NV5 Inc v. TErracon Consultants Inc

1. Case Identification

• Case #: IPR2021-01509
• Patent #: 7,618,217
• Filed: September 10, 2021
• Petitioner(s): NV5, Inc.
• Patent Owner(s): Terracon Consultants, Inc.
• Challenged Claims: 1, 3-9, 11, 14-21

2. Patent Overview

• Title: Post-tension pile anchor foundation and method therefor
• Brief Description: The ’217 patent discloses a post-tensioned pile anchor foundation system for supporting tall structures like wind turbines. The claimed invention centers on using multiple, individually soil-surrounded pile anchors and creating void spaces or highly compressible regions between the top of each pile anchor and the bottom of an overlying concrete foundation cap to manage forces during post-tensioning.

3. Grounds for Unpatentability

Ground 1: Claims 1, 3-9, 11, and 14-21 are obvious over Miura and the general knowledge of a POSA.

• Prior Art Relied Upon: Miura (JP Publication # 2002-061201)
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Miura, a Japanese patent publication, discloses all key elements of the challenged claims. Miura teaches a post-tensioned foundation with a concrete footing (foundation cap), multiple spaced-apart concrete pile bodies (pile anchors), and tensioning elements extending through them. Crucially, Miura explicitly discloses creating recesses filled with a compressible "cushion material" between the top of each pile body and the bottom of the footing. Petitioner asserted this structure directly corresponds to the ’217 patent's claimed "void forming element for creating a void space or highly compressible region." Furthermore, Miura’s drawings depict the pile bodies as individual structures that would be individually surrounded by soil when constructed, matching another key limitation. Petitioner contended that upon post-tensioning, Miura's foundation cap moves downward while the pile anchors move upward into the compressible regions, achieving the same functional result as claimed in the ’217 patent. For dependent claims, Petitioner argued that features like using solid steel bars (tendons), PVC tubing (sleeves), and anchor plates with nuts were all well-known, conventional options a person of ordinary skill in the art (POSA) would have readily considered for Miura’s system.
  • Motivation to Combine (for §103 grounds): The primary motivation asserted was not to combine Miura with another reference, but to implement Miura’s disclosed foundation using conventional, well-known techniques and materials that were part of the general knowledge of a POSA. For example, a POSA would use concrete for Miura's footing because it is the standard material for such structures. A POSA would select PVC for sheathing the tension members because it was a common, effective, and economical choice for preventing bonding with concrete to enable post-tensioning. Similarly, a POSA would be motivated to use standard anchor plates and threaded nuts to secure the tensioning elements, add steel rebar to the foundation cap to resist bending forces, and arrange the piles circumferentially for structures subject to loads from any direction (like a tower), as these were all standard engineering practices to achieve predictable and improved results.
  • Expectation of Success: Petitioner contended that a POSA would have had a high and reasonable expectation of success in implementing Miura’s foundation using these standard components and methods. The proposed modifications involved applying known techniques to a known type of structure to achieve well-understood and predictable benefits, such as improved load resistance, durability, and cost-effectiveness. The result was merely the sum of predictable parts, not an inventive leap.

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 for several reasons.
  • Trial Proximity and Investment: Although a trial date in the parallel district court litigation was set for approximately one month after the statutory deadline for a Final Written Decision (FWD), Petitioner argued that court congestion and litigation uncertainties made it likely the trial would occur after the FWD. Petitioner also asserted that investment in the parallel case was not yet substantial, as expert discovery had not concluded and dispositive motions were not yet due.
  • Overlap and Merits: Petitioner stipulated that it would not pursue in the district court any invalidity ground raised or that could have been reasonably raised in the IPR if review were instituted, thereby mitigating concerns of inefficiency. Finally, Petitioner argued that the merits of the petition are exceptionally strong, as the Miura reference appears to disclose the very features the patent owner relied upon to overcome prior art during the original prosecution, a factor that strongly favors institution.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1, 3-9, 11, and 14-21 of the ’217 patent as unpatentable.