Trials@uspto.gov
`571-272-7822
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`Paper 8
`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 IPR2015-00147
`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
`
`
`
`

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`IPR2015-00147
`Patent 8,008,804 B2
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`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 IPR2015-00146) 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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`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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`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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`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:
` Hockney et al., U.S. Patent No. 6,262,505 B1, published July 17, 2001
`(Ex. 1009, “Hockney”).
`
` Vugdelija, U.S. Patent Application Pub. No. 2003/0010037 A1,
`published Jan. 16, 2003 (Ex. 1011, “Vugdelija”).
`
` Gertmar et al., WO 01/17092 A1, published Mar. 8, 2001 (Ex. 1012,
`“Gertmar”).
`
` Patrick G. Lyons, ENERGY STORAGE FOR POWER SYSTEMS WITH
`RAPIDLY CHANGING LOADS (Dec. 1992) (thesis, Purdue University)
`(on file with the School of Electrical Engineering) (Ex. 1008, “Lyons”).
`
`
`
`Jason Makansi & Jeff Abboud, Energy Storage Council, ENERGY
`STORAGE: THE MISSING LINK IN THE ELECTRICITY VALUE CHAIN
`(May 2002) (Ex. 1010, “ESC”).
`
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`
` Admitted Prior Art (“APA”)—Ex. 1001, 1:24–4:39, otherwise known
`as the “Background of the Invention” section of the ’804 patent.
`
`
`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
`
`Lyons, Hockney, and ESC
`Lyons, Hockney, ESC, and Vugdelija
`Lyons, Hockney, ESC, and Gertmar
`Lyons, Hockney, ESC, Gertmar, and
`APA
`
`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`
`1–4, 6, and 21–26
`5, 7, 8, 19, and 20
`9 and 10
`11–18
`
`
`II. ANALYSIS
`A. Whether Lyons Qualifies as a Printed Publication
`Within the Meaning of 35 U.S.C. § 102(b)
`
`Temporal asserts that Lyons is a paper for the Purdue University
`
`School of Electrical Engineering that was published in 1992 and, therefore,
`qualifies as prior art to the ’804 patent under § 102(b). Pet. 16. To support
`its assertion, Temporal relies upon the testimony of its declarant, Dr. Robert
`E. Hebner. Id. (citing Ex. 1005 ¶ 31).
`
`In response, Beacon contends that Temporal does not explain
`adequately how Lyons qualifies as a printed publication within the meaning
`of § 102(b), nor does Temporal provide sufficient or credible evidence to
`support its assertion that Lyons is prior art, whether published or not, to the
`’804 patent. Prelim. Resp. 7. Beacon argues that the cover page of Lyons
`states that “[t]his document has been made available through Purdue e-Pubs,
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`a service of the Purdue University Libraries.” Id. at 8 (citing Ex. 1008,
`cover page). Beacon further argues that the Purdue e-Pubs system was
`created and launched in 2006, whereas the application that led to the ’804
`patent was filed on August 16, 2004. Id. at 8–9 (citing Ex. 2001, 1;
`Ex. 2002, 1). Beacon then asserts that, absent evidence of previous
`accessibility in some other manner at some earlier time, the version of Lyons
`filed in this proceeding that was made available through the Purdue e-Pubs
`system in 2006 does not qualify as prior art to the ’804 patent under
`§ 102(b). Id. at 9.
`
`In addition, Beacon contends that Temporal does not provide
`sufficient or credible evidence that Lyons was published, catalogued,
`indexed, or identified in any way by the Purdue University School of
`Electrical Engineering prior to its addition to the Purdue e-Pubs system in
`2006. Prelim. Resp. 9–10 (citing In re Bayer, 568 F.2d 1357, 1362 (CCPA
`1978); In re Cronyn, 890 F.2d 1158, 1161 (Fed. Cir. 1989)).
`
`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. In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir.
`2004). 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
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`made available to the 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 Lyons 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 Lyons qualifies as a prior art printed publication
`is the testimony offered by Dr. Hebner. Dr. Hebner testifies that “[i]t is [his]
`understanding that Lyons is a prior art reference to the ’804 patent.”
`Ex. 1005 ¶ 31. Dr. Hebner’s testimony, however, 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 Lyons is a paper for the Purdue University School of Electrical
`Engineering that purportedly was published in 1992.
`Based on the record before us, we agree with Beacon that, at best, the
`version of Lyons filed in this proceeding was made available through the
`Purdue e-Pubs system no earlier than 2006. See Prelim Resp. 8–9. As
`Beacon correctly points out in its Preliminary Response, the cover page of
`Lyons states that “[t]his document has been made available through Purdue
`e-Pubs, a service of the Purdue University Libraries.” Ex. 1008, cover page.
`The top, left-hand corner of the cover page of Lyon also includes the label
`“Purdue University Purdue e-Pubs.” Id. Taking into account the
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`information included in this cover page, along with the evidence of record
`supporting Beacon’s assertion that the Purdue e-Pubs system was not created
`and launched until 2006 (Ex. 2001, 1; Ex. 2002, 1), we cannot determine
`whether the version of Lyons filed in this proceeding was available
`publically prior to 2006. Absent at least some evidence corroborating that
`the version of Lyons filed in this proceeding is the same version of Lyons
`purportedly released in 1992, we are not persuaded that Temporal
`demonstrated sufficiently that Lyons qualifies as a printed publication within
`the meaning of § 102(b).
`There is at least one additional consideration that supports our
`determination that Temporal has not demonstrated sufficiently that Lyons
`qualifies as a printed publication within the meaning of § 102(b). A paper or
`thesis that is deposited in a university library, where it remains
`“uncatalogued and unshelved” before the critical date, is not accessible to
`qualify as a printed publication. Bayer, 568 F.2d at 1362. Similarly, papers
`or theses filed in a university library are not accessible to the public where
`the titles of the papers or theses are listed only on “cards filed alphabetically
`by author in a shoebox in the . . . department library.” Cronyn, 890 F.2d, at
`1161.
`
`Even if we were to assume that the version of Lyons filed in this
`proceeding is the same version of Lyons purportedly released in 1992, we
`are unable to determine whether it was disseminated or otherwise made
`available such that persons interested and ordinarily skilled in the subject
`matter or art, exercising reasonable diligence, could have located it. Indeed,
`Temporal does not attempt to explain in its Petition whether Lyons was
`indexed, cataloged, shelved, or even deposited in the department library for
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`the Purdue University School of Electrical Engineering at any time after its
`purported release in 1992, but prior to the filing date of the application that
`led to the ’804 patent—August 16, 2004. For this additional reason, we are
`not persuaded that Temporal has demonstrated sufficiently that Lyons
`qualifies as a printed publication within the meaning of § 102(b).
`B. Obviousness Grounds Based, in Part, on Lyons
`Each of the grounds of unpatentability asserted by Temporal in its
`
`Petition is based, in part, on Lyons. As we explained above, Temporal has
`not demonstrated sufficiently that Lyons qualifies as 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).
`
`
`IV. ORDER
`In consideration of the foregoing, it is ORDERED that the Petition is
`
`DENIED and no trial is instituted.
`
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`IPR2015-00147
`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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