L-3 Communications Holdings, Inc.v.Power Survey LLC

Patent Trial and Appeal Board

Nov 23, 2015

13618718 (P.T.A.B. Nov. 23, 2015)

Trials@uspto.gov Paper 68
571–272–7822 Entered: November 23, 2015
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

L-3 COMMUNICATIONS HOLDINGS, INC. and
PREMIER UTILITY SERVICES, LLC,
Petitioner,

v.

POWER SURVEY, LLC,
Patent Owner.
____________

Case IPR2014-00836
Patent 8,536,856 B2
____________

Before KARL D. EASTHOM, KEVIN W. CHERRY, ROBERT J.
WEINSCHENK, and WILLIAM M. FINK, Administrative Patent Judges.

WEINSCHENK, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

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I. INTRODUCTION
A. Background
L-3 Communications Holdings, Inc. and Premier Utility Services,
LLC (collectively, “Petitioner”) filed a Petition (Paper 2, “Pet.”) requesting
an inter partes review of claims 1–5 and 8 of U.S. Patent No. 8,536,856 B2
(“the ’856 patent”). Power Survey, LLC (“Patent Owner”) filed a
Preliminary Response (Paper 7, “Prelim. Resp.”) to the Petition. On
November 26, 2014, we instituted an inter partes review of claims 1–5 and 8
(“the challenged claims”) of the ’856 patent on the following grounds:
Claim(s) Statutory Basis Applied References(s)
1, 2, 5, and 8 35 U.S.C. § 103(a) EFA-200/-300 EM Field Analyzer
Operating Manual, Narda Safety Test
Solutions GmbH (2002) (Ex. 1004,
“EFA Manual”) and U.S. Patent No.
3,662,260 (issued May 9, 1972) (Ex.
1005, “Thomas”)
3 35 U.S.C. § 103(a) EFA Manual, Thomas, and U.S. Patent
No. 6,002,348 (issued Dec. 14, 1999)
(Ex. 1006, “Greene”)
4 35 U.S.C. § 103(a) EFA Manual, Thomas, and E. Oran
Brigham, The Fast Fourier Transform,
Prentice-Hall, Inc. (1974) (Ex. 1008,
“Brigham”)
Paper 9 (“Dec. on Inst.”), 17.
After institution, Patent Owner filed a redacted Response (Paper 31,
“PO Resp.”) and a sealed Response (Paper 21) to the Petition, and Petitioner
filed a redacted Reply (Paper 42, “Pet. Reply”) and a sealed Reply (Paper
43) to the Response. An oral hearing was held on July 9, 2015, and a
transcript of the hearing is included in the record. Paper 67 (“Tr.”).
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We have jurisdiction under 35 U.S.C. § 6(c). We issue this Final
Written Decision pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For
the reasons set forth below, Petitioner has shown by a preponderance of the
evidence that claims 1–5 and 8 of the ’856 patent are unpatentable.
B. Related Proceedings
The parties identify the following petitions for inter partes review as
being related to this case (Pet. 5; Paper 5, 2–3):
IPR Case No. Involved U.S. Patent No.
IPR2014-00832 U.S. Patent No. 8,482,274
IPR2014-00834 U.S. Patent No. 8,482,274
IPR2014-00835 U.S. Patent No. 8,536,856
IPR2014-00838 U.S. Patent No. 8,598,864
IPR2014-00839 U.S. Patent No. 8,598,864
The parties also identify the following district court case as being related to
this case: Power Survey, LLC v. Premier Utility Services, LLC, No. 2:13-cv-
05670-FSH-MAH (D.N.J). Pet. 5; Paper 5, 2–3.
C. The ’856 Patent
The ’856 patent relates to identifying voltage anomalies. Ex. 1002,
Abstract. According to the ’856 patent, a voltage anomaly may occur when
the cabling of a power distribution system is physically damaged and an
electrically conductive path is established between the cabling and an object,
such as a manhole cover or street light pole. Id. at col. 1, ll. 36–44. An
electrically energized object located near a street may present a danger to
people and animals in the area. Id. at col. 1, ll. 44–46.
The ’856 patent explains that the prior technique for identifying
voltage anomalies was a time consuming manual inspection that involved
making direct contact with potential hazards using a handheld device. Id. at
col. 2, ll. 6–17. The ’856 patent describes a system that uses a sensor probe
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mounted on a motor vehicle to generate data regarding electric fields
proximate a street. Id. at col. 2, ll. 25–30, col. 15, ll. 40–46. This electric
field data can be used to identify a voltage anomaly and alert a user to its
presence. Id. at col. 2, ll. 28–35. For example, a voltage anomaly can be
identified by an electric field that exceeds a threshold. Id. at col. 17, ll. 12–
19, col. 18, ll. 8–9, col. 21, ll. 4–7.
D. Illustrative Claim
The independent claim challenged by Petitioner is claim 1 of the ’856
patent, which is reproduced below.
1. A mobile apparatus mounted to a motor vehicle for
detecting an electric field, comprising:
at least one sensor probe, mounted to the vehicle, that
generates a signal corresponding to an electric field detected by
the at least one sensor probe as the at least one sensor probe
moves past a plurality of conductive objects proximate a street,
wherein the at least one sensor probe comprises at least one
electrode;
at least one filter, coupled to the at least one sensor
probe, that removes interfering electric field signals from the
signal corresponding to the electric field, to limit the frequency
of the signal to contain an expected frequency of a voltage
anomaly;
a processor, coupled to the filter, that digitizes the signal
to form electric field data represented as a plurality of time
domain samples, produces field strengths of each of the at least
one sensor probes using the plurality of time domain samples
and analyzes the field strengths to identify the voltage anomaly
in the electric field, wherein the electric field data is analyzed
based on an expected frequency pertaining to the voltage
anomaly and wherein the voltage anomaly is generated by
leakage of electric power from a power grid to an energized
object in the plurality of conductive objects proximate the
street; and
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an indicator, coupled to the processor, that alerts a user to
a presence of the voltage anomaly in the electric field and
indicates that at least one conductive object proximate the street
is energized to a potentially harmful level.
Ex. 1002, col. 26, ll. 25–52.
II. ANALYSIS
A. Claim Construction
The claims of an unexpired patent are interpreted using the broadest
reasonable interpretation in light of the specification of the patent in which
they appear. 37 C.F.R. § 42.100(b); see In re Cuozzo Speed Techs., LLC,
793 F.3d 1268, 1278–79 (Fed. Cir. 2015). Claim terms generally are given
their ordinary and customary meaning, as would be understood by one of
ordinary skill in the art in the context of the specification. In re Translogic
Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). An applicant may
provide a different definition of the term in the specification with reasonable
clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480
(Fed. Cir. 1994). In the absence of such a definition, limitations are not to
be read into the claims from the specification. In re Van Geuns, 988 F.2d
1181, 1184 (Fed. Cir. 1993).
1. voltage anomaly
Petitioner proposes construing the phrase “identify the voltage
anomaly in the electric field” in claim 1 of the ’856 patent to mean “identify
the unexpected voltage in the electric field.” Pet. 13. Petitioner argues that
the ’856 patent describes a voltage anomaly as being undesirable or
dangerous. Id. at 14 (citing Ex. 1002, col. 1, ll. 28–43, col. 2, ll. 16–19).
According to Petitioner, “unexpected” is another word for undesirable or
dangerous. Pet. 14 (“these ‘undesirable or dangerous anomalies’ – i.e.,
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unexpected voltages”). Petitioner also argues that, during prosecution, the
applicant asserted that the invention is directed to more than just detecting
electric fields because it involves identifying a voltage anomaly in the
electric fields. Id. at 14–16 (citing Ex. 1014, 8–9, 25, 38, 53).
In the Decision on Institution, we determined that Petitioner’s
proposed construction is not the broadest reasonable interpretation, and we
see no reason now to deviate from that determination. Dec. on Inst. 5–6.
Specifically, the word “unexpected” in Petitioner’s proposed construction is
not found anywhere in the claims or the written description of the ’856
patent, and we are not persuaded that the word “unexpected” is synonymous
with “undesirable” or “dangerous.” Further, Petitioner does not explain how
any of the cited portions of the prosecution history show that the “voltage
anomaly” recited in claim 1 is an unexpected voltage. Pet. 14–16.
Patent Owner proposes construing the phrase “identify the voltage
anomaly in the electric field” in claim 1 of the ’856 patent to mean “detect
an electric field that rises and peaks above a threshold or background and
then falls.” PO Resp. 54. Patent Owner argues that the claims and written
description of the ’856 patent indicate that a voltage anomaly is identified as
the sensor moves past the anomaly. Id. at 54–56. Therefore, according to
Patent Owner, an anomaly is represented by a rise in the electric field as the
sensor moves closer to the anomaly, a peak when the sensor is near the
anomaly, and a fall when the sensor moves past the anomaly. Id.
In the Decision on Institution, we determined that Patent Owner’s
proposed construction would improperly limit the claims to just one of the
examples disclosed in the Specification, and we see no reason now to
deviate from that determination. Dec. on Inst. 6–7 (citing Verizon Servs.
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Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1305 (Fed. Cir. 2007)).
Specifically, the ’856 patent states that an anomaly can be “represented for
example by a rise-peak-fall in the alert pitch, a corresponding visual spike in
raw voltage plot 1206, a high signal strength value in signal strength display
field 1322 or a combination thereof.” Ex. 1002, col. 19, ll. 62–67 (emphasis
added). Thus, the ’856 patent indicates that a rise-peak-fall in the audible
alert or a visual spike are just examples of ways to identify an anomaly. The
’856 patent states that a voltage anomaly also can be identified by an electric
field that exceeds a threshold or a high signal strength value. Id. at col. 17,
ll. 12–19, col. 18, ll. 8–9, col. 19, ll. 62–67, col. 21, ll. 4–7.
Patent Owner argues that the portions of the ’856 patent discussed in
the Decision on Institution only relate to “indicating” a voltage anomaly to a
user, not “identifying” a voltage anomaly. PO Resp. 53–54. Patent Owner’s
argument is not persuasive because Patent Owner does not explain the
significance of the alleged distinction between “indicating” and
“identifying” a voltage anomaly. See id. For example, Patent Owner does
not explain how an electric field that exceeds a threshold could somehow
indicate a voltage anomaly to a user, yet fail to identify that voltage
anomaly. See id. Further, Patent Owner relies on some of the same portions
of the ’856 patent to support its proposed construction of the phrase
“identify the voltage anomaly in the electric field.” Dec. on Inst. 6 (citing
Ex. 1002, col. 19, ll. 62–67); PO Resp. 55 (citing Ex. 1002, col. 19, l. 58–
col. 20, l. 3).
Patent Owner also argues that the following portion of the ’856 patent
confirms that identifying a voltage anomaly requires detecting a peak in the
electric field:
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Because the peak of the response to a source of stray voltage
anomaly cannot be ascertained until after the vehicle has passed
the source, the exact location of the source may not be observed
until after the time at which it is detected . . . it is not practical
to stop the vehicle carrying system each time a stray voltage is
detected, or to back the vehicle up to ascertain the exact
location at which the detection took place.
Ex. 1002, col. 10, ll. 41–51; PO Resp. 56. Patent Owner’s argument is not
persuasive. It would be improper to limit the claims based on this excerpt
from the written description because, as discussed above, the written
description also indicates that a voltage anomaly can be identified in other
ways, not just by detecting a peak in the electric field. See Ex. 1002, col. 17,
ll. 12–19, col. 18, ll. 8–9, col. 19, ll. 62–67, col. 21, ll. 4–7; Verizon Servs.,
503 F.3d at 1305.
In the Decision on Institution, we explained that one definition of the
term “anomaly” is “deviation from the normal or common order, form, or
rule.” Dec. on Inst. 7 (citing THE AMERICAN HERITAGE DICTIONARY OF THE
ENGLISH LANGUAGE, 54 (1975)); Ex. 3001, 54. The examples provided in
the ’856 patent for identifying a voltage anomaly are consistent with this
definition. Namely, a spike in the electric field or an increase in the electric
field above a threshold would indicate a deviation from the normal order.
Ex. 1002, col. 17, ll. 12–19, col. 18, ll. 8–9, col. 19, ll. 62–67, col. 21, ll. 4–
7. Therefore, we determined that the broadest reasonable interpretation of
the phrase “identify the voltage anomaly in the electric field” in claim 1 of
the ’856 patent is “identify a deviation from a normal voltage in the electric
field, including by identifying an electric field that exceeds a threshold, or
that rises and peaks above a threshold or background and then falls.” Dec.
on Inst. 7. We see no reason now to deviate from that construction.
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2. mobile
Patent Owner proposes construing the term “mobile” in claim 1 of the
’856 patent to mean “designed to operate while in motion.” Prelim. Resp. 5;
PO Resp. 59. Patent Owner argues that the claim language supports this
construction because claim 1 recites a sensor probe that detects an electric
field “as the sensor probe moves past a plurality of conductive objects.”
Prelim. Resp. 6; Ex. 1002, col. 26, ll. 27–32. Patent Owner also argues that
the written description of the ’856 patent states that “the sensor system 100
may detect an energized manhole cover . . . when moving at speeds of up to
10 mph.” Prelim. Resp. 6; Ex. 1002, col. 11, ll. 16–22. We agree that the
claims and written description indicate that a mobile apparatus operates
while in motion, but Patent Owner does not identify specific evidence
showing that a mobile apparatus must be “designed” to operate in motion.
Prelim. Resp. 5–7; PO Resp. 59. Therefore, we determine that the broadest
reasonable interpretation of the term “mobile apparatus” in claim 1 of the
’856 patent is “apparatus that operates while in motion.”
3. monitored event
Patent Owner proposes construing the term “monitored event” in
claim 8 of the ’856 patent to mean “a set of observations gathered as the
mobile apparatus moves past a conductive object.” Prelim. Resp. 7–8. In
the Decision on Institution, we determined that the term “monitored event”
does not require express construction. Dec. on Inst. 8. The parties do not
dispute that determination, and we see no reason now to deviate from that
determination.
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B. Obviousness of Claims 1–5 and 8
Petitioner argues that claims 1, 2, 5, and 8 would have been obvious
over the EFA Manual and Thomas; claim 3 would have been obvious over
the EFA Manual, Thomas, and Greene; and claim 4 would have been
obvious over the EFA Manual, Thomas, and Brigham.
1
Pet. 7. A claim is
unpatentable as obvious under 35 U.S.C. § 103(a) if the differences between
the claimed subject matter 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 the subject matter pertains.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). 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 ordinary
skill in the art; and (4) any objective indicia of non-obviousness. Graham v.
John Deere Co., 383 U.S. 1, 17–18 (1966).
Petitioner provides detailed explanations showing how the prior art
references teach or suggest the limitations of the challenged claims and
articulated reasons why it would have been obvious to combine the cited
teachings. Pet. 23–58. We have considered the parties’ arguments and
supporting evidence, and we determine that Petitioner has shown by a
preponderance of the evidence that claims 1–5 and 8 are unpatentable. We
address Patent Owner’s arguments below.

1
Because claim 5 depends from claim 4, the asserted ground of
unpatentability for claim 5 also should include Brigham as applied to claim
4. Patent Owner does not identify any prejudice resulting from this
oversight. Therefore, we interpret the asserted ground of unpatentability for
claim 5 as including Brigham as applied to claim 4.
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1. Overview of the EFA Manual and Thomas
The EFA Manual is an operating manual for the EFA-200/-300 EM
Field Analyzer. Ex. 1004. The EFA-200 sensor only measures magnetic
fields, whereas the EFA-300 sensor measures magnetic and electric fields.
Id. § 1.1.3. The EFA Manual teaches that the EFA-300 sensor generates a
signal corresponding to a detected electric field. Id. §§ 3.4.1, 3.4.2;
Ex. 1011, 192:24–193:8. The EFA-300 sensor includes a processor that
digitizes the electric field signal as a plurality of time domain samples.
Ex. 1004 § 12.1, Annex C, C-1; Ex. 1022 ¶¶ 77–79. The EFA Manual also
teaches that the EFA-300 sensor detects electric fields of a specific
frequency and triggers an alarm if the detected electric field exceeds a
threshold. Ex. 1004 §§ 5.1, 8.1; Ex. 1022 ¶¶ 84, 86, 90.
Thomas relates to using a sensor probe to detect anomalies in electric
fields. Ex. 1005, col. 1, ll. 42–49, col. 6, ll. 62–75, col. 7, ll. 4–17. In
particular, Thomas teaches mounting a sensor probe on a motor vehicle
using a support member made of an electrically non-conducting material.
Id. at col. 3, ll. 12–19, col. 6, l. 62–col. 7, l. 25, Figs. 9–14. According to
Thomas, the sensor probe mounted on the vehicle identifies anomalies in
electric fields while the vehicle is in motion. Id. at col. 6, l. 62–col. 7, l. 25,
Figs. 9–14. Thomas teaches that an anomaly in an electric field may
indicate that electrical current is flowing through an object. Id. at col. 7,
ll. 6–10, col. 7, ll. 14–17.
2. Claim 1
Patent Owner argues that Petitioner improperly analyzes the
limitations of claim 1 in isolation, rather than as a whole. PO Resp. 4–7.
According to Patent Owner, “Petitioners’ part-by-part evaluation only
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addresses the question of whether the alleged prior art teaches or suggests a
processor that identifies a generic voltage anomaly in a general electric
field,” but “[t]he relevant question is whether the alleged prior art teaches or
suggests a processor that identifies leakage of electric power using the
electric field measured by a sensor probe moving past conductive objects
proximate a street.” Id. at 7. Patent Owner’s argument is not persuasive.
Petitioner demonstrates that claim 1 as a whole would have been
obvious over the EFA Manual and Thomas. Thomas teaches a sensor probe
mounted on a motor vehicle that identifies anomalies in electric fields
caused by various sources as the vehicle moves past objects.
2
Ex. 1005, col.
6, l. 62–col. 7, l. 25, Figs. 9–14. Thomas also teaches that an anomaly in an
electric field may indicate that electrical current is flowing through an
object. Id. at col. 7, ll. 6–10. Thomas does not mention specifically that the
electric current flowing through the object is generated by leakage from a
power grid. However, Petitioner identifies evidence indicating that it would
have been obvious to one of ordinary skill in the art reading Thomas that a
sensor probe mounted on a motor vehicle could also identify an anomaly in
an electric field generated by electric current flowing through an object due
to leakage from a power grid. Pet. 42–45, 46–47; Ex. 1022 ¶¶ 88, 89, 92;
Ex. 1024, 126:10–127:1. Petitioner also identifies evidence indicating that it
would have been obvious to one of ordinary skill in the art to mount the

2
Patent Owner’s declarant, Dr. David W. Fugate, states in his declaration
that the sensor probe in Thomas is operated only when the vehicle is
stationary. Ex. 2015 ¶ 47. Dr. Fugate’s testimony is not persuasive because
Thomas expressly teaches that the sensor probe is operated while an aircraft
flies over objects on land. Ex. 1005, col. 7, ll. 11–17. Further, Dr. Fugate
acknowledged during his deposition that the sensor probe can be operated
while the truck in Figure 14 is moving. Ex. 1024, 97:22–98:2.
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sensor taught by the EFA Manual on a motor vehicle and use it to identify
anomalies in electric fields as the vehicle moves past objects proximate a
street as taught by Thomas. Pet. 24–27, 42–45; Ex. 1022 ¶¶ 51–55, 65–67.
Thus, Petitioner addresses the limitations of claim 1 as a whole.
Patent Owner argues that another “example of Petitioners’ legally
flawed, piecemeal approach is its treatment of the ‘signal’ element of claim
1.” PO Resp. 11. Specifically, claim 1 recites that the sensor probe
“generates a signal corresponding to an electric field detected by the at least
one sensor probe,” and that the processor “digitizes the signal to form
electric field data represented as a plurality of time domain samples.”
Ex. 1002, col. 26, ll. 27–29, col. 26, ll. 38–40. Patent Owner argues that
Petitioner cites to an alarm signal in the EFA Manual as teaching the signal
detected by the sensor probe, but then cites to a different signal as being
digitized by the processor. PO Resp. 11. Patent Owner’s argument is not
persuasive. Independent of the alarm signal, Petitioner identifies evidence
demonstrating that the EFA Manual teaches a sensor that generates a signal
corresponding to a detected electric field (Ex. 1004 §§ 3.4.1, 3.4.2;
Ex. 1011, 192:24–193:8), and a digital signal processor that digitizes the
signal as a plurality of time domain samples (Ex. 1004 §12.1, Annex C, C-1;
Ex. 1022 ¶¶ 77–79). Further, Petitioner explains that the alarm signal itself
is not the claimed signal, but, rather, the alarm signal simply confirms that a
signal corresponding to an electric field must have been generated. Pet.
Reply 5–6.
Patent Owner argues that there are deficiencies in the individual
teachings of the EFA Manual and Thomas. PO Resp. 7–10. Specifically,
Patent Owner argues that the EFA Manual does not teach detecting “voltage
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anomalies generated by leakage from a power grid as the detector moves
past conductive objects proximate a street.” Id. at 8–9. Patent Owner’s
argument is not persuasive because it only addresses the EFA Manual, not
the combination proposed by Petitioner. See In re Keller, 642 F.2d 413, 426
(CCPA 1981). For example, Patent Owner’s argument does not address the
evidence discussed above indicating that it would have been obvious to one
of ordinary skill in the art reading Thomas that a sensor probe mounted on a
motor vehicle would identify an anomaly in an electric field generated by
leakage of electric current from a power grid. Pet. 42–45, 46–47; Ex. 1022
¶¶ 88, 89, 92; Ex. 1024, 126:10–127:1. Patent Owner also argues that
Thomas “does not disclose a processor, nor does it disclose any apparatus
that analyzes field strengths to identify the claimed voltage anomaly.” PO
Resp. 10. Patent Owner’s argument is not persuasive because it only
addresses Thomas, not the combination proposed by Petitioner. See Keller,
642 F.2d at 426. For example, Patent Owner’s argument does not address
the evidence discussed above indicating that the electric field sensor taught
by the EFA Manual includes a processor, which, when combined with the
teachings of Thomas, would identify an anomaly in an electric field. Pet.
40–41, 45; Ex. 1004 §§ 3.4.1, 3.4.2, 5.1, 8.1; Ex. 1022 ¶¶ 84, 86, 90.
Patent Owner argues that the combination of the EFA Manual and
Thomas does not teach or suggest a “processor . . . [that] analyzes the field
strengths to identify a voltage anomaly [generated by leakage of electric
power from a power grid] in the electric field [detected as the sensor probe
moves past a plurality of conductive objects proximate the street].” PO
Resp. 12. Patent Owner, however, does not explain specifically why the
combination of the EFA Manual and Thomas fails to teach or suggest those
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limitations of claim 1. Id. Moreover, in addition to Petitioner’s evidence
discussed above, Patent Owner acknowledges that, if the sensor taught by
the EFA Manual was mounted on a motor vehicle and driven on a street as
taught by Thomas, the processor would generate an alarm when the detected
electric field exceeds a threshold. Tr. 60:17–63:3, 66:14–72:10.
Patent Owner also argues that neither the EFA Manual nor Thomas
teaches detecting a rise, peak, and fall in an electric field, and, thus, do not
teach identifying an anomaly in an electric field under Patent Owner’s
proposed construction of that limitation. PO Resp. 56–57. As discussed
above, we determine that Patent Owner’s proposed construction is not the
broadest reasonable interpretation. See supra Section II.A.1. Moreover,
even if we had adopted Patent Owner’s proposed construction, Patent
Owner’s declarant, Dr. David W. Fugate, acknowledges that the electric
field measurements captured by the sensor taught in the EFA Manual would
indicate a rise, peak, and fall in an electric field. Ex. 1024, 136:14–140:1.
3. Claim 8
Dependent claim 8 recites “a computer having a graphical user
interface that displays electric field signal strength data, and analyzes and
captures a monitored event within the depicted electric field signal strength
data.” Ex. 1002, col. 27, ll. 12–15. The EFA Manual teaches a software
tool that accompanies the EFA-300 sensor and exports electric field
measurement data to a personal computer for further evaluation. Pet. 57–58;
Ex. 1004 § 10.2.1. Petitioner identifies evidence indicating that it would
have been obvious to one of ordinary skill in the art that the computer
software tool taught by the EFA Manual includes a graphical user interface
for analyzing and capturing monitored events within the electric field
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measurement data. Pet. 57–58; Ex. 1022 ¶¶ 115, 117.
Patent Owner argues that the testimony of Petitioner’s declarant, Dr.
Robert G. Olsen, is conclusory and not sufficient to show that analyzing and
capturing a monitored event would have been obvious to one of ordinary
skill in the art. PO Resp. 13. Patent Owner’s argument is not persuasive.
As discussed above, the EFA Manual teaches exporting electric field
measurement data to a personal computer for “further evaluation.” Ex. 1004
§ 10.2.1. Dr. Olsen concludes that it would have been obvious that this
further evaluation included analyzing and capturing monitored events. Ex.
1022 ¶¶ 115, 117. Thus, Dr. Olsen’s conclusion is based on, and supported
by, the express teachings of the EFA Manual.
4. Reasons for Combinations
Petitioner identifies evidence indicating that it would have been
obvious to mount the electric field sensor taught by the EFA Manual on the
motor vehicle taught by Thomas because Thomas expressly teaches
mounting an electric field sensor on a motor vehicle and using it to identify
electric field anomalies while the vehicle is in motion. Pet. 24–27, 42–45;
Ex. 1005, col. 3, ll. 12–19, col. 6, l. 62–col. 7, l. 25, Figs. 9–14; Ex. 1022
¶¶ 51–55, 65–67. Further, the combination would have involved combining
known elements (i.e., the electric field sensor in the EFA Manual and the
motor vehicle in Thomas) according to known methods (i.e., mounting the
sensor on the vehicle with a pipe or other structure as taught by Thomas) to
yield predictable results (i.e., identifying anomalies in electric fields while
the vehicle is in motion as taught by Thomas). See KSR, 550 U.S. at 416.
Petitioner identifies evidence indicating that it would have been obvious to
combine Greene with the EFA Manual and Thomas because the EFA
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Manual teaches determining the location of an electric field measurement,
and, thus, one of ordinary skill in the art would have considered well-known
ways to determine location, such as the GPS receiver in Greene. Pet. 52–53;
Ex. 1004, Annex B; Ex. 1006, col. 4, ll. 39–62; Ex. 1022 ¶¶ 104–106; see
KSR, 550 U.S. at 416. Petitioner identifies evidence indicating that it would
have been obvious to combine Brigham with the EFA Manual and Thomas
because the EFA Manual teaches using the fast Fourier transform to produce
electric field strengths, and, thus, one of ordinary skill in the art would have
looked to other references, such as Brigham, for well-known ways to
implement the fast Fourier transform. Pet. 54–56; Ex. 1004 § 6.3, Annex C;
Ex. 1008, 83–87; Ex. 1022 ¶¶ 109–110; see KSR, 550 U.S. at 416.
a. Level of Ordinary Skill in the Art
Patent Owner argues that a person of ordinary skill in the art would
not have combined the cited teachings of the EFA Manual and Thomas
because it was not known at the time of filing of the ’856 patent that an
electric field sensor could be used to identify a voltage anomaly generated
by leakage of electric power from a power grid. PO Resp. 14–18. Patent
Owner’s argument is not persuasive. Patent Owner’s declarant, Dr. Fugate,
admits that a person of ordinary skill in the art at the time of filing of the
’856 patent would have known that an electric field sensor could be used to
identify a stray voltage anomaly (which, according to Patent Owner, is an
anomaly generated by leakage of electric power from a power grid).
Ex. 1024, 126:10–127:1; Tr. 61:4–7. Further, as discussed above, Thomas
teaches that electric current flowing through an object generates an anomaly
in an electric field, and, thus, it would have been obvious to one of ordinary
skill in the art reading Thomas that an electric field sensor could be used to
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identify an anomaly generated by leakage of electric current from a power
grid. See supra Section II.B.2.
Patent Owner also argues that “Petitioners’ sole reason for combining
the EFA Manual and Thomas relies solely on the false premise that a skilled
artisan would have known about the private Sarnoff experiments on stray
voltage detection using electric fields,” but “Petitioners failed to show that
the skilled artisan would have known about this work.” PO Resp. 18. Patent
Owner’s argument is not persuasive. Thomas teaches mounting an electric
field sensor on a motor vehicle and using the sensor to identify anomalies in
electric fields while the vehicle is in motion. Ex. 1005, col. 6, l. 62–col. 7, l.
25, Figs. 9–14. As such, Thomas itself would have provided one of ordinary
skill in the art with a reason to mount the electric field sensor taught by the
EFA Manual on the motor vehicle taught by Thomas and use the sensor to
identify anomalies in electric fields while the vehicle is in motion. Pet. 24–
27, 42–45; Ex. 1022 ¶¶ 51–55, 65–67. Therefore, Petitioner’s reason for
combining the cited teachings of the EFA Manual and Thomas is not
dependent on whether one of ordinary skill in the art would have known
about any private Sarnoff experiments.
b. Reasonable Expectation of Success
Patent Owner argues that a person of ordinary skill in the art would
not have had a reasonable expectation of success in combining the EFA
Manual and Thomas because it was not known at the time of filing of the
’856 patent that a voltage anomaly could be identified from a moving motor
vehicle. PO Resp. 19–21. Patent Owner’s argument is not persuasive
because a reasonable expectation of success does not require that a person of
ordinary skill in the art already know with absolute predictability that a
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combination would work. In re Kubin, 561 F.3d 1351, 1360 (Fed. Cir.
2009). Further, Patent Owner’s argument does not address the teachings of
Thomas. As discussed above, Thomas teaches mounting an electric field
sensor on a vehicle and using the sensor to identify anomalies in electric
fields while the vehicle is in motion. Ex. 1005, col. 6, l. 62–col. 7, l. 25,
Figs. 9–14. Thus, one of ordinary skill in the art reading Thomas would
have had a reasonable expectation that an anomaly in an electric field could
be identified from a moving motor vehicle. See Ex. 1022 ¶¶ 51–55, 65–67;
In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (finding that
the teachings of the prior art provide a sufficient basis for a reasonable
expectation of success).
Patent Owner argues that a person of ordinary skill in the art would
not have had a reasonable expectation of success in using the electric field
sensor taught by the EFA Manual in the proposed combination because the
sensitivity of that sensor would have made it unsuitable for mobile anomaly
detection. PO Resp. 26–27. Specifically, Patent Owner argues that most
voltage anomalies emit electric fields of less than 1 V/m. PO Resp. 20–21,
26. According to Patent Owner, the EFA Manual only provides
measurement uncertainty values for electric fields greater than 1 V/m, and,
thus, the accuracy of measurements below 1 V/m would be “questionable.”
PO Resp. 26 (citing Ex. 1004 § 12.2.6; Ex. 2015 ¶ 79). Patent Owner’s
argument is not persuasive. The EFA Manual expressly states that the alarm
threshold for the electric field sensor ranges from 0.1 V/m to 100 kV/m.
Ex. 1004 § 8.1.2. Thus, it would have been reasonable to expect the sensor
to accurately detect electric fields at least as low as 0.1 V/m.
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Patent Owner also argues that the sampling rate of the sensor taught
by the EFA Manual would have been too low to reliably detect voltage
anomalies while in motion. PO Resp. 24 (citing Ex. 2015 ¶¶ 74–77). Patent
Owner’s argument is not persuasive. Patent Owner’s declarant, Dr. Fugate,
acknowledges that, although the sampling rate of the sensor taught by the
EFA Manual would limit the speed at which the vehicle could travel, a
person of ordinary skill in the art still would have recognized that the sensor
“may” work in the proposed combination. Ex. 1024, 120:6–121:5. Thus,
Patent Owner does not demonstrate that the sampling rate would have
prevented a person of ordinary skill in the art from having at least a
reasonable expectation of success in using the sensor taught by the EFA
Manual in the proposed combination.
Patent Owner argues that evidence relating to Petitioner’s anomaly
detection system, the 8950/10, also demonstrates that the sensor taught by
the EFA Manual was not suitable for use in mobile anomaly detection
systems because it had an inadequate sensitivity and sampling rate. PO
Resp. 24–26. Patent Owner’s argument is not persuasive. If anything, the
evidence relating to Petitioner’s 8950/10 system demonstrates the
opposite—that the sensor taught by the EFA Manual was suitable for use in
mobile anomaly detection systems. Petitioner developed the 8950/10 system
by mounting the exact same sensor taught by the EFA Manual to a truck and
using it to identify anomalies in electric fields. Ex. 2015, Appendix C, C-1–
C-6. Patent Owner subsequently accused the 8950/10 system of infringing
claim 1 of the ’856 patent in the related district court case (PO Resp. 48; Ex.
2158 ¶ 17), and alleges in this case that claim 1 of the ’856 patent reads on
the 8950/10 system (PO Resp. 43). By doing so, Patent Owner
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acknowledges that the sensitivity and sampling rate of the sensor taught by
the EFA Manual are, in fact, sufficient to satisfy the limitations recited in the
challenged claims. Thus, the evidence relating to Petitioner’s 8950/10
system, to the extent it is relevant to this issue,
3
indicates that a person of
ordinary skill in the art likely would have found the sensitivity and sampling
rate of the sensor taught by the EFA Manual suitable for mobile anomaly
detection systems.
In addition to the reasons discussed above, Patent Owner’s argument
that a person of ordinary skill in the art would not have had a reasonable
expectation of success in combining the EFA Manual and Thomas is not
persuasive because Patent Owner’s argument is not commensurate with the
scope of the challenged claims. Allergan, Inc. v. Apotex Inc., 754 F.3d 952,
962–63 (Fed. Cir. 2014). Patent Owner’s argument focuses on whether the
sensitivity and sampling rate of the sensor described in the EFA Manual are
suitable for detecting weak electric fields in an electrically noisy urban
environment. PO Resp. 18–19 (“the artisan would not have known whether
stray voltages could be detected from a moving motor vehicle using their
weak electric fields in an electrically noisy urban environment”); Ex. 2015
¶¶ 51, 57, 59, 60, 76. However, neither the challenged claims nor the
written description of the ’856 patent are limited to detecting weak electric
fields in an electrically noisy urban environment. See Allergan, 754 F.3d at

3
The evidence relating to Petitioner’s 8950/10 system may not be relevant
because the system was developed after the filing of the ’856 patent. We
nonetheless address this evidence because Patent Owner argues that it is
relevant to whether there would have been a reasonable expectation of
success in combining the EFA Manual and Thomas. See PO Resp. 24–26.
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963. Rather, the ’856 patent states that the disclosed system also may be
used in rural and suburban areas. Ex. 1002, col. 2, ll. 18–21.
c. Teaching Away
Patent Owner argues that the EFA Manual teaches away from the
combination proposed by Petitioner. PO Resp. 27–30. In particular, Patent
Owner argues that the EFA Manual teaches that the electric field sensor
disclosed therein must be mounted on a tripod. Id. at 29. According to
Patent Owner, requiring the sensor to be mounted on a tripod indicates that
the sensor cannot be used while in motion. Id. at 28–30. Patent Owner’s
argument is not persuasive. Although the EFA Manual requires that the
sensor be “mounted on a tripod and insulated from it” (Ex. 1004 § 3.4.1),
Patent Owner does not identify any teaching in the EFA Manual that
prohibits the sensor from being used while in motion (Ex. 1024, 108:20–
109:3). Further, as discussed above, Thomas teaches that an electric field
sensor can be mounted to an electrically non-conductive support structure on
a motor vehicle and used while the vehicle is in motion. Ex. 1005, col. 3, ll.
12–19, col. 6, l. 62–col. 7, l. 25, Figs. 9–14. Thus, one of ordinary skill in
the art reading the EFA Manual and Thomas together would understand that
the sensor taught in the EFA Manual could be mounted securely to and
insulated from a support structure on a motor vehicle, which would satisfy
the conditions for use set forth in the EFA Manual. See Ex. 1022 ¶¶ 52–53.
5. Objective Indicia of Non-Obviousness
Patent Owner argues that certain objective indicia, including long-felt
but unmet need, failure of others, commercial success, and copying,
demonstrate the non-obviousness of the challenged claims. PO Resp. 31.
As a threshold matter, Patent Owner contends that Petitioner’s arguments
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and evidence relating to these objective indicia should not be considered
because Petitioner knew about the objective indicia before filing the Petition,
but did not present its arguments and evidence until the Reply. Id. at 32–33.
Patent Owner’s argument is not persuasive. Petitioner is entitled in the
Reply to respond to arguments and evidence raised in the Response, which is
what Petitioner has done here. Belden Inc. v. Berk-Tek LLC, No. 2014-1575,
2015 WL 6756451, at *10–15 (Fed. Cir. Nov. 5, 2015).
a. Long-Felt but Unmet Need
Patent Owner argues that, prior to the ’856 patent, utility companies
could only identify voltage anomalies by making direct contact with each
potential hazard using a handheld device. PO Resp. 36. According to Patent
Owner, this manual scanning did not scale effectively to large cities because
of the geographic footprint and large number of potential hazards. Id. at 36–
37. Patent Owner contends that this demonstrates a long-felt but unmet need
“for efficient, scalable, stray voltage detection capable of serving as an
alternative to manual testing.” Id. at 37. Although Patent Owner explains
generally why the technology existing prior to the ’856 patent may not have
been ideal for large cities, that alone does not indicate that utility companies
actually had a long-felt but unmet need for a more efficient alternative,
rather than, for example, just a lack of interest in the technology.
Patent Owner does argue that one particular utility company,
Consolidated Edison (“Con Ed”), had a need for a more efficient alternative
to manually testing for voltage anomalies. Id. at 35–38. However, as
Petitioner points out, the evidence indicates that Con Ed’s need was not
long-felt. Pet. Reply 13–15. Specifically, Patent Owner’s predecessor
provided a proposal to Con Ed for the development of a mobile contactless
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system for detecting voltage anomalies in 2002. Ex. 1039. Con Ed,
however, decided not to proceed with that project because Con Ed wanted to
use the required funding for other projects. Ex. 1012, 69:4–70:5; Ex. 1029,
134:1–136:3, 142:3–143:12; Ex. 1040, 1. Con Ed only renewed its interest
in developing a mobile contactless detection system after a high profile
electrocution death in New York City in 2004 and a subsequent order from
the State of New York requiring Con Ed to perform testing for voltage
anomalies. Ex. 1029, 142:3–143:15; Ex.1040, 1; Ex. 1045, 101:23–102:1;
Ex. 2013 ¶¶ 35, 37; Ex. 2046, 1–2. Patent Owner’s predecessor developed
the system claimed in the ’856 patent shortly thereafter, and Con Ed began
using it in 2005. PO Resp. 45. As such, the evidence indicates that Con
Ed’s need for a more efficient alternative to manual testing was not long-felt
because it arose in 2004 and was met in 2005. See Ecolochem, Inc. v. S.
Cal. Edison Co., 227 F.3d 1361, 1377 (Fed. Cir. 2000) (“This evidence
supports the district court’s finding that Ecolochem’s process was developed
not in response to a long-felt need in the power industry, but in response to a
shortly-felt requirement imposed by EPRI’s guidelines.”). Therefore, the
objective consideration of long-felt by unmet need does not weigh in favor
of finding the challenged claims to be non-obvious.
b. Failure of Others
Patent Owner argues that others tried but failed to develop a more
efficient alternative to manually testing for voltage anomalies. PO Resp.
39–41. Much of the evidence identified by Patent Owner, however, does not
show any failure by others. Patent Owner identifies several issued United
States patents, but does not explain how those patents demonstrate that
others failed to develop a more efficient alternative to manually testing for
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voltage anomalies. Id. at 39 (citing Ex. 2039; Ex. 2056; Ex. 2057). Patent
Owner cites to an assessment by the Electric Power Research Institute
(“EPRI”), which states that electric field sensors on the market in 2005
would require major modifications to provide a non-contact stray voltage
detection system. PO Resp. 39; Ex. 2058, 1. However, Patent Owner does
not identify anything in the assessment indicating that EPRI or others
actually attempted to develop such a system and failed. PO Resp. 39. Patent
Owner cites to an article concluding that mobile detection systems were not
sufficiently advanced to be used as the exclusive method of identifying
electrical safety hazards. Id. at 40–41 (citing Ex. 2060, 7). But Patent
Owner does not demonstrate that this undated article refers to systems
developed before the filing of the ’856 patent. PO Resp. 40–41. Further, the
article appears to indicate that others succeeded in developing a mobile
contactless detection system (even if the author did not consider that system
to be sufficiently advanced to be used as the exclusive method for
identifying electrical hazards). Ex. 2060, 7.
Patent Owner also argues that, in the 2004 timeframe, Con Ed
attempted to attach voltage detectors to rolling objects, such as skateboards
and wheelchairs, and to use “sticks and poles as an extension to a person’s
arm,” and those attempts failed. PO Resp. 40; Ex. 2013 ¶¶ 24–32. Patent
Owner, however, does not demonstrate a nexus between Con Ed’s failed
attempts and the challenged claims. In particular, Patent Owner argues that
the problem sought to be solved by the ’856 patent was that the prior
technology was inefficient because it required making direct contact with
each potential hazard. PO Resp. 3, 36–37, 41; Ex. 1002, col. 2, ll. 6–21; Tr.
102:10–12. But the identified attempts by Con Ed also involved making
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direct contact with each potential hazard. Ex. 2013 ¶¶ 26–27, 29, 31; Tr.
103:3–13. As such, the evidence does not indicate that Con Ed tried and
failed to solve the problem identified in the ’856 patent. See Symbol Techs.,
Inc. v. Opticon, Inc., 935 F.2d 1569, 1578 (Fed. Cir. 1991)
(“Nonobviousness is suggested by the failure of others to ‘find a solution to
the problem which the patent[s] in question purport[ ] to solve.’”). To the
contrary, the evidence indicates that Con Ed previously decided not to even
try developing a contactless system because it wanted to use the required
funding for other projects. Ex. 1012, 69:4–70:5; Ex. 1029, 134:1–136:3,
142:3–143:12; Ex. 1040, 1. Therefore, the objective consideration of failure
by others does not weigh in favor of finding the challenged claims to be non-
obvious.
c. Commercial Success
Patent Owner argues that sales of its SVD2000 product demonstrate
the commercial success of the subject matter claimed in the ’856 patent. PO
Resp. 41–47. Specifically, Patent Owner identifies the revenue generated
from the SVD2000 from 2007 to 2014, and argues that the SVD2000 has
been used in 61 regions in the United States and 4 regions in Canada and the
United Kingdom. Id. at 43 (citing Ex. 2014 ¶¶ 51, 52). In order to
demonstrate a nexus between the alleged commercial success and the
claimed subject matter, Patent Owner argues that its SVD2000 product is
covered by claim 1 of the ’856 patent (PO Resp. 42), and cites to testimony
from its declarant, Mr. Andrew W. Carter (id. at 46). According to Mr.
Carter, Patent Owner’s customers appreciate that Patent Owner’s mobile
system is more efficient than manually testing for voltage anomalies.
Ex. 2014 ¶¶ 94–101.
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Evidence of commercial success is only relevant if there is a nexus
between the commercial success and the claimed subject matter. In re
Applied Materials, Inc., 692 F.3d 1289, 1299 (Fed. Cir. 2012). As such,
there must be evidence that the sales were a direct result of the unique
characteristics of the claimed subject matter, as opposed to other economic
and commercial factors unrelated to the quality of the claimed subject
matter. Id. at 1299–1300. Here, Petitioner identifies evidence showing that
the alleged commercial success of Patent Owner’s product was attributable
to factors other than the claimed subject matter, namely government
regulation and catalyst events. Pet. Reply 19–20. Specifically, Patent
Owner’s President and CEO acknowledges that customers purchased Patent
Owner’s product because: 1) they were required by government regulation
to test for voltage anomalies; and/or 2) they experienced a catalyst event,
such as a death or injury, due to a voltage anomaly. Ex. 1045, 100:8–9,
101:21–102:12. Patent Owner’s declarant, Mr. Carter, similarly
acknowledges that customers are reluctant to purchase Patent Owner’s
product unless they are required to do so by law and/or they experience a
catalyst event. Ex. 2014 ¶ 38. This is consistent with the evidence
discussed above indicating that Con Ed purchased Patent Owner’s product
after a high profile electrocution death and subsequent government
regulation. See supra Section II.B.5.a. Petitioner’s declarant, Ms. Dana
Trexler Smith, further demonstrates that customers purchased Patent
Owner’s product because of government regulation and/or catalyst events.
Pet. Reply 20; Ex. 1026 ¶¶ 27–35.
In sum, the evidence indicates that sales of Patent Owner’s SVD2000
product were driven by government regulation and/or catalyst events. Ex.
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1026 ¶¶ 27–35; Ex. 1045, 101:21–102:12; Ex. 2014 ¶ 38; see supra Section
II.B.5.a. However, the evidence also indicates that, after confronted with
one or both of those factors, customers who purchased Patent Owner’s
product appreciated that it was more efficient than manually testing for
voltage anomalies. Ex. 2014 ¶¶ 94–101. As such, the evidence, when
considered as a whole, indicates that the patented subject matter may have
played some role in sales of Patent Owner’s product, but was not the direct
or primary cause of those sales. See Applied Materials, 692 F.3d at 1299–
1300. Therefore, the objective consideration of commercial success weighs
only slightly in favor of finding the challenged claims to be non-obvious.
d. Copying
Patent Owner argues that Petitioner copied Patent Owner’s SVD2000
product, and, in particular, copied “the claimed innovation of using an e-
field sensor to identify voltage anomalies indicative of stray voltage hazards
contactlessly, while moving.” PO Resp. 47–52. A showing of copying,
however, does not unequivocally demonstrate non-obviousness without the
presence of additional compelling objective indicia of non-obviousness.
Ecolochem, 227 F.3d at 1380. For the reasons discussed above, additional
compelling objective indicia of non-obviousness are not present in this case.
See supra Sections II.B.5a–II.B.5.c. Therefore, even if Patent Owner
identifies evidence of copying by Petitioner, the objective consideration of
copying does not demonstrate that the challenged claims are non-obvious.
6. Totality of the Evidence
For the reasons discussed above in Section II.B.1 to Section II.B.4, the
evidence presented by Petitioner strongly indicates that the challenged
claims would have been obvious over the cited prior art. For the reasons
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discussed above in Section II.B.5, the objective indicia of long-felt but
unmet need and failure of others do not weigh in favor of non-obviousness,
and the objective indicia of commercial success and copying weigh only
slightly in favor of non-obviousness. When considering all the evidence of
obviousness and non-obviousness together, see In re Cyclobenzaprine
Hydrochloride Extended-Release Capsule Patent Litigation, 676 F.3d 1063,
1079 (Fed. Cir. 2012), we determine that Petitioner has shown by a
preponderance of the evidence that claims 1–5 and 8 of the ’856 patent are
unpatentable as obvious.
C. Petitioner’s Motion to Exclude
Petitioner filed a redacted Motion to Exclude (Paper 63, “Pet. Mot.”),
and a sealed Motion to Exclude (Paper 46), to which Patent Owner filed an
Opposition (Paper 58), and Petitioner filed a Reply (Paper 61). Petitioner
argues that Exhibits 2012–2014, 2082–2086, 2088–2093, 2118, 2119, 2122,
2143, 2152, 2155, and 2163, and portions of Exhibit 2015 should be
excluded. Pet. Mot. 1. We have considered the parties’ arguments, and, for
the reasons discussed below, Petitioner’s Motion to Exclude is denied in
part and dismissed in part.
1. Exhibits 2012 and 2013
Exhibit 2012 is the declaration of William A. Homyk, and Exhibit
2013 is the declaration of Arthur Kressner. Petitioner argues that Exhibits
2012 and 2013 should be excluded under Fed. R. Evid. 402 or 403, because
neither Mr. Kressner nor Mr. Homyk is a person of ordinary skill in the art,
and, thus, their testimony regarding the objective indicia of long-felt but
unmet need and failure of others is irrelevant. Pet. Mot. 1–4. Petitioner’s
argument is not persuasive. Although the objective indicia of long-felt but
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unmet need and failure of others should be considered from the perspective
of a person of ordinary skill in the art, Petitioner does not identify any
requirement that only those considered to be a person of ordinary skill in the
art may provide testimony regarding those objective indicia. Id. Therefore,
we are not persuaded that Exhibits 2012 and 2013 should be excluded under
Fed. R. Evid. 402 or 403, and Petitioner’s Motion to Exclude Exhibits 2012
and 2013 is denied.
2. Exhibit 2014
Exhibit 2014 is the declaration of Andrew W. Carter. Petitioner
argues that Exhibit 2014 should be excluded under Fed. R. Evid. 402, 403,
702, 802, or 901. Pet. Mot. 5. Petitioner argues that Mr. Carter relies on
documents that lack authentication and are inadmissible hearsay. Id. at 5–6.
However, as Petitioner acknowledges, the facts and data underlying Mr.
Carter’s testimony do not need to be independently admissible. Id.; Power
Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., 711 F. 3d 1348,
1373 (Fed. Cir. 2013). Further, Petitioner does not explain specifically why
the facts and data underlying Mr. Carter’s testimony in this case lack
authenticity or are unreliable. Pet. Mot. 5–6. Petitioner also argues that Mr.
Carter’s testimony regarding commercial success is based on an improper
definition of the relevant market and fails to demonstrate a nexus to the
claimed invention. Id. at 6–9. Petitioner’s arguments raise a question of
sufficiency of proof, not admissibility. Therefore, we are not persuaded that
Exhibit 2014 should be excluded under Fed. R. Evid. 402, 403, 702, 802, or
901, and Petitioner’s Motion to Exclude Exhibit 2014 is denied.
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3. Exhibits 2015 and 2163
Exhibit 2015 is the declaration of David W. Fugate, and Exhibit 2163
is a Con Ed presentation. Petitioner argues that Exhibit 2163 should be
excluded as inadmissible hearsay under Fed. R. Evid. 802, and as lacking
authentication under Fed. R. Evid. 901, and that paragraph 69 of Exhibit
2015 should be excluded under Fed. R. Evid. 402 and 403, because it relies
on Exhibit 2163. Pet. Mot. 9–11. Petitioner’s Motion to exclude Exhibit
2163 and paragraph 69 of Exhibit 2015 is dismissed as moot because Patent
Owner does not cite to Exhibit 2163 or paragraph 69 of Exhibit 2015 in its
briefing and this Decision does not rely on Exhibit 2163 or paragraph 69 of
Exhibit 2015. Petitioner also argues that paragraphs 41, 47, and 55 of
Exhibit 2015 should be excluded under Fed. R. Evid. 403, because Dr.
Fugate acknowledged at his deposition that statements in those paragraphs
are inaccurate. Pet. Mot. 11–14. Petitioner’s arguments raise a question of
the weight that should be given to Dr. Fugate’s testimony, not admissibility.
Therefore, we are not persuaded that paragraphs 41, 47, and 55 of Exhibit
2015 should be excluded under Fed. R. Evid. 403, and Petitioner’s Motion to
Exclude paragraphs 41, 47, and 55 of Exhibit 2015 is denied.
4. Exhibits 2082–2086, 2088–2093, 2118, 2119, 2122,
2143, 2152, and 2155
Exhibits 2082–2086, 2088–2093, 2118, 2119, 2122, 2143, 2152, and
2155 are documents relied upon by Mr. Carter in his declaration. Petitioner
argues that Exhibits 2082–2086, 2088–2093, 2118, 2119, 2122, 2143, 2152,
and 2155 should be excluded as inadmissible hearsay under Fed. R. Evid.
802, and as lacking authentication under Fed. R. Evid. 901. Pet. Mot. 14–
15. This Decision relies on the Exhibits 2082–2086, 2088–2093, 2118,
2119, 2122, 2143, 2152, and 2155, only to the extent they provide a basis for
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the portions of Mr. Carter’s declaration cited in this Decision. As discussed
above, Petitioner acknowledges that the facts and data underlying Mr.
Carter’s testimony do not need to be independently admissible. See supra
Section II.C.2. Therefore, we are not persuaded that Exhibits 2082–2086,
2088–2093, 2118, 2119, 2122, 2143, 2152, and 2155 should be excluded
under Fed. R. Evid. 802 or 901, and Petitioner’s Motion to Exclude Exhibits
2082–2086, 2088–2093, 2118, 2119, 2122, 2143, 2152, and 2155 is denied.
D. Patent Owner’s Motion to Exclude
Patent Owner filed a Motion to Exclude (Paper 48, “PO Mot.”), to
which Petitioner filed an Opposition (Paper 54), and Patent Owner filed a
Reply (Paper 60). Patent Owner argues that Exhibit 1004, and portions of
Exhibits 1017 and 1027 should be excluded. PO Mot. 1. We have
considered the parties’ arguments, and, for the reasons discussed below,
Patent Owner’s Motion to Exclude is denied in part and dismissed in part.
1. Exhibit 1004
Exhibit 1004 is the EFA Manual. Patent Owner argues that Exhibit
1004 should be excluded for lack of authentication under Fed. R. Evid. 901.
PO Mot. 3–6. Federal Rule of Evidence 901 requires that the proponent
produce evidence sufficient to support a finding that an item is what the
proponent claims it is. Here, Patent Owner admits that Exhibit 1004 is what
Petitioner claims it is, namely an operating manual for the EFA-200/-300
EM Field Analyzer. Tr. 53:8–12. What Patent Owner disputes is whether
Petitioner has shown by a preponderance of the evidence that the EFA
Manual is prior art, i.e., that it was publicly accessible before the critical
date. Id.; PO Mot. 4. Because this is a question of sufficiency of proof, not
admissibility, Patent Owner’s Motion to Exclude Exhibit 1004 in its entirety
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is denied.
Moreover, Petitioner has shown by a preponderance of the evidence
that the EFA Manual is a prior art printed publication under 35 U.S.C.
§ 102(b). Pet. 19–22. Specifically, Petitioner submits the Declaration of
Mr. Robert Johnson, the Director of Instrument Products at Narda Safety
Test Solutions (“Narda”), which is a business unit of Petitioner. Ex. 1017 ¶
1. Mr. Johnson testifies that, since 2002, Narda’s standard practice has been
to include a user manual with each device sold and also to provide user
manuals to customers and others upon request. Id. ¶¶ 3, 7. According to
Mr. Johnson, the EFA Manual was distributed to customers at least 201
times between 2002 and 2004. Id. ¶¶ 5, 11, 12. Mr. Johnson also testifies
that Narda did not restrict its customers’ use or dissemination of the EFA
Manual. Id. ¶ 6. As a result, Petitioner has shown sufficiently that the EFA
Manual is a prior art printed publication. See In re Enhanced Sec. Research,
LLC, 739 F.3d 1347, 1354–55 (Fed. Cir. 2014) (finding that a product
manual constituted publicly-available prior art based on evidence that the
manual was available to members of the public upon request and was
provided to approximately a dozen customers); Mass. Inst. of Tech. v. AB
Fortia, 774 F.2d 1104, 1108–09 (Fed. Cir. 1985) (finding that a paper
constituted prior art based on evidence that the paper was disseminated
without restriction to at least six persons and between 50 and 500 persons
were told of the existence of the paper).
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Patent Owner also argues that the copyright date on Exhibit 1004
should be excluded as inadmissible hearsay under Fed. R. Evid. 802.
4
PO
Mot. 6–7. However, the copyright date on the EFA Manual meets the
criteria for the business records exception under Fed. R. Evid. 803(6).
Specifically, Mr. Johnson testifies that a copyright date is affixed to every
user manual before Narda releases the user manual, thus indicating that the
copyright date is a record made at or near the time a user manual is finalized
in the regular course of business as part of Narda’s regular practice of
releasing a user manual. Ex. 2204, 59:7–61:8; Fed. R. Evid. 803(6).
Therefore, we are not persuaded that the copyright date on Exhibit 1004
should be excluded under Fed. R. Evid. 802, and Patent Owner’s Motion to
Exclude the copyright date on Exhibit 1004 is denied.
2. Exhibit 1017
Exhibit 1017 is a declaration of Robert Johnson. Patent Owner argues
that Exhibit 1017 should be excluded under Fed. R. Evid. 602, because Mr.
Johnson lacks personal knowledge of the matters in his declaration. PO
Mot. 7–10. Specifically, Patent Owner argues that Mr. Johnson did not have
personal knowledge that the EFA Manual was distributed to customers at
least 201 times between 2002 and 2004, because he did not participate
personally in the distribution of those manuals. Id. at 4–5, 9. Patent
Owner’s argument is not persuasive. Although Mr. Johnson may not have
personally shipped or distributed the EFA Manual, Mr. Johnson states that

4
Petitioner does not rely solely on the copyright date as evidence of the
public accessibility of the EFA Manual. As discussed above, Petitioner
shows that the EFA Manual was publicly accessible based on Mr. Johnson’s
testimony that the EFA Manual was distributed to customers at least 201
times between 2002 and 2004.
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he has personal knowledge that, since 2002, Narda’s standard practice is to
include a user manual with each device sold and to provide user manuals to
customers and others upon request. Ex. 1017 ¶¶ 3, 7. Patent Owner does
not argue that Mr. Johnson lacks personal knowledge of Narda’s standard
practice. Patent Owner also does not explain why Mr. Johnson’s knowledge
of Narda’s standard practice is insufficient to support his testimony about the
distribution of the EFA Manual. PO Mot. 9.
Patent Owner argues that Mr. Johnson does not have personal
knowledge of the underlying sales records that form the basis for Exhibit C
to his declaration. Id. at 10. Patent Owner’s argument is not persuasive.
Although Mr. Johnson may not have reviewed the underlying sales records
that form the basis of Exhibit C, Mr. Johnson states that the sales data in
Exhibit C was generated upon his request by the sales and marketing
department from Narda’s business records. Ex. 1017 ¶ 10. Patent Owner
does not identify any requirement that Mr. Johnson must have prepared
Exhibit C in order to testify about its contents. PO Mot. 10. Further, Patent
Owner does not argue that the data in Exhibit C is unreliable. Id.
Patent Owner also argues that Mr. Johnson could not explain at his
deposition why the EFA Manual could no longer be accessed from certain
websites mentioned in his declaration. Id. Patent Owner’s argument raises a
question of the weight that should be given to Mr. Johnson’s testimony
regarding the websites mentioned in his declaration, not the admissibility of
that testimony. For the foregoing reasons, we are not persuaded that Exhibit
1017 should be excluded under Fed. R. Evid. 602, and Patent Owner’s
Motion to Exclude Exhibit 1017 is denied.
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3. Exhibit 1027
Exhibit 1027 is a declaration of Robert Johnson. Patent Owner argues
that the photograph in paragraph 4 of Exhibit 1027 is impermissible hearsay
and lacks authentication, and, thus, paragraphs 2–7 of Exhibit 1027 should
be excluded under Fed. R. Evid. 802 and 901. PO Mot. 11–13. Patent
Owner’s Motion to exclude paragraphs 2–7 of Exhibit 1027 is dismissed as
moot because this Decision does not rely on Exhibit 1027.
4. Petitioner’s Arguments and Evidence Relating to
Objective Indicia of Non-Obviousness
Patent Owner argues that Petitioner’s arguments and evidence relating
to the objective indicia of non-obviousness should be excluded because
Petitioner should have presented those arguments and evidence in the
Petition, rather than the Reply. PO Mot. 13–15. For the reasons discussed
above, Patent Owner’s argument is not persuasive. See supra Section II.B.5.
E. Patent Owner’s Motion for Observation on Cross Examination
Patent Owner filed a redacted Motion for Observation on Cross
Examination (Paper 51, “Mot. for Obsv.”), and a sealed Motion for
Observation on Cross Examination (Paper 50), to which Petitioner filed an
Response (Paper 56). Patent Owner’s observations relate to the cross
examination of Mr. Johnson regarding his declaration submitted as Exhibit
1027. Mot. for Obsv. 1. Patent Owner’s Motion for Observation on Cross
Examination is dismissed as moot because this Decision does not rely on
Exhibit 1027.
F. Motions to Seal
The parties filed several unopposed motions to seal. Paper 24; Paper
30; Paper 52; Paper 59; Paper 62. Collectively, the motions seek to seal
Exhibits 2016, 2018, 2019, 2020, 2022, 2065, 2067, 2143, 2152, 2155,
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2181–2194, 2201, and 2202 in their entirety, portions of Exhibits 1026,
2014, 2015, and 2205, and portions of Patent Owner’s Response (Paper 21),
Petitioner’s Corrected Reply (Paper 43), Petitioner’s Motion to Exclude
(Paper 46), and Patent Owner’s Motion for Observation on Cross
Examination (Paper 50). For the reasons discussed below, the parties’
motions to seal are granted.
There is a strong public policy that favors making information filed in
an inter partes review open to the public. Garmin Int’l, Inc. v. Cuozzo
Speed Techs. LLC, IPR2012-00001, Paper 34, 1–2 (PTAB Mar. 14, 2013).
The standard for granting a motion to seal is good cause. 37 C.F.R. § 42.54.
That standard includes showing that the information addressed in the motion
to seal is truly confidential, and that such confidentiality outweighs the
strong public interest in having the record open to the public. See Garmin
IPR2012-00001, Paper 34, 2–3. We have reviewed the motions to seal, the
documents sought to be sealed, and any redacted, public versions of those
documents that have been filed, and we determine that good cause exists to
grant the motions.
Although we grant the motions to seal, we previously informed the
parties that confidential information subject to a protective order will be
unsealed when that information is identified in a final written decision
following a trial. Paper 25, 2–3; Office Patent Trial Practice Guide, 77 Fed.
Reg. 48,756, 48,761 (Aug. 14, 2012). This Decision relies on information
from Exhibits 1026 and 2014 that is the subject of the parties’ motions to
seal. See supra Section II.B.5.c. Accordingly, the aforementioned exhibits
will be unsealed 45 days after entry of this Decision, unless, before that
time, the parties file a motion to expunge those exhibits and replace them
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with public versions that only redact confidential information not identified
in this Decision.
III. CONCLUSION
Petitioner has shown by a preponderance of the evidence that claims
claims 1–5 and 8 are unpatentable under 35 U.S.C. § 103(a) as obvious.
IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1–5 and 8 of the ’856 patent are shown
unpatentable;
FURTHER ORDERED that Petitioner’s Motion to Exclude is denied
in part and dismissed in part;
FURTHER ORDERED that Patent Owner’s Motion to Exclude is
denied in part and dismissed in part;
FURTHER ORDERED that Patent Owner’s Motion for Observation
on Cross Examination is dismissed as moot;
FURTHER ORDERED that the parties’ motions to seal are granted;
FURTHER ORDERED that Exhibits 2016, 2018, 2019, 2020, 2022,
2065, 2067, 2143, 2152, 2155, 2181–2194, 2201, and 2202, the identified
portions of Exhibits 1026, 2014, 2015, and 2205, and the identified portions
of Patent Owner’s Response (Paper 21), Petitioner’s Corrected Reply (Paper
43), Petitioner’s Motion to Exclude (Paper 46), and Patent Owner’s Motion
for Observation on Cross Examination (Paper 50) will be sealed;
FURTHER ORDERED that Exhibits 1026 and 2014 will be unsealed
45 days after entry of this Decision, unless, before that time, the parties file a
motion to expunge those exhibits and replace them with public versions that
only redact confidential information not identified in this Decision; and
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FURTHER ORDERED that, because this is a Final Written Decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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PETITIONER:

Daniel J. Goettle
dgoettle@bakerlaw.com

John P. Donohue, Jr.
jdonohue@bakerlaw.com

PATENT OWNER:

Jon E. Wright
jwright-PTAB@skgf.com

Ross G. Hicks
rhicks-PTAB@skgf.com

Michael B. Ray
mray-PTAB@skgf.com

Nirav N. Desai
ndesai-PTAB@skgf.com

Byron L. Pickard
bpickard-PTAB@skgf.com