Trials@uspto.gov
`Tel: 571–272–7822
`
`
`
`
`
`Paper 14
`Entered: February 18, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`MICRO MOTION, INC.,
`Petitioner,
`
`v.
`
`INVENSYS SYSTEMS, INC.,
`Patent Owner.
`_______________
`
`Case IPR2014-01409
`Patent 7,571,062 B2
`_______________
`
`
`Before WILLIAM V. SAINDON, MICHAEL R. ZECHER, and
`JENNIFER M. MEYER, Administrative Patent Judge.
`
`SAINDON, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`Denying Petitioner’s Motion for Joinder
`37 C.F.R. § 42.122
`
`
`
`
`
`
`Tel: 571–272–7822
`
`
`
`
`
`Paper 14
`Entered: February 18, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`MICRO MOTION, INC.,
`Petitioner,
`
`v.
`
`INVENSYS SYSTEMS, INC.,
`Patent Owner.
`_______________
`
`Case IPR2014-01409
`Patent 7,571,062 B2
`_______________
`
`
`Before WILLIAM V. SAINDON, MICHAEL R. ZECHER, and
`JENNIFER M. MEYER, Administrative Patent Judge.
`
`SAINDON, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`Denying Petitioner’s Motion for Joinder
`37 C.F.R. § 42.122
`
`
`
`
`
`
`
`IPR2014-01409
`Patent 7,571,062 B2
`
`I. INTRODUCTION
`
`Petitioner requests an inter partes review of claims 1, 12, 23–25, 29,
`
`36, and 43 of U.S. Patent No. 7,571,062 (Ex. 1001, “the ’062 patent”).
`
`Paper 2, 3 (“Pet”). Petitioner acknowledges that it was served more than a
`
`year before filing its Petition, but asserts that 35 U.S.C. § 315(b) does not
`
`apply to this proceeding because its Petition is accompanied by a timely
`
`Motion for Joinder under 35 U.S.C. § 315(c) to a pending inter partes
`
`review of the ’062 patent. Pet. 2–3; see also Paper 3 (Petitioner’s Motion
`
`for Joinder); Micro Motion, Inc. v. Invensys Sys., Inc., Case IPR2014-00393
`
`(PTAB Aug. 4, 2014) (Paper 16, instituting inter partes review on claims 1,
`
`29, 40, and 45 of the ’062 patent). Patent Owner timely filed a Preliminary
`
`Response. Paper 13 (“Prelim. Resp.”).
`
`We have jurisdiction under 35 U.S.C. § 314, which provides that
`
`an inter partes review may not be instituted “unless . . . there is a reasonable
`
`likelihood that the petitioner would prevail with respect to at least 1 of the
`
`claims challenged in the petition.” Upon consideration of the Petition,
`
`Preliminary Response, and the papers and exhibits cited therein, we do not
`
`institute an inter partes review on any challenged claim. Likewise, we do
`
`not grant Petitioner’s Motion for Joinder.
`
`A. Related Matters
`
`The ’062 patent is subject to the aforementioned inter partes review,
`
`IPR2014-00393. Pet. 1.
`
`Petitioner alleges the ’062 patent has been asserted in Invensys Sys.,
`
`Inc. v. Emerson Electric Co., No. 6:12-cv-00799-LED (E.D. Tex.). Pet. 1.
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` 2
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`IPR2014-01409
`Patent 7,571,062 B2
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`Petitioner has filed a number of petitions for inter partes review of
`
`Patent Owner’s patents. Id. at 2.
`
`B. Background on Flow Meter Technology
`
`As described in the background section of the ’062 patent, Coriolis
`
`flow meters seek to measure the flow of material through a tube by taking
`
`advantage of the Coriolis effect. Ex. 1001, 1:31–41. A driving mechanism
`
`applies forces to the tube to induce it to oscillate. Id. at 1:42–43. The flow
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`meter uses sensors to measure the twisting of the tube (due to the Coriolis
`
`effect, as explained below) and thereby, estimates the mass and/or density of
`
`the material. See id. at 3:47–56; see also Ex. 1064 ¶¶ 28–38 (Declaration of
`
`Dr. Michael D. Sidman explaining how Coriolis flow meters operate).
`
`Figures 1–3 of Exhibit 1009,1 reproduced below, show the Coriolis effect in
`
`action:
`
`
`
`In Figure 1, an empty tube bent in a horseshoe shape is made to
`
`oscillate up and down; both legs of the tube pass the midpoint of the up-and-
`
`
`1 Micro Motion, How the Micro Motion® Mass Flow and Density Sensor
`Works, (1990) (Ex. 1009).
`
` 3
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`IPR2014-01409
`Patent 7,571,062 B2
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`down oscillation at the same time. Ex. 1009, 1. In Figure 2, fluid now flows
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`in one end of the tube and out the other. Id. The tube is depicted as rising,
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`in the upward swing of its oscillation. Id. In this moment, the fluid flowing
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`into the first leg of the tube is pushed upwards by the rising tube, but resists
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`this motion, due to inertia, and exerts a downward force on this leg, holding
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`back the upward rise of this leg. Id. By the time the fluid has passed around
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`the bend and into the second leg of the tube, however, the fluid has been
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`accelerated upwards by the upward rise of the tube, and, thus, pushes
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`upward on the second leg of the rising tube. Id. Figure 3 depicts an end
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`view of the tube, and the net result of these forces—a twisting of the tube.
`
`Id. When the tube moves in its downward swing of its oscillation, the
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`opposite twist occurs. Id. The amount of twisting is proportional to the
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`mass of the fluid moving through the tube. Id.
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`Accordingly, a flow meter uses the left and right velocity sensor
`
`signals for two purposes. The first is to determine the difference in phase
`
`between the two legs of the flow meter, which, in turn, is used to determine
`
`the mass flow rate of the fluid that flows through the tube. Ex. 1064 ¶ 33.
`
`We refer to this as the flow measurement function. The second is to
`
`measure the oscillation of the tube, which, in turn, is used to control that
`
`oscillation to drive it in a manner to obtain accurate phase difference
`
`measurements. Id. ¶ 41. We refer to this as the drive function.2
`
`
`2 The oscillation of the tube also is measured to determine the frequency of
`oscillation, which, in turn, is used to determine the density of the material in
`the tube. Ex. 1064 ¶¶ 37, 39. This particular density measurement function
`is not important to our discussion.
`
` 4
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`IPR2014-01409
`Patent 7,571,062 B2
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`C. The ’062 Patent
`
`
`
`The ’062 patent describes a flow meter that uses digital signal
`
`processing to generate a drive signal. The flow meter measures the
`
`amplitude, frequency, and phase of velocity sensor signals located on the
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`legs of the flow tube. Ex. 1001, 12:9–19. Among other uses, the digital
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`signal processor uses these measurements to drive the vibration of the tube
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`in a manner leading to the most accurate measurements. Measuring the
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`signals, as well as computing the drive signal, however, takes time. Id. at
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`20:53–60. To be most effective, the drive signal needs to be coordinated
`
`with the actual vibration of the flow tube. The ’062 patent introduces a
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`phase shift of the calculated drive signal to compensate for the delays
`
`introduced by the measurements and computations. Id.
`
`D. Illustrative Claim
`
`Of the claims challenged, claim 1 is independent and claims 12, 23–
`
`25, 29, and 36 depend therefrom. Challenged claim 43 depends from
`
`independent claim 40, which is not challenged in this proceeding.
`
`Independent claim 1 is reproduced below with emphasis added:
`
`1. A digital flowmeter comprising:
`a vibratable conduit;
`a driver connected to the conduit and operable to
`impart motion to the conduit;
`a sensor connected to the conduit and operable to
`sense the motion of the conduit; and
`a control and measurement system connected
`between the driver and the sensor, wherein the
`control and measurement system is configured
`to:
`receive a sensor signal from the sensor,
`generate a drive signal based on the sensor
`signal using digital signal processing,
`
` 5
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`IPR2014-01409
`Patent 7,571,062 B2
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`supply the drive signal to the driver, and
`generate a measurement of a property of
`material flowing through the conduit based
`on the signal from the sensor;
`use digital processing to adjust a phase of the
`drive signal to compensate for a time delay
`associated with components connected
`between the sensor and the driver.
`
`
`Ex. 1001, 55:21–40 (emphasis added).
`
`E. Asserted Ground and Prior Art
`
`Petitioner asserts that claims 1, 12, 23–25, 29, 36, and 43 of the ’062
`
`patent are unpatentable in view of Kalotay3 and Romano4.
`
`II. ANALYSIS
`
`A. Claim Construction
`
`No issue in this Decision requires a claim construction. See, e.g.,
`
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`
`1999) (only those terms that are in controversy need to be construed, and
`
`only to the extent necessary to resolve the controversy).
`
`B. Petitioner’s Ground
`
`Petitioner asserts that claims 1, 12, 23–25, 29, 36, and 43 are
`
`unpatentable over Kalotay and Romano. Pet. 16. Put simply, Petitioner’s
`
`proposed ground is to take the flowmeter of Kalotay and to compensate for
`
`the delays associated with system components located between the sensors
`
`and the driver by using the alleged teachings of Romano to compensate for
`
`
`3 U.S. Patent No. 5,009,109 (issued Apr. 23, 1991) (Ex. 1008).
`4 U.S. Patent No. 4,934,196 (issued June 19, 1990) (Ex. 1006).
`
` 6
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`IPR2014-01409
`Patent 7,571,062 B2
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`such delays. See id. at 32–33. To understand this ground, we first look to
`
`the devices of Kalotay and Romano. Then, we present our analysis of
`
`Petitioner’s ground.
`
`1. Kalotay
`
`Kalotay describes a Coriolis flow meter having flow conduits, drivers,
`
`sensors, and a control electronics. Ex. 1008, 6:5–14, 8:2–9. The drive
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`circuit controls the conduit oscillation by applying a pre-defined burst of
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`energy to drive the conduit at an appropriate point during the oscillation
`
`cycle, thereby maintaining peak amplitude within a prescribed range. Id. at
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`3:40–4:4. A burst also can be applied to remove energy from the conduit in
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`order to retard the peak value of vibrations. Id. at 4:57–62. The circuitry
`
`that performs these tasks is reproduced in Figure 4, below:
`
`Figure 4 depicts circuitry for enabling the pre-defined burst feature of
`
`Kalotay. A digital path determines whether additional energy is required
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` 7
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`IPR2014-01409
`Patent 7,571,062 B2
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`and an analog path determines when the energy may be applied. Left
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`velocity sensor 160L sends a signal that is received by analog-to-digital
`
`(“A/D”) converter 520 and comparator 540 to begin the digital path of the
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`circuit. Id. at 12:6–10, 13:11–13. The digital signal from A/D converter 520
`
`is processed by microcontroller 530, which determines whether the
`
`amplitude of vibratory motion has decayed to a sufficient level to warrant
`
`applying further energy to the flow tube. Id. at 12:14–68. When additional
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`energy is warranted, microprocessor 530 applies an appropriate signal to the
`
`gate of timer/counter 550 to indicate that energy needs to be applied. Id. at
`
`12:44–51.
`
`In order to ensure the energy applied to the tube is applied only at
`
`appropriate times during its oscillation, Kalotay monitors the movement of
`
`the tube. Specifically, comparator 540, defining the analog path of the
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`circuit, only allows a burst of energy to be sent to drive coil 180 when the
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`conduit is moving in an appropriate direction, as monitored by the voltage
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`signal from left velocity sensor 160L. Id. at 13:9–32. Figure 6 of Kalotay,
`
`depicting the burst timing, is reproduced below:
`
`Figure 6 of Kalotay depicts the sensor signal from the left velocity sensor as
`
`a roughly sinusoidal shape.5 A reference voltage VREF is depicted as a
`
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`5 Note that this is a graph depicting velocity, not position. The peak on the
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` 8
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`IPR2014-01409
`Patent 7,571,062 B2
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`dashed line intersecting portions of the left velocity sensor signal. When the
`
`value of the left velocity sensor signal is greater than VREF, Kalotay discloses
`
`that a pulse may be applied effectively to the flow tube to induce further
`
`oscillation. Thus, when VREF is exceeded, comparator 540 enables
`
`timer/counter 550.
`
`Timer/counter 550 sits at the confluence of the digital and analog
`
`paths of Kalotay’s circuit, and requires a signal from both in order to trigger
`
`a drive signal. When triggered, timer/counter 550 applies a pre-programmed
`
`signal that is imparted by drive coil 180 to the flow tube. Id. at 12:44–59
`
`(describing the circuitry for enabling the burst), 13:34–64 (describing when
`
`to apply the burst to achieve certain results), 14:3–34 (describing how to
`
`apply the burst). Kalotay discloses that “it is not critical where a burst of
`
`energy . . . is applied to the flow conduits as long as that burst is applied
`
`within the positive ‘drive window’ [as defined by VREF]”). Id. at 13:36–40.
`
`2. Romano
`
`
`
`Romano discloses a flow meter with two velocity sensor signals. The
`
`two sensor signals are sampled continuously on an alternating basis using
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`multiplexor 302. Ex. 1006, 22:10–19, 33–45. As a result of this alternating
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`sampling, the samples for one signal will always lead the samples for the
`
`other signal. Id. at 22:19–22. To calculate a mass flow rate, however, the
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`signals from both the left and right velocity sensors have to be compared as
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`of the same time.6 Accordingly, Romano proposes to shift the phase of one
`
`
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`velocity graph generally corresponds to the midpoint position in the swing of
`the moving conduit.
`6 Romano discusses measuring the “time interval” between one leg of the
`tube reaching a certain location before the other leg reaches that location.
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` 9
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`IPR2014-01409
`Patent 7,571,062 B2
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`of the signals so that the samples represent the appropriate point in time. Id.
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`at 22:22–32. Figure 3 of Romano depicts the circuitry responsible for
`
`measuring the velocity sensor signals, among other functions, and is
`
`reproduced below:
`
`
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`Figure 3 of Romano depicts a time interval measurement circuit used for
`
`determining the phase difference between the left and right velocity sensor
`
`signals, which, in turn, is used to determine the mass flow rate of the fluid
`
`that flows through the tube. Id. at 20:57–65. The drive circuit is depicted as
`
`
`
`
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`Ex. 1006, 3:52–4:2. This is measured by comparing the phases of the
`signals of the two sensors when they are oscillating at a given fundamental
`frequency, rather than by literally setting a stopwatch and measuring the
`time interval. Id. at 6:38–42.
`
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`10
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`IPR2014-01409
`Patent 7,571,062 B2
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`separate from the input circuit; they are connected via bus 350. Id. at 22:6–
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`23:1; Fig. 3.
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`3. Analysis—Claims 1, 12, 23–25, 29, and 36
`
`
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`Petitioner proposes to modify the drive function of Kalotay to account
`
`for processing delays allegedly inherent in its drive function by
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`incorporating the teachings of the phase shifting in the flow measurement
`
`function of Romano. Pet. 16–35. Petitioner asserts that one of ordinary skill
`
`in the art would have recognized that such a combination would avoid
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`processing/data gathering delays, such as to give the drive function of
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`Kalotay more accurately timed bursts and potentially avoid problems arising
`
`from “clipping.” Id. at 32–35. Critically, however, Petitioner does not
`
`explain sufficiently how Romano’s teaching regarding phase shifting one of
`
`two necessary inputs for Romano’s flow measurement function would be
`
`applied to Kalotay’s drive function, which only has one input.
`
`
`
`In order to calculate mass flow, Romano needs to know the phase
`
`difference between the left and right velocity sensor signals at the same
`
`moment in time. Ex. 1006, 6:38–42. Because the multiplexor alternates
`
`velocity sensor measurements, one of the sensor signals has to be phase
`
`shifted so that the two signals could be said to represent the state of the flow
`
`tube at the same moment in time. Id. at 22:22–32. Thus, Romano is phase
`
`shifting to accommodate a particular calculation (mass flow) on account of
`
`the physical limitations of its circuitry (the multiplexor). Even if we were to
`
`consider the multiplexor to cause “a time delay associated with components
`
`connected between the sensor and the driver,” as required by claim 1,
`
`Petitioner has not explained how this teaching is applied in a relevant
`
`manner to the drive circuit of Kalotay, which has no multiplexor and no
`
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`Patent 7,571,062 B2
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`need to have synchronized velocity signal pairs. Kalotay describes only one
`
`velocity sensor input signal to create its drive signal. See, e.g., Ex. 1008,
`
`Fig. 4.
`
`Further, Petitioner has not made clear what would be the use of
`
`shifting the phase of the velocity signal in Kalotay. Kalotay’s
`
`microprocessor is using the amplitude of the signal to determine whether
`
`energy needs to be added. Ex. 1008, 15:55–16:29 (comparing the amplitude
`
`of the signal to pre-defined limit values to determine whether to trigger
`
`timer/counter 550), Fig. 6. The amplitude calculated here would be the same
`
`regardless of its phase. Petitioner alleges that phase shifting the velocity
`
`sensor signal will allow Kalotay to compensate for computational delays, but
`
`Petitioner has not explained sufficiently how shifting the phase of the
`
`velocity sensor signal will speed up the calculation of the amplitude of the
`
`signal. Accordingly, Petitioner has not persuaded us that shifting the phase
`
`of the sensor signal in Romano would serve to change the timing of the
`
`burst.
`
`
`
`Petitioner also appears to propose that, because it was known
`
`generally to compensate for processing delays, that it would have been
`
`obvious to apply such compensation techniques to Kalotay. See Pet. 32–33.
`
`Even taking this as true, claim 1 requires a specific phase shift (of the drive
`
`signal) in response to a specific time delay (components between sensor and
`
`driver). Petitioner has not shown sufficiently that this particular type of
`
`phase shift in response to this particular type of problem was known or
`
`otherwise obvious to a person of ordinary skill at the time of invention.
`
`Petitioner attempts to show that one of ordinary skill in the art would have
`
`recognized the problem (manifested as a “clipping” of a burst), but the only
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`12
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`IPR2014-01409
`Patent 7,571,062 B2
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`proof they offer that such a problem was known in the art is the analysis of
`
`its declarant, Dr. Sidman. Pet. 27–28, 32–33; Ex. 1064 ¶¶ 167–73. Dr.
`
`Sidman, however, offers no proof that the clipping problem was recognized
`
`at the time of the ’062 invention and that the solution was to time the burst
`
`in a certain manner.7 See Ex. 1064 ¶ 167 (merely alleging that “[o]ne of
`
`ordinary skill in the art would recognize that a clipped off burst . . . would
`
`produce an unfortunately timed mechanical disturbance”).
`
`
`
`For the reasons set forth above, we determine that Petitioner has not
`
`established a reasonable likelihood of showing the subject matter of claims
`
`1, 12, 23–25, 29, and 36 of the ’062 patent would have been obvious in view
`
`of Kalotay and Romano. Because we do not institute inter partes review of
`
`claims 1, 12, 23–25, 29, and 36 of the ’062 patent, Petitioner’s Motion for
`
`Joinder with respect to these claims is moot.
`
`4. Analysis—Claim 43
`
`
`
`In Micro Motion, Inc. v. Invensys Sys., Inc., Case IPR2014-00393
`
`(PTAB Aug. 4, 2014) (Paper 16), we instituted an inter partes review of
`
`independent claim 40 of the ’062 patent as unpatentable over Kalotay, but
`
`not of claim 43, which depends from claim 40. We noted, “Petitioner does
`
`not offer an analysis as to why these claims would have been obvious in
`
`view of Kalotay,” and we also determined that, while Petitioner directed us
`
`
`7 Indeed, the only persuasive evidence we have before us on the matter is
`Kalotay itself, which teaches that burst timing is not, in fact, a problem
`because the comparator takes care of the timing aspects of the burst by way
`of the “drive window” it defines. Ex. 1008, 13:35–38 (“it is not critical
`where a burst of energy . . . is applied to the flow conduits as long as that
`burst is applied within the positive ‘drive window’ [defined by the
`comparator]”).
`
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`IPR2014-01409
`Patent 7,571,062 B2
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`to some analysis in an exhibit containing invalidity charts for the co-pending
`
`litigation, it was improper for Petitioner to incorporate by reference in such a
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`manner. Id. at 16.
`
`In this proceeding, Petitioner now comes forward with an analysis, in
`
`its Petition, of how claim 43 is unpatentable over Kalotay, and seeks to join
`
`to the earlier-filed proceeding. Pet. 47–49. Joinder may be authorized when
`
`warranted, but the decision to grant joinder is discretionary. 35 U.S.C.
`
`§ 315(c); 37 C.F.R. § 42.122(b). Petitioner, as the moving party, carries the
`
`burden of proof. 37 C.F.R. § 42.20(c).
`
`We exercise our discretion and deny joinder of this proceeding to
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`IPR2014-00393. The proposed ground directed to claim 43 is a second bite
`
`at the apple for Petitioner. In IPR2014-00393, Petitioner neglected to
`
`include an analysis of claim 43 and offers now the analysis it could have
`
`offered then. See also ZTE Corp. v. ContentGuard Holdings, Inc., Case
`
`IPR2013-00454, slip op. at 5–6 (PTAB Sept. 25, 2013) (Paper 12) (“The
`
`Board is concerned about encouraging, unnecessarily, the filing of petitions
`
`which are partially inadequate.”). This is not a case where circumstances
`
`have changed that would make joinder an equitable remedy for Petitioner.
`
`Ariosa Diagnostics v. Isis Innovation, Ltd., Case IPR2013-00250, slip op. at
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`3 (PTAB Apr. 19, 2013) (Paper 4) (requesting joinder when a new product
`
`was launched, leading to a threat of new assertions of infringement); id. at
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`Paper 25 (Decision Granting Motion for Joinder) (PTAB Sep. 3, 2013);
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`Microsoft Corp. v. Proxyconn, Inc., Case IPR2013-00109, slip op. at 3, 5
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`(PTAB Feb. 25, 2014) (Paper 15) (granting joinder when additional claims
`
`had been asserted against petitioner in concurrent district court litigation).
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`In addition, the timing weighs against joinder. This Petition is
`
`admittedly time-barred under 35 U.S.C. § 315(b). Pet. 2–3. IPR2014-00393
`
`is scheduled for oral hearing March 12, 2015, and discovery is closed.
`
`Joining this proceeding to IPR2014-00393 would require a new period for
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`discovery, delaying IPR2014-00393 substantially.8 See Opp. Mot. Joinder
`
`(Paper 10), 12 (“If Petitioner’s Motion for Joinder were to be granted, an
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`additional deposition of [Petitioner’s Declarant] . . . will be necessary.”). As
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`such, granting joinder would have a significant impact on the schedule of
`
`IPR2014-00393.
`
`Taking into consideration our discussion above, with respect to claim
`
`43 of the ’062 patent, we deny Petitioner’s Motion to Join this proceeding to
`
`IPR2014-00393. Because the Petition is otherwise time-barred, we deny the
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`Petition as to claim 43 as untimely.
`
`III. ORDER
`
`In accordance with the foregoing, it is
`
`ORDERED that Petitioner’s Petition is denied; and
`
`FURTHER ORDERED that Petitioner’s Motion for Joinder is denied.
`
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`
`
`8 Some may allege that the panel taking this case in the order received,
`instead of expediting it, caused the timing issue. In this case, we see no
`reason to prioritize a second bite at the apple and to make others wait for
`their first bite. See also 37 C.F.R. § 42.1(b) (we are to construe our rules “to
`secure the just, speedy, and inexpensive resolution of every proceeding.”).
`
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`IPR2014-01409
`Patent 7,571,062 B2
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`For PETITIONER:
`
`Andrew S. Baluch
`Jeffrey N. Costakos
`Angela Murch
`Linda Hansen
`Kadie Jelenchick
`FOLEY & LARDNER LLP
`WASH-Abaluch-PTAB@foley.com
`jcostakos@foley.com
`amurch@foley.com
`lhansen@foley.com
`kjelenchick@foley.com
`
`
`For PATENT OWNER:
`
`Jeffrey L. Johnson
`James M. Heintz
`DLA PIPER LLP (US)
`Invensys_Micro_IPR@dlapiper.com
`
`
`
`
`
`16
`
`
`
`
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