Prelim grading/drainage; and
Prelim. Resp. 5; Paper 4, 1. The parties also note other petitions for inter partes review filed by Petitioner and challenging patents owned by Patent Owner. Pet. 2; Paper 4, 2.
Prelim. Reply 1. Noting that Patent Owner issued a press release regarding the litigation it filed against Petitioner, Xxxxxxxxxx argues that it “should not need to sit idle against a looming cloud of other patents.” Id. at 2 (citing Ex. 1033). Unlike the covered business method patent review provisions of the AIA,3 neither the statute nor our rules require that Petitioner have been sued 3 Xxxxx-Xxxxx American Invents Act (“AIA”), Pub. L. No. 112–29, 125 Stat. 284 (2011). for infringement of the challenged patent in order to be able to file a petition for inter partes review. See 35 U.S.C. § 311; AIA § 18(a)(1)(B); 37 C.F.R. §§ 42.101, 42.302. Institution of an inter partes review, however, is discretionary, even if the statutory requirements are satisfied. See SAS, 138 S. Ct. at 1356 (“§ 314(a) invests the Director with discretion on the question whether to institute review”); see also CTPG 55–61 (discussing considerations in instituting a review). “The Board will also take into account whether various considerations . . . warrant the exercise of the Director’s discretion to decline to institute review,” and our exercise of “discretion is informed by 35 U.S.C. §[] 316(b) . . ., which require[s] the Director to ‘consider the effect of any such regulation [under this section] on the economy, the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to timely complete proceedings instituted under this chapter.’” CTPG 55–56. The Board has exercised its § 314(a) discretion to deny institution due to the advanced state of a district court proceeding in which the challenged patent is asserted. See, e.g., Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 (PTAB May 13, 2020) (designated informative). We have exercised our discretion to deny institution of a later-filed petition after
Prelim. Sur-reply 5 (citing same). Patent Owner argues that the Examiner’s citation to Xxxxxxxxx evidences that the Examiner applied the correct priority date. Prelim. Resp. 36–37. As noted above, the Examiner found the independent claims to be patentable due to the recitation, “a switch gear between the transmission line and the source of electricity, and another switch gear between the transmission line and the electric motor.” See Ex. 1003, 582, 597–606, 702, 834. Xxxxxxx discloses that its fracturing system can include other equipment such as switchgear and that “[t]hose familiar with drilling and fracturing operations understand the purpose of this other equipment, as well as the way in which it is deployed at the site.” Ex. 1006 ¶ 31. Xxxxxxxxxx argues that it would have been obvious to include switchgear in the locations recited in the independent claims, and this argument is supported by the testimony of Xxxxxxxxxx’s declarant. Pet. 48–49; Ex. 1002 ¶ 187. For the reasons discussed in detail below, on this preliminary record, we are persuaded by Petitioner’s arguments. Accordingly, by not fully considering Xxxxxxx’x disclosure and how it would be interpreted by persons of ordinary skill in the art, we determine that the Examiner erred in a manner material to patentability during prosecution of the application resulting in the ’882 patent.
Prelim. Sur-reply 6–10. Patent Owner relies heavily on alleged evidence of secondary considerations of nonobviousness presented during the prosecution of the ’410 patent. Id. (citing Ex. 2005, 1–57). Patent Owner bears the burden of showing that a nexus exists. WMS Gaming, 184 F.3d at 1359. On this record, Patent Owner does not sufficiently demonstrate that it is entitled to a presumption of nexus. To establish nexus with respect to commercial success, Patent Owner argues that its “Clean Fleet® technology embodies the features of the Challenged Claims of the ’882 Patent including, but not limited to pumps driven by electric motors.” Prelim. Resp. 60. However, Patent Owner does not provide details regarding its Clean Fleet product, and, thus, fails to establish persuasively that the Clean Fleet product “embodies the claimed features, and is coextensive with them.” Fox Factory, 944 F.3d at 1373 (quoting Polaris, 882 F.3d at 1072). Thus, on this record, Patent Owner has not shown sufficiently that it is entitled to a presumption of nexus. For the same reasons, on this record, Patent Owner has not sufficiently shown that the alleged commercial success is a “direct result of the unique characteristics of the claimed invention.” See Fox Factory, 944 F.3d at 1373–74. Further, in as much as Patent Owner relies upon the declaration of Xx. Xxxxxxx (Ex. 2008, 34–37), a named inventor of the ’882 patent, to show a nexus with respect to copying, we do not find this testimony sufficient to establish nexus as it is untested at this stage of the proceeding. A final determination as to the veracity of Patent Owner’s evidence and arguments is best reserved for trial. At this stage of the proceeding, and on this record, Patent Owner has not sufficiently established a nexus between the asserted objective indicia of nonobviousness and the claimed invention of the ’882 patent.
