Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 31
`Entered: January 17, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PACIFIC SURF DESIGNS, INC.,
`Petitioner,
`
`v.
`
`SURF WAVES, LTD.,
`Patent Owner.
`____________
`
`Case IPR2016-01454
`Patent 8,088,016 B2
`____________
`
`Before PHILLIP J. KAUFFMAN, BEVERLY M. BUNTING, and
`JASON W. MELVIN, Administrative Patent Judges.
`
`MELVIN, Administrative Patent Judge.
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`571-272-7822
`
`
`Paper No. 31
`Entered: January 17, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PACIFIC SURF DESIGNS, INC.,
`Petitioner,
`
`v.
`
`SURF WAVES, LTD.,
`Patent Owner.
`____________
`
`Case IPR2016-01454
`Patent 8,088,016 B2
`____________
`
`Before PHILLIP J. KAUFFMAN, BEVERLY M. BUNTING, and
`JASON W. MELVIN, Administrative Patent Judges.
`
`MELVIN, Administrative Patent Judge.
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`Case IPR2016-01454
`Patent 8,088,016 B2
`
`
`I.
`INTRODUCTION
`In this inter partes review, instituted pursuant to 35 U.S.C. § 314,
`Petitioner, Pacific Surf Designs, Inc., challenges all claims of U.S. Patent
`No. 8,088,016 (Ex. 1001, “the ’016 patent”), claims 1–20 (see Petition
`(Paper 1, “Pet.”)). Patent Owner, Surf Waves, Ltd., did not file a
`Preliminary Response. We instituted review of all challenged claims.
`Paper 9 (“Inst.” or “Institution Decision”). Patent Owner filed a Response
`(Paper 13, “PO Resp.”) and Petitioner filed a Reply (Paper 16, “Pet. Reply”).
`Patent Owner filed a Motion to Exclude (Paper 21), which we address
`below. We held a hearing on November 8, 2017, and a transcript of the
`hearing is included in the record. Paper 30 (“Tr.”).
`This a final written decision as to the patentability of claims for which
`inter partes review is instituted. For the reasons discussed below, we
`determine that Petitioner has proven by a preponderance of the evidence
`claims 1–5 and 7–20 are unpatentable but has not proven by a
`preponderance of the evidence that claim 6 is unpatentable.
`
`A. RELATED MATTERS
`The parties identify the following pending judicial matter as relating
`to the ’016 patent: Flowrider Surf, Ltd. v. Pacific Surf Designs, Inc., Case
`No. 15cv1879 (S.D. Cal.). Pet. 1; Paper 5, 2.
`
`B. THE ’016 PATENT
`The ’016 patent is titled “Half-Pipe Water Ride,” was filed April 21,
`2009, issued January 3, 2012, and claims priority to a provisional application
`filed April 21, 2008. Ex. 1001, [54], [22], [45], 1:5–8. The ’016 patent
`describes a water ride in which water flows from a water-delivery section
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`through an activity section and to a dewatering section. Id. at 1:23–37. The
`activity section includes curved sidewalls on opposite sides of a middle
`section of the activity section. Id. Figure 1 of the ’016 patent is reproduced
`below:
`
`
`Figure 1 illustrates an embodiment of the half-pipe water ride with water-
`delivery section 12, activity section 14, and dewatering section 16; activity
`section 14 includes middle section 34 and sidewalls 23. Id. at Fig. 1, 1:41–
`42, 2:42–62, 3:22–24. Water from the dewatering section is returned to the
`water-delivery section through a water-retrieval section, as depicted in the
`embodiment of Figure 5. Figure 5 is reproduced below:
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`Figure 5 illustrates a cross-sectional view with pump 20 circulating water
`through a nozzle assembly and into the ride as described above. Id. at 1:49–
`50, 2:46–48, 2:58–62, 2:67–3:2.
`
`C. CHALLENGED CLAIMS
`The only two independent claims of the ’016 patent, 1 and 20
`(reproduced below), are illustrative of the claimed subject matter:
`1. A water ride for use by a rider, the water ride comprising:
`an activity section including
`a substantially flat middle section,
`a first curved sidewall extending substantially upwardly
`from an edge of the middle section, and
`a second curved sidewall extending substantially
`upwardly from another edge of the middle section
`opposite the first curved side;
`a water delivery section coupled to a side of the middle
`section; and
`the water delivery section configured and arranged to
`deliver water up the middle section in a direction
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`substantially opposite the rider’s direction of travel
`along the middle section;
`a dewatering section coupled to another side of the middle
`section opposite the water delivery section and located
`at an elevation higher than the water delivery section;
`and
`a rider exit located adjacent the water delivery section.
`Id. at 4:58–5:8.
`20. A water ride for use by a rider, the water ride comprising:
`an activity section including
`a substantially flat, inclined middle section,
`a first curved sidewall extending substantially upwardly
`from an edge of the middle section, and
`a second curved sidewall extending substantially
`upwardly from another edge of the middle section
`opposite the first curved side;
`a water delivery section coupled to a side of the middle
`section;
`the water delivery section including at least one nozzle
`configured and arranged to deliver water up the entire
`length of the middle section;
`a dewatering section coupled to another side of the middle
`section opposite the water delivery section and located
`at an elevation higher than the water delivery section;
`and
`a rider exit located adjacent the water delivery section.
`Id. at 6:19–36.
`
`D. REVIEWED GROUNDS OF UNPATENTABILITY
`Petitioner relies on the following references:
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`Reference
`Exhibit
`1003 U.S. Pat. No. 6,491,589 B1, iss. Dec. 10, 2002 (“Lochtefeld 589”)
`1004 U.S. Pat. No. 5,738,590, iss. Apr. 14, 1998 (“Lochtefeld 590”)
`1005 U.S. Pat. No. 6,676,530 B2, iss. Jan. 13, 2004 (“Lochtefeld 530”)
`
`
`
`Petitioner presented certain grounds in the alternative. E.g., Pet. 26
`(“Even if the Board disagrees that the nozzle cover is a second exit, it would
`have been obvious to modify Lochtefeld 589 in view of itself to disclose the
`limitation.”), 50 (“To the extent the Board disagrees [that Lochtefeld 530
`teaches curved sidewalls], however, using curved sidewalls was known as
`shown in Lochtefeld 590, and it would have been obvious to combine
`Lochtefeld 590 with Lochtefeld 530 to arrive at that limitation.”). To clearly
`identify the grounds on which we instituted, we exercised our discretion to
`recast the challenges presented in the Petition in view of the specific prior art
`and arguments actually relied upon for the challenged claims. Inst. 7–8; see
`In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1273 (Fed. Cir. 2015)
`(“Nor does the IPR statute expressly limit the Board’s authority at the final
`decision stage to the grounds alleged in the IPR petition.”), aff’d, Cuozzo
`Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (2016); see also SightSound
`Techs., LLC v. Apple Inc., 809 F.3d 1307, 1312–13 (Fed. Cir. 2015) (noting
`that governing statutory provisions do not limit the Board’s authority to
`proceed with AIA trial proceedings on only the specific statutory grounds
`alleged in the petition). Thus, we instituted on the following grounds of
`unpatentability (Inst. 31): 1
`
`1 The Leahy-Smith America Invents Act (“AIA”) included revisions to
`35 U.S.C. § 100 et seq. effective on March 16, 2013. Because the ’016
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`Reference(s)
`Lochtefeld 589
`Lochtefeld 589
`Lochtefeld 589 and
`Lochtefeld 590
`Lochtefeld 5304
`Lochtefeld 530 and
`Lochtefeld 590
`
`Challenged Claims
`Basis
`§ 102(b) 1–6, 8, 9, 11, 12, 15–17, 19, and 202
`§ 103(a)3 1–20
`
`§ 103(a) 1–20
`
`§ 102(b) 1–5, 11, 15, 16, 18, and 20
`
`§ 103(a) 1–20
`
`E. LEGAL PRINCIPLES
`In inter partes reviews, petitioners bear the burden of proving
`unpatentability of the challenged claims, and the burden of persuasion never
`shifts to the patent owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc.,
`800 F.3d 1375, 1378 (Fed. Cir. 2015). To prevail, Petitioner must support
`its challenge by a preponderance of the evidence. 35 U.S.C. § 316(e);
`
`
`Patent issued from an application filed before March 16, 2013, we apply
`the pre-AIA versions of the statutory bases for unpatentability.
`2 Petitioner asserts that claims 1–20 are “Anticipated Or Rendered Obvious
`By Lochtefeld 589” but asserts that Lochtefeld 589 teaches the limitations
`of only the claims listed here. Pet. 20 (emphasis omitted).
`3 Although the Petition presents single-reference obviousness arguments
`intertwined with anticipation arguments, we consider them two separate
`grounds and evaluate them separately. See SightSound, 809 F.3d at 1312–
`13.
`4 Although Petitioner presents as a single ground “Lochtefeld 530 In View
`Of Lochtefeld 590,” Petitioner argues that Lochtefeld 530 alone teaches
`the limitations of claims 1–5, 11, 15, 16, 18, and 20 (Pet. 49–59)
`(emphasis omitted), and we thus also consider the ground based on
`anticipation by Lochtefeld 530 alone. See SightSound, 809 F.3d at 1312–
`13.
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`37 C.F.R. § 42.1(d). Accordingly, all of our findings and conclusions are
`based on a preponderance of the evidence.
`
`1. Anticipation overview
`A patent claim is unpatentable under 35 U.S.C. § 102 if “the four
`corners of a single, prior art document describe every element of the claimed
`invention, either expressly or inherently, such that a person of ordinary skill
`in the art could practice the invention without undue experimentation.”
`Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed.
`Cir. 2000). “A single prior art reference may anticipate without disclosing a
`feature of the claimed invention if such feature is necessarily present, or
`inherent, in that reference.” Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 958
`(Fed. Cir. 2014) (citing Schering Corp. v. Geneva Pharm., 339 F.3d 1373,
`1377 (Fed. Cir. 2003)). We analyze the grounds based on anticipation in
`accordance with the above-stated principles.
`
`2. Obviousness overview
`An invention is not patentable “if the differences between the subject
`matter sought to be patented and the prior art are such that the subject matter
`as a whole would have been obvious at the time the invention was made to a
`person having ordinary skill in the art to which said subject matter pertains.”
`35 U.S.C. § 103(a). The question of obviousness is resolved on the basis of
`underlying factual determinations including: (1) the scope and content of
`the prior art; (2) any differences between the claimed subject matter and the
`prior art; (3) the level of skill in the art; and, (4) where in evidence, so-called
`secondary considerations, including commercial success, long-felt but
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`unsolved needs, and failure of others.5 Graham v. John Deere Co., 383 U.S.
`1, 1718 (1966).
`When evaluating a combination of teachings, we must also “determine
`whether there was an apparent reason to combine the known elements in the
`fashion claimed by the patent at issue.” KSR Int’l Co. v. Teleflex Inc., 550
`U.S. 398, 418 (2007) (citing In re Kahn, 441, F.3d 977, 988 (Fed. Cir.
`2006)). Whether a combination of elements produced a predictable result
`weighs in the ultimate determination of obviousness. KSR, 550 U.S. at 416–
`17. We analyze the grounds based on obviousness in accordance with the
`above-stated principles.
`
`II. DISCUSSION
`
`A. CLAIM CONSTRUCTION
`Before the Board, claims in an unexpired patent are interpreted
`according to their broadest-reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
`Cuozzo, 136 S. Ct. at 2144–46. Under that standard, we generally give a
`claim term its “ordinary and customary meaning,” which is “the meaning
`that the term would have to a person of ordinary skill in the art in question”
`at the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249,
`1257 (Fed. Cir. 2007). The specification may impose a specialized meaning,
`departing from the ordinary and customary meaning, by defining a term with
`reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d
`
`5 Patent Owner neither provided evidence supporting secondary
`considerations of nonobviousness nor argued that such considerations
`weigh against obviousness. Thus, we base our analysis on the other
`factual considerations discussed above.
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`1475, 1480 (Fed. Cir. 1994). Further, a party may prove “the existence of a
`‘clear and unmistakable’ disclaimer” that narrowed a term’s definition in the
`prosecution history of a challenged patent. Trivascular, Inc. v. Samuels, 812
`F.3d 1056, 1063–64 (Fed. Cir. 2016) (quoting Elbex Video, Ltd. v.
`Sensormatic Elecs. Corp., 508 F.3d 1366, 1371 (Fed. Cir. 2007)).
`Petitioner proposed constructions for “opposite,” “coupled,” “middle
`section,” and “the first curved side” in the Petition, terms that each appear in
`all challenged claims. Pet. 17–20. We addressed those terms in the
`Institution Decision, noting that our constructions were consistent with those
`of the district court in the related litigation. Inst. 10–13; see Ex. 1013. We
`identified two additional terms potentially affecting our determinations
`regarding certain claims, and set forth preliminary constructions for those
`terms also. Inst. 14.
`Having considered the evidence and arguments presented, we address
`the construction of “activity section,” “curved sidewall extending
`substantially upwardly from an edge of the middle section,” “the first curved
`side,” “additional water,” and “curved about an axis parallel to water flow.”
`For all other terms, we conclude no express claim construction is necessary
`for our unpatentability determinations. See Vivid Techs., Inc. v. Am. Sci. &
`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be
`construed that are in controversy, and only to the extent necessary to resolve
`the controversy.”).
`
`1. “activity section”
`In its Response, Patent Owner seeks a construction of “activity
`section” limited to “a section of the water ride that a rider may traverse.”
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`PO Resp. 30 (citing Ex. 2001 ¶ 43).6 For support, Patent Owner relies on a
`passage in the Specification stating that “[o]nce in the activity section 14, the
`rider 38 can propel himself up onto the sidewalls 32.” Ex. 1001, 3:45–55;
`Tr. 38:3–20.
`Petitioner argues that the proper construction should follow the
`district court, which construed the term as “section of the water ride
`including the middle section, the first curved sidewall, and the second
`curved sidewall.” Pet. Reply 23 (quoting Ex. 1013, 17). Petitioner notes
`that Patent Owner proposed that construction to the district court (id. (citing
`Ex. 1010)) and that Patent Owner’s expert testified in his deposition that he
`“didn’t have any problems with the [district court’s] claim construction” (id.
`(quoting Ex. 1014, 29:11–14)).
`Although the district court construed “activity section” as Petitioner
`describes, it also construed “curved sidewall extending substantially
`upwardly from [an/another] edge of the middle section,” which is part of the
`activity section, as “upwardly curved wall that the rider may traverse
`extending from [an/another] edge of the middle section.” Ex. 1013, 12–14.
`That said, it does not appear that the district court specifically considered
`whether to include “that the rider may traverse” in its construction. Id. It
`did, however, identify the issue regarding “activity section” as whether that
`term should include Petitioner/Defendant’s “additional proposed phrase ‘on
`
`
`6 At the hearing, Patent Owner argued that the Lochtefeld 530 lacks the
`claimed sidewall because: the sidewall is “not to be designed [to be
`traversed]. But more than designed, there’s nothing in this reference that
`tells you that you should be traversing on it. So it’s more than just
`designed. There’s nothing in this reference that says you would traverse
`it.” Tr. 34:15–22.
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`all of which a rider can ride.’” Ex. 1013, 10:1–4. It concluded that such
`language would be “superfluous and introduce[] ambiguity.” Id. at 10:9–12.
`We conclude the broadest-reasonable interpretation of “activity
`section” in light of the Specification does not require that a rider may
`traverse the entire activity section, including all portions of the sidewalls.
`Such a construction would be inconsistent with the Specification’s
`description that sidewalls may curve past vertical, as shown in Figure 12C.
`Ex. 1002, 4:5–6, Fig. 12C. In this regard, our construction comports with
`that of the district court. See Ex. 1013, 10:9–12. Beyond that, as discussed
`below (see infra at 41), whether the claims require that a rider may traverse
`some portion of the sidewall does not affect our conclusions regarding
`unpatentability. Thus, we do not further construe the “activity section.”
`
`2. “curved sidewall extending substantially upwardly
`from an edge of the middle section”
`Both independent claims recite two sidewalls as part of the activity
`section, i.e., a first curved sidewall and a second curved sidewall. As
`discussed below, the parties dispute whether Lochtefeld 589 discloses
`sidewalls extending substantially upwardly from an edge of the middle
`section, as claimed. See infra at 19. One central aspect of this dispute
`centers on the identification of the claimed “edge” and whether the prior art
`discloses sidewalls extending from such an edge.
`The district court in related litigation construed this phrase to resolve
`certain disputes: whether the phrase is indefinite; whether the middle
`section must be rectangular in shape; and whether the sidewalls must extend
`along the entire side of the middle section. Ex. 1013, 10–14. Relevant here,
`the court concluded that the middle section need not be rectangular,
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`reasoning in part that by using “‘an’ instead of ‘the’ suggests that the edges
`are not strictly defined.” Ex. 1013, 13:23. The court further concluded that
`the sidewalls need not extend along the entire side of the middle section,
`reasoning that the Specification contains no description that would limit the
`claims in such a manner. Id. at 14:9–10. Thus, the district court construed
`the phrase as “upwardly curved wall that the rider may traverse extending
`from [an/another] edge of the middle section.” Ex. 1013, 14:15–18. It does
`not appear that the district court viewed the parties as disputing the inclusion
`of “that the rider may traverse.”
`The Specification does not describe any aspect of “an edge” or the
`sidewalls extending from “an edge” of the middle section, other than
`expressing the claim language in the Summary. Ex. 1001, 1:24–28. That
`language, like the claims, refers to sidewalls extending from “an edge of the
`middle section” and “another edge of the middle section opposite the first
`curved side[wall]” and a “water delivery section” and “dewatering section,”
`coupled to “a side of the middle section” and “another side of the middle
`section opposite the water delivery section,” respectively. Id. at 1:24–32,
`4:60–5:7, 6:22–36. Nothing in the ’016 patent’s Specification requires that
`the middle section be bounded by linear edges or parallel edges, and Patent
`Owner has identified nothing that would constrain a skilled practitioner’s
`reading in such a fashion. We agree with the district court that the claimed
`edges need not extend along the entire middle section and need not define a
`rectangular shape.
`Regarding the claim phrase “extending substantially upwardly,”
`Patent Owner’s expert takes the position that curvature must be measured
`“perpendicular to a tangent along the edge.” See Ex. 1014, 59:3–60:1.
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`Patent Owner relies on its expert to argue that Lochtefeld 589 does not
`disclose the claimed sidewalls but provides no support for construing
`“extending substantially upwardly” in such a manner. Patent Owner’s
`expert does not provide any support for such a construction in his
`declaration. Instead, he asserts that Lochtefeld 589 discloses sidewalls that
`extend either downward or horizontally, without explaining how he comes to
`that conclusion. Ex. 2001 ¶ 23. We will not impose a limiting construction
`based solely on an expert’s unsupported statements. Without some reason to
`construe “extending substantially upwardly” as sought by Patent Owner, we
`consider the ordinary meaning of the phrase within the context of the claims
`and Specification. The Specification gives a very permissive and general
`description of the sidewalls. E.g., Ex. 1001, 3:15–22, 3:56–4:6. Thus, the
`Specification leads us to construe “extending substantially upwardly” as
`encompassing a sidewall that, at some point, extends above the edge of
`middle section corresponding to the side wall.
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`3. “the first curved side”
`All claims recite that the “second curved sidewall” is opposite “the
`first curved side.” Although the claims do not provide antecedent basis for
`“the first curved side,” Petitioner proposes that the term be construed as “the
`first curved sidewall.” Pet. 20. Petitioner notes that Patent Owner argued in
`the related district court proceeding that “[i]t is beyond dispute that the claim
`term ‘the first curved side’ was intended to be ‘the first curved sidewall,’
`both to comport with all of the disclosures of the ’016 Patent and also in
`accordance with proper antecedent basis.” Id. (citing Ex. 1010, 28:13–18).
`Patent Owner does not address this issue.
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`A district court may “correct an error in a patent by interpretation of
`the patent where no certificate of correction has been issued . . . only if
`(1) the correction is not subject to reasonable debate based on consideration
`of the claim language and the specification and (2) the prosecution history
`does not suggest a different interpretation of the claims.” Novo Indus., LP v.
`Micro Molds Corp., 350 F.3d 1348, 1354 (Fed. Cir. 2003). We have applied
`this same standard in our proceedings. E.g., Apple Inc. v. Achates Reference
`Publ’g, Inc., Case IPR2013-00080, slip op at 10–12 (PTAB June 3, 2013)
`(Paper 22). Here, we conclude the claims are properly read such that “first
`curved side” refers to the “first curved sidewall” and that such correction is
`not subject to reasonable debate. Neither party has identified how the
`prosecution history suggests a different interpretation. Thus, we adopt
`Petitioner’s proposed construction, namely “first curved sidewall.”
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`4. “additional water”
`Claim 6 recites that “additional water flows from top portions of the
`first curved sidewall and the second curved sidewall toward the middle
`section.” We preliminarily construed “additional water” as water other than
`that delivered by the water delivery section. Inst. 14. Claim 1 recites that
`the water delivery section is configured to “deliver water up the middle
`section.” Thus, the “additional water” of claim 6 must be water that does
`not originate from the claimed water delivery section. The Specification
`does not appear to define “additional water” and states only that “[i]n some
`embodiments, water can also flow from top portions 36 of each sidewall
`32.” Ex. 1001, 3:24–26. Neither party has argued that our construction was
`incorrect and we see no reason to depart from it. Therefore, based on the
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`claim language and Specification, we construe “additional water” as “water
`other than that delivered by the water delivery section.”
`
` “curved about an axis parallel to water flow” (claim 9)
`5.
`Claim 9 recites that the sidewalls “are curved about an axis parallel to
`water.” We preliminarily construed this term as “curved, at some point,
`about an axis parallel to the flow of water at any point on the activity
`section.” Inst. 14. The Specification does not appear to define “curved
`about an axis parallel to water flow” and states only that “[t]he sidewalls 32
`can be curved about an axis that is parallel to water flow in the half-pipe
`water ride 10.” Ex. 1001, 3:20–22. Neither party has argued that our
`construction was incorrect and we see no reason to depart from it. We
`conclude the broadest-reasonable interpretation requires only that the
`sidewalls at some point be curved as claimed.
`
`B. ANTICIPATION BY LOCHTEFELD 589
`Petitioner asserts that claims 1–6, 8, 9, 11, 12, 15–17, 19, and 20 of
`the ’016 patent are anticipated by Lochtefeld 589. Pet. 20–37. Petitioner
`submits that Lochtefeld 589 discloses each of the limitations in the
`challenged claims. Pet. 20–37. Petitioner relies on Lochtefeld 589 (Ex.
`1003) and the Declaration of Edward Pribonic (Ex. 1002). For this ground,
`we find Petitioner has met its burden with respect to claims 1–5, 8, 9, 12,
`15–17, and 19, but has not met its burden regarding claim 6, 11, or 20.
`Lochtefeld 589 describes a simulated-wave water-ride attraction with
`a number of features and embodiments. Lochtefeld 589, 1:12–19. To meet
`the goal of providing a compact structure that facilitates transport,
`Lochtefeld 589 describes a cover for its nozzle assemblies “for ensuring the
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`safety of riders in the absence of an extended transition surface.” Id. at
`2:12–14. Lochtefeld 589’s Figure 4A is reproduced below:
`
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`Figure 4A of Lochtefeld 589 depicts a water ride in which nozzles (130)
`along one side of the ride deliver water across a generally flat portion (162)
`to a sloped, curving portion comprising a number of ride surfaces (211a/b–
`216a/b) and to a beaching area (240) comprising a grate or drain. See Ex.
`1003, 12:53–15:5.
`
`1. Claim 1
`Petitioner points out that Lochtefeld 589 discloses “a simulated-wave
`water ride attraction” and therefore satisfies the preamble of independent
`claims 1 and 20, which recites “a water ride for use by a rider.” Pet. 20
`(citing Ex. 1003, [57]). It is unnecessary for us to determine whether the
`preamble limits the claims’ scope because we agree that Lochtefeld 589 is
`consistent with the preamble.
`Petitioner maps the claimed “activity section including a substantially
`flat, inclined middle section, a first curved sidewall extending substantially
`upwardly from an edge of the middle section, and a second curved sidewall
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`extending substantially upwardly from another edge of the middle section
`opposite the first curved side” to the portion Lochtefeld 589 depicts in
`Figure 4A between the nozzles and the peak of the curved wall to which the
`nozzles supply water. Pet. 20–23 (citing Ex. 1003, 12:53–56, Fig. 4A; Ex.
`1011; Ex. 1012, 10). We are persuaded by Petitioner’s arguments and
`evidence that this portion of the middle section is “substantially flat.”
`Accordingly, we find Lochtefeld 589 teaches the substantially flat middle
`section by disclosing a ride surface with “a generally flat or horizontal
`portion 162.” Ex. 1003, 12:53–56, Fig. 4A.
`As the two claimed sidewalls, Petitioner identifies portions of the
`activity area in an annotated version of Lochtefeld 589’s Figure 4A. That
`annotated figure is reproduced below:
`
`
`Pet. 22. The annotated Figure 4A provided by Petitioner depicts the water
`ride of Lochtefeld 589 as shown in Figure 4A, with portions 212a and 212b
`colored blue, and portions 216a and 216b colored red. Id. This mapping is
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`consistent with the plain claim language requiring that the second sidewall
`be opposite the first sidewall. Pet. 22–23; see Inst. 16–17.7 Petitioner
`presents persuasive argument and evidence supporting a finding that
`portions 216a and 216b are “a second curved sidewall” “opposite the first
`curved sidewall,” portions 212a and 212b.
`Patent Owner argues that Petitioner fails to show that the sidewalls
`extend “from two edges” of the middle section. PO Resp. 3–10. In
`particular, Patent Owner argues that the Petition “does not identify the
`locations of the ‘edge’ and ‘another edge’ of the alleged ‘middle section’ in
`Fig. 4A from which Lochtefeld 589’s ‘curved sidewalls’ extend.” Id. at 5.
`But as depicted in Petitioner’s annotated Figure 4A above, Petitioner
`identifies portions of Lochtefeld 589’s ride surface as the two sidewalls,
`characterizing them as “bounding the middle section (162 and 120).”
`Pet. 22. We understand a section “bounding” the middle section to be one
`that abuts at least part of an edge of the middle section and therefore extends
`from that edge. Thus, contrary to Patent Owner’s argument, the Petition
`does identify those portions corresponding to the claimed edges of the
`middle section.
`Petitioner asserts that the identified sidewalls extend substantially
`upwardly. Id. Patent Owner challenges this and argues that the sidewalls
`identified by Petitioner extend “either downwardly or horizontally” from the
`edge of the middle section. PO Resp. 6–10. Here, Patent Owner relies on its
`
`
`7 While we construed “opposite” in the Institution Decision as “on the other
`side from,” Patent Owner neither addresses that construction nor argues
`that Lochtefeld 589 does not teach this aspect of claim 1. Accordingly, the
`construction of “opposite” does not meaningfully affect our
`unpatentability analysis and we therefore do not address it in this decision.
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`own annotated version of Lochtefeld 589’s Figure 4A, which is reproduced
`below:
`
`
`
`PO Resp. 6. Patent Owner’s annotated version of Lochtefeld 589’s Figure
`4A depicts a central portion shaded green and labeled “Middle Section,”
`surrounded by the blue and red sidewalls identified by Petitioner. Patent
`Owner’s identification of the middle section, however, incorrectly includes
`portions of the ride surface that cannot comprise the claimed middle section,
`because the claimed “middle section” is “substantially flat.” See
`Pet. Reply 2–3. Any “edge” of the middle section as defined by the ’016
`patent must coincide with a boundary of the substantially flat portion of the
`ride surface. Thus, Patent Owner’s identification of the edges of the middle
`section does not comport with how Petitioner asserts the claims apply to
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`Lochtefeld 589’s disclosures because Patent Owner includes an edge that is
`not substantially flat.
`As discussed above, we construe “extending substantially upwardly”
`as encompassing a sidewall that, at some point, extends above the edge of
`middle section corresponding to the side wall. See supra at 12. Because the
`sidewalls identified by Petitioner in Lochtefeld 589 each have a portion that
`rises up from the plane of the middle portion, they extend substantially
`upwardly from the middle portion as claimed. Based on the foregoing
`discussion and the record, we find Lochtefeld 589 teaches “a first curved
`sidewall extending substantially upwardly from an edge of the middle
`section” and “a second curved sidewall extending substantially upwardly
`from another edge of the middle section opposite the first curved sidewall.”
`See Pet. Reply 9–11 (annotated figure including arrows showing a path from
`the substantially flat middle section up each curved sidewall that extends
`upwardly from an edge of the middle section).
`Regarding the “water delivery section coupled to a side of the middle
`section” and that the water delivery section be “configured and arranged to
`deliver water up the middle section in a direction substantially opposite the
`rider’s direction of travel along the middle section,” Petitioner identifies the
`collection of nozzles 130 in Figure 4A. Pet. 23–25 (citing Ex. 1003, 13:25–
`28, Figs. 4A, 6A, 6B) (emphasis omitted). Patent Owner does not contest
`that Lochtefeld 589 teaches this limitation. See Paper 10, 7 (“[A]ny
`arguments for patentability not raised in the response will be deemed
`waived.”). Having considered the record, we find Lochtefeld 589 teaches
`the claimed water-delivery section.
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`As to the claimed “dewatering section coupled to another side of the
`middle section opposite the water delivery section and located at an
`elevation higher than the water delivery section
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