Trials@uspto.gov
`571-272-7822
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` Paper 20
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` Entered: September 8, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TITEFLEX CORPORATION,
`Petitioner,
`
`v.
`
`GOODSON HOLDINGS, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00730
`Patent 7,562,448 B2
`____________
`
`
`Before KALYAN K. DESHPANDE, JUSTIN T. ARBES, and
`KIMBERLY McGRAW, Administrative Patent Judges.
`
`McGRAW, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
` Paper 20
`
`
`
` Entered: September 8, 2017
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TITEFLEX CORPORATION,
`Petitioner,
`
`v.
`
`GOODSON HOLDINGS, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00730
`Patent 7,562,448 B2
`____________
`
`
`Before KALYAN K. DESHPANDE, JUSTIN T. ARBES, and
`KIMBERLY McGRAW, Administrative Patent Judges.
`
`McGRAW, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`IPR2016-00730
`Patent 7,562,448 B2
`
`
`I. INTRODUCTION
`
`In this inter partes review, instituted pursuant to 35 U.S.C. § 314,
`
`Titeflex Corporation (“Petitioner”) challenges the patentability of claims 1–7
`
`of U.S. Patent No. 7,562,448 B2 (Ex. 1001, “the ’448 patent”), owned by
`
`Goodson Holdings, LLC. (“Patent Owner”). We have jurisdiction under
`
`35 U.S.C. § 6. This Final Written Decision is entered pursuant to 35 U.S.C.
`
`§ 318(a) and 37 C.F.R. § 42.73. For the reasons discussed below, we
`
`determine that Petitioner has shown by a preponderance of the evidence that
`
`claims 1–7 of the ’448 patent are unpatentable.
`
`A. Procedural History
`
`Petitioner filed a Petition requesting an inter partes review of claims
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`1–7 of the ’448 patent. Patent Owner filed a Preliminary Response. Paper 7
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`(“Prelim. Resp.”). On September 9, 2016, we instituted an inter partes
`
`review of claims 1–7 of the ’448 patent on certain asserted grounds of
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`unpatentability. Paper 8 (“Dec. on Inst.”).
`
`After institution of trial, Patent Owner filed a Patent Owner Response
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`(Paper 11, “PO Resp.”) and Petitioner filed a Reply (Paper 14, “Reply”). A
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`consolidated oral hearing for this proceeding and Case IPR2016-00731,
`
`involving the same parties and similar issues, was held on May 10, 2017. A
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`transcript of the consolidated hearing has been entered into the record.
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`Paper 19 (“Tr.”).
`
`B. Related Proceedings
`
`The parties state the ’448 patent is asserted in a patent infringement
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`lawsuit filed by Patent Owner against Petitioner in the U.S. District Court
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`2
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`IPR2016-00730
`Patent 7,562,448 B2
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`for the Northern District of Texas, Dallas Division, captioned Goodson
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`Holdings, LLC v. Titeflex Corporation, Civil Action No. 3:15-cv-2153. Pet.
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`3; Paper 4, 2. The parties also identify Case IPR2016-00731, an inter partes
`
`review of U.S. Patent No. 7,821,763 B2 (“the ’763 patent”), which is a
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`divisional of the ’448 patent, as a related matter. Pet. 3; Paper 4, 2.
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`C. The ’448 Patent
`
`The ’448 patent generally relates to “method[s] of preventing
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`electrically induced fires in household gas tubing,” such as corrugated
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`stainless steel tubing (“CSST”), through the use of a “conductive wire [that]
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`provides direct electrical contact between . . . appliance connectors [that are]
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`affixed to the ends of the tubing.” Ex. 1001, Abstract. The conductive
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`ground wire can either be a single wire or multiple strands, such as a wire
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`mesh. Id. at 3:29–30.
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`An embodiment having single conductive grounding wire 601 is
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`shown in Figure 6A, reproduced below.
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`3
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`IPR2016-00730
`Patent 7,562,448 B2
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`Figure 6A illustrates a CSST having a single “copper ground wire 601 of
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`~#8 American Wire Gauge (AWG) or larger electrically in parallel with the
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`length of CSST or the appliance connectors 610, 620.” Id. at 5:4–9.
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`“[G]round wire 601 attaches to . . . end connectors 610, 620 at . . . set screws
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`611, 621 one on each end.” Id. at 5:9–11.
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`An alternative embodiment having “multiple strands of grounding
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`wire” (e.g., a mesh) is shown below in Figure 6B. Id. at 5:21–22
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`
`
`
`
`
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`As shown in Figure 6B above, “CSST flex line 600 is shrouded by
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`. . . wire mesh 650, which is attached to . . . collars 630, 640 on each end.”
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`Id. at 5:24–26. Also shown are “brass nuts 610, 620,” which “have collars
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`630, 640 that protrude from the top.” Id. at 5:22–24.
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`Both embodiments keep “electrical current from damaging the flared
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`ends of the CSST by providing an electrical shunt in the form of copper
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`ground wire between the brass connectors on the ends.” Id., Certificate of
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`Correction dated Mar. 9, 2010. Because “copper is a superior conductor to
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`IPR2016-00730
`Patent 7,562,448 B2
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`CSST, it can safely carry currents that the CSST was never designed to
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`handle.” Id. “If an electrical charge goes to ground via the CSST or the
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`appliance connector, such as from a lightning strike or an appliance short,
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`the majority of the current is carried by the conductive wire rather than the
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`CSST or appliance connector itself, thus preventing damage to the CSST
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`from the current.” Id. at 3:31–37; see also id. at Abstract (stating that
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`“damage to the gas tubing is prevented by the conductive wire and end
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`connectors providing a low resistance electrical path that allows the current
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`to pass over the gas tubing assembly without the gas tubing itself actually
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`having to carry[] the load”). The ’448 patent further explains that for
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`embodiments using a “mesh type shield,” “if the CSST or appliance
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`connector receives an electrical charge from arcing to the side walls, the
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`mesh serves as a current shunt and thus both shunts the current and causes
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`the charge on the actual CSST (or appliance connector) wall to be dissipated
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`over a larger area.” Id. at 3:37–42.
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`D. Illustrative Claim
`
`Petitioner challenges independent claim 1 and dependent claims 2–7.
`
`Claim 1 is reproduced below.
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`1. A method of preventing electrically induced fires in gas
`tubing, the method comprising:
`
`(a) affixing connectors to each end of the gas tubing, wherein the
`connectors allow the tubing to be securely coupled to gas lines
`and appliances, allowing the gas tubing to carry gas between
`a gas line and an appliance, and wherein the connectors are
`made of a conductive material; and
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`Patent 7,562,448 B2
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`(b) coupling conductive wire to said connectors, wherein the
`conductive wire provides direct electrical contact between the
`connectors;
`
`(c) wherein if an electrical charge goes to ground via the gas
`tubing, the conductive wire carries the electrical current rather
`than the gas tubing itself, preventing damage to the tubing
`from the electrical current.
`
`E. Instituted Grounds of Unpatentability
`
`We instituted inter partes review based upon the following asserted
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`grounds of unpatentability:
`
`References
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`Basis Challenged Claim(s)
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`Yamane1 and Design Guide2
`
`§ 103
`
`1–6
`
`Yamane, Design Guide, and Ohki3
`
`§ 103
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`7
`
`Ohki and Design Guide
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`§ 103
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`1–4, 7
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`Rivest4 and Yamane
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`Rivest and Ohki
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`
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`Dec. on Inst. 29.
`
`
`
`§ 103
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`1–6
`
`§ 103
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`1–4, 7
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`1 Japanese Unexamined Patent Application No. 2003-83482, published
`March 19, 2003 (Ex. 1019) (“Yamane”).
`2 Excerpts from Titeflex Corp., Gastite Division, GASTITE SYSTEM DESIGN
`AND INSTALLATION GUIDE (Jan. 2004) (Ex. 1021) (“Design Guide”). We
`cite to Exhibit 1021 throughout this Decision. Per our instruction, Dec. on
`Inst. 13 n.7, 29, Petitioner filed a complete copy of the Design Guide as
`Exhibit 1028.
`3 Japanese Unexamined Patent Application No. 2002-174374, published
`June 21, 2002 (Ex. 1020) (“Ohki”).
`4 U.S. Patent No. 7,044,167 B2, filed April 7, 2004, issued May 16, 2006
`(Ex. 1006) (“Rivest”).
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`II. DISCUSSION
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`A. Principles of Law
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`To prevail in challenging Patent Owner’s claims, Petitioner must
`
`demonstrate by a preponderance of the evidence that the claims are
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`unpatentable. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). A claim is
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`unpatentable under 35 U.S.C. § 103(a) if the differences between the
`
`claimed subject matter and the prior art are such that the subject matter, as a
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`whole, would have been obvious at the time of the invention to a person
`
`having ordinary skill in the art. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
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`406 (2007). The question of obviousness is resolved on the basis of
`
`underlying factual determinations including: (1) the scope and content of the
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`prior art; (2) any differences between the claimed subject matter and the
`
`prior art; (3) the level of ordinary skill in the art; and (4) objective evidence
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`of nonobviousness, i.e., secondary considerations. See Graham v. John
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`Deere Co., 383 U.S. 1, 17–18 (1966). The level of ordinary skill in the art
`
`may be reflected by the prior art of record. See Okajima v. Bourdeau, 261
`
`F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579
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`(Fed. Cir. 1995).
`
`B. Claim Construction
`
`In an inter partes review, claim terms in an unexpired patent are given
`
`their broadest reasonable construction in light of the specification of the
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`patent in which they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs.,
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`LLC v. Lee, 136 S. Ct. 2131, 2142 (2016). There is a “heavy presumption”
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`that a claim term carries its ordinary and customary meaning. CCS Fitness,
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`Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). However, a
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`Patent 7,562,448 B2
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`“claim term will not receive its ordinary meaning if the patentee acted as his
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`own lexicographer and clearly set forth a definition of the disputed claim
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`term in either the specification or prosecution history.” Id. “Although an
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`inventor is indeed free to define the specific terms used to describe his or her
`
`invention, this must be done with reasonable clarity, deliberateness, and
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`precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Also, we
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`must be careful not to read a particular embodiment appearing in the written
`
`description into the claim if the claim language is broader than the
`
`embodiment. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)
`
`(“[L]imitations are not to be read into the claims from the specification.”).
`
`We construe the claim language below in accordance with these
`
`principles and to the extent necessary to resolve the controversy. No other
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`terms require express construction. See Vivid Techs., Inc. v. Am. Sci. &
`
`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (stating “only those terms
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`need be construed that in controversy and only to the extent necessary to
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`resolve the controversy”).
`
`1. “(b) coupling conductive wire to said connectors, wherein
`the conductive wire provides direct electrical contact between
`the connectors”
`
`Claim 1, step (b) recites “coupling conductive wire to said connectors,
`
`wherein the conductive wire provides direct electrical contact between the
`
`connectors” (hereinafter “the coupling step”). In our Decision on Institution,
`
`we determined, based on the record presented at the time, that the broadest
`
`reasonable interpretation of the coupling step, consistent with the
`
`specification, was “coupling (i.e., connection) of a conductive wire (i.e., a
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`IPR2016-00730
`Patent 7,562,448 B2
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`wire that conducts electricity) to connectors located at each end of the gas
`
`tubing so that the connection allows electricity to flow directly from one
`
`connector through the conductive wire to the other connector.” Dec. on Inst.
`
`8–9. In our Decision on Institution, we disagreed with Patent Owner’s
`
`argument that the coupling step cannot encompass “a configuration where
`
`the ground wire is touching and in electrical contact with the CSST tubing
`
`surface, or potentially [where] such contact results from lightning piercing a
`
`laminated resin layer, as disclosed by Yamane and/or Ohki.” Id. at 7
`
`(quoting Prelim. Resp. 7).
`
`In its Response, Patent Owner argues that the broadest reasonable
`
`construction of the coupling step does “not include coupling the conductive
`
`wire such that it is electrically contacting the surface of the CSST even as a
`
`result of damage due to a lightning strike, because such would not represent
`
`a ‘direct’ electrical connection ‘in parallel’ with the length of the CSST.”
`
`PO Resp. 12–13. Patent Owner frames the claim construction issue as
`
`whether the coupling step of establishing a configuration where
`the ground wire is touching and in electrical contact with the
`CSST tubing surface, or potentially such contact results from
`lightning piercing a laminated resin layer, as disclosed by
`Yamane and/or Ohki, is such a “parallel” configuration, or is
`instead effectively an electrical “short”. The proper construction
`is that the coupling step requires a parallel configuration and does
`not include such an electrical short.
`
`PO Resp. 13.
`
`Patent Owner also argues that under the broadest reasonable
`
`interpretation of the coupling step, the conductive wire cannot be in “close
`
`electrical contact” to the gas tubing and the conductive wire cannot be
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`IPR2016-00730
`Patent 7,562,448 B2
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`separated from the inner gas tubing by a resin layer. See, e.g., PO Resp. 1
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`(stating the ’448 patent discloses use of a “‘shunt’ that would not be in close
`
`electrical contact with the surface of the tubing (i.e., ‘touching’), even in a
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`failure mode”), 26–27 (describing the resin layer in Yamane and Ohki as a
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`“design flaw” and stating that the structures shown in the ’448 patent “do not
`
`employ a resin”); see also id. at 5, 10.
`
`To support its proposed construction, Patent Owner states the only
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`structures disclosed in the ’448 patent having “direct electrical contact
`
`between the connectors” are (1) ground wire 601 shown in Figure 6A, and
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`(2) mesh 650 shown in Figure 6B, and neither of these structures are in
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`contact with the surface of the CSST tube. Id. at 12 (stating the mesh of
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`Figure 6B “is not in contact with the surface of the CSST tubing since a
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`space is shown at the top of the diagram between ground wires 650 and the
`
`surface of the CSST”). Patent Owner also contends the nature of the
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`electrical contact between the ends of the ground wire and the end
`
`connectors is described in the specification as “direct” and electrically “in
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`parallel” and these “are the only disclosed structures for such single ground
`
`wires acting as a ‘shunt.’” Id. (citing Ex. 1001, 3:27–28, 5:7–8, 5:18–20).
`
`Petitioner responds, inter alia, that the coupling step does not include
`
`“no touching,” “no close contact,” or “no resin” limitations, and Patent
`
`Owner is attempting to import inappropriately a limitation from the
`
`specification. Reply 5–12. Petitioner also argues that “[t]he Board’s
`
`construction is correct because the specification expressly states that a
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`‘majority’ of the current goes through the conductive wire” and “even Patent
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`Owner’s expert witness concedes that at least some electrical current will be
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`10
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`IPR2016-00730
`Patent 7,562,448 B2
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`carried by the gas tubing.” Id. at 13 (citing Ex. 1001, 3:32–41; Ex. 2001
`
`¶ 2).
`
`We do not agree that the broadest reasonable interpretation of the
`
`coupling step (b) of claim 1 does not encompass the conductive wire
`
`touching or being in electrical contact with the CSST tubing surface
`
`following a lightning strike; being in “close electrical contact” to the gas
`
`tubing; or being separated from the inner gas tubing by a resin layer. The
`
`claims do not recite any such limitations that would exclude these
`
`configurations, and Patent Owner does not identify any statements in the
`
`’448 patent specification that indicate the scope of the claims is limited in
`
`the manner proposed by the Patent Owner. Patent Owner does not explain
`
`what “close electrical contact” means or provide any definition by which it
`
`could be determined whether the distance between components is or is not
`
`“close.” Indeed, the conductive wires shown in Figures 6A and 6B of the
`
`’448 patent appear to be in “close electrical contact” with the CSST tube,
`
`and Patent Owner does not provide any explanation otherwise. See, e.g., Ex.
`
`1001, Fig. 6A, 6B.
`
`With respect to the “no resin” limitation, even if the structures of the
`
`’448 patent do not employ a resin, it is improper to read limitations from
`
`preferred embodiments described in the specification into the claims absent
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`a clear indication in the intrinsic record that the patentee intended the claims
`
`to be so limited. Van Geuns, 988 F.2d at 1184. Step (b) merely recites
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`“coupling conductive wire to said connectors, wherein the conductive wire
`
`provides direct electrical contact between the connectors,” and does not limit
`
`what happens to the conductive wire after it is coupled to the connectors
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`IPR2016-00730
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`such that it provides direct electrical contact between the connectors, nor
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`what other structures may be present (so long as direct electrical contact is
`
`provided).5
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`We are not persuaded by Patent Owner’s arguments. Based on the
`
`full trial record, we interpret the coupling step to mean “coupling (i.e.,
`
`connection) of a conductive wire (i.e., a wire that conducts electricity) to
`
`connectors located at each end of the gas tubing so that the connection
`
`allows electricity to flow directly from one connector through the conductive
`
`wire to the other connector.”
`
`2. “(c) wherein if an electrical charge goes to ground via the
`gas tubing, the conductive wire carries the electrical current
`rather than the gas tubing itself, preventing damage to the
`tubing from the electrical current”
`
`
`
`In our Decision on Institution, we construed claim 1, step (c) to mean
`
`that “if the electrical charge goes to ground via the gas tubing, the
`
`conductive wire carries a sufficient amount of the electrical current to
`
`ground so as to prevent damage to the tubing from the electrical current.
`
`The conductive wire need not carry all of the electrical current.” Dec. on
`
`Inst. 10. Our construction that the conductive wire need not carry all of the
`
`electrical current is consistent with the specification of the ’448 patent which
`
`states that when the CSST tube receives an electrical charge from arcing to
`
`
`
`5 Patent Owner acknowledged at the hearing that claim 1 permits an
`insulation layer between the gas tubing and conductive wire, but argued that
`such a layer cannot be a “resin.” See Tr. 48:23–50:12. We see no basis for
`reading such a distinction into the claim.
`12
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`the side walls, the mesh will both shunt current as well as cause the actual
`
`charge on the CSST to be dissipated over a larger area. Id. at 9–10 (citing
`
`Ex. 1001, 3:32–41).
`
`Patent Owner contends that this construction is incorrect because “it is
`
`not true to the meaning of the claim terms ‘in parallel’ and ‘direct’ with
`
`respect to: a ground wire (Fig. 6A) or mesh (Fig. 6B) ‘in parallel’ with the
`
`CSST tubing that provides a ‘direct’ connection between the length of the
`
`CSST tubing.” PO Resp. 13. Patent Owner contends that these structures of
`
`the ’448 patent “are a far superior solution than that proposed in Yamane and
`
`Ohki and Rivest which are not ‘parallel’ configurations.” Id. at 13–14.
`
`Patent Owner also argues that in a parallel circuit (such as that
`
`disclosed in the ’448 patent), some residual current will still exist on the
`
`CSST even in the presence of a shunt. Id. at 14 (citing Ex. 2001 ¶ 97).
`
`Therefore, Patent Owner asserts that
`
`when the specification references the same thing by saying that
`current will be shunted over the mesh “as well as . . . on the CSST
`wall”, this does not mean that the wire or mesh should touch or
`be in close electrical contact with the surface of the CSST which
`would not be a shunt structure. These statements in the
`specification are to recognize the residual current on the CSST
`even with a shunt structure, and does not imply an electrical
`“short” is also includ[ed] in the coupling step. (See Dr. Icove
`Decl. at ¶ 97, Ex. 2001.)
`
`PO Resp. 14.
`
`Patent Owner’s arguments are not persuasive. Patent Owner’s
`
`reference to the specification of the ’448 patent fails to acknowledge the
`
`language stating that charge on the CSST is dissipated over a larger area.
`
`Specifically, the ’448 patent expressly states that in the event of arcing from
`13
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`IPR2016-00730
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`the side wall, the mesh will serve “as a current shunt [that] both shunts the
`
`current” as well as “causes the charge on the actual CSST . . . wall to be
`
`dissipated over a larger area.” Ex. 1001, 3:36–41 (emphasis added).
`
`Based on the full trial record, we interpret claim 1 step (c) to mean
`
`that “if the electrical charge goes to ground via the gas tubing, the
`
`conductive wire carries a sufficient amount of the electrical current to
`
`ground so as to prevent damage to the tubing from the electrical current.
`
`The conductive wire need not carry all of the electrical current.”
`
`C. Obviousness of Claims 1–6 over
`Yamane and the Design Guide
`
`Petitioner asserts claims 1 through 6 of the ’448 patent are
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`unpatentable under 35 U.S.C. § 103 as obvious over Yamane in combination
`
`with the Design Guide, relying on declaration testimony of Vladimir A.
`
`Rakov, Ph.D. Pet. 4, 26–39 (citing Ex. 1026). Patent Owner opposes,
`
`relying on declaration testimony of David J. Icove, Ph.D. PO Resp. 25–29,
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`31–33 (citing Ex. 2001). Having considered the parties’ contentions and
`
`supporting evidence, we determine that Petitioner has shown by a
`
`preponderance of the evidence that claims 1 through 6 are unpatentable
`
`under 35 U.S.C. § 103 over Yamane and the Design Guide.
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`1. Yamane
`
`Yamane, entitled “Lightning-Proof Tubing,” describes various
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`embodiments of covered corrugated stainless steel tubing “capable of
`
`withstanding a discharge during a lightning strike without damage to the
`
`tube body.” Ex. 1019, Abstract, ¶¶ 2, 7, 21. To prevent damage to the tube
`
`body from lightning strikes, Yamane teaches covering tube body 2 with
`
`insulating cover layer 3 that has a wire or band shaped conductive member 4
`
`integrated in the cover layer. Id. ¶¶ 5, 20. Figure 1 of Yamane is
`
`reproduced below.
`
`
`
`Figure 1 of Yamane depicts a lightning-proof tubing comprising tube
`
`body 2, insulating cover layer 3 that covers the outer peripheral region of
`
`tube body 2, and wire- or band-shaped conductive members 4. Id. ¶ 20. In
`
`one embodiment, conductive members 4 are located in the interior of, or the
`
`outer face of, the insulating cover layer, but are connected directly to the
`
`connecting joint. Id. ¶¶ 10, 22. Yamane explains that even if the insulating
`
`cover layer is damaged by a lightning strike, most of the lightning current “is
`
`guided from the conductive member, through the connecting joint, and then
`
`through the electroconductive equipment to the ground, and energy does not
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`concentrate at one point in the tube body, so there is virtually no effect on
`
`the tube body.” Id. ¶¶ 24, 36. In another embodiment, conductors 5
`
`electrically connect the conductive members to the tube. Id. ¶¶ 11, 22.
`
`Yamane also states that insulating cover layer 3 may be a resin. Id. ¶ 28
`
`(stating that “[i]f the insulating cover layer 3 is constituted by a resin
`
`material, this reinforces . . . tube body 2 and makes it more bendable”); see
`
`also claim 4 (dependent claim limiting the insulating cover layer to be
`
`“constituted by a resin material”).
`
`2. Design Guide
`
`The Design Guide is a document that provides a “user with general
`
`guidance when designing and installing fuel gas piping using Gastite®
`
`Flexible Gas Piping.” Ex. 1021, 1. Relying upon the declaration testimony
`
`of Mark Harris (Ex. 1024), Petitioner contends that the Design Guide was
`
`published in January 2004 and qualifies as prior art under § 102(b). Pet. 25.
`
`In our Decision on Institution, we found that Petitioner made a
`
`threshold showing that the Design Guide is a prior art printed publication
`
`under § 102(b). Patent Owner does not argue in its Response that the Design
`
`Guide is not a printed publication. See PO Resp. After considering the
`
`evidence and argument on the full record, we find the Design Guide
`
`qualifies a prior art printed publication under § 102(b).
`
`Petitioner has shown that the Design Guide was sufficiently accessible
`
`to the public interested in the art more than one year before July 18, 2005,
`
`the filing date of the application that gave rise to the ’448 patent. See In re
`
`Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989) (stating that to qualify as a
`
`printed publication, a document must have been sufficiently accessible to the
`
`16
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`IPR2016-00730
`Patent 7,562,448 B2
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`public interested in the art before the critical date); Ex. 1001, [22]. “A
`
`reference is publicly accessible ‘upon a satisfactory showing that such
`
`document has been disseminated or otherwise made available to the extent
`
`that persons interested and ordinarily skilled in the subject matter or art
`
`exercising reasonable diligence, can locate it.’” Kyocera Wireless Corp. v.
`
`ITC, 545 F.3d 1340, 1350–51 (Fed. Cir. 2008). Mr. Harris, business
`
`development manager for the Gastite Division of Petitioner, testifies that
`
`Exhibit 1021 is a “true and correct copy of excerpts from the January 2004
`
`Gastite Design and Installation Guide,” that the complete Design Guide
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`“was published and made available to the public during or before January
`
`2004 through Gastite’s website, www.gastite.com, through Gastite’s
`
`distributors, through Gastite’s certification and training programs, and
`
`directly from Gastite upon request.” Ex. 1024 ¶ 2. For these reasons, we
`
`determine that the Design Guide qualifies as a printed publication.
`
`The Design Guide provides instructions for the installation and
`
`grounding of corrugated stainless steel tubing using the Gastite Flexible Gas
`
`Piping system, which uses CSST flexible gas piping to supply gas or
`
`liquefied petroleum to appliances. Ex. 1021, 2–4. The Design Guide
`
`explains that the CSST gas supply system should be bonded to ground,
`
`stating “each above ground portion of a gas piping system which is likely to
`
`become energized shall be electrically continuous and bonded to a designed,
`
`permanent, low impedance effective ground fault current path.” Id. at 63.
`
`The “tubing is connected using special mechanical brass fittings.” Id. at 3, 5
`
`(“Straight Fittings connect the flexible gas piping to gas supply, distribution
`
`manifolds or gas appliances.”), 46, 91 (stating the “Fitting adapter, bushings
`
`17
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`
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`IPR2016-00730
`Patent 7,562,448 B2
`
`and nut” and “Mechanical Joint Fitting” are made of “CA360 Brass”), Fig.
`
`4–31 (illustration of corrugated tubing with connectors on both ends).
`
`3. Level of Ordinary Skill in the Art
`
`Section 103(a) forbids issuance of a patent when “the differences
`between the subject matter sought to be patented and the prior art
`are such that the subject matter as a whole would have been
`obvious at the time the invention was made to a person having
`ordinary skill in the art to which said subject matter pertains.”
`
`KSR, 550 U.S. at 406 (quoting 35 U.S.C. § 103(a)). Petitioner argues that a
`
`person of ordinary skill in the art “would have been familiar with basic
`
`concepts of lightning-protection,” and such familiarity would have come
`
`from “an undergraduate degree in electrical engineering or [a] comparable
`
`subject,” or “one to three years of practical work experience designing and
`
`installing lightning-protection systems.” Pet. 12 (citing Ex. 1026 ¶¶ 66–67).
`
`Patent Owner does not propose a different level of ordinary skill in its
`
`Response. Based on our review of the ’448 patent, the types of problems
`
`and solutions described in the ’448 patent and cited prior art, and the
`
`testimony of the parties’ declarants, we agree with Petitioner’s assessment of
`
`the level of ordinary skill in the art.
`
`4. Claim 1
`
`Claim 1 is directed to a “method of preventing electrically induced
`
`fires in gas tubing.” In general, the claim recites (a) affixing conductive
`
`connectors to each end of the gas tubing to allow the tubing to be securely
`
`coupled to, and carry gas between, gas lines and appliances, (b) coupling the
`
`conductive wire to the connectors wherein “the conductive wire provides
`
`direct electrical contact between the connectors,” and (c) “if an electrical
`
`18
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`IPR2016-00730
`Patent 7,562,448 B2
`
`charge goes to ground via gas tubing, the conductive wire carries the
`
`electrical current rather than the gas tubing itself, preventing damage to the
`
`tubing from the electrical current.”
`
`Petitioner explains how the combination of Yamane and the Design
`
`Guide teaches each of the limitations of claim 1. Petitioner argues that
`
`Yamane teaches a “lightning-proof tubing” for use in “an internal gas pipe
`
`system used for supplying gas” that would prevent electrically induced fires.
`
`Pet. 27–28 (citing Ex. 1019 ¶¶ 3, 18; Ex. 1026 ¶ 115) (emphasis omitted).
`
`The tubing has connectors affixed to each end that secure the tubing to gas
`
`lines and appliances and allow the tubing to carry gas between the gas line
`
`and the appliances. Id. at 28 (citing Ex. 1019 ¶ 18; Ex. 1026 ¶¶ 108, 117–
`
`121). Petitioner also asserts one of ordinary skill in the art would have
`
`known, based on the disclosures of Yamane and the Design Guide, that the
`
`connecting joint of Yamane is made of a conductive material. Id. at 29–30
`
`(citing Ex. 1019 ¶ 36; Ex. 1026 ¶¶ 122–126; Ex. 1021, 3, 5, 91).
`
`Petitioner also asserts that Yamane’s disclosure of “conductive
`
`members 4 [that] may be connected directly to the connecting joint” teaches
`
`coupling conductive wire to connectors to provide a direct electrical contact
`
`between the connectors as recited in claim 1, step (b). Id. at 32 (emphasis
`
`omitted); Ex. 1019 ¶¶ 22, 24; Fig. 1; see also Ex. 1019 ¶ 36 (stating that
`
`lightning current “is guided from the conductive member, through the
`
`connecting joint, and then through the electroconductive equipment to the
`
`ground”); Ex. 1026 ¶ 249 (stating the Yamane device “would work only if
`
`the external conductive members are electrically coupled to the end
`
`connectors of the gas tubing”).
`
`19
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`IPR2016-00730
`Patent 7,562,448 B2
`
`
`Regarding step 1(c), Petitioner again cites Yamane’s teaching that
`
`“[m]ost of the lightning current produced by a discharge during a lightning
`
`strike is guided from the conductive member, through the connecting joint,
`
`and then through the electroconductive equipment to the ground, and energy
`
`does not concentrate at one point in the tube body, so there is virtually no
`
`effect on the tube body.” Ex. 1019 ¶¶ 24, 36, 37; see Pet. 34–35.
`
`Petitioner further asserts it would have been obvious to one ordinarily
`
`skilled in the art, based on the disclosure of Yamane, to configure the
`
`Yamane device to guide all current through the conductive wire because
`
`Yamane teaches that the conductive member can be either in the interior of
`
`the insulating cover layer or on the outer face of the insulating cover layer,
`
`thereby being electrically isolated from the inner metal tubing. Pet. 36;
`
`Ex. 1019 ¶ 20; Ex. 1026 ¶ 144. Petitioner, relying upon the testimony of Dr.
`
`Rakov, explains “[o]ne of ordinary skill in the art would have known that the
`
`connecting joints could be electrically isolated from the gas tubing,” which
`
`“would electrically isolate the gas tube and, in some circumstances, force all
`
`objectionable electrical current through the Yamane conductive members.”
`
`Pet. 36; Ex. 1026 ¶ 144.
`
`Petitioner has shown that the combination of Yamane and the Design
`
`Guide teaches all of the claim limitations and has articulated sufficient
`
`reasoning for why a person of ordinary skill in the art would have combined
`
`the teachings of the references. For the reasons explained below, we are not
`
`persuaded by Patent Owner’s arguments to the contrary. See, e.g., PO Resp.
`
`25–29. Patent Owner’s arguments are mainly premised on its proposed
`
`interpretations of the coupling step and step (c) of claim 1, with which we
`
`20
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`IPR2016-00730
`Patent 7,562,448 B2
`
`disagree for the reasons explained above. See supra Section II.B. Further,
`
`even if claim 1 had “no touching,” “no close contact,” and “no resin”
`
`limitations, as Patent Owner contends, we are persuaded that Yamane
`
`teaches the limitations, for the reasons explained below.
`
`Patent Owner first argues that Yamane does not teach coupling step o
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