NV5 Inc v. TErracon Consultants Inc

1. Case Identification

• Case #: IPR2021-01510
• Patent #: 7,707,797
• Filed: September 10, 2021
• Petitioner(s): NV5, Inc.
• Patent Owner(s): Terracon Consultants, Inc.
• Challenged Claims: 7-8, 12-16

2. Patent Overview

• Title: Pile Anchor Foundation
• Brief Description: The ’797 patent relates to a method for forming a post-tensioned, pile anchor foundation designed to support large, heavy structures such as wind turbines and towers. The invention’s central feature, which was key to its allowance, is the creation of an "unfilled space" containing a compressible or crushable material, located between the top surface of each pile anchor and the corresponding bottom surface of the overlying concrete foundation cap.

3. Grounds for Unpatentability

Ground 1: Obviousness over Miura and POSA Knowledge - Claims 7-8 and 12-16 are obvious over Miura in view of the general knowledge of a POSA.

• Prior Art Relied Upon: Miura (JP 2002-06120).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Miura, a Japanese patent publication not considered during the original prosecution, teaches all key limitations of the challenged claims. Miura discloses a method of constructing a post-tensioned pile anchor foundation comprising a footing (the claimed "cap foundation") and multiple pile bodies (the claimed "pile anchors"). Critically, Petitioner asserted that Miura explicitly teaches forming a "recess" (the claimed "unfilled space") between the upper end of each pile body and the bottom surface of the footing. Miura further discloses filling this recess with a "cushion material," such as rubber-based elastic material or foam resin, which Petitioner contended is functionally and structurally equivalent to the claimed "compressible/crushable material."
  • Petitioner argued that Miura’s "tensile member" corresponds to the claimed "pile anchor bolt," and its "sheath" is the claimed "sleeve." The method described in Miura involves post-tensioning the tensile members, which causes the footing to be pulled downward, compressing the cushion material and the underlying soil. This action, Petitioner contended, directly maps to the limitations of claim 8, which requires that the crushable material "enable downward movement of said cap foundation...thereby compressing underlying soils." For dependent claims reciting additional features such as load anchor bolts (claim 7), a grout trough (claim 12), or centralizers (claim 13), Petitioner argued that a Person of Ordinary Skill in the Art (POSA) would have found it obvious to incorporate these conventional elements into Miura’s system.
  • Motivation to Combine (for §103 grounds): The primary motivation presented was applying known, conventional techniques to the known foundation structure of Miura to achieve predictable and improved results. A POSA seeking to use Miura's foundation to support a heavy structure (like a tower) would have been motivated to add well-known features like load anchor bolts and a grout trough. These elements were common in the art for securely and levelly attaching such structures to foundations. Incorporating them into Miura’s design was presented as a simple matter of design choice from a finite number of known solutions to solve the common problem of mounting heavy loads, thereby yielding the predictable benefits of enhanced stability and easier installation.
  • Expectation of Success (for §103 grounds): Petitioner asserted that a POSA would have had a high expectation of success in implementing these modifications. The integration of standard components like anchor bolts, grout troughs, and centralizers into a concrete foundation was a routine and well-understood practice in civil engineering. There was no technical uncertainty that would have dissuaded a POSA from combining these conventional elements with the foundation taught by Miura.
  • Key Aspects: The core of Petitioner's argument was that Miura discloses the very limitation—the unfilled space with crushable material between the pile anchor and the cap—that the Applicant successfully argued was novel to overcome prior art during the original prosecution of the ’797 patent.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise discretionary denial under 35 U.S.C. §314(a) based on the Fintiv factors, despite a parallel proceeding in the District of Delaware. Petitioner contended the factors strongly favor institution, arguing that it had acted diligently and that significant investment and work remained in the district court litigation, with fact discovery and dispositive motions still many months away.
• Crucially, Petitioner stipulated that, if the IPR is instituted, it will not pursue in the parallel litigation any invalidity ground that was raised or could have been reasonably raised in the IPR. Petitioner also argued that the merits of the petition are exceptionally strong, as the primary prior art reference (Miura) appears to directly teach the specific feature upon which the patent was granted, weighing heavily against discretionary denial.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 7-8 and 12-16 of Patent 7,707,797 as unpatentable.