserts
`that one of ordinary skill in the art would understand that the terms “‘control
`signal’ and ‘solenoid actuating force’ both refer to the amount of current
`supplied to the solenoid.” Id. (citing Ex. 2101, 13). Thus, Patent Owner
`contends that a “proportional” valve should be construed as “a valve
`‘controlled relative to the strength of an electrical control signal of varying
`current.’” Id. (citing Ex. 2101, 13).
`In the Decision on Institution, we determined the recitation of
`“proportional” in the preamble of claim 20 is limiting and that its plain and
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`ordinary meaning is “corresponding to.” Dec. on Inst. 12–13; see id. at 13
`n.2 (relying, in part, on Merriam Webster’s online dictionary definition of
`“proportional”).
`In its Response, Patent Owner contends our preliminary construction
`of “proportional” is too broad, essentially rendering the term meaningless,
`because “every movement of any mechanical device ‘corresponds to’ an
`input, whether that input be an electrical signal or a mechanical force.” PO
`Resp. 15 (citing Ex. 2103 ¶ 32). Patent Owner appears to agree, however,
`with our observation from the Decision on Institution that the term
`“proportional” does not, on its own, explain what specifically corresponds in
`size, degree or intensity to what. Id. at 16 (“As the Board acknowledged,
`however, the term ‘proportional’ on its own does not explain what
`specifically corresponds in size, degree or intensity to what.”); see Dec. on
`Inst. 13 (stating essentially the same).
`As we did in the Decision on Institution, Patent Owner turns to the
`body of claim 20 and the recitation of “an electrical actuator that converts a
`control signal into a force acting on the directional valve; the directional
`valve being movable under influence of the electrical actuator.” PO
`Resp. 16 (quoting Ex. 1101, 9:40–43). Patent Owner contends
`the quoted language from claim 20 shows, both the force applied
`to the directional valve by the electrical actuator (by converting
`the control signal into such force), as well as the resulting
`position of the double-acting actuator, and therefore the position
`of the flow-regulating valve itself, are proportional (i.e.,
`corresponding in size, degree, or intensity) to the control signal.
`Id. at 16–17. Patent Owner additionally points to declaration testimony by
`each party’s expert that stronger or weaker inputs would result in larger or
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`smaller valve movements. Id. at 18 (citing Ex. 1105 ¶ 178; Ex. 2101 ¶ 309).
`Patent Owner argues both experts included in their understanding of
`“proportional” the “concept that the movement of a proportional valve
`would depend on the magnitude or strength of the input to the valve.” Id. at
`18. Thus, Patent Owner proposes “proportional valve” should be construed
`as “a valve ‘having an output which corresponds to the magnitude or
`strength of a control signal, such that a control signal of greater or lesser
`strength results in valve movements of greater or lesser distance,
`respectively.’” Id. at 18–19.
`In its Reply, Petitioner agrees with our preliminary construction of
`“proportional” as “corresponding to.” Reply 2. Petitioner disagrees with
`Patent Owner’s proposed construction limiting “proportional” to
`“corresponding to the ‘strength of a control signal.’” Id. at 3 (citing PO
`Resp. 18) (emphasis added). Rather, Petitioner explains the force acting on
`the directional valve corresponds to the size, degree, or intensity (which
`Petitioner contends necessarily includes strength) of the control signal. Id. at
`3.
`
`Additionally, Petitioner does not agree with Patent Owner’s position
`that our preliminary construction “unreasonably broaden[s] the term . . .
`
`
`8 Patent Owner cites to “Id. at 9,” which corresponds to page 9 of
`Exhibit 2103, the Second Craig Declaration. Patent Owner, however, is
`quoting Mr. Labus’s declaration testimony, which is Exhibit 1105. Thus, we
`understand Patent Owner to cite Exhibit 1105, paragraph 17, which includes
`this quoted testimony.
`9 Patent Owner cites to page 12 of the First Craig Declaration, which, in this
`case is Exhibit 2101, and Patent Owner’s quotation corresponds to
`paragraph 30. See Ex. 2103 ¶ 33 (the Second Craig Declaration including
`the same testimony on this point).
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`such that any valve with an on/off switch would qualify as a proportional
`valve.” Id. at 3. Rather, Petitioner points to language in the body of the
`claim that explains the proportionality relationship between the components
`of the invention, essentially arguing that a valve with a simple on/off switch
`would not satisfy those limitations. Id.
`We remarked in the Decision on Institution that the parties’
`constructions at the preliminary stage of this proceeding were similar in
`several respects. Dec. on Inst. 12. At this stage of the proceeding, however,
`the constructions are even closer to one another than they were at the
`preliminary stage. The only difference is that Patent Owner would limit the
`claimed proportionality to the strength or magnitude of the control signal
`whereas Petitioner would broaden the relationship to include the size,
`degree, or intensity of the control signal, which Petitioner acknowledges
`(Reply 3) includes magnitude and strength.
`The parties recognize we apply the broadest reasonable construction
`in light of the ’821 patent specification. Pet. 13; PO Resp. 13. In light of
`our standard, we determine Patent Owner’s proposed construction is too
`narrow.
`First, neither party argues the ’821 patent specification provides an
`explicit definition of the term “proportional.” Second, aside from expert
`declaration testimony, neither party relies on extrinsic evidence. Thus, in
`the Decision on Institution, we looked to Merriam-Webster’s online
`dictionary, which provides the plain and ordinary meaning of “proportional”
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`as “corresponding to in size, degree, or intensity.”10 In the Decision on
`Institution, we focused on the “corresponding to” portion of the definition,
`as opposed to the “size, degree, or intensity” portion because it did not
`appear, at that stage, to impact the parties’ arguments. A control signal may
`be measured in different ways. In the absence of any explanation or
`evidence from the parties that there are meaningful differences among the
`terms magnitude, intensity, degree, strength, and size in relation to control
`signals, we consider these terms synonymous.
`Claim 20 recites “an electrical actuator that converts a control signal
`into a force acting on the directional valve; the directional valve being
`moveable under influence of the electrical actuator.” Ex. 1101, 9:40–43
`(emphasis added). Thus, the control signal is converted into a force that acts
`on (adjusts) a position of the directional valve. Specifically, the force acting
`on the directional valve is proportional to the control signal. Thus, as the
`control signal increases in size, degree, or intensity (or strength or
`magnitude), so too does the force acting on the directional valve.
`This understanding is consistent with the ’821 patent specification’s
`description of control signal and solenoid actuating force. See, e.g.,
`Ex. 1101, 2:8–12 (the “electrical actuator preferably in the form of a
`proportional solenoid under control of the electronic control module (ECM)
`converts the control signals of varying current into proportional forces
`imparted by an armature against the spool along the central axis”). Thus, the
`
`
`10 See, e.g., MERRIAM-WEBSTER, available at https://www.merriam-
`webster.com/dictionary/proportional (defining “proportional” as
`“corresponding in size, degree, or intensity”).
`
`16
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`Patent 6,601,821 B2
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`specification links changes in the control signal to changes in force, and
`changes in force to changes in position of the directional valve.
`Accordingly, we maintain our preliminary construction of
`“proportional” as “corresponding to,” in that the force acting on the
`directional valve and consequently the movement of the double-acting
`actuator is proportional to (i.e., corresponds to) the control signal.
`Additionally, we further clarify that the force acting on the directional valve
`and the movement of the directional valve correspond in size, degree, or
`intensity to the control signal. In other words, a stronger signal (or whatever
`modifier one uses to describe the control signal (e.g., greater, higher, more
`intense, etc.)) corresponds to a stronger force (or whatever modifier one uses
`to describe the force (e.g., greater, higher, more intense, etc.)), which in turn
`corresponds to moving the directional valve a greater distance.11
`
`“first fluid” and “second fluid” (claim 12)
`
`Petitioner contends “fluid” includes “liquids and gases,” and that
`“‘first fluid’ and ‘second fluid’ should be interpreted to mean two separate
`
`
`11 We recognize an unintended consequence of our omission of the full plain
`and ordinary meaning of “proportional” (i.e., not including “of size, degree,
`or intensity” in our preliminary construction) led to Patent Owner’s
`argument that our preliminary construction results in every valve being a
`“proportional valve.” PO Resp. 15. That result was neither intended nor
`consistent with either party’s proposed construction of the term, nor was it
`consistent with the well-understood meaning of a proportional valve as one
`in which there are more options for valve position than simply on and off.
`See, e.g., Ex. 1105 ¶ 17 (“In a proportional valve, in contrast to a discrete
`“on/off” valve, the input and resulting proportional valve movement can be
`adjusted within an operating range between on and off . . . .”); Ex. 2103 ¶ 33
`(“[A] stronger control signal causes a ‘proportional’ valve assembly to move
`a greater distance than does a relatively weaker control signal.”).
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`IPR2017-02035
`Patent 6,601,821 B2
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`fluids and should not be construed to require two different types of fluid.”
`Pet. 14 (citing Ex. 1105 ¶ 10). In the Preliminary Response, Patent Owner
`contends “first fluid” means “a ‘flow rate-regulated fluid,’” specifically “a
`fluid having a flow rate regulated by a ‘flow-regulating valve,’” and “second
`fluid” means “an ‘actuator powering fluid.’” Prelim. Resp. 19, 21.
`In the Decision on Institution, we determined the constructions of
`“first fluid” and “second fluid” need not be limited to the purposes of the
`fluids as the purposes of the fluids are recited expressly in claim 12. Dec. on
`Inst. 14. Rather, we found the first and second fluids are quite simply, two
`fluids; they can be the same type of fluid or they can be different fluids. Id.
`Our preliminary finding resolved the controversy between the parties with
`respect to the application of these terms to the challenges raised by
`Petitioner and, therefore, we did not construe the terms further. Id. (citing
`Vivid Techs., 200 F.3d at 803).
`In its Response, Patent Owner does not challenge our determination
`regarding these terms. See PO Resp. 13–28. Petitioner’s Reply similarly
`does not address these terms in the claim construction discussion. See
`Reply 2–9. Accordingly, we maintain our preliminary determination and
`reiterate that the first and second fluids are simply fluids that can be the
`same type of fluid or different fluids.
`
`“flow-regulating valve” and “directional valve”12
`
`One of the biggest disagreements between in the parties in this case is
`the meaning of the terms “flow-regulating valve” and “directional valve.”
`
`
`12 “[F]low-regulating valve” is recited in claim 12 and claims 13–19, which
`depend therefrom. “[D]irectional valve” is recited in each of the challenged
`claims.
`
`18
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`Because of the importance of these terms to this proceeding, we retrace the
`parties’ arguments and our analysis from the Decision on Institution as well
`as discuss the arguments and evidence provided after institution.
`Patent Owner first proposed in its Preliminary Response that we
`construe these terms. Prelim. Resp. 16–18. Patent Owner proposed “flow-
`regulating valve” means “a valve designed principally for regulating a
`fluid’s flo