Ex Parte 7,707,828 B2 et al

Patent Trial and Appeal Board

Apr 28, 2017

95002024 (P.T.A.B. Apr. 28, 2017)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
95/002,024 06/19/2012 7,707,828 B2 1022.00009.US00 1998
104080 7590 05/01/2017
Sutton McAughan Deaver, PLLC
Three Riverway
Suite 900
Houston, TX 77056
EXAMINER
KAUFMAN, JOSEPH A
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
05/01/2017 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

TWIN CITY FAN COMPANIES, LTD.
Requester, Appellant

v.

LESEMEN DAVIS, LLC
Patent Owner, Respondent
____________________

Appeal 2017-001767
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____________________

Before STEVEN D.A. McCARTHY, DANIEL S. SONG, and
BRETT C. MARTIN, Administrative Patent Judges.

SONG, Administrative Patent Judge.

NEW DECISION UNDER 37 C.F.R. § 41.77(f)

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BACKGROUND
The ’828 patent was the subject of inter partes reexamination Appeal
2014-008672, for which the Board’s decision was mailed on January 26,
2015 (“’8672 Decision”). In the ’8672 Decision, the Board reversed the
Examiner’s refusal to reject claims 1–15, 39–50, and 52 under various
grounds of rejections appealed by the Requester, and denominated the
reversal as a New Ground of Rejection under 37 C.F.R. § 41.77(b) (’8672
Decision 2, 4–5, 24).
In response to the ’8672 Decision, the Patent Owner requested
reopening of prosecution under 37 C.F.R. § 41.77(b)(1) in its Response and
Request to Re-Open Prosecution filed March 13, 2015 (“Req. to Reopen”).
The Patent Owner’s request to reopen prosecution included declarations
from Mr. Davis and Mr. Leseman (both filed March 13, 2015), and exhibits
attached thereto. In response, the Requester filed Third Party Requester’s
Comments in Accordance with 37 C.F.R. § 41.77(c) on April 10, 2015
(“Req. Init. Comnts”), together with exhibits attached thereto.
In the Order Remanding Inter Partes Reexamination Under 37 C.F.R.
§ 41.77(d) to the Examiner, mailed September 18, 2015 (“Remand Order”),
the Board Granted the Patent Owner’s Request to Reopen, entering the
documents submitted by the parties. Subsequent to the Remand Order, in
Decision on Petition mailed March 30, 2016 dismissing the Patent Owner’s
renewed petition to terminate the proceeding, the Patent Office determined
that the estoppel provisions of pre-AIA 35 U.S.C. 317(b) applied to any
rejection of claims 1–15 of the ’828 patent (Decision on Petition 1).
Specifically, the Decision on Petition states:
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Any rejection in this reexamination proceeding which is
presently applied against any of claims 1–15 of the ’828 patent,
i.e., the patent under reexamination, will not be further
maintained by the Office. No further rejection of any of
claims 1–15 of the ’828 patent will be made in the present
reexamination proceeding.
(Decision on Petition 2; see also id. at 3–7, 14).
However, the Decision on Petition states that “[t]he present inter
partes reexamination proceeding will not be terminated. Prosecution in the
present proceeding with respect to claims 39–52 of the ’828 patent will
continue.” (Decision on Petition 2; see also id. at 7–14).
The Examiner issued Examiner’s Determination pursuant to 37 C.F.R.
§ 41.77(d) on April 25, 2016 (“Ex. Det.”), noting the termination of the
reexamination proceeding with respect to claims 1–15 (Ex. Det. 2). In
response, the Patent Owner submitted Patent Owner’s Comments Under 37
C.F.R. § 41.77(e) on May 25, 2016 (“PO Comnts”). The Requester
submitted Third Party Requester’s Reply in Accordance with 37 C.F.R.
§ 41.77(e) on June 24, 2016 (“Req. Reply Comnts”).
This reopened reexamination is now before the Board for issuance of
a New Decision under 37 C.F.R. § 41.77(f). A New Decision “is deemed to
incorporate the earlier decision, except for those portions specifically
withdrawn.” 37 C.F.R. § 41.77(f). In view of the Decision on Petition, the
rejection of claims 1–15 of the ’828 patent in the ’8672 Decision is hereby
withdrawn. As such, the Patent Owner’s arguments asserting that the
rejection based on modifying Nakagami in view of one or more secondary
references would render the device of Nakagami unsatisfactory for its
intended purpose (Req. Reopen 34–37), and its admission regarding
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Nakagami (Req. Reopen 38–44), are moot. On the other hand, the rejections
of claims 39–50 and 52 still subject to the present reexamination are based
on Koelm in view of one or more secondary references (’8672 Decision 4–5,
16–24). Accordingly, this New Decision is limited to the rejections of
method claims 39–50 and 52 entered in the ’8672 Decision (’8672 Decision
3–4; ’828 patent, col. 10, l. 54–col. 12, l. 40).

ANALYSIS
In asserting patentability of claims 39–50 and 52, the Patent Owner
relies upon secondary considerations evidence as set forth in the Rule 132
Declaration of Gary Leseman (“Leseman Decl.”) and Rule 132 Secondary
Considerations Declaration of Joe Davis (“Davis Decl. II”) entered into the
record. The Patent Owner initially argues that the Examiner erred by failing
to consider all the evidence of record anew, and instead, merely evaluated
the secondary considerations evidence against the existing rejections (PO
Comnts 1–3).
The Patent Owner also argues that the Examiner erred by discounting
“out of hand” the testimony of Messrs. Leseman and Davis, “simply because
they are the inventors listed on the subject patent,” and thus, are interested
parties (PO Comnts 3–7). However, the assertion that the Examiner
discounted “out of hand the inventor’s testimony” is not accurate. The
Examiner stated that this testimony, “[w]hile considered, they are clearly
viewed in light of the fact that they have vested interest in upholding the
patentability of claims 39–52.” (Ex. Det. 7). Thus, it is clear that the
Examiner considered the testimony, but weighed the testimony in view of its
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source, noting that testimony from interested declarants is not as persuasive
as testimony from a disinterested party (see also Req. Init. Comnts 1). Such
consideration of the source of the testimony is not improper. In re
McKenna, 203 F.2d 717, 720 (CCPA 1953); Ashland Oil, Inc. v. Delta
Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed.Cir.1985).
Regardless, the above noted arguments are largely moot because we
consider and evaluate the evidence submitted by the Patent Owner under 37
C.F.R. § 41.77(e) herein, addressing the positions of the involved parties and
the Examiner. In this regard, we reconsider our initial obviousness
determination anew in view of the proffered evidence of nonobviousness.
See In re Rinehart, 531 F.2d 1048, 1052 (CCPA 1976); In re Eli Lilly & Co.,
902 F.2d 943, 945, (Fed. Cir. 1990).

Evidence of Long-Felt Need
The Patent Owner argues that the submitted secondary considerations
evidence in the form of the declarations demonstrates long-felt need, and
that this long-felt need has been satisfied by the ’828 patent (Req. Reopen
17–31). In this regard, Mr. Leseman testifies to the following1:
A1. Diesel engine exhaust blowback has been prevalent and
longstanding issue on drilling rigs for at least the thirty years I
have been involved in the industry. Although many engineers
and others considered skilled in the art have attempted solutions
to this problem, I am not aware of any solution that adequately
solved the industry’s long-standing need to effectively

1 We refer to the reproduced testimony set forth infra using citations
“Stmnt” or “Stmnts” together with the alpha-numeric designation
corresponding to the referenced statement(s).
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manipulate the flow of exhaust gas away from a drilling rig
prior to the solutions claimed in the ’828 Patent.
(Leseman Decl. ¶ 8).
A2. In 1999, diesel exhaust issues were encountered by Global
Marine Drilling Company on an offshore structure named Celtic Sea
that was not solved using different techniques (Leseman Decl. ¶¶ 8–
11).
A3. Those failed techniques attempted on the Celtic Sea included
“increasing the height of the exhaust stacks, relocating to aft engine
exhaust termination, and implementing water wash solutions,” and
using Hartzell fans (Leseman Decl. ¶¶ 12–17).
A4. Upon purchase of the Celtic Sea by Transocean Ltd., two Enjet
devices embodying the claimed invention were installed and “the
Enjet devices solved the diesel engine exhaust problems the rig had
experienced for nearly a decade.” (Leseman Decl. ¶ 18).
A5. “Subsequent to the Enjet device installation, Transocean
required all future rigs be equipped with Eldridge Enjet devices.”
(Leseman Decl. ¶ 18).

In relying on transcript testimony given during the related litigation
(Davis Decl. II ¶ 8), Mr. Davis testifies to the following:
B1. In 2005, “GlobalSantaFe was experiencing complications due
to exhaust gas from its engines being blown back on the rig, thus
coating the side of the rig, the walkways, and lifeboats.” (Davis Decl.
II ¶ 26).
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B2. “[T]he problems experienced by GlobalSantaFe were typical in
the industry for over thirty years (sixteen of which I have been a
member of this oil and gas industry).” (Davis Decl. II ¶ 27).
B3. “[O]ther rig builders were experiencing similar health and
safety concerns due to the adverse effects of diesel engine exhaust.
For example, workers on Jurong2 rigs were complaining of excess
fumes and the depositing of soot on the rigs’ walking surfaces and
lifeboats due to the diesel exhaust blowback.” (Davis Decl. II ¶ 28).
B4. “Despite the persistence of the problem with exhaust gases on
drilling rigs, the problem remained unsolved for many years. For
example—when faced with this problem for rigs in its shipyard—
Jurong was unable to solve it.” (Davis Decl. II ¶ 30).
B5. “In fact, although I never attempted to solve this problem prior
to 2005, others from Eldridge have attempted to solve the problem
without success.” (Davis Decl. II ¶ 32).
B6. “This persistent problem was not merely isolated to particular
drilling rigs (such as those owned and/or operated by GlobalSantaFe).
In fact, the problem remained unsolved for over thirty years, and it has
generally affected all stationary drilling rigs with diesel engine
exhaust discharge.” (Davis Decl. II ¶ 33).

2 It is our understanding that Jurong is the builder of the oil rigs owned by
GlobalSantaFe noted herein as having the diesel exhaust problems (Req.
Init. Comnts 7, citing Testimony of Davis AM at 24:5–25:19 and Testimony
of Leseman AM at 17:20–19:9). Accordingly, the testimony of Mr. Davis
refers to the same rig, GlobalSantaFe being the owner and Jurong being the
builder.
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B7. “Although several solutions to this problem were attempted
over the past thirty years, none of them were fully successful.” (Davis
Decl. II ¶ 35).
B8. Those failed solutions included use of a chimney/smoke stack,
redirecting the exhaust, water washer systems, and using fans (Davis
Decl. II ¶¶ 35–39).
B9. The long-felt, but unsolved need in the oil and gas industry was
solved by the Enjet device (Davis Decl. II ¶ 40).
B10. “A total of two prototypes were built for GlobalSantaFe. These
devices were installed on two rigs in Jurong’s shipyard and placed on
the outermost corners of the drilling rig. Despite additional
skepticism from GlobalSantaFe, the prototypes worked extremely
well.” (Davis Decl. II ¶ 47).

Evidence of Copying
The Patent Owner also argues that the evidence submitted via the
second declaration of Mr. Davis demonstrates copying (Req. Reopen 31–
34). In relying on transcript testimony given during the related litigation
(Davis Decl. II ¶ 8), Mr. Davis testifies to the following:
C1. “Jurong, in turn, directly used these drawings [for Enjet] to
have a similar device constructed.” (Davis Decl. II ¶ 52; see also id. at
¶¶ 51).
C2. Jurong had the competing device built (one of the devices
determined by the jury in the Enjet Lawsuit to be infringing the
’828 Patent) with the aid of these drawings, despite not having
any idea how to independently solve this problem. Even so,
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with these drawings, the solution could easily be derived from
the figures.
(Davis Decl. II ¶ 53; see also id. ¶¶ 54–55).
C3. “Those [infringing] devices are the same invention but of a
different version,” and “embody at least one claim of the ’828 Patent.”
(Davis Decl. II ¶¶ 60–61).
C4. In the Enjet Lawsuit, the jury found various defendants liable
for patent infringement3 (Davis Decl. II ¶ 62).

Other Evidence
D1. The second declaration of Mr. Davis also states: “The
commercial embodiment of that device (the Enjet device) is covered
by the ’828 Patent and is the one presently being sold and is
experiencing commercial success.” (Davis Decl. II ¶ 48).
D2. The second declaration of Mr. Davis further states: “In fact, the
Enjet device is highly regarded in the industry and has been wildly
successful with Eldridge’s customers.” (Davis Decl. II ¶ 49). In this
regard, the underlying testimony from the trial transcript states that
the Patent Owner has sold about 140 or 141 Enjets (id.).

3 In this regard, the record indicates that the defendants Jurong Shipyard Pte.
Ltd., Seadrill Americas Inc., Seadrill US Gulf LLC, and Atwood Defendants
were found to infringe claims 1, 13, 14, and 15 of the ’828 patent on three
rigs (L.C. Eldridge Sales Co., Ltd, Leseman Davis LLC v. Azen
Manufacturing Pte., Ltd., et al., Civil Action No. 6:11-cv-599-MHS (E.D.
Tex.), Verdict Form 2–4, affirmed, Appeal 2015-1143, R. 36 (Fed. Cir.
2015)).
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D3. Email of Mr. Gaitley of Transocean, dated January 3, 2012
forwards an email from declarant Mr. Davis to four individuals, the
email of Mr. Davis including a youtube video link to an Enjet
application (Req. Reopen, Exhibit N). The email of Mr. Gaitley
states: “Gents: In case you are still curious about the effectiveness of
the EnJets, here is a short video that I think you will find helpful. It
demonstrates a before and after effect.” (Id.).

Discussion
The Patent Owner argues that the above proffered evidence
demonstrates long-felt need (Req. Reopen 17–31), and copying (Req.
Reopen 31–34). Accordingly, the Patent Owner asserts that when the newly
submitted secondary evidence is considered, the evidence demonstrates
nonobviousness of claims 39–50 and 52 (Req. Reopen 14).
Establishing long-felt need requires objective evidence showing
existence of a persistent problem recognized by those of ordinary skill in the
art for which a solution was not known. In re Gershon, 372 F.2d 535, 538–
39 (CCPA 1967). The long-felt need must not have been satisfied by
another before the invention. Newell Co. v. Kenney Mfg. Co., 864 F.2d 757,
768 (Fed. Cir. 1988). Hence, the Patent Owner must present affidavits or
other factual evidence of “a failure of others to provide a feasible solution to
[a] long-standing problem” and evidence “that experts did not foresee” the
solution claimed. See In re Piasecki, 745 F.2d 1468, 1475 (Fed. Cir. 1984).
Satisfaction of a long-felt but unresolved need is not evidence of
nonobviousness unless it is shown that widespread efforts of skilled workers
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having knowledge of the prior art had failed to find a solution to the
problem. In re Allen, 324 F.2d 993, 997 (CCPA 1963); see also Toledo
Pressed Steel Co. v. Standard Parts, Inc., 307 U.S. 350, 356 (1939).
Finally, the invention must satisfy the long-felt need. In re Cavanagh, 436
F.2d 491, 496 (CCPA 1971).
As to the evidence of long-felt need, we are provided with statements
by both Mr. Leseman and Mr. Davis asserting that diesel engine exhaust
blowback has been a longstanding problem generally in all stationary
drilling rigs with diesel engine exhaust discharge (Stmnts A1, B2–B7).
However, in our review of the evidence, this testimony is not adequately
supported by objective evidence that establishes existence of a long-felt but
unresolved need.
The testimony of Mr. Leseman and Mr. Davis as to the specifically
identified offshore structure named Celtic Sea (Stmnt A2), and an
unidentified rig of GlobalSantaFe/Jurong (Stmnts B1, B3, B4) do establish
that diesel exhaust problems existed on these rigs. However, such
statements of the declarants and identification of two rigs having problems
with diesel exhaust are not very probative in establishing that there existed a
persistent problem recognized by those of ordinary skill in the art for which
a solution was not known, or that widespread efforts of skilled workers
having knowledge of the prior art had failed to find a solution to the
problem. In re Gershon, 372 F.2d at 538–39; In re Allen, 324 F.2d at 997;
see also Toledo Pressed Steel, 307 U.S. at 356.
In the above regard, there is minimal evidence in the record that two
rigs noted by the declarants are representative of conventional rigs in the
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industry such that diesel exhaust issues raised in these rigs would have been
recognized by those of ordinary skill in the art as being typical to rigs
generally. Indeed, evidence of record indicates that the offshore structure
named Celtic Sea originally was a hotel structure and the diesel exhaust
issues appears to have only developed upon its conversion (Leseman Decl.
¶ 9; Req. Init. Comnts 8). This evidence suggests that the problems on the
Celtic Sea were unique and not necessarily representative of a long-felt need
on other rigs.
In addition, the Patent Owner relied on the testimony of Mr. Bob
Dawson during the related litigation to assert that “diesel exhaust was a ‘big
problem.’” (PO Comnts 10, citing Req. Reopen, Exhibit B (Nov. 18 PM) at
55:4–22). However, Mr. Dawson’s testimony states:
The engine exhaust issue with the EXD design [of
GlobalSantaFe] had to do with the routing of the exhaust pipe
work and its termination on the centerline aft of the rig hull —
of the upper hull. And also the location of the aft lifeboat
stations were also in the same general area. And that when the
engines were running at low load, that it — there would be an
accumulation of — of soot and noxious gases in the area of the
aft lifeboat station, which was deemed to be unacceptable by
Global Santa Fe and by the U.S. Coast Guard.
(Req. Reopen, Exhibit B (Nov. 18 PM) at 53:21–54:6).

Mr. Dawson’s testimony further states:
It [i.e., diesel exhaust problem] occurred in this particular
design of rig, but it also occurs on many other rigs. We had a
similar issue with Global Santa Fe with the — with the
semisubmersible, the Glomar Celtic Sea. It’s — it's a common
issue. If the exhaust pipes are run aft and down from — from
the main deck, and at — at some point, depending on the wind
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direction, you will end up with — with the noxious fumes
coming back on the rig and affecting the work areas and — and
the living quarters.
(Req. Reopen, Exhibit B (Nov. 18 PM) at 55:4–22).
Thus, Mr. Dawson’s testimony is largely based on the above-noted rig
of GlobalSantaFe/Jurong, as well as the Celtic Sea rig already discussed, and
fails to provide further objective evidence as to the Patent Owner’s assertion
of long-felt need.
The Patent Owner further cites to an unapplied prior art reference,
arguing that:
over twenty years ago U.S. Patent No. 5,400,593 (Re-Open
Petition, Exh. D) explain[ed] the “common problem” of diesel
exhaust blowback on marine vessels due to noxious fumes and
the like.
Vessels with marine diesel engines share a
common problem in that the noxious fumes from
the exhaust emissions reach people aboard and in
the vicinity of the vessel; this problem is most
pronounced when wind currents carry the exhaust
fumes back onto the deck at start up or when the
vessel docks or moves about slowly. In addition to
being unpleasant, noxious fumes contain solid and
liquid particulates and volatile hydrocarbons from
partially combusted diesel oil fuel.
Re-Open Petition, Exh. D at col. 1, lns. 20–28.
(PO Comnts 10–11, quoting U.S. Patent No. 5,400,593, col. 1, ll. 20–28).
However, the referenced prior art patent appears to provide the
solution for the identified problem, and provides evidence that there are
multiple solutions to the diesel exhaust problem, depending on the
application. In that regard, other evidence of record indicates that viable
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solutions already exist such that there was no widespread efforts of skilled
workers having knowledge of the prior art to find a solution to the problem.
In re Allen, 324 F.2d 993, 997 (CCPA 1963). Specifically, there is no
dispute that rigs with diesel engines have been operating for decades. It is
also apparent that these rigs deal with diesel exhaust in one way or another,
probably using the various methods identified by the declarants themselves
such as using a smoke stack, redirecting the exhaust, and water washer
systems (Stmnts A3, B8). There is minimal evidence of record that such
solutions failed to address the diesel exhaust issues as asserted by the
declarants. Instead, the evidence appears to indicate that the solution for
addressing diesel exhaust issues depends upon the particular application of
the diesel engine and the configuration of its exhaust, as well as the design
of the rig. In our assessment of the evidence pertaining to long-felt but
unmet need, it appears that the invention of the ’828 patent is merely another
alternative method of addressing diesel exhaust issues that is more suitable
and effective in particular applications or situations.
In our view, what is required to adequately support the Patent
Owner’s assertion of long-felt but unfulfilled need, is a broader based
objective evidence establishing that the conventional techniques for dealing
with diesel exhaust is recognized by those in the art as being inadequate, and
evidence that widespread efforts were made by those skilled in the art
without satisfactory resolution.
Whereas the evidence proffered by the Patent Owner appears to
support the assertion that one or more conventional technique for dealing
with diesel exhaust gas was not effective in the couple of rigs identified by
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the declarants, such evidence is not adequate to extrapolate therefrom, that
there was a long-felt but unfulfilled need in the art. Instead of objective
evidence indicating a widely recognized problem that has not been solved,
we are merely presented with statements of two declarants who are also
interested parties to the subject ’828 patent, which, as noted above, is of less
probative value than objective evidence from disinterested parties.
Such evidence is inadequate to establish that there existed a persistent
problem recognized by those of ordinary skill in the art for which a solution
was not known, or that widespread efforts of skilled workers having
knowledge of the prior art had failed to find a solution to the problem. We
are in general agreement with the Requester (Req. Init. Comnts 7) that the
Enjet product appears to address a specific problem experienced by
particular rigs rather than a long-felt but unmet need. Indeed, whereas the
Patent Owner appears to assert non-obviousness based on the fact that no
other entities had a solution to the diesel exhaust problems present on
GlobalSantaFe, it could very well be that this was due to the fact that rigs
typically did not have the types of diesel exhaust problems experienced by
GlobalSantaFe, which could not remedied by conventional techniques for
dealing with diesel exhaust. Accordingly, we generally agree with the
Requester that:
There is no evidence that the problems experienced by
GlobalSantaFe . . . were typical in the industry for over thirty
years. As explained in the Requester's Original Brief and noted
above, rather than stemming from a long felt need, the Enjet
device was proposed in a day in response to a very urgent and
very specific need posed by GlobalSantFe.
(Req. Reply Comnts 5).
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Hence, in view of the above, the proffered evidence of long-felt but
unmet need is nominal and not very persuasive. Nevertheless, the evidence
does indicate that the Enjet device did satisfy an unmet need in a certain rig
design in which conventional methods for dealing with diesel exhaust issues
were ineffective, even if this need was not long-felt or broadly applicable to
all rigs with diesel engines.
In addition, “copying of a claimed invention can be evidence of
nonobviousness.” Pentec, Inc. v. Graphic Controls Corp., 776 F.2d 309,
317 (Fed. Cir. 1985). However, “[n]ot every competing product that
arguably falls within the scope of a patent is evidence of copying.
Otherwise every infringement suit would automatically confirm the
nonobviousness of the patent. Rather, copying requires the replication of a
specific product.” Iron Grip Barbell Co. Inc. v. USA Sports, Inc., 392 F.3d
1317, 1325 (Fed. Cir. 2004). Copying
may be demonstrated either through internal documents, see
Akamai Techs., Inc. v. Cable & Wireless Internet Servs., Inc.,
344 F.3d 1186, 1196-97 (Fed.Cir.2003); direct evidence such as
disassembling a patented prototype, photographing its features,
and using the photograph as a blueprint to build a virtually
identical replica, see Advanced Display Sys., Inc. v. Kent State
Univ., 212 F.3d 1272, 1285 (Fed.Cir.2000); or access to, and
substantial similarity to, the patented product (as opposed to the
patent), Cable Elec. Prods., Inc. v. Genmark, Inc., 770 F.2d
1015, 1027 (Fed.Cir.1985), overruled on other grounds by,
Midwest Indus., Inc. v. Karavan Trailers, Inc., 175 F.3d 1356,
1359 (Fed.Cir.1999) (en banc).

Iron Grip Barbell, 392 F.3d at 1325. In that regard, “more than the mere
fact of copying by an accused infringer is needed to make that action
significant to a determination of the obviousness issue.” Cable Elec. Prods.
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v. Genmark, Inc., 770 F.2d 1015, 1028 (Fed. Cir. 1985); see also In re
GPAC, 57 F.3d 1573, 1580 (Fed. Cir. 1995).
The evidence proffered by the Patent Owner does not persuasively
establish copying of the Enjet device. Iron Grip Barbell, 392 F.3d at 1325.
In particular, an illustration of the Enjet device shown in the Request to
Reopen, which substantially mirrors Figure 4 of the ’828 patent, is
reproduced below.

(Request to Reopen, Exhibit L).
The drawing reproduced above shows a side profile view of the
Patent Owner’s Enjet device.

In contrast, the device that is asserted by the Patent Owner as being a
copy of the Enjet device is shown in Requester’s Initial Comments.
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(Req. Init. Comnts, Exhibit J).
The drawing reproduced above shows a side profile view of the
device (“Azen’s Design”) alleged to be a copy of the Enjet
device.

As can be seen from the above reproduced illustrations, the Enjet
device and Azen’s design are different from each other. Specifically, Enjet
utilizes a larger air intake pipe and a smaller diesel exhaust pipe that is
concentrically mounted within the larger air intake pipe. The method claims
39–50 and 52 presently still subject to reexamination reflect this
construction in that independent claims 39 and 52 include language
requiring an annular region between the concentrically mounted pipes. For
example, in independent claim 39, “a conduit disposed within and coupled to
the housing such that an annular region is defined between an inside surface
of the housing and an outside surface of the conduit.” Independent claim 52
includes similar language.
In contrast, Azen’s Design does not utilize concentric pipes, but
instead, utilizes a wye duct to combine the ambient air in a smaller air intake
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pipe into the larger diesel exhaust pipe (see Req. Init. Comnts 12–13).
Accordingly, Azen’s Design does not even include an annular region.
Nonetheless, the proffered evidence does indicate access by Jurong to
the patented product via the drawings of the Enjet device, and “copying” in
the general sense that the drawings were referenced in designing a device
that functions similarly to the Enjet device (Stmnts C1, C2). However, as to
the actual copying of the device, additional testimonial evidence in the
transcripts of the related infringement trial also establishes that specific
effort was made to avoid copying of the illustrated Enjet device (Req. Init.
Comnts 13–14, Exhibit B, testimony of Lee at 110:18–111:16). Indeed, the
evidence also indicates that in an effort to avoid copying, “Azen developed a
different solution using a well-known prior art wye duct, referring to well-
known standard industry sources,” thereby resulting in the apparent
differences between the Enjet drawing and Azen’s Design (Req. Init.
Comnts 14, Exhibit E, testimony of Meng at 164:13–165:6; see also Req.
Reply Comnts 8).
While Azen’s Design was ultimately determined to infringe the device
claims 1, 13, 14, and 15 of the ’828 patent in the related litigation, as noted
above, this infringement determination is not determinative of copying. Iron
Grip Barbell, 392 F.3d at 1325. The infringement determination simply
establishes that despite the effort to design a different device, the resultant
Azen device fell within the scope of these claims of the ’828 patent that do
not require the concentric construction or the annular region recited by the
presently reexamined method claims.
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As to the additional secondary considerations evidence noted above,
we observe that commercial success has been alleged (Stmnt D1, D2).
However, little actual evidence has been provided in support thereof. While
the record indicates that approximately 141 Enjet units have been sold, we
are not provided with proof “that the sales were a direct result of the unique
characteristics of the claimed invention-as opposed to other economic and
commercial factors unrelated to the quality of the patented subject matter.”
In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996). In addition, there is no
indication in the record indicating that approximately 141 Enjet units is
commercially successful in the relevant market. See id. (a very weak
showing of commercial success, if any, is shown where there is no
indication of whether the number of units sold represents a substantial
quantity in the relevant market); see also In re Baxter Travenol Labs., 952
F.2d 388, 392 (Fed.Cir.1991) (“[I]nformation solely on numbers of units
sold is insufficient to establish commercial success.”); Kansas Jack, Inc. v.
Kuhn, 719 F.2d 1144, 1150–51 (Fed. Cir. 1983) (“There was no evidence of
market share, of growth in market share, of replacing earlier units sold by
others or of dollar amounts, and no evidence of a nexus between sales and
the merits of the invention. Under such circumstances, consideration of the
totality of the evidence, including that relating to commercial success, does
not require a holding that the invention would have been nonobvious at the
time it was made to one skilled in the art.”).
In this regard, it is our understanding that each rig utilizes six to eight
diesel engines (Req. Init. Comnts 9). It is unclear from the evidence how
many rigs utilized the Enjet device, or whether this undetermined number is
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significant in the market, which we understand, includes over 800 rigs (id.
citing Testimony of Leseman AM at 122:3–123:5). As the Requester notes,
this translates into installation of the Enjet device in approximately 3% of oil
rigs in operation. Moreover, the Patent Owner also does not direct our
attention to where it provided information as to the value of these sales, and
sale trends over time that could potentially bolster the assertion of
commercial success.
While the Patent Owner asserts that the Enjet device was featured in
the industry publication Multi-Purpose Progress, European Oil & Gas,
Issue 3 (2008) (Davis Decl. II ¶ 50), this assertion is not persuasive. As the
Requester observers, the article about MPF Corp. Ltd. does not appear to
make reference to the Enjet device and the insert discussing the Enjet device
is set apart from the article, the insert concluding with sales contact
information for the Patent Owner, such that the insert appears actually to be
an advertisement (see Req. Init. Comnts 11).
Finally, the email of Mr. Gaitley forwarding the video link provided
by declarant Mr. Davis (Stmnt D4) provides further support to the efficacy
of the Enjet device. However, the email does not establish that dealing with
diesel exhaust was a long-felt but unmet need, or that other conventional
methods for dealing with diesel exhaust, such as those identified by the
Patent Owner, failed to provide alternative solutions.
Therefore, upon reconsidering the question of obviousness anew, and
in particular, by preponderance of the evidence of obviousness and the
proffered secondary considerations evidence, we are in agreement with the
Examiner’s Determination that claims 39–50, and 52 are obvious. The
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proffered evidence of long-felt but unmet need, and evidence of commercial
success, are nominal. While the evidence does indicate some copying in the
sense that a competing device was designed, that evidence, in our opinion, is
inadequate to demonstrate unobviousness. In summary, on balance, the
limited secondary considerations evidence fails to persuade us that the
claims are unobvious and patentable. In this regard, we note that secondary
considerations are only a part of the “totality of the evidence”; its mere
existence does not control the conclusion of obviousness. Richardson-Vicks
Inc. v. Upjohn Co., 122 F.3d 1476, 1483 (Fed. Cir. 1997).

CONCLUSION
In view of the Decision on Petition, the rejection of claims 1–15 of the
’828 patent in the ’8672 Decision is hereby withdrawn. Based on the
preponderance of the evidence, the rejection of claims 39–50, and 52 as
being obvious and unpatentable is maintained.

In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and
appealable under 37 C.F.R. § 41.81, a party seeking judicial review must
timely serve notice on the Director of the United States Patent and
Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983.

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cc:

For PATENT OWNER:
SUTTON McAUGHAN DEAVER, PLLC
3 Riverway, Suite 900
Houston, TX 77056

For THIRD PARTY REQUESTER:
SCHWEGMAN, LUNDBERG & WOESSNER, P.A.
P.O. Box 2938
Minneapolis, MN 55402