Trials@uspto.gov Paper No. 7
`571-272-7882 Entered: August 7, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VRG CONTROLS, LLC,
`Petitioner,
`
`v.
`
`DRESSER, LLC,
`Patent Owner.
`____________
`
`Case IPR2019-00618
`Patent 8,141,843 B2
`____________
`
`Before LAURA A. PETER, Deputy Under Secretary of Commerce for
`Intellectual Property and Deputy Director of the United States Patent and
`Trademark Office, MICHAEL W. KIM, and
`GARTH D. BAER, Administrative Patent Judges.
`
`BAER, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`571-272-7882 Entered: August 7, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VRG CONTROLS, LLC,
`Petitioner,
`
`v.
`
`DRESSER, LLC,
`Patent Owner.
`____________
`
`Case IPR2019-00618
`Patent 8,141,843 B2
`____________
`
`Before LAURA A. PETER, Deputy Under Secretary of Commerce for
`Intellectual Property and Deputy Director of the United States Patent and
`Trademark Office, MICHAEL W. KIM, and
`GARTH D. BAER, Administrative Patent Judges.
`
`BAER, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
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`IPR2019-00618
`Patent 8,141,843 B2
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`INTRODUCTION
`I.
`VRG Controls, LLC (“Petitioner”) filed a Petition (Paper 1, “Pet.”),
`requesting an inter partes review of claims 1, 2, 4, 6, 11, 17–21, and 23–25
`(the “challenged claims”) of U.S. Patent No. 8,141,843 (Ex. 1001, “the ’843
`patent”). Dresser, LLC (“Patent Owner”), filed a Preliminary Response to
`the Petition (Paper 6, “Prelim. Resp.”). For the reasons discussed below, we
`deny the Petition and do not institute an inter partes review.
`
`A. RELATED PROCEEDINGS
`The parties identify Dresser, LLC v. VRG Controls, LLC, Case No.
`1:18-cv-01957 (N.D. Ill.) as a related matter. Pet. 9.
`
`B. THE ’843 PATENT
`The ’843 patent, filed December 31, 2008, and issued March 27,
`2012, is directed to a valve including “a body, a throttling ball, and a shoe.”
`Ex. 1001, Abstract.
`The body includes an upstream flow passage and a downstream
`flow passage in fluid communication with an interior cavity of
`the body. The throttling ball is rotatable within the interior cavity
`on an axis to adjust the valve from a closed position to an open
`position and includes a fluid conduit extending through the
`throttling ball, where the fluid conduit is alignable with the
`upstream flow passage and the downstream flow passage.
`Id. Figure 4 is reproduced below.
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`Fig. 4
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`Above Figure 4 is a partial cross-section view of the ball valve’s internal
`components. Id. at 5:13–14.
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`C. ILLUSTRATIVE CLAIM
`Petitioner challenges claims 1, 2, 4, 6, 11, 17–21, and 23–25 of the
`’843 patent. Of the challenged claims, claims 1, 17, and 24 are independent.
`Independent claim 1 is illustrative of the challenged claims and is
`reproduced below:
`
`1. A valve comprising:
`a body including an upstream flow passage and a downstream
`flow passage in fluid communication with an interior cavity
`of the body;
`a throttling ball disposed within the interior cavity, the throttling
`ball rotatable within the interior cavity on an axis to adjust the
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`valve from a closed position to an open position, the throttling
`ball including a fluid conduit extending through the throttling
`ball, the fluid conduit being alignable with the upstream flow
`passage and the downstream flow passage; and
`the throttling ball further comprising a ball plate disposed in a
`downstream transverse passage of the throttling ball that
`intersects the fluid conduit through the throttling ball, the ball
`plate
`including a plurality of orifices allowing fluid
`communication there through; and
`a shoe member disposed in the cavity abutting an interior surface
`of the cavity and detachably secured to the body, the shoe
`including a fluid passage there through having an inlet on an
`upstream side being alignable with the flow conduit of the
`throttling ball and an outlet being alignable with the
`downstream flow passage of the body, the shoe having an
`interior surface comprising at least a partial hemisphere with
`an opening therein, the interior surface of the shoe disposed
`adjacent to and tracking an external surface of the throttling
`ball.
`Ex. 1001, 14:49–15:7.
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`D. ASSERTED GROUNDS OF UNPATENTABILITY
`Petitioner asserts the following grounds of unpatentability. Pet. 1.
`
`Reference(s)
`Davenport1
`Davenport and Partridge2
`EP’269,3 Leinen,4 Durco,5
`Carlson,6 and Neles Q-Ball7
`
`Basis Challenged Claims
`§ 102
`1, 2, 4, 6, 11, 17, 18, and 23–25
`§ 103
`19–21
`§ 103
`1, 2, 4, 6, 11, 17–21, and 23–25
`
`II. DISCUSSION
`A. CLAIM CONSTRUCTION
`In its claim construction portion of the Petition, Petitioner explains
`that although “each independent claim (i.e., Claims 1, 17, and 24) recites a
`‘shoe member . . . detachably secured to the body,’” “the entirety of the
`disclosure describes and illustrates a ‘shoe member’ which is ‘detachably
`secured’ to the outlet closure.” Pet. 21. In sum, Petitioner “contends that
`‘detachably secured to the body’ is not enabled by the specification.” Id.
`Petitioner informs us that the patent includes “no illustrations of the shoe
`250 being ‘detachably secured’ to the body 205 of the valve.” Pet. 22.
`
`
`1 U.S. Patent No. 5,070,909 (filed June 11, 1990) (Ex. 1005, “Davenport”).
`2 U.S. Patent App. 2007/0034267 A1 (pub. Feb. 15, 2007) (Ex. 1006,
`“Partridge”).
`3 European Patent Application Publication No. 0,889,269 (pub. Jan. 7, 1999)
`is in German (Ex. 1007a). All references herein will be to a certified
`English language translation of European Patent Application Publication
`No. 0,889,269 A1 (Ex. 1007b, “EP’269”).
`4 U.S. Patent No. 5,437,305 (filed Sept. 1, 1994) (Ex. 1008, “Leinen”).
`5 DurcoTrim publication, “Soundtrim Modulating Low Noise Control Plug
`Valve”, Durco Brochure Bulletin V-37, June 1987 (Ex. 1011, “Durco”).
`6 U.S. Patent No. 6,039,304 (filed May 26, 1998) (Ex. 1009, “Carlson”).
`7 Neles Q-Ball publication, “Trim Alternatives,” pub. May 1986. (Ex. 1010,
`“Q-Ball”).
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`Petitioner’s enablement challenge is outside the scope of permissible
`challenges in an inter partes review. See 35 U.S.C. § 311(b) (“A petitioner
`in an inter partes review may request to cancel as unpatentable 1 or more
`claims of a patent only on a ground that could be raised under section 102 or
`103 . . . .”). Accordingly, we do not address Petitioner’s enablement
`argument.
`Neither party proposes any specific terms for explicit claim
`construction. See Pet. 19–23; Prelim Resp. 11–12. We determine that no
`express claim construction is necessary for our determination of whether to
`institute inter partes review. See Vivid Techs., Inc. v. Am. Sci. & Eng’g,
`Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be
`construed that are in controversy, and only to the extent necessary to resolve
`the controversy.”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor
`Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the
`context of an inter partes review)..
`B. ASSERTED PRIOR ART
`
`1. Davenport (Ex. 1005)
`Davenport discloses a “rotary control valve for controlling fluid flow
`through a conduit comprising at least one fixed trim element and a rotatable
`plug element located in the conduit.” Ex. 1005, Abstract. Figure 2 is
`reproduced below.
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`FIG. 2
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`Above Figure 2 illustrates “a partial cutaway view of a rotary control ball
`valve body with ball and trim [35].” Id. at 5:19–20. Figures 4a and 4b are
`reproduced below.
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`FIG. 4a
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`FIG. 4b
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`Above Figures 4a and 4b illustrate an “elevational view of the ball and ball
`trim” and an “elevational view of the ball trim,” respectively. Id. at 5:22–23.
`2. Partridge (Ex. 1006)
`Partridge discloses:
`A valve assembly, compris[ing] a housing having an inlet, an
`outlet, and an internal volume; a pair of sealing rings and
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`mounted to the housing; and a spherical plug rotatably disposed
`within the housing for contact with the seating rings, the
`spherical plug comprising a general spherical main body having
`a generally cylindrical bore therethrough; and a plurality of
`slotted plates longitudinally parallel to each other and parallel
`with the axis rotation of the spherical plug.
`Ex. 1006, Abstract. Partridge’s Figure 3 is reproduced below.
`
`
`
`FIG. 3
`Above Figure 3 is a cross-sectional view illustrating the valve in a fully open
`position. Id. at ¶ 15.
`3. EP’269 (Ex. 1007b)
`EP’269 discloses “an adjustable ball valve (10) with a spherical
`shut-off device (20) accommodated inside a casing (11) between circular
`seals, a first (40) and second (41) throttle element for the reduction of
`pressure and noise.” Ex. 1007b, Abstract. “The throttle elements are
`configured as plate-like gussets.” Id. Figure 1 is reproduced below.
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`FIG. 1
`Above Figure 1 illustrates a “longitudinal section through an adjustable
`valve . . . with throttle elements on the inflow side and the outflow side in
`the form of plate-like gussets in a shut-off ball in its open position.” Id. at
`3:17–20.
`4. Leinen (Ex. 1008)
`Leinen discloses:
`[A] valve includ[ing] a body having a valve element
`positioned therein.
` The valve element includes a bore
`therethrough, which is selectively alignable with bores through
`the valve body. . . . The valve includes a plurality of diffusers
`which break up the flow to reduce the noise and/or vibration.
` Ex. 1008, Abstract. Figure 2 is reproduced below.
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`FIG. 2
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`Above Figure 2 illustrates a sectional view of the valve. Id. at 2:56.
`5. Carlson (Ex. 1009)
`Carlson discloses a valve “having a disk with a shaped opening and
`one side interfacing with and conforming to the shape of the exterior of the
`ball or plug.” Ex. 1009, Abstract. Carlson further discloses that “[t]he disk
`fits inside the port at the seat area, and is secured by a ring,” that “can be
`threaded into the connection for the fluid pipe line.” Id. Figures 7 and 8 are
`reproduced below.
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`FIG. 8
`FIG. 7
`Above Figure 8 illustrates a cross-sectional view of the valve, and above
`Figure 7 illustrates “a side plan view . . . of the disk 8 that is intended to
`make contact with ring 9.” Id. at 2:65–68, 3:13–15.
`6. Neles Q-Ball (Ex. 1010)
`Neles Q-Ball appears to be a specification sheet for a commercially-
`available product that offers a ball valve with various valve inlets and plate
`arrangements. Ex. 1010, 1. The unlabeled figure below is from page 1 of
`the specification sheet.
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`The above figure illustrates various valve inlets and plate arrangements.
`7. Durco (Ex. 1011)
`Durco appears to be a specification sheet for a commercially-available
`product describing a “SoundTrim design [that] permits a diversion of flow
`through the control grid while the main port remains open.” Ex. 1011, 3.
`Durco explains that “[t]his allows a particle reaching the interior of the valve
`to escape through the main port.” Id. An unlabeled figure from page 3 of
`the specification sheet is reproduced below.
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`The above figure illustrates the SoundTrim design control valve. Id.
`C. ANALYSIS
`1. Anticipation of Claims 1, 2, 4, 6, 11, 17, 18, and 23 Based on Davenport
`Petitioner asserts that Davenport anticipates claims 1, 2, 4, 6, 11, 17,
`18, and 23.8 Pet. 28–46. For the reasons explained below, we determine
`that, on the current record, Petitioner has not shown a reasonable likelihood
`that it would prevail in its anticipation challenge to claims 1, 2, 4, 6, 11, 17,
`18, and 23.
`a. “[a] ball plate including a plurality of orifices”
`Independent claims 1 and 17 (and, by dependence, claims 2, 4, 6, 11,
`18, and 23) each require a “ball plate including a plurality of orifices.”
`Ex. 1001, 14:63, 16:24–25. Petitioner asserts that Davenport discloses the
`claimed ball plate because Davenport’s “trim 35 includes faces 44 and 46,
`which match the sphere of the ball,” as well as “parallel ducts 37 . . . which
`open at the surface (i.e., orifices).” Pet. 31 (citing Ex. 1005, 6:13–23, 7:31–
`34, Fig. 4b). We agree with Patent Owner that Petitioner’s argument that
`Davenport’s faces 44 and 46 are the claimed ball plates is erroneous.
`Prelim. Resp. 24–27 (citing Ex. 2001). As Figure 4B of Davenport
`
`8 We address Petitioner’s anticipation challenge to claims 24 and 25 based
`on Davenport in Section II.C.4, infra.
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`(reproduced below) shows, faces 44 and 46 are not separate plates, but rather
`opposing sides of the trim’s exterior surface:
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`FIG. 4b
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`That is, faces 44 and 46 are not plates because they are not relatively thin
`pieces of material. See Ex. 2001, Webster’s Third New International
`Dictionary (1993) (defining “plate” as “a smooth usu. nearly flat and
`relatively thin piece of metal or other material”). Instead, they are the faces
`of the solid trim, with the same thickness as the ball itself. Given this
`deficiency, Petitioner has not shown sufficiently that Davenport anticipates
`claims 1, 2, 4, 6, 11, 17, 18, or 23.
`b. “a ball plate disposed in a downstream transverse passage of the
`throttling ball that intersects the fluid conduit”
`Independent claim 1 (and by dependence, claims 2, 4, 6, and 11)
`additionally requires that the ball plate must be “disposed in a downstream
`transverse passage of the throttling ball that intersects the fluid conduit
`through the throttling ball.” Ex. 1001, 14:60–61. As noted above, Petitioner
`asserts that Davenport’s trim faces 44 and 46 are the claimed ball plates
`disposed in a downstream transverse passage of the throttling ball that
`intersects the fluid conduit. See Pet. 31. We disagree with Petitioner’s
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`argument because even if Davenport’s trim faces were plates, Davenport
`does not disclose those faces in a transverse passage of the ball that
`intersects the fluid conduit, as claim 1 requires. Instead, as Patent Owner
`explains, “faces 44 and 46 are necessarily part of the internal trim that is
`parallel with the fluid conduit.” Prelim. Resp. 29 (internal quotation marks
`omitted).
`Alternatively for the ball plate “disposed in a downstream transverse
`passage of the throttling ball that intersects the fluid conduit through the
`throttling ball,” Petitioner seems to rely on an elbow-shaped fluid conduit
`embodiment in Davenport shown in the circled portion of Figures 10a–10c,
`reproduced below (annotations added by Petitioner):
`
`Pet. 32–33. We disagree with Petitioner’s alternative argument because, as
`shown above, the elbow bend in Figures 10a–10c is not a transverse passage
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`that intersects a fluid conduit as claim 1 requires. As with Davenport’s
`straight-conduit embodiment, in Figures 10a–10c, faces 44 and 46 are in line
`with the fluid conduit, rather than in a transverse passage that intersects the
`fluid conduit, as claim 1 requires. For this additional reason, Petitioner has
`not shown sufficiently that Davenport anticipates claims 1, 2, 4, 6, or 11.
`2. Obviousness of Claims 19–21 Based on Davenport and Partridge
`Petitioner asserts that claims 19–21 would have been obvious over
`Davenport and Partridge. Pet. 55–59. Claims 19–21 depend ultimately from
`independent claim 17. Petitioner does not rely on Partridge for the
`limitations of independent claim 17 for which Petitioner’s anticipation
`showing is deficient, as explained. See id. Accordingly, Partridge does not
`remedy these deficiencies. Therefore, based on the current record, Petitioner
`has not shown sufficiently that claims 19–21 would have been obvious over
`Davenport and Partridge.
`3. Obviousness of Claims 1, 2, 4, 6, 11, 17–21, and 23–25 Based on
`EP’269, Leinen, Durco, Carlson, and/or Neles Q-Ball
`Petitioner asserts claims 1, 2, 4, 6, 11, 17–21, and 23–25 would have
`been obvious over EP’269 in view of Leinen, Durco, Carlson, and/or Neles
`Q-Ball. Pet. 11. For the reasons explained below, we determine that, on the
`current record, Petitioner has not demonstrated a reasonable likelihood that it
`would prevail in its obviousness challenge to claims 1, 2, 4, 6, 11, 17–21,
`and 23–25.
`a. “a shoe member . . . detachably secured to the body”
`Independent claims 1, 17, and 24 (and by dependence claims 2, 4, 6,
`11, 18–21, 23, and 25) each require “a shoe member disposed in the cavity
`abutting an interior surface of the cavity and detachably secured to the
`body.” Ex. 1001, 14:65–66, 16:26–28, 18:1–2 (emphasis added). Petitioner
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`relies on EP’269 to teach the valve body and throttling ball limitations, as
`well as the claimed shoe member. See Pet. 60–61, 64. Specifically,
`Petitioner explains that “EP’269 teaches the use of a downstream throttling
`member 41 with passages 43 which open on the upstream side and are
`aligned with the fluid conduit, and open on the downstream side and are
`aligned with the downstream flow passage.” Id. at 64 (citing Ex. 1007b, Fig,
`1, 5:8–16). Petitioner asserts that EP’269’s throttling member 41 is the
`claimed shoe member, as illustrated in Petitioner’s annotation of EP’269’s
`Figures 1 and 6, reproduced below.
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`Id. at 64. As shown above, Figure 1 of EP’269 is a longitudinal section
`through an adjustable valve, and Figure 6 of EP’269 is a gusset forming an
`outflow side throttle element.
`Petitioner has not indicated, however, that EP’269’s throttling
`member is detachably secured. See id. For that feature, Petitioner relies on
`Carlson. According to Petitioner, “Carlson teaches the use of disk 8 (i.e.,
`shoe member) ‘inserted into the valve 100 and secured therein.” Id. at 65
`(citing Ex. 1009, 4:15–25). Petitioner explains that “[i]n a preferred
`embodiment, the disk 8 is detachably secured to the body by virtue of being
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`‘mounted in the screw-in body 2.” Id. (citing Ex. 1009, 4:65–67; Ex. 1002
`¶ 89). To illustrate this point, Petitioner includes Carlson’s Figures 7 and 8,
`arranged to show how Carlson discloses a “detachably securable” shoe
`member. Petitioner’s image showing that illustration is reproduced below.
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`Id. As shown above, Figure 7 of Carlson is a side plan view of disk 8, and
`Figure 8 of Carlson is a top cross section view of valve 106 including disk 8.
`Petitioner further argues that “it would have been obvious to a person of
`ordinary skill in the art to combine the teachings of Leinen, Durco and/or
`Carlson with EP’269 to achieve the valve as set forth in Claim 1.” Id. at 66.
`Petitioner explains that “[t]he fields to which each reference pertains are
`identical, . . . and each reference addresses precisely the same problems as
`those addressed by the ’843 patent, namely controlling fluid flow by creating
`multiple pressure drops and laminar flow in order to reduce noise and
`cavitation.” Id. at 65–66 (citing Ex. 1002 ¶¶ 73, 75, 76). We agree with
`Patent Owner, in that we are not persuaded that this rationale supports
`adequately including a “detachably securable” shoe member. Prelim. Resp.
`52.
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`To show a challenged claim was obvious at the time of the invention,
`Petitioner must demonstrate that “there was an apparent reason to combine
`the known elements in the fashion claimed by the patent at issue.” KSR Int’l
`Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). In doing so, “there must be
`some articulated reasoning with some rational underpinning to support the
`legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
`2006) (cited by KSR Int’l Co., 550 U.S. at 418). We agree with Petitioner
`that Carlson discloses a detachably securable shoe (i.e., disk 8). Petitioner,
`however, has not articulated an adequate reason why one of ordinary skill in
`the art would have combined EP’269’s throttling member with Carlson’s
`detachably securable feature. Specifically, Petitioner’s proffered rationale is
`the problem Petitioner’s references address—i.e. reducing noise and
`cavitation. Pet. 65–66. Petitioner, however, has not explained adequately
`how that rationale has any bearing on why, when designing a valve, one of
`ordinary skill in the art would have made its shoe member detachably
`securable. Put another way, Petitioner has not explained adequately how
`making a shoe member detachable securable reduces noise and cavitation.
`Instead, Petitioner has simply presented us with multiple references that
`have the challenged claims’ individual elements and suggested, in a
`conclusory manner with almost no relevant factual underpinnings, that,
`because those references fall into the same field of art and address the same
`problem, one skilled in the art could have engaged in hindsight
`reconstruction to select the claimed features. Obviousness requires more.
`KSR Int’l, 550 U.S. at 421 (“A factfinder should be aware, of course, of the
`distortion caused by hindsight bias and must be cautious of arguments reliant
`upon ex post reasoning.” (citing Graham v. John Deere Co., 383 U.S. 1, 36
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`(1966))). In short, Petitioner has not provided us with an adequate rationale,
`with sufficient factual underpinnings, for combining the relevant teachings
`of EP’269 with Carlson to arrive at the ’843 patent’s detachably securable
`shoe member. Accordingly, we determine that Petitioner has not set forth a
`reasonable likelihood of demonstrating that claims 1, 2, 4, 6, 11, 17–21, and
`23–25 would have been obvious over EP’269 in view of Leinen, Durco,
`Carlson, and/or Neles Q-Ball.
`4. Discretion to Decline Institution of Claims 24 and 25 under 35 U.S.C.
`§ 314
`Claims 24 and 25 do not recite “a ball plate.” See Ex. 1001, 17:21–
`18:32. Thus, the Petition’s deficiencies addressed above with respect to
`Davenport, see Section II.D.1, supra, do not impact Petitioner’s anticipation
`analysis for these two claims. Under 35 U.S.C § 314, however, the Board is
`required to make “a binary choice—either institute review or don’t.” SAS
`Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355 (2018). Therefore, “if the PTAB
`institutes a trial, the PTAB will institute on all challenges raised in the
`petition.” USPTO, Guidance on the Impact of SAS on AIA Trial
`Proceedings (April 26, 2018), https://www.uspto.gov/patents-application-
`process/patent-trial-and-appeal-board/trials/guidance-impact-sas-aia-trial;
`see also BioDelivery Scis. Int’1, Inc. v. Aquestive Therapeutics, Inc., 898
`F.3d 1205, 1209 (Fed. Cir. 2018) (holding that SAS “requires institution on
`all challenged claims and all challenged grounds”). In exercising this
`discretion whether to institute review, we consider the number of claims and
`grounds that meet the reasonable likelihood standard. Chevron Oronite Co.
`LLC v. Infineum USA L.P., Case IPR2018-00923, slip op. at 10–11 (PTAB
`Nov. 7, 2008) (Paper 9) (informative) (“Chevron”); Deeper, UAB v. Vexilar,
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`Inc., Case IPR2018-01310, slip op. at 41–43 (PTAB Jan. 24, 2019) (Paper 7)
`(informative) (“Deeper”).
`Here, even if we assume Petitioner had demonstrated a reasonable
`likelihood of prevailing on its anticipation challenge to claims 24 and 25
`based on Davenport, Petitioner would have met its burden on only two of
`thirteen challenged claims, on only one partial ground of the three asserted.
`On this record, and based on the particular facts of this case, we find that
`instituting a trial with respect to all thirteen challenged claims on three
`grounds, based on potentially sufficient evidence and arguments directed to
`only two claims on one ground, would not be an efficient use of the Board’s
`time and resources. See Chevron at 11 (denial based on likelihood of
`prevailing on two out of twenty challenged claims); Deeper at 42–43 (denial
`based on likelihood of prevailing on two claims under one ground out of
`twenty-three challenged claims under four grounds).
`D. DISCRETION TO DECLINE INSTITUTION UNDER 35 U.S.C. § 325(D)
`Patent Owner asserts that we should exercise our discretion to decline
`institution under § 325(d) because the Petition relies on Davenport, a
`reference the examiner expressly considered during prosecution. Because
`we deny institution for the reasons explained above, Patent Owner’s request
`to deny institution under § 325(d) is moot.
`
`
`
`
`
`
`
`21
`
`
`
`IPR2019-00618
`Patent 8,141,843 B2
`
`
`
`
`III. CONCLUSION
`For the foregoing reasons, we do not institute an inter partes review.
`
`IV. ORDER
`Accordingly, pursuant to 35 U.S.C. § 314, it is:
`ORDERED that the Petition is denied as to the challenged claims of
`the ʼ843 patent; and
`FURTHER ORDERED that no inter partes review is instituted.
`
`
`
`
`
`
`
`22
`
`
`
`IPR2019-00618
`Patent 8,141,843 B2
`
`PETITIONER:
`Robert W. Diehl
`Edward L. Bishop
`BISHOP DIEHL & LEE, LTD
`rdiehl@bdl-iplaw.com
`ebishop@bdl-iplaw.com
`
`
`PATENT OWNER:
`Herbert D. Hart III
`David Z. Petty
`McANDREWS, HELD & MALLOY, LTD.
`hhart@mcandrews-ip.com
`dpetty@mcandrews-ip.com
`
`
`23
`
`
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