FLIR Systems, Inc.v.LEAK SURVEYS, INC.

Patent Trials and Appeals Board

Sep 5, 2014

13462609 - (D) (P.T.A.B. Sep. 5, 2014)

Trials@uspto.gov Paper 10
571-272-7822 Entered: 5 September 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

FLIR Systems, Inc.,
Petitioner,
v.
Leak Surveys, Inc.,
Patent Owner.
__________

Case IPR2014-00411 (Patent 8,426,813 B2)1
Case IPR2014-00434 (Patent 8,193,496 B2)
Case IPR2014-00608 (Patent 8,426,813 B2)
Case IPR2014-00609 (Patent 8,193,496 B2)

Before FRED E. McKELVEY, JAMES T. MOORE, and
TREVOR M. JEFFERSON, Administrative Patent Judges.

McKELVEY, Administrative Patent Judge.

DECISION
Institution of Inter Partes Review
37 C.F.R. § 42.108

1 This Decision addresses issues, some (but not all) of which are similar in
all four cases. We exercise our discretion to issue a single Decision to be
filed in each case. The parties are not authorized to use this style heading
for any subsequent papers.

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FLIR Systems, Inc. (“Petitioner”) seeks to institute four inter partes
reviews.
A first petition in IPR2014-00411 (“IPR ʼ411”) and a second petition
in IPR2014-00608 (“IPR ʼ608”) each seek inter partes review of claims 1-58
(all of the claims) of U.S. Patent No. 8,426,813 B2 (“the ʼ813 patent”).
35 U.S.C. § 311; IPR ʼ411 (Paper 2); IPR ʼ608 (Paper 2).
A third petition in IPR-2014-00434 (“IPR ʼ434”) and a fourth petition
in IPR2014-00609 (“IPR ʼ609”) each seek inter partes review of claims 1-7
and 9-20 (all the claims except claim 8) of U.S. Patent No. 8,193,496 B2
(“the ’496 patent”). 35 U.S.C. § 311; IPR ʼ434 (Paper 2); IPR ʼ609
(Paper 2).
Leak Systems, Inc, (“Patent Owner”) filed a Patent Owner’s
Preliminary Response in each IPR setting forth reasons why it believes an
inter partes review should not be instituted. 35 U.S.C. § 313; IPR ʼ411
(Paper 6 corrected by Paper 8); IPR ʼ608 (Paper 6 corrected by Paper 8);
IPR ʼ434 (Paper 6); IPR ʼ609 (Paper 7).
The Director has jurisdiction to determine whether an inter partes
review shall be instituted. 35 U.S.C. § 314.
The Director has delegated to the Patent Trial and Appeal Board
(“Board”) authority to decide whether an inter partes review should be
instituted. 37 C.F.R. § 42.4.
I. BACKGROUND
A. Related Matters
The parties are involved in a civil action in which we understand
Leak Surveys, Inc., alleges that FLIR Systems, Inc., infringes the two
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patents involved in these IPRs. Leak Surveys, Inc. v. FLIR Systems, Inc.,
Civil Action No. 3:13-cv-02897-L (N.D. Tex. July 25, 2013). IPR ʼ411,
Paper 2, 1.
We understand that a complaint filed on July 25, 2013 was served on
October 24, 2013.
B. Standard for Instituting inter partes Review
The standard for instituting an inter partes review is set forth in
35 U.S.C. § 314(a):
THRESHOLD.—The Director may not authorize an inter
partes review to be instituted unless the Director determines
that the information presented in . . . [a] petition filed under
section 311 and any response filed under section 313 shows that
there is a reasonable likelihood that the petitioner would prevail
with respect to at least 1 of the claims challenged in the petition.

C. The ʼ813 Patent
The ʼ813 patent is based on an application which is a continuation of
the application which matured into the ʼ496 patent. IPR ’411, Ex. 1001,
1:6-9.
The ʼ813 patent relates to an infrared (“IR”) camera system which can
be used to visually detect and identify chemical, gas, and petroleum product
leaks. IPR ’411, Ex. 1001, 1:27-29, 28:44-67.
The subject matter of the ʼ813 patent is readily understood by
reference to its drawings and claim 1.
D. ʼ813 patent claim
Figs. 1, 2, and 21 of the ʼ813 patent are reproduced below.

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Fig. 1 depicts a perspective view of a chemical leak detection system.

Fig. 2 depicts a schematic of an infrared camera system of Fig. 1.
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Fig. 21 depicts an inspector using a chemical leak detection system.
With reference to Figs. 1, 2, and 21, claim 1 of the ʼ813 patent reads
[drawing element numbers in bold, matter within brackets, and some
indentation added]:
A system 20 for producing a visible image of a leak [not
shown] of any one or more chemicals of a group of chemicals,
the leak emanating from a component, including:
[1] a passive infrared camera system 22 including:
[1.1] a lens assembly 40 including a lens 38;
[1.2] a refrigerated portion 42 including an interior;
[1.3] an infrared sensor device 44 located in the
interior of the refrigerated portion 42;
[1.4] a single filter configuration located in the
interior of the refrigerated portion 42 and
including an optical bandpass filter 46 fixed
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along an optical path between the lens
assembly 40 and the infrared sensor device
44;
[1.5] a refrigeration system 60 that can cool the
interior of the refrigerated portion 42;
wherein at least part of the pass band
for the single filter configuration 46 is
within an absorption band for each of the
chemicals;
wherein the aggregate pass band for
the single filter configuration 46 is at least
about 100 nm; and
[1.6] a processor 54 that can process a signal
representing the filtered infrared image captured by the
infrared sensor device 44 to produce a visible image 30
of the chemical emanating from the component under
variable ambient conditions of the area around the leak.
The reader should understand that by adding drawing element
numbers to reproduced claim 1, we do not imply that claim 1 is
limited to the embodiments shown in the accompanying drawings; we
have added the numbers solely for ease of reference.
E. The ’496 patent
The application which matured into the ʼ496 patent is the parent of the
application which matured into the ʼ813 patent. IPR ’411, Ex. 1001, 1:6-9.
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The ʼ496 patent relates to a method of using an IR camera system to
visually detect and identify chemical, gas, and petroleum product leaks.
IPR ’434, Ex. 1001, 1:25-27, 28:41–29:8.
The drawings and written description portion of the Specification of
the ʼ496 patent are essentially the same as the drawings and written
description portion of the Specification of the ʼ813 patent.
With reference to the written description portion of the Specification
and Figs. 1, 2, and 21, claim 1 of the ʼ496 patent reads [drawing element
numbers, matter within brackets, and some indentation added]:
A method of visually detecting a gas leak of any
one or more chemicals of a group of predetermined
chemicals, the gas leak emanating from a component 120
of a group of components in different locations, the
method comprising:
[1] aiming [col. 13:6-7] a passive infrared camera
system 22 towards the component 120, wherein the passive
infrared camera system 22 comprises:
[1.1] a lens 38;
[1.2] a refrigerated portion 42 defined by the
interior of a Dewar flask [col. 5:43-44], the refrigerated portion
42 comprising therein:
[1.21] an infrared sensor device 44; and
[1.22] a single filter configuration
comprising at least one fixed optical bandpass filter 46, each
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filter 46 fixed along an optical path between the lens 38, 40 and
the infrared sensor device 44,
wherein at least part of the aggregate pass band for the
single filter configuration 46 is with in absorption band for each
of the predetermined chemicals and
wherein the aggregate pass band for the single filter
configuration 46 is at least about 200 nm; and
[1.3] a refrigeration system adapted to cool the
refrigerated portion 42, the refrigeration system 60 comprising
a closed-cycle Stirling cryocooler [col. 6:6-9];
[2] filtering [col. 13:12-14] an infrared image associated
with the area of the gas leak under normal operating and
ambient conditions for the component with at least one optical
bandpass filter 46;
[3] receiving [col. 13:14-17] the filtered infrared image
of the gas leak with the infrared sensor device 44;
[4] electronically processing [col. 13:17-22] the filtered
infrared image received by the infrared sensor device to provide
a visible image of the gas leak under variable ambient
conditions of the area around the leak; and
[4] visually detecting [col. 13:22-26] the leak based
on the visible image [col. 13:21; Fig. 23A (not reproduced);
col. 21:22-26] under the variable ambient conditions.
The reader should understand that by adding drawing element
numbers and references to the Specification to reproduced claim 1, we
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do not imply that claim 1 is limited to the embodiments shown in the
accompanying drawings; we have added the numbers solely for ease
of reference.
F. Prior Art Relied Upon
Petitioner relies on four references, alone or in combination with other
references, in support of grounds of unpatentability alleged in the four
Petitions.
1. Four References
Exhibit2 Name Identification Date

Ex. 1012

Kulp
Remote Imaging of Controlled Gas
Release using Active and Passive
Infrared Imaging Systems, 3061
SPIE 269

1997

Ex. 1007

Merlin
Brochure
Indigo Systems Corporation: The
Ultimate Combination of Flexibility
and Value in High-Performance
Infrared Cameras (Rev. A 1/02)

©2002

Ex. 1009

Smith
Gas Detection Using a High
Quantum Efficiency, 2-D IR InSb
Staring Array, 2552 PROC. SPEI,
INFRARED TECHNOLOGY XXI 667

1995

Ex. 1010

Kanagawa
Flammable Imaging System Using
Infrared Absorption, INT’L GAS
RESEARCH CONFERENCE 1058-67

1995

2 The Exhibit Numbers are the same in all four IPRs.

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2. Other References
Exhibit3 Name Identification Date

Ex. 1008

Strachan
Imaging of Hydrocarbon Vapours
and Gases by Infrared
Thermography, 18 J. PHYS. E: SCI.
INSTRUM. 492-498

1985

Ex. 1011

Merlin User’s
Guide
Indigo Systems Corporation,
MERLIN-MID, INSB MWIR
CAMERA, USER’S GUIDE, Version
1.10, 414-0001-10

No date
IPRs
’411
& ’608
Ex. 1013

Althouse
Chemical Vapor Detection with a
Multispectral Thermal Imager,
30 OPTICAL ENGINEERING 1725

1991
IPRs
’411
& ’608
Ex. 1014

OCLI
OPTICAL COATING LABORATORY,
INC. SPECTRABAND STOCK
PRODUCTS CATALOG, Vol. 5

1994
IPRs
’411
& ’608
Ex. 1017

Spectrogon
SPECTROGON CATALOG
OF BANDPASS
FILTERS

2001
IPRs
’411
& ’608
Ex. 1018

Piety et al.
(“Piety”)

U.S. Patent No. 5,386,117

1995
IPR ’411

Ex. 1019

Sandsten
Real-Time Gas-Correlation
Imaging Employing Thermal
Background Radiation, 6 OPTICS
EXPRESS 92

2000

3 Except where noted, Exhibit Numbers are the same in all four IPRs.
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Exhibit3 Name Identification Date
IPRs
’434 &
’609
Ex. 1013
Brengman
et al.
(“Brengman”)

U.S. Patent No. 3,662,171

1972
IPRs
’434 &
’609
Ex. 1014

Hart

U.S. Patent No. 6,056,449

2000

G. Asserted Grounds
1. IPR ʼ411—ʼ813 patent
(a) ʼ411 Ground A
Claims 1-3, 6, 10, 12-15, 18, 21, 23, 33, 35, 37, 45, 46, 48, and 51 are
alleged to be unpatentable under § 102(b) as anticipated by Kulp (Ex. 1012).
IPR ʼ411, Paper 2, 9, 16 (not instituted).
(b) ʼ411 Ground B
Claims 25-32, 34, and 38-44 are alleged to be unpatentable under
§ 103(a) over Kulp (Ex. 1012) and Spectrogon (IPR ’411, Ex. 1017).
IPR ʼ411, Paper 2, 9, 24 (not instituted).
(c) ʼ411 Ground C
Claims 24, 36, and 57 are alleged to be unpatentable under § 103(a)
over Kulp (Ex. 1012) and OCLI (IPR ʼ411, Ex. 1014). IPR ʼ411, Paper 2, 9,
31 (not instituted).
(d) ʼ411 Ground D
Claims 1-4, 6, 8-22, 31, 37-40, 42-56, and 58 are alleged to be
unpatentable under § 103(a) over the Merlin Brochure (Ex. 1007) and
Strachan (Ex. 1008). IPR ʼ411, Paper 2, 9, 34 (instituted).
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(e) ʼ411 Ground E
Claims 5 and 7 are alleged to be unpatentable under § 103(a) over
Merlin Brochure (Ex. 1007), Strachan (Ex. 1008), and Piety (IPR ʼ411,
Ex. 1018). IPR ʼ411, Paper 2, 9, 54 (instituted).
2. IPR ʼ608—ʼ813 patent
(a) ʼ608 Ground A
Claims 1, 10, 11, 13, 15, 23, 37, 38, 46, and 48 are alleged to be
unpatentable under § 102(b) as anticipated by Smith (Ex. 1009). IPR ʼ608,
Paper 2, 5, 13 (not instituted).
(b) ʼ608 Ground B
Claims 1-3, 10, 11, 13-15, 21, and 54 are alleged to be unpatentable
under § 102(b) as anticipated by Kanagawa (Ex. 1010). IPR ʼ608, Paper 2, 5,
21 (not instituted).
(c) ʼ608 Ground C
Claims 4-7 and 17 are alleged to be unpatentable under § 103(a)
over Kanagawa (Ex. 1010) and Piety (Ex. 1018). IPR ʼ608, Paper 2, 5, 29
(not instituted).
(d) ʼ608 Ground D
Claims 25-35, 41, and 44 are alleged to be unpatentable under
§ 103(a) over Smith (Ex. 1009) and Spectrogon (IPR ʼ608, Ex. 1017).
IPR ʼ608, Paper 2, 6, 32 (not instituted).
(e) ʼ608 Ground E
Claims 24, 36, and 57 are alleged to be unpatentable under § 103(a)
over Smith (Ex. 1009) and OCLI (IPR ʼ608, Ex. 1014). IPR ʼ608, Paper 2, 6,
38 (not instituted).
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(f) ʼ608 Ground F
Claims 8-14, 16-22, 50-54, 56, and 58 are alleged to be unpatentable
under § 103(a) over Smith (Ex. 1009) and the Merlin Brochure (IPR ʼ608,
Ex. 1007). IPR ʼ608, Paper 2, 6, 40 (not instituted).
(g) ʼ608 Ground G
Claims 31, 39, 40, 42, 43, 45, 47, 49, and 55 are alleged to be
unpatentable under § 103(a) over Smith (Ex. 1009) and Strachan (Ex. 1008).
IPR ʼ608, Paper 2, 6, 51 (not instituted).
3. IPR ʼ434—ʼ496 patent
(a) ʼ434 Ground A
Claims 1-5 and 9-20 are alleged to be unpatentable under § 103(a)
over Merlin Brochure (Ex. 1007) and Strachan (Ex. 1008). IPR ʼ434,
Paper 2, 7, 14 (instituted).
(b) ʼ434 Ground B
Claim 6 is alleged to be unpatentable under § 103(a) over the Merlin
Brochure (Ex. 1007), Strachan (Ex. 1008), and Brengman (IPR ʼ434,
Ex. 1013). IPR ʼ434, Paper 2, 8, 48 (instituted).
(c) ʼ434 Ground C
Claim 7 is alleged to be unpatentable under § 103(a) over the Merlin
Brochure (Ex. 1007), Strachan (Ex. 1008), and Hart (IPR ʼ434, Ex. 1014).
IPR ʼ434, Paper 2, 8, 50 (instituted).
4. IPR ʼ609—ʼ496 patent
(a) ʼ609 Ground A
Claims 1, 11, 15, and 18 are alleged to be unpatentable under § 102(b)
as anticipated by Smith (Ex. 1009). IPR ʼ609, Paper 2, 5, 14 (not instituted).
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(b) ʼ609 Ground B
Claims 1, 11, 15, and 16 are alleged to be unpatentable under § 102(b) as
anticipated by Kanagawa (Ex. 1010). IPR ʼ609, Paper 2, 5, 25 (not
instituted).
(c) ʼ609 Ground C
Claim 1-5, 9-16, and 18 are alleged to be unpatentable under § 103(a)
over Smith (Ex. 1009) and the Merlin Brochure (Ex. 1007). IPR ʼ609,
Paper 2, 6, 31 (not instituted).
(d) ʼ609 Ground D
Claims 1-5 and 9-16 are alleged to be unpatentable under § 103(a)
over Kanagawa (Ex. 1010) and the Merlin Brochure (Ex. 1007). IPR ʼ609,
Paper 2, 6, 41 (not instituted).
(e) ʼ609 Ground E
Claim 6 is alleged to be unpatentable under § 103(a) over (1) Smith
(Ex. 1009) or Kanagawa (Ex. 1010), (2) the Merlin Brochure (Ex. 1007),
and (3) Brengman (IPR ʼ609, Ex. 1013). IPR ʼ609, Paper 2, 6, 44 (not
instituted).
(f) ʼ609 Ground F
Claim 7 is alleged to be unpatentable under § 103(a) over (1) Smith
(Ex. 1009) or Kanagawa (Ex. 1010), (2) the Merlin Brochure (Ex. 1007),
and (3) Hart (IPR ʼ609, Ex. 1014). IPR ʼ609, Paper 2, 6, 45 (not instituted).
(g) ʼ609 Ground G
Claims 17-20 are alleged to be unpatentable under § 103(a) over
(1) Smith (Ex. 1009) or Kanagawa (Ex. 1010), (2) the Merlin Brochure
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(Ex. 1007), and (3) Strachan (Ex. 1008). IPR ʼ609, Paper 2, 6, 47 (not
instituted).
H. Claim Interpretation
In an inter partes review, claims of an unexpired patent are interpreted
using the “broadest reasonable construction in light of the specification of
the patent in which the claims appear.” 37 C.F.R. § 41.100(b); see also
Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14,
2012).
Petitioner proposes construction of several limitations in the two
involved patents and the Patent Owner proposes counter constructions of
those limitations.
1. “Leak” and “gas leak”
Petitioner argues that “leak” should be defined as any chemical
emission including (1) an unwanted (“fugitive”) chemical emission and
(2) a known (“non-fugitive”) chemical emission, such as a chemical gas
emission from an exhaust outlet of an airplane or a smokestack. IPR ’411,
Paper 2, 12; IPR ’434, Paper 2, 10.
Language in both the ʼ813 patent and the ʼ496 patent supports
Petitioner’s position.
For example, the ʼ813 patent reveals that:
An embodiment of the invention may be used to
inspect any of a wide variety of components having . . .
[a] chemical . . . of interest . . ., including (but not limited
to) a pipe, a compressor, . . . a flare, an exhaust outlet, . . .
a vent for a blow-off valve . . . .

IPR ʼ411, Ex. 1001, 12:17-25.
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The Patent Owner counter-argues that “[u]nintended emissions are
leaks” and that “[k]nown emissions, exhaust and flames that come as
intended, are not.” IPR ’411, Paper 6, 16.
In support of its counter-argument, the Patent Owner calls attention to
the following in the ʼ813 patent and the ʼ496 patent:
Prior infrared systems designed for evaluating
rocket fumes, for example, would provide an unfocused
and fuzzy image, in which it was difficult to make out
background objects. For example, using an infrared
camera that images a broad range of infrared
wavelengths (e.g., 3-5 microns) typically will not be
useful in detecting small leaks. One system uses a
variable filter that scans through different bandwidths in
an attempt to identify the bandwidth of the strongest
intensity (as quantified by the system). The purpose of
this system was an attempt to identify the chemical
make-up of a rocket exhaust based on the wavelength at
which the intensity was greatest for the rocket plume.
However, this system is not designed to provide a
focused visual image to view the rocket exhaust.

IPR ʼ411, Ex. 1001, 1:60–2:7.
Based on a description involving the use of a prior art camera for
investigating rocket exhaust, the Patent Owner asserts that “[t]he
background of the invention identifies a different application of IR cameras,
and identifies why . . . [the prior art IR cameras] did not work for leak
detection.” IPR ʼ411, Paper 6, 15.
Whatever shortcomings the prior art IR cameras may have had for
detecting “fugitive” emissions, it appears those shortcomings were overcome
given that the apparatus described in the Specifications of the two involved
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patents are said to be useful for detecting chemicals in flares and exhaust
outlets. IPR ʼ411, Ex. 1001, 12:22; IPR ʼ434, Ex. 1001, 12:22.
On the record before us, we agree with Petitioner that “leak” is broad
enough to include both fugitive and non-fugitive emissions.
2. “Produce a visible image of the chemical
emanating from the component under variable
ambient conditions of the area around the leak”

According to Petitioner, “variable ambient conditions of the area
around the leak” means “any change in the environmental conditions, e.g.,
temperature, of the area around the gas leak.” IPR ʼ411, Paper 2, 14; IPR
ʼ434, Paper 2, 12.
According to the Patent Owner, a person having ordinary skill in the
art
would understand from the specification and claims [of
either involved patent] that (a) the system must produce
an image of the leak emanating from the component
routinely, not sporadically; and (b) when no ambient
conditions around the leak are controlled, not under
uniform laboratory conditions with uniform background
temperature.

IPR ʼ411, Paper 6, 16-17.
The Patent Owner goes on to say:
Variable ambient conditions of the area around the leak
in which the claimed system must function includes
uncontrolled changes in sunlight, cloud cover, IR
absorption and emissivity in the background, humidity,
wind, etc.

IPR ʼ411, Paper 6, 17.
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On the record before us, we find that a person having ordinary
skill in the art would understand that the claimed system and method
would typically be used outdoors where environmental conditions
change at the point where a leak may occur. For example, in the
summer, a leak may occur at 85 ºF., whereas in the winter the leak
may occur at 45 ºF. The system and method are designed to detect the
leak under either temperature. Likewise, an exhaust temperature may
vary depending on conditions.
On the record before us, we find that “produce a visible image of the
chemical emanating from the component under variable ambient conditions
of the area around the leak” means “being able to produce a visible image
under the ambient conditions of the area around the leak.” Ambient
conditions can vary depending, inter alia, on the weather.
II. ANALYSIS
Upon consideration of the Petitions and the Patent Owner’s
Preliminary Responses, we institute on some of the grounds urged by
Petitioner and decline to institute on all other grounds urged by Petitioner.
A. Prior Art Status of the Merlin Brochure (Ex. 1007)
Patent Owner maintains that Petitioner has failed to establish that the
Merlin Brochure (IPR ʼ411, Ex. 1007) is prior art. IPR ʼ411, Paper 6, 29;
IPR ʼ608, Paper 6, 34.
According to Patent Owner, the Merlin Brochure is an “undated
reference.” IPR ʼ411, Paper 6, 29.
The Merlin Brochure contains a Copyright notice date of 2002.
IPR ʼ411, Ex. 1007, 00006 (“Features and specifications subject to change
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without notice. ©2002 Indigo Systems Corp. All rights reserved. Rev A
1/02”).
On the record before us, we are persuaded that the Copyright notice
prima facie establishes a prior art date of 2002.
Because there is a Copyright notice, we need not reach the Patent
Owner’s arguments related to Mr. Roy D. Malmberg’s testimony relating to
website access. IPR ʼ411, Paper 6, 29-30; IPR ʼ608, Paper 6, 35-37; IPR
ʼ434, Paper 6, 24-27; IPR ʼ609, Paper 6, 35-36.
B. Prior Art Status of the Merlin User’s Guide (Ex. 1011)
In support of its unpatentability arguments, in addition to relying on
the Merlin Brochure, Petitioner also relies on a document identified as
“Indigo Systems Corporation, ‘Merlin-MID, InSb MWIR Camera,User’s
Guide,’ Version 1.10, 414-0001-10” (IPR ʼ411, Ex. 1011) (Merlin User’s
Guide). See, e.g., IPR ʼ411, Paper 2, iii, 42 n.34.
The Patent Owner maintains that Petitioner has failed to establish that
the Merlin User’s Guide is prior art. IPR ʼ411, Paper 6, 30.
Unlike the Merlin Brochure, it appears that the Merlin User’s Guide
does not contain a publication or Copyright date.
To establish the prior art status of the Merlin User’s Guide, Petitioner
relies on the testimony of Mr. Malmberg (Ex. 1016).
According to Mr. Malmberg:
7. The Merlin User’s Guide is a user guide that
describes the Merlin-MID camera sold by Indigo in at
least the 2000 to 2004 timeframe. The Merlin User’s
Guide document was distributed to customers with the
Merlin-MID camera. The Merlin-MID camera was being
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offered for sale when I joined the company in June of
2000.

8. The Merlin User’s Guide was also available for
download directly from Indigo’s website when I joined
the company in June of 2000.

On the record before us, the Patent Owner presents no convincing
challenge to the paragraph 7 statements.
Mr. Malmberg was an Indigo employee in the 2000-2004 timeframe.
Ex. 1016, ¶ 1.
At some point during that employment, Mr. Malmberg was “Sales
Manager.” Ex. 1016, ¶ 2.
According to Mr. Malmberg, in the 2000-2004 timeframe:
The Merlin User’s Guide is a user guide that describes
the Merlin-MID camera sold by Indigo in at least the
2000 to 2004 timeframe. The Merlin User’s Guide
document was distributed to customer with the Merlin-
MID camera.

On the record before us, we hold that Petitioner has made a
threshold showing that the Merlin User’s Guide was a printed
publication within the meaning of 35 U.S.C. § 102(b) during the 2000
to 2004 timeframe.
We do not rely on the paragraph 8 statements.
C. Elements in the Refrigeration Portion
1. Patent Owner’s Preliminary Responses
In its Preliminary Responses, the Patent Owner maintains that
Petitioner has failed to establish that Kulp, the Merlin Brochure, Smith, and
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Kanagawa describe a refrigeration portion having located therein both (1) an
infrared sensor and (2) a single configuration filter.
We agree with the Patent Owner with respect to Kulp, Smith, and
Kanagawa, but disagree with respect to the Merlin Brochure.
2. IPR ʼ411—Kulp
We agree with the Patent Owner that “[t]he [ʼ813 patent] claim
requires the filter being ‘located in the interior of the refrigerated portion’,
the same ‘interior’ location as the previously recited infrared sensor.”
IPR ʼ411, Paper 6, 23. See also IPR ʼ411, Paper 6, 2: “The ʼ813 [patent]
expressly locates the filter configuration together with the infrared sensor
device ‘in the interior of the refrigerated portion.’”
The Patent Owner goes on to say that “[b]y failing to disclose the
exact location of the cold filter within the four corners of the reference, Kulp
fails . . . to set forth each and every feature arranged as recited in the claims
and therefore fails to anticipate.” IPR ʼ411, Paper 6, 24 (emphasis omitted).
Petitioner acknowledges that:
[w]hile Kulp does not expressly mention a “refrigeration
portion,” Kulp discloses a cold filter and a detector array
[, i.e., an IR sensor a/k/a an infrared sensor,] that is
cooled to 20K, which means that a refrigeration portion
is necessarily present to cool the filter and array.

IPR ʼ411, Paper 2, page 17.
In support of its “inherency” position, Petitioner relies on
Declaration testimony of Dr. Jonas Sandsten. IPR ʼ411, Ex. 1006.
According to Dr. Sandsten:
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While Kulp does not expressly mention a “refrigeration
portion,” Kulp discloses a cold filter and a detector array
that is cooled to 20K. A refrigeration portion is therefore
necessarily present in Kulp to cool the filter and array.

IPR ʼ411, Ex. 1006, ¶ 56 (pages 20-21).
Part of a claim chart forming part of Dr. Sandsten’s testimony,
indicates the following (emphases omitted):
a refrigerated portion including an
interior;
Kulp discloses use of a cooled filter,
as well as a 20K operating
temperature of the Ga:Si focal plane
array (FPA) [i.e., infrared sensor].
(Kulp, pp. 270-271, Table 1). A
refrigeration portion is necessarily
present in Kulp to cool the filter and
array.
an infrared sensor device located in
the interior of the refrigerated
portion;
Kulp discloses a 128 x 128 Ga:Si
detector array. (Kulp, p. 271,
Table 1). The detector array is
located in the interior of the
refrigerated portion because Kulp
discloses that the detector array is
cooled to 20K. (Kulp, p. 271,
Table 1).
a single filter configuration located
in the interior of the refrigerated
portion and including an optical
bandpass filter fixed along an optical
path between the lens assembly and
the infrared sensor device;
Kulp discloses a single filter
configuration that includes at least
one fixed, and cooled, optical filter.
(Kulp, p. 270). The filter is located
in the interior of the refrigerated
portion between the lens and detector
array because Kulp discloses that the
filter is a cooled filter.

IPR ʼ411, Ex. 1006, 21-22.

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We note that Kulp states:
The passive imager was a 128x128 Ga:Si focal-
plane array (FPA) [i.e., infrared sensor,] that was
obtained from Amber, Inc. (Goleta, CA) and has a
spectral response range of 3-18 µm. Other specifications
of the array are listed in Table 1 [reproduced below].
During operation, the camera was fitted with a cold-filter
that passes a narrow band of wavelengths that overlap the
absorption band of sulfur hexafluoride, as shown in Fig.
2 [reproduced below]. The gas emission was imaged
onto the FPA using an f/2 germanium lens.

IPR ʼ411, Ex. 1012, 270.
The following is described in Table 1 of Kulp (page 271):

Fig. 2 of Kulp is reproduced below.
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Fig. 2 depicts a plot of the passive imager bandpass
at 20K and the sulfur hexafluoride absorption band.

In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999), sets out the
principles relevant to inherency (citations omitted):
If the prior art reference does not expressly set
forth a particular element of the claim, that reference still
may anticipate if that element is “inherent” in its
disclosure. To establish inherency, the extrinsic evidence
“must make clear that the missing descriptive matter is
necessarily present in the thing described in the reference,
and that it would be so recognized by persons of ordinary
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skill.” “Inherency, however, may not be established by
probabilities or possibilities. The mere fact that a certain
thing may result from a given set of circumstances is not
sufficient.”

Upon consideration of Petitioner’s argument and evidence, we will
assume that Kulp describes a camera having both a cooled filter and a cooled
array. However, nothing in Petitioner’s presentation reveals with
particularity where Kulp describes a cooled filter and any cooled array in the
interior of a refrigeration portion within the meaning of ʼ813 patent claim 1.
Thus, while it is possible that both the cooled filter and the cooled array
could be located in an interior of a refrigeration portion, Petitioner has failed
to establish that both Kulp elements necessarily are located in the interior of
a refrigeration portion. As a consequence, on the record before us Petitioner
has failed to establish that Kulp inherently describes a limitation required by
ʼ813 patent claim 1.
We are not persuaded that Petitioner has shown a reasonable
likelihood of prevailing on the ʼ411 Grounds A, B, or C.
3. IPR ʼ411—Merlin Brochure
Patent Owner argues that “[t]he Merlin Brochure in no way suggests
that the filter . . . be . . . located in the interior of the refrigerated portion that
houses the infrared sensor device.” IPR ʼ411, Paper 6, 41.
Petitioner maintains that the Merlin-MID camera described in the
Merlin Brochure inherently describes a camera having located within a
refrigerated potion both a filter and an infrared sensor. IPR ʼ411, Paper 2,
35.
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In support of its position, Petitioner refers to the Merlin User’s Guide,
a document which Petitioner maintains describes features of the Merlin-MID
camera described in the Merlin Brochure. IPR ʼ411, Paper 2, 42 n.34,
43 n.35. See also Ex. 1006, 45 n.13; 49 n.14.
The Merlin Brochure describes three Indigo cameras: (1) Merlin NIR
InGaAs, (2) Merlin MID InSb, and (3) Merlin Uncooled. Ex.1007, 3-4 (also
identified at the bottom as Exhibit 1007-00003 to 1007-00004).
The Merlin User’s Guide describes features of the Merlin Brochure
MID InSb camera.
For example, on page 1 (also identified as Exhibit 1011-000044), the
Merlin User’s Guide states:
Merlin Mid is a mid-wavelength infrared (MWIR) high-
performance camera offered by Indigo systems Corp.
The camera consists of a Stirling-cooled Indium
Antimonide (InSb) Focal Plane Array (FPA) built on an
Indigo Systems ISC9705 Readout Integrated Circuit
(ROIC) using indium bump technology. The FPA is a
320 x 256 matrix or ‘staring’ array of detectors that are
sensitive in the 1.0 µm to 5.4 µm range. The standard
camera configuration incorporates a cold filter that
restricts the camera’s spectral response to the 3.0-5.0
micron band. The FPA is enclosed in an all-metal
evacuated [D]ewar assembly cooled by a closed-cycle
Stirling cryocooler, and is thermally stabilized at a
temperature of 77 K.

4 The reader should be aware of a potential confusion with respect to page
numbering of the Merlin User’s Guide. The Merlin User’s Guide has
printed page numbers. However, Petitioner has added its own page numbers
using the format Exhibit 1011-00001 through 1011-00055. Page 1 of the
Guide is Petitioner’s page Exhibit 1011-00004.
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“The lens-to-camera interface is shown in Appendix B.”
Ex. 1011, page 3 (also identified as Exhibit 1011-00006).
A portion of Appendix B is reproduced below.

Depicted is a portion of a Merlin InSb camera,
mechanical and optical interface.

The filter is located in the general area of the “aperture” and the filter
bandpass is identified as 3.6 to 4.9 or 3.0 to 5.0 depending on the aperture
diameter. Ex. 1101, 51.
The IR sensor is located in the general area identified as FPA (focal
point array) sensor.
The refrigerated area is the space between the filter and the IR sensor.
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In a claim chart, Petitioner further explains how the Merlin Brochure,
when considered in light of the Merlin User’s Guide, describes a refrigerated
portion having both a filter and an IR sensor in a refrigerated area (IPR ʼ411,
Paper 2, 41-42; Ex. 1006, ¶ 85 (page 45) (bracketed matter added; original
footnotes and bold omitted)):

a refrigerated portion including an
interior;
Merlin Brochure discloses that the
Merlin-MID includes a refrigerated
portion (Merlin Brochure, Chart on
p.6). [Ex. 1007, p.6: “Cooling type
for Merlin MID” “integral Stirling or
LN2” (meaning liquid nitrogen);
Ex. 1007, p. 2: “liquid nitrogen or
Stirling cryogenic cooling (InSb)]

an infrared sensor device located in
the interior of the refrigerated
portion;
Merlin Brochure discloses that the
Merlin-Mid includes at least one
fixed optical bandpass filter (cold
filter). (Merlin Brochure, Chart on
page 6). Referring to page 51 of the
Merlin User’s Guide (Ex. 1011-
000054), the cold filter in the Merlin-
MID is fixed inside window at the
aperture, i.e., between the lens and
the infrared sensor device.
a single filter configuration located
in the interior of the refrigerated
portion and including an optical
bandpass filter fixed along an optical
path between the lens assembly and
the infrared sensor device;

Merlin Brochure discloses that the
Merlin-MID includes
Stirling cryogenic cooling. (Merlin
Brochure, p. 2; Chart on p. 6).

On the record before us, we are persuaded that Petitioner has
established the Merlin Brochure describes a camera having both a filter and
an IR sensor within a refrigerated portion.
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We are persuaded that Petitioner has shown a reasonable likelihood of
prevailing on ʼ411 Grounds D and E.
4. IPR ʼ608—Smith and Kanagawa
In IPR ʼ608, Petitioner relies on Smith (IPR ’608 Grounds A, D, E,
and F) and on Kanagawa (IPR ʼ608 Grounds B and C).
The Patent Owner argues:
Second, Claim 1 [of the ʼ813 patent] recites: “an
infrared sensor device located in the interior of the
refrigerated portion” and “a single filter configuration
located in the interior of the refrigerated portion.”
Claim 1 expressly co-locates the “single filter
configuration” with the infrared sensor device “in the
interior of the refrigerated portion.” [Petitioner’s] . . .
references all fail to disclose this limitation.

IPR ʼ608, Paper 6, 2 (bold and italics omitted).
The Patent Owner further argues:
Claim 1 recites a “single filter configuration
located in the interior of the refrigerated potion.” Smith
merely mentions that his filter was cooled; he recites that
the passband was of a cooled filter. This fails to teach
that the filter is inherently located in the interior of the
same refrigerated portion that includes the IR sensor
device as claimed.

IPR ʼ608, Paper 6, 24 (bold added; italics omitted).
The Patent Owner still further argues:
1. Kanagawa fails to anticipate the ʼ813 claims
(P. Gr. B[5])

5 “P. Gr. B.” means IPR ʼ608 Petition Ground B (IPR ʼ608, Paper 2, 21).

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Claim 1 recites a “refrigerated portion including an
interior,” and a “single filter configuration located in the
interior of the refrigerated portion” (the same “interior”
location as the recited infrared sensor device.)
* * *
By failing to sufficiently disclose within the four corners
of the reference the exact location of the cold filter,
Kanagawa fails to set forth each and every feature
arranged as recited in the claims and therefore fails to
anticipate the limitations of same.

IPR ʼ608, Paper 6, 29-30 (bold omitted; italics added).
We agree with the Patent Owner that Smith and Kanagawa have
not been shown to explicitly or inherently describe a filter and IR
sensor in a refrigerated portion.
Because on the record before us, Petitioner has failed to
establish that a limitation of the claims of the ʼ608 patent is described
in the prior art relied upon, we are not persuaded that Petitioner has
shown a reasonable likelihood of prevailing on IPR ʼ608 Grounds A
through F.
5. IPR ʼ434
The Patent Owner maintains that ʼ496 patent claim 1 defines a
refrigerated portion as an interior of a Dewar containing therein both
an IR sensor device and an optical bandpass filter. IPR ’434, Paper 6,
21.
The Patent Owner argues, and we agree, that the IR sensor
device and the filter must both be within the interior of the
refrigerated portion. Id. at 22.
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However, for reasons given above, on the record before us,
Petitioner has made out a threshold showing that the Merlin Brochure
(when considered in light of the Merlin User Guide) describes a filter
and an IR sensor in an interior of a refrigerated portion.
We are persuaded that Petitioner has shown a reasonable
likelihood of prevailing in IPR ʼ434 on Grounds A through C.
6. IPR ʼ609
According to the Patent Owner (bold and italics omitted):
First, each claim in [the] ʼ496 [patent] recites: “a
refrigerated portion defined by the interior of a Dewar
flask, the refrigerated portion comprising therein: an
infrared sensor device; and a single filter
configuration . . . .” The ʼ496 [patent] expressly co-
locates the “single filter configuration” with the IR
sensor device in the interior of the refrigerated portion.
None of . . . [Petitioner’s] references disclose this
limitation.

IPR ʼ609, Paper 7, 1-2.
The Patent Owner argues:
Smith merely mentions that his filter was cooled: he
recites that the passband was of a cooled filter. This fails
to teach that the filter is inherently located in the interior
of the same refrigerated portion that includes the IR
sensor as claimed.

IPR ʼ609, Paper 7, 22-23 (italics omitted).
The Patent Owner further argues (bold, italics, and underlining
omitted):
B. Kanagawa Fails to Anticipate because it fails to
disclose . . . “a refrigerated portion defined by the interior
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of a Dewar flask comprising therein: an infrared sensor
device and a single filter configuration.”

IPR ʼ609, Paper 7, 29-30.
We agree with the Patent Owner that Smith and Kanagawa have
not been shown to explicitly or inherently describe a filter and IR
sensor in an interior of a refrigerated portion.
7. Summary
Kulp, Smith, and Kanagawa, and other prior art relied upon in
combination with Kulp, Smith, and Kanagawa, fail to describe a limitation
of the claims involved in these IPRs.
We are not persuaded that Petitioner has shown a reasonable
likelihood of prevailing on IPR ʼ608 Grounds A through G.
D. Petitioner’s Grounds Relying Primarily on the Merlin Brochure
1. Grounds on Which Inter Partes Review is Instituted
For reasons which follow, we order institution of inter partes review
solely on the following grounds:
(1) IPR ʼ411 Ground D (Merlin Brochure and Strachan);
(2) IPR ʼ411 Ground E (Merlin Brochure, Strachan,
and Piety);
(3) IPR ʼ434 Ground A (Merlin Brochure and Strachan);
(4) IPR ʼ434 Ground B (Merlin Brochure, Strachan, and
Brengman);
(5) IPR ʼ434 Ground C (Merlin Brochure, Strachan,
and Hart);
(a) IPR ʼ411 Ground D (Merlin Brochure and Strachan)
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On the record before us, we agree with Petitioner that the Merlin MID
camera as explicitly described in the Merlin Brochure differs from the
subject matter of claim 1 of the ʼ813 patent in that the Merlin Brochure may
not describe a custom filter selected to detect a gas leak.
On the record before us, we are persuaded that a person having
ordinary skill in the art would have found it obvious to use the Strachan
filter in the Merlin MID camera described by the Merlin Brochure.
Use of the Strachan filter amounts to use of a known element for its
known use to achieve an expected result. KSR Int’l Co. v. Teleflex, Inc., 550
U.S. 398, 416 (2007).
We are persuaded that Petitioner has shown a reasonable likelihood of
prevailing on its assertion that the subject matter of claim 1 of the ʼ813
patent would have been obvious over the Merlin Brochure and Strachan.
Apart from claim 1 of the ʼ813, and in connection with IPR ʼ411
Ground D, the Patent Owner’s response does not address any other claim.
Upon review of the remaining claims, and on the record before us, inter
partes review will be instituted with respect to IPR ʼ411 Grounds D, E,
and F.
We have not overlooked various arguments made by the Patent Owner
in its response (IPR ʼ411, Paper 6).
The Patent Owner’s response to the Petition is based in part on
declaration testimony presented to the Northern District of Texas in
connection with its consideration of a motion for a stay. The declaration
testimony, prepared and filed in the district court after the petitions were
filed, addresses not only why a stay should be denied in the civil action, but
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also substantively why Petitioner is not likely to succeed in the IPRs. The
declaration testimony relied upon by Patent Owner is consequently not pre-
existing declaration testimony; rather it is “new testimony evidence beyond
that already of record” within the meaning of § 42.108(c). Declaration
testimony of the kind presented by the Patent Owner is not entitled to
consideration at this stage of the proceeding. 37 C.F.R § 42.107(c).
The Patent Owner presents several arguments, including (1) that
there was a long-felt and unsatisfied need; (2) that invention has been highly
commercially successful; (3) that as a result of the invention the
Environmental Protection Agency (EPA) re-wrote its rules; (4) that
Petitioner commended the EPA for its rules amendment; (5) that the inventor
had to “radically modify” (IPR ’411, Paper 6, 36:1) the Merlin camera
(although the modifications are not clearly set out in the Preliminary
Response); and (6) that the prior art relied upon by Petition is cumulative to
that considered during prosecution of the application which matured into the
ʼ813 patent (although no convincing analysis of the supposed cumulative
nature of that prior art has been presented).
These arguments are best addressed in a trial phase where both parties
have an opportunity to cross-examine witnesses and where the Board can
evaluate credibility of witnesses.
(b) IPR ʼ411 Ground E (Merlin Brochure, Strachan, and Piety)
Claim 5 of the ʼ813 patent additionally calls for a voice
recorder.
Claim 7 of the ʼ813 patent additionally calls for a camera
system powered by a battery.
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Piety describes both the use of a data processor to record user
notes (IPR ’411, Ex. 1018, 14:18-22) and a battery to power a camera
(IPR ’411, Ex. 1018, 9:56-58, 10:3-4).
The data processor and battery described by Piety are used by
the Patent Owner for their intended purpose to achieve an expected
result. KSR, 550 U.S. at 416.
We are persuaded that Petitioner has shown a reasonable likelihood of
prevailing on its assertion that the subject matter of claims 5 and 7 of the
ʼ813 patent would have been obvious over the Merlin Brochure, Strachan,
and Piety.
(c) IPR ʼ434 Ground A (Merlin Brochure and Strachan); IPR ’434
Ground B (Merlin Brochure, Strachan, and Brengman); and IPR ’434
Ground C (Merlin Brochure, Strachan, and Hart)

On the record before us, we credit the testimony of Dr. Jonas
Sandsten (IPR ’434, Ex. 1006) insofar as it relates to grounds relying
primarily on the Merlin Brochure. See generally IPR ’434, Ex. 1006,
17-51 (¶¶ 51-103).
On the basis of that testimony, and at this stage, we are
persuaded that Petitioner has shown a reasonable likelihood of
prevailing on its asserted Grounds A, B, and C in IPR ʼ434.
III. ORDER
Upon consideration of the Petitions and the Patent Owner’s
Preliminary Responses, and for the reasons given above, it is
ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes
review is hereby instituted on the following grounds:
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In IPR ’411, claims 1-4, 6, 8-22, 31, 37-40, 42-56, and 58 of the
ʼ813 patent as unpatentable under § 103(a) over the Merlin Brochure
and Strachan; and claims 5 and 7 of the ʼ813 patent as unpatentable
under § 103(a) over the Merlin Brochure, Strachan, and Piety; and
In IPR ’434, claims 1-5 and 9-20 of the ʼ496 patent as
unpatentable under § 103(a) over the Merlin Brochure and Strachan;
claim 6 of the ʼ496 patent as unpatentable under § 103(a) over the
Merlin Brochure, Strachan, and Brengman; and claim 7 of the ʼ496
patent as unpatentable under § 103(a) over the Merlin Brochure,
Strachan, and Hart.
FURTHER ORDERED that inter partes review of the ʼ813
patent and the ʼ496 patent is hereby instituted commencing on the date of
this DECISION. 35 U.S.C. § 314(a).
FURTHER ORDERED that notice is hereby given of the
institution of a trial. 35 U.S.C. § 314(c); 37 C.F.R. §42.4.
FURTHER ORDERED that all grounds in IPR ’608 are denied.
FURTHER ORDERED that all grounds in IPR ’609 are denied.
FURTHER ORDERED that the trial is limited to the grounds
and claims identified above and no other grounds set forth in any of the four
Petitions are authorized.

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PETITIONER:
Joseph F. Hetz
Rickard K. DeMille
Ralph J. Gabric
BRINKS GILSON AND LIONE
jhetz@brinksgilson.com
rdemille@brinksgilson.com
rgabric@brinksgilson.com

PATENT OWNER:
Richard T. Black
Joel B. Ard
Phillip G.S. Born
FOSTER PEPPER PLLC
blacr@foster.com
ardjo@foster.com
bornp@foster.com