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`Case 6:12—cv—00799—JRG Document 160-4 Filed 06/04/14 Page 1 of 19 Page|D #: 4728
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`EXHIBIT C
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`EXHIBIT C
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`Paper 8
`Entered: June 2, 2014
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`Trials@uspto.gov
`Tel: 571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`MICRO MOTION, INC. and
`EMERSON ELECTRIC CO.,
`Petitioner,
`
`v.
`
`INVENSYS SYSTEMS, INC. and
`SCHNEIDER ELECTRIC SA,
`Patent Owner.
`_______________
`
`Case IPR2014-00170
`Patent 6,311,136
`_______________
`
`
`
`Before WILLIAM V. SAINDON, MICHAEL R. ZECHER, and
`JENNIFER M. MEYER, Administrative Patent Judges.
`
`SAINDON, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
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`Patent 6,311,136
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`I.
`
`INTRODUCTION
`A. Background
`Petitioner filed a petition requesting an inter partes review of claims 17, 21,
`24-26, and 36 of U.S. Patent No. 6,311,136 (Ex. 1001, “the ’136 patent”). Paper 1
`(“Pet.”). Patent Owner timely filed a preliminary response. Paper 7 (“Prelim.
`Resp.”). The standard for instituting an inter partes review is set forth in 35
`U.S.C. § 314(a), which provides as follows:
`THRESHOLD.—The Director may not authorize an inter partes
`review to be instituted unless the Director determines that the
`information presented in the petition filed under section 311
`and any response filed under section 313 shows that there is a
`reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition.
`Petitioner contends that the challenged claims are unpatentable under
`35 U.S.C. §§ 102 and 103 based on the following specific grounds (Pet. 2, 9-59):
`Reference(s)
`Basis
`Claims Challenged
`Thompson1
`§ 103
`17
`Thompson
`§ 102(b) 36
`Thompson and Liu2
`§ 103
`24-26
`Romano3
`§ 103
`21
`Romano
`§ 102(b) 36
`Kalotay4
`§ 103
`21
`Kalotay and Liu
`§ 103
`24 and 25
`Kalotay, Liu, and Pratt5 § 103
`26
`
`
`1 U.S. Patent No. 5,050,439 (issued Sept. 24, 1991) (Ex. 1007) (“Thompson”).
`2 U.S. Patent No. 5,029,482 (issued July 9, 1991) (Ex. 1019) (“Liu”).
`3 U.S. Patent No. 4,934,196 (issued June 19, 1990) (Ex. 1006) (“Romano”).
`4 U.S. Patent No. 5,009,109 (issued Apr. 23, 1991) (Ex. 1008) (“Kalotay”).
`5 U.S. Patent No. 4,782,711 (issued Nov. 8, 1988) (Ex. 1010) (“Pratt”).
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`For the reasons given below, we institute an inter partes review of claims
`17, 21, and 36. We do not institute an inter partes review of claims 24-26.
`B. Additional Proceedings
`In addition to this petition, Petitioner has filed petitions challenging the
`patentability of certain claims of Patent Owner’s U.S. Patent No. 7,505,854
`(IPR2014-00167), U.S. Patent No. 7,124,646 (IPR2014-00179), and U.S. Patent
`No. 7,136,761 (IPR2014-00178). Pet. 1. Petitioner identifies the ’136 patent as
`involved in a concurrent district court case, Invensys Systems, Inc. v. Emerson
`Electric Co., No. 6:12-cv-00799-LED (E.D. Tex.). Id.
`C. Flowmeter Technology
`As described in the background section of the ’136 patent, Coriolis
`flowmeters seek to measure the flow of material through a tube by taking
`advantage of the Coriolis effect. Ex. 1001, 1:15-21. A driving mechanism applies
`forces to the tube to induce it to oscillate. Id. at 1:34-39. The flowmeter uses
`sensors to measure the twisting of the tube (due to the Coriolis effect, as explained
`below) and thereby estimate the mass and/or density of the material. See id at 3:3-
`11; see also Ex. 1002 (Declaration of Dr. Michael D. Sidman) ¶¶ 27-43 (explaining
`how Coriolis flowmeters operate). Figures 1-3 of Exhibit 10096, reproduced
`below, show the Coriolis effect in action:
`
`
`6 Micro Motion, How the Micro Motion® Mass Flow and Density Sensor Works,
`(1990) (“Ex. 1009”).
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`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-down oscillation
`at the same time. Ex. 1009, 1. In Figure 2, fluid now flows in one end of the tube
`and out the other. Id. The tube is depicted as rising, in the upward swing of its
`oscillation. Id. In this moment, the fluid flowing into the first leg of the tube is
`pushed upwards by the rising tube, but resists this motion, due to inertia, and exerts
`a downward force on this leg, holding back the upward rise of this leg. Id. By the
`time the fluid has passed around the bend and into the second leg of the tube,
`however, the fluid has been accelerated upwards by the upward rise of the tube,
`and, thus, pushes upward on the second leg of the rising tube. Id. Figure 3 depicts
`an end 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 opposite
`twist occurs. Id. The amount of twisting is proportional to the mass of the fluid
`moving through the tube. Id.
`D. The Challenged Patent
`The ’136 patent is titled “Digital Flowmeter” and generally relates to a
`control and measurement system for a digital flowmeter. Id., Abstr. The
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`flowmeter of the ’136 patent describes a variety of digital signal processing
`techniques. Id. at 1:49-59. For example, the digital control system provides a
`digital proportional-integral (“PI”) control algorithm to regulate the amplitude of
`conduit oscillation. Id. at 5:8-21. The system also permits the application of
`negative gain to the conduit in order to reduce the amplitude of oscillation. Id. at
`1:66-2:16. Furthermore, the measurement system may account for effects of
`aeration in the conduit by comparing an apparent density of a material to a known
`density, and using the difference to produce an adjusted mass flow rate. Id. at
`6:31-43. The control system also may adjust the drive signal phase in order to
`compensate for a time delay associated with the sensor and components connected
`between the sensor and driver. Id. at 7:18-22.
`Claims 17, 21, 24, and 36 are independent. Claims 25 and 26 depend from
`claim 24. Each of the independent claims recites a digital flowmeter having one of
`a number of different control and measurement features. Claim 17 is reproduced
`below in its entirety, with emphasis added to the control and measurement system
`particular to claim 17. The features of independent claims 21, 24, and 36 most
`relevant to this decision are reproduced, with emphasis added, thereafter.
`
`17. 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, the
`control and measurement system comprising circuitry to:
`receive a sensor signal from the sensor,
`generate a drive signal based on the sensor signal
`using digital signal processing,
`supply the drive signal to the driver, and
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`generate a measurement of a property of material
`flowing through the conduit based on the signal
`from the sensor;
`wherein:
`the control and measurement system digitally
`generates a gain for use in generating the drive
`signal based on one or more properties of the
`sensor signal; and
`the control and measurement system digitally
`implements a PI control algorithm to regulate
`the amplitude of conduit oscillation.
`
`
`21. A digital flowmeter comprising:
`
`. . .
`wherein the control and measurement system
`selectively applies a negative gain to the sensor
`signal to reduce motion of the conduit.
`
`
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`24. A digital flowmeter comprising:
`
`. . .
`the control and measurement system accounts for effects
`of aeration in the conduit by:
`determining an initial mass flow rate,
`determining an apparent density of material
`flowing through the conduit,
`comparing the apparent density to a known
`density of the material to determine a
`density difference, and
`adjusting the initial mass flow rate based on the
`density difference to produce an adjusted mass
`flow rate.
`
`
`
`36. A digital flowmeter comprising:
`
`. . .
`wherein the control and measurement system uses
`digital processing to adjust a phase of the drive
`signal to compensate for a time delay associated with
`the sensor and components connected between the
`sensor and the driver.
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`E. Claim Construction
`Consistent with the statute and the legislative history of the Leahy-Smith
`America Invents Act,7 we interpret claims of an unexpired patent using the
`broadest reasonable construction in light of the specification of the patent. See
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012);
`37 C.F.R. § 42.100(b). Under the broadest reasonable construction standard, claim
`terms are given their ordinary and customary meaning, as would be understood by
`one of ordinary skill in the art in the context of the entire disclosure. In re
`Translogic Tech. Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Neither Patent
`Owner nor Petitioner proposes constructions of any terms. For purposes of this
`decision, we need not discuss any claim terms in detail.
`
`
`II. ANALYSIS
`A. Overview
`Petitioner contends that claims 17, 21, 24-26, and 36 of the ’136 patent are
`anticipated and obvious over the prior art cited in the table above. In support of
`this position, Petitioner presents the Declaration of Dr. Michael D. Sidman
`(Ex. 1002), who states that he has experience in the field of “motor, motion and
`servo control systems.” Ex. 1002 ¶ 6. We have reviewed each of the proposed
`grounds and supporting documentation, as well as Patent Owner’s preliminary
`response.
`
`
`7 Pub. L. No. 112-29, 125 Stat. 284 (2011).
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`B. The Thompson Grounds
`Petitioner asserts that: (a) claim 17 would have been obvious under 35
`U.S.C. § 103 over Thompson; (b) claim 36 is anticipated under § 102(b) by
`Thompson; and (c) claims 24-26 would have been obvious under § 103 over the
`combination of Thompson and Liu. We address each asserted ground in turn
`below.
`
`Overview of Thompson (Ex. 1007)
`1.
`Thompson describes a Coriolis-type mass flowmeter. Ex. 1007, Abstr. The
`flowmeter includes a conduit, driver, sensors, and a control system. See, e.g., id.,
`claim 9. These components are “preferably analog” but “many of the functions
`could be executed in digital circuitry or in software without departing from the
`underlying principles.” Id. at 16:11-15. One such component produces the
`oscillation drive signal, in part, by “controlling the gain of the drive loop as a
`function of the integrated error signal.” Id. at 11:47-12:18.
`2.
`Analysis of the Thompson Grounds
`a.
`Obviousness of Claim 17 in View of Thompson
`Independent claim 17 is directed to a flowmeter having a digitally generated
`drive signal and gain, and a digital PI control algorithm. Petitioner asserts that
`Thompson describes each of the features of the flowmeter recited in claim 17,
`except for the drive signal, gain, and control algorithm being digital. Pet. 9-15.
`Petitioner points to the disclosure in Thompson that “many of the [analog]
`functions . . . could be executed in digital circuitry or in software without departing
`from the underlying principles.” Id. at 11 (citing Ex. 1007, 16:11-15). Petitioner
`also asserts that Thompson describes an integral control algorithm and that the
`specific digital proportional-integral (“PI”) control algorithm claimed was well-
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`known in the art. Id. at 13-15 (citing Ex. 1002 ¶ 126).8 Petitioner concludes that it
`would have been obvious to substitute the analog features of Thompson for digital
`features, noting the suggestion in Thompson to do so. Id. at 11. Petitioner also
`concludes that it would have been obvious to use a digital PI control algorithm,
`because such algorithms were known in the art for use in similar devices. Id. at 15.
`Patent Owner first argues that the Petitioner provides no articulated
`reasoning to substitute a digital PI control algorithm for the analog control of
`Thompson. Prelim. Resp. 24. However, Petitioner provided sufficient evidence
`that digital PI control algorithms were well-known control schemes, and set forth
`articulated reasons each with rational underpinnings to support its position that it
`would have been obvious to substitute this known scheme for the analog scheme of
`Thompson. Pet. 11. Patent Owner argues that Thompson’s preference for analog
`teaches away from digital. Prelim. Resp. 24. However, it is well settled that mere
`discussion of preferences does not teach away. See In re Fulton, 391 F.3d 1195,
`1201 (Fed. Cir. 2004) (holding that a reference does not teach away if it merely
`expresses a general preference for an alternative invention but does not “criticize,
`discredit, or otherwise discourage” investigation into the invention claimed).
`Patent Owner also argues that Thompson does not disclose a digital control
`system. Id. However, Petitioner’s asserted ground of unpatentability alleges that
`Thompson shows the claims would have been obvious, not anticipated. Petitioner
`
`8 Petitioner and Dr. Sidman also cite to various control system textbooks. Ex. 1002
`¶ 126; Pet. 14. The Åström textbook states, for example, “[f]or many control
`applications, it is sufficient to use a standard PID [(proportional-integral-
`deriviative)] controller,” followed by a discussion of different control schemes.
`Ex. 1036 (Karl J. Åström & Björn Wittenmark, Computer Controlled Systems
`Theory and Design (1984)), 180. The Franklin textbook discusses proportional,
`integral, and derivative controls. Ex. 1037 (Gene F. Franklin et al., Digital Control
`of Dynamic Systems (2d ed. 1990)), 1-5, 222-24.
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`points to a disclosure in Thompson stating that many of the disclosed analog
`functions could be made digital. Pet. 11. Patent Owner lastly argues that any
`prima facie case of obviousness is defeated by secondary considerations. Prelim.
`Resp. 26 (citing id. at 20-21). Patent Owner, however, merely makes a statement
`that “Petitioners’ own publications provide the nexus to secondary considerations.”
`Id. at 20. Patent Owner fails to discuss a nexus to the claims at issue in this
`proceeding—namely claim 17. See In re GPAC Inc., 57 F.3d. 1573, 1580 (Fed.
`Cir. 1995) (holding that there must be a nexus between the merits of the claimed
`invention and the evidence of secondary considerations).
`In view of the above, we are persuaded that Petitioner has demonstrated a
`reasonable likelihood of prevailing on its contention that the subject matter of
`claim 17 is obvious in view of Thompson.
`b.
`Anticipation of Claim 36 by Thompson
`Independent claim 36 is directed to a flowmeter having a control and
`measurement system to use digital processing to adjust a phase of the drive signal.
`Petitioner asserts that Thompson discloses a system for adjusting the phase of the
`drive signal. Pet. 16. Petitioner then asserts that Thompson discloses that “many
`of the signal processing functions could be executed in digital circuitry” and,
`“[t]hus, Thompson discloses signal processing that could be implemented
`digitally.” Id. As Patent Owner points out, however, Thompson does not disclose
`that any particular components are digital (e.g., the phase adjuster) or that all
`components are digital. Prelim. Resp. 45.
`Anticipation is established only when a single prior art reference discloses,
`expressly or under the principles of inherency, each element of a claimed
`invention. RCA Corp. v. Applied Digital Data Sys., Inc., 730 F.2d 1440, 1444
`(Fed. Cir. 1984). Petitioner’s showing that the phase adjustment could be executed
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`in digital circuitry only tends to show that it is possible that Thompson’s phase
`adjuster could be modified to be digital, not that Thompson’s phase adjuster is in
`fact digital. Accordingly, we are not persuaded that Petitioner has demonstrated a
`reasonable likelihood of prevailing on its contention that Thompson anticipates
`claim 36.
`
`c.
`
`Obviousness of Claims 24-26 in View of Thompson and
`Liu
`Claim 24, from which claims 25 and 26 depend, is directed to a flowmeter
`having a control and measurement system that accounts for effects of aeration by
`performing certain steps, one of which is comparing the apparent density to a
`known density to determine a density difference. Petitioner relies on the disclosure
`of Liu to teach these features. Pet. 26. Petitioner cites to equations 18 and 19 of
`Liu,9 which Petitioner asserts include variables for measured and apparent mass
`flow rate, measured and apparent density, and true density. Id. at 23 (citing Ex.
`1002 ¶ 148). Petitioner cites to these equations for the “comparing . . . to
`determine a density difference” limitation. Id.
`Patent Owner argues that the cited equations do not include an apparent
`density term and do not compare apparent density to known density to determine a
`density difference. Prelim. Resp. 28-29. Patent Owner points out that determining
`a difference requires subtraction. Id.
`
`
`9 Equation 18: (cid:1849)(cid:3028)(cid:3043)(cid:3043)(cid:3404)(cid:1853)(cid:2869)(cid:1849)(cid:3047)(cid:3028)(cid:2870)(cid:2025)(cid:3040)(cid:3028)(cid:2871).
` Equation 19: (cid:1830)(cid:3028)(cid:3043)(cid:3043)(cid:3404)(cid:1853)(cid:2872)(cid:1875)(cid:3047)(cid:3028)(cid:2873)(cid:2025)(cid:3040)(cid:3028)(cid:2874).
`(cid:1849)(cid:3028)(cid:3043)(cid:3043)is apparent mass flow rate. (cid:1830)(cid:3028)(cid:3043)(cid:3043)is apparent density. a1 through a6 are
`correlation constants. Wt is true total mass flow rate. (cid:2025)(cid:3040) is homogeneous density
`
`of the gas/liquid flow. Ex. 1019, 5:26-43. Although the “wt” term is in lower case
`in equation 19, this appears to be a typographical error, as Liu does not specifically
`identify upper and lower case terms and the equations appear to be reproduced in
`claim 3, which uses the upper case.
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`Petitioner offers no clear explanation of how the claimed subject matter
`reads on equations 18 and 19, aside from merely asserting that it is so.
`Dr. Sidman’s testimony is not helpful in that regard, because he simply reiterates
`Petitioner’s position regarding the claimed subject matter. Compare Pet. 23, with
`Ex. 1002 ¶ 148. Moreover, apparent density is not a term of equation 18 in Liu.
`Ex. 1019, 5:27. Although apparent density is on the left side of equation 19, it is
`not compared to any value. Id. Accordingly, we are not persuaded that Petitioner
`has demonstrated a reasonable likelihood of prevailing on its contention that
`Thompson and Liu render obvious the subject matter of claims 24-26.
`C. The Romano Grounds
`Petitioner asserts that: (a) claim 21 would have been obvious in view of
`Romano, and (b) claim 36 is anticipated by Romano. We address each asserted
`ground in turn below.
`1.
`Overview of Romano (Ex. 1006)
`Romano describes a Coriolis mass flowmeter having flow tubes, drivers,
`sensors, and control electronics. Ex. 1006, 15:1-14, 15:53-16:7. In one aspect,
`Romano adjusts the phase of an input signal to compensate for delay in sampling
`from two distinct sensors. Id. at 20:22-32.
`2.
`Analysis of the Romano Grounds
`a.
`Obviousness of Claim 21 in View of Romano
`Independent claim 21 is directed to a digital flowmeter having a control and
`measurement system that applies a negative gain to reduce motion of the conduit.
`Petitioner asserts that Romano discloses this feature in its discussion of the output
`of the drive coil power amplifier. Pet. 33-34. Patent Owner argues that Romano
`does not describe a negative gain to reduce motion, but rather a decrease in output.
`Prelim. Resp. 35-36. Petitioner and Patent Owner both cite to the following
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`passage of Romano in support of their positions: “if the peak vibratory amplitude is
`too large, then the output of power amplifier 450 will be correspondingly reduced.”
`Ex. 1006, 26:1-3.
`Reviewing this passage of Romano, it is not clear to us how Petitioner
`connects reduction of power to applying negative gain. As Patent Owner points
`out, Romano reduces output to reduce motion. Accordingly, we are not persuaded
`that Petitioner has demonstrated a reasonable likelihood of prevailing on its
`contention that Romano renders obvious the subject matter of claim 21.
`b.
`Anticipation of Claim 36 by Romano
`Independent claim 36 is directed to a flowmeter having a control and
`measurement system to use digital processing to adjust a phase of the drive signal.
`We first look to the relevant portions of Romano and then discuss Petitioner’s
`assertion.
`Romano measures the phase difference of signals sent by two distally
`separated velocity sensors measuring the motion of the flowtube. Ex. 1006, 20:57-
`62. The phase difference of the signals at a given point in time is proportional to
`the mass flow rate of the fluid flowing within the flowtube. Id. at 20:52-65. A
`limitation of the system, however, is that the signals of the two velocity sensors
`cannot be sampled (measured) at the same time; the microprocessor must alternate
`sampling the two sensors. Id. at 22:16-18. Because the phase difference must be
`measured using signals representing the same point in time, the microprocessor
`shifts (adjusts) the phase of the first signal by a certain amount to delay it. Id. at
`22:22-32.
`Petitioner’s position is, essentially, that because Romano adjusts the phase
`of the input (sensor signal), by that action it adjusts the phase of the output (drive
`signal), because the microprocessor uses the input to generate the output. Pet. 37
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`(citing Ex. 1002 ¶ 180); see Ex. 1002 ¶ 180 (“[T]he correction of the phase shift in
`the right channel signal propagates through as a phase shift of the drive signal
`. . . .”). Patent Owner argues that this position is mere “attorney argument.”
`Prelim. Resp. 47. Petitioner’s “attorney argument,” however, is based on the
`actual disclosure in Romano of a phase shift, coupled with articulated logic
`explaining how this disclosure satisfies the limitation at issue. In addition,
`Petitioner offers a declaration supporting the notion that it is reasonably logical
`that a delay on the input end, as disclosed in Romano, will result correspondingly
`in a delay on the output end. See Ex. 1002 ¶ 180. Patent Owner argues that
`“Romano does not disclose any way that the phase of either the left or right sensor
`signal affects the phase of the drive signal.” Prelim. Resp. 48. However, as
`Petitioner points out, the input is used to generate the output, such that changing
`the input seemingly would affect the output that is generated. In view of the
`above, we conclude that Petitioner has demonstrated a reasonable likelihood of
`prevailing on its contention that Romano anticipates claim 36.
`D. The Kalotay Grounds
`Petitioner asserts that: (a) claim 21 would have been obvious in view of
`Kalotay; and (b) claims 24 and 25 would have been obvious in view of Kalotay
`and Liu, and claim 26 in view of Kalotay, Liu, and Pratt. We address each asserted
`ground in turn below.
`1.
`Overview of Kalotay (Ex. 1008)
`Kalotay describes a Coriolis flowmeter having flow conduits, drivers,
`sensors, and a control electronics. Ex. 1008, 6:5-14, 8:2-9. The drive circuit
`controls the conduit oscillation by applying a pre-defined burst of energy to drive
`the conduit at an appropriate point during the oscillation cycle, thereby maintaining
`peak amplitude within a prescribed range. Id. at 3:40-4:4. A burst also can be
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`applied to remove energy from the conduit in order to retard the peak value of
`vibrations. Id. at 4:57-62.
`2.
`Analysis of the Kalotay Grounds
`a.
`Obviousness of Claim 21 in View of Kalotay
`Independent claim 21 is directed to a digital flowmeter having a control and
`measurement system that applies a negative gain to reduce motion of the conduit.
`With respect to this limitation, Petitioner asserts that Kalotay discloses applying
`negative pulses of energy to reduce oscillation. Pet. 42-44. Petitioner cites to the
`disclosure in Kalotay that the “negative pulses can be differently sized and/or the
`width of each such pulse can be dynamically set . . . based upon the magnitude of
`the change that needs to be made in the amplitude of the vibratory motion of the
`flow conduits.” Id. at 43 (quoting Ex. 1008, 13:58-64). Based on this disclosure,
`Petitioner asserts that Kalotay’s disclosure of negative pulses that are differently
`sized or with dynamically set widths renders obvious applying a “negative gain,”
`under an “obvious to try” rationale. Id. at 43-44; see also Ex. 1002 ¶¶ 190-192.
`Patent Owner argues that Petitioner has not made a sufficient showing to
`rely on the “obvious to try” rationale, specifically arguing that Petitioner has not
`provided a factual basis identifying that there were a finite number of identified,
`predictable potential solutions. Prelim. Resp. 41. Patent Owner also argues that
`applying negative gain “is quite intricate and difficult” and that Petitioner has not
`explained “how one having ordinary skill in the art would be able to modify
`Kalotay to use negative gain to reduce oscillation of the conduit.” Id. at 41-42.
`Patent Owner’s arguments are not persuasive. Regardless of Petitioner’s
`characterization of its rationale, Petitioner’s rationale is merely that Kalotay
`recognizes a need to apply negative pulses of various sizes to reduce motion as
`necessary, and that negative gain (proportional control) was a known way to
`
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`Case 6:12-cv-00799-JRG Document 160-4 Filed 06/04/14 Page 17 of 19 PageID #: 4744
`IPR2014-00170
`Patent 6,311,136
`
`address this need. See Pet. 44. Patent Owner’s allegation that such control was
`intricate and difficult is unsubstantiated, and the fact that Kalotay discloses
`proportional control (Ex. 1008, 13:58-64, cited above) factors against Patent
`Owner’s allegation. See Ex. 1002 ¶ 190 (citing to this passage in Kalotay (Ex.
`1008 (13:58-64)) and characterizing it as “proportionate control”). Next, Patent
`Owner’s argument that Petitioner has not explained how the modification would
`have been made is unpersuasive, because one of ordinary skill can use his or her
`ordinary skill, creativity, and common sense to make the necessary adjustments
`and further modifications to result in a properly functioning device. See KSR Int’l
`Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[T]he [obviousness] analysis need
`not seek out precise teachings directed to the specific subject matter of the
`challenged claim, for a court can take account of the inferences and creative steps
`that a person of ordinary skill in the art would employ.”). Lastly, Patent Owner
`alleges that the secondary considerations overcome any prima facie case of
`obviousness. Prelim. Resp. 42. However, as noted above, Patent Owner does not
`show a nexus between the evidence and the claims at issue—namely claim 21. See
`GPAC, 57 F.3d. at 1580.
`In view of the above, we conclude that Petitioner has demonstrated a
`reasonable likelihood of prevailing on its contention that Kalotay renders obvious
`the subject matter of claim 21.
`b.
`Obviousness of Claims 24 and 25 in View of Kalotay and
`Liu, and Claim 26 in View of Kalotay, Liu, and Pratt
`For Petitioner’s asserted grounds of unpatentability alleging that claims 24
`and 25 would have been obvious over Kalotay and Liu and that claim 26 would
`have been obvious over Kalotay, Liu, and Pratt, Petitioner relies on the same
`assertions with respect to Liu as its asserted ground alleging that claims 24-26
`
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`Case 6:12-cv-00799-JRG Document 160-4 Filed 06/04/14 Page 18 of 19 PageID #: 4745
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`Patent 6,311,136
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`would have been obvious over Thompson and Liu, which we found unsupported in
`our previous discussion of this ground. For similar reasons, we are not persuaded
`that Petitioner has demonstrated a reasonable likelihood of prevailing on its
`contention that Kalotay and Liu, or Kalotay, Liu, and Pratt, render obvious the
`subject matter of claims 24-26.
`
`III. SUMMARY
`Petitioner has demonstrated that there is a reasonable likelihood it will
`prevail on its challenge to the patentability of claims 17, 21, and 36 of the ʼ136
`patent, but not claims 24-26.
`
`
`IV. ORDER
`For the reasons given, it is
`ORDERED that an inter partes review of the ’136 patent is not
`
`instituted as to claims 24-26 but is instituted as to claims 17, 21, and 36 on the
`following grounds proposed in the petition:
`A. Claim 17 as obvious in view of Thompson;
`B. Claim 21 as obvious in view of Kalotay;
`C. Claim 36 as anticipated by Romano;
`FURTHER ORDERED that inter partes review is not instituted on
`any other grounds proposed in the petition;
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), an inter
`
`partes review of the ʼ136 patent is instituted commencing on the entry date of this
`Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4, notice is given of
`the institution of a trial.
`
`
`
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`Case 6:12-cv-00799-JRG Document 160-4 Filed 06/04/14 Page 19 of 19 PageID #: 4746
`IPR2014-00170
`Patent 6,311,136
`
`For PETITIONER:
`
`Andrew S. Baluch
`Jeffrey N. Costakos
`FOLEY & LARDNER LLP
`abaluch@foley.com
`jcostakos@foley.com
`
`For PATENT OWNER:
`
`James M. Heintz
`Jeffrey L. Johnson
`DLA Piper LLP (US)
`Invensys_Micro_IPR@dlapiper.com
`Jeffrey.johnson@dlapiper.com
`
`
`
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