Trials@uspto.gov
`571-272-7822
`
`Paper No. 8
`Entered: April 29, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`DUKANE CORPORATION,
`Petitioner,
`
`Vv.
`
`HERRMANN ULTRASCHALLTECHNIK GMBH & CO., KG,
`Patent Owner.
`
`a
`
`Case IPR2U16-UUU066
`Patent 8,702,883 B2
`
`Before GRACE KARAFFA OBERMANN,BRIAN P. MURPHY,and
`MICHELLE N. ANKENBRAND,Administrative Patent Judges.
`
`ANKENBRAND,Administrative Patent Judge.
`
`DECISION
`Institution of Jnter Partes Review
`37 CFR. § 42.108
`
`

`

`IPR2016-00066
`Patent 8,702,883 B2
`
`I
`INTRODUCTION
`Dukane Corporation (“Petitioner”) requests an inter partes review of
`claims 1-9 of U.S. Patent No. 8,702,883 B2 (“the ’883 patent,” Ex. 1001).
`Paper2 (“Pet.””). Hermann Ultraschalltechnik GmbH & Co., KG (“Patent
`Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”).
`
`After the Petition was filed, Patent Owner disclaimed claims 1-3 of
`
`the ’883 patent. See Prelim. Resp. 2; Ex. 2002; Ex. 2003. Patent Owner
`
`also requested that the Office issue a Certificate of Correction. Ex. 2001.
`
`On March22, 2016, the Office issued a Certificate of Correction, with a
`correction to claims 1 and 8.' Although the Board authorized Petitionerto
`
`file a reply to address the corrected version of claims 1 and8, Petitioner did
`
`not file a reply.
`
`Wehavejurisdiction under 35 U.S.C. § 314, which providesthat an
`
`inter partes review maynotbeinstituted “unless .
`
`.
`
`. there is a reasonable
`
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challengedin the petition.” Applying that standard, and upon
`consideration of the information presented in the Petition and the
`Preliminary Response, we institute an inter partes review of claim 6. We do
`
`not institute review of claims 4, 5, and 7-9.
`
`A. Related Proceedings
`
`Pelilioner and Patent Ownerdonotidentity any related proceedings
`involving the ’883 patent. Pet. 2; Paper 5, 2.
`
`' The proceduralhistory is discussed in moredetail in an interlocutory Order
`on the Conduct of the Proceedings (Paper 7) (PTAB March30, 2016).
`2
`
`

`

`IPR2016-00066
`Patent 8,702,883 B2
`
`B. The ’883 Patent
`
`The °883 patent, titled “Method for controlling an ultrasonic
`machining process,” issued on April 22, 2014. The ’883 patentrelates to a
`methodfor controlling an ultrasonic machining process, more specifically,
`an ultrasonic welding process. Ex. 1001, 1:5-6. In an ultrasonic welding
`process, a generator producesanelectric alternating voltage that is converted
`to mechanical vibration, which, in turn, is supplied to a sonotrode, or horn,
`’ that transfers the ultrasonic vibration under pressure to one of two
`components to be welded together. Jd. at 1:8-17. As the two components
`touch, boundary surfacefriction occurs between them in the “joining zone,”
`resulting in melting of the boundary surfaces and subsequentjoining or
`welding of the components. Jd. at 1:17-23. The two components typically
`are pressed together with the aid of the sonotrode.
`/d. at 1:23-25.
`According to the ’883 patent specification, in order to produce an
`optimal weld, the welding time must be short enoughto avoid heating the
`component material outside ofthe joining zone, but mustalso be long
`enoughfor a uniform melting of the boundary surfaces,to ensure a lasting
`welding connection.
`/d. at 1:29-36. Welding methodsare known that may
`achicve the aforementioned weldingtime conditions by varying the force
`with which the sonotrodeis pressed onto the components,but the
`specification states that these methods are “not optimal for all applications.”
`Id. at 1:37-65.
`
`To that end, the specification describes a methodfor controlling
`ultrasonic machining or welding, wherein, during a first machininginterval a
`first welding variable of the groupSis kept constant until a first target
`variable of the group Z reaches a predetermined valueand, during a second
`
`3
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`

`

`IPR2016-00066
`Patent 8,702,883 B2
`
`machininginterval that adjoins the first interval, a second welding variable
`
`of the group S is kept constant until a second target variable of the group Z
`
`reaches a predetermined value. Jd. at 2:5-21. Group S welding variables
`
`include the: 1) frequency (f) of the ultrasonic vibration of the sonotrode,
`
`2) amplitude (ti) of the ultrasonic vibration of the sonotrode, 3) force (F) the
`
`sonotrode exerts on the material to be machined, 4) power(P) the generator
`
`consumes, and 5) speed (v) with which the sonotrode movesin the direction
`
`of the first component.
`
`/d. at 2:6-11. Group Z target variables include the:
`
`1) force (F) the sonotrode exerts on the material to be machined, 2) power
`
`(P) the generator consumes, 3) welding time(t) that has passed since the
`beginning ofthe machining interval, during whichthe sonotrode transmits
`the ultrasonic vibration undera specific pressure into the material,
`4) welding path (s), or distance, that the sonotrode has covered in the
`direction of the first componentsince the beginning ofthe interval, and
`
`5) energy (E), or product of powerand time.
`
`/d. at 2:13—20. Thefirst and
`
`second welding variables can be the same, butthe first and second target
`
`variables are different. Jd. at 2:41-42, 2:48-49, 4:18-21. The specification
`
`further explains the methodis not limited to two machiningintervals, and
`
`that it is possible to select three or more machining intervals, each having a
`
`welding variable and target variable. Jd. at 3:39-41.
`
`C. Illustrative Claim
`
`Claim 1 is the only independent claim of the ’883 patent. As set forth
`
`above, Patent Ownerdisclaimed claims 1-3 of the ’883 patent. “[A] patent
`
`owner mayfile a statutory disclaimer of one or more challenged claimsto
`streamline the proceedings.” Office Trial Practice Guide, 77 Fed. Reg.
`48,756, 48,764—64 (Aug. 14, 2012). When a Patent Ownerfiles such a
`
`4
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`

`

`IPR2016-00066
`Patent 8,702,883 B2
`
`disclaimer, the Board’s decision on institution is based solely on the
`
`remaining claims. Jd. (citing Sony Computer Entm’t Am. Inc. v. Dudas, No.
`
`Civ.A. 1:05CV1447, 2006 WL 1472462 (E.D. Va. May 22, 2006)). Thus,
`
`only claims 4—9 remain at issue in this proceeding. Because claims 4—9all
`
`dependdirectly or indirectly from claim 1, however, they retain the content
`
`of that claim, even thoughit is now disclaimed. Cf ManualofPatent
`
`Examining Procedure (“MPEP”) § 2260.01 (the content of a cancelled
`
`independentor base claim remainsas part of a confirmed or allowed claim
`
`in an ex parte reexamination); id. § 2660.03 (the content of a cancelled base
`
`claim remains in a printed patent andis available to be read as a part of the
`
`dependentclaim in an inter partes reexamination). Therefore, the method
`
`for controlling an ultrasonic machining processrecited in claim 1 is part of
`
`claims 4-9. As such, wefind claim1illustrative of the challenged claims:
`
`Methodfor controlling an ultrasonic machiningprocess,
`1.
`in which an ultrasonic vibration of the frequencyfis
`transmitted with the aid of a sonotrode madeto carry out an
`ultrasonic vibration undera pressure into the material to be
`machined, wherein, during a first machining interval, a first
`welding variable of the group S, consisting of the frequency f of
`the ultrasonic vibration, the amplitudeti of the ultrasonic
`vibration of the sonotrode, the force F, which the sonotrode
`exerts on the material to be machined, the power P, which the
`generator delivers, and the speed v, with which the sonotrodeis
`movedin the direction of the material to be machined,f is kept
`constant)[*] until a first target variable of the groupZ,
`
`? The language “f is kept constant)”is a mistake in the patent resulting from
`an Office printing error. See Ex. 1003, 28, 31. The claim language should
`read “is kept constant.” Jd. Although Patent Ownerrequested a Certificate
`of Correction to correct additional errors in the ’883 patent, Patent Owner
`did not correct this particular error. This error correction remains relevant
`
`

`

`IPR2016-00066
`Patent 8,702,883 B2
`
`consisting of the force F, the powerP, the welding timet since
`the beginning of this machining interval, during which the
`excited sonotrode transmits the ultrasonic vibration under
`pressure into the material to be machined, the welding paths,
`whichthe sonotrode has covered since the beginning of the
`machining interval, and the energy E, calculated from the
`product of P and t, adopts a predetermined value, and, during a
`second machining interval, which adjoins the first machining
`interval, a second welding variable of the group S is kept
`constant until a second target variable of the group Z adopts a
`predetermined value, wherein the first and the secondtarget
`variable differ.[>]
`
`Ex. 1001, 4:23-46.
`
`D. Information Relied Upon in the Petition
`
`The Petition advances the following referencesas prior art:
`
`1. U.S. Patent No. 7,819,158 B2, issued October 26, 2010 (“Klinstein
`158”) (Ex. 1002).
`
`2. U.S, Patent No. 8,052,816 B2, issued November8, 2011
`(“Klinstein ’816”) (Ex. 1004).
`
`3. Dukane Dynamic Process Controller DPC™IV Plus Generator
`User’s Manual (“DPC Manual”) (Fx. 1005).
`
`4. Dukane iQ Series Ultrasonic Generator Power Supply ES User’s
`Manual(“iQ Manual’) (Ex. 1006).
`
`despite Patent Owner’s disclaimer of claim 1, because the remaining claims
`depend from claim 1. We, therefore, authorize Patent Ownertofile a
`motion to correct this error pursuant to 37 C.F.R. § 1.322.
`3 Asset forth above, the ’883 patent was the subject of a Certificate of
`Correction that issued on March 22, 2016. The Certificate of Correction
`contains an instruction to change the language “target value” recited in
`claim 1 (and claim 8) to “target variable.” Ex. 2004, 1. Unless otherwise
`indicated, this Decision refers exclusively to the corrected version of the
`claims.
`
`

`

`TPR2016-00066
`Patent 8,702,883 B2
`
`The Petition also relies on the Declaration of Leo Klinstein
`(“Klinstein Declaration”)* (Ex. 1007). |
`
`E. The Asserted Grounds
`
`nr
`
`Cnr|n
`
`102(b) 6
`
`
`
`Klinstein °816
`
`BFCwtamal
`
`The Petition asserts the following grounds of unpatentability:>
` ‘
`
`-_ Reference(s)
`Claim(s) Challenged
`Klinstein 7158
`102(b) 68 |
`
`
`
`Klinstein °?158 and iQ
`103
`Manual
`
`
`
`
`mn
`
`
`[TOR
`
`II.
`
`ANALYSIS
`
`A. Claim Construction
`
`In an inter partes review, claim terms in an unexpired patent are
`
`interpreted according to their broadest reasonable construction in light of the
`specification ofthe patent in which they appear. 37 C.F.R. § 42.100(b);
`In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1275-79 (Fed. Cir. 2015),
`
`cert. granted sub nom. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 890
`
`(mem.) (2016). Underthat standard, claim terms are given their ordinary
`and customary meaning, as would be understood by one ofordinary skill in
`
`‘ Petitioner and the Klinstein Declaration describe one of ordinary skill in
`the art as someone having a good working knowledge ofultrasonic welding
`and prior art ultrasonic welding machinesand processes, an undergraduate
`education in electrical or mechanical engineering, and at least two years of
`practical working experience. Pet. 4; Ex. 1007 ¥ 13.
`> We have removedtheasserted grounds of unpatentability for disclaimed
`claims 1~3 from the summaryofasserted grounds.
`7
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`

`

`IPR2016-00066
`Patent 8,702,883 B2
`
`the art in the context of the entire disclosure. In re Translogic Tech., Inc.,
`
`504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for a claim
`
`term mustbe set forth in the specification with reasonable clarity,
`
`deliberateness, and precision. Jn re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
`
`1994).
`
`Both Petitioner and Patent Ownerpropose several claim terms for
`
`construction. See Pet. 8-13; Prelim. Resp. 4-13. Only those terms which
`
`are in controversy need be construed, and only to the extent necessary to
`
`resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`
`200 F.3d 795, 803 (Fed. Cir. 1999). For purposes of this Decision, we
`
`determine that no claim term requires express construction.
`
`B. The “Target Variable[s] Differ” Limitation of Claims 6-9
`
`All of the claims of the ’883 patent include at least two machining
`intervals each with a target variable “wherein the first and the second target
`variable differ.”® In addition, claim 8 recites a third machining interval that
`adjoins the second machininginterval, wherein the target variables for the
`
`second and third machiningintervals (i.e., second andfifth target variables)
`
`differ. Ex. 1001, 5:3—13. Petitioner asserts that Klinstein ’158 anticipates
`claim 8’ and the DPC Manualanticipates claims 6-9. Pet. 20, 29-31, 53-
`
`© The phrase “wherein thefirst and the secondtarget variable[s] differ”
`appears in claim 1, from whichall of the claims of the ’883 patent depend.
`As explained previously, although Patent Owner disclaimed claim 1 (and
`claims 2 and 3), the method for controlling an ultrasonic machining process
`recited in claim 1, including the limitation that the target variables are
`different, is part of claims 4-9, which remainat issue in this proceeding.
`’ Petitioner also asserts that Klinstein ’158 anticipates claim 6. See, e.g., Pet.
`29. Petitioner’s analysis of claim 6, however, includes a discussion of the
`limitation “wherein the first and the second target variable[s] differ” as
`recited in claim 1. Therefore, we discuss claim 6 separately below.
`8
`
`

`

`IPR2016-00066
`Patent 8,702,883 B2
`
`57; see id. at 20-29, 49-53 (addressing claim 1 limitations). A problem
`
`commonto both grounds, however,is Petitioner’s failure to address the
`
`limitations reciting different target variables for the machining intervals. See
`
`Pet. 29-31, 56-57.
`
`A petition must include a “statementof the precise relief requested”
`
`and a “full statement of the reasons for the relief requested including a
`
`detailed explanation of the significance of the evidence including material
`
`facts.” 37 C.F.R. § 42.22(a). Petitioner’s analysis of the claims, however,
`
`focuses on whether Klinstein ’158 or the DPC Manualdiscloses that the
`
`target values(i.e., the predetermined values ofthe target variables that cause
`
`the machining intervals to end) differ. Pet. 29-31, 56-57. In other words,
`
`Petitioner analyzes the claims as they existed prior to the Certificate of
`
`Correction changing “target value”to “target variable” in claims 1 and 8.
`
`For example, in arguing that Klinstein ’158 anticipates claim 8, Petitioner
`
`providesthat “[t]he predetermined values .. . for the secondandfifth target
`
`variables ‘differ’ from each other.” Jd. at 30-31. Petitioner makes the same
`
`substantive argument regarding the DPC Manual: “the DPC Manual
`
`discloses target values that differ for each of these three [machining]
`
`intervals.” Jd. at 57. Further, Petitioner identifies the same group Z variable
`
`as corresponding to both the secondandfifth target variables associated with
`
`the machining intervals described in Klinstein ’158. Jd. at 26-27, 30
`
`(asserting that welding time is the secondtarget variable andfifth target
`
`variable disclosed in Klinstein ’158). Petitioner does the same with respect
`
`to the DPC Manual.
`
`/d. at 57 (identifying distance as thefirst, second, and
`
`fifth target variables disclosed in the DPC Manual).
`
`

`

`IPR2016-00066
`Patent 8,702,883 B2
`
`As explained previously, we authorized Petitionerto file a reply to
`
`address the corrected version of the claims, but Petitioner chose notto do so.
`
`Petitioner’s failure to address all of the limitations of the claimsis fatalto its
`
`unpatentability assertions. Accordingly, on this record, Petitioner is not
`
`reasonably likely to prevail in showingattrial that Klinstein ’158 anticipates
`
`claim 8 or that the DPC Manualanticipates claims 6-9.
`
`Wereach the sameresult regarding Petitioner’s assertion that the
`
`combination of Klinstein ’158 and the iQ Manual would have rendered the
`
`subject matter of claim 9 obvious. Claim 9 depends from claim 8, includes
`
`three machining intervals having different target variables, and adds features
`
`related to additional machining intervals. Ex. 1001, 5:9-13. Petitioner
`argues that Klinstein ’158 disclosesall ofthe limitationsof claim 8 and
`relies on the iQ Manual onlyto accountfor the added features of claim 9.
`
`Pet. 58-59. In other words, Petitioner does not rely on the addition of the iQ
`
`Manualto account forthe “target variable[s] differ” limitation thatit fails to
`
`address in its arguments regarding Klinstein °158. Accordingly, based on
`
`the record before us, Petitioner also is not reasonably likely to prevail in
`
`showingat trial that the subject matter of claim 9 would have been obvious
`
`over the combination of Klinstein ?158 and the iQ Manual.
`
`C. Additional Ground Based on Klinstein ’158
`
`Petitioner asserts that claim 6 is unpatentable under 35 U.S.C.
`
`§ 102(b) as anticipated by Klinstein ’158. Pet. 20, 29-31; see id. at 16-18,
`
`20-28 (setting forth analysis of claim 1 limitations). Having considered the
`
`arguments and evidencebefore us, for the reasonsset forth below,Petitioner
`
`is not reasonably likely to prevail on its asserted ground.
`
`10
`
`

`

`IPR2016-00066
`Patent 8,702,883 B2
`
`1. Overview ofKlinstein ’158
`
`Klinstein ’158 discloses an ultrasonic welding system for joining
`
`plastic parts and a methodfor controlling the welding process. Ex. 1002,
`
`1:12-14, 6:18-44. The welding system comprises an ultrasonic welding
`
`stack that movesin the linear direction and applies a controlled force to a
`
`first or upper workpiece to urge the first workpiece against a second or lower
`
`workpiece, and an electrically powered linear actuator coupled to the
`
`welding stack that movesthe stack while applying a controlled force, speed,
`
`or combination of force and speedto the stack. Jd. at 2:28-32. The welding
`
`system also includes an ultrasonic signal generator, a booster, and a horn or
`
`sonotrode.
`
`/d. at 2:56-31, Fig. 5. The horn transfers the ultrasonic
`
`mechanical vibrational energy originating at the transducer to the workpiece
`
`and applies the pressure necessary to force the weld. 3:49-57.
`
`Welding is achieved by bringingthetip of the horn into contact with
`
`the upper workpiece and applying pressure. Jd. at 4:21-23. This causes
`
`ultrasonic energy to travel through the upper workpiece, which increases the
`
`kinetic energy, or heat, at the contact point of the two workpieces and,
`
`subsequently, melts a plastic ridge on the surface of one of the workpieces
`
`allowing the molten material to flow betweenthe surfaces of both
`
`workpieces. Jd. at 4:24-28. The material solidifies and forms a permanent
`
`bond whenthe ultrasonic vibration is stopped. Jd. at 4:28-29.
`
`The welding process can be optimized by using an electric control
`
`scheme,such as a weld velocity profile or a welding force profile. Jd. at
`
`6:19-30, Figs. 9, 10. Control of the welding process can beinitiated by
`
`many different parameters, including: part contact position, distance, force
`preload on thepart, time, predefined threshold of ultrasonic power draw on
`
`11
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`

`IPR2016-00066
`Patent 8,702,883 B2
`
`the generator, motor torque, and cumulative energy consumedbythepart at
`
`a low ultrasonic idle power. Jd. at 6:37-42. “Once the welding hasstarted,
`
`any of the aforementioned parameters can be used to complete the weld
`
`process with the addition of velocity or weld force profile control.” Jd. at
`
`6:42-45.
`
`2. Analysis
`
`Claim 6 depends from claim 1, requires that the first and secondtarget
`
`variables of the method differ, and recites two alternatives for ending the
`
`first machining interval: “whenthe first target variable adopts the
`
`predetermined value or when a fourth target variable of the group Z adopts a
`
`predetermined value.” Ex. 1001, 4:58-62.
`
`In addressing the “target variable[s] differ” limitation, Petitioner
`
`argues that Klinstein ’158 discloses “the use of other target variables to
`999
`
`‘control the welding process[.]’”
`
`Pet. 28. Petitioner also cites to a portion of
`
`Klinstein ’158 that describes how control of the welding process can be
`
`initiated:
`
`The control of the welding process can be initiated by many
`different parameters. The parameters include, but are not
`limited to: part contact position, distance, force preload on part,
`time, predcfined threshold of ultrasonic power draw on the
`generator, motor torque and cumulative energy consumed by
`the part at a low ultrasonic idle power. Once the welding has
`started, any of the aforementioned parameters can be used to
`complete the weld process with the addition of velocity or weld
`force profile control.
`
`12
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`

`IPR2016-00066
`Patent 8,702,883 B2
`
`Id. (citing Ex. 1002, 6:36-44). Petitioner contends Klinstein ’158 discloses
`
`that the target variable selected may be different for the two intervals
`
`because each ofthe listed parameters is a group Z variable. Jd.
`
`Onthis record, Petitioner fails to explain adequately how thecited
`
`passage of Klinstein ’158 teaches that the target variables are different for
`
`two adjoining machining intervals. The first two sentences on which
`Petitionerrelies relate to initiating control of the welding process by the
`
`different parameters; they do not describe what happensafter control of the
`
`welding processis initiated or during any particular machininginterval.
`
`Petitioner also does not explain how initiating control of the welding process
`
`or completing the weld process with a specific parameter (as set forth in the
`
`last sentence of the passage) teachesthe selection of different target
`
`variables during two adjoining intervals of the welding process. To the
`contrary, Petitioner acknowledgesthat the only examplesset forth in
`
`Klinstein ?158 utilize the same target variable for each machining interval of
`
`the welding method. See Pet. 23-27 (explaining that Figures 9 and 10 of
`
`Klinstein ?158 disclose welding time as both thefirst and secondtarget
`
`variable); Ex. 1002, Figs. 9, 10. A petition must include a “detailed
`
`explanation of the significance of the evidence.” 37 C.F.R. § 42.22(a).
`
`Petitioner’s single-sentence analysis is insufficient in this regard.
`
`Accordingly, on this record, Petitioner is not reasonably likely to prevailin
`
`showingattrial that claim 6 is anticipated by Klinstein ’158.
`
`D. Grounds Based on Klinstein ’816
`
`Petitioner asserts that claim 6 is unpatentable under 35 U.S.C.
`
`§ 102(b) as anticipated by Klinstein °816. Pet. 32-42. Petitioner further
`
`asserts that claims 4 and 5 are unpatentable under 35 U.S.C. § 103 over
`
`13
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`IPR2016-00066
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`Klinstein ’816 in view of the general knowledgein the art. Jd. at 34, 42-43.
`
`Having considered the arguments and evidence before us, for the reasonsset
`
`forth below,Petitioner establishes a reasonable likelihood of prevailing on
`
`its asserted anticipation ground, but not on its asserted obviousness ground.
`
`1. Overview ofKlinstein ’816
`
`Klinstein ’816 discloses an ultrasonic welding system and method,
`
`during which an ultrasonic welding stack mounted for linear movementis
`
`pressed against a first workpiece and the energy from the welding stackis
`applied to the first workpiece to initiate welding. Ex. 1004, Abstract. Like
`
`Klinstein ’158, the welding system comprises an electrically powered linear
`
`actuator coupled to the welding stack that moves the stack while applying a
`
`controlled force, speed, or combination of force and speedto the stack, and
`
`the welding system includes an ultrasonic signal generator, a booster, and a
`
`horn. Jd. at 1:30-35, 3:21-43, Figs. 5, 6. The system further comprises a
`
`controller and at least one sensorthat is configured to measure at least one
`
`corresponding control variable and to provide a signal correspondingto the
`
`control variable to the controller. Jd. at 1:39-45.
`
`During the welding method, called a delayed motion technique, an
`
`initial force is applied to the welding stack and the welding distanceis
`
`maintained at or near zero inches until a decrease in force to a predetermined
`
`threshold force of 17 poundsis reached. Jd. at 7:16-51, Figs. 9-11.
`
`Following that decrease in force, the control system continues the weld in
`
`accordance with a selected weld process profile.
`
`/d. at 7:51-55. For
`
`example, after the decrease in force, the weld speed can be held constant
`
`until a predetermined weld distance is reached, thereby ending the
`
`machininginterval. Jd. at 7:16-23, Figs. 9-11.
`
`14
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`IPR2016-00066
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`
`2. Anticipation by Klinstein '816
`
`Petitioner argues that Klinstein ’816 discloses every limitation of
`
`claim 6 and, therefore, anticipates that claim. Pet. 34, 41-42; see id. at 36—
`
`41 (addressing claim 1 limitations). Petitioner supports its argument with
`
`citations to Klinstein ’816 that correspondto each limitation of the claim and
`
`with the Klinstein Declaration. Jd. at 32-34 (citing Ex. 1003, 7:16—55, Figs.
`
`9-11; Ex. 1007 J§ 46, 57). For example, Petitioner explains that Klinstein
`
`°816 describes a first machining interval that ends whena first target
`
`variable (force) adopts a predetermined value.
`
`/d.
`
`Patent Ownerarguesthat Klinstein ’816 fails to disclose monitoring a
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`fourth target variable as required by claim 6. Prelim. Resp. 15. As
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`explained previously, claim 6 recites the disjunctive connector“or” with the
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`following two options for ending the first machining interval: (1) thefirst
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`machining interval ends whenthefirst target variable adopts the
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`predetermined value, or (2) the first machining interval ends when a fourth
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`target variable of the group Z adopts a predetermined value. Ex. 1001,
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`4:58-62. Whena claim covers several alternatives, the claim may be
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`unpatentable if any of the alternatives within the scope of the claim are
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`taught by the prior art. See Brown v. 3M, 265 F.3d 1349, 1351 (Fed. Cir.
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`2001). At this stage of the proceeding, and recognizing that Patent Owner
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`has not yet had an opportunity to submit new testimonial evidence in support
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`of its arguments, Petitioner showssufficiently that Klinstein ’819 discloses
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`one of the alternatives encompassedby claim 6, namely,a first machining
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`interval that ends whenthefirst target variable adopts the predetermined
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`value. Accordingly, on this record, Petitioner is reasonably likely to prevail
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`in showingat trial that Klinstein ’816 anticipates claim 6.
`
`15
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`IPR2016-00066
`Patent 8,702,883 B2
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`3. Obviousness ofclaims 4 and 5 over Klinstein '816
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`Claim 4 incorporates the content of claim 1 and addsthe features of
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`detecting a third group Z target variable during the first machining interval
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`and selecting the second target variable depending on the result of the
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`detection. Ex. 1001, 4:52-55. Claim 5 depends from claim 4 and narrows
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`the third target variable to welding time. Jd. at 4:56-57. Petitioner argues a
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`person of ordinary skill would have known that monitoring and detecting a
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`certain target variable during the first machining interval would allow
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`selection of another target variable, such as welding time, for the second
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`machining interval. Pet. 42-43. To support these assertions, Petitioner
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`provides hypothetical detection and selection criteria that a skilled artisan
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`“could have” used based on certain target variables and cites the Klinstein
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`Declaration.
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`/d. (citing Ex. 1007 7 55).
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`Petitioner, however, fails to link the hypothetical detection and
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`selection criteria to any particular teaching, preference, suggestion, or other
`reasoning derived from Klinstein ’816 and the level of skill in the art.
`Indeed, Petitioner’s conclusory argumentis devoid of discussion and
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`citations to Klinstein 816 or the welding method described therein. The
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`Klinstein Declaration adds no further detail; it merely mirrors the Petition.
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`Compareid. at 42-43, with Ex. 1007 { 55. Petitioner, therefore, does not
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`provide adequate reasoning based onrational underpinningsto persuade us,
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`in the absenceofhindsight, that one of ordinary skill would have modified
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`the welding methodof Klinstein ’816 to achieve the claimed subject matter.
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`Accordingly, on this record, Petitioner is not reasonably likely to prevail in
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`showingattrial that the subject matter of claims 4 or 5 would have been
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`obvious over Klinstein ’816.
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`

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`IPR2016-00066
`Patent 8,702,883 B2
`
`III.
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`CONCLUSION
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`Taking account of the information presented in the Petition and the
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`Preliminary Response, and the evidence of record, we determine that
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`Petitioner establishes a reasonable likelihoodthat it will prevail in showing
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`that claim 6 of the ’883 patent is unpatentable. Our findings and conclusions
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`are not final and may change upon consideration ofthe full record developed
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`duringtrial.
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`IV. ORDER
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`In consideration of the foregoing, it is hereby:
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`ORDEREDthatan inter partes review is instituted asto:
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`Claim 6, on the groundofanticipation by Klinstein ’816 under
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`35 U.S.C. § 102(b);
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`FURTHER ORDEREDthat no other ground of unpatentability is
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`authorized; and
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`FURTHER ORDEREDthat notice is hereby given ofthe institution of
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`a trial commencing on the entry date of this decision, pursuant to 35 U.S.C.
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`§ 314(c) and 37 C.F.R. § 42.4.
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`

`

`IPR2016-00066
`Patent 8,702,883 B2
`
`FOR PETITIONER:
`
`Stephen G. Rudisill
`Justin D. Swindells
`Nixon Peabody LLP
`
`srudisill@nixonpeabody.com
`jswindells@nixonpeabody.com
`
`FOR PATENT OWNER:
`
`Alex R. Sluzas
`Ourmazd S, Ojan
`Panl & Paul
`
`info@paulandpaul.com
`
`18
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`