NV5 Inc v. TErracon Consultants Inc

1. Case Identification

• Case #: IPR2021-01508
• Patent #: 7,533,505
• Filed: September 10, 2021
• Petitioner(s): NV5, Inc.
• Patent Owner(s): Terracon Consultants, Inc.
• Challenged Claims: 1-3, 10, 17-21, 23-24

2. Patent Overview

• Title: Pile Anchor Foundation
• Brief Description: The ’505 patent discloses post-tensioned, pile anchor foundations for supporting heavy structures like wind turbines. The technology centers on a foundation cap connected to multiple underlying pile anchors, with a key feature being the intentional creation of a "void or gap" between the top of each pile anchor and the bottom surface of the foundation cap to facilitate the post-tensioning process.

3. Grounds for Unpatentability

Ground 1: Obviousness over Miura - Claims 1-3, 10, 17-21, and 23-24 are obvious over Miura in view of the knowledge of a POSA.

• Prior Art Relied Upon: Miura (JP 2002-061201).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Miura, which was not considered during the original prosecution, teaches every key limitation of the challenged claims. Miura discloses a post-tensioned, pile anchor foundation with a "footing" (foundation cap) and multiple "pile bodies" (pile anchors). Crucially, Miura explicitly teaches the use of "recesses" filled with "cushion material" located between the upper surface of each pile body and the corresponding bottom surface of the footing. Petitioner contended these recesses are the same as the "void or gap" limitation that was the basis for allowing the ’505 patent. Miura also discloses tension members extending from the pile bodies up through the footing, which are post-tensioned to pull the footing downward, thereby compressing the underlying soil and creating a stable foundation capable of resisting overturning forces.
  • Motivation to Combine (for §103 grounds): The petition asserted this ground based on Miura in view of the general knowledge, skill, and creativity of a Person of Ordinary Skill in the Art (POSA). Petitioner argued a POSA would have been motivated to make minor modifications to Miura to arrive at the claimed invention as a matter of simple design choice. For example, selecting a cylindrical shape for the foundation cap (claim 3) is a predictable choice for axisymmetric structures like towers to ensure consistent moment resistance. Similarly, using a threaded nut and base plate for the post-tensioning assembly (claim 10) was argued to be a well-known, standard technique for anchoring tension members in such foundations. The motivation was to apply known techniques to Miura’s structure to achieve predictable and beneficial results.
  • Expectation of Success: Petitioner asserted that a POSA would have had a high expectation of success in applying these known design choices to Miura’s foundation. The techniques, such as using specific anchoring hardware or foundation shapes, were common in the field, and their application to Miura's system would predictably achieve the known benefits of soil consolidation and increased resistance to vertical and inclined loads, as taught by Miura itself.
  • Key Aspects: The core of Petitioner's argument was that Miura discloses the exact structural feature—a void or gap between the pile anchor and the foundation cap—that the patent examiner found lacking in the prior art of record and which formed the basis of patentability for the ’505 patent.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion to deny institution under §314(a) based on the Fintiv factors. Petitioner contended that while a parallel district court case exists, key factors weigh heavily in favor of institution. Specifically, Petitioner argued the merits of the petition are exceptionally strong because the Miura reference was not before the examiner and appears to directly teach the feature upon which the ’505 patent was granted. Furthermore, Petitioner stipulated that if the inter partes review (IPR) is instituted, it will not pursue in the related litigation any invalidity ground that was raised or reasonably could have been raised in the IPR. Petitioner also noted that significant investment in the parallel proceeding had not yet occurred, with expert discovery still pending.

5. Relief Requested

• Petitioner requests institution of an IPR and cancellation of claims 1-3, 10, 17-21, and 23-24 of the ’505 patent as unpatentable.