Trials@uspto.gov
`571-272-7822
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` Paper 10
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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 IPR2016-00731
`Patent 7,821,763 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
`
`
`
`
`

`

`IPR2016-00731
`Patent 7,821,763 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. 7,821,763 B2 (Ex. 1001, “the ’763 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 ’763 patent are unpatentable.
`A. Procedural History
`Petitioner filed a Petition requesting an inter partes review of claims
`1–7 of the ’763 patent. Paper 1 (“Pet.”). Patent Owner filed a Preliminary
`Response. Paper 7 (“Prelim. Resp.”). On September 9, 2016, we instituted
`an inter partes review of claims 1–7 of the ’763 patent on certain asserted
`grounds of unpatentability. Paper 8 (“Dec. on Inst.”).
`After institution of trial, Patent Owner filed a Patent Owner Response
`(Paper 11, “PO Resp.”) and Petitioner filed a Reply (Paper 14, “Reply”). A
`consolidated oral hearing for this proceeding and Case IPR2016-00730,
`involving the same parties and similar issues, was held on May 10, 2017. A
`transcript of the consolidated hearing has been entered into the record.
`Paper 19 (“Tr.”).
`
`B. Related Proceedings
`
`The parties state the ’763 patent is asserted in a patent infringement
`lawsuit filed by Patent Owner against Petitioner in the U.S. District Court
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`IPR2016-00731
`Patent 7,821,763 B2
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`for the Northern District of Texas, Dallas Division, captioned Goodson
`Holdings, LLC v. Titeflex Corporation, Civil Action No. 3:15-cv-2153. Pet.
`1; Paper 4, 2. The parties also identify Case IPR2016-00730, in which
`Petitioner seeks inter partes review of U.S. Patent No. 7,562,448 B2 (“the
`’448 patent”), as a related matter. Pet. 1; Paper 4, 2.
`
`C. The ’763 Patent
`
`The ’763 patent is a divisional of the ’448 patent and is directed to
`methods and devices for preventing damage to household gas tubing, such as
`corrugated stainless steel tubing (“CSST”), from lightning strikes, appliance
`shorts, or other electrical charge going to ground. Ex. 1001, [62], Abstract,
`3:39–44. The ’763 patent explains that the metal components of the gas
`tubing/pipe “are chosen for their ability to safely carry natural gas” but
`“have a propensity to fail when exposed to electrical insult, particularly
`lightning.” Id. at 1:46–48, 2:42–45. According to the ’763 patent, there was
`a need in the art “to have a CSST system” that “is capable of carry[ing]
`current in the case of electrical arcing or carrying fault currents without
`suffering perforation or melting at the connector end” and “to have a CSST”
`that “minimizes the chances of having perforations created on its side walls
`due to electric injury (i.e. from lightning and similar phenomenon).” Id. at
`3:17–25.
`To address these issues, the ’763 patent discloses a device having a
`conductive wire that provides a direct electrical contact between the end
`connectors. Id. at Abstract. The conductive ground wire can either be a
`single wire or multiple strands, such as a wire mesh. Id. at 3:37–38. An
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`Patent 7,821,763 B2
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`embodiment having a single conductive grounding wire is shown in Figure
`6A, reproduced below.
`
`
`Figure 6A illustrates a CSST having a single “copper ground wire 601 of
`~#8 American Wire Gauge (AWG) or larger electrically in parallel with the
`length of CSST or the appliance connectors 610, 620.” Id. at 5:9–14.
`“[G]round wire 601 attaches to . . . end connectors 610, 620 at . . . set screws
`611, 621 one on each end.” Id. at 5:14–16.
`An alternative embodiment having “multiple strands of grounding
`wire” (e.g., a mesh) is shown below in Figure 6B. Id. at 4:7–8, 5:26–27.
`
`
`Figure 6B shows a CSST with multiple strands of grounding wire.
`“CSST flex line 600 is shrouded by . . . wire mesh 650, which is attached to
`
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`Patent 7,821,763 B2
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`collars 630, 640 on each end.” Id. at 5:29–31. The ’763 patent explains that
`“[i]f an electrical charge goes to ground via the CSST or the appliance
`connector, such as from a lightning strike or an appliance short, the majority
`of the current is carried by the conductive wire rather than the CSST or
`appliance connector itself, thus preventing damage to the CSST from the
`current.” Id. at 3:39–44 (emphasis added). The ’763 patent further states
`that “[w]hen using a mesh type shield, if the CSST or appliance connector
`receives an electrical charge from arcing to the side walls, the mesh serves
`as a current shunt and thus both shunts the current and causes the charge on
`the actual CSST (or appliance connector) wall to be dissipated over a larger
`area.” Id. at 3:44–49.
`Both embodiments keep “electrical current from damaging the flared
`ends of the CSST by providing an electrical shunt in the form of copper
`ground wire between the brass connectors on the ends.” Id. at 5:36–40.
`Because “copper is a superior conductor to CSST, it can safely carry
`currents that the CSST was never designed to handle.” Id. at 5:40–43.
`
`D. Illustrative Claim
`Petitioner challenges independent claim 1 and dependent claims 2–7.
`Claim 1 is reproduced below.
`1. An electrical shunt for gas tubing comprising:
`(a) connecting means at each end of the gas tubing for
`coupling the tubing to gas lines and appliances, wherein the
`connecting means are made of a conductive material that
`has a higher conductivity than the gas tubing; and
`(b) conducting means for providing direct electrical contact
`between said connecting means at either end of the gas
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`IPR2016-00731
`Patent 7,821,763 B2
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`
`tubing, wherein the conducting means has a higher
`conductivity than the gas tubing and carries electrical
`current between the connecting means in the event of
`electrical arcing and ground faults, thereby keeping the
`current off the gas tubing and preventing damage to the
`tubing.
`
`Basis Challenged Claim(s)
`§ 103
`1–5 and 7
`§ 103
`6
`§ 103
`1–4, 6, and 7
`§ 103
`1–4 and 7
`
`E. Instituted Grounds of Unpatentability
`We instituted inter partes review based upon the following asserted
`grounds of unpatentability:
`References
`Yamane1 and Design Guide2
`Yamane, Design Guide, and Ohki3
`Ohki and Design Guide
`Rivest,4 Yamane, and the Design
`Guide
`Rivest, Ohki, and the Design Guide
`
`§ 103
`
`1–4, 6, and 7
`
`Dec. on Inst. 29.
`
`
`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
`A. Principles of Law
`To prevail in challenging Patent Owner’s claims, Petitioner must
`demonstrate by a preponderance of the evidence that the claims are
`unpatentable. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). A claim is
`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
`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,
`406 (2007). The question of obviousness is resolved on the basis of
`underlying factual determinations including: (1) the scope and content of the
`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
`of nonobviousness, i.e., secondary considerations. See Graham v. John
`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
`(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
`patent in which they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs.,
`LLC v. Lee, 136 S. Ct. 2131, 2142 (2016). There is a “heavy presumption”
`that a claim term carries its ordinary and customary meaning. CCS Fitness,
`Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). However, a
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`“claim term will not receive its ordinary meaning if the patentee acted as his
`own lexicographer and clearly set forth a definition of the disputed claim
`term in either the specification or prosecution history.” Id. “Although an
`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
`precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Also, we
`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.”).
`Construing a “means-plus-function limitation” under 35 U.S.C. § 112,
`sixth paragraph,5 involves two steps: first identifying the function explicitly
`recited in the claim, and then identifying the corresponding structure set
`forth in the written description that performs the particular function set forth
`in the claim. Golight Inc. v. Wal-Mart Stores Inc., 355 F.3d 1327, 1333–34
`(Fed. Cir. 2004). Under the second step, “structure disclosed in the
`specification is corresponding structure only if the specification or
`prosecution history clearly links or associates that structure to the function
`recited in the claim.” Id. (citations and quotation marks omitted).
`We construe the claim language below in accordance with these
`principles and to the extent necessary to resolve the controversy. No other
`
`
`5 The Leahy–Smith America Invents Act, Pub. L. No. 112–29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. § 112. Because the ’763 patent has an
`effective filing date before the effective date of the applicable AIA
`amendment, we refer to the pre-AIA version of 35 U.S.C. § 112.
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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
`need be construed that in controversy and only to the extent necessary to
`resolve the controversy”).
`1. “connecting means”
`Claim 1, element (a) recites “connecting means at each end of the gas
`tubing for coupling the tubing to gas lines and appliances, wherein the
`connecting means are made of a conductive material that has a higher
`conductivity than the gas tubing.” Ex. 1001, 6:25–28 (hereinafter “the
`connecting means”). Petitioner argues that the “connecting means at each
`end of the gas tubing for coupling the tubing to gas lines and appliances” of
`independent claim 1 is a means-plus-function limitation under 35 U.S.C. §
`112, sixth paragraph, whose corresponding structure in the specification of
`the ’763 patent is “end connectors for corrugated gas tubing.” Pet. 10.
`Patent Owner does not provide an interpretation for the phrase.
` The “connecting means” is a means-plus-function limitation under 35
`U.S.C. § 112, sixth paragraph, because the claim uses the word “means,”
`describes the function performed by the “means,” and recites no structure for
`performing the function.
`The function of the means-plus-function limitation is defined in claim
`1 as “coupling the tubing to gas lines and appliances.” The clauses “at each
`end of the gas tubing” and “wherein the connecting means are made of a
`conductive material that has a higher conductivity than the gas tubing” do
`not modify the coupling function, but indicate that the “connection means”
`comprises at least two physical structures. The specification of the
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`’763 patent clearly links “connectors,” “conductive connectors,” and “end
`connectors” to the function of “coupling the tubing to gas lines and
`appliances.” See, e.g., Ex. 1001, Abstract (“Connectors for coupling the gas
`tubing to gas lines and appliances are affixed at each end of the tubing”),
`3:32–35 (“Connectors for coupling the CSST . . . to gas lines and
`appliance[s] are affixed at each end of the tubing. These connectors are
`made of a conductive material, such as brass.”), 5:14–16 (stating the
`“ground wire [] attaches to the end connectors 610, 620 at the set screws [],
`one on each end”), 5:36–40 (“brass connectors on the ends”), Figs. 1–2. In
`our Decision on Institution, we interpreted “connecting means at each end of
`the gas tubing for coupling the tubing to gas lines and appliances” in claim 1
`as follows:
`Function: coupling the tubing to gas lines and appliances.
`Corresponding structure: end connectors 610 and 620.
`Neither party disputes our construction of the connecting means.
`Based on the full trial record, we do not perceive any reason or evidence that
`compels any deviation from our construction.
`2. “conducting means”
`Claim 1, element (b) recites “conducting means for providing direct
`electrical contact between said connecting means at either end of the gas
`tubing, wherein the conducting means has a higher conductivity than the gas
`tubing and carries electrical current between the connecting means in the
`event of electrical arcing and ground faults, thereby keeping the current off
`the gas tubing and preventing damage to the tubing.” Ex. 1001, 6:29–36
`(hereinafter “the conducting means”).
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`
`In our Decision on Institution, we construed the conducting means as
`a means-plus-function limitation under 35 U.S.C. § 112, sixth paragraph, as
`follows:
`
`Functions: providing direct electrical contact between the
`connecting means at either end of the gas tubing and carrying
`electrical current between the connecting means in the event of
`electrical arcing and ground faults, thereby keeping the current
`off the gas tubing and preventing damage to the tubing.
`Corresponding structure: wire 601 or mesh 650.6
`Dec. on Inst. 9. Based on the record presented, we disagreed with Patent
`Owner’s argument in its Preliminary Response that “conducting means”
`does not encompass a configuration in which “the ground wire touch[es] and
`[is] in electrical contact with the CSST tubing surface, or potentially such
`contact resulting from lightning piercing a laminated resin layer, as disclosed
`by Yamane and/or Ohki.” Prelim. Resp. 8; see Dec. on Inst. 10. We urged
`the parties to address the meaning of the “conducting means” during trial
`
`6 In its Petition, Petitioner asserts that the conducting means also includes
`screws 611 and 621 as shown in Figures 6A or screws and collars as shown
`in Figure 6B. Pet. 11–12; Ex. 1028 ¶¶ 67–69 (asserting the ’763 patent
`states “with regard to the ground wire embodiment of Figure 6A, that ‘[t]his
`ground wire 601 attaches to the end connectors 610, 620 at the set screws
`611, 612, one on each end’”). In our Decision on Institution, we did not
`construe the corresponding structure of the “conducting means” as
`encompassing screws 611 and 621. Dec. on Inst. 10 n. 7; see also Ex. 1001,
`Abstract, 3:35–37 (stating that the conductive wire makes the direct
`electrical contact between the end connectors). Neither party addresses this
`aspect of our construction. Based on the full trial record, we do not perceive
`any reason or evidence that compels any deviation from our interpretation as
`to this aspect of the conducting means.
`
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`and stated that our ultimate interpretation will be based on the complete
`record at the end of trial. Dec. on Inst. 10.
`In its Response, Patent Owner agrees that the structure described in
`the ’763 patent for performing the function of the conducting means is
`ground wire 601 shown in Figure 6A and mesh 650 shown in Figure 6B.
`PO Resp. 16, 20. However, Patent Owner contends that under the broadest
`reasonable interpretation, the “conducting means” cannot “contact[] the
`metal surface of the CSST because such would not represent a ‘direct’
`electrical connection ‘in parallel’ with the length of the CSST.” Id. at 13.
`Patent Owner frames the claim construction issue as
`whether the configuration disclosing the ground wire touching
`and in electrical contact with the CSST tubing surface, or
`potentially such contact resulting from lightning piercing a resin
`layer, as disclosed by Yamane and/or Ohki, is such a “parallel”
`configuration representing an electrical “shunt”, or is instead
`effectively an electrical “short”. The proper construction is that
`a structure that requires a parallel configuration does not include
`such an electrical short.
`Id. at 14–15.
`Patent Owner also argues that under the broadest reasonable
`interpretation of the “conducting means,” the conducting means cannot be in
`“close electrical contact” to the gas tubing and the conducting means cannot
`be separated from the inner gas tubing by a resin layer. See, e.g., id. at 1
`(stating the ’763 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
`failure mode”), 32–33 (describing the resin layers in Yamane and Ohki as a
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`“design flaw” and stating that the structures shown in the ’763 patent “do not
`employ a resin”).
`To support its claim construction, Patent Owner contends that the
`structures of Figures 6A and 6B are described as being “in ‘parallel’ with the
`CSST tubing,” as “provid[ing] a ‘direct’ connection between the ends of the
`length of the CSST tubing,” and as a “shunt. Id. at 18–19 (citing Ex. 1001,
`5:36–43). Patent Owner contends that these structures are “superior” to the
`solutions proposed in Yamane and Ohki, which are not “parallel”
`configurations and “are not a true shunt.” Id. at 9, 18. Specifically, Patent
`Owner contends that in certain situations, electric charge can be disbursed
`onto the surface of Yamane’s and Ohki’s CSSTs following a lighting strike
`or other electrical insult. Id. at 28–29 (stating that if “the insulation layer [of
`Yamane] is pierced by the electrical insult, . . . the charge is dispersed in part
`onto the surface of the CSST tube”), 30 (stating “similar to Yamane, Ohki
`also describes . . . that in the event of an electrical insult piercing element 3
`(or element 4 if present), charge will be disbursed over the surface of the
`CSST tubing”) (citing Ex. 1019 ¶ 24; Ex. 1020 ¶ 31).
`Petitioner responds, inter alia, that the conducting means does not
`include “no touching,” “no close contact,” or “no resin” limitations, and that
`“it is improper, when construing a means-plus-function claim, to import
`functional limitations that are not recited in the claim, or structural
`limitations from the written description that are unnecessary to perform the
`claimed function.” Reply 4–12 (quotation omitted). Petitioner also argues
`that the ’763 patent describes the mesh as “a current shunt” that “both shunts
`the current and causes the charge on the actual CSST . . . wall to be
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`dissipated over a larger area.” Id. at 7 (quoting Ex. 1001, 3:45–49)
`(emphases omitted). Petitioner argues that this passage in the specification
`“expressly contemplates current transferring from the conducting means
`(i.e., mesh) to the CSST wall, which confirms that the conducting means and
`CSST can be in contact.” Id. at 5–6.
`Analysis
`The “conducting means” of claim 1 is a means-plus-function
`limitation under 35 U.S.C. § 112, sixth paragraph, because the claim uses the
`word “means,” describes the functions performed by the means, and recites
`no structure for performing the functions.
`The functions of the conducting means are defined in claim 1 as
`“providing direct electrical contact between said connecting means at either
`end of the gas tubing” and “carr[ying] electrical current between the
`connecting means in the event of electrical arcing and ground faults, thereby
`keeping the current off the gas tubing and preventing damage to the tubing.”
`The clause “wherein the conducting means has a higher conductivity than
`the gas tubing” requires the structure of the conducting means to have a
`higher conductivity than the gas tubing.
`The specification clearly links “copper ground wire 601” and “wire
`mesh 650” to the functions of providing direct electrical contact between the
`connecting means at either end of the gas tubing and carrying electrical
`current between the connecting means in the event of electrical arcing and
`ground faults, thereby keeping the current off the gas tubing and preventing
`damage to the tubing. See, e.g., Ex. 1001, Abstract (stating the
`“[c]onductive wire (i.e. mesh surrounding the gas tubing) provides a direct
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`electrical contact between the end connectors”), 3:39–44 (“If an electrical
`charge goes to ground via the CSST or the appliance connector, such as
`from a lightning strike or an appliance short, the majority of the current is
`carried by the conductive wire rather than the CSST or appliance connector
`itself, thus preventing damage to the CSST from the current.”), 3:44–49
`(“When using a mesh type shield, if the CSST or appliance connector
`receives an electrical charge from arcing to the side walls, the mesh serves
`as a current shunt and thus both shunts the current and causes the charge on
`the actual CSST (or appliance connector) wall to be dissipated over a larger
`area.” ), 3:35–37 (“Conductive ground wire, such as #8 AWG copper,
`provides a direct electrical contact between the end connectors.”), 5:10–15
`(stating “[t]he present invention reduces the risk of . . . failures . . . by
`placing . . . copper ground wire 601 of ~#8 American Wire Gauge (AWG) or
`larger electrically in parallel with the length of CSST or the appliance
`connectors 610, 620”), 5:29–31 (stating “CSST flex line 600 is shrouded by
`. . . wire mesh 650, which is attached to . . . collars 630, 640 on each end”),
`5:36–42 (stating the embodiments of Figures 6A and 6B “keep[] electrical
`current from damaging the flared ends of the CSST by providing an
`electrical shunt in the form of copper ground wire between the brass
`connectors on the ends” and that “[s]ince copper is a superior conductor to
`CSST, it can safely carry currents that the CSST was never designed to
`handle”).
`Based on the full record, applying the broadest reasonable
`interpretation of the claims in light of the specification, we construe the
`“conducting means” of claim 1 as:
`
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`Functions: providing direct electrical contact between the
`connecting means at either end of the gas tubing and carrying
`electrical current between the connecting means in the event of
`electrical arcing and ground faults, thereby keeping the current
`off the gas tubing and preventing damage to the tubing.
`Corresponding structure: wire 601 or mesh 650.
`We do not agree with Patent Owner that the conducting means, when
`given its broadest reasonable interpretation, prohibits the wire or mesh from
`touching or being in electrical contact with the CSST tubing surface. See,
`e.g., PO Resp. 1 (stating Yamane’s and Ohki’s teaching that “excess charge
`is distributed over the surface of the tubing in a failure mode . . . in no way
`teaches or suggests the . . . ‘conducting means’ in claim 1(b)”), 13–14
`(stating the “proper construction of ‘conducting means’ therefore requires
`that the ground wire or mesh structure not be in direct electrical contact with
`the CSST tubing, but rather be in a parallel configuration”), 19–20 (stating
`that a touching configuration would not distribute charge over CSST tubing).
`Patent Owner’s reading of the conducting means as a “shunt” that
`would not distribute charge over CSST tubing is inconsistent with the
`specification of the ’763 patent. The ’763 patent expressly states that should
`the gas tubing receive “an electrical charge from arcing to the side walls, the
`mesh serves as a current shunt and thus both shunts the current and causes
`the charge on the actual CSST (or appliance connector) wall to be
`dissipated over a larger area.” Ex. 1001, 3:45–49 (emphasis added).
`As noted above, the function of the conducting means is to provide
`direct electrical contact between the connecting means at either end of the
`gas tubing and carry electrical current between the connecting means in the
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`event of electrical arcing and ground faults, thereby keeping the current off
`the gas tubing and preventing damage to the tubing. A copper wire directly
`connected to brass connectors provides direct electrical contact between the
`end connectors. The specification of the ’763 patent explains that each of
`the disclosed embodiments “keeps electrical current from damaging . . . the
`CSST by providing an electrical shunt in the form of copper ground wire
`between the brass connectors.” Id. at 5:36–40. The specification of the ’763
`patent further explains that because “copper is a superior conductor to
`CSST, it can safely carry currents that the CSST was never designed to
`handle.” Id. at 5:40–42.
`We also do not agree that under the broadest reasonable interpretation,
`the conducting means cannot be in “close electrical contact” to the gas
`tubing, or that the conducting means cannot be separated from the inner gas
`tubing by a resin layer. The claims do not recite any such limitations, and
`Patent Owner does not identify any statements in the ’763 patent
`specification that describe the structures corresponding to the conducting
`means as having these characteristics, or otherwise limit the scope of the
`claims to include these limitations. Patent Owner also 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 ’763 patent
`appear to be in “close electrical contact” with the CSST, and Patent Owner
`does not provide any explanation otherwise. See, e.g., Ex. 1001, Fig. 6A,
`6B.
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`C. Obviousness of Claims 1–5 and 7 over
`Yamane and the Design Guide
`Petitioner asserts claims 1 through 5 and 7 of the ’763 patent are
`unpatentable under 35 U.S.C. § 103(a) as obvious over Yamane in
`combination with the Design Guide, relying on declaration testimony of
`Vladimir A. Rakov, Ph.D. Pet. 23–38 (citing Ex. 1028). Patent Owner
`opposes, relying on declaration testimony of David J. Icove, Ph.D.
`PO Resp. 26–35 (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 5 and 7 are
`unpatentable under 35 U.S.C. § 103 over Yamane and the Design Guide.
`
`1. Yamane
`Yamane, entitled “Lightning-Proof Tubing,” describes various
`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.
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`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
`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”).
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`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 ’448 patent, to which the ’763 patent claims priority.
`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 public interested in the art before the critical date);
`Ex. 1001, [62]. “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
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`from the January 2004 Gastite Design and Installation Guide,” that the
`complete Design Guide “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
`pr