Trials@uspto.gov
`571.272.7822
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` Paper No. 11
`January 9, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`IRONRIDGE INC.,
`Petitioner,
`v.
`RILLITO RIVER SOLAR, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01681
`Patent 6,526,701 B2
`____________
`
`
`Before BART A. GERSTENBLITH, MITCHELL G. WEATHERLY, and
`JASON W. MELVIN, Administrative Patent Judges.
`
`GERSTENBLITH, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`571.272.7822
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`
`
`
`
` Paper No. 11
`January 9, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`IRONRIDGE INC.,
`Petitioner,
`v.
`RILLITO RIVER SOLAR, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01681
`Patent 6,526,701 B2
`____________
`
`
`Before BART A. GERSTENBLITH, MITCHELL G. WEATHERLY, and
`JASON W. MELVIN, Administrative Patent Judges.
`
`GERSTENBLITH, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`
`IPR2017-01681
`Patent 6,526,701 B2
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`
`I.
`
`INTRODUCTION
`
`Background
`
`IronRidge Inc. (“Petitioner”) filed a Corrected Petition1 (Paper 10,
`“Pet.”) requesting institution of inter partes review of claims 36, 38, 40, 42,
`and 43 of U.S. Patent No. 6,526,701 B2 (Ex. 1001, “the ’701 patent”).
`Rillito River Solar, LLC dba EcoFasten Solar (“Patent Owner”) filed a
`Preliminary Response (Paper 7).
`Pursuant to 35 U.S.C. § 314(a), an inter partes review may be
`instituted only if “the information presented in the petition . . . and any
`[preliminary] response . . . shows that there is a reasonable likelihood that
`the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.” See 37 C.F.R. § 42.108(c).
`For the reasons given below, on this record Petitioner has not
`established a reasonable likelihood that it would prevail in showing the
`unpatentability of claims 36, 38, 40, 42, and 43 of the ’701 patent.
`Accordingly, we do not institute an inter partes review of the ’701 patent.
`
`Related Proceedings
`
`The ’701 patent is the subject of an action between the parties in
`Rillito River Solar LLC dba EcoFasten Solar v. IronRidge, Inc., No. 2:16-
`cv-04156-SPL (D. Ariz.). Pet. 2–3; Paper 5, 1. The ’701 patent also is the
`subject of an action between Patent Owner and third party Wencon
`Development in Rillito River Solar LLC dba EcoFasten Solar v. Wencon
`
`
`1 Petitioner filed an Unopposed Motion to Correct Clerical Mistake in the
`Petition Under 37 C.F.R. § 42.104(c) (Paper 8), which we granted (Paper 9).
`Subsequently, Petitioner filed the Corrected Petition (Paper 10), which we
`refer to herein.
`
`2
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`IPR2017-01681
`Patent 6,526,701 B2
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`Dev., Inc. dba Quick Mount PV, No. 2:16-cv-03245-PHX-DLR (D. Ariz.).
`Pet. 3; Paper 5, 1–2.
`
`Real Parties in Interest
`
`The Petition identifies “IronRidge Inc. of Hayward, California” as the
`real party in interest. Pet. 2. Patent Owner identifies “Rillito River Solar,
`LLC” as the real party in interest. Paper 5, 1.
`
`The References
`
`Petitioner relies on the following references:
`ALPINE SNOWGUARDS, Setting the Industry Standard, published
`Mar. 27, 2000 (Ex. 1006, “Product Advertisement”);
`U.S. Patent No. 3,394,516, issued July 30, 1968 (Ex. 1012, “Taylor”);
`European Patent Application Publication No. EP 0 710 751 A2,
`published May 8, 1996 (Ex. 1014, “Hablützel”)2;
`U.S. Patent No. 5,425,209, issued June 20, 1995 (Ex. 1016,
`“Funaki”);
`U.S. Patent No. 5,370,202, issued Dec. 6, 1994 (Ex. 1017, “Nichols”);
`U.S. Patent No. 4,321,745, issued Mar. 30, 1982 (Ex. 1018, “Ford”);
`U.S. Patent No. 5,609,326, issued Mar. 11, 1997 (Ex. 1019,
`“Stearns”); and
`U.S. Patent No. 5,613,328, issued Mar. 25, 1997 (Ex. 1020, “Alley”).
`
`
`
`
`2 Exhibit 1014 is the English-language translation of the foreign-language
`version of the reference (Exhibit 1013). Exhibit 1015 is the Certificate of
`Translation. We refer to the English-language translation (Exhibit 1014) as
`“Hablützel.”
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`The Asserted Grounds of Unpatentability
`
`Petitioner challenges the patentability of claims 36, 38, 40, 42, and 43
`of the ’701 patent on the following grounds:
`
`§ 103(a)
`
`Basis
`References
`§ 103(a)
`Product Advertisement and Taylor
`Product Advertisement and Funaki
`§ 103(a)
`Product Advertisement and Hablützel § 103(a)
`Product Advertisement and Nichols
`§ 103(a)
`Product Advertisement, Ford, and
`one of Taylor, Hablützel, Funaki, or
`Nichols
`Alley and Taylor
`Alley and Funaki
`Alley and Hablützel
`Alley and Nichols
`Alley, Ford, and one of Taylor,
`Hablützel, Funaki, or Nichols
`Stearns and Taylor
`Stearns and Funaki
`Stearns and Hablützel
`Stearns and Nichols
`Stearns, Ford, and one of Taylor,
`Hablützel, Funaki, or Nichols
`
`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`
`Claim(s) challenged
`36, 38, 40, and 43
`36, 38, 40, and 43
`36, 38, 40, and 43
`36, 38, 40, and 43
`
`42
`
`36, 40, and 43
`36, 40, and 43
`36, 40, and 43
`36, 40, and 43
`42
`36, 38, 40, and 43
`36, 38, 40, and 43
`36, 38, 40, and 43
`36, 38, 40, and 43
`
`42
`
`Petitioner supports its Petition with a Declaration by Kimberly
`Cameron, Ph.D., dated June 26, 2017 (Ex. 1002). Patent Owner supports its
`Preliminary Response with a Declaration by Brian C. Stearns, dated
`October 10, 2017 (Ex. 2001, “the Stearns Declaration”).
`
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`Patent 6,526,701 B2
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`
`The ’701 Patent
`
`The ’701 patent is directed to “roof mounts, and more particularly to a
`universal roof mount for attaching structures to a roof.” Ex. 1001, 1:4–6.
`“Roof mounts are generally used to attach structures such as safety railings
`and snow guards to a roof.” Id. at 1:10–11. The ’701 patent teaches that a
`known method for attaching a roof mount to a roof deck covered by
`insulation includes placing a solid block, generally referred to as a spacer, in
`the insulation between the roof deck and the roof mount to elevate the roof
`mount. See id. at 1:19–22. Instead of using a solid block as a spacer, the
`’701 patent describes using a base member with a vertical, elevating flange,
`also referred to as a sidewall. See, e.g., id. at [57].
`Figure 8 of the ’701 patent, reproduced below, illustrates such flange:
`
`
`Figure 8 is a perspective view “of a roof mount including a base member
`with a vertical elevating flange and a mount with an integral coupling
`component.” Id. at 2:46–48.
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`Patent 6,526,701 B2
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`
`The ’701 patent explains the following regarding Figure 8:
`[A]nother method of elevating a base member 12a is to include
`a vertical flange 104 around the periphery of base member 12a.
`Here, rather than being installed prior to laying of the membrane
`roof, the elevating mechanism is part of base member 12a and is
`positioned after membrane roofing 40 is in place. Flange 10[4]
`is manufactured at varying heights, e.g., to match the height of
`the roof insulation 62. . . .
`In the embodiment of FIG. 8, an attachment mount 14a
`includes an integral coupling component 72a. Mount 14a
`includes a plate 106 with holes 30 for receiving bolts 24. Nuts 37
`are threaded onto bolts 24 to secure mount 14a to base
`member 12a. . . . base member 12a includes protrusions 16 and
`plate 106
`includes hollowed
`regions 32
`for
`forming a
`substantially leak proof seal when membrane patch 13 is
`positioned therebetween.
`Id. at 5:9–31.
`
`Illustrative Claim
`
`Claim 36 is the sole independent claim challenged in this proceeding
`and is reproduced below:
`36. A roof mount, comprising:
`a base member including a protrusion extending from a
`first surface of the base member, the base member including a
`connecting element,
`an attachment mount defining a hollowed region for
`receiving the protrusion to form a compression fitting,
`wherein a substantially leak proof assembly is formed
`when the attachment mount is coupled to the base member by the
`connecting element with a sealing material placed between the
`attachment mount and the base member and the connecting
`element extends through the sealing material, and
`a spacer for extending the base member to a roof surface,
`the spacer including a side wall of the base member
`Ex. 1001, 8:27–40.
`
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`CLAIM CONSTRUCTION
`II.
`In an inter partes review, claim terms in an unexpired patent are
`construed according to their broadest reasonable interpretation in light of the
`specification of the patent in which they appear. See 37 C.F.R. § 42.100(b);
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). There
`is a presumption that claim terms are given their ordinary and customary
`meaning, as would be understood by a person of ordinary skill in the art in
`the context of the specification. See In re Translogic Tech. Inc., 504 F.3d
`1249, 1257 (Fed. Cir. 2007). Nonetheless, if the specification “reveal[s] a
`special definition given to a claim term by the patentee that differs from the
`meaning it would otherwise possess[,] . . . the inventor’s lexicography
`governs.” Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005)
`(en banc) (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366
`(Fed. Cir. 2002)). Another exception to the general rule that claims are
`given their ordinary and customary meaning is “when the patentee disavows
`the full scope of a claim term either in the specification or during
`prosecution.” Uship Intellectual Props., LLC v. United States, 714 F.3d
`1311, 1313 (Fed. Cir. 2013) (quoting Thorner v. Sony Computer Entm’t Am.,
`LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)). Additionally, only terms that
`are in controversy need to be construed, and these need be construed only to
`the extent necessary to resolve the controversy. See Vivid Techs., Inc. v. Am.
`Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`“connecting element”
`The parties present only one claim term for construction—
`“connecting element.” Claim 36 recites, in relevant part, “a base member
`including a protrusion extending from a first surface of the base member, the
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`IPR2017-01681
`Patent 6,526,701 B2
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`base member including a connecting element.” Ex. 1001, 8:28–30
`(emphasis added). Claim 36 further recites:
`an attachment mount defining a hollowed region for receiving
`the protrusion to form a compression fitting, wherein a
`substantially leak proof assembly is formed when the attachment
`mount is coupled to the base member by the connecting element
`with a sealing material placed between the attachment mount and
`the base member and the connecting element extends through the
`sealing material[.]
`Id. at 8:31–38 (emphases added).
`Petitioner contends that “‘connecting element’ should be interpreted
`under . . . 35 U.S.C. § 112, para. 6.” Pet. 15. Petitioner recognizes that there
`is a presumption that “connecting element” is not a means-plus-function
`claim limitation because it does not recite the term “means.” See id. at 16
`(noting that the lack of the term “means” no longer creates a strong
`presumption that § 112, ¶ 6 does not apply) (citing Williamson v. Citrix
`Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015)). Nonetheless,
`Petitioner asserts that it has overcome the presumption because the term is
`not known in the art as referring to a known device or structure. Id. at 16
`(citing Ex. 1002 ¶ 36). Petitioner contends that the claim term “element” is
`“a nonce word that is simply a replacement for ‘means.’” Id. at 16 (citing
`Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015);
`Ex. 1002 ¶ 37). Petitioner argues that the other limitations of claim 36 fail
`to provide further structure for the “connecting element” and that “the prefix
`‘connecting’ simply identifies the function of that element – to connect.” Id.
`at 17 (citing Ex. 1002 ¶ 36).
`Petitioner contends that the claimed function of the “connecting
`element” is “to couple the attachment mount to the base member.” Id. at 18.
`
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`Petitioner asserts that the specification discloses two examples of a structure
`that performs this function—“(1) a threaded bolt extending through a hole in
`the base plate and extending upwardly, and (2) a threaded bolt integral with
`the base plate and extending upwardly.” Id. (citing Ex. 1001, 3:12–23;
`Ex. 1002 ¶ 40). Thus, we understand Petitioner’s proposed construction of
`“connecting element” to be “a threaded bolt extending through a hole in the
`base plate and extending upwardly,” “a threaded bolt integral with the base
`plate and extending upwardly,” or equivalents thereof. Patent Owner does
`not challenge Petitioner’s proposed construction of “connecting element” for
`purposes of the Preliminary Response. Prelim. Resp. 2.
`For purposes of this Decision, we adopt Petitioner’s proposed
`construction of “connecting element” for the reasons explained by
`Petitioner.
`
`III. ANALYSIS
`Level of Ordinary Skill in the Art
`
`Petitioner contends that a person of ordinary skill in the art would
`have had: “a bachelor’s degree in mechanical engineering or a closely
`related discipline, and one to two years of practical, academic, or industrial
`experience in studying, designing, or building mechanical systems, including
`for example, those in roofing applications.” Pet. 14–15 (citing Ex. 1002
`¶ 35). Patent Owner does not challenge Petitioner’s proposed level of
`ordinary skill in the art for purposes of its Preliminary Response. Prelim.
`Resp. 2.
`Consistent with the level of ordinary skill in the art reflected by the
`prior art of record, we adopt Petitioner’s unopposed position as to the level
`of ordinary skill in the art for the purposes of this Decision. See Okajima v.
`
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`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d
`1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).
`
` Obviousness Challenges Based on the Product Advertisement
`Petitioner raises several grounds challenging claims 36, 38, 40, 42,
`and 43 of the ’701 patent based on two of the Alpine SnowGuards disclosed
`in the Product Advertisement—SnowGuards #15 and #115—in combination
`with one or more references. Pet. 20–21, 26–49. As a preliminary matter,
`Patent Owner contends that SnowGuards #15 and #115 are not prior art
`under either 35 U.S.C. § 102(a) or § 102(b) and, thus, cannot be used to
`challenge the claims of the ’701 patent. Prelim. Resp. 12. Petitioner does
`not provide an analysis of whether the Product Advertisement’s disclosure
`of SnowGuards #15 and #115 qualifies as prior art to the ’701 patent under
`§ 102(a) or § 102(b). Instead, Petitioner argues that Patent Owner admitted
`that the Product Advertisement qualifies as prior art based on Patent
`Owner’s actions (1) before the U.S. Patent and Trademark Office
`(“USPTO”) and (2) in a related district court litigation. Pet. 9–14. We first
`address § 102 and then address Petitioner’s contentions regarding Patent
`Owner’s actions.
`
`35 U.S.C. §§ 102(a), 102(b)
`
`The ’701 patent was filed on December 6, 2000 (Ex. 1001, [22]) and
`claims priority to U.S. provisional patent application no. 60/216,143 (“the
`’143 provisional”), which was filed on July 3, 2000 (id. at [60]).3 The
`Product Advertisement was published on March 27, 2000. Pet. 10 (citing
`
`
`3 Petitioner does not contest the ’701 patent’s priority claim. See Pet. 5
`(noting that the ’701 patent claims priority to the ’143 provisional).
`
`10
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`Patent 6,526,701 B2
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`Ex. 1005, 2); Prelim. Resp. 13 (citing Exs. 1005, 1006; Pet. 10; Ex. 2001
`¶ 10).
`
`Section 102 of Title 35 of the United States Code4 provides:
`A person shall be entitled to a patent unless —
`(a) the invention was known or used by others in this country, or
`patented or described in a printed publication in this or a
`foreign country, before the invention thereof by the applicant
`for patent, or
`(b) the invention was patented or described in a printed
`publication in this or a foreign country or in public use or on
`sale in this country, more than one year prior to the date of the
`application for patent in the United States . . . .
`35 U.S.C. § 102.
`With respect to § 102(a), Patent Owner contends that Alpine
`SnowGuards #15 and #115 were created by Brian C. Stearns and
`Alan L. Stearns, the two individuals named as inventors on the ’701 patent.
`Prelim. Resp. 12–13. Patent Owner explains that the named inventors
`“assigned their rights in the ’701 patent to Vermont Slate & Copper
`Services, Inc.” Id. (citing Ex. 1001; Ex. 2001 ¶ 5). The ’701 patent lists
`Vermont Slate & Copper Services, Inc. as the assignee. Ex. 1001, [73]. The
`declaration testimony of Brian C. Stearns supports Patent Owner’s position.
`See Ex. 2001 ¶¶ 3–5 (testifying that he and Alan L. Stearns invented the
`subject matter claimed in the ’701 patent, created Alpine SnowGuards #15
`and #115 described in the Product Advertisement, and assigned their rights
`to Vermont Slate & Copper Services). Patent Owner asserts that Vermont
`Slate & Copper Services owned all rights in and to the Product
`
`4 The America Invents Act (“AIA”), Pub. L. No. 112–29, took effect on
`September 16, 2012. Because the application for the ’701 patent was filed
`before that date, we refer to the pre-AIA version of § 102.
`
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`Advertisement, the products described in the Product Advertisement, and the
`inventions claimed in the ’701 patent at the time the ’701 patent application
`was filed. Prelim. Resp. 13 (citing Ex. 2001 ¶ 10). Petitioner does not
`contest the testimony set forth in the Stearns Declaration or the assertions
`made by Patent Owner regarding inventorship of the ’701 patent and
`creation and ownership of SnowGuards #15 and #115.5
`“[O]ne’s own work is not prior art under § 102(a) even though it has
`been disclosed to the public in a manner or form which otherwise would fall
`under § 102(a).” Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 968 (Fed. Cir.
`2014) (quoting In re Katz, 687 F.2d 450, 454 (CCPA 1982)). Accordingly,
`we agree with Patent Owner that SnowGuards #15 and #115, as disclosed in
`the Product Advertisement, do not qualify as prior art under § 102(a)
`because they are the ’701 patent inventor’s own work and, therefore, were
`not “known or used by others . . . before the invention thereof by the
`applicant for patent.” 35 U.S.C. § 102(a).
`With respect to § 102(b), Patent Owner contends that the Product
`Advertisement was published on March 27, 2000. Prelim. Resp. 13 (citing
`Exs. 1005, 1006; Pet. 10; Ex. 2001 ¶ 8). The ’701 patent claims priority to
`the ’143 provisional, which was filed on July 3, 2000. Ex. 1001, [60].
`Patent Owner asserts that SnowGuards #15 and #115 do not qualify as prior
`art under § 102(b) because they were not described in a printed publication
`more than one year prior to the effective filing date of the ’701 patent.
`Prelim. Resp. 14–15. Petitioner does not contest the ’701 patent’s priority
`
`
`5 Petitioner did not seek leave to file a reply to Patent Owner’s Preliminary
`Response. See 37 C.F.R. § 42.108(c) (a petitioner may seek leave to file a
`reply to a preliminary response).
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`claim to the ’143 provisional’s filing date. See Pet. 5 (noting that the
`’701 patent claims priority to the ’143 provisional). Nonetheless, Patent
`Owner notes that the nonprovisional application, which issued as the
`’701 patent, was filed on December 6, 2000, also less than one year after the
`publication of the Product Advertisement. Id. at 15 n.3. Thus, even if the
`claims of the ’701 patent were not entitled to the filing date of the
`’143 provisional, the Product Advertisement would not qualify as prior art
`under § 102(b).
`We need not decide whether the claims of the ’701 patent are entitled
`to priority based on the ’143 provisional because (1) Petitioner has not
`contested the priority claim, and (2) the filing date of the nonprovisional
`application that issued as the ’701 patent is less than one year after the
`publication date of the Product Advertisement. Accordingly, we agree with
`Patent Owner that SnowGuards #15 and #115 do not qualify as prior art to
`the ’701 patent under § 102(b) because the Product Advertisement, even if it
`describes many features of the claimed invention, is not “a printed
`publication . . . more than one year prior to the date of the application for
`patent in the United States.” 35 U.S.C. § 102(b).
`
`Prosecution History
`
`Petitioner contends that the patent applicants’ actions and silence
`during the prosecution of the ’701 patent application support Petitioner’s
`position that SnowGuards #15 and #115, as disclosed in the Product
`Advertisement, are prior art to the ’701 patent. Pet. 9–13. Patent Owner
`disagrees. Prelim. Resp. 17–18.
`The patent applicants filed an Information Disclosure Statement
`(“IDS”) on June 13, 2001. Ex. 1005. The IDS lists the Product
`
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`Advertisement under “Other Documents.” Id. The Examiner rejected many
`of the then-pending claims under 35 U.S.C. §§ 102(b) and 103(a) based on
`SnowGuards #15 and #115 as disclosed in the Product Advertisement.
`Ex. 1007, 4–5.6 The patent applicants amended several of the claims,
`including the claim that issued as claim 36 (Ex. 1008), and the Examiner
`entered a Notice of Allowance (Ex. 1009). During prosecution, the patent
`applicants did not argue that SnowGuards #15 and #115 were not prior art or
`contest the positions taken by the Examiner. Ex. 1008.
`The U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”)
`addressed the specific issue of prior art by admission rather than by statutory
`provision in Riverwood International Corp. v. R.A. Jones & Co., 324 F.3d
`1346 (Fed. Cir. 2003). In Riverwood, the Federal Circuit held that while
`work that is not the inventors’ can be prior art by admission, “[o]ne’s own
`work may not be considered prior art in the absence of a statutory basis, and
`a patentee should not be ‘punished’ for being as inclusive as possible and
`referencing his own work in an IDS.” 324 F.3d at 1355. In short, the
`inclusion of a patent applicant’s own work in an IDS does not constitute an
`admission that the work is prior art. Additionally, we do not consider the
`patent applicants’ decision to amend the claims instead of arguing the
`rejection as an admission that SnowGuards #15 and #115 are prior art. See,
`e.g., Novo Nordisk A/S v. Becton Dickinson and Co., 96 F. Supp. 2d 309
`(S.D.N.Y. 2000) (“It is recognized that positions are often taken during
`patent prosecutions out of convenience and expedience, and therefore such
`positions should not be given conclusive effect.” (citation omitted)), aff’d,
`304 F.3d 1216 (Fed. Cir. 2002). Accordingly, the patent applicants’ actions,
`
`6 Citations are to the page number of the exhibit.
`
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`in submitting the IDS, and inaction, by not contesting the Examiner’s
`rejection based on the Product Advertisement, do not change our
`determination above that SnowGuards #15 and #115 are not prior art.
`
`Related District Court Litigation
`
`Petitioner served discovery requests on Patent Owner in the related
`district court litigation between the parties involving the ’701 patent.
`Pet. 13; Ex. 1010. One of the discovery requests was a set of Requests for
`Admission. Ex. 1010. Request for Admission (“RFA”) No. 3 and Patent
`Owner’s Objection/Response are reproduced below:
`Request for Admission No. 3: Admit that the Product
`Advertisement qualifies as prior art to the Asserted Patent under
`one or more sections of 35 USC § 102 as codified as of
`December 6, 2000 (“pre-AIA 35 USC § 102”).
`Objection/Response: EcoFasten objects to this request as vague
`by its reference to both “prior art” and § 102. EcoFasten admits
`that the Product Advertisement is prior art that was considered
`by the Patent Office and was grounds for rejecting claims that
`did not issue in the ’701 patent, but denies that the Product
`Advertisement is prior art destroying patentability of the
`invention under any section of § 102.
`Ex. 1010, 3.
`Petitioner contends that Patent Owner’s objection “effectively
`admitted that the disclosure of the [SnowGuard] #15 and [SnowGuard] #115
`are prior are [sic].” Pet. 13. Petitioner argues that “Patent Owner’s
`objection is only to the extent that its response could be taken as an
`admission that the Product Advertisement invalidates the [’]701 patent, and
`not to the extent that the [SnowGuard] #15 and [SnowGuard] #115 within
`the Product Advertisement qualif[y] as prior art.” Id. at 14 (citing Intri-Plex
`Techs., Inc. v. Saint-Gobain Performance Plastics Rencol Ltd.,
`
`15
`
`
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`IPR2017-01681
`Patent 6,526,701 B2
`
`IPR2014-00309 (Paper 83), for the proposition that admitted prior art falls
`within the scope of 35 U.S.C. § 311(b)). Patent Owner contests Petitioner’s
`interpretation, arguing that that its Objection/Response was not a clear
`admission. Prelim. Resp. 15–17.
`We disagree with Petitioner that Patent Owner’s Objection/Response
`to RFA No. 3 constitutes a clear admission that the Product Advertisement
`describing SnowGuards #15 and #115 is prior art to the claimed invention of
`the ’701 patent. First, whether the Product Advertisement itself is prior art,
`as the RFA asks, does not end the inquiry. This is because the Product
`Advertisement describes numerous SnowGuards, not only #15 and #115.
`Thus, even if the Product Advertisement qualified as prior art for its
`description of SnowGuard #14, for example, that would not mean
`necessarily that it qualified as prior art for its description of #15 and #115
`because those two SnowGuards were the work of the named inventors.
`Second, Patent Owner’s Objection/Response states that the Product
`Advertisement is prior art that was considered by the Patent Office, but that
`statement is tied to what transpired before the Patent Office; it does not state
`with unqualified specificity that the Product Advertisement is prior art. In
`light of the ambiguity, we need not take a position on whether Patent Owner
`could admit that the Product Advertisement describing SnowGuards #15 and
`#115 is prior art under either § 102(a) or § 102(b) when, in light of our
`discussion above, the Product Advertisement describing SnowGuards #15
`and #115 does not qualify as prior art under § 102(a) or § 102(b). See
`Reading & Bates Construction Co. v. Baker Energy Res. Corp., 748 F.2d
`651 (Fed. Cir. 1984) (“It is for the court to say what does or does not qualify
`as § 103 ‘prior art’ . . . .”).
`
`16
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`IPR2017-01681
`Patent 6,526,701 B2
`
`
`Additionally, the Board’s decision in Intri-Plex is inapposite. First,
`the decision is not precedential and not binding on this panel. Second, the
`panel in Intri-Plex relied on the admitted prior art as “probative evidence . . .
`directed to the level of skill in the art rather than . . . directed to scope and
`content of the prior art.” Intri-Plex, slip op. at 21 n.8. Here, Petitioner relies
`upon SnowGuards #15 and #115 as evidence of the scope and content of the
`prior art, not simply as indicative of the level of skill in the art. Third, the
`panel in Intri-Plex distinguished the Federal Circuit’s decision in Reading &
`Bates, finding that Reading & Bates was directed to “the narrow issue of
`whether the preamble of a claim written in Jeps[o]n format should be treated
`as admitted prior art.” Intri-Plex, slip op. at 21 n.8. The Intri-Plex panel did
`not consider that the patent at issue in Reading & Bates also included a
`statement in its specification, in a section titled “Summary of the Prior Art,”
`that referenced the alleged prior art patent as “prior art.” Compare
`Intri-Plex, slip op. at 23 n.11, with Reading & Bates, 748 F.2d at 650–51
`(discussing the patent specification); see Riverwood, 324 F.3d at 1355
`(stating that Reading & Bates “held that the patentee’s discussion of his own
`patent in the specification section entitled ‘Summary of the Prior Art’ did
`not constitute an admission that the patent was prior art”). Thus, neither the
`Federal Circuit, as evidenced by its discussion in Riverwood, nor we read
`Reading & Bates as narrowly as the panel in Intri-Plex.
`Accordingly, we do not find that Patent Owner’s response to RFA
`No. 3 admits that the Product Advertisement describing SnowGuards #15
`and #115 constitutes prior art to the claims of the ’701 patent.
`
`17
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`Patent 6,526,701 B2
`
`
`Conclusion
`
`In light of our determination that the Product Advertisement
`describing SnowGuards #15 and #115 does not qualify as prior art to the
`’701 patent, Petitioner cannot rely upon the Product Advertisement to cancel
`the challenged claims. See 35 U.S.C. § 311(b) (“A petitioner in an inter
`partes review may request to cancel as unpatentable 1 or more claims of a
`patent only on a ground that could be raised under section 102 or 103 and
`only on the basis of prior art consisting of patents or printed publications.”)
`(emphasis added). Accordingly, Petitioner has not established a reasonable
`likelihood that it would prevail in showing the unpatentability of claims 36,
`38, 40, 42, and 43 of the ’701 patent based on the combinations of the
`Product Advertisement and (1) Taylor; (2) Funaki; (3) Hablützel;
`(4) Nichols, or (5) Ford and any one of Taylor, Funaki, Hablützel or Nichols.
`
` Obviousness Challenges Based on Alley7
`Petitioner raises several grounds challenging claims 36, 40, 42, and 43
`of the ’701 patent based on Alley in combination with one or more
`references. Pet. 21, 49–60.
`
`Alley
`
`Alley is directed to a snow guard for a metal roof. Ex. 1020, [54]. In
`particular, Alley teaches “a device capable of being attached to a metal roof,
`wherein the attachment thereto is done without tearing, puncturing or
`
`
`7 Despite Petitioner’s reference to claim 38 in the heading of Section X.B.,
`see Pet. 49, none of Petitioner’s challenges based on Alley includes an
`analysis or discussion of claim 38 (see id. 49–60; see also id. at 21 (listing
`challenges 6–10 based on Alley)). Accordingly, the reference to claim 38 in
`the heading appears to be a typographical error and we treat it as such.
`
`18
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`IPR2017-01681
`Patent 6,526,701 B2
`
`otherwise destroying the hermeticity of the metal roof.” Id. at 1:8–11.
`Alley’s Figure 22 is reproduced below:
`
`
`Alley’s Figure 22 is an orthogonal view of one of the devices disclosed for
`use in conjunction with a snow guard. Id. at 3:43–44, 4:17–18.
`Alley explains that “[b]lock 2202 is mountable on mounting
`bracket 2204, preferably comprising plate 2206 mounted substantially
`perpendicular to plate 2208.” Id. at 9:23–25. Alley teaches that plate 2206
`can be welded to plate 2208, but preferably is integral with plate 2208. Id.
`at 9:25–27. Alley further explains:
`[M]ounting bracket 2204 is securable to the roof via screws 2210
`and 2212 placed through holes 2214 and 2216, respectively,
`preferably through rubber pad R1 and into wooden subroof S1,
`and more preferably into a wooded rafter (not shown [in
`Figure 22]) supporting the subroof.
`. . . .
`Block 2002 is preferably securable to the mounting
`bracket via placing groove, or cut-out, 2218 over plate 2206, and
`aligning holes 2220 and 2222 in the block with holes 2224 and
`2226, respectively, in the mounting bracket.
`
`19
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`IPR2017-01681
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`
`
`. . . .
`Holes 2220, 2[2]22, and/or 2[2]24, 2226 can be threaded
`to receive screws therethrough, thereby securely mounting the
`block to the mounting bracket.
`Id. at 9:31–63.
`
`Analysis
`
`Petitioner divides claim 36 into four limitations, (a)–(d). Pet. 50–55.
`Petitioner identifies claim 36’s recitation of “a base member including a
`protrusion extending from a first surface of the base member, the base
`member including a connecting element,” as “limitation 36(b).” Id. at 50.
`Petitioner contends that Alley “describes a base member, a protrusion, and a
`connecting element: ‘mounting bracket 2204 [base member], preferably
`comprising plate 2206 [connecting element] mounted substantially
`perpendicular to plate 2208.’” Id. (quoting Ex. 1020, 9:23–25) (alteration in
`original). Petitioner points to gasket 2228 as teaching the claimed
`protrusion. Id.
`Petitioner argues that “plate 2206 with internally threaded holes reads
`on the ‘connecting element’ as it should be construed.” Id. at 51.
`Petitioner’s argument consists of the following:
`First, there is no doubt that the plate perfor
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