Kamstrup A/S

Patent Trials and Appeals Board

Apr 1, 2021

IPR2019-01640 (P.T.A.B. Apr. 1, 2021)

Trials@uspto.gov Paper 32
571-272-7822 Date: April 1, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

AXIOMA METERING UAB,
Petitioner,
v.
KAMSTRUP A/S,
Patent Owner.

IPR2019-01640
Patent 8,806,957 B2

Before MICHELLE N. ANKENBRAND, SCOTT B. HOWARD, and
AARON W. MOORE, Administrative Patent Judges.
ANKENBRAND, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
35 U.S.C. § 318(a)

I. INTRODUCTION
This is a Final Written Decision in an inter partes review challenging
the patentability of claims 1–15 (collectively, the “challenged claims”) of
U.S. Patent No. 8,806,957 B2 (“the ’957 patent,” Ex. 1001). We have
jurisdiction under 35 U.S.C. § 6. We issue this Final Written Decision under
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35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons that follow, we
determine that Petitioner demonstrates, by a preponderance of the evidence,
that the challenged claims are unpatentable.
A. Procedural History
Axioma Metering UAB (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
requesting an inter partes review under 35 U.S.C. § 311. Kamstrup A/S
(“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”).
On April 8, 2020, we instituted an inter partes review of the challenged
claims. Paper 10 (“Institution Decision” or “DI”).
Following institution, Patent Owner filed a Response (Paper 14,
“Resp.”), Petitioner filed a Reply (Paper 18, “Reply”), and Patent Owner
filed a Sur-reply (Paper 23, “Sur-reply”).
Petitioner relies on the Declaration of Michael C. Johnson, Ph.D., P.E.
(Ex. 1021), and submitted a Supplemental Declaration (Ex. 1035) from
Dr. Johnson with its Reply. Patent Owner took cross-examination testimony
of Dr. Johnson via deposition and filed the transcripts (Ex. 2021; Ex. 2024).
Patent Owner relies on the Expert Declarations of Darran Robert
Cairns, Ph.D. (Ex. 2002; Ex. 2010) and the Expert Declarations of Steven
Barfuss (Ex. 2004; Ex. 2011) in its Response. Petitioner took cross-
examination testimony of Dr. Cairns and Steven Barfuss via deposition and
filed the transcripts (Ex. 1026; Ex. 1027; Ex. 1028; Ex. 1029).
We heard oral argument on January 5, 2021, and the record includes a
transcript of the argument. Paper 31 (“Tr.”).
B. Related Matters
The parties identify the following district court proceeding related to
the ’957 patent: Kamstrup A/S v. Axioma Metering UAB, No. 1:19-cv-
01669-WJM-SKC (D. Colo. June 10, 2019). Pet. vii; Paper 4, 1.
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C. The ’957 Patent
The ’957 patent, titled “Ultrasonic Flow Meter Housing Formed by a
Monolithic Polymer Structure,” issued on August 19, 2014. Ex. 1001, at
[45], [54]. The ’957 patent matured from a U.S. National Phase Application
of PCT International Application Number PCT/DK2010/050339 (the “PCT
application”). Id. at 1:8–12. The PCT application claims priority to
European Patent Application No. 09179317.4 (the “European patent
application”). Id. at 1:12–14.
The ’957 patent relates to an ultrasonic flow meter housing and an
ultrasonic flow meter comprising a housing that can be produced and
assembled in fewer steps. Id. at 1:20–23, 1:55–57. The written description
explains that ultrasonic consumption meters for calculating a consumed
quantity of water, heat, cooling, gas or the like typically have a metal flow
passage and a housing with a cavity around the flow passage. Id. at 1:27–32.
The housing protects electronic components. Id. at 1:30–38. Fabricating
these ultrasonic flow meters typically requires multiple production steps. Id.
at 1:39–51. The ’957 patent purportedly reduces the number of production
steps and the production cost by providing a monolithic polymer housing
structure that may be cast in one piece. Id. at 1:39–42, 1:55–60. The
monolithic polymer housing structure includes a straight flow tube separated
from a cavity such that the straight flow tube and the cavity share a wall. Id.
at 1:58–67, 2:1–15. According to the written description, this particular
housing structure enables the flow meter housing to be cast in a single step.
Id. at 2:6–15.
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D. Illustrative Claim
Of the challenged claims, claims 1 and 11 are independent. Claim 1 is
illustrative of the claimed subject matter and recites:
1. An ultrasonic flow meter housing comprising:
(a) a monolithic polymer structure being cast in one piece, the
monolithic structure includes a flow tube and a cavity separated
from the flow tube, wherein the flow tube defines a through-
going straight flow section arranged for passage of a fluid
between an inlet and an outlet, wherein a part of a wall of the
flow section is part of an inside surface of the cavity, so that the
flow section and the cavity has a shared wall area; and
(b) wherein the cavity is arranged for housing
(i) at least one ultrasonic transducer, at the shared wall area;
and
(ii) a measurement circuit operationally connected to the
at least one ultrasonic transducer so as to allow
measurement of a flow rate of the fluid.
Ex. 1001, 6:41–55.
E. The Instituted Grounds of Patentability
We instituted an inter partes review of the challenged claims on the
following grounds of unpatentability:
Claim(s)
Challenged
35 U.S.C. §1 Reference(s)
1–5, 7, 9–13 102(b) Will2

1 Because the claims at issue have an effective filing date before March 16,
2013, the effective date of the applicable provisions of the Leahy Smith
America Invents Act, Pub. L. No. 112–29, 125 Stat. 284 (2011) (“AIA”), we
apply the pre-AIA version of 35 U.S.C. §§ 102 and 103 in this decision.
2 WO 2009/129885 A1, published Oct. 29, 2009 (Ex. 1002). In this
decision, we rely on the certified English translation of Will that Petitioner
provides as Exhibit 1003.
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Claim(s)
Challenged
35 U.S.C. §1 Reference(s)
1–5, 7, 9–13 103(a) Will, Hiss,3 Ueki,4 Buckberry,5
and/or Bignell6
6, 8 103(a) Will, Elson,7 and/or Barker8
14 103(a) Will, Drachmann9
15 103(a) Will, Drachmann, and/or Goertz10
1–5, 7, 9, 11–13 102(b) Hiss
6 103(a) Hiss, Buckberry
6, 8 103(a) Hiss, Elson and/or Barker
10 103(a) Hiss, Will, and/or Buckberry
14 103(a) Hiss, Drachmann
15 103(a) Hiss, Drachmann, and/or Goertz
1–2, 5, 7, 9, 11–13 102(b) Ueki
3, 4 103(a) Ueki, with or without Will
6, 8 103(a) Ueki, Elson and/or Barker
10 103(a) Ueki, Will and/or Buckberry
14 103(a) Ueki, Drachmann
15 103(a) Ueki, Drachmann and/or Goertz
1–7, 9–13, 15 102(b) Buckberry
8 103(a) Buckberry, Elson and/or Barker
14 103(a) Buckberry, Drachmann

3 DE 100 51 534 A1, published Apr. 25, 2002 (Ex. 1004). In this decision,
we rely on the certified English translation of Hiss that Petitioner provides as
Exhibit 1005.
4 EP 1 482 284 A1, published Dec. 1, 2004 (Ex. 1006).
5 WO 2008/053193 A1, published May 8, 2008 (Ex. 1007).
6 WO 94/20822, published Sept. 15, 2004 (Ex. 1008).
7 US 6,248,077 B1, issued June 19, 2001 (Ex. 1012).
8 US 4,476,877, issued Oct. 16, 1984 (Ex. 1013).
9 EP 2 083 250 A1, published July 29, 2009 (Ex. 1009).
10 EP 0 972 171 B1, issued Oct. 29, 2003 (Ex. 1010). In this decision, we
rely on the certified English translation of Goertz that Petitioner provides as
Exhibit 1011.

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II. ANALYSIS
A. Legal Standards
To prevail in its challenge, Petitioner must demonstrate by a
preponderance of the evidence that the claims are unpatentable. 35 U.S.C.
§ 316(e); 37 C.F.R. § 42.1(d) (2019). To establish anticipation, each
limitation in a claim must be found in a single prior art reference, arranged
as recited in the claim. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359,
1369 (Fed. Cir. 2008). Although the elements must be arranged or
combined in the same way as in the claim, “the reference need not satisfy an
ipsissimis verbis test.” In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009).
A claim is unpatentable 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 of the invention to a
person having ordinary skill in the art. 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 skill in the art; and (4) objective evidence of
nonobviousness, i.e., secondary considerations.11 See Graham v. John
Deere Co., 383 U.S. 1, 17–18 (1966). Subsumed within the Graham factors
is the requirement that the skilled artisan would have had a reasonable
expectation of success in combining the prior art references to achieve the
claimed invention. Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1361 (Fed.
Cir. 2007). “Obviousness does not require absolute predictability of success

11 The record does not contain evidence or argument regarding objective
evidence of nonobviousness.
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. . . all that is required is a reasonable expectation of success.” In re
O’Farrell, 853 F.2d 894, 903–4 (Fed. Cir. 1988).
Moreover, “[t]he combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results.” KSR, 550 U.S. at 416. “If a person of ordinary skill can
implement a predictable variation, § 103 likely bars its patentability.” Id. at
417.
B. Level of Ordinary Skill in the Art
In the Institution Decision, we determined that a person of ordinary
skill in the art “would have had a Bachelor of Science degree in a field of
engineering or a closely related discipline, and one year of practical
academic or industrial experience designing, testing, and/or manufacturing
flowmeters” because that description was consistent with the object of the
’957 patent and the level of skill reflected in the prior art. DI 11–12
(generally adopting Dr. Johnson’s description of the level of ordinary skill in
the art aside from the qualifier “at least” as to the amount of practical
experience).
In its trial briefing, Patent Owner challenges our description as to only
one year of experience and also asserts that a person of ordinary skill in the
art also would have had “one year of practical, academic or industrial
experience designing and/or molding molded polymer structures.” Resp. 9–
10. Patent Owner explains that polymer molding experience is necessary to
appreciate the ’957 patent’s contribution to the art of reducing the
complexity of manufacture. Id.; see Sur-reply 1–4. Patent Owner references
a number of prior art references to support its position and additionally
argues that Dr. Johnson lacks sufficient molding and casting knowledge
required to be a person of ordinary skill in the art with respect to the ’957
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patent (i.e., to appreciate the inventors’ contribution to the art). Sur-reply 4–
12 (citing Ex. 1031; Ex. 1032; Ex. 2010 ¶¶ 48–55; Ex. 2012–Ex. 2020).
We agree with Patent Owner that a person of skill in the art would
have knowledge and experience designing and/or molding polymer
structures. Resp. 10. The ’957 patent is directed to a flow meter housing
that is a monolithic polymer structure. See, e.g., Ex. 1001, at [54], [57],
1:20–23 (describing the field of invention), 6:40–55 (claim 1). The prior art
also discloses injection molded plastic or polymer flow meters and flow
measurement tubes. See, e.g., Ex. 1003, 2–3; Ex. 1005 ¶ 6; Ex. 1006 ¶¶ 85,
87, 96, Fig. 10. Thus, we determine that a person of ordinary skill in the art
at the time of the invention would have had a Bachelor of Science degree in
a field of engineering or a closely related discipline, one year of practical,
academic, or industrial experience designing, testing, and/or manufacturing
flowmeters, and one year of practical, academic, or industrial experience in
designing and/or molding polymer structures.
Patent Owner couples its argument about the level of skill in art with
an assertion that Dr. Johnson lacks experience in molding and casting.12
Resp. 9–10; Sur-reply 1–4. But we do not require a perfect match between
an expert’s experience and the relevant field. See Patent Trial & Appeal
Board Consolidated Trial Practice Guide November 201913 at 34 (citing SEB
S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1373 (Fed. Cir. 2010)). A
person need not be a person of ordinary skill in the art to testify as an expert
under Federal Rule of Evidence 702, but rather must be “qualified in the
pertinent art.” Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356,

12 Patent Owner does not move to exclude Dr. Johnson’s testimony.
13 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
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1363–64 (Fed. Cir. 2008). Here, Dr. Johnson is qualified in the pertinent art
of flow meters. See Tr. 30:12–24; Ex. 1021 ¶¶ 1–3 (Dr. Johnson’s
qualifications); Ex. 1022 (Dr. Johnson’s curriculum vitae). To the extent
that Dr. Johnson is not as experienced in casting and molding polymer
structures, we are able to consider the value of his opinions and give them
appropriate weight. See Perreira v. Sec’y of the Dept. of HHS, 33 F.3d
1375, 1377 n. 6 (Fed. Cir. 1994).
C. Claim Construction
In an inter partes review, we construe claim terms according to the
standard set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed.
Cir. 2005) (en banc). 37 C.F.R. § 42.100(b). Under that standard, we
construe claims “in accordance with the ordinary and customary meaning of
such claim as understood by one of ordinary skill in the art and the
prosecution history pertaining to the patent.” Id. Furthermore, we expressly
construe the claims only to the extent necessary to resolve the parties’
dispute. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd.,
868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that
are in controversy, and only to the extent necessary to resolve the
controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
F.3d 795, 803 (Fed. Cir. 1999))).
In the Petition, Petitioner proposed a construction for the term
“structure being cast in one piece” as recited in claims 1 and 11. Pet. 9–10.
Patent Owner’s Preliminary Response addressed the terms “monolithic
polymer structure being cast in one piece” and “through-going straight flow
section.” Prelim. Resp. 14–18.
In our Institution Decision, we construed the terms “cast in one piece”
and “through-going straight flow section.” Regarding “cast in one piece,”
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we determined Patent Owner’s arguments did not persuade us that “cast in
one piece” means “cast in a single mold,” and instead agreed with
Petitioner’s construction of a “structure being cast in one piece” as a
“molded one-piece structure.” DI 14. We further noted that even if we were
to read the “cast in one piece” limitation as “cast in a single mold,” the
limitation appeared to us to be a process limitation not entitled to patentable
weight. Id. at 15–16. Because neither Petitioner nor Patent Owner had
addressed whether “cast in one piece” is a product-by-process limitation, or
whether a monolithic polymer structure cast in a single mold has structural
or functional differences from a monolithic polymer structure that is
integrally formed, but not cast in a single mold, we did not take a position on
whether “cast in one piece” is a limitation that imparts patentable weight and
we invited the parties to further brief the issue during trial, if they so desired.
Id. at 16.
Turning to the term “through-going straight flow section,” we agreed
with Patent Owner’s construction as a “straight section of a flow tube that
traverses the monolithic polymer structure.” Id. Petitioner did not expressly
address the term “through-going straight flow section.”
In its trial briefing, Patent Owner further addresses both claim
construction issues, arguing that “cast in one piece” is a structural limitation
that is limiting to structures that can be formed in a single mold and
reinforcing its initial construction of “through-going straight flow section.”
Resp. 12–20; Sur-reply 14–19. Patent Owner also proposes that we construe
the terms “cavity separated from the flow tube,” “shared wall area,” “cavity
only has a single opening,” “measurement tube element,” and “at the inside
of the flow section serving to engage with.” Resp. 23–26; Sur-reply 20–23.
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Petitioner also addresses both claim construction issues we invited the
parties to address in its Reply. Reply 3–12. Petitioner additionally proposes
constructions for the terms “cavity separated from the flow tube,” “shared
wall area,” “cavity only has a single opening,” “measurement tube element,”
and “at the inside of the flow section serving to engage with.” Id. at 12–20.
For purposes of this section, only the following claim terms merit
discussion: (1) “cast in one piece,” and (2) “cavity separated from the flow
tube.” See Nidec, 868 F.3d at 1017. We also discuss the terms
“measurement tube element” and “at the inside of the flow section serving to
engage with” in addressing some of Petitioner’s asserted grounds, but do not
specifically discuss those terms in this section.
1. “cast in one piece”
Patent Owner argues that the proper construction of the phrase
“monolithic polymer structure being cast in one piece” as “monolithic
polymer structure cast in a single mold” does not result in a process
limitation, but is a structural limitation “that limits the scope of the invention
to structures that can be formed in a single mold.” Sur-reply 14, 17 (citing
e.g., In re Nordt Dev. Co., 881 F.3d 1371, 1375–76 (Fed. Cir. 2008);
SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1322 (Fed. Cir.
2006)). Patent Owner asserts that its construction “is consistent with the
plain and ordinary meaning and both the intrinsic and extrinsic evidence.”
Resp. 13.
Patent Owner first contrasts the plain and ordinary meaning of “cast
in one piece” against “cast into [or cast to] one piece,” asserting Petitioner
and Dr. Johnson have ignored any difference between the two. Id. (citing
Ex. 2010 ¶¶ 42–43); Sur-reply 15. Patent Owner attributes a lack of
understanding of any distinction between the two to Dr. Johnson “having no
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experience in molding and only a rudimentary understanding of molding
processes.” Resp. 13; Sur-reply 18 (citing Ex. 2010 ¶ 38). Patent Owner
argues the difference between “in” and “into [or to]” is evident when
looking to the state of the art. Sur-reply 15–18. Specifically, Patent Owner
directs us to WO 03/041895, published May 11, 2003 (“the ’895
application,” Ex. 1032), and asserts the ’895 publication uses the phrase
“cast in one piece” or “cast in one united piece” for a product of two
materials in a single mold, but uses “cast to one piece” for casting to an
existing structure. Id. (citing Ex. 2024, 78:11–80:2); see also Resp. 16–20
(citing Ex. 2012–2020, as “numerous prior art patents and patent
application[s] across various technological fields have used ‘cast in one
piece’ in the exact same manner as the ’957 Patent”).
Patent Owner further argues that amendments made during
prosecution in the European Patent Office (“EPO”) are not relevant to
patentability over references Petitioner relies upon in this proceeding, i.e.,
Will and Ueki. Resp. 14–15; Sur-reply 14–15. In that regard, Patent Owner
asserts the EPO determined during the PCT application prosecution that the
phrase “‘cast in one piece’ . . . was both novel and nonobvious . . . over Will
and Ueki.” Resp. 14 (citing Ex. 1014; Ex. 1018, 5; Ex. 1019, 319–21;
Ex. 2006, 12:58–13:20; Ex. 2007, 11; Ex. 2018, 5) (emphasis omitted).
Petitioner replies that Patent Owner fails to support the assertion that
one of ordinary skill in the art would understand the term “cast in one piece”
to mean “cast in a single mold,” and that Patent Owner fails to establish that
such a process limitation is entitled to patentable weight. Reply 3–4.
Petitioner first argues that the extrinsic evidence on which Patent
Owner relies does not support Patent Owner’s narrow construction of “cast
in one piece” as “cast in a single mold,” but instead supports a more
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expansive interpretation, such as the “molded one-piece structure” we
adopted in the Institution Decision. Id. at 4–5. As an example, Petitioner
cites U.S. Patent No. 6,730,004 (Ex. 2012), asserting that instead of
contrasting “‘cast in one piece’ with a structure that can be ‘cast in a single
mold,’” the reference “contrasts a structure that cannot be ‘cast in one piece’
with ‘a single unitary piece of molded plastic.’” Id. (citing Ex. 1035 ¶¶ 9–
10; Ex. 2012, 8:47–51). Petitioner asserts that most of the remaining cited
references “distinguish welding versus molding, not single-mold versus non-
single mold.” Id. at 5 (citing Ex. 1035 ¶¶ 11–21).
Petitioner further argues even if Patent Owner establishes that a
person of ordinary skill in the art would understand the limitation “cast in
one piece” to mean “cast in a single mold,” Patent Owner fails to establish
that casting in a single mold results in any structural or functional
differences as compared to a resulting “molded one-piece housing cast with
other molding processes such as . . . two-step overmolding process[es].”
Reply 6–7. In other words, Petitioner contends that the phrase “cast in one
piece” is a process limitation that is not entitled to patentable weight. Id.
After having reviewed claims 1 and 11, the arguments, and the
evidence, we determine that the phrase “cast in one piece” is a product-by-
process limitation that does not impart patentable weight to the claim. Even
if we determined that the phrase “cast in one piece” is entitled to patentable
weight, however, we would construe the phrase to mean “a molded one-
piece structure,” as we did in the Institution Decision.
Turning first to the claim language, we explained in the Institution
Decision that the limitation “cast in one piece” appears to be a process
limitation that does not impart patentable weight to the claim unless the
resulting product (i.e., the claimed product) has “structural and functional
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differences” that distinguish the claimed product from the prior art. DI 16
(citing Greenliant Sys., Inc. v. Xicor LLC, 692 F.3d 1261, 1268 (Fed. Cir.
2012) (explaining that “the process by which a product is made is
irrelevant[,]” unless the process “imparts ‘structural and functional
differences’” that distinguish the product from the prior art); In re Thorpe,
777 F.2d 695, 697 (Fed. Cir. 1985) (“The patentability of a product does not
depend on its method of production.”)). Patent Owner argues, and
Dr. Cairns testifies, that our decision was wrong because “cast in one piece”
denotes a structural limitation. Sur-reply 14, 18; Ex. 2010 ¶ 38. Patent
Owner, however, does not identify any structural or functional features that
casting in a single mold imparts, except for asserting that the structure is
limited to a type of structure that can be made in a single mold. Id. at 14;
see also Tr. 25:14–24 (Judge Ankenbrand: . . . “cast in one piece to me
appears to be a process. So, what’s the difference . . . functionally and
structurally . . . ? Patent Owner’s Counsel: “. . . the structure of [the prior
art] . . . cannot be cast in a single mold.”). Nor are we aware of any distinct
structural or functional differences between a monolithic polymer that is cast
in a single mold and one that is not. Rather, Petitioner persuades us that
distinguishing “cast in one piece” by being able to be cast in a single mold is
a circular argument that does not identify any structural or functional
differences that casting in one piece imparts to the monolithic polymer
housing. See Tr. 13:7–13, 26:1–19.
Patent Owner relies on several cases to support its position that we
should interpret “cast in one piece” as a structural limitation and not a
process limitation. Sur-reply 17–18 (citing Nordt, 881 F.3d at 1375–76; 3M
Innovative Props. Co. v. Avery Dennison Corp., 350 F.3d 1365, 1371–72
(Fed. Cir. 2003); In re Garnero, 412 F.2d 276, 279 (CCPA 1969);
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SmithKline Beecham, 439 F.3d at 1322; Vanguard Prods. Corp. v. Parker
Hannifin Corp., 234 F.3d 1370, 1372 (Fed. Cir. 2000); Hazani v. U.S. Int’l
Trade Comm’n, 126 F.3d 1473, 1479 (Fed. Cir. 1997)). But Patent Owner’s
cases are distinguishable. For example, in Nordt, where the claim limitation
“injection molded” was at issue, the patent applicant asserted “that ‘there are
clear structural differences’ between a knee brace made with fabric
components and a knee brace made with injection-molded components,” and
the court found that the specification conveyed a structural meaning to
“injection molded.” 881 F.3d at 1375; see also Vanguard, 234 F.3d at 1372
(the specification used the term “integral” “to describe the product and not
as a designation of a specific manufacturing process,” and the prosecution
history showed the examiner and the applicant “treated the product claims as
directed to the product itself”); Hazani, 126 F.3d at 1479 (determining that
the limitation “chemically engraved,” when read in context, “describes the
product more by its structure than by the process used to obtain it.”). Here,
in contrast, the limitation “cast in one piece” does not appear to connote a
structure, the specification does not convey any structural meaning to the
limitation, and Patent Owner fails to direct us to any structural differences
that casting in one piece imparts to the monolithic polymer housing. Thus,
Patent Owner’s cited cases are distinguishable.14

14 Although Patent Owner relies on the dissent from SmithKline Beecham to
support its argument, Sur-reply 17, the majority opinion in SmithKline
Beecham is consistent with our determination that “cast in one piece” is a
process limitation. Specifically, the court explains that “[r]egardless of how
broadly or narrowly one construes a product-by-process claim, it is clear that
such claims are always to a product, not a process,” and that “one cannot
avoid anticipation by an earlier product disclosure by claiming the same
product . . . as produced by a particular process.” 439 F.3d at 1317.
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Accordingly, we conclude that the limitation “cast in one piece” is a
process limitation that does not impart patentable weight to the claim. That
is, as long as the prior art discloses a monolithic polymer structure, it
satisfies the claim limitation regardless of the process used to produce it.
In any event, even if we determined that “cast in one piece” is not a
process limitation, we would construe the limitation to mean “a molded one-
piece structure,” as we did in the Institution Decision. We note first that
independent claims 1 and 11 are apparatus claims, not method claims.
Compare Ex. 1001, 6:41–55 (claim 1, reciting “An ultrasonic flow meter
housing comprising”), with Sur-reply 14 (arguing that “the invention of the
’957 Patent is directed to a design for manufacture” (emphasis added)).
Further, although Patent Owner’s counsel argued during the oral hearing that
Patent Owner equates the limitation “cast in one-piece” “to a ‘capable of,’
configured for,’ ‘adapted for’ type analogy,” Tr. 16:20–21, the claims do not
use any of those terms, which typically describe how a structure or product
is going to be used, not how the structure or product is designed (or what the
structure is). The phrase “cast in one piece” also does not define the number
of steps in the molding process or the type of mold used during the molding
process. See Ex. 1001, 6:41–55 (claim 1). Indeed, the claim language does
not provide a connection between the number of steps and the resulting one-
piece apparatus. Thus, the claim language supports the construction we
adopted in the Institution Decision.
Turning to the written description, the ’957 patent’s background states
that the prior art’s purported shortcoming is the number of molding steps
required to produce an ultrasonic assembly, Ex. 1001, 1:39–51, but nothing
in this discussion requires the claimed invention to be cast in a single mold.
Indeed, the written description focuses on reducing the number of steps
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required to fabricate the flow meter housing, not on casting in a single mold.
See id. at 1:55–57 (“It may be seen as an object of the invention to provide
an ultrasonic flow meter which can be produced and assembled with a
limited number of steps.”), 2:6–9 (“A flow meter with a housing in
accordance with the present invention can be fabricated with a reduced
number of steps compared to existing meters, since only a single step is used
to form the monolithic polymer structure.”). Moreover, the single mold that
the written description of the ’957 patent discloses with respect to Figures
5A and 5B is narrower than the claim language “cast in one piece.”
Accordingly, we decline to read the narrower “cast in a single mold” from
an embodiment of the written description into the broader language “cast in
one piece” that is used in the claims. See SuperGuide Corp. v. DirecTV
Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“[A] particular
embodiment appearing in the written description may not be read into a
claim when the claim language is broader than the embodiment.” (citing
Electro Med. Sys., S.A. v. Cooper Life Scis., Inc., 34 F.3d 1048, 1054 (Fed.
Cir. 1994))).
In addition, as noted above, Patent Owner contends that the invention
of the ’957 patent is a design for manufacture that requires a housing
structure made in a single mold. Sur-reply 14. Patent Owner’s counsel
explained during oral argument that the European and PCT applications
“shed[] light” on how the EPO and U.S. Examiner viewed the invention and
amendments to the claims. Specifically, Patent Owner argues that the patent
applicant amended the European patent application to “get around” the Will
reference by adding “a through-going straight flow section” limitation and to
“[get] around” the Ueki reference “by adding the limitation that . . . the flow
tube has to be separated from the cavity.” Tr. 31:12–25. Patent Owner also
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argues that the applicant did not amend “cast in one piece” to “cast in a
single step” in the PCT application to overcome Will or Ueki. Resp. 14–15.
The European prosecution history filed in this proceeding, however,
does not indicate why the patent applicant amended the claim language in
the EPO, or that the EPO definitively determined that the claim at issue was
patentable over Will and/or Ueki. As Patent Owner acknowledges, the
record from the European prosecution includes only the European patent
application, a search report for the original claims, the PCT application,
which amended much of the claim language from the European patent
application, an International Search Report, and the amendment to the PCT
application. Resp. 14 n.31. The International Search Report cites to Will as
a reference relevant as technical background (i.e., an A reference) and does
not cite to Ueki. But that does not shed light on why the patent applicant
amended the claim language from the European patent application. And the
’957 patent issued as the result of a first action allowance, so there is no
record of how the Examiner viewed the invention or the European
prosecution history. Accordingly, we do not find the European prosecution
history particularly helpful in determining the meaning of “cast in one
piece.”15

15 To the extent that the European and PCT patent applications also shed
light on what the patent applicant viewed as the invention, we note that
claim 1 of the European patent application did not include the limitations
“cast in one piece,” “cast in one step,” or “cast in a single mold.” Instead,
the claim recited “a monolithic polymer structure” “having a through-going
opening . . . arranged for passage of a fluid.” Ex. 2006, 11:58–12:20. Thus,
Patent Owner’s argument that the inventive aspect of the ’957 patent
requires casting in a single mold appears to be inconsistent with how the
patent applicant viewed its invention in the European application.
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Patent Owner’s cited prior art references also do not persuade us that
“cast in one piece” means “cast in a single mold.” In the Sur-reply, Patent
Owner focuses on a distinction between “cast in one piece” and “cast into
[or to] one piece,” which Patent Owner argues is the parties’ primary
dispute. Sur-reply 15–17. Patent Owner argues the two terms create a clear
distinction, which the ’895 publication and the disclosure of the ’957 patent
illustrate. Id. (citing Ex. 1001, 5:42–46; Ex. 2024, 78:11–80:2); Ex. 1032.
Specifically, Patent Owner contends the ’895 publication “uses the phrase
‘cast in one piece’ or ‘cast in one united piece’ exclusively to refer to a
product made of two materials in a single mold, but uses the phrase ‘cast to
one piece’ exclusively to refer to a product formed by casting material to an
existing structure.” Id. at 15–16. The ’895 publication does not appear to
differentiate between or limit the use of “casting in” and “casting into [or
to]” as Patent Owner argues, but rather uses the terms interchangeably. For
example, the ’895 publication describes casting a tool with an interface zone
between the functional part and the tool body, which occurs in one mold,
where the functional part is formed first by casting material into gate 23 of
the mold and allowing the functional part to sufficiently cool, then the tool
body is formed by casting on a second material. Ex. 1032, 7:27–30, 8:4–6,
5:34–6:3. Thus, the ’895 publication uses the terms “cast into” and “cast
on” to describe a casting process that occurs in a single mold. Patent Owner
correctly points out that the ’895 publication uses the phrase “cast to one
piece” to describe a second process in which a separately cast or recycled
functional part is inserted into a single mold and the “additional tool part is
cast on [that existing tool part].” Id. at 5:26–29; see also Sur-reply 16
(citing Ex. 2024, 78:11–80:2). However, Patent Owner’s assertion that the
phrases “cast in one piece” or “cast in one united piece” are used exclusively
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to refer to a product made of two materials cast in a single mold does not
comport with the language the ’895 publication uses to describe such a
process. See Sur-reply at 15–16.
Similarly, the additional prior art patents and patent applications that
Patent Owner asserts use the phrase “‘cast in one piece’ in the exact same
manner as the ’957 Patent” do not persuade us that “cast in one piece”
means “cast in a single mold.” See Resp. 16–20. Some of the cited prior art
patents and applications appear to support Patent Owner’s assertion. See,
e.g., Ex. 2012, 8:44–61 (describing a prior art structure that could not be
“cast in one piece” because it was a single unitary piece of molded plastic
material formed from gluing together separately produced injection molded
halves); Ex. 2017, 5:52–56, 3:27–32 (contrasting pieces “formed as one-
piece castings” with pieces “formed as welded and/or bolted steel plate
constructions”). Other references do not. See, e.g., Ex. 2014, 7:31–38
(describing forming a lever by casting together different structures that result
in a molded one-piece structure); Ex. 2016, 22:42–46, 24:48–50 (describing
a manifold as a one-piece casting, i.e., cast in one piece, where all of the
features of the manifold are included within the resultant structure regardless
of whether it was cast in a single mold). Thus, we decline to construe “cast
in one piece” to mean “cast in a single mold” based on Patent Owner’s
extrinsic evidence. Instead, we construe the term to mean “a molded one-
piece structure” based on the intrinsic record we discuss above.
For the foregoing reasons, we determine that the limitation “cast in
one piece” is a process limitation that is not entitled to patentable weight.
Even if “cast in one piece” were entitled to patentable weight, however, we
would construe the limitation to mean “a molded one-piece structure.”
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2. “cavity separated from the flow tube”
Claim 1 recites “the monolithic structure includes a flow tube and a
cavity separated from the flow tube.” Ex. 1001, 6:42–44. We did not
address this claim limitation in the Institution Decision because the parties
did not propose that we construe the limitation, and the limitation was not
germane to the parties’ dispute.
In its trial briefing, Patent Owner argues that one of ordinary skill in
the art would understand the phrase “cavity separated from the flow tube” to
mean “the flow tube does not reside in or run through the cavity.” Resp. 21–
22. Patent Owner asserts that its construction “is consistent with the plain
and ordinary meaning and both the intrinsic and extrinsic evidence.” Id. at
21.
Patent Owner first argues that the plain meaning of “separated from”
prevents the flow tube from running through or being within the cavity. Id.
To support this construction, Patent Owner relies on an example image from
Dr. Cairns’ declaration that we reproduce below. Id. (citing Ex. 2010 ¶¶ 60–
63).

The example image above depicts a top plan view of an analogous structure
of two rooms (i.e., cavities) and two columns (i.e., flow tubes) within the
two rooms. Ex. 2010 ¶ 60. Patent Owner argues that although the “interior
of column A is separated from the room A cavity,” column A itself is not
separated from the room A cavity, because column A runs through room A.
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Resp. 21–22. Patent Owner continues that column B is “separate from” the
room A cavity via the side wall that separates rooms A and B, thus,
exemplifying a flow tube (column B) “separated from” the cavity (room A
cavity). Id. at 22.
Patent Owner further argues that one of ordinary skill in the art, who
is familiar with casting processes, “would understand that the cavity and
flow tube must be ‘separated from’ one another in a way that enables the
flow tube and the cavity to be cast in a single mold.” Id. (citing Ex. 2010
¶ 63). Thus, Patent Owner predicates its construction of “separated from”
upon its proposed construction of “cast in one piece.” See supra § II.C.1.
Petitioner replies that Patent Owner misconstrues the phrase because
Patent Owner reverses the order of “cavity” and “flow tube” in the phrase,
which results in Patent Owner adding a limitation to the claim. Reply 12–
13. Petitioner elaborates, noting that the claim first introduces the flow tube,
then recites the cavity as being separate from the flow tube. Petitioner
emphasizes the “separated from” claim language as describing the cavity,
not the flow tube, and introducing “the cavity as a cavity that is not part of
the flow tube.” Id. at 13. In other words, Petitioner asserts that the order of
the recited structures matters and rearranging them produces an incorrect
construction.
Petitioner also replies to Patent Owner’s room-and-column example
with a modified illustration that we reproduce below.
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Ex. 1026. Petitioner’s Illustration 1 depicts a cavity, column A, and four
blue tubes or columns. Reply 13–14. Petitioner contends that although
Patent Owner argues that column A is not a cavity “separated from” the flow
tube, Dr. Cairns had “trouble explaining why this [column A] is different
from other tubes running through the housing [the upper three blue tubes
above] that are ‘separated from’ the cavity.” Id. at 13–14 (citing Ex. 1024,
32:5–19, 33:14–34:9, 34:16–35:8). Petitioner asserts that Dr. Cairns
identified the upper three blue columns or tubes as separated from the cavity,
but identified the bottom blue column, which is enclosed within the cavity,
as not separated from the cavity. Id. at 14–15. According to Petitioner,
Dr. Cairns testified that he would not consider a wholly enclosed tube or
column to be separated from the cavity because “you really can’t make it
easy.” Id. at 15 (citing Ex. 1024, 34:16–35:8).
We begin with the claim language. Claim 1 recites “the monolithic
structure includes a flow tube and a cavity separated from the flow tube
wherein the flow tube defines a . . . flow section . . . wherein a part of a wall
of the flow section is part of an inside surface of the cavity, so that the flow
section and the cavity has a shared wall area.” Ex. 1001, 6:42–49. As the
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claim language itself suggests, the wall of the flow tube’s flow section is
shared with the cavity. Thus, the flow tube cannot be so separated from the
cavity that no part of the flow section shares a wall with the cavity. As
Petitioner points out, the order of the claim language matters. Claim 1 first
“introduces a flow tube, and then ‘a cavity separated from the flow tube.’”
Reply 13. We agree with Petitioner that the phrase “separated from the flow
tube” “describes the cavity, not the flow tube, and . . . introduces the cavity
as a cavity that is not part of the flow tube.” Id. We also agree with
Petitioner that Patent Owner’s proposed construction “reverses the order of
the terms ‘cavity’ and ‘flow tube’” such that the claim would require that the
flow tube does not reside or run through the cavity. Patent Owner’s
construction is contrary to the plain language of the claim.
We determine that a “cavity separated from the flow tube” requires
the interior of the flow tube to be separated from the surrounding cavity by
the shared wall. We determine that this construction is not so narrow as to
exclude a flow tube that a cavity wholly surrounds. The flow tube is
“separated from” the cavity by simply sharing an exterior wall of the flow
tube with the interior surface of the cavity. Thus, a flow tube that is wholly
surrounded by, yet shares the exterior wall with, a cavity is “separated from”
the surrounding cavity.
Like the claim language, the Specification explains that the flow
meter housing has a “flow section separated from a cavity in a manner where
a part of the wall of the flow section is part of the inside of the cavity.”
Ex. 1001, 2:9–15. As we explain above, an outside portion of the wall of the
flow tube is the same structure as an inside wall of the cavity, forming the
shared wall section. The Specification, therefore, also does not support
Patent Owner’s construction.
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We also disagree with Patent Owner’s argument that “[t]he cavity and
flow tube must be ‘separated from’ one another in a way that enables the
flow tube and the cavity to be cast in a single mold.” Resp. 22 (citing
Ex. 2010 ¶ 63). That argument is based upon Patent Owner’s construction
of “cast in one piece,” which we do not adopt.
For the foregoing reasons, we conclude that the flow tube need not be
“separated from” the cavity to the extent that Patent Owner argues, i.e., that
the flow tube does not reside in or run through the cavity. It is not necessary
to construe the limitation “cavity separated from the flow tube” further to
resolve the parties’ dispute.
D. Asserted Prior Art
Before considering the asserted grounds of unpatentability, we
provide a brief overview of the asserted references.
1. Will (Ex. 1003)
Will relates to an ultrasonic measuring assembly that “can be easily
and economically produced” and “avoids the disadvantages of components
of the assembly that have to be joined subsequently.” Ex. 1003, 2.16 Figure
3 depicts the ultrasonic measuring assembly, which we reproduce below.

16 The parties cite to the page and line number of the reference, but we cite
to the page number displayed at the bottom center of the page.
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Figure 3 shows the ultrasonic measuring assembly with measurement tube 2.
Id. at 8. Measurement housing 7 is joined to measurement tube 2. Id. at 8–
9. Ultrasound sensors may be placed in retainers 12 behind wall region 13 at
ends of measurement tube 2. Id. at 7–8.
The ultrasonic measuring assembly has a housing that is injection
molded onto the measurement tube. Id. at 2. A first injection molding
process forms measurement tube 2. Id. at 5. A second injection molding
process forms shared wall 13 and measurement housing 7. Id. at 5, 8–9.
Measurement tube 2 and measurement housing 7 are joined without seams
or capillaries between the two components. Id. at 5. The ultrasonic
measuring assembly may be made of a plastic, such as polyethylene (PE) or
some other polyolefin, or a suitable polymer fluorocarbon, e.g.
perfluoroalkoxy alkane (PFA). Id. at 5.
2. Hiss (Ex. 1005)
Hiss relates to a sensor structure that may be used to monitor fluid
flow. Ex. 1005 ¶¶ 1–2, 4. The sensor structure “avoids the disadvantages”
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of high production costs and requiring different seals. Id. ¶¶ 2, 4. Figure 3
depicts the sensor structure, which we reproduce below.

Figure 3 shows a sensor structure with bore 2, intermediate component 5,
and key parts 4. Id. ¶¶ 11, 13. Acoustic transducers 9 and 10 are placed
next to key parts 4. Id. ¶¶ 8, 13. The sensor structure is made of
homogenous material and has an integral, barbell-shaped design without any
penetrations or welds. Id. ¶ 6. The sensor structure is “produced integrally
and preferably in a single work process.” Id. ¶ 4.
A two-part housing (not shown) surrounds the sensor structure to
accommodate evaluation electronics and protect the interior of the sensor
structure from environmental effects. Id. ¶ 8. The sensor structure may be
made from “materials that are difficult to weld, comprising plastics or
mineral-based materials such as ceramics in particular.” Id. ¶ 6.
3. Ueki (Ex. 1006)
Ueki relates to a fluid flow sensor. Ex. 1006 ¶¶ 1–2. Figure 11
depicts the fluid flow sensor, which we reproduce below.
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Figure 11 shows a flow sensor with detection section 500. Id. ¶¶ 86–87.
Detection section 500 is made up of casing members 21, 22, and 23 and
through water pipe line 10, in addition to other features. Id. Casing member
22 has internal circuit/sensor housing area AS. Id. ¶ 88.
Figure 12B, also reproduced below, shows a side view of the flow
sensor of Figure 11.
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Figure 12B shows a side view of detection section 500. Id. ¶ 86. The side
view includes a view of cavity AS from Figure 11 above. Id. ¶ 86, 88.
Transmitter 111 and receiver 112 are attached to through water pipe line 10
inside cavity AS. Id. ¶ 90. Casing member 22 and through water pipe line
10 are integrally formed and can be molded of the same material in one
piece. Id. ¶¶ 87, 96.
4. Buckberry (Ex. 1007)
Buckberry relates to an ultrasonic flow-rate measurement device that
can be simply and economically manufactured and assembled. Ex. 1007,
1:2–3, 1:29–30. Figure 4 shows ultrasonic flow-rate measurement device
10, which we reproduce below.
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Figure 4 shows measurement device 10 with measurement conduit 12 and
transducer housing 20. Id. at 13:18–20. The transducer housing is
preferably integrally formed with the external wall of the measurement
conduit. Id. at 6:8–9. Transducer housing 20 has recesses 22 and 24 with
external recesses 22a and 24a. Id. at 13:20–26. At external recesses 22a and
24a are ultrasonic transducers 14 and 16. Id. at 13:10–11, 14:1–2. Flexible
PCB (printed circuit board) 18 is shaped to conform with and be located
over the lowermost face of transducer housing 20. Id. at 14:23–25.
5. Bignell (Ex. 1008)
Bignell relates to the construction of electronic fluid flow meters for
measuring liquids and gases, and in particular a housing for the meter.
Ex. 1008, 1:3–5, 6:12–13. The fluid flow meter uses ultrasonic transducers.
Id. at 1:10–15. Figure 3 shows the housing of the fluid flow meter, which
we reproduce below.
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Figure 3 shows a meter with casing base 2 and casing lid 3. Id. at 7:13–14.
Measuring tube 9 is integrally formed in base 2. Id. at 7:28–31. Measuring
tube 9 has two ends 10 and 11, and intermediate portion 12, which permits
flow. Id. at 7:28–31. Base 2 also includes void 8, which provides a space
for an electronics module. Id. at 7:21–24.
6. Elson (Ex. 1012)
Elson relates to a system for sensing a characteristic of fluid flowing
to or from the body of a human or animal. Ex. 1012, Abstract, 1:52–56.
The system includes a conduit having two ends with a flow passage between
the two ends. Id. at 1:63–67. The system also includes a probe for sensing a
desired characteristic. Id. at 1:67–2:2. The sensed characteristic may be
temperature, pressure, or any characteristic that can be determined by an
optical scan. Id. at 1:56–59.
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7. Barker (Ex. 1013)
Barker relates to a fluid temperature sensor. Ex. 1013, 1:6–8. The
temperature sensor has a flow-through housing and reusable temperature
sensing means. Id. at 1:52–55. The temperature sensor has a through lumen
for conducting fluid through. Id. at 1:64–66. A thermally conductive
enclosure projects transversely into the lumen. Id. at 1:66–68. A reusable
temperature sensor may be removably installed into the enclosure to
measure temperature through the lumen. Id. at 2:2–5.
8. Drachmann (Ex. 1009)
Drachmann relates to a consumption meter for measuring the value of
a consumed quality. Ex. 1009 ¶ 2. The consumption meter has a transparent
cover that is impermeable to water. Id. ¶ 11. The transparent cover protects
electronic parts from being exposed to moisture while permitting a display to
be visible. Id. ¶ 12. The consumption meter is cost efficient, simple to
fabricate, and capable of being used in different environments. Id. ¶¶ 7, 12.
9. Goertz (Ex. 1011)
Goertz relates to an ultrasonic flow meter that measures a flowing
fluid. Ex. 1011 ¶ 1. The ultrasonic flow meter includes housing assembly 1,
which is comprised of housing structure 2, housing neck 3, and housing head
4 covered by cap 5. Id. ¶ 23; Ex. 1010, Fig. 1. Housing structure 2 forms a
measurement tube with its inner surfaces. Ex. 1011 ¶ 24; Ex. 1010, Fig. 1.
Transducers may be placed in the inner surface of the measurement tube. Id.
E. Anticipation by Ueki
Petitioner asserts that Ueki anticipates claims 1, 2, 5, 7, 9, and 11–13
of the ’957 patent. Pet. 47–54 (citing Ex. 1006 ¶¶ 1, 22, 36, 49, 66, 81, 85,
87–90, 92, 96, Fig. 9, Fig. 10, Fig. 11, Fig. 12B). Patent Owner disagrees,
arguing that Ueki does not disclose a cavity separated from the flow tube, or
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a monolithic polymer structure cast in one piece, wherein the monolithic
structure includes a flow tube and a cavity that houses, or is arranged to
house, at least one ultrasonic transducer and a measurement circuit. Resp.
51–55 (citing Ex. 1006 ¶¶ 85, 87, 96, Figs. 11, 12B; Ex. 2010 ¶¶ 59–64, 92–
99).
The nub of the parties’ dispute centers on the “cast in one piece” and
“cavity separated from the flow tube” limitations of claims 1 and 11.
Accordingly, we focus our discussion on those limitations first and then turn
to the remaining limitations of claims 1 and 11 and to claims 2, 5, 7, 9, 12,
and 13, which Patent Owner does not contest separately. See generally
Resp.
1. Claims 1 and 11
a) “cast in one piece”
As we explain above, we determine that “cast in one piece” is a
process limitation that does not impart patentable weight to the claims, but
even if we concluded that “cast in one piece” was entitled to patentable
weight we would construe the limitation to mean “a molded one-piece
structure.” See supra § II.C.1. Thus, Petitioner need not establish that Ueki
discloses the housing as cast in a single mold in order to show that Ueki
teaches the “cast in one piece” limitation.
Petitioner asserts that Ueki discloses a monolithic polymer structure
cast in one piece because Ueki discloses a molded one-piece structure.
Pet. 48–49. In particular, Petitioner asserts that Ueki discloses through
water pipe line 10 that is formed integrally with central casing member 22.
Id. at 48 (citing Ex. 1006 ¶ 87). Petitioner also asserts that Ueki provides a
sensor with detection section 500 that can be molded of the same material in
one piece. Id. (citing Ex. 1006 ¶ 96, Fig. 10).
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Patent Owner argues that Ueki’s water pipe line 10 and casing 20 are
not cast in one piece because Ueki does not disclose how water pipe line 10
and casing 20 could be integrated, or that the parts may be cast in the same
mold. Resp. 53. Patent Owner asserts that Petitioner improperly merges
Ueki’s disclosure of water pipe line 10 and casing 20, Ex. 1006 ¶¶ 85–87,
with Ueki’s disclosure that detection section 500 can be molded in one
piece, id. ¶ 96, to infer a nondisclosed structure. Resp. 53–54 (citing
Ex. 2010 ¶¶ 96–99). Thus, Patent Owner asserts Ueki does not disclose
water pipe line 10 being “cast in one piece” with casing member 22 and
back cover 21 to satisfy the housing cavity (i.e., cavity formed by casing
members 21 and 22) being “cast in one piece” with a flow tube (i.e., water
pipe line 10). Id. Supporting Patent Owner’s arguments, Dr. Cairns testifies
that one of ordinary skill in the art would understand that Ueki’s casing and
water pipe 10 could not be “cast in one piece” in any commercially viable
way, if at all, i.e., they could not be cast in a single mold. Ex. 2010 ¶¶ 96–
99.
As we explain above, we determine that “cast in one piece” is not a
structural limitation, but rather a process limitation that does not impart
patentable weight to the claim. In addition, we do not adopt Patent Owner’s
construction of “cast in one piece,” which would require that the housing be
cast in a single mold. Therefore, the question of whether Ueki discloses that
the housing cavity and flow tube are cast, or capable of being cast, in a
single mold has no bearing on the question of anticipation. See Reply 25
(pointing out that Patent Owner’s arguments are based on its claim
construction). In other words, Petitioner need only show that Ueki teaches a
housing comprising a monolithic polymer structure that includes the other
limitations of claims 1 and 11.
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Petitioner establishes that Ueki teaches a monolithic polymer
structure. See Pet. 49 (citing Ex. 1006 ¶¶ 85, 87, 96, Fig. 10). In particular,
Ueki discloses detection section 500 of a flow sensor that includes casing
members 21, 22, 23, and through water pipe line 10. Ex. 1006 ¶ 87. Ueki
further discloses that “water pipe line 10 is formed integrally with the casing
member 22.” Id. Ueki explains that detection section 500 “can be molded
of the same material in one piece and can be easily manufactured” for cost
reduction. Id. ¶ 96. Thus, Ueki teaches a flow meter housing comprising a
monolithic polymer structure, which reads on the structure in claims 1 and
11 regardless of how it was cast. Even if we were to determine that “cast in
one piece” is entitled to patentable weight, Petitioner establishes that Ueki’s
above-discussed disclosure teaches a molded one-piece structure.
Patent Owner’s assertion that Petitioner improperly combines Ueki’s
embodiments because integral forming of through water pipe line 10 with
central casing 22 only applies to the embodiment depicted in Ueki’s Figure
11, whereas the one-piece molding of detection section 500 only applies to a
separate embodiment depicted in Ueki’s Figure 12 is not persuasive. Ueki
discusses both of these teachings in reference to a “Second embodiment”
disclosed in paragraphs 82–96. Moreover, Ueki states that Figures 10, 11,
12A, and 12B all depict the flow sensor “according to the second
embodiment of the invention.” Ex. 1006 ¶¶ 83, 86 (emphasis added); see
also id. ¶ 31 (describing Figures 10, 11, 12A, and 12B as all pertaining to
the second embodiment). Therefore, assuming that “cast in one piece” is
entitled to patentable weight, Ueki teaches a flow meter housing that is a
molded one-piece structure, i.e. cast in one piece.
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b) “cavity separated from flow tube”
Petitioner asserts that Ueki teaches “the monolithic structure includes
a flow tube and a cavity separated from the flow tube.” Pet. 49–50 (citing
Ex. 1006 ¶¶ 49, 81, 87–88, Fig. 11). Specifically, Petitioner asserts
circuit/sensor housing area AS within casing member 22 is separate from
through water pipe line 10. Id.
Patent Owner argues that one of ordinary skill in the art would not
have recognized Ueki’s flow tube as being separated from the surrounding
cavity. Resp. 51–52 (citing Ex. 2010 ¶¶ 59–64, 92–95). Patent Owner’s
argument is based on its proposed construction of “cavity separated from the
flow tube,” i.e., such that a flow tube that runs through a cavity is not one
that is separated from the cavity. Id. at 52.
As we explain above, we determine that the phrase “cavity separated
from the flow tube” does not require the flow tube to be separated from the
cavity via a separate wall as Patent Owner argues. As Petitioner contends,
Ueki discloses a “detection section 500 [has casing 20 that] is made up of
casing members 21, 22, and 23” and additionally includes a through water
pipe line 10 “formed integrally with” and molded of the same resin fluoride
material as the casing member 22.” Pet. 49–50; Ex. 1006 ¶¶ 49, 81, 85, 87,
Figs. 10–11. Ueki also discloses that “[t]he casing member 22 has a
circuit/sensor housing area AS in an internal portion” of the casing member.
Ex. 1006 ¶ 88, Fig. 11. Through water pipe line 10 runs through
circuit/sensor housing area AS and is separated from circuit/sensor housing
area AS by the outer surface of through water pipe line 10. Id. ¶ 31, Figs.
11, 12B. Therefore, Ueki teaches the monolithic structure including a flow
tube and a cavity separated from the flow tube.
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c) Remaining limitations
Petitioner explains how Ueki discloses the remaining limitations of
claims 1 and 11. For example, Petitioner explains that Ueki discloses “[a]n
ultrasonic flow meter housing comprising a monolithic structure . . .
includ[ing] a flow tube and a cavity . . . wherein the flow tube defines a
through-going straight flow section arranged for passage of a fluid between
an inlet and an outlet.” Pet. 49–50 (citing Ex. 1006 ¶¶ 1, 49, 81, 85, 87–88,
Figs. 10, 11). Petitioner also explains that Ueki discloses “part of a wall of
the flow section is part of an inside surface of the cavity, so that the flow
section and the cavity has a shared wall area.” Id. at 50 (citing Ex. 1006,
Fig. 11). Petitioner further explains that Ueki discloses “the cavity is
arranged for housing at least one ultrasonic transducer, at the shared wall
area; [and] a measurement circuit operationally connected to the at least one
ultrasonic transducer so as to allow measurement of a flow rate of the fluid.”
Id. at 50–51 (citing Ex. 1006 ¶¶ 36, 66, 88–90, Fig. 9).17
Patent Owner does not address these assertions and, therefore, has
forfeited any arguments for patentability based on these uncontested
limitations. See Resp.; see also Paper 11, 8 (Scheduling Order cautioning
Patent Owner that “any arguments for patentability not raised in the response
may be deemed waived”); cf. In re NuVasive, 842 F.3d 1376, 1381 (Fed. Cir.

17 Claim 11 uses slightly different language than claim 1 for the limitations
directed to the at least one transducer and the measurement circuit.
Compare Ex. 1001, 6:50–55, with id. at 7:28–3. Petitioner relies on its
analysis for claims 1 and 5 to establish that Ueki teaches these limitations.
Pet. 53; see id. at 51–52 (citing Ex. 1006 ¶¶ 66, 90). Neither party points to
any meaningful difference between claims 1 and 11, nor does Patent Owner
respond to Petitioner’s assertions that Ueki teaches the transducer and
measurement circuit limitations.
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38
2016) (explaining that a patent owner waives an argument presented in the
preliminary response if it fails to renew that argument in the patent owner
response during the instituted trial). Because a preponderance of the
evidence supports Petitioner’s arguments relating to Ueki’s teachings, we
adopt Petitioner’s arguments as our own. See Pet. 47–51 (and evidence cited
therein); see also In re NuVasive, 841 F.3d 966, 974 (Fed. Cir. 2016)
(explaining that the Board need not make specific findings as to claim
limitations that a patent owner fails to dispute the prior art discloses).
Accordingly, Petitioner establishes by a preponderance of the evidence that
Ueki anticipates claims 1 and 11.
2. Additional Claims
Claims 2, 5, 7, and 9 depend from claim 1, and claims 12 and 13
depend from claim 11. Ex. 1001, 6:56–58, 6:65–7:2, 7:8–10, 7:13–15, 8:4–
11. Petitioner explains how Ueki discloses the additional limitations of
these claims. Pet. 51–54 (citing Ex. 1006 ¶¶ 22, 36, 66, 87, 90, 92, Figs. 10,
11, 12B). Patent Owner does not contest Petitioner’s arguments or evidence
as to the additional limitations of claims 2, 5, 7, 9, 12, and 13 and, again, has
forfeited any arguments as to the patentability of these claims, besides the
arguments presented for claims 1 and 11. See generally Resp.; Paper 11, 8.
Because a preponderance of the evidence supports Petitioner’s arguments
relating to Ueki’s teachings, we adopt Petitioner’s arguments as our own.
See Pet. 51–54 (and evidence cited therein); NuVasive, 841 F.3d at 974.
Accordingly, Petitioner establishes by a preponderance of the evidence that
Ueki anticipates claims 2, 5, 7, 9, 12, and 13.
F. Obviousness Grounds Based on Ueki
Petitioner asserts five obviousness grounds against the remaining
dependent claims: (1) Ueki, with or without Will, for claims 3 and 4,
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Pet. 54–55; (2) Ueki, Elson, and/or Barker for claims 6 and 8, id. at 55–56;
(3) Ueki, Will, and/or Buckberry for claim 10, id. at 56; (4) Ueki and
Drachmann for claim 14, id. at 57; and (5) Ueki, Drachmann, and/or Goertz
for claim 15, id. at 58.
Patent Owner argues that the subject matter of claims 3 and 4 would
not have been obvious over Ueki. Resp. 55–57. Patent Owner also contends
that the subject matter of claims 6 and 8 would not have been obvious over
Ueki in view of Elson and/or Barker. Id. at 57–61. Patent Owner does not
separately contest Petitioner’s arguments or evidence as to the obviousness
of claims 10, 14, and 15. See generally Resp. Rather, Patent Owner
contends Petitioner fails to establish that claims 10, 14, and 15 are
unpatentable because Petitioner’s arguments “do not address or redress the
various deficiencies in Ueki” regarding the limitations “a monolithic
polymer structure being cast in one piece” and “a cavity separated from the
flow tube.” Id. at 61.
1. Contested grounds and claims
We begin our analysis with the contested grounds and claims. We
first address claims 3 and 4, and then turn to claims 6 and 8.
a) Claims 3 and 4 – Obviousness over Ueki, with or without Will
Claim 3 depends from claim 1 and further recites “wherein the cavity
only has a single opening.” Ex. 1001, 6:59–60. Claim 4 depends from
claim 3 and further recites “wherein a rim of the cavity is arranged for sealed
connection with a cover, so that the cover and the cavity define an enclosure
with only a single sealing area.” Ex. 1001, 6:61–64. Petitioner asserts that
the subject matter of claims 3 and 4 would have been obvious over Ueki.
Pet. 54–55.
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Petitioner acknowledges that Ueki teaches a casing with an opening
on each side as depicted in Figure 11 (i.e., two openings), or alternatively,
discloses the entire housing, i.e., detection section 500 can be molded in one
piece such that there are no openings to the cavity AS. Pet. 54–55 (citing
Ex, 1006 ¶¶ 92, 96, Fig. 11). In view of these alternate disclosures,
Petitioner argues, and Dr. Johnson testifies, that a person of ordinary skill in
the art would have modified Ueki “such that the housing has an opening on
only one side,” as a matter of design choice, thereby resulting in one casing
side 21 integrally molded with central casing 22 and flow tube 10 “to
simplify assembly and reduce leaking, while still permitting access to
internal housing area AS with one coverable opening (defined by the
perimeter of seal face GS).” Id. at 55 (citing Ex. 1021 ¶¶ 133–35).
Petitioner further argues that even though an ordinarily skilled artisan would
have had reason to modify Ueki alone to have only one cavity opening,
Will’s teaching that “one cavity opening is sufficient to access the electronic
components in the cavity” evidences and supports such a modification. Id.
(citing Ex. 1002, Fig. 3; Ex. 1003, 8:14–18; Ex. 1021 ¶ 135).
Patent Owner argues that if the housing of Ueki were modified
according to Petitioner’s arguments, such a housing “could not be made in
a single mold using standard technologies.” Resp. 55–56 (citing Ex. 2010
¶¶ 103–06). Thus, Patent Owner argues that one of ordinary skill in the art
would not have been motivated to modify Ueki as Petitioner asserts, because
the internal pipe would trap the resulting structure of the mold part within
the housing. Id. at 56 (citing Ex. 2010 ¶¶ 103–06).
Patent Owner’s arguments against Ueki’s modification depend on
casting the housing within a single mold. As discussed in § II.C.1 above,
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however, we do not construe the limitation “cast in one piece” to require the
housing to be cast in a single mold.
Turning to Petitioner’s arguments, we agree with Petitioner that it was
known to make a housing with one opening as providing sufficient means
“to access the electronic components in the cavity.” Pet. 55 (citing Ex.
1002, Fig. 3; Ex. 1003, 8:14–18; Ex. 1021 ¶ 135). Will teaches that the
interior of the housing forms a trough that has rim 14 and lip 16 of the rim
around the perimeter of the trough to provide a connection area for a lid and
to define an enclosure. Ex. 1003, 4:10–14. We credit Dr. Johnson’s
unrebutted testimony that the ordinary artisan would have formed the
housing of Ueki with a single opening that had a rim arranged for sealed
connection with a cover “in order to simplify assembly and reduce leaking,
while still permitting access to the internal housing area AS with one
coverable opening (defined by the perimeter of seal face GS).” Ex. 1021
¶ 134.
Accordingly, Petitioner establishes by a preponderance of the
evidence that the subject matter of claims 3 and 4 would have been obvious
over Ueki and Will.
b) Claims 6 and 8 – Obviousness over Ueki in view of Elson and/or Barker
Claim 6 depends from claim 1 and further recites “wherein the flow
section has one or more protrusions or indentions at the inside of the flow
section serving to engage with an associated measurement tube element or
an ultrasonic reflector arrangement.” Ex. 1001, 7:3–7. Claim 8 depends
from claim 1 and recites “further comprising a metal pocket cast into the
flow tube.” Id. at 7:11–12. Petitioner asserts that the subject matter of
claims 6 and 8 would have been obvious over Ueki in view of Elson and/or
Barker. Pet. 24–27, 55–56.
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For the additional limitations of both claims, Petitioner points to
Elson’s metal receiver 95 mounted in polymeric tube 87 with fluid flow
passage 89. Pet. 25, 55–56 (citing Ex. 1012, 4:62–66; Fig. 4). Petitioner
asserts that Elson discloses receiver 95 attached to tube section 87 by insert
molding. Id. at 25 (citing Ex. 1012, 5:15–17). Petitioner further asserts that
receiver 95 accommodates thermistor 115. Id. (citing Ex. 1012, 4:62–66).
Alternatively, Petitioner points to Barker’s thermally conductive enclosure
28 within housing 22 for accommodating temperature sensor 32. Id. at 26,
55–56 (citing Ex. 1013, 3:37–53). Petitioner asserts that Elson’s receiver 95
and/or Barker’s thermally conductive enclosure 28, both metal pockets, are
protrusions at the inside of the flow section to engage with a temperature
sensor, i.e., an associated measurement tube element. Pet. 26–27, 55–56.
Petitioner argues, and Dr. Johnson testifies, that an ordinarily skilled artisan
would have modified Ueki’s flow meter to cast “a metal pocket, such as a
thermowell, in the wall of” Ueki’s flow tube, as “a well-known way of
measuring the temperature of the fluid at that time.” Id. at 55–56 (citing
Ex. 1021 ¶¶ 61, 137–38); Reply 26 (citing Ex. 1021 ¶¶ 61, 137–38).
Patent Owner responds that one of ordinary skill in the art would not
have had a reason to combine the teachings of Elson or Barker with Ueki.
Resp. 57. In particular, Patent Owner argues that Ueki is silent as to
measuring temperature, and thus, there would have been no specific reason
to modify Ueki with Elson or Barker. Id. at 57–58 (citing Pet. 26, 55).
Patent Owner continues that Petitioner relies generally upon the arguments
Petitioner presents as to the Will reference, specifically Will’s “disclosed
objective of measuring temperature as providing motivation for combination
with Elson or Barker.” Id. (citing Pet. 26). Patent Owner also argues that
one of ordinary skill in the art would not have had a reason to combine the
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teachings of Elson or Barker with Ueki, because Elson and Barker are
directed to the unrelated field of measuring blood in a human body and have
“completely different design considerations.” Id. at 58 (citing Ex. 2011
¶ 72–7718). Patent Owner further asserts that one of ordinary skill in the art
would not have recognized a benefit or reason to include a measurement
tube element or reflector arrangement in Ueki’s sensor due to the positioning
of Ueki’s transducers. Id. (citing Ex. 2011 ¶ 76; Ex. 1007, 13:19–20).
Patent Owner further argues that even if an ordinarily skilled artisan
would have modified Ueki as Petitioner proposes, neither Elson nor Barker
discloses “protrusions or indentations on the interior surface of the flow
section and engaging with a structure inserted into the inlet or outlet of the
flow tube,” as claim 6 requires. Id. at 57, 59–61 (citing Ex. 2011 ¶¶ 73–75).
Patent Owner contends that the temperature sensor and thermowell
Dr. Johnson identifies do not satisfy this limitation because those structures
do not measure fluid flow rate. Id. at 59 (citing Ex. 2011 ¶¶ 73–75). Patent
Owner further asserts the flow meter resulting from the combination would
not have a “measurement tube element,” because the measurement tube
element of claim 6 is different from a temperature sensor. Id. at 59–61
(citing Ex. 1012; Ex. 1013; Ex. 2011 ¶¶ 73–75). More particularly, Patent
Owner, citing Mr. Barfuss’s testimony, asserts that Elson’s and Barker’s
thermowells are designed to engage a sensor supported in a separate body
outside the flow tube that is then inserted into the flow tube. Id. at 60 (citing

18 Patent Owner’s citations to Mr. Barfuss’s declaration are to paragraphs
addressing Petitioner’s grounds associated with the prior art reference
Buckberry. It appears that Patent Owner intended to cite paragraphs 72–77
of Mr. Barufss’s declaration, which address Ueki and claims 3 and 4, so we
instead cite those paragraphs.
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Ex. 2011 ¶¶ 91–92). Thus, argues Patent Owner, “[n]either Elson nor
Barker discloses [a] measurement tube element or an ultrasonic reflector
arrangement inserted into the inlet or outlet of the flow tube.” Id. at 61
(citing Ex. 2011 ¶¶ 93, 95).
Having considered the arguments and evidence, we determine that
Petitioner has the better position. We first address how both Elson and
Barker disclose protrusions at the inside of the flow section serving to
engage with an associated measurement tube element or an ultrasonic
reflector arrangement, as claim 6 requires.
Patent Owner’s arguments to the contrary center on its constructions
of claim 6’s limitations “measurement tube element” and “at the inside of
the flow section serving to engage with.” Resp. 24–26, 57, 59–61. Patent
Owner argues that a “measurement tube element” is “an element that is used
to measure fluid flow,” and is not a temperature sensor or “anything other
than [an] element used to measure . . . flow.” Id. at 24–25. To support this
position, Patent Owner asserts the’957 patent references a “measurement
tube element” only with respect to an exemplary ultrasonic reflector
arrangement that is used to measure flow. Id. (citing Ex. 1001, 5:12–23,
Fig. 4). Patent Owner further asserts that the ’957 patent distinguishes
temperature sensors from a “measurement tube element” because it discloses
a temperature sensor “in the form of a metal pocket cast into the monolithic
polymer structure.” Id. (citing Ex. 1001, 5:38–46).
Petitioner replies that “measurement tube element” is not so narrow as
to be limited to an element for measuring flow or flow rate, and instead is a
“flow tube element for taking a measurement.” Reply 18–19 (citing
Ex. 1035 ¶¶ 49–50). According to Petitioner, “measurement tube element”
is not limited to the exemplary ultrasonic reflector arrangement because
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claim 6’s language itself differentiates between “an associated measurement
tube element or an ultrasonic reflector arrangement.” Id. at 18 (citing
Ex. 1001, 7:4–7). Petitioner further argues that, contrary to Patent Owner’s
argument, the ’957 patent does not distinguish a “measurement tube
element” from a temperature sensor. Id. at 19. Petitioner directs us to the
’957 patent’s disclosure that temperature sensors may be in the form of a
metal pocket, but also may be provided by “other suitable means.” Id.
(citing Ex. 1001, 5:42–46). Regardless, Petitioner asserts that it is unclear
how having a temperature sensor as a metal pocket distinguishes it from a
measurement tube element. Id.
As Petitioner asserts, the language of claim 6 distinguishes between a
measurement tube element and an ultrasonic reflector arrangement.
Ex. 1001, 7:3–7 (“The flow meter housing according to claim 1, wherein the
flow section has one or more protrusions or indentions at the inside of the
flow section serving to engage with an associated measurement tube element
or an ultrasonic reflector arrangement.” (emphasis added)). The written
description of the ’957 patent does not limit the measurement tube element
to any particular device or arrangement. See id. at 5:12–14, 24–25, Fig. 4.
And the ’957 patent discusses measuring temperature using a temperature
sensor mounted as “a metal pocket cast into the monolithic polymer, or by
other suitable means.” Id. at 5:38–46. Accordingly, we conclude that claim
6’s “measurement tube element” is not limited to an ultrasonic reflector
arrangement or an element to measure only fluid flow and can include a
temperature sensor.
Next, we turn to Patent Owner’s proposed construction of the phrase
“at the inside of the flow section serving to engage with” as “on the interior
surface of the flow section and engaging with a structure inserted into the
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inlet or outlet of the flow tube.” Resp. 25 (citing Ex. 2011 ¶¶ 42–45).
Patent Owner asserts that a protrusion or indention at the inside of the flow
section must be on or part of the wall of the flow section and integral with
the inside surface of the wall because the flow section is part of the flow
tube, which is itself part of the monolithic polymer housing. Id. at 25–26.
Patent Owner also contends that the protrusions or [indentions] must
“engage with a separate structure inserted into the flow section.” Id.
Specifically, Patent Owner argues that the claimed protrusions or indentions
cannot be “structures inserted into the flow tube, nor can they be structures
that are inside the flow tube wall but do not form an indention or protrusion
on the inside surface of the flow section.” Id. at 26.
Petitioner replies that Patent Owner is attempting to incorporate a
narrowing limitation into a broader claim. Reply 20. Petitioner further
argues that Patent Owner provides “no rationale, and cites no evidence, to
support the assertion that the[] protrusions/indentations are limited to
protrusions/indentations that engage with a structure inserted into the inlet or
outlet of the flow tube.” Id.
According to claim 6, the protrusions or indentions are located “at the
inside of the flow section,” or within the bounds of flow section. Ex. 1001,
7:4–7. Further, the protrusions or indentions “serv[e] to engage with an
associated measurement tube element.” Id. (emphasis added). Thus,
according to the plain language of claim 6, the limitations are satisfied as
long as the protrusions or indentions are within the bounds of the flow
section and are capable of engaging with a measurement tube element.
As Petitioner argues, Elson discloses receiver 95, i.e., a protrusion or
metal pocket, attached to tube section 87, i.e. a flow tube. Ex. 1012, 5:15–
17. Elson’s receiver 95 “extends diametrically completely across the [flow]
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passage 89 of the tube section and, therefore, is located at the inside of the
flow section. Id. at 5:5–6. Receiver 95 accommodates probe 23, which may
be thermistor 115. Id. at 4:61–66, 5:26–28, 6:1–5. Thus, Elson’s receiver
serves to engage with a measurement tube element. Mr. Barfuss
acknowledges as much, testifying that Elson’s receiver can be molded into
the polymeric tube section and that the receiver “protrudes inside the flow
section of that tube.” Ex. 1023, 31:20–32:12. Additionally, Barker
discloses thermally conductive enclosure 28, i.e., a protrusion or metal
pocket, within housing 22, i.e. a flow tube, for accommodating temperature
sensor 32. Ex. 1013, 3:37–53, 3:59–62. Again, Mr. Barfuss acknowledges
that the “enclosure 28 protrudes inside the flow section of the tube 22.”
Ex. 1023, 30:14–31:11. Accordingly, Petitioner establishes that Elson’s and
Barker’s protrusions are “one or more protrusions or indentions at the inside
of the flow section serving to engage with an associated measurement tube
element or an ultrasonic reflector arrangement.”
We now turn to Petitioner’s rationale to modify Ueki with Elson’s
and/or Barker’s protrusions. We determine that Petitioner articulates
sufficient reasoning with a rational underpinning to support the
modification. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Specifically, we
credit Dr. Johnson’s unrebutted testimony that one of ordinary skill in the art
would have appreciated that “it was very common at the time [i.e., prior to
December 2009,] to also measure temperature when measuring flow.”
Ex. 1021 ¶ 138; see id. ¶¶ 59–61 (Dr. Johnson’s testimony that Will is
evidence of the desire to measure temperature when measuring flow and
“[t]hough this is explicitly disclosed in Will, it is not unique to Will, as it
was very common at that time to also measure temperature when measuring
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flow”); see also Ex. 1003, 1:1–6 (Will teaching an ultrasonic measuring
assembly “for measuring the flow, speed of sound, density, viscosity and/or
temperature of flowing media . . . .” (emphasis added)); Ex. 1001, 5:38–46
(acknowledging that energy meters are a type of flow meter that measures
temperature). Thus, Patent Owner’s argument about Ueki’s “silen[ce] with
respect to measuring temperature” is unavailing because the art teaches that
it was known to measure temperature when measuring flow.
Patent Owner’s arguments that Elson and Barker are directed to
unrelated fields, i.e., nonanalogous, and that an ordinarily skilled artisan
would not have considered them in modifying a flow meter are also
unavailing. Resp. 58. Patent Owner admits that “Elson is a system for
sensing a characteristic of fluid flowing to or from the body of a human” and
“Barker is a fluid temperature sensor for use in a cardiovascular flow
measuring system.” Id. at 40 (emphasis added). Therefore, Patent Owner
admits that Elson and Barker are directed to sensing or measuring fluid flow
and fluid flow characteristics such as temperature. Accordingly, we find that
Elson and Barker are at least in the same field of endeavor as the ’957
patent, i.e., fluid flow measuring systems. See In re Bigio, 381 F.3d 1320,
1325 (Fed. Cir. 2004) (setting forth the tests that define the scope of
analogous prior art).
Patent Owner also asserts, and Mr. Barfuss testifies, that one of
ordinary skill in the art would not have had a reason to add a measurement
tube or reflector to Ueki because Ueki’s transducers are positioned directly
opposite one another on opposing sides of the flow tube, so no modification
or reflection would be necessary or desired. Resp. 58 (citing Ex. 2011 ¶ 76).
This argument and Mr. Barfuss’s testimony, which appear to be based on
Patent Owner’s claim construction, do not explain why the positions of the
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transducers would have affected the ordinarily skilled artisan’s desire to
include a temperature sensor. Additionally, some of Patent Owner’s
argument appears to be based on bodily incorporation because Petitioner
does not rely on Elson and Barker as teaching adding a reflector. See Pet.
26–27, 55–56. The test for obviousness “is not whether the features of a
secondary reference can be bodily incorporated into the structure of the
primary reference.” MCM Portfolio LLC v. Hewlett-Packard Co., 812 F.3d
1284, 1294 (Fed. Cir. 2015) (quoting In re Keller, 642 F.2d 413, 425 (CCPA
1981)).
Accordingly, Petitioner establishes the subject matter of claims 6 and
8 would have been obvious over Ueki and Elson and/or Barker.
2. Additional grounds and claims
As noted above, Petitioner argues that the subject matter of claims 10,
14, and 15 would have been obvious over Ueki and additional prior art
references. Claim 10 depends from claim 1, and claims 14 and 15 depend
from claim 11. Ex. 1001, 7:16–17, 8:12–30. Petitioner explains how Ueki,
Will, and/or Buckberry teach the additional limitations of claim 10. Pet. 56
(citing Ex. 1002, Fig. 3; Ex. 1003, 8:5–7; Ex. 1007, Fig. 4; Ex. 1021 ¶¶ 141–
43). Petitioner explains how Ueki and Drachmann teach the additional
limitations of claim 14. Id. at 57 (citing id. at 54–55; Ex. 1006 ¶¶ 88–89;
Ex. 1009 ¶¶ 15–16, claim 2; Ex. 1021 ¶¶ 133–35, 148). And Petitioner
explains how Ueki and Drachmann and/or Goertz teach the limitations of
claim 15. Id. at 58 (citing id. at 28–32; Ex. 1006 ¶¶ 88–89; Ex. 1010;
Ex. 1021 ¶ 152). Petitioner also provides reasons why a person of ordinary
skill in the art would have modified Ueki with each of the additional
references to arrive at the inventions of claims 10, 14, and 15. Id. at 56–58.
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Patent Owner does not contest Petitioner’s arguments or evidence as
to the additional limitations of claims 10, 14, and 15 apart from arguments
we already address as to other challenged claims19 and, again, has forfeited
any additional arguments as to the patentability of these claims. See
generally Resp.; Paper 11, 8. Because a preponderance of the evidence
supports Petitioner’s arguments relating to Ueki’s, Will’s, Buckberry’s,
Drachmann’s, and Goertz’s teachings, we adopt Petitioner’s arguments as
our own. See Pet. 56–58 (and evidence cited therein); NuVasive, 841 F.3d at
974. Accordingly, Petitioner establishes by a preponderance of the evidence
that the subject matter of claim 10 would have been obvious over the
combination of Ueki, Will, and/or Buckberry, the subject matter of claim 14
would have been obvious over the combination of Ueki and Drachmann, and
the subject matter of claim 15 would have been obvious over Ueki,
Drachmann and/or Goertz.
G. Remaining Grounds
Having determined that Petitioner establishes by a preponderance of
the evidence that Ueki anticipates claims 1, 2, 5, 7, 9, and 11–13, and that
the subject matter of claims 3, 4, 6, 8, 10, 14, and 15 would have been
obvious over Ueki alone or with additional references, we do not address
Petitioner’s additional grounds challenging claims 1–15. See SAS Inst. Inc.
v. Iancu, 138 S. Ct. 1348, 1359 (2018) (holding a petitioner “is entitled to a
final written decision addressing all of the claims it has challenged”);
Boston Sci. Scimed, Inc. v. Cook Grp. Inc., 809 F. App’x 984, 990 (Fed. Cir.

19 Claim 14 recites “the cavity only has a single opening which has been
covered in a sealed manner by a cover.” As discussed in § II.F.1.a above,
the combination of Ueki and Will would have rendered this limitation
obvious.
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2020) (nonprecedential) (“We agree that the Board need not address
[alternative grounds] that are not necessary to the resolution of the
proceeding.”).
III. CONCLUSION
Based on the evidence and arguments, Petitioner establishes by a
preponderance of the evidence that claims 1–15 of the ’957 patent are
unpatentable.20
IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that Petitioner establishes by a preponderance of the
evidence that claims 1–15 of the ’957 patent are unpatentable; and
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.
In summary:
Claim(s)

35
U.S.C.
§
Reference(s)/Basis Claim(s)
shown
unpatentable
Claim(s)
Not shown
unpatentable
1, 2, 5, 7,
9, 11–13
102(b) Ueki 1, 2, 5, 7, 9,
11–13

3, 4 103(a) Ueki, with or
without Will
3, 4

20 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
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Claim(s)

35
U.S.C.
§
Reference(s)/Basis Claim(s)
shown
unpatentable
Claim(s)
Not shown
unpatentable
6, 8 103(a) Ueki, Elson and/or
Barker
6, 8
10 103(a) Ueki, Will and/or
Buckberry
10
14 103(a) Ueki, Drachmann 14
15 103(a) Ueki, Drachmann
and/or Goertz
15
1–5, 7, 9–
13
102(b) Will21
1–5, 7, 9–
13
103(a) Will, Hiss, Ueki,
Buckberry, and/or
Bignell

6, 8 103(a) Will, Elson and/or
Barker

14 103(a) Will, Drachmann
15 103(a) Will, Drachmann
and/or Goertz

1–5, 7, 9,
11–13
102(b) Hiss22
6 103(a) Hiss, Buckberry
6, 8 103(a) Hiss, Elson and/or
Barker

10 103(a) Hiss, Will and/or
Buckberry

14 103(a) Hiss, Drachmann
15 103(a) Hiss, Drachmann
and/or Goertz

1–7, 9–13,
15
102(b) Buckberry23

21 As discussed in § II.G, we do not reach the grounds asserting Will as the
only or the primary reference.
22 As discussed in § II.G, we do not reach the grounds asserting Hiss as the
only or the primary reference.
23 As discussed in § II.G, we do not reach the grounds asserting Buckberry
as the only or the primary reference.
IPR2019-01640
Patent 8,806,957 B2
53
Claim(s)

35
U.S.C.
§
Reference(s)/Basis Claim(s)
shown
unpatentable
Claim(s)
Not shown
unpatentable
8 103(a) Buckberry, Elson
and/or Barker

14 103(a) Buckberry,
Drachmann

Overall
Outcome
1–15

IPR2019-01640
Patent 8,806,957 B2
54
FOR PETITIONER:
David W. Aldrich
Todd M. Oberdick
FORGE IP, PLLC
daldrich@forge-ip.com
toberdick@forge-ip.com

FOR PATENT OWNER:
Mark C. Johnson
Kyle B. Fleming
Bonnie Smith
RENNER OTTO
mjohnson@rennerotto.com
kfleming@rennerotto.com
bsmith@rennerotto.com