Trials@uspto.gov
`571-272-7822
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`Paper No. 8
`Entered: June 8, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`MICRO MOTION, INC.,
`Petitioner,
`v.
`ENDRESS + HAUSER FLOWTEC AG,
`Patent Owner.
`
`Case PGR2018-00017
`Patent 9,593,973 B2
`
`
`
`Before JEREMY J. CURCURI, LYNNE E. PETTIGREW, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`CURCURI, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Post Grant Review
`35 U.S.C. § 324
`
`
`
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`

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`PGR2018-00017
`Patent 9,593,973 B2
`
`
`I. INTRODUCTION
`Petitioner filed a Petition for post-grant review of claims 1–56 of U.S.
`Patent No. 9,593,973 B2 (Ex. 1001, “the ’973 patent”). Paper 2 (“Pet.”).
`Patent Owner filed a Preliminary Response. Paper 7 (“Prelim. Resp.”). Based
`on the information presented, we determine that Petitioner has not
`demonstrated that the ’973 patent is eligible for post-grant review.
`Accordingly, we deny the Petition.
`
`A. Related Proceedings
`Petitioner states “[t]here are no related judicial or administrati[ve]
`matters having any b[e]aring on this matter.” Paper 4 (“Mandatory Notice”).
`
`
`
`
`B. The Priority Applications Relating to the ’973 Patent
`The ’973 patent issued from an application (No. 14/758,323, “the ’323
`application”) that was filed on November 26, 2013 under the Patent
`Cooperation Treaty (PCT). Ex. 1001, Appl. No. (21), PCT Filed (22).
`The ’973 patent claims an earliest possible priority date of December
`30, 2012 based on the filing of a German application (DE 10 2012 025 246,
`“the German ’246 application”). Ex. 1001, Foreign Application Priority Data
`(30). The ’973 patent also claims priority to another German application (DE
`10 2013 102 711, “the German ’711 application”), filed March 18, 2013.
`Ex. 1001, Foreign Application Priority Data (30).
`
`C. The Claimed Subject Matter of the ’973 Patent
`The ’973 patent, entitled “Measuring Transducer of Vibration-Type as
`well as Measuring System Formed Ther[e]with,” relates to a Coriolis-force
`mass-flow meter. Ex. 1001, Title, Abstract.
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`PGR2018-00017
`Patent 9,593,973 B2
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`D. Illustrative Claim
`Claim 1, the only independent claim, is illustrative of the claimed
`
`subject matter and is reproduced below:
`1. A measuring transducer of the vibration-type for a
`Coriolis mass
`flow measuring device, which measuring
`transducer comprises:
`a measuring tube exhibiting an inlet-side, first tube end and
`an outlet-side, second tube end, and exhibiting a tube wall with a
`predetermined wall thickness and with a lumen surrounded by
`said tube wall and extending between said first and said second
`tube ends, which measuring tube is adapted to guide a flowing
`medium in its lumen, and during guiding the flowing medium to
`be caused to oscillate about a static resting position for producing
`Coriolis forces;
`a first support element, said first support element
`exhibiting a first support end connected mechanically with said
`first tube end of said measuring tube and said first support
`element exhibiting a second support end connected mechanically
`with said second tube end of said measuring tube;
`a second support element, said second support element is
`laterally spaced from said measuring tube and is mechanically
`connected with said first support end of said first support element
`with a first support end as well as also with the second support
`end of said first support element with a second support end;
`an oscillation exciter; and
`at least a first oscillation sensor, wherein:
`the measuring transducer exhibits a wanted mode, namely
`an oscillatory mode, in which said measuring tube can execute
`wanted oscillations, namely oscillations about its said static
`resting position suitable for producing Coriolis forces with a
`wanted frequency corresponding to a resonant frequency of said
`wanted mode;
`said oscillation exciter is adapted to excite said wanted
`oscillations of said measuring tube; and
`said first oscillation sensor
`includes a first sensor
`component affixed externally on said measuring tube, and a
`second sensor component mounted on said second support
`element, and said first oscillation sensor is adapted to register
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`PGR2018-00017
`Patent 9,593,973 B2
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`movements of oscillations of said measuring tube relative to said
`second support element, and
`to convert said registered
`movements into a first oscillatory signal representing oscillations
`of said measuring tube.
`Ex. 1001, 23:25–67.
`
`E. Grounds of Unpatentability
`Petitioner raises six grounds of unpatentability. Pet. 4–5. Our decision,
`
`however, turns on the threshold question of whether the ’973 patent is eligible
`for post-grant review. Pet. 23–30. Because we ultimately conclude that the
`patent is not eligible, we do not reach the merits of any asserted ground of
`unpatentability.
`
`II. ANALYSIS
`A. Statutory Analysis Pertaining to Post Grant Review Eligibility
`Post-grant review is available only for patents “described in
`section 3(n)(1)” of the Leahy-Smith America Invents Act (“AIA”), Pub L. No.
`112-29, 125 Stat. 284 (2011). AIA § 6(f)(2)(A). Those are patents that issue
`from applications “that contain[] or contained at any time . . . a claim to a
`claimed invention that has an effective filing date in Section 100(i) of title 35,
`United States Code, that is on or after” “the expiration of the 18-month period
`beginning on the date of the enactment of” the AIA. Id. § 3(n)(1).
`Because the AIA was enacted on September 16, 2011, post-grant review is
`available only for patents that issue from applications that, at one point,
`contained at least one claim with an “effective filing date,” as defined by
`35 U.S.C. § 100(i), on or after March 16, 2013. Our rules require that
`Petitioner certify that the challenged patent is available for post-grant review.
`37 C.F.R. § 42.204(a) (“petitioner must certify that the patent for which
`review is sought is available for post-grant review”). Petitioner includes the
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`PGR2018-00017
`Patent 9,593,973 B2
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`requisite certification and, further, asserts that at least one claim of the ’973
`patent has an effective filing date after March 16, 2013. Pet. 23–30, 82.
`However, Petitioner bears the burden of proving that the ’973
`
`patent is subject to the first-inventor-to-file provisions of
`
`the AIA and eligible for post-grant review. US Endodontics, LLC
`v. Gold Standard Instruments, LLC, Case PGR2015-00019, slip op. at
`9–10 (PTAB Dec. 28, 2016) (Paper 54).
`As stated above, the ’973 patent claims priority to two German
`applications: the German ’711 application (March 18, 2013) and the German
`’246 application (December 30, 2012). Because the critical date in eligibility
`analysis is March 16, 2013, our analysis here focuses on Petitioner’s
`arguments concerning whether any of the claims of the ’973 patent cannot
`claim priority to the German ’246 application, which, of the two German
`applications, is the only one with a filing date before the March 16, 2013
`critical date. Therefore, if all of the 56 claims of the ’973 patent are entitled to
`priority to the German ’246 application, then the ’973 patent is not eligible for
`post-grant review.
`Petitioner advances two principal arguments in support of its position
`that at least one claim of the ’973 patent has an effective filing date after
`March 16, 2013. First, Petitioner argues that the priority claim to the German
`’711 application, filed March 18, 2013, is an admission that at least one claim
`of the ’973 patent has an effective filing date after March 16, 2013. Pet. 24.
`Second, Petitioner argues that claim 29 of the as-filed claims, filed October
`28, 2015, when read as depending from claim 17, is not enabled by the ’246
`German application. Pet. 24–30.
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`PGR2018-00017
`Patent 9,593,973 B2
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`B. Eligibility Based on an Admission
`We first turn to Petitioner’s argument for eligibility based on an
`admission, where Petitioner argues as follows: “The foreign priority date of
`March 18, 2013 is an admission that written description of claimed subject
`matter is only found after the [March] 16, 2013 effective date of the first
`inventor to file provisions of the AIA. The ’973 patent is therefore subject to
`post-grant review.” Pet. 24.
`
`As stated above, we recognize that the ’973 patent claims priority to
`two German applications: the German ’246 application, filed December 30,
`2012; and the German ’711 application, filed March 18, 2013. Ex. 1001,
`Foreign Application Priority Data (30). However, we agree with Patent Owner
`that the mere existence of these two priority claims does not constitute an
`admission that the German ’246 application lacks written description of any
`claimed subject matter. See Prelim. Resp. 5.
`On this record, we are not persuaded by Petitioner’s argument that a
`claim of priority, alone, constitutes an admission that at least one claim of the
`’973 patent has an effective filing date after March 16, 2013. Accordingly,
`Petitioner fails on that basis to carry its burden of establishing post-grant
`review eligibility. See Pet. 24.
`
`C. Eligibility Based on Claim 29 Filed October 28, 2015
`We now turn to Petitioner’s argument for eligibility based on claim 29.
`This claim is not a claim of the ’973 patent. Further, as we discuss below,
`claim 29 was not actually part of any relevant application in the ’973 patent
`history. And, therefore, claim 29 cannot be a basis for Petitioner to argue post-
`grant eligibility.
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`PGR2018-00017
`Patent 9,593,973 B2
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`We begin by noting that on its face, the ’973 patent is not eligible for
`post-grant review because the ’973 patent claims the priority date of
`December 30, 2012 based on the filing of the German ’246 application. Ex.
`1001, Foreign Application Priority Data (30).
`The ’973 patent issued from the national stage in the United States of an
`international application filed under the Patent Cooperation Treaty (PCT). Ex.
`1001, PCT Filed (22), PCT No. (86). The international application was not in
`English. Ex. 1004, 183−184 (Notification of Missing Requirements Under 35
`U.S.C. 371 in the United States Designated/Elected Office, requiring a
`translation of the application into English).
`The English translation of the international application was filed
`concurrently with a preliminary amendment and replacement drawings. Ex.
`1004, 99–181. That English translation contained claims 1–37. Ex. 1004, 165–
`174. The preliminary amendment filed concurrently with the translation
`canceled claims 1–37 (which includes claim 29 that Petitioner focuses on) and
`added new claims 38–74. Ex. 1004, 110–121.
`On October 28, 2015, the national stage application was accepted for
`national patentability examination in the United States Patent and Trademark
`Office. Ex. 1001, § 371 (c)(1), (2) Date (86); Ex. 1004, 95 (Notice of
`Acceptance of Application Under 35 U.S.C. 371 and 37 CFR 1.495).
`Because the preliminary amendment was entered with the acceptance of
`the application for national patentability examination on October 28, 2015,
`claims 1–37 (and, thus claim 29) were never part of the patent application.
`Accordingly, the added claims 38–74 were the original claims in the patent
`application. Ex. 1001, § 371 (c)(1), (2) Date (86); Ex. 1004, 95 (Notice of
`Acceptance of Application Under 35 U.S.C. 371 and 37 CFR 1.495); see also
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`PGR2018-00017
`Patent 9,593,973 B2
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`Prelim. Resp. 4 (“The claims presented in the preliminary amendment are the
`first and only claims in the application subject to examination, which occurred
`after commencement [of] the national stage, prior to the mailing of the Notice
`of Allowance on August 12, 2016, in the [’]323 application.”).
`Accordingly, Petitioner’s arguments for post-grant review eligibility
`based on claim 29 filed October 28, 2015 do not demonstrate post-grant
`review eligibility because claim 29, filed October 28, 2015, was not part of the
`patent application.
`The arguments presented by Petitioner based on claim 29, filed October
`28, 2015, include, for example, the following:
`i.
`Claim 29 when read as depending from claim 17 is not enabled
`by the German ’246 application because the recited features would not work
`together in a single embodiment. Pet. 24–29.
`ii.
`An amendment to claim 66 on November 23, 2013, deleting
`features from claim 66, recognizes that the recited features of claim 29 when
`read as depending from claim 17 are inoperative and not enabled. Pet. 29.
`iii.
`“[U]ndue experimentation would be required to make the
`features recited in as-filed claim 17 and as-filed claim 29, if it could work at
`all.” Pet. 29–30.
`Arguments (i)–(iii) are unavailing because claim 29 and claim 17, filed
`October 28, 2015, were never part of the patent application, as explained
`above. Further regarding argument (ii), Petitioner has not explained how the
`deleted features from claim 66 are equivalent to the recited features of claim
`29 when read as depending from claim 17. We do not readily see the
`equivalence.
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`PGR2018-00017
`Patent 9,593,973 B2
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`On this record, claim 29, filed October 28, 2015, has never been an
`actual claim in the ’323 application or the ’973 patent, and, therefore, its
`alleged deficiencies are not a proper basis to establish post-grant review
`eligibility. Accordingly, we hold that Petitioner fails on that basis to carry its
`burden of establishing post-grant review eligibility. See Pet. 24–30.
`
`III. CONCLUSION
`Taking account of the information presented in the Petition and the
`
`Preliminary Response, Petitioner does not show the priority claim to the
`German ’246 application to be flawed for any claims contained in the ’323
`application, or any claims contained in the issued ’973 patent. Accordingly,
`we hold that Petitioner has not demonstrated that the ’973 patent is eligible for
`post-grant review.
`
`IV. ORDER
`
`It is
`ORDERED that the Petition is denied and no trial is instituted.
`
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`PGR2018-00017
`Patent 9,593,973 B2
`
`PETITIONER:
`Curtis Ollila
`collila@olgip.com
`
`Keith Vick
`kvick@olgip.com
`
`
`PATENT OWNER:
`Felix D'Ambrosio
`fdambrosio@baconthomas.com
`
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