Pacific Surf Designs Inc v. Surf Waves Ltd

1. Case Identification

• Case #: IPR2016-01454
• Patent #: 8,088,016
• Filed: July 18, 2016
• Petitioner(s): Pacific Surf Designs, Inc.
• Patent Owner(s): Surf Waves, Ltd.
• Challenged Claims: 1-20

2. Patent Overview

• Title: Half-Pipe Water Ride
• Brief Description: The ’016 patent discloses a simulated surfing water ride configured as a "half-pipe." The invention includes an activity section with a substantially flat middle portion and opposite-facing curved sidewalls, allowing riders to propel themselves across the ride surface perpendicular to the main water flow.

3. Grounds for Unpatentability

Ground 1: Claims 1-20 are Anticipated or Obvious over Lochtefeld 589

• Prior Art Relied Upon: Lochtefeld 589 (Patent 6,491,589).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Lochtefeld 589, which discloses a simulated-wave water ride, anticipates every limitation of independent claims 1 and 20. Lochtefeld 589 allegedly teaches an activity section with a flat or horizontal portion (162) and a sloped ride surface (120), which together form the claimed "substantially flat, inclined middle section." Petitioner contended that the sidewalls (e.g., 216b, 212b) are curved, extend upwardly, and are "opposite" each other under the broadest reasonable interpretation, consistent with the Patent Owner's positions in related district court litigation. The reference also allegedly discloses a water delivery section (nozzles 130), a dewatering section at a higher elevation (grate 234), and a rider exit adjacent to the water delivery section (slide-over sluice cover 150).
  • Motivation to Combine (for obviousness): For dependent claims not expressly disclosed, Petitioner asserted they would have been obvious modifications. For example, adding stairs to a rider exit was presented as an obvious design choice for safety and accessibility on an elevated ride structure. Similarly, dimensions, materials (fiberglass, concrete), and water flow speeds were argued to be routine design parameters a person of ordinary skill in the art (POSITA) would optimize for a particular environment.

Ground 2: Claims 1-20 are obvious over Lochtefeld 589 in view of Lochtefeld 590

• Prior Art Relied Upon: Lochtefeld 589 (Patent 6,491,589) and Lochtefeld 590 (Patent 5,738,590).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground was presented as an alternative to Ground 1. If the Board determined that Lochtefeld 589 does not teach the "opposite, curved sidewalls" limitation, Petitioner argued that Lochtefeld 590 explicitly does. Lochtefeld 590 discloses a wave-generating ride with curved sidewalls (36) on opposite sides of a ride surface, which can be varied to create different "flow effects." The remaining limitations of the claims were argued to be taught by the primary reference, Lochtefeld 589, as detailed in Ground 1.
  • Motivation to Combine: A POSITA would combine these references because they are in the same field of art (wave-generating water rides), share the same inventor, and address similar objectives. The motivation would be to incorporate the known technique from Lochtefeld 590—using varied curvature on opposite sidewalls to create interesting water flow effects—into the ride structure of Lochtefeld 589 to enhance the user experience and marketability of the attraction.
  • Expectation of Success: A POSITA would have a reasonable expectation of success, as this combination represents the simple substitution of a known type of sidewall (from Lochtefeld 590) for another to achieve predictable results (additional flow effects).

Ground 3: Claims 1-20 are obvious over Lochtefeld 530 in view of Lochtefeld 590

• Prior Art Relied Upon: Lochtefeld 530 (Patent 6,676,530) and Lochtefeld 590 (Patent 5,738,590).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Lochtefeld 530, which discloses a simulated wave ride, teaches every limitation of the independent claims except, potentially, for the requirement of curved sidewalls. Lochtefeld 530 discloses an activity section with a ride surface (150) bounded by sidewalls (160), a water delivery section (nozzles 120), and a dewatering section (porous floor 190). To the extent the sidewalls of Lochtefeld 530 are not considered curved, Petitioner again relied on Lochtefeld 590 to supply this feature.
  • Motivation to Combine: The motivation is identical to that in Ground 2. A POSITA would be motivated to improve the ride disclosed in Lochtefeld 530 by incorporating the curved sidewalls from Lochtefeld 590. This modification would add desirable and known "flow effects" to the ride, which is a straightforward application of a known technique to a similar system for a predictable improvement.

4. Key Claim Construction Positions

Petitioner argued for constructions consistent with those advanced by the Patent Owner in co-pending litigation, asserting they represented the broadest reasonable interpretation.

• "Opposite": Proposed as "on the other side from." This construction is critical for the anticipation argument in Ground 1, as it does not require the sidewalls to be parallel, thereby encompassing the non-parallel sidewall configuration shown in Lochtefeld 589.
• "Coupled": Proposed as "connected, directly or indirectly." This aligns with the patent’s explicit definition and allows for a broad reading of the connections between the ride's various sections.
• "Middle Section": Proposed as "the section of the water ride that has at least a portion positioned between the first curved sidewall and the second curved sidewall."
• "the first curved side": Proposed as "the first curved sidewall," to provide a proper antecedent basis for later claim language.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) would be inappropriate. It was contended that the primary references for Grounds 1 and 2 (Lochtefeld 589 and Lochtefeld 590) were never cited during the original prosecution. Although Lochtefeld 530 (primary reference for Ground 3) was listed in an Information Disclosure Statement, Petitioner asserted it was never substantively applied against any claims by the Examiner, and thus the Examiner did not consider the particular disclosures now being cited in the petition.

6. Relief Requested

• Petitioner requests institution of inter partes review and cancellation of claims 1-20 of the ’016 patent as unpatentable.