Trials@uspto.gov
`571-272-7822
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`Paper: 13
`Date: September 12, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NAVISTAR, INC.,
`Petitioner,
`
`v.
`
`FATIGUE FRACTURE TECHNOLOGY, LLC,
`Patent Owner.
`____________
`
`Case IPR2018-00853
`Patent 7,143,915 B2
`____________
`
`Before LINDA E. HORNER, BENJAMIN D. M. WOOD, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`
`HORNER, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a)
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`IPR2018-00853
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`INTRODUCTION
`I.
`Navistar, Inc. (“Petitioner”) filed a Petition requesting inter partes
`review of claims 1, 7, 9, and 10 of U.S. Patent No. 7,143,915 B2 (Ex. 1001,
`“the ’915 patent”). Paper 1 (“Pet.”). Fatigue Fracture Technology LLC
`(“Patent Owner”) filed a Preliminary Response. Paper 9 (“Prelim. Resp.”).
`We have authority under 35 U.S.C. § 314(a), which provides that an
`inter partes review may not be instituted “unless . . . the information
`presented in the petition . . . 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.” Moreover, a decision to institute under
`35 U.S.C. § 314 may not institute on less than all claims challenged in the
`petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348 (2018).
`Upon consideration of the Petition and the Preliminary Response, we
`conclude the information presented shows there is a reasonable likelihood
`that Petitioner would prevail in showing the unpatentability of at least one
`challenged claim. Accordingly, we authorize an inter partes review to be
`instituted as to all challenged claims of the ’915 patent, i.e., claims 1, 7, 9,
`and 10, on all grounds raised in the Petition. Our factual findings and
`conclusions at this stage of the proceeding are based on the evidentiary
`record developed thus far (prior to Patent Owner’s Response). This is not a
`final decision as to patentability of claims for which inter partes review is
`instituted. Any final decision will be based on the record, as fully developed
`during trial.
`
`A. Related Matters
`The parties indicate that the ’915 patent is asserted in the United
`States District Court for the Northern District of Illinois, in a case captioned
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`Fatigue Fracture Technology, LLC v. Navistar, Inc., Case No. 1:15-cv-5667
`(N.D. Ill.). Petitioner’s Second Updated Mandatory Notices (Paper 7);
`Patent Owner’s Mandatory Notices (Paper 5). The parties also indicate that
`related U.S. Patent No. 7,497,361, which is a divisional of the ’915 patent, is
`the subject of a reexamination proceeding (Appl. No. 90/014,120) before
`this Office. Id.
`
`
`
`B. Real Parties in Interest
`Petitioner identifies only itself as a real party in interest. Pet. 83;
`Paper 7. Patent Owner identifies only itself as a real party in interest.
`Paper 5.
`
`C. The ’915 Patent
`The ’915 patent relates to a method to fracture connecting rods.
`Ex. 1001, 3:3‒4. The patent describes that most known methods for
`fracturing connecting rods apply an outward pressure to the crank bore until
`the generated stresses are high enough to fracture the connecting rod. Id. at
`1:3‒33. The patent teaches that the large magnitude forces required to
`fracture connecting rods made of high strength materials have a negative
`effect on quality of the fractured connecting rod. Id. at 1:39‒43. The patent
`also teaches that such forces cause disadvantages, such as plastic
`deformation, lack of flexibility in adapting the same technique to different
`sizes of connecting rods, repeated breakage of force exertion elements of the
`machine, and poor quality of the fractured connecting rod. Id. at 1:43‒48.
`The ’915 patent recognizes that some fracture methods attempted to
`overcome these difficulties by reducing or weakening the cracking area
`using techniques such as cryogenic cooling and electronic beam hardening.
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`Id. at 1:34‒38. According to the patent, however, these techniques have “a
`deleterious effect on material performance.” Id. at 1:38.
`The process of the ’915 patent uses several small magnitude forces to
`raise the stress intensity factor in the connecting rod up to the fracture point
`to avoid the use of a single large force to fracture the rod. Id. at 3:4‒8. The
`’915 patent describes that this approach eliminates many problems
`associated with the use of large forces and provides better control over the
`fracturing process, because the contribution of each factor is optimized to
`achieve the best results. Id. at 3:8‒11.
`In the method described in the ’915 patent, time varying forces, such
`as harmonic forces, are applied to a pre-notched connecting rod to cause the
`pre-existing crack to grow incrementally depending on the range of
`fluctuation in the stress intensity factor. Id. at 3:16‒20. “[A]s the crack
`grows, the absolute value of the stress intensity factor will increase.” Id. at
`3:22‒24. The ’915 patent describes that the time varying forces are applied
`simultaneously to two sides of the connecting rod and act along a straight
`line parallel to the predetermined fracture plane and perpendicular to the axis
`of the bore cylindrical surface. Id. at 3:54‒58. “The crack extends, and
`fracture may occur, depending on the relative magnitude of stress intensity
`factor and material fracture toughness.” Id. at 3:49‒52. Alternatively, the
`time varying force can be applied in a direction perpendicular to the
`predetermined fracture plane. Id. at 6:41‒44.
`In addition, a primary pre-stressing force can be applied in a direction
`perpendicular to, and away from, the predetermined fracture plane by
`moving an upper jaw of a clamping arrangement away from the fracture
`plane. Id. at 4:3‒7. A secondary pre-stressing force can be applied by two
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`static forces equal in magnitude and acting on the same straight line in
`opposite directions, using the same mechanism used to apply the time
`varying forces. Id. at 4:14‒18. Specifically, two contacts advance until they
`slightly press the part applying the secondary pre-stressing forces, and then
`they move forward and backward applying the time varying forces. Id. at
`4:18‒21. Application of these pre-stressing forces is optional in that
`elimination of these pre-stressing forces is not a departure from the scope of
`the invention. Id. at 6:45‒48.
`The ’915 patent describes that in the process a dynamic force is
`applied at a time instant Tf by increasing the primary pre-stressing force
`suddenly as an impulsive force at Tf, or at a slower rate within a period
`centered on Tf. Id. at 4:35‒38. “The time instant Tf, to be determined by
`performing several simple tests, by applying the fracturing force during
`different cycles at different time instants such as T0 (minimum deformation)
`or Tmax (maximum KI) and comparing the quality of the fractured connecting
`rods.” Id. at 4:38‒43. “[A] longer period before applying the dynamic
`force, increases the fatigue effect [imparted by the time varying force].” Id.
`at 4:55‒56.
`The ’915 patent describes one implementation of the process as
`follows, with reference to Figure 3 reproduced below.
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`Figure 3 shows the external force system used to fracture the connecting rod,
`wherein F1 is the primary pre-stressing force, F2L and F2R are the secondary
`pre-stressing forces, F3L and F3R are the harmonic forces, and F4I and F4D are
`the impulsive and the slow rate dynamic forces, respectively. Id. at 5:15‒19.
`In the exemplary method, first, the connecting rod is clamped in
`position on upper jaw 2 and lower jaw 3, and other elements 6, 7, 8, and 9
`press the connecting rod surface against jaws 2 and 3. Id. at 6:12‒18. The
`rod also is supported at points 10 and 11. Id. at 6:18. Second, pre-stressing
`force F1 is applied by moving upper jaw 2 away from the predetermined
`fracture plane 1E. Id. at 6:22‒23; see Fig. 1. Third, two contacts 4L and 4R
`advance, in opposite directions, to contact sides 1DL and 1DR to apply
`secondary pre-stressing forces F2L and F2R. Id. at 6:24‒26. Fourth, two
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`contacts 4L and 4R move forward and backward, simultaneously, applying
`two harmonic forces F3L and F3R. Id. at 6:27‒29. Fifth, an impulsive
`fracturing force F4I is applied at the time instant Tf, causing a sudden
`increase of F1 and, thus, fracturing the connecting rod. Id. at 6:32‒34.
`D. Illustrative Claim
`Of the challenged claims, claim 1 is the sole independent claim. Each
`of claims 7, 9, and 10 depend directly from challenged claim 1. Claim 1 is
`reproduced below.
`A process for the fracture separation of a part having a
`1.
`cylindrical bore passing therethrough into a first portion and a
`second portion, the cylindrical bore having a central axis, the
`part having two opposed sides proximate to the intersection of a
`predetermined fracture plane passing through the cylindrical
`bore and the part, the process including the steps of:
`a)
`optionally applying at least one pre-stressing force
`to at least one of the first portion, the second portion and said
`sides of said part, said at least one pre-stressing force selected
`from the group compromising [sic]:
`i) a longitudinal pre-stressing force applied to one
`of the first portion and the second portion relative to the
`other of the portion and the second portion, said
`longitudinal pre-stressing force being applied in a
`direction substantially perpendicular to said
`predetermined fracture plane, and
`ii) a lateral pre-stressing force applied to each of
`the opposed sides of the part, each of said lateral
`pre-stressing forces being applied along substantially
`straight line that is substantially parallel to the
`predetermined fracture plane and substantially
`perpendicular to the central axis, where at any time
`instant, each of the lateral pre-stressing forces being
`substantially equal in magnitude and acting opposite in
`direction to one another,
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`applying at least one fatigue force to at least one of
`b)
`the first portion and the second portion, said at least one fatigue
`force being selected from the group comprising:
`i) a longitudinal cyclic force applied to one of the
`first portion and the second portion relative to the other
`of the first portion and the second portion, said
`longitudinal cyclic force being applied in a direction
`substantially perpendicular to said predetermined fracture
`plane, and
`ii) a lateral cyclic force applied to each of the
`opposed sides of the part, each of the said lateral cyclic
`forces being applied along a substantially straight line
`that is substantially parallel to the predetermined fracture
`plane and substantially perpendicular to the central axis,
`where at any time instant, each of said lateral cyclic
`forces being substantially equal in magnitude and acting
`opposite in direction to one another;
`c)
`applying at least one dynamic force to one of the
`first portion and the second portion relative to the other of the
`first portion and the second portion, said at least one dynamic
`force being applied in a direction substantially perpendicular to
`said predetermined fracture plane, said dynamic force being
`applied to fracture the part into the first portion and the second
`portion so as to separate the first portion from the second
`portion substantially along said predetermined plane.
`Ex. 1001, 6:61‒7:45.
`E. Asserted Prior Art and Grounds of Unpatentability
`Petitioner relies on the following prior art references in the presented
`grounds of unpatentability:
`a) Brovold: U.S. Patent No. 4,754,906, issued July 5, 1988, filed in
`the record as Exhibit 1003.
`b) Cavallo: U.S. Patent No. 5,699,947, issued December 23, 1997,
`filed in the record as Exhibit 1004.
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`c) Becker: U.S. Patent No. 5,320,265, issued June 14, 1994, filed in
`the record as Exhibit 1005.
`d) Bayliss: U.S. Patent No. 3,155,300, issued November 3, 1964,
`filed in the record as Exhibit 1006.
`Petitioner challenges the patentability of claims 1, 7, 9, and 10 of the
`’915 patent on each of the following grounds (Pet. 2):
`
`
`
`Ground
`1
`2
`3
`4
`5
`6
`
`7
`8
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`Reference(s)
`
`Statutory Basis
`§ 102(b) or § 103(a) Brovold
`§ 102(b) or § 103(a) Cavallo
`§ 103(a)
`Brovold in view of Cavallo
`§ 103(a)
`Cavallo in view of Brovold
`§ 103(a)
`Brovold in view of Bayliss and/or Becker
`§ 103(a)
`Brovold in view of Cavallo and further in
`view of Bayliss and/or Becker
`Cavallo in view of Bayliss
`Cavallo in view of Brovold and further in
`view of Bayliss
`
`§ 103(a)
`§ 103(a)
`
`Petitioner supports its challenge with a Declaration of Thomas E.
`Brovold, filed as Exhibit 1007 (“Brovold Declaration”).
`In its Preliminary Response, Patent Owner relies on a Declaration of
`Sameh Guirgis, filed as Exhibit 2001 (“Guirgis Declaration”), and a
`Declaration of Sheldon Mostovoy, filed as Exhibit 2036 (“Mostovoy
`Declaration”).
`
`II. ANALYSIS
`A. Level of Ordinary Skill in the Art
`In determining the level of ordinary skill in the art, various factors
`may be considered, including the “type of problems encountered in the art;
`prior art solutions to those problems; rapidity with which innovations are
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`made; sophistication of the technology; and educational level of active
`workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`(internal quotation marks and citation omitted). Petitioner defines the
`relevant field of the invention as “manufacturing techniques for mechanical
`components, including fracturing connecting rods or similar parts.” Pet. 15
`(citing Ex. 1007 ¶ 45). Petitioner proffers, via its declarant Mr. Brovold,
`that a person having ordinary skill in this art would have “a bachelor’s
`degree in mechanical engineering or an equivalent field, and approximately
`1‒2 years of practical experience fracturing connecting rods or similar parts;
`an associate’s degree in mechanical engineering or an equivalent field, and
`approximately 2‒3 years of practical experience fracturing connecting rods
`or similar parts; or equivalent knowledge and experience.” Pet. 15 (citing
`Ex. 1007 ¶¶ 46‒49, 51, 66). Patent Owner does not dispute Petitioner’s
`proffered assessment of the level of ordinary skill in the art.1 For purposes
`of this Decision, we adopt the definition of a person of ordinary skill in the
`art as proposed by Petitioner.
`B. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
`patent in which they appear. 37 C.F.R. § 42.100. Under the broadest
`reasonable interpretation standard, claim terms generally are given their
`ordinary and customary meaning, as would be understood by one of ordinary
`skill in the art in the context of the entire disclosure. See In re Translogic
`
`
`1 In a Joint Claim Construction Chart filed in the related litigation, Petitioner
`and Patent Owner agreed on this same definition of a person of ordinary skill
`in the art. Ex. 1037, 2.
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`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Only those claim terms
`that are in controversy need to be construed, and 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).
`Petitioner and Patent Owner present positions as to the following
`claim terms:
`1. “Fatigue Force”
`Petitioner asserts that a “fatigue force” is “a force that causes
`mechanical fatigue,[2] i.e., mechanically stressing a material by fluctuating
`between maximum and minimum values.” Pet. 16 (citing Ex. 1007 ¶ 137).
`Patent Owner asserts that a “fatigue force” means “a time-varying
`force[] that cause[s] fluctuations of stresses that weaken the part.” Prelim.
`Resp. 27‒28 (citing Ex. 2036 ¶ 24). For purposes of the present inter partes
`review, Petitioner accepts that Patent Owner’s interpretation “could be the
`broadest reasonable construction.” Pet. 16‒17 (citing Ex. 1007 ¶ 138).
`The ’915 patent describes that “fatigue” occurs when stresses in the
`connecting rod “fluctuate due to the application of harmonic forces (or any
`time varying forces).” Ex. 1001, 3:16‒18. The ’915 patent further describes
`that the change in stresses in the rod due to application of these time varying
`forces result in crack propagation and an increase in the absolute value of the
`stress intensity factor. Id. at 3:18‒24. In other words, the fatigue force
`weakens the rod. Patent Owner’s proposed definition of “fatigue force” as
`“a time-varying force[] that cause[s] fluctuations of stresses that weaken the
`
`
`2 For purposes of this Decision, we do not need to address whether “fatigue
`force” is limited to “mechanical fatigue.” As such, we do not reach this issue.
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`part” is consistent with the description of fatigue provided in the ’915 patent.
`As such, for purposes of this Decision and based on the record now before
`us, we adopt Patent Owner’s proposed definition.
`2. “Cyclic Force”
`Petitioner asserts that “[a] ‘cyclic’ force is one that cycles – i.e.,
`regularly repeats between a maximum value and a minimum value.” Pet. 17.
`Petitioner points to a dictionary meaning of “cycle” in support of its
`position. Id. (citing Ex. 1022, 3) (defining “cycle” as a “series of
`occurrences in which conditions at the end of the series are the same as they
`were at the beginning. Usually, but not invariably, a cycle of events is
`recurrent”). Petitioner also points to statements made by Patent Owner
`during prosecution in support of its definition of “cyclic.” Pet. 17 (citing
`Ex. 1016, 84). The document cited by Petitioner is an Information
`Disclosure Statement filed by Patent Owner in the parent ’910 application.
`Ex. 1016, 78‒97. In the cited portion, the Patent Owner addresses the
`resonance-fatigue fracturing process. Id. at 83. The Patent Owner states, in
`pertinent part,
`It is worth mentioning that a fatigue exerting force is a
`force which fluctuate[s] between a maximum and a minimum
`values, such force could be described as a harmonic force,
`cyclic force, periodic force, oscillating force, etc. Applicant
`referred to all of these variations as “(or any time varying
`forces)” US 6,644,529 column 3, lines 3-4. Therefore, the
`Resonance-Fatigue invention is not limited to the use of
`harmonic force as a fatigue exerting force.
`Id. at 84 ¶ 6 (original emphasis omitted, additional emphases added).
`Petitioner explains that “‘cyclic’ further limits that fluctuation to a pattern of
`regular repetition.” Pet. 17 (citing Ex. 1007 ¶ 139).
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`Patent Owner asserts that “cyclic force” means “force that cycles.”
`Prelim. Resp. 28 (citing Ex. 2036 ¶ 25). For purposes of the present inter
`partes review, Petitioner accepts that Patent Owner’s interpretation “could
`be the broadest reasonable construction.” Pet. 17‒18 (citing Ex. 1007
`¶ 140). Petitioner notes, however, that Patent Owner’s “somewhat circular
`construction” suggests that Patent Owner may present a broad interpretation
`of “cycle” that would encompass forces like the “Pre-Loading” force in
`Cavallo. Pet. 18.
`We agree with Petitioner that Patent Owner’s proffered interpretation
`is circular. Although a “cyclic force” is a “force that cycles,” this
`interpretation begs the question of the scope of the term “cycle.” As noted
`above, an ordinary meaning of “cycle” includes a “series of occurrences in
`which conditions at the end of the series are the same as they were at the
`beginning. Usually, but not invariably, a cycle of events is recurrent.”
`Ex. 1022, 3. Thus, a “cyclic force,” in a general sense, refers to a series of
`occurrences applied recurrently.
`This interpretation leads us to inquire as to what series of occurrences
`is described in the ’915 patent as a cycle. Petitioner seeks to have us
`interpret a cycle to mean a force that fluctuates between a maximum and a
`minimum value.3 The ’915 patent describes that “during each cycle, [the
`
`
`3 In the reexamination of the related ‘361 patent, the Examiner, in the first
`office action (dated July 24, 2018), interpreted “cyclic force” to mean “a
`force which fluctuates periodically between maximum and minimum
`values.” The Examiner relied on claim differentiation to adopt this
`interpretation because claim 2 requires “a resonance condition.” Similarly,
`in the ’915 patent, dependent claim 2 requires the cyclic force to be
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`connecting rod] passes through maximum and minimum deformation
`positions at time instants Tmax and T0, respectively.” Ex. 1001, 4:27‒31. In
`one example, “the natural vibration period is 0.25 second” and the harmonic
`excitation is applied for 25.10 seconds, thus multiple recurrent cycles are
`applied. Id. at 4:44‒48.
`Based on the description in the ’915 patent of the application of force
`during each cycle, and the ordinary meaning of the term “cycle” described
`above, we interpret “cyclic force” for purposes of this Decision and based on
`the record now before us as a force that regularly repeats between a
`maximum value and a minimum value.
`3. “Dynamic Force”
`Petitioner asserts that in light of the examples provided in the ’915
`patent, “dynamic force” must encompass both an impulsive force and a slow
`rate dynamic force. Pet. 18 (citing Ex. 1007 ¶ 141). Petitioner states,
`however, that the outer limit or scope of a “slow rate” dynamic force need
`not be addressed for purposes of the grounds presented in the Petition. Id. at
`19 (citing Ex. 1007 ¶¶ 143‒144).
`Patent Owner asserts that “dynamic force” means “a force that
`changes with time.” Prelim. Resp. 28 (citing Ex. 2036 ¶ 26).
`The ’915 patent describes that “a dynamic force is finally applied at a
`time instant Tf by increasing the primary pre-stressing force suddenly as an
`impulsive force at Tf, or at a slower rate within a period centered on Tf.
`Ex. 1001, 4:35‒38. The ’915 patent also describes that “an impulsive
`
`
`“harmonic.” For purposes of this Decision, we do not interpret cyclic force
`to be limited to harmonic force.
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`fracturing force F4I is applied at the time instant Tf, causing a sudden
`increase of F1 (the pre-stressing force) and, thus, fracturing the connecting
`rod.” Id. at 6:32‒35 (emphasis added). The ’915 patent describes,
`alternatively, that a slow rate dynamic force could be applied within a period
`centered on the same time instant. Id. at 6:36‒38.
`In keeping with the description of the dynamic force provided in the
`’915 patent, a dynamic force can be applied suddenly or at a slower rate over
`time and, when applied suddenly, the amount of force must be greater than
`any applied primary pre-stressing force. For purposes of this Decision and
`based on the record now before us, we adopt Patent Owner’s definition of
`“dynamic force” as a force that changes with time. This definition contrasts
`such a force from a static force (such as the static secondary pre-stressing
`forces described in the ’915 patent).
`4. Optional Limitation
`Independent claim 1 recites the optional step of applying at least one
`pre-stressing force. Ex. 1001, 7:1‒19. Petitioner submits as exhibits copies
`of the parties’ joint claim construction chart (Ex. 1037) and Patent Owner’s
`Responsive Claim Construction Brief (Ex. 1038) submitted during the
`related litigation, in which the parties agreed that the optional pre-stressing
`limitation of claim 1 is non-limiting. Ex. 1037, 2; Ex. 1038, 3. Along with
`this submission, the parties filed a joint stipulation in this proceeding
`agreeing that “the optional, pre-stressing language in the Challenged Claims
`of the ’915 Patent is non-limiting.” Paper 11. Accordingly, for purposes of
`this Decision, we treat the optional, pre-stressing language in the challenged
`claims, i.e., claim 1, step (a) and claim 7, as non-limiting.
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`C. 35 U.S.C. § 325(d)
`Patent Owner argues that the Board should deny institution because
`the USPTO previously considered Brovold, Cavallo, and Becker during
`prosecution of the ’915 patent. Prelim. Resp. 19. Patent Owner alleges that
`Petitioner is asking the Board to reconsider the USPTO’s decision to grant
`the challenged patent “without disclosing to the Board what it asserts was
`deficient in the Examiner’s findings, or what in the prior art of record was
`relevant but overlooked.” Id.
`In evaluating whether to exercise our discretion when the same or
`substantially the same prior art or arguments previously were presented to
`the Office under section 325(d), we weigh the following factors: (a) the
`similarities and material differences between the asserted art and the prior art
`involved during examination; (b) the cumulative nature of the asserted art
`and the prior art evaluated during examination; (c) the extent to which the
`asserted art was evaluated during examination, including whether the prior
`art was the basis for rejection; (d) the extent of the overlap between the
`arguments made during examination and the manner in which Petitioner
`relies on the prior art or Patent Owner distinguishes the prior art; (e) whether
`Petitioner has pointed out sufficiently how the Examiner erred in its
`evaluation of the asserted prior art; and (f) the extent to which additional
`evidence and facts presented in the Petition warrant reconsideration of the
`prior art or arguments. See Becton, Dickinson and Company v. B. Braun
`Melsungen AG, IPR2017-01586, 17–18 (PTAB December 15, 2017) (Paper
`8) (informative).
`As to Cavallo and Becker, these references were before the Examiner
`during examination of the ’915 patent. Ex. 1001, section (56) (listing
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`Cavallo and Becker as “References Cited”). According to the face of the
`’915 patent, these references were cited by the Examiner. Id. (noting
`references cited by the Examiner with an asterisk). The Examiner cited both
`Cavallo and Becker, along with several other patents, in an Office Action in
`a list of “prior art made of record and not relied upon,” and characterized
`this prior art as “pertinent to applicant’s disclosure.”4 Ex. 1017, 56; see also
`id. at 59.5 The Examiner did not rely on either Cavallo or Becker in a
`rejection of the claims during examination of the ’915 patent. In fact, the
`Examiner did not present any rejections under 35 U.S.C. §§ 102 or 103
`during examination of the ’915 patent. Ex. 1017.
`Under considerations (c), (d), and (f) discussed above, the fact that
`Becker and Cavallo were of record, but not applied in any rejection by the
`Examiner during examination of the ’915 patent, provides little impetus for
`us to exercise our discretion to deny institution under § 325(d). Further, to
`the extent “the prior art involved during examination” and “the prior art
`evaluated during examination” set out in considerations (a) and (b) refer
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`4 Patent Owner also discussed Becker in the ’915 patent. Ex. 1001 1:26‒27.
`5 The Examiner similarly cited Becker and Cavallo in the parent ’910
`application in an Office Action as “prior art made of record and not relied
`upon” and characterized the references as being “pertinent to applicant’s
`disclosure.” Ex. 1016, 111‒112. The Examiner also explained that these
`references were “cited to show related methods.” Id. The Examiner
`likewise cited Becker and Cavallo during prosecution of the grandparent
`’529 patent as “prior art made of record and not relied upon” and
`characterized the references as being “pertinent to applicant’s disclosure.”
`Ex. 1015, 94. The Examiner explained that these references were “cited to
`show related devices.” Id. The Examiner did not rely on either Cavallo or
`Becker in a rejection of the claims during prosecution of the parent ’910
`application or the grandparent ’529 patent. Exs. 1016, 1017.
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`mainly to prior art applied by the Examiner in a rejection during
`examination, because the Examiner did not make any prior art rejections
`during prosecution of the ’915 patent, these factors do not persuade us to
`exercise our discretion under § 325(d) in this case. We acknowledge that
`Petitioner has not set out in its Petition specifically how the Examiner erred
`in its evaluation of Cavallo and Becker. Given the weaknesses of the other
`factors, and the fact that the Examiner made no art rejections during
`examination of the ’915 patent, this deficiency in Petitioner’s case is not
`reason enough under these facts to propel us to exercise our discretion to
`deny institution under § 325(d).
`Patent Owner’s assertion that Brovold was considered by the
`Examiner in the ’915 patent is speculative, and, as such, does not convince
`us that denial of institution under 35 U.S.C. § 325(d) is warranted in this
`instance. Patent Owner explains that during prosecution of the parent ’910
`application, Mr. Guirgis filed a Preliminary Amendment to copy claims
`from a third-party U.S. Patent Application No. 10/205,785 to Gottfried
`Hoffman (“the Hoffman application”). Prelim. Resp. 17; Ex. 1016, 28‒32.
`Mr. Guirgis also filed an Information Disclosure Statement in the parent
`’910 application listing the Hoffman application and inventor Guirgis’s
`thesis, and filed an accompanying document entitled “Explanation of the
`Relevance of the Documents Listed in the Information Disclosure Statement
`(IDS).” Ex. 1016, 58‒77, 113. In the latter document, Mr. Guirgis asserted
`that his thesis was publicly available prior to Mr. Hoffman’s priority date,
`and Mr. Guirgis further asserted that his application had priority over the
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`Hoffman application. Id. at 16‒17.6 Mr. Guirgis subsequently abandoned
`the ’910 application. Id. at 120‒121.
`According to Patent Owner, Mr. Guirgis also filed a preliminary
`amendment in the ’915 patent application on July 7, 2004 in which he
`copied some of Hoffmann’s independent claims. Prelim. Resp. 17‒18.
`Patent Owner asserts that Brovold was of record in the Hoffman application.
`Id. at 17. Patent Owner argues that “the inventor has repeatedly requested
`from the USPTO to examine his invention while giving full consideration to
`Hoffman’s patent application” and that “[i]t is reasonable to expect that . . .
`the USPTO has considered all the contents of Hoffmann’s file, and was
`aware of its being patentably distinct from Brovold’s patent.” Id. at 18.
`Based on this argument, Patent Owner urges that “the patentability of
`Guirgis over Brovold is implied by the USPTO ruling that Hoffmann is
`patentable over Brovold but is unpatentable over Guirgis.” Id. at 18‒19.
`For the reasons that follow, we are not inclined to speculate as to
`whether the examiner, during examination of the ’915 patent, reviewed and
`considered all of the prior art of record in the Hoffman application, including
`Brovold. We also are not inclined to infer that the examiner, during
`examination of the ’915 patent, made a determination as to patentability of
`the claims of the ’915 patent over Brovold, by virtue of actions taken by the
`examiner in the Hoffman application.
`First, it is important to note that the ’915 patent and the Hoffman
`application were examined by different examiners. The examiner of the
`application that issued as the ’915 patent was Stephen Choi. Ex. 1001, cover
`
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`6 Patent Owner also filed a protest in the Hoffman application. Ex. 3001.
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`page. The Examiner of the Hoffman application wa