Trials@uspto.gov
`571.272.7822
`
`
`
`
`
` Paper No. 15
`August 16, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TRIPLE PLUS LTD.,
`Petitioner,
`
`v.
`
`MORDECHAI BEN OLD,
`Patent Owner.
`____________
`
`Case PGR2018-00038
`Patent 9,671,031 B2
`____________
`
`
`Before BART A. GERSTENBLITH, GEORGE R. HOSKINS, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`GERSTENBLITH, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 328(a); 37 C.F.R. § 42.73(a)
`
`
`
`
`
`
`
`
`
`

`

`PGR2018-00038
`Patent 9,671,031 B2
`
`
`I.
`
`INTRODUCTION
`
`A.
`
`Background
`
`Triple Plus Ltd. (“Petitioner”) filed a Corrected Petition (Paper 3,
`
`“Petition” or “Pet.”) requesting institution of post-grant review of claim 1 of
`
`U.S. Patent No. 9,671,031 B2 (Ex. 1001, “the ’031 patent”). Mordechai Ben
`
`Old (“Patent Owner”) filed a Preliminary Response in the form of a
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`Declaration by Mr. Ben Old, dated June 3, 2018. (Paper 7). We instituted a
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`post-grant review of claim 1 on the sole ground asserted in the Petition—
`
`obviousness over the Triple+ nleak NWLT M Integrated Shutoff Unit,
`
`NWL-IVSL-34-0 (3/4 inch valve) product (the “Triple+ NWL”). Paper 8, 3,
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`28 (“Dec. on Inst.”).
`
`After institution of trial, Patent Owner did not file a Response.
`
`Petitioner, however, filed a Reply. Paper 11 (“Pet. Reply”). Neither Patent
`
`Owner nor Petitioner requested oral argument. See Paper 12 (Petitioner’s
`
`notice indicating that it does not seek oral argument). Therefore, we did not
`
`hold oral argument in this case. See Paper 14 (cancelling oral argument).
`
`Petitioner filed a Motion to Exclude Paper 7 Pursuant to 37 C.F.R.
`
`[§] 42.64(c). Paper 13 (“Motion”). Petitioner’s Motion seeks to exclude
`
`Patent Owner’s Preliminary Response. Id. at 1. Patent Owner did not file a
`
`response to Petitioner’s Motion.
`
`We have jurisdiction under 35 U.S.C. § 6. Petitioner bears the burden
`
`of proving unpatentability of the challenged claim, and the burden of
`
`persuasion never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l
`
`Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To prevail, Petitioner
`
`must prove unpatentability by a preponderance of the evidence. See 35
`
`U.S.C. § 326(e); 37 C.F.R. § 42.1(d). This Final Written Decision is issued
`
`2
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`

`

`PGR2018-00038
`Patent 9,671,031 B2
`
`pursuant to 35 U.S.C. § 328(a) and 37 C.F.R. § 42.73. For the reasons that
`
`follow, we determine that Petitioner has shown by a preponderance of the
`
`evidence that claim 1 of the ’031 patent is unpatentable. See 35 U.S.C.
`
`§ 326(e).
`
`B.
`
`Related Proceedings
`
`The parties represent that there are no pending matters between
`
`Petitioner and Patent Owner, and no pending matters that would affect or be
`
`affected by our institution of post-grant review. Pet. 3; Paper 6, 2.
`
`C.
`
`Real Parties in Interest
`
`Petitioner identifies itself, “Triple Plus Ltd.,” as the real party in
`
`interest. Pet. 3. Patent Owner identifies himself, “Mordechai Ben Old,” as
`
`the sole real party in interest. Paper 6, 2.
`
`D.
`
`The Reference
`
`The sole reference relied on by Petitioner is the Triple+ NWL product.
`
`See Pet. 4, 12.
`
`E.
`
`The Instituted Ground of Unpatentability
`
`The sole ground raised in the Petition, and upon which we instituted
`
`this post-grant review, is whether the Triple+ NWL would have rendered the
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`subject matter of claim 1 of the ’031 patent obvious to one of ordinary skill
`
`in the art at the time of the invention. Pet. 4; Dec. on Inst. 28. The Petition
`
`is supported by a Declaration by Dr. Michael C. Johnson, dated February 27,
`
`2018 (Ex. 1003), and a Declaration by Mr. Michael Attali, dated
`
`February 27, 2018 (Ex. 1018, “the Attali Declaration”).
`
`3
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`

`

`PGR2018-00038
`Patent 9,671,031 B2
`
`
`F.
`
`The ’031 Patent
`
`The ’031 patent is directed to “a wireless electric valve for the
`
`automatic closing and opening of a main fluid pipe in response to a wireless
`
`command received from an external source such as an alarm system.”
`
`Ex. 1001, 1:12–15. The ’031 patent explains:
`
`The valve (1) comprises a casing (2), an electric motor (3), an
`internal power source (31), an inner pipe (4) with an inlet (41),
`an outlet (42) and a butterfly (43), an inner clamp (5), a rotation
`shaft (44), a primary cogwheel (32) that is attached to the electric
`motor by means of a motor axle (33), a secondary cogwheel (45)
`that is attached to the rotation shaft, and an electronic control
`mechanism (6). The valve may also be equipped with a manual
`handle (7) that enables manual opening and closing of the
`valve (1).
`
`Id. at 2:32–41.
`
`Figures 1 and 2 of the ’031 patent are reproduced below:
`
`Figures 1 and 2 illustrate “the motor (3) whereby it is attached to the inner
`
`clamp (5).” Id. at 1:52–53; see id. at 2:42–43.
`
`
`
`4
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`

`

`PGR2018-00038
`Patent 9,671,031 B2
`
`
`Figures 3 and 4 of the ’031 patent are reproduced below:
`
`Figures 3 and 4 “depict the electric motor (3) whereby it is attached to the
`
`inner clamp (5), into which the inner pipe (4) is inserted.” Id. at 1:54–56.
`
`Figure 5 of the ’031 patent is reproduced below:
`
`
`
`Figure 5 “depicts the electric motor (3), the inner clamp (5), the inner
`
`pipe (4), the motor axle (33), the rotation shaft (44), the secondary
`
`cogwheel (45), and the manual handle (7).” Id. at 1:57–59; see id. at 2:57–
`
`
`
`59.
`
`5
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`

`

`PGR2018-00038
`Patent 9,671,031 B2
`
`
`Figure 11 of the ’031 patent is reproduced below:
`
`Figure 11 of the ’031 patent “depicts the components of the valve (1) when
`
`assembled within the casing (2).” Id. at 1:66–67; see id. at 2:63–65.
`
`Figures 7–9 of the ’031 patent are reproduced below:
`
`
`
`
`
`Figures 7–9 of the ’031 patent “depict the components of the valve (1) and
`
`the way in which the electronic control mechanism (6) is assembled in it.”
`
`Id. at 1:62–64. The valve includes electronic control mechanism (6), which
`
`includes a receiver and a printed circuit board. Id. at 2:66–67. “[E]lectronic
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`control mechanism (6) connects the internal power source (31) to the electric
`
`motor (3) and controls the activation and deactivation of said motor.” Id. at
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`3:1–3.
`
`6
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`

`

`PGR2018-00038
`Patent 9,671,031 B2
`
`
`The ’031 patent explains the operation of the valve as follows:
`
`When the electronic control mechanism receives a
`wireless command to close or open the automatic wireless
`electric valve (1), the following operations take place: the
`electronic control mechanism activates the electric motor, which
`turns the motor axle, the primary cogwheel, the secondary
`cogwheel, the rotation shaft, and the butterfly whereby closing
`or opening the inner pipe.
`
`Id. at 4:18–24.
`
`G. Challenged Claim
`
`Claim 1 is the sole claim of the ’031 patent and is reproduced below:
`
`An automatic wireless electric valve that is designed to be
`1.
`installed on a main fluid pipe and to receive remote wireless open
`and close commands, comprising: a casing, an electric motor, an
`internal power source, an inner pipe with an inlet, an outlet and
`a butterfly, an inner clamp, a rotation shaft, a primary cogwheel
`that is attached to the electric motor by means of a motor axle, a
`secondary cogwheel that is attached to the rotation shaft, and an
`electronic control mechanism;
`
`wherein the inner clamp includes a first part and a second
`part; wherein the first part of the inner clamp includes a chamber
`in which the electric motor is incorporated;
`
`wherein the inner pipe is incorporated into the inner
`clamp; wherein the motor axle is attached to the electric motor
`so that when the electric motor turns, the motor axle revolves
`around its longitudinal axis; wherein the motor axle is protruded
`through a hole in the chamber; wherein the primary cogwheel is
`assembled on the motor axle; wherein the secondary cogwheel is
`assembled on the rotation shaft; wherein the primary cogwheel
`is meshed with the secondary cogwheel; wherein the rotation
`shaft is attached to the butterfly and is designed to turn the
`butterfly so as to close or open the inner pipe;
`
`wherein the electronic control mechanism includes a
`receiver and a printed circuit board; wherein the electronic
`control mechanism connects the internal power source to the
`
`7
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`

`

`PGR2018-00038
`Patent 9,671,031 B2
`
`
`electric motor and controls activation and deactivation of the
`electric motor;
`
`wherein the casing includes an upper opening through
`which a manual handle is attached to the rotation shaft, two sided
`openings that enable access to the inlet and the outlet of the inner
`pipe, and a rear opening that enables access to the internal power
`source;
`
`wherein when the electronic control mechanism receives
`a wireless command to close or open the automatic wireless
`electric valve, the following operations take place: the electronic
`control mechanism activates the electric motor, which turns the
`motor axle, the primary cogwheel, the secondary cogwheel, the
`rotation shaft, and the butterfly whereby closing or opening the
`inner pipe;
`
`wherein the electric motor, the internal power source, the
`inner pipe, the inner clamp, the rotation shaft, the primary
`cogwheel, the motor axle, the secondary cogwheel and the
`electronic control mechanism contained inside the casing
`whereby enabling a user to install the automatic wireless electric
`valve on the main fluid pipe easily.
`
`Ex. 1001, 4:26–5:7.
`
`II. CLAIM CONSTRUCTION
`
`In a post-grant review based on a petition filed prior to November 13,
`
`2018, claim terms in an unexpired patent are construed according to their
`
`broadest reasonable interpretation in light of the specification of the patent in
`
`which they appear. See 37 C.F.R. § 42.200(b) (2017);1 see also Cuozzo
`
`Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). There is a
`
`
`1 A recent amendment to this rule does not apply here because the Petition
`was filed before November 13, 2018. See Changes to the Claim
`Construction Standard for Interpreting Claims in Trial Proceedings Before
`the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018)
`(amending 37 C.F.R. § 42.200(b) effective Nov. 13, 2018) (to be codified at
`37 C.F.R. pt. 42).
`
`8
`
`

`

`PGR2018-00038
`Patent 9,671,031 B2
`
`presumption that claim terms are given their ordinary and customary
`
`meaning, as would have been understood by a person of ordinary skill in the
`
`art in the context of the specification. See In re Translogic Tech. Inc., 504
`
`F.3d 1249, 1257 (Fed. Cir. 2007). Nonetheless, if the specification
`
`“reveal[s] a special definition given to a claim term by the patentee that
`
`differs from the meaning it would otherwise possess[,] . . . the inventor’s
`
`lexicography governs.” Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed.
`
`Cir. 2005) (en banc) (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d
`
`1359, 1366 (Fed. Cir. 2002)). Another exception to the general rule that
`
`claims are given their ordinary and customary meaning is “when the
`
`patentee disavows the full scope of a claim term either in the specification or
`
`during prosecution.” Uship Intellectual Props., LLC v. United States, 714
`
`F.3d 1311, 1313 (Fed. Cir. 2013) (quoting Thorner v. Sony Comput. Entm’t
`
`Am., LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)). Additionally, only terms
`
`that are in controversy need to be construed, and these need be construed
`
`only to the extent necessary to resolve the controversy. See Vivid Techs.,
`
`Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`
`The parties do not propose express constructions for any claim terms
`
`and it does not appear that expressly construing claim terms will assist in
`
`resolving the present controversy between the parties. Accordingly, we do
`
`not need to construe expressly any claim terms for purposes of this Decision.
`
`See Vivid Techs., 200 F.3d at 803.
`
`III. ANALYSIS
`
`A.
`
`Eligibility for Post-Grant Review
`
`The post-grant review provisions of section six of the Leahy-Smith
`
`America Invents Act (“AIA”), Pub L. No. 112-29, 125 Stat. 284 (2011),
`
`9
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`

`

`PGR2018-00038
`Patent 9,671,031 B2
`
`apply only to patents subject to the first inventor to file provisions of the
`
`AIA. AIA § 6(f)(2)(A). Specifically, the “first inventor to file” provisions
`
`apply to any application for patent, and to any patent issuing thereon, that
`
`contains or contained at any time a claim to a claimed invention that has an
`
`effective filing date on or after March 16, 2013. AIA § 3(n)(1).
`
`Furthermore, “[a] petition for a post-grant review may only be filed not later
`
`than the date that is 9 months after the date of the grant of the patent or of
`
`the issuance of a reissue patent (as the case may be).” 35 U.S.C. § 321(c);
`
`see also 37 C.F.R. § 42.202(a) (setting forth the same).
`
`As we explained in our Decision on Institution, the ’031 patent issued
`
`on June 6, 2017, from an application filed on November 1, 2015. Ex. 1001,
`
`at [22], [45]. The ’031 patent does not claim the benefit of an earlier filing
`
`date. Thus, we confirm our preliminary finding that the ’031 patent is
`
`available for post-grant review because it issued from an application that
`
`contains a claim with an effective filing date after March 16, 2013. Dec. on
`
`Inst. 8; see AIA §§ 3(n)(1), 6(f)(2)(A).
`
`The Petition was filed on March 1, 2018, within 9 months of the grant
`
`of the ’031 patent. See Paper 5, 1 (Notice of Filing Date Accorded to
`
`Petition and Time for Filing Patent Owner Preliminary Response); see also
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`35 U.S.C. § 321(c) (limiting petitions for post-grant review to nine months
`
`from date of patent grant or reissue date). Petitioner certifies that it has
`
`standing to seek post-grant review of the ’031 patent. Pet. 2. Patent Owner
`
`has not challenged Petitioner’s contentions as to the eligibility of the
`
`’031 patent for post-grant review. Accordingly, we agree with Petitioner
`
`that the ’031 patent is eligible for post-grant review.
`
`10
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`

`PGR2018-00038
`Patent 9,671,031 B2
`
`
`B.
`
`Petitioner’s Motion to Exclude
`
`Petitioner’s Motion seeks to exclude Patent Owner’s Preliminary
`
`Response (Paper 7), which, as mentioned above, was submitted in the form
`
`of a declaration by Patent Owner. Motion 1. Patent Owner did not file a
`
`response to Petitioner’s Motion. Petitioner represents that Patent Owner
`
`failed to participate in this proceeding after institution. Id. In particular,
`
`Petitioner contends Patent Owner “did not submit a Response; he failed to
`
`respond to correspondence about routine discovery; and he failed to appear
`
`for his noticed deposition or to otherwise respond to efforts to arrange his
`
`deposition.” Id.
`
`Petitioner asserts that cross-examination by deposition of an opposing
`
`side’s declarant is considered routine discovery. Id. (citing Office Patent
`
`Trial Practice Guide, 772 Fed. Reg. 48,756, 48,761 (Aug. 14, 2012)
`
`(“Practice Guide”)). Petitioner contends: “The burden and expense of
`
`producing a witness for redirect or cross-examination should normally fall
`
`on the party presenting the witness. Thus, a party presenting a witness’s
`
`testimony by affidavit should arrange to make the witness available for
`
`cross-examination.” Id. (quoting Practice Guide, 77 Fed. Reg. at 48,761).
`
`Petitioner contends Patent Owner “thwarted Petitioner’s routine
`
`discovery—preventing the development of a ‘fair record,’ ‘meaningful
`
`discovery’ and information Petitioner ‘reasonably need[ed] to respond’ to
`
`the issues raised by Patent Owner’s declaration.” Id. (quoting Practice
`
`Guide, 77 Fed. Reg. at 48,761). Accordingly, Petitioner argues that Patent
`
`
`2 Petitioner cites to “37 Fed. Reg. 48756, 48761 (Aug. 14, 2012).” Motion 1
`(underlining added). We understand Petitioner to have intended to cite to
`77 Fed. Reg. 48,756, which is the Practice Guide.
`
`11
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`

`PGR2018-00038
`Patent 9,671,031 B2
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`Owner’s Preliminary Response should be disregarded and excluded. Id. at 2
`
`(citing 1964 Ears, LLC v. Jerry Harvey Audio Holding, LLC, Case IPR2016-
`
`00494, slip op. at 4 (PTAB Jan. 30, 2017) (Paper 40)).
`
`As indicated above, Patent Owner did not file a Response. The
`
`subject declaration was filed as Patent Owner’s Preliminary Response.
`
`Patent Owner’s Preliminary Response states: “Patent Owner, Mordechai
`
`Ben Old, hereby submits the following preliminary response in the form of
`
`declaration.” Paper 7, 2. To the extent Patent Owner’s Preliminary
`
`Response/declaration would be given any weight post-institution, we agree
`
`with Petitioner that it would be considered routine discovery and that Patent
`
`Owner was required to make himself available for deposition. See Practice
`
`Guide, 77 Fed. Reg. at 48,761 (“Routine discovery includes: . . . (2) the
`
`cross-examination of the other side[’]s declarants . . . .”). Patent Owner did
`
`not do so.
`
`Additionally, the record reflects that Patent Owner has continued to
`
`fail to participate in this proceeding. In particular, Patent Owner did not
`
`respond to our Order specifying “that Patent Owner shall appear . . . on or
`
`before May 30, 2019, and show cause as to why adverse judgment should
`
`not be issued against Patent Owner for abandonment of the contest pursuant
`
`to 37 C.F.R. § 42.73(b)(4).” Paper 14, 3.
`
`Accordingly, in light of Patent Owner’s failure to participate in the
`
`proceeding by appearing for a deposition by Petitioner or otherwise, we
`
`agree that the appropriate remedy is to exclude Patent Owner’s declaration,
`
`submitted as its Preliminary Response (Paper 7). Thus, to the extent we
`
`12
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`

`PGR2018-00038
`Patent 9,671,031 B2
`
`would have considered Patent Owner’s declaration at this post-institution
`
`stage of the proceeding, we decline to do so.3
`
`C. Obviousness over the Triple+ NWL
`
`The U.S. Supreme Court set forth the framework for applying the
`
`statutory language of 35 U.S.C. § 103 in Graham v. John Deere Co. of
`
`Kansas City, 383 U.S. 1, 17–18 (1966):
`
`Under § 103, the scope and content of the prior art are to be
`determined; differences between the prior art and the claims at
`issue are to be ascertained; and the level of ordinary skill in the
`pertinent art resolved. Against this background, the obviousness
`or nonobviousness of the subject matter is determined. Such
`secondary considerations as commercial success, long felt but
`unsolved needs, failure of others, etc., might be utilized to give
`light to the circumstances surrounding the origin of the subject
`matter sought to be patented.[4]
`
`As explained by the Supreme Court in KSR International Co. v. Teleflex
`
`Inc.:
`
`Often, it will be necessary for a court to look to interrelated
`teachings of multiple patents; the effects of demands known to
`the design community or present in the marketplace; and the
`background knowledge possessed by a person having ordinary
`skill in the art, all in order to determine whether there was an
`apparent reason to combine the known elements in the fashion
`claimed by the patent at issue. To facilitate review, this analysis
`should be made explicit.
`
`
`3 Even if we considered Patent Owner’s Preliminary Response/declaration at
`this stage of the proceeding, we would reach the same findings and
`conclusions reached in the Decision on Institution and also find that
`Petitioner sufficiently established the factual and legal support for the
`findings reached in this Final Written Decision. In other words,
`consideration of Patent Owner’s Preliminary Response/declaration would
`not change the result reached here.
`4 Neither party relies upon objective indicia of nonobviousness.
`
`13
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`PGR2018-00038
`Patent 9,671,031 B2
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`550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
`
`2006) (“[R]ejections on obviousness grounds cannot be sustained by mere
`
`conclusory statements; instead, there must be some articulated reasoning
`
`with some rational underpinning to support the legal conclusion of
`
`obviousness.”)).
`
`“Whether an ordinarily skilled artisan would have been motivated to
`
`modify the teachings of a reference is a question of fact.” WBIP, LLC v.
`
`Kohler Co., 829 F.3d 1317, 1327 (Fed. Cir. 2016) (citations omitted).
`
`“[W]here a party argues a skilled artisan would have been motivated to
`
`combine references, it must show the artisan ‘would have had a reasonable
`
`expectation of success from doing so.’” Arctic Cat Inc. v. Bombardier
`
`Recreational Prods. Inc., 876 F.3d 1350, 1360–61 (Fed. Cir. 2017) (quoting
`
`In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent
`
`Litig., 676 F.3d 1063, 1068–69 (Fed. Cir. 2012)).
`
`1.
`
`Level of Ordinary Skill in the Art
`
`Petitioner contends that a person of ordinary skill in the art would
`
`have had: “a Bachelor of Science degree in a field of engineering or a
`
`closely related discipline, and at least one year of practical academic or
`
`industrial experience designing, testing and/or manufacturing fluid control
`
`valves.” Pet. 11 (citing Ex. 1003 ¶¶ 28–30). As discussed above, Patent
`
`Owner did not file a Response.
`
`We reiterate our preliminary finding from the Decision on Institution,
`
`that, consistent with the level of ordinary skill in the art reflected by the prior
`
`art of record, we adopt the level of ordinary skill in the art proposed by
`
`Petitioner based on the present record. See Dec. on Inst. 10; Okajima v.
`
`14
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`Patent 9,671,031 B2
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`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d
`
`1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).
`
`2.
`
`Scope and Content of the Prior Art
`
`a.
`
`Triple+ NWL as Prior Art
`
`Petitioner contends that the subject matter of claim 1 of the
`
`’031 patent would have been obvious to one of ordinary skill in the art based
`
`on the Triple+ NWL. Pet. 31–63. Petitioner asserts that the Triple+ NWL
`
`was “in public use, on sale, and otherwise available to the public before
`
`November 1, 2015.”5 Id. at 18. Petitioner notes that the exception in
`
`§ 102(b)(1) “does not apply since the disclosures relied on [by] Petitioner
`
`are all more than one year prior to the effective filing date.” Id. at 18–19.
`
`Petitioner argues that there are several independent bases for finding
`
`that the Triple+ NWL is prior art to the ’031 patent: (1) YouTube videos
`
`demonstrating public use of Triple+ NWL; (2) offers for sale of the Triple+
`
`NWL; (3) public installations of the Triple+ NWL; and (4) a sale of 4,000
`
`units of the Triple+ NWL. Id. at 21–29. In our Decision on Institution, we
`
`found that Petitioner had established, on the preliminary record, that the
`
`installations of the Triple+ NWL constituted public use (Dec. on Inst. 18–
`
`22) and that the Triple+ NWL was “on sale” prior to November 1, 2015, the
`
`filing date (and effective priority date) of the ’031 patent (id. at 22–23). As
`
`discussed above, Patent Owner did not file a Response. Therefore, we find
`
`that Patent Owner has waived any challenge to the status of the Triple+
`
`NWL as prior art. See Paper 9, 5 (“Patent Owner is cautioned that any
`
`
`5 As Petitioner remarks, the ’031 patent was filed on November 1, 2015, and
`does not claim priority to any other patent application. Pet. 18; Ex. 1001, at
`[22]. Accordingly, we agree with Petitioner that the current version of
`35 U.S.C. § 102, as amended by the AIA, governs.
`
`15
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`PGR2018-00038
`Patent 9,671,031 B2
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`arguments for patentability not raised in the response may be deemed
`
`waived.”).6
`
`b.
`
`Triple+ NWL
`
`Petitioner submitted Exhibits 1005–1010, which are photographs and
`
`drawings of the Triple+ NWL, an assembly guide, and a materials list. A
`
`partial version of Exhibit 1006, annotated by Petitioner, is reproduced
`
`below:
`
`
`
`
`
`
`6 Petitioner filed a Reply focused on whether the Triple+ NWL is prior art to
`the ’031 patent. Pet. Reply 4–17. We need not address the additional
`arguments therein because we find that Patent Owner has waived any
`challenge to Petitioner’s contention and our preliminary finding set forth in
`the Decision on Institution. To the extent it is deemed necessary, we hereby
`expressly adopt our reasoning and finding in the Decision on Institution that
`Petitioner sufficiently demonstrated that the Triple+ NWL is prior art to the
`’031 patent. See Dec. on Inst. 18–23.
`
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`The partial version of Exhibit 1006, shown above, is an exploded-parts view
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`of the Triple+ NWL illustrating the parts and assembly, in which Petitioner
`
`annotated to indicate “Oppositely disposed projections,” “Rotatable
`
`member,” and “Oppositely disposed slots,” and to remove the description of
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`the item numbers. Compare Pet. 16, with Ex. 1006, 1.
`
`Mr. Michael Attali provides the following testimony describing the
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`operation of the Triple+ NWL:
`
`The general operation of the valve prototype (and ultimately the
`commercial version) is straightforward. When the wireless
`transmitter/receiver attached on the printed circuit board within
`the unit received an appropriate signal, the unit’s electronic
`control mechanism provided a wired signal to the electric motor
`to start. This turned the spur gear on the motor axle which was
`engaged with and rotated the valve gear. The valve gear rotated
`the valve shaft thereby opening or closing the valve. A handle
`was provided to allow for manual override for opening and
`closing of the valve.
`
`Ex. 1018 ¶ 6. The Triple+ NWL “includes a valve 1 that is a quarter turn
`
`rotary ball valve.” Pet. 14 (citing Ex. 1006; Ex. 1003 ¶¶ 36–39, 56).
`
`3.
`
`Differences Between the Prior Art and the Claims;
`Motivation to Combine
`
`Petitioner maps each limitation of claim 1 to the Triple+ NWL, with
`
`one exception that the Triple+ NWL includes a ball valve whereas claim 1
`
`requires a butterfly. See id. at 32–63; see also id. at 31 (“the Triple+ NWL
`
`discloses every element of claim 1 except for the choice of quarter turn
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`rotary valve type,” i.e., the claimed butterfly valve). Petitioner asserts that
`
`“[t]he ball valve is interchangeable with the claimed ‘butterfly,’ and it would
`
`have been obvious to [a person of ordinary skill in the art] to substitute one
`
`for the other.” Id. at 35 (citing Ex. 1003 ¶¶ 36–40, 56–57). Petitioner relies
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`upon Dr. Johnson’s testimony in support of this position. See, e.g., id. at 36
`
`(citing Ex. 1003 ¶¶ 36–40).
`
`In particular, Petitioner states:
`
`a ball valve (like in the Triple+ NWL) is a member of the same
`family of valves as the butterfly. Except for the shape of the
`valve member, both are functionally and operationally identical,
`and both can and were used as shut-off valves for main water
`lines entering a residence or other structure.
`
`Id. (citing Ex. 1003 ¶¶ 36–40). Petitioner asserts that “[t]he Triple+ NWL
`
`used a ball valve and was intended for use as a shut-off valve on the main
`
`water line.” Id. at 37. Petitioner thus contends that: (1) this use for any
`
`quarter turn rotary valve type was well known to one of ordinary skill in the
`
`art, id. (citing Ex. 1003 ¶¶ 39–40); (2) “replacing a ball valve with a
`
`butterfly valve was a ‘simple design choice and an obvious replacement’” to
`
`a person of ordinary skill in the art, id. at 37–38 (quoting Ex. 1003 ¶¶ 56–
`
`57); and (3) “[s]ubstituting one known type of a valve for another—
`
`particularly within the same family of valves such as the quarter turn rotary
`
`valve family—is the epitome of an obvious design choice” to a person of
`
`ordinary skill in the art, id. at 38 (citing KSR, 550 U.S. at 416, 421).7
`
`We have reviewed Petitioner’s analysis mapping the Triple+ NWL to
`
`each of the limitations of claim 1, and the arguments and evidence of record,
`
`
`7 Petitioner points to Dr. Johnson’s testimony regarding U.S. Patent
`No. 6,945,274 (the “’274 patent”). Pet. 38–39 (citing Ex. 1019, 3:40–43;
`Ex. 1003 ¶ 40). Petitioner contends that Dr. Johnson provided an example
`of an obvious substitution by pointing to a statement in the ’274 patent that
`teaches a water line for a residential or commercial property using an
`operable shut off valve, “which ‘can be a gate valve, ball valve, globe valve,
`butterfly valve, or any type of valve that can be operated to stop water
`flow.’” Id. (citing Ex. 1019, 3:40–43; Ex. 1003 ¶ 40).
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`including the reasons with rational underpinnings as to why one of ordinary
`
`skill in the art would have modified the Triple+ NWL to use a butterfly
`
`valve instead of a ball valve.8 Pet. 31–63. As discussed above, Patent
`
`Owner has waived any argument for patentability and, therefore, Petitioner’s
`
`arguments are unrebutted. Because Petitioner’s analysis is supported
`
`sufficiently on the record and is unrebutted, we adopt Petitioner’s reasoning
`
`as our own. Accordingly, Petitioner demonstrates by a preponderance of the
`
`evidence that the Triple+ NWL would have rendered the subject matter of
`
`claim 1 of the ’031 patent obvious to one of ordinary skill in the art at the
`
`time of the invention. See 35 U.S.C. § 328(a).
`
`IV. CONCLUSION
`
`For the foregoing reasons, on this record, Petitioner has demonstrated
`
`by a preponderance of the evidence that claim 1 of the ’031 patent is
`
`unpatentable.
`
`Accordingly, it is:
`
`V. ORDER
`
`ORDERED that claim 1 of U.S. Patent No. 9,671,031 B2 has been
`
`shown to be unpatentable; and
`
`
`8 Additionally, the evidence of record supports the finding that claim 1 of the
`’031 patent “claims a structure already known in the prior art that is altered
`by the mere substitution of one element for another known in the field”
`(KSR, 550 U.S. at 416), and that the substitution of a butterfly valve for the
`ball valve of the Triple+ NWL yields no more than the predictable result
`expected (i.e., stopping water flow). See Pet. 38–39 (quoting Ex. 1019,
`3:40–43) (citing Ex. 1003 ¶ 40); see also id. at 6–7 (quoting Ex. 1003 ¶¶ 38–
`40).
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`FURTHER ORDERED that parties to the proceeding seeking judicial
`
`review of this Final Written Decision must comply with the notice and
`
`service requirements of 37 C.F.R. § 90.2.
`
`
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`PGR2018-00038
`Patent 9,671,031 B2
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`For PETITIONER:
`
`Mark C. Johnson
`Brian M. Baker
`RENNER OTTO
`mjohnson@rennerotto.com
`bbaker@rennerotto.com
`
`
`
`For PATENT OWNER:
`
`Mordechai Ben Old
`meir@mdpatent.co.il
`
`
`
`
`
`
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