Trials@uspto.gov
`571.272.7822
`
`
`
`
`
` Paper No. 8
`August 29, 2018
`
`
`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.
`
`
`DECISION
`Institution of Post-Grant Review
`35 U.S.C. § 324(a)
`
`
`
`
`
`
`
`
`

`

`PGR2018-00038
`Patent 9,671,031 B2
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`
`I.
`
`INTRODUCTION
`
`Background
`
`Triple Plus Ltd. (“Petitioner”) filed a Corrected Petition (Paper 3,
`“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 Declaration
`by Mr. Ben Old, dated June 3, 2018. (Paper 7). Under 35 U.S.C. § 324(a), a
`post-grant review may be instituted only if “the information presented in the
`petition . . . demonstrate[s] that it is more likely than not that at least 1 of the
`claims challenged in the petition is unpatentable.” We determine that the
`information presented demonstrates that, more likely than not, Petitioner will
`prevail in showing that claim 1 of the ’031 patent is unpatentable. Thus, we
`institute post-grant review of claim 1 of the ’031 patent.
`
`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.
`
`Real Parties in Interest
`
`The 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.
`
`The Reference
`
`Petitioner relies on the following product (see Pet. 4, 12):
`Triple+ nleak NWLTM Integrated Shutoff Unit, NWL-IVSL-34-0 (3/4
`inch valve) (the “Triple+ NWL”).
`
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`PGR2018-00038
`Patent 9,671,031 B2
`
`
`The Asserted Ground of Unpatentability
`
`Petitioner challenges the patentability of claim 1 of the ’031 patent on
`the following ground:
`
`Product
`Triple+ NWL
`
`Basis
`§ 103
`
`Claim challenged
`1
`
`Petitioner supports its Petition with 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”).
`
`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.
`
`3
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`PGR2018-00038
`Patent 9,671,031 B2
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`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.
`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.
`
`4
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`PGR2018-00038
`Patent 9,671,031 B2
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`Figure 5 of ’031 patent is shown 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.
`
`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.
`
`5
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`PGR2018-00038
`Patent 9,671,031 B2
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`
`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
`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
`3:1–3.
`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.
`
` Claim
`Claim 1 is the sole claim of the ’031 patent and is reproduced below:
`1.
`An automatic wireless electric valve that is designed to be
`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
`
`6
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`PGR2018-00038
`Patent 9,671,031 B2
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`
`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
`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
`
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`PGR2018-00038
`Patent 9,671,031 B2
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`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
`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., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999) (only terms that are in controversy need to be construed, and these
`need be construed only to the extent necessary to resolve the controversy).
`
`III. ANALYSIS
`Eligibility for Post-Grant Review
`
`The ’031 patent issued on June 6, 2017, from an application filed on
`November 1, 2015. Ex. 1001, [22], [45]. The ’031 patent does not claim the
`benefit of an earlier filing date. Thus, 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. See Leahy-Smith
`America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284 (2011),
`§§ 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 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.
`
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`PGR2018-00038
`Patent 9,671,031 B2
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`
` 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.
`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.
`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 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).
`
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`PGR2018-00038
`Patent 9,671,031 B2
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`
`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 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). Patent Owner, in its Preliminary
`Response, does not take a position on the level of ordinary skill in the art.
`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 Okajima v. 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).
`
`
`
`Scope and Content of the Prior Art
`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.”1 Id. at 18. Petitioner notes that “[s]ection 102(b) 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.
`As noted above, Patent Owner filed a Preliminary Response in the
`form of a Declaration by the named inventor, Mordechai Ben Old. Paper 7.
`
`1 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.
`
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`PGR2018-00038
`Patent 9,671,031 B2
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`Patent Owner’s Preliminary Response is focused entirely on whether
`Petitioner sufficiently establishes that the Triple+ NWL is prior art to the
`’031 patent. Prelim. Resp. 3 (¶¶ 7–8).
`Petitioner argues that it has six independent bases for finding that the
`Triple+ NWL is prior art to the ’031 patent. We address each.
`
`YouTube Videos
`a.
`Three of Petitioner’s six bases asserted in support of Petitioner’s
`argument that the Triple+ NWL is prior art are YouTube videos allegedly
`published by Patent Owner. See Exs. 1010–1012.
`Petitioner contends the following with respect to the videos: (1) the
`videos show and describe the use of the Triple+ NWL; (2) the Triple+ NWL
`performed as intended and was shown working for its intended purpose; and
`(3) viewers of the videos were under no limitation, restriction, or obligation
`of confidentiality. Pet. 21–23, 29 (citation and quotation omitted). Thus,
`Petitioner asserts that each video constitutes a public use under § 102(a)(1).
`Id.
`
`Patent Owner asserts that the YouTube videos “are not a ‘use’ but just
`mere demonstration” and that the videos did not provide “the public any
`access to the details of the invention.” Prelim. Resp. 3 (¶ 10). Patent Owner
`contends
`
`“Accessible” to the public means that the inventor has
`done an action that enables people of the public to know the
`details of the invention, that is to say, the possibility of other
`people of the public to discover the details of the invention is
`exclusively in the hands of the public, and they may exercise
`discretion whether to check the details of the invention or not.
`Id. at 4 (¶ 13). Thus, Patent Owner argues that the YouTube videos
`
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`PGR2018-00038
`Patent 9,671,031 B2
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`
`are not a public “use” and in addition they gave no information
`or access as to the details of the invention, they just explain the
`problem that the product is designed to solve and that it may
`solve that problem. These [videos] do not reveal or disclose[]
`the details of the invention and they have not provided any access
`to anyone!
`Id. at 4–5 (¶ 14). In short, Patent Owner’s position is that “as long as the
`publication does not disclose the details of the invention, the publication
`does not fall within the scope of Section 102(a)(1).” Id. at 5 (¶ 15).
`Section 102(a)(1) of Title 35 of the United States Code provides:
`(a) NOVELTY; PRIOR ART. —A person shall be entitled to a patent
`unless—
`(1) the claimed invention was patented, described in a printed
`publication, or in public use, on sale, or otherwise available to
`the public before the effective filing date of the claimed
`invention . . . .
`The test for whether an invention is ineligible for a patent due to public use2
`“is whether the purported use: (1) was accessible to the public; or (2) was
`commercially exploited.” Am. Seating Co. v. USSC Grp., Inc., 514 F.3d
`1262, 1267 (Fed. Cir. 2008) (citing Invitrogen Corp. v. Biocrest Mfg., L.P.,
`424 F.3d 1374, 1380 (Fed. Cir. 2005)); see Delano Farms Co. v. Cal. Table
`Grape Comm’n, 778 F.3d 1243, 1247 (Fed. Cir. 2015) (quotation and
`citation omitted).
`“Whether a patent is invalid due to public use under [pre-AIA]
`§ 102(b) is a question of law based on underlying questions of fact.”
`Invitrogen Corp. v. Biocrest Mfg., L.P., 424 F.3d 1374, 1378 (Fed. Cir.
`2005) (citing Netscape Commc’ns Corp. v. Konrad, 295 F.3d 1315, 1321
`
`
`2 The pre-AIA version of § 102 included the same language—“public use”—
`as a bar to patentability.
`
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`(Fed. Cir. 2002)). The United States Court of Appeals for the Federal
`Circuit (the “Federal Circuit”) has identified the following factors as helpful
`in analyzing this issue: “the nature of the activity that occurred in public; the
`public access to and knowledge of the public use; [and] whether there was
`any confidentiality obligation imposed on persons who observed the use.”
`Delano Farms, 778 F.3d at 1247 (quotation and citation omitted). There is
`an exception, however, if the use is experimental. Am. Seating, 514 F.3d at
`1267 (citing City of Elizabeth v. Am. Nicholson Pavement Co., 97 U.S. 126,
`134 (1877)); see Polara Eng’g Inc. v. Campbell Co., 894 F.3d 1339, 1348
`(Fed. Cir. 2018) (discussing several factors relevant to determining whether
`a use is experimental) (citation omitted).
`The facts presented with respect to the YouTube videos at this stage
`of the proceeding are not overwhelmingly in support of either Petitioner’s or
`Patent Owner’s positions. On the one hand, Patent Owner’s YouTube
`videos clearly show the Triple+ NWL in use, and support Petitioner’s
`contention that the videos were accessible to the public, and were viewable
`without any confidentiality restriction. In fact, the hyperlinks provided in
`the Petition still link to the videos upon which Petitioner relies. See, e.g.,
`https://www.youtube.com/watch?v=IsP9qu5dXCk. On the other hand,
`however, Patent Owner is correct that the videos do not reveal to the public
`the elements of the Triple+ NWL that correspond to the limitations of
`claim 1 of the ’031 patent (aside from perhaps the recited casing). Prelim.
`Resp. 5 (¶ 15). Additionally, the YouTube videos did not provide any
`viewer with physical access to the Triple+ NWL and did not provide
`information from which a viewer could gain access to or learn the details of
`the Triple+ NWL.
`
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`PGR2018-00038
`Patent 9,671,031 B2
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`
`On this record, considering the facts above, we are not persuaded that
`the YouTube videos constitute a “public use” of the Triple+ NWL. Similar
`to Egbert v. Lippman, the alleged public use did not reveal the patented
`features of the device to the public eye. See 104 U.S. 333, 336 (1881)
`(discussing corset-steels that were not observable by the public eye).
`Although the Supreme Court determined that the use in Egbert was a public
`use, the Court focused on the accessibility to the public of the invention. Id.
`(“[S]ome inventions are by their very character only capable of being used
`where they cannot be seen or observed by the public eye. . . . Nevertheless,
`if its inventor sells a machine of which his invention forms a part, and allows
`it to be used without restriction of any kind, the use is a public one.”). In
`other words, the critical fact there was that the inventor gave away his
`invention without imposing any restriction, e.g., upon its future use or sale.
`Id. at 337. Here, even though a viewer of the videos is not under an
`obligation of confidentiality, the videos do not provide the public with
`access to or knowledge of the specific limitations of the claimed invention.
`Thus, on this record, Petitioner has not established that the YouTube videos
`constitute public use of the Triple+ NWL.
`
`Alleged Offers for Sale
`b.
`Petitioner contends that “[d]uring the summer of 2014, Go Leakless
`(Patent Owner’s business) with Petitioner were actively marketing the
`Triple+ NWL to potential customers.” Pet. 23 (citing Ex. 1018 ¶¶ 24–25).
`According to Petitioner, “[t]his included presenting the Triple+ NWL to
`insurance companies to offer their policy holders purchase and installation
`of the Triple+ NWL.” Id. Petitioner points to Exhibit 1017, which includes
`an English-language translation of an email chain and letters in August 2014
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`PGR2018-00038
`Patent 9,671,031 B2
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`discussing the Triple+ NWL. Id. at 23–25. One letter is directed to
`“Shomera’s underwriters and agents” and the other is directed generally to
`“Agent.” Ex. 1017, 4, 5. Petitioner relies upon paragraphs 24 and 25 of the
`Attali Declaration in which Mr. Attali discusses the email chain and letters.
`Pet. 23. Mr. Attali states that “Shomera sent this material to its agents and
`surveyors.” Ex. 1018 ¶ 25.
`Petitioner contends that:
`This exhibit establishes an offer for the purchase of, as
`well as the disclosure of, the Triple+ NWL in August 2014. . . .
`The products are specified (either the 1/2 inch or 3/4 inch
`versions), a price quoted (e.g., 890 NIS + VAT for the 3/4 inch),
`and a method provided for acceptance (calling the telephone
`number to order).
`Pet. 24–25 (citing Linear Tech. Corp. v. Micrel Inc., 275 F.3d 1040, 1050
`(Fed. Cir. 2001); Ex. 1017, 4–5).
`Patent Owner asserts that the Triple+ NWL was not offered for sale
`before November 1, 2014. Prelim. Resp. 8 (¶ 26). Patent Owner contends
`that the emails and letters included in Exhibit 1017 illustrate “pre-marketing
`activity, rather than an offer for sale.” Id. at 9 (¶ 31); see id. at 9 (¶ 29)
`(“The activities between me and the insurance company before the Critical
`Date was only and simply to prepare promotional documents that in the
`future the insurance company will give to their agent, and then the agents
`will promote the product amongst the insured clients.”). Additionally,
`Patent Owner asserts that if an offer for sale were made, it should exist
`“between Go Leakless [Patent Owner’s company] and a customer.” Id. at 9–
`10 (¶ 31) (emphasis omitted). Notably, Patent Owner contends that the
`letters lacked “material terms of a commercial offer such as pricing for the
`product, quantities, time and place of delivery, product specifications,
`
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`guarantee, time and place of installation, and other material conditions that
`without them there is no legal binding offer.” Id. at 10 (¶ 31) (emphasis
`omitted) (“As to the pricing, that draft letter states explicitly that ‘*in certain
`cases additional cost may be involve[d] arising from the condition of the
`pipes, plumbing systems or complex wiring.’” (citing Ex. 1017[3], 4)).
`As quoted above, § 102(a)(1) provides that a person shall be entitled
`to a patent unless, inter alia, the claimed invention was on sale before the
`effective filing date of the claimed invention. 35 U.S.C. § 102(a)(1). “A
`patent is invalid under the on-sale bar if, before the critical date, 1) the
`product is the subject of a commercial offer for sale, and 2) the invention is
`ready for patenting.” Medicines Co. v. Hospira, Inc., 881 F.3d 1347, 1351
`(Fed. Cir. 2018) (citing Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 67 (1998)).
`Whether the on-sale bar applies is a question of law based on underlying
`factual findings. Medicines Co. v. Hospira, Inc., 827 F.3d 1363, 1371 (Fed.
`Cir. 2016) (en banc) (citing Grp. One, Ltd. v. Hallmark Cards, Inc., 254
`F.3d 1041, 1045–46 (Fed. Cir. 2001)).4
`The Federal Circuit has explained that “[a] primary rationale of the
`on-sale bar is that publicly offering a product for sale that embodies the
`claimed invention places it in the public domain, regardless of when or
`
`
`3 Patent Owner cites Exhibit 1013, but we understand him to refer to
`Exhibit 1017. See, e.g., Prelim. Resp. 29 (referring to pages 4 and 5 of
`Exhibit 1013).
`4 Consistent with the Federal Circuit’s interpretation of § 102(a)(1), we
`determine that the AIA did not change the meaning of “on sale” in the
`circumstances involved here. See Helsinn Healthcare S.A. v. Teva Pharms.
`USA, Inc., 855 F.3d 1356, 1360 (Fed. Cir. 2017) (concluding that the AIA
`did not change the statutory meaning of “on sale” in light of the
`circumstances presented in Helsinn).
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`whether actual delivery occurs.” Helsinn Healthcare S.A. v. Teva Pharms.
`USA, Inc., 855 F.3d 1356, 1370 (Fed. Cir. 2017) (citations omitted)
`(discussing the application of the “on sale” bar under the current (AIA)
`version of § 102(a)(1)). “The patented product need not be on-hand or even
`delivered prior to the critical date to trigger the on-sale bar.” Id. (citations
`omitted). Additionally, a sale need not be consummated or an offer accepted
`to trigger the on-sale bar. Id. (citations omitted).
`With respect to determining the first prong—whether the product is
`the subject of a commercial offer for sale—we “apply Federal Circuit law
`and analyze the issue under the law of contracts as generally understood,
`focusing on those activities that would be understood to be commercial sales
`and offers for sale in the commercial community.” Medicines, 881 F.3d at
`1351 (internal quotations and citation omitted). “Although the Uniform
`Commercial Code (UCC) is not dispositive, it is a useful guide for defining
`whether a communication or series of communications rises to the level of a
`commercial offer for sale.” Id. (internal quotations and citation omitted).
`“An offer for sale is one which the other party could make into a binding
`contract by simple acceptance.” Id. (internal quotations and citation
`omitted). We apply this standard to the facts presented before us.
`We agree with Petitioner that the letter addressed to “Shomera’s
`underwriters and agents” includes the product, price, and method of
`acceptance. Ex. 1017, 4. A concern we have, however, is that the letter,
`although addressed to “Shomera’s underwriters and agents,” appears to
`contain information intended for Shomera’s clients (i.e., the customers of
`Shomera’s underwriters and agents). See Ex. 1018 ¶ 24 (testifying that the
`letter offered installation to “certain insurance companies’ clients”). Thus,
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`even if we were to find that the letter includes the critical terms for an offer
`for sale,5 evidence that the letter or the information contained therein was
`actually communicated to Shomera’s clients for the clients to accept or
`decline an offer for sale is lacking.
`Mr. Attali’s testimony fails to close this gap. In particular, Mr. Attali
`testifies that Patent Owner sent the letter to Shomera and that Shomera sent
`it “to its agents and surveyors.” Ex. 1018 ¶ 25 (emphasis added). Mr. Attali
`then states that the letter “not only contained the price but invited customer
`to call the listed telephone number to place an order and schedule
`installation.” Id. (emphasis added). Mr. Attali’s use of “customer” aligns
`with our understanding, and Patent Owner’s argument, that the intended
`recipient of the alleged offer was not Shomera’s “agents” or “surveyors.” In
`other words, Petitioner fails to present evidence that Shomera’s agents and
`surveyors are the clients/customers to whom the installations allegedly were
`or would be offered. Accordingly, on the record before us, we are not
`persuaded by Petitioner that Exhibit 1017 shows that the Triple+ NWL was
`“on sale” prior to November 1, 2015, because Petitioner fails to show that
`the alleged offers were communicated to the intended recipients.6
`
`Alleged Public Installations
`c.
`Petitioner argues that certain installations of the Triple+ NWL
`constitute both “public use” of the valve and indicate that the valve was
`“otherwise available to the public” under § 102(a)(1). Pet. 25–27 (internal
`
`
`5 In light of our findings herein, we need not take a position on whether the
`letters contain sufficient information to constitute an offer.
`6 In light of our findings with respect to the first prong of the on-sale bar, we
`need not reach the second prong—whether the invention was ready for
`patenting.
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`quotation omitted). In particular, Petitioner contends that “[b]y August 2014
`Petitioner had manufactured the first commercial units of the Triple+ NWL,
`and these units were publicly installed with a pilot group of customers.” Id.
`at 25 (citing Ex. 1018 ¶ 26). Petitioner asserts that “[t]he Triple+ NWL
`design was already proven and it operated and functioned as intended, but
`the pilot was intended to fine-tune installation practices, evaluate wireless
`connectivity in commercial and residential settings, and other [sic] gather
`feedback on actual operations of the commercial production units.” Id.
`(citing Ex. 1018 ¶ 26). Petitioner relies upon emails from Patent Owner
`indicating the number of valves installed as of August and October 2014,
`and notes that by October 2014, over 50 valves were installed. Id. at 25–26
`(citing Ex. 1013, 3). Petitioner contends that “[c]ustomers in the pilot group
`were not obligated to any secrecy or confidentiality regarding the
`Triple+ NWL product or their use of it and, in fact, many of the units were
`installed outside of buildings and were thus further available to the public.”
`Id. at 26–27 (citing Ex. 1018 ¶ 26).
`Patent Owner contends that the installations referred to above were
`“for testing.” Prelim. Resp. 6 (¶ 20). Patent Owner asserts that he ordered
`the units from Petitioner, his employees installed the units for “a couple of
`hours . . . and then immediately . . . re-install[ed][7] them.” Id. Patent Owner
`contends:
`In all that time the Products were under supervision of my
`employees and no one has opened the products or investigated
`them or has an access to the products. The tests immediately
`showed that all the Products were not working properly. As
`noted, we re-installed them immediately after installation and
`
`
`7 We understand Patent Owner to mean “uninstalled.”
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`testing, and sent them back to the Petitioner for repairs, and so
`on.
`Id. In short, we understand Patent Owner’s argument to be that this use of
`the Triple+ NWL was experimental and, thus, does not invoke the “public
`use” prong of § 102(a)(1).
`“A use may be experimental only if it is designed to (1) test claimed
`features of the invention or (2) determine whether an invention will work for
`its intended purpose—itself a requirement of patentability.” Energy
`Heating, LLC v. Heat On-The-Fly, LLC, 889 F.3d 1291, 1300–01 (Fed. Cir.
`2018) (citations omitted). The Federal Circuit has set forth the following
`“objective factors” as “indicia of experimental use”:
`(1) the necessity for public testing,
`(2) the amount of control over the experiment retained by the
`inventor,
`(3) the nature of the invention,
`(4) the length of the test period,
`(5) whether payment was made,
`(6) whether there was a secrecy obligation,
`(7) whether records of the experiment were kept,
`(8) who conducted the experiment,
`(9) the degree of commercial exploitation during testing,
`(10) whether the invention reasonably requires evaluation
`under actual conditions of use,
`(11) whether testing was systematically performed,
`(12) whether the inventor continually monitored the invention
`during testing, and
`(13)
`the nature of contacts made with potential customers.
`Id. (citing Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1353
`(Fed. Cir. 2002)).
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`Based on the evidence of record, we find the Allen factors relatively
`balanced.8 In particular, we find most compelling that there is no evidence
`that public testing was required. Additionally, there is no evidence that a
`secrecy obligation was imposed or that the nature of the invention required
`this type of alleged testing. At least these factors weigh in Petitioner’s favor
`on the present record. We find, how