Board IPR nonobviousess decision vacated for failing to consider “different limitation”

Packers Plus Energy Services Inv. v. Baker Hughes Oilfield Operations, LLC

Docket 2018-1490 (IPR2016-01099)
June 10, 2019

Brief summary: IPR decision of nonobviousness affirmed for certain claims but vacated as one other

Summary: Packer Plus (PP) appealed Board IPR decision finding claims 1-29 of Baker Hughes’s (BH) US 6,006,838 directed to oil and gas well assemblies not obvious. PP argued “that the Board erred by construing the limitation ‘over the jetting passageways’ to mean ‘covering the jetting passageways’” by “imposing a structural relationship…rather than the functional relationship” to the claimed assembly. The FC panel found no error with the Board’s construction, explaining that “[t]he plain meaning of ‘over’ is to describe the structural arrangement of one object with respect to another, not the functional relationship thereof”, claim 1 uses “the spatial language of ‘over the jetting passageways’” “in its closed position” (in addition to functional language regarding the “open position”), PP “proferr[ed] no reason why it would be appropriate to rewrite the claims to make the language used to recite the ‘closed’ and ‘open’ positions parallel”, “[n]othing in the specification shows or describes a shiftable sleeve above the jetting passageway but not also covering it”, and “the presence of a single dictionary definition of ‘over’ as meaning ‘above’ does not make that definition a reasonable reading of the limitation in light of the specification” (PPC Broadband, FC 2016). PP also argued the Board erred in not finding obviousness for claims 1, 8 and 16 because it “limited its obviousness analysis to the particular configuration suggested by” BH in its Patent Owner Response (In re Mouttet, FC 2012 (“a proper obviousness analysis ‘does not require an actual, physical substitution of elements’”) but the FC panel disagreed (e.g., PP “nowhere explained…why-in the absence of hindsight-such a person of ordinary skill would have placed the jet nozzles at the one particular place where the shifting sleeve would cover the jetting passageways”, no “sufficient reason to combine”, and “[t]he Board did not limit its construction to a preferred embodiment”). The FC panel explained that “the Board at first recognized that Claim 21 ‘differs’ from Claims 1, 8 and 16” but legally erred in “never separately construed the different limitation recited in Claim 21”. PP argued BH’s three “alternative grounds” for affirmance were not presented to the Board during the IPR (In re Lee, FC 2002), but the FC panel disagreed since “the Board considered each of the facts underlying the alternative grounds, and both parties had the opportunity to address the issues at the Board” (Lee; Click-To-Call, FC 2018; Nike, FC 2016). And the FC panel declined to affirm the nonobviousness decision for claim 21 since, e.g., “the claims do not require a particular type of packer” (Allied Erecting, FC 2016 (“obviousness does not require the bodily incorporation of the teachings of one reference to another reference-an ordinary artisan has the capacity for ordinary creativity when combining references”; KSR, US 2007). The Board’s decision was therefore vacated as to claim 21.

This entry was posted in Claim Construction, Inter Parties Review (IPR), IPR, Obviousness. Bookmark the permalink.

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