Petition for Post-Grant Review of U.S. Patent No. 9,593,973
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
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`MICRO MOTION, INC.,
`Petitioner
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`v.
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`ENDRESS+HAUSER FLOWTEC AG,
`Patent Owner
`______________
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`Case PGR2018-00017
`U.S. Patent No. 9,593,973
`Issue Date:
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`Title: MEASURING TRANSDUCER OF A VIBRATION-TYPE AS WELL AS
`MEASURING SYSTEM FORMED THERWITH
`______________
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`PETITION FOR POST GRANT REVIEW OF
`U.S. PATENT NO. 9,593,973
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`Mail Stop PATENT BOARD, PTAB
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`-i-
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
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`MICRO MOTION, INC.,
`Petitioner
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`v.
`
`ENDRESS+HAUSER FLOWTEC AG,
`Patent Owner
`______________
`
`Case PGR2018-00017
`U.S. Patent No. 9,593,973
`Issue Date:
`
`Title: MEASURING TRANSDUCER OF A VIBRATION-TYPE AS WELL AS
`MEASURING SYSTEM FORMED THERWITH
`______________
`
`PETITION FOR POST GRANT REVIEW OF
`U.S. PATENT NO. 9,593,973
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`Mail Stop PATENT BOARD, PTAB
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`Petition for Post-Grant Review of U.S. Patent No. 9,593,973
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`TABLE OF CONTENTS
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`I.
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`Introduction ......................................................................................... 1
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`II.
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`Identification of challenge, 37 C.F.R. § 42.204(b) ............................... 3
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`A. Claims for Which Review is Requested ............................................ 3
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`B. Statutory Grounds ............................................................................ 3
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`III.
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`‘973 Patent Overview .......................................................................... 5
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`A. Summary .......................................................................................... 5
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`B. Prosecution history ......................................................................... 14
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`IV. Level of Ordinary Skill in the Art ...................................................... 15
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`V. Claim construction ............................................................................ 16
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`A. The first and second “support element” .......................................... 16
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`B.
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`“laterally spaced” ........................................................................... 20
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`C.
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`“connected mechanically” and “mechanically connected” .............. 21
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`VI. At least one of the challenged claims have an effective filing date after
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`March 16, 2013 .................................................................................................... 23
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`VII. Ground 1: Claims 1, 16-24, 29-32, 43, 55, and 56 are indefinite ..... 30
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`A. Claims 1, 16, 20, 23, and 43 ........................................................... 32
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`B. Claims 30, 31, and 32 ..................................................................... 35
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`C. Claims 17-19, 21, 22, 24, 29, 55, and 56 ........................................ 36
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`D. Conclusion regarding the indefiniteness of claims 1, 16-24, 29-32,
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`43, 55, and 56 ................................................................................................... 40
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`VIII. Ground 2: Endo anticipates claims 1, 4-16, 20, 23, 28, 30-32, 34-36,
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`and 38-52
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` ....................................................................................................... 40
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`A. Overview of Endo .......................................................................... 41
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`B. Endo anticipates claim 1 ................................................................. 43
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`C. Endo anticipates claims 14 and 15 of claims 2, 3, 14, and 15 ......... 50
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`D. Endo anticipates claims 4 and 5 ...................................................... 51
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`E. Endo anticipates claims 6-8, 38, 39, and 44-50 ............................... 52
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`F. Endo anticipates claims 9-12, 51, and 52 of claims 9-12 and 51-54 53
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`G. Endo anticipates claims 13, 34-36, 40, and 41 of claims 13, 33-36,
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`40, and 41 ....................................................................................................... 55
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`H. Endo anticipates claims 16, 20, 23, and 43 ..................................... 57
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`I.
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`Endo anticipates claim 28 of claims 25-28 ..................................... 59
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`J.
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`Endo anticipates claims 30-32 and 42 ............................................. 59
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`K. Conclusions concerning the novelty of claims 1, 4-16, 20, 23, 28, 30-
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`32, 34-36, and 38-52 ......................................................................................... 61
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`IX. Obviousness of claims 1-56 of the ‘973 Patent .................................. 61
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`A. Summary ........................................................................................ 62
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`B. Ground 3: Claim 1 is obvious over Endo in view of Ohnishi .......... 63
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`C. Ground 4: Claims 2, 3, 14, and 15 are obvious over Endo in view of
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`Ohnishi in further view of the Background ....................................................... 65
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`D. Ground 3 (cont.): Claims 4 and 5 are obvious over Endo in view of
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`Ohnishi
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` ....................................................................................................... 68
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`E. Ground 3 (cont.): Claims 6-8, 38, 39, 44-50 are obvious over Endo in
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`view of Ohnishi ................................................................................................ 69
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`F. Ground 4: Claims 9-12 and 51-54 are obvious over Endo in view of
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`Ohnishi in further view of the Background of the ‘973 patent .......................... 69
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`G. Ground 4 (cont.): Claims 13, 33-36, 40, and 41 are obvious over
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`Endo in view of Ohnishi in further view of the Background of the ‘973 patent 70
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`H. Ground 5: Claims 16, 20, 23, and 43 are obvious over Endo in view
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`of Ohnishi in further view of Rieder ................................................................. 71
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`I. Ground 6: Claims 17-19, 21, 22, 24, 29, 55, and 56 are obvious over
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`Endo in view of Ohnishi in further view of Griffin in further view of VanCleve ..
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`J. Ground 5 (cont.): Claims 25-28 are obvious over Endo in view of
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`Ohnishi in further view of Rieder ..................................................................... 77
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`K. Ground 3 (cont.): Claims 30-32 and 42 are obvious over Endo in
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`view of Ohnishi ................................................................................................ 79
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`L. Ground 5 (cont.): Claim 37 is obvious over Endo in view of Ohnishi
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`in view of Rieder .............................................................................................. 79
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`X. Mandatory Notices Under 37 C.F.R. § 42.8 ....................................... 80
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`A. Real party-in-interest under 37 C.F.R. § 42.8(b)(1) ........................ 80
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`B. Related matters under 37 C.F.R. § 42.8(b)(2) ................................. 81
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`C. Lead/Back-up Counsel and Identification of Service Information
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`under 37 C.F.R. § 42.8(b)(3) and (4) ................................................................ 81
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`XI. Payment of Fees: 37 C.F.R. § 42.203 ................................................ 81
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`XII.
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`Post-Grant Review: 37 C.F.R. §§ 42.201-202 ................................. 82
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`XIII. Petition Requirements Under 37 C.F.R. § 42.204 ........................... 82
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`A. Standing, 37 C.F.R. § 42.204(a) ..................................................... 82
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`XIV. Conclusion ..................................................................................... 82
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`246.
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`711.
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`PETITIONERS EXHIBIT LIST
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`Exhibit 1001. U.S. Patent. No. 9,593,973 to Huber et al (“the ‘973 patent)
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`Exhibit 1002. Declaration of Charles Paul Stack
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`Exhibit 1003. Curriculum Vitae of Charles Paul Stack
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`Exhibit 1004. Prosecution History of U.S. Patent No. 9,593,973
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`Exhibit 1005. U.S. Patent No. 5,691,485 to Endo et al.
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`Exhibit 1006. U.S. Patent No. 6,553,845 to Ohnishi et al.
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`Exhibit 1007. U.S. Patent No. 7,077,014 to Rieder et al.
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`Exhibit 1008. U.S. Patent No. 8,215,185 to Griffin et al.
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`Exhibit 1009. U.S. Patent No. 5,987,999 to VanCleve et al.
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`Exhibit 1010. Translation of foreign priority document DE 10 2012 025
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`Exhibit 1011. Translation of foreign priority document DE 10 2013 102
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`Exhibit 1012. Claims listing.
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`Exhibit 1013. U.S. Patent Publication No. 2003/084559 to Cook et al.
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`Exhibit 1014. U.S. Patent Publication No. 2003/0131669 to Osawa.
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`Exhibit 1015. U.S. Patent Publication No. 2005/139015 to Gebhardt et al.
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`Exhibit 1016. U.S. Patent No. 4,655,089 to Kappelt et al.
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`Exhibit 1017. U.S. Patent No. 4,801,897 to Flecken.
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`Exhibit 1018. U.S. Patent No. 4,831,885 to Dahlin.
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`Exhibit 1019. U.S. Patent No. 5,024,104 to Dames.
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`Exhibit 1020. U.S. Patent No. 5,129,263 to Chi.
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`Exhibit 1021. U.S. Patent No. 5,287,754 to Kazakis.
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`Exhibit 1022. U.S. Patent No. 5,381,697 to van der Pol.
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`Exhibit 1023. U.S. Patent No. 5,531,126 to Drahm.
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`Exhibit 1024. U.S. Patent No. 5,705,754 to Keita et al.
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`Exhibit 1025. U.S. Patent No. 5,736,653 to Drahm et al.
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`Exhibit 1026. U.S. Patent No. 5,804,742 to Rademacher-Dubbick.
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`Exhibit 1027. U.S. Patent No. 6,006,609 to Drahm et al.
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`Exhibit 1028. U.S. Patent No. 6,047,457 to Bitto et al.
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`Exhibit 1029. U.S. Patent No. 6,082,202 to Hussain.
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`Exhibit 1030. U.S. Patent No. 6,223,605 to Koudal.
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`Exhibit 1031. U.S. Patent No. 6,311,136 to Henry et al.
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`Exhibit 1032. U.S. Patent No. 6,360,614 to Drahm et al.
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`Exhibit 1033. U.S. Patent No. 6,516,674 to Poremba.
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`Exhibit 1034. U.S. Patent No. 6,840,109 to Drahm et al.
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`Exhibit 1035. U.S. Patent No. 6,851,323 to Rieder et al.
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`Exhibit 1036. U.S. Patent No. 7,077,014 to Rieder et al.
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`Exhibit 1037. WO 00/02020 to Van Cleve et al.
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`Cases
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`TABLE OF AUTHORITIES
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`Ariad Pharmaceuticals., Inc. v. Eli Lilly & Co.,
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` 598 F.3d 1336 (Fed. Cir. 2010) (en banc) ........................................................ 31
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`Datamize LLC v. Plumtree Software Inc.,
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`
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` 75 USPQ2d 1801 (Fed. Cir. 2005) .............................................................. 30, 33
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`Festo Corp. v. Shoketsu Kinzoki Kogyo Kabushiki Corp.,
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` 535 U.S. 722 (2002) ......................................................................................... 29
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`Fiers v. Revel,
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` 984 F.2d 1164 (Fed. Cir. 1993) ......................................................................... 29
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`Halliburton Energy Servs., Inc. v. M-I LLC,
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` 514 F.3d 1244 (Fed. Cir. 2008) ......................................................................... 31
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`In re GPAC Inc.,
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` 57 F.3d 1573 (Fed. Cir. 1995)........................................................................... 15
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`IPXL Holdings, LLC v. Amazon.com, Inc.,
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` 430 F.3d 1377 (Fed. Cir. 2005) ......................................................................... 32
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`KSR Int'l Co. v. Teleflex Inc.,
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` 550 U.S. 398 (2007) ......................................................................................... 61
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`Statutes
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`35 U.S.C. § 102(a) ............................................................................................... 41
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`35 U.S.C. § 102(a)(1) ...................................................................................... 3, 4, 5
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`35 U.S.C. § 103(a) ................................................................................................. 5
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`35 U.S.C. § 112(a) ............................................................................................... 24
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`35 U.S.C. § 112(b) ............................................................................................ 4, 30
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`
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`Other Authorities
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`37 C.F.R. § 42.10(b) ............................................................................................ 81
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`37 C.F.R. § 42.15(a) ............................................................................................ 81
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`37 C.F.R. § 42.201 ............................................................................................... 81
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`37 C.F.R. § 42.202 ............................................................................................... 82
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`37 C.F.R. § 42.203 ............................................................................................... 81
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`37 C.F.R. § 42.204 ............................................................................................... 82
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`37 C.F.R. § 42.204(a) .......................................................................................... 82
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`37 C.F.R. § 42.204(b) ............................................................................................ 3
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`37 C.F.R. § 42.24(a) ............................................................................................ 84
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`37 C.F.R. § 42.8 ................................................................................................... 80
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`37 C.F.R. § 42.8(b)(1) .......................................................................................... 80
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`37 C.F.R. § 42.8(b)(2) .......................................................................................... 80
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`37 C.F.R. §§ 42.201-203 ...................................................................................... 81
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`Claim Interpretation: Examining Functional Claim Language, slide 8, notes,
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`available at https://www.uspto.gov/patent/initiatives/uspto-led-executive-actions-
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`high-tech-patent-issues#heading-3 (December 4, 2017) ................................... 31
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`M.P.E.P. § 2129 ..................................................................................................... 3
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`M.P.E.P. § 2131 ................................................................................................... 40
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`M.P.E.P. § 2143 ................................................................................................... 62
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`M.P.E.P. § 2164 ................................................................................................... 24
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`M.P.E.P. § 2173 ................................................................................................... 30
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`M.P.E.P. § 2173.05(g) ......................................................................................... 31
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`Petition for Post-Grant Review of U.S. Patent No. 9,593,973
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`I.
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`Introduction
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`Micro Motion, Inc. respectfully requests post-grant review of claims 1-56 of
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`U.S. Patent No. 9,593,973 to Huber et al. (“the ’973 patent”) (Ex. 1001). The
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`Board should institute review and cancel claims in the ‘973 patent for three
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`independent reasons.
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`First, claims 1, 4-16, 20, 23, 28, 30-32, 34-36, and 38-52 are anticipated by
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`Endo because Endo discloses the claimed first and second support element and
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`measuring tube with “mechanically connected”/”connected mechanically” ends,
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`where the second support element is laterally spaced from the measuring tube, an
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`oscillation exciter that excites a wanted mode in the measuring tube, and an
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`oscillation sensor that senses oscillations in the measuring tube. With more
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`specificity, Endo discloses all of the features 1P, 1.1-1.8.
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`Second, even if claims 1, 4-16, 20, 23, 28, 30-32, 34-36, and 38-52 are novel
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`over Endo under a unreasonably narrow interpretation of “mechanically
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`connected”/”connected mechanically” and/or “laterally spaced”, independent
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`claims 1-56 are still obvious over Endo in view of other references. For example,
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`Endo recites all the familiar elements of a typical Coriolis flowmeter and no
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`creativity or, at most, only ordinary creativity of a one of ordinary skill in the art is
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`needed to modify Endo to read on the narrowly interpreted claims. For example, if
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`“mechanically connected”/”connected mechanically” is interpreted as meaning
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`something like “rigidly mechanically connected” (which is unreasonably narrow
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`for at least the reason that these features are recited in dependent claims) then
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`Ohnishi discloses this familiar feature and no creativity is needed to modify the
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`ends of the flow tube 4, counterbalance 5, and cylindrical outer housing 1 of Endo
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`so they are “rigidly mechanically connected.”
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`Finally, claims 1, 16-24, 29-32, 43, 55, and 56 are indefinite because they
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`recite functional features that do not particularly point out and distinctly claim the
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`subject matter the inventor regards as his invention because these functional
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`features merely recite an intended result that provides no structural limitation or
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`are not achieved with an element, or because the claims mix statutory categories
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`such that a customer could later perform a claimed method of using of an
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`apparatus. For example, claim 16 which depends from claim 1, recites a “resonant
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`frequency of the wanted mode depends on a density, of the medium guided in said
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`measuring tube.” Here, the intended result is a resonant frequency of a wanted
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`mode depends on a density of a material in the measuring tube. There is no
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`structural limitation provided by this claim because this claim essentially just notes
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`that the resonant frequency of the wanted mode depends on the density of the
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`medium.
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`II.
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`Identification of challenge, 37 C.F.R. § 42.204(b)
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`A. Claims for Which Review is Requested
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`Micro Motion, Inc. (“Petitioner”) respectfully requests review under 35
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`U.S.C. § 321 of claims 1-56 of the ‘973 patent (“challenged claims”) and
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`cancellation of those claims as unpatentable.
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`B. Statutory Grounds
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`Claims 1-56 of the ‘973 patent are unpatentable and should be cancelled in
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`view of the following grounds and prior art references.
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`Prior art references
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`Ref. 1 U.S. Patent Number 5,691,485 to Endo et al. (“Endo”). Endo was
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`published on November 25, 1997. (Ex. 1005). Prior art under 35 U.S.C. §
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`102(a)(1).
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`Ref. 2 U.S. Patent Number 6,553,845 to Ohnishi et al. (“Ohnishi”) was
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`published on April 29, 2003. (Ex. 1006). Prior art under 35 U.S.C. §
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`102(a)(1).
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`Ref. 3 The specification of the ’973 patent at 1:16-5:59 describing patents or
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`patent publications published prior to the earliest possible effective filing
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`date of the ‘973 patent (“Background”). (Ex. 1001). Prior art under 35
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`U.S.C. § 102(a)(1). See M.P.E.P. § 2129. Compare Ex. 1001, p. 1, with
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`Ex. 1013-1037, p. 1 (showing all of the references discussed in the
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`Background as being “by another” and having publication dates being
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`prior to the earliest possible effective filing date of the ‘973 patent.)
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`Ref. 4 U.S. Patent Number 7,077,014 to Rieder et al. (“Rieder”) was published
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`on July 18, 2006. (Ex. 1007). Prior art under 35 U.S.C. § 102(a)(1).
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`Ref. 5 U.S. Patent Number 8,215,185 to Griffin et al. (“Griffin”) was published
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`on July 10, 2012. (Ex. 1008). Prior art under 35 U.S.C. § 102(a)(1).
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`Ref. 6 U.S. Patent Number 5,987,999 to VanCleve et al. (“VanCleve”) was
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`published on November 23, 1999. (Ex. 1009). Prior art under 35 U.S.C. §
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`102(a)(1).
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`Ground
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`Grounds of Unpatentability
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`1
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`Claims 1, 16-24, 29-32, 43, 55, and 56 are indefinite under 35 U.S.C. §
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`112(b).
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`2
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`3
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`4
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`5
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`6
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`Claims 1, 4-16, 20, 23, 28, 30-32, 34-36, and 38-52 are anticipated by
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`Endo under 35 U.S.C. § 102(a)(1).
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`Endo in view of Ohnishi renders obvious claims 1, 4-8, 30-32, 38, 39, 42
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`and 44-50 under 35 U.S.C. § 103(a).
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`Endo in view of Ohnishi in further view of the Background of the ‘973
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`patent renders obvious claims 2, 3, 9-15, 33-36, 40, 41, and 51-54 under
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`35 U.S.C. § 103(a) .
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`Endo in view of Ohnishi in further view of Rieder renders obvious
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`claims 16, 20, 23, 25-28, 37, and 43 under 35 U.S.C. § 103(a).
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`Endo in view of Ohnishi in further view of Griffin in further view of
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`VanCleve renders obvious claims 17-19, 21, 22, 24, 29, 55, and 56
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`under 35 U.S.C. § 103(a).
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`III.
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`‘973 Patent Overview
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`A. Summary
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`The ‘973 patent (provided by Ex. 1001) generally relates to a Coriolis
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`measuring transducer MT that is inserted directly into the course of a pipeline. Ex.
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`1001 at 1:16-33; 13:38 – 53. Prior art Coriolis flow meters include a measuring
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`tube that conveys and measures a mass flow rate of a medium. Id. at 1:16-33. The
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`prior art Coriolis flow meters included an “outer support element... jacketing the
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`measuring tube [which is] otherwise laterally spaced from the outer support
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`element.” Id. at 1:49-61. The prior art Coriolis flow meters also included an “inner
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`support element” that is “spaced laterally” from the outer support element with
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`ends that are mechanically coupled to the ends of the outer support element and the
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`measuring tube. Id. at 3:21-53. The ‘973 patent also states that prior art Coriolis
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`flow meters include sensors for registering the oscillations of the measuring tube
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`induced by an exciter, where the sensors include components that are placed on the
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`measuring tube and the inner support element. Id. at 5:3-16.
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`As to what the specification of the ‘973 patent discloses, FIGS. 1 and 2 show
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`the Coriolis measuring transducer MT with a measuring transducer housing HT
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`that surrounds a measuring tube M, a first support element SE, and a second
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`support element SS. Id. at 13:39-14:33. An oscillation exciter E is adapted to excite
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`wanted oscillations (“wanted mode”) of the measuring tube M. Id. at 15:5-11.
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`Medium guided through the measuring tube M induces Coriolis forces, which
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`causes a phase difference between oscillation sensors S1, S2. Id. at 15:34-54. This
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`phase difference is proportional to a mass flow rate of the medium guided through
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`the measuring tube M. Id. at 1:16-27; 17:5-50.
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` The ‘973 patent explains that external vibrations (e.g., vibrations from a
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`pipeline in which the Coriolis measuring transducer MT is inserted) can induce
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`disturbances on the measuring tube M and the support elements SE, SS. Id. at
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`11:1-19; 20:44-50.
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`Disturbance modes of
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`a first type are on the
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`first support element
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`SE and disturbance
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`modes of the second
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`type are on the second
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`support element SS.
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`Id. at 20:50-61. If
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`these disturbance
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`modes have a resonant frequency that is the same as the resonant frequency as the
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`wanted mode, the mass flow rate of the medium may not be correctly measured. Id.
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` To purportedly prevent this from occurring, the ‘973 patent increases or
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`decreases the resonant frequencies of these disturbance modes so as to separate
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`these frequencies from the resonant frequency of the wanted mode. Id. at 20:61-
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`-7-
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`Petition for Post-Grant Review of U.S. Patent No. 9,593,973
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`21:3. According to the ‘973 patent, this separation of the resonant frequencies of
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`the disturbance modes from the resonant frequency of the wanted mode is
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`accomplished by (a) selecting the relative dimensions (referred to as “so matched”
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`in the ‘973 patent) of the second support elements SS and the measuring tube M,
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`(b) mechanically coupling a spring element C to the measuring tube M and the first
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`support element SE, and/or (c) mounting a trimming weight W to the second
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`support element SS. Id. at 21:22-22:14.
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` The ‘973 patent also purports to prevent the external vibrations from
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`causing measurement errors by improving the “common mode rejection” of the
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`measurement transducer MT. More specifically, the ‘973 patent states that solidly
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`or rigidly connecting the ends of the measuring tube M with the ends of the first
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`support element SE and the second support element SS the wanted mode and the
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`disturbance mode of a second type will “…completely exclud[e] relative
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`movements of the mentioned ends.” Id. at 11:19-47, 22:45-23:12.
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`The ‘973 patent summarizes the claimed invention as follows:
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`On the other hand, however, such disturbance components—in the
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`most unfavorable case even disturbance components having a signal
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`frequency corresponding to the wanted frequency, consequently
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`disturbance components no longer distinguishable from the actual
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`wanted signal—can be surprisingly effectively prevented,
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`-8-
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`Petition for Post-Grant Review of U.S. Patent No. 9,593,973
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`consequently a mechanical common-mode suppression of measuring
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`transducers of the type being discussed can be significantly improved,
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`by connecting the measuring tube and the two support elements at
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`their respective corresponding first, respectively their corresponding
`second, ends solidly with one another, and, indeed, in a manner as
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`much as possible completely excluding relative movements of the
`mentioned ends.
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`Id. at 11:35-47 (emphasis added). In sum, the ‘973 patent explains that the only
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`constructional difference between the prior art and the claimed invention is a
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`second support element that is solidly connected to the first support element.
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`However, the features of completely excluding the relative movements of the ends
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`of the first and second support elements as well as the measuring tube by being
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`solidly connected are not recited in independent claim 1.
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`The claims of the ‘973 patent number 1-56, where claim 1 is the only
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`independent claim. Independent claim 1 is directed to a measuring transducer of
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`the vibration-type for a Coriolis mass flow measuring device. As recited in
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`independent claim 1, the measuring transducer comprises:
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`a measuring tube exhibiting an inlet-side, first tube end and an
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`outlet-side, second tube end, and exhibiting a tube wall with
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`a predetermined wall thickness and with a lumen surrounded
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`by said tube wall and extending between said first and said
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`-9-
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`second tube ends, which measuring tube is adapted to guide
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`a flowing medium in its lumen, and during guiding the
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`flowing medium to be caused to oscillate about a static
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`resting position for producing Coriolis forces;
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`a first support element, said first support element exhibiting a
`first support end connected mechanically with said first
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`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
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`tube;
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`a second support element, said second support element is
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`laterally spaced from said measuring tube and is
`mechanically connected with said first support end of said
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`first support element with a first support end as well as also
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`with the second support end of said first support element
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`with a second support end;
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`an oscillation exciter; and
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`at least a first oscillation sensor, wherein:
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`the measuring transducer exhibits a wanted mode, namely an
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`oscillatory mode, in which said measuring tube can execute
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`wanted oscillations, namely oscillations about its said static
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`resting position suitable for producing Coriolis forces with a
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`wanted frequency corresponding to a resonant frequency of
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`said wanted mode;
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`said oscillation exciter is adapted to excite said wanted
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`oscillations of said measuring tube; and
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`said first oscillation sensor includes a first sensor component
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`affixed externally on said measuring tube, and a second
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`sensor component mounted on said second support element,
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`and said first oscillation sensor is adapted to register
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`movements of oscillations of said measuring tube relative to
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`said second support element, and to convert said registered
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`movements into a first oscillatory signal representing
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`oscillations of said measuring tube.
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`Id. at claim 1. The outer support element and inner support element described in
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`the Background of the ‘973 patent respectively correspond to the “first support
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`element” and the “second support element” recited in claim 1 of the ‘973 patent.
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`Ex. 1001 at 11:1-18 (characterizing the “basic idea of the invention” using the
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`terms “inner support element” and “outer support element”). As to the ends of the
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`second support element being “mechanically connected” with the ends of the first
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`support element, this is also described in the Background using the term “coupled”
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`rather than “connected.” Id. at 3:27-43. However, “coupled” and “connected” are
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`used interchangeably in the specification of the ‘973 patent. Id. at 14:12-15 (“… a
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`second support element SS, which both with a first support end SS+ as well as also
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`with a second support end SS# is mechanically coupled with the support element
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`-11-
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`Petition for Post-Grant Review of U.S. Patent No. 9,593,973
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`SE.”). The remaining features are also found and arranged as described in the
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`Background of the ‘973 patent. Ex. 1002 at ¶ 30.
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`Due to the word count limit for this Petition in 37 C.F.R. § 42.24, the
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`unusually large quantity and verbiage of the claims in the ‘973 patent, and the
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`requirement that the Petition include a detailed explanation of the significance of
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`the evidence under 37 C.F.R. § 42.22, the claims of the ‘973 patent are grouped by
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`common features and dependency so that the same disclosed element anticipates
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`multiple claims. The claims depending from claim 1 are grouped as follows:
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`Common features
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`Claim numbers
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`Oscillation exciter and sensor
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`2, 3, 14, and 15
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`Construction and use of first
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`4 and 5
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`support element
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`Shape of the first support
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`6-8, 38, 39, and 44-50
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`element
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`Relative dimensions of the
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`9-12 and 51-54
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`measuring tube M and support
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`elements SE, SS
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`-12-
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`Petition for Post-Grant Review of U.S. Patent No. 9,593,973
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`Shapes and relative arrangements
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`13, 33-36, 40, and 41
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`of the measuring tube M and the
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`support elements SE, SS
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`Wanted modes/oscillations
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`16, 20, 23, and 43
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`Disturbance modes/oscillations
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`17-19, 21, 22, 24, 29, 55, and 56
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`Spring element and trimming
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`25-28
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`weight
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`Connections between the
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`30-32, and 42
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`measuring tube and support
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`elements
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`Electronics
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`37
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`
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`By way of example, referring to the above “shape of a first support element,” a
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`cylindrical tube with end pieces is a “hollow body” (claims 6, 44, 47, 50), “exhibits
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`a lumen” (claim 7), includes “endpiece[s]” (claim 8), is “cylindrical” (claims 38,
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`45, 48), is “a housing” (claim 39), and is “tubular” (claim 46, 49).“ Ex. 1002 at
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`claims 6-8, 38, 39, and 44-50.
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`Petition for Post-Grant Review of U.S. Patent No. 9,593,973
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`B. Prosecution history
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`The ‘973 patent is a national stage entry of international patent application
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`PCT/EP2013/074688 with an international filing date of November 26, 2013. The
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`international patent application PCT/EP2013/074688 claims priority to DE 10
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`2012 025 246 (filed December 30, 2012) and DE 10 2013 102 711 (filed March 18,
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`2013). Accordingly, the earliest possible effective filing date of the ‘973 patent is
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`December 30, 2012, which is before the March 16, 2013 effective date of Section
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`3(n)(1) of the America Invents Act (“AIA”). Ex. 1001. However, the effective
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`filing date of DE 10 2013 102 711 is March 18, 2013, which is after the March 16,
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`2013 effective date of section 3(n)(1) of the AIA.
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`On October 28, 2015, claims 1-37 were filed in the United States where an
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`amendment canceled original claims 1-37 and new claims 38-74 were added. Ex.
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`1004 at p. 165-174 and 110-121. The remarks accompanying this amendment did
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`not make any comments regarding any claimed features and did not discuss
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`patentability of the claims. Id. at p. 125.
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`Notices of Allowance were mailed November 23, October 14, and August
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`12, 2016. Id. at p. 26, 30, and 34.
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`On November 23, 2016, Patent Owner filed amended claims that deleted
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`features from independent claim 38, as well as some dependent claims. Id. at pp. 8-
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`-14-
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`23. The features deleted from the claims were added as new dependent claims. Id.
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`The features deleted from the claims were associated with “especially” clauses in
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`claim 38. Id. at p. 24. Again, the comments that accompanied the amendment filed
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`on November
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