Trials@uspto.gov
`571-272-7822
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`Paper 10
`Entered: April 27, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TEMPORAL POWER, LTD.,
`Petitioner,
`
`v.
`
`BEACON POWER, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-00146
`Patent 8,008,804 B2
`____________
`
`
`
`Before MICHAEL R. ZECHER, MICHAEL J. FITZPATRICK, and
`J. JOHN LEE, Administrative Patent Judges.
`
`ZECHER, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`

`

`IPR2015-00146
`Patent 8,008,804 B2
`
`
`I. INTRODUCTION
`Petitioner, Temporal Power, Ltd. (“Temporal”), filed a Petition
`(“Pet.”) requesting an inter partes review of claims 1–26 of U.S. Patent
`No. 8,008,804 B2 (“the ’804 patent,” Ex. 1001). Paper 2. Patent Owner,
`Beacon Power, LLC (“Beacon”), timely filed a Preliminary Response
`(“Prelim. Resp.”). Paper 6.
`We have jurisdiction under 35 U.S.C. § 314(a), which provides that an
`inter partes review may not be instituted unless the information presented in
`the Petition shows “there is a reasonable likelihood that the petitioner would
`prevail with respect to at least 1 of the claims challenged in the petition.”
`Taking into account the arguments presented in Beacon’s Preliminary
`Response, we conclude that the information presented in the Petition does
`not establish that there is a reasonable likelihood that Temporal will prevail
`in challenging claims 1–26 of the ’804 patent as unpatentable under
`35 U.S.C. § 103(a). We, therefore, deny the Petition.
`A. Related Matter
`Temporal filed another Petition requesting an inter partes review of
`
`claims 1–26 of the ’804 patent (Case IPR2015-00147) based on different
`grounds of unpatentability than those presented in the Petition filed in this
`proceeding. Pet. 9; Paper 5, 1.
`B. The ’804 Patent
`The ’804 patent, titled “Methods, Systems, and Apparatus for
`Regulating Frequency of Generated Power Using Flywheel Energy Storage
`Systems with Varying Load and/or Power Generation,” issued August 30,
`2011, from U.S. Patent Application No. 10/920,146, filed on August 16,
`2004. Ex. 1001, at [54], [45], [21], and [22].
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`Patent 8,008,804 B2
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`The ’804 patent generally relates to regulating the alternating current
`(“AC”) frequency of electrical power supplied to a power generation and
`distribution system or grid. Ex. 1001, 4:43–46. According to the ’804
`patent, one or more flywheel energy storage systems (“FESSs”) are coupled
`to the grid. Id. at 4:53–61. Each FESS is capable of regulating the AC
`frequency of the electrical power being distributed to the grid by outputting
`electrical energy at a desired AC frequency. Id. at 4:61–66.
`Figure 4 of the ’804 patent, reproduced below, illustrates an
`exemplary power generation and distribution system that includes FESSs
`placed in various locations. Ex. 1001, 7:55–57, 8:33–40.
`
`
`As shown in Figure 4, power generation and distribution system 10
`(not labeled in Figure 4) includes a number of system loads 18, 18ʹ, as well
`as various FESS arrays 100 placed throughout the system. Id. at 8:35–40.
`Power generation and distribution system 10 also includes one or more
`power generation facilities 12, 12ʹ that are coupled electrically to power
`distribution grid 14. Id. at 8:40–44. Power generation facilities 12, 12ʹ may
`be fixed sites, such as fossil-fuel power generation facilities, nuclear power
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`IPR2015-00146
`Patent 8,008,804 B2
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`generation facilities, hydroelectric power generation facilities, battery farms,
`pumped hydro power generation facilities, diesel generators, or green power
`generation facilities, e.g., wind powered or solar powered. Id. at 8:44–49.
`Alternatively, power generation facilities 12, 12ʹ may be mobile such that
`they are capable of being re-located and electrically coupled to any node in
`the system. Id. at 8:50–53.
`FESS arrays 100 may be placed throughout power generation and
`distribution system 10. Ex. 1001, 8:54–56. For example, in one
`embodiment, FESS array 100 may be located at, or proximal to, power
`generation facility 12ʹ such that it is coupled to distribution grid 14 at that
`location. Id. at 8:56–59. In another embodiment, FESS array sub-system
`200, which includes one or more FESS arrays 100, may be located within
`power distribution grid 14 and electrically coupled thereto. Id. at 8:59–62.
`In yet another embodiment, FESS array 100 may be located at, or proximal
`to, node 16 or, alternatively, may be located at another node of power
`generation and distribution system 10 that feeds one or more loads 18. Id. at
`8:62–65. In yet another embodiment, FESS array 100 may be located at, or
`proximal to, the site of load 18ʹ. Id. at 8:65–67.
`C. Illustrative Claim
`Of the challenged claims, claim 1 is the only independent claim.
`
`Independent claim 1 is directed to a method for operating an electrical utility
`system that includes a power distribution grid with a plurality of electrical
`generation facilities and electrical loads associated therewith, wherein the
`power distribution grid operates based on a conventional method for
`regulating AC frequency of power being distributed through the grid.
`Claims 2–26 directly or indirectly depend from independent claim 1.
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`IPR2015-00146
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`Independent claim 1 is illustrative of the challenged claims and is
`reproduced below:
`
`1.
`In the operation of an electrical utility system
`having a power distribution grid, said power distribution grid
`including a plurality of electrical generation facilities and a
`plurality of electrical loads, which power distribution grid
`operates based on a conventional method, for regulating AC
`frequency of electrical power being distributed through said
`power distribution grid, the frequency regulation method
`comprising:
`
`configuring said power distribution grid to interconnect
`said plurality of electrical power generation facilities with one
`another such that power generated from every one of the power
`generation facilities is combined, through said grid, to provide
`said electrical power as a total generated power for distribution,
`through said grid, to said plurality of electrical loads, and each
`of said loads exhibits an individual load requirement that varies
`with
`time,
`throughout a given day, at
`least somewhat
`independently of at least a number of other ones of said loads,
`such that all of said loads are combined with one another,
`through said grid, to define a total system load requirement that
`varies throughout said given day, and the variation of said total
`system load requirement includes long term variations defining
`a daily load curve, and short term variations that fluctuate
`rapidly, as compared with said long term variations, and at least
`some of the power generation facilities are adjustable for one of
`increasing and decreasing said power generated thereby, and
`each of these adjustable generation facilities exhibits a time lag
`associated with any adjustment of the power generated thereby,
`and at least a subset of said adjustable power generation
`facilities are configured to cooperate with one another for
`providing an adjustment to said total generated power for at
`least approximately following said daily load curve, and said
`adjustment of said total generated power, for following the
`daily load curve, exhibits a response time, based at least in part
`on the time lags associated with at least a subset of said
`adjustable power generation facilities, that is sufficiently long,
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`as compared with at least some of said short term variations, so
`as to limit an ability of the adjustable power generation
`facilities to follow the short term variations of said total system
`load such that said power distribution grid is at least frequently
`challenged with a conventional mismatch that is caused at least
`in part by a power difference between said total generated
`power and said total system load requirement, said power
`difference having a magnitude that exhibits fluctuations that
`cause said mismatch to exhibit corresponding fluctuations, at
`least some of said fluctuations of said power difference being
`caused by combined variations of a multiplicity of said
`individual electrical loads, and not by the variation of any
`single one of said electrical loads, and said independence of the
`time variations of the individual load requirements causes said
`fluctuations of said mismatch to be at least generally stochastic
`such that at least some of the fluctuations of said mismatch are
`at least generally independent of and uncorrelated with respect
`to the long term variations of said total load requirement, and
`
`repeatedly, throughout said given day, adjusting the total
`generated power for at least approximately following the long
`term variations of said total system load, and for attempting to
`follow said fluctuations of said mismatch, by
`
`(i) monitoring said power distribution grid, at each one of
`a series of monitoring times throughout said given day, for at
`least approximately characterizing said mismatch at that time,
`and
`(ii) for at least some of said monitoring times throughout
`
`said given day at least partially compensating for said
`mismatch, responsive to said monitoring thereof, to regulate
`said AC frequency, in a conventional way, by adjusting the
`total power generated such that said AC frequency is caused to
`fall within a conventional range of a desired frequency value at
`least during an interval of time that is initiated by said
`adjustment,
`
`a modified method for use in conjunction with said
`conventional method, said modified method comprising:
`
`providing at least one flywheel energy storage system,
`said flywheel energy storage system having a power capacity
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`that is at least sufficient for influencing the regulating of said
`AC frequency of said power distribution grid,
`
`electrically coupling the flywheel energy storage system
`to said power distribution grid, and for at least a number of said
`monitoring times controlling said flywheel energy storage
`system, responsive to said monitoring of said mismatch, to
`further compensate for said mismatch by a selected one of (a)
`adding power from the flywheel energy storage system to the
`power distribution grid, and (b) absorbing power by the
`flywheel energy storage system and from the power distribution
`grid, such that said flywheel energy storage system provides
`supplemental regulating of said AC frequency, in addition to
`said conventional regulating, and with a faster response as
`compared with the response time of said subset of adjustable
`power generation facilities.
`
`Ex. 1001, 24:25–25:52.
`
`
`
`D. Prior Art Relied Upon
`Temporal relies upon the following prior art references:
` Vugdelija, U.S. Patent Application Pub. No. 2003/0010037 A1,
`published Jan. 16, 2003 (Ex. 1009, “Vugdelija”).
`
` Gertmar et al., WO 01/17092 A1, published Mar. 8, 2001 (Ex. 1010,
`“Gertmar”).
`
` Matt Lazarewicz, “A Description of the Beacon Power High Energy
`and High Power Composite Flywheel Energy Storage System,”
`PowerPoint presentation to the Electrical Energy Storage Applications
`Technologies (“EESAT”) conference (dated Apr. 15–17, 2002)
`(Ex. 1007, “Lazarewicz PowerPoint”).
`
` Admitted Prior Art (“APA”)—Ex. 1001, 1:24–4:39, otherwise known
`as the “Background of the Invention” section of the ’804 patent.
`
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`Patent 8,008,804 B2
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`E. Asserted Grounds of Unpatentability
`Temporal challenges claims 1–26 of the ’804 patent based on the
`
`asserted grounds of unpatentability set forth in the table below. Pet. 15–58.
`References
`Basis
`Challenged Claims
`
`APA and Lazarewicz PowerPoint
`APA, Lazarewicz PowerPoint, and
`Vugdelija
`APA, Lazarewicz PowerPoint, and
`Gertmar
`
`§ 103(a)
`§ 103(a)
`
`1–4, 6, and 21–26
`5, 7, 8, 19, and 20
`
`§ 103(a)
`
`9–18
`
`
`II. ANALYSIS
`A. Whether the Lazarewicz PowerPoint Qualifies as a Printed
`Publication Within the Meaning of 35 U.S.C. § 102(b)
`
`Temporal asserts that the Lazarewicz PowerPoint was presented
`
`publically at the EESAT conference on April 17, 2002, and, therefore,
`qualifies as prior art to the ’804 patent under § 102(b). Pet. 16–17. To
`support its assertion, Temporal relies upon the testimony of its declarant, Dr.
`Robert E. Hebner. Ex. 1005 ¶ 32.
`
`In response, Beacon contends that Temporal does not explain
`adequately how the Lazarewicz PowerPoint qualifies as a printed publication
`within the meaning of § 102(b), nor does Temporal provide sufficient or
`credible evidence to support its assertion that the Lazarewicz PowerPoint is
`prior art, whether published or not, to the ’804 patent. Prelim. Resp. 6–7.
`Beacon argues that, although the Lazarewicz PowerPoint indicates, on its
`face, that it was prepared for the EESAT conference held April 15–17, 2002,
`in San Francisco, California, Temporal does not provide sufficient evidence
`that the version of the Lazarewicz PowerPoint filed in this proceeding was
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`the version actually presented at the conference, much less evidence to
`support that this particular version was available or distributed to the public
`interested in the art. Id. at 8–9.
`
`Beacon further argues that, even if we were to assume that the
`Lazarewicz PowerPoint filed in this proceeding was the version actually
`presented at the EESAT conference on April 17, 2002, that still would not be
`enough to establish that it is per se a “printed publication” within the
`meaning of § 102(b). Id. at 9–10 (citing In re Klopfenstein, 380 F.3d 1345,
`1349 n.4 (Fed. Cir. 2004) (stating that “the mere presentation of slides
`accompanying an oral presentation at a professional conference is not per se
`a ‘printed publication’ for the purposes of § 102(b)”). Instead, Beacon
`asserts that more underlying facts concerning the circumstances of the
`alleged presentation of the Lazarewicz PowerPoint at the EESAT conference
`on April 17, 2002, are needed to determine whether it qualifies as a prior art
`printed publication. Id. at 10–11.
`
`We look to the underlying facts to make a legal determination as to
`whether a reference is a printed publication. Suffolk Techs., LLC v. AOL
`Inc., 752 F.3d 1358, 1364 (Fed. Cir. 2014). The determination of whether a
`given reference qualifies as a prior art “printed publication” involves a case-
`by-case inquiry into the facts and circumstances surrounding its disclosure to
`members of the public. Klopfenstein, 380 F.3d at 1350. The key inquiry is
`whether the reference was made “sufficiently accessible to the public
`interested in the art” before the critical date. In re Cronyn, 890 F.2d 1158,
`1160 (Fed. Cir. 1989); In re Wyer, 655 F.2d 221, 226 (CCPA 1981). “A
`given reference is ‘publicly accessible’ upon a satisfactory showing that
`such document has been disseminated or otherwise made available to the
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`extent that persons interested and ordinarily skilled in the subject matter or
`art exercising reasonable diligence, can locate it.” Bruckelmyer v. Ground
`Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006) (citation omitted).
`
`We are not persuaded that Temporal has made a threshold showing
`that the Lazarewicz PowerPoint is a printed publication within the meaning
`of § 102(b) and, therefore, is available as prior art in an inter partes review
`of the ’804 patent. See 35 U.S.C. § 311(b). The only evidence relied upon
`by Temporal to support its assertion that the Lazarewicz PowerPoint
`qualifies as a prior art printed publication is the testimony offered by Dr.
`Hebner. Dr. Hebner testifies that “[i]t is [his] understanding that [the]
`Lazarewicz [PowerPoint] is a prior art reference to the ’804 patent.”
`Ex. 1005 ¶ 32. Dr. Hebner’s testimony, however, is directed only to whether
`the Lazarewicz PowerPoint is prior art and not to whether it is a printed
`publication. Moreover, Dr. Hebner’s testimony is entitled to little, if any,
`weight because he does not disclose the underlying facts or data on which
`his opinion is based. See 37 C.F.R. § 42.65 (“Expert testimony that does not
`disclose the underlying facts or data on which the opinion is based is entitled
`to little or no weight.”). We, therefore, are left with Temporal’s conclusory
`assertion that Lazarewicz PowerPoint qualifies as a prior art printed
`publication because, purportedly, some version of it was presented
`publically at the EESAT conference on April 17, 2002.
`
`As Beacon correctly points out in its Preliminary Response, the mere
`presentation of slides at a conference is not per se a prior art “printed
`publication” for the purposes of § 102(b). See Klopfenstein, 380 F.3d at
`1349 n.4. On the current record, we are unable to determine whether the
`version of the Lazarewicz PowerPoint filed in this proceeding was the actual
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`version presented at the EESAT conference, and Temporal does not present
`adequate facts to establish public accessibility sufficient to qualify as prior
`art. See id. at 1350. Indeed, Temporal does not attempt to explain in its
`Petition whether the Lazarewicz PowerPoint filed in this proceeding was the
`actual version presented at the EESAT conference, nor does it attempt to
`explain the manner in which it purportedly was published. As a result, we
`are not persuaded that Temporal has demonstrated sufficiently that the
`Lazarewicz PowerPoint qualifies as a prior art reference, much less one that
`constitutes a printed publication within the meaning of § 102(b).
`B. Obviousness Grounds Based, in Part, on the Lazarewicz PowerPoint
`Each of the grounds of unpatentability asserted by Temporal in its
`
`Petition is based, in part, on the Lazarewicz PowerPoint presentation. As we
`explained above, Temporal has not demonstrated sufficiently that the
`Lazarewicz PowerPoint qualifies as a prior art reference, much less one that
`constitutes a printed publication within the meaning of § 102(b).
`Consequently, Temporal has not demonstrated a reasonable likelihood that it
`will prevail on its assertion that at least one challenged claim of the ’804
`patent would have been obvious over the asserted grounds of
`unpatentability.
`
`
`III. CONCLUSION
`Taking into account the arguments presented in Beacon’s Preliminary
`Response, we conclude that the information presented in the Petition does
`not establish that there is a reasonable likelihood that Temporal will prevail
`in challenging claims 1–26 of the ’804 patent as unpatentable under
`§ 103(a).
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`IV. ORDER
`In consideration of the foregoing, it is ORDERED that the Petition is
`
`DENIED and no trial is instituted.
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`IPR2015-00146
`Patent 8,008,804 B2
`
`For PETITIONER:
`Robert Greene Sterne
`Michelle K. Holoubek
`Graham C. Phero
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C
`RSterne-PTAB@skgf.com
`MHoloubek-PTAB@skgf.com
`GPhero-PTAB@skgf.com
`
`
`For PATENT OWNER:
`Peter C. Schechter
`Thomas K. Scherer
`Tammy J. Terry
`Daniel Dries
`OSHA LIANG LLP
`Schechter@oshaliang.com
`Scherer@oshaliang.com
`Terry@oshaliang.com
`DDries@oshaliang.com
`
`
`
`
`
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