The Importance Of Unpredictability In Claimed Ranges

Holding

In parallel inter partes review proceedings, petitioner Scientific Design Company, Inc. ("Scientific Design") challenged the patentability of all claims of U.S. Patent Nos. 8,357,825 ("the '825 patent") and 8,357,813 ("the '813 patent") owned by Shell USA, Inc. ("Shell"). The Patent Trial and Appeal Board ("PTAB" or "Board") determined that Scientific Design established by a preponderance of the evidence that claims 1–28 of both patents were obvious.¹ Notably, both patents were found obvious over the same combinations of references and via the same rationale; as well, the parties made the same arguments in both proceedings. For simplicity, this blog post will cite solely to IPR2022-00158 when analyzing points made in both proceedings.