UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`FLEXITALLIC INVESTMENTS, INC.
`
`Petitioner
`
`v.
`
`ERIKS N.V.
`
`Patent Owner
`
`
`
`U.S. Patent No. 9,388,924
`
`Filing Date: August 13, 2013
`
`Issue Date: July 12, 2016
`
`Title: ALKY-ONE GASKET
`
`________________
`
`Inter Partes Review No. Unassigned
`
`
`
`PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 ET SEQ.
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,388,924
`
`TABLE OF CONTENTS
`INTRODUCTION ...................................................................................... - 1 -
`
`I.
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(B) ........................ - 1 -
`
`A.
`
`B.
`
`C.
`
`REAL PARTY IN INTEREST ........................................................ - 1 -
`
`RELATED MATTERS .................................................................... - 1 -
`
`PAYMENT OF FEES ...................................................................... - 2 -
`
`D. DESIGNATION OF LEAD COUNSEL ......................................... - 2 -
`
`E.
`
`F.
`
`SERVICE INFORMATION ............................................................ - 2 -
`
`POWER OF ATTORNEY ............................................................... - 3 -
`
`III. REQUIREMENTS FOR INTER PARTES REVIEW ................................. - 3 -
`
`A. GROUND FOR STANDING ........................................................... - 3 -
`
`B.
`
`IDENTIFICATION OF CHALLENGE ........................................... - 3 -
`
`1.
`
`2.
`
`3.
`
`Claims Challenged ................................................................. - 3 -
`
`Background of the Technology .............................................. - 3 -
`
`Prior Art ................................................................................. - 7 -
`
`C.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED ........... - 8 -
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Ground 1: Bond and the Knowledge in the Art ..................... - 8 -
`
`Overview of the Challenged Claims ...................................... - 8 -
`
`Bond ....................................................................................... - 9 -
`
`Knowledge of Person of Ordinary Skill in the Art .............. - 10 -
`
`Ultimate Question ................................................................ - 10 -
`
`IV. OVERVIEW OF THE '924 Patent ........................................................... - 10 -
`
`A.
`
`PRIORITY DATE OF THE '924 Patent ........................................ - 10 -
`
`
`
`i
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,388,924
`
`B.
`
`C.
`
`D.
`
`SUMMARY OF THE '924 Patent .................................................. - 11 -
`
`PERSON OF ORDINARY SKILL IN THE ART ......................... - 14 -
`
`CLAIM CONSTRUCTION ........................................................... - 14 -
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`“inner zone”/“inner, low stress liquid sealing zone” ........... - 15 -
`
`“intermediate zone”/“intermediate portion” ........................ - 17 -
`
`“outer sealing zone”/“outer, high stress, fire resistant
`sealing zone” ........................................................................ - 18 -
`
`“a minimum gasket stress level” .......................................... - 18 -
`
`“the gasket stress level” ....................................................... - 19 -
`
`V.
`
`LEGAL STANDARDS ............................................................................ - 20 -
`
`A. Obviousness .................................................................................... - 20 -
`
`VI. FULL STATEMENT OF THE REASONS FOR THE RELIEF
`REQUESTED ........................................................................................... - 22 -
`
`A. GROUND 1: CLAIMS 1 -5 ARE UNPATENTABLE AS
`OBVIOUS IN VIEW OF BOND AND THE KNOWLEDGE
`OF ONE OF ORDINARY SKILL IN THE ART .......................... - 22 -
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`Brief Summary of Bond ....................................................... - 22 -
`
`Brief Summary of Text and Drawings Specific to Bond II . - 25 -
`
`Claim 1 ................................................................................. - 27 -
`
`Claim 2 ................................................................................. - 36 -
`
`Claim 3 ................................................................................. - 39 -
`
`Claim 4 ................................................................................. - 40 -
`
`Claim 5 ................................................................................. - 46 -
`
`Claim Chart Showing Correspondence to the Prior Art ...... - 47 -
`
`VII. CONCLUSION ......................................................................................... - 61 -
`ii
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`Petition for Inter Partes Review of U.S. Patent No. 9,388,924
`
`Table of Authorities
`
`
`
`Cases
`Cuozzo Speed Tech., LLC v. Lee,
`136 S.Ct. 2131 (2016) ..................................................................................... - 14 -
`
`Graham v. John Deere Co. of Kansas City,
`383 U.S. 1 (1966) ............................................................................................ - 21 -
`
`In re Applied Materials, Inc.,
`692 F.3d 1289 (Fed. Cir. 2012) ....................................................................... - 30 -
`
`In re Kao,
`639 F.3d 1057 (Fed. Cir. 2011) ....................................................................... - 22 -
`
`Perfect Web Techs., Inc. v. InfoUSA, Inc.,
`587 F.3d 1328 (Fed. Cir. 2009) ....................................................................... - 21 -
`
`Santarus, Inc. v. Par Pharmaceutical, Inc.,
`694 F.3d 1344 (Fed. Cir. 2012) ....................................................................... - 22 -
`
`SIBIA Neurosciences, Inc.v. Cadus Pharmaceutical Corp.,
`225 F.3d 1349 (Fed. Cir. 2000) ....................................................................... - 21 -
`
`Statutes
`
`35 U.S.C. § 100(i) ............................................................................................... - 11 -
`
`35 U.S.C. § 102 ................................................................................................... - 11 -
`
`35 U.S.C. § 102(a)(1) ............................................................................................ - 7 -
`
`35 U.S.C. § 102(a)(2) ................................................................................... - 7 -, - 8 -
`
`35 U.S.C. § 103 ................................................................................................... - 11 -
`
`35 U.S.C. § 103(a) .............................................................................................. - 21 -
`
`35 U.S.C. § 311 ..................................................................................................... - 8 -
`
`35 U.S.C. § 312(a)(1) ............................................................................................ - 2 -
`
`
`
`iii
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,388,924
`
`Other Authorities
`
`37 C.F.R. § 42.10(b) ............................................................................................. - 3 -
`
`37 C.F.R. § 42.100(b) ......................................................................................... - 14 -
`
`37 C.F.R. § 42.104 ................................................................................................ - 3 -
`
`37 C.F.R. § 42.104(a) ............................................................................................ - 3 -
`
`37 C.F.R. § 42.104(b) ........................................................................................... - 3 -
`
`37 C.F.R. § 42.104(b)(4) ..................................................................................... - 14 -
`
`37 C.F.R. § 42.15 .................................................................................................. - 2 -
`
`37 C.F.R. § 42.24(a)(1)(i) ..................................................................................... - 1 -
`
`37 CFR § 42.6(a)(2)(ii) ......................................................................................... - 1 -
`
`37 CFR § 42.6(a)(2)(iii) ........................................................................................ - 1 -
`
`Rules
`
`Changes to Implement Inter Partes Review Proceedings, Post-Grant Review
`Proceedings, and Transitional Program for Covered Business Method Patents,
`77 Fed. Reg. 48699 (2012) .............................................................................. - 14 -
`
`
`
`iv
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`

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`Petition for Inter Partes Review of U.S. Patent No. 9,388,924
`
`EXHIBIT LIST
`
`1006
`1007
`
`Exhibit No. Description
`1001
`United States Patent No. 9,388,924
`1002
`USPTO assignment information for Exhibit 1001
`1003
`U.S. Published Application 2011/0045702 (Bond I)
`1004
`U.S. Patent No. 9,551,422 (Bond II)
`1005
`Joseph E. Shigley & Charles R. Mischke, Mechanical
`Engineering Design (5th ed. 1989)
`U.S. Published Application 2012/0335365
`ASME PCC-1-2010, Guidelines for Pressure Boundary Bolted
`Flange Joint Assembly
`ASTM E111-04, Standard Test Method for Young's Modulus,
`Tangent Modulus, and Chord Modulus
`Sigma Product Sheet, Flexitallic, 2009
`File History for Exhibit 1001
`File History for Exhibit 1006
`Expert Declaration of Dr. Itzhak Green
`
`1008
`
`1009
`1010
`1011
`1012
`
`
`
`
`
`v
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,388,924
`
`I.
`
`INTRODUCTION
`
`Through counsel, real party in interest Flexitallic Investments, Inc.
`
`(“Petitioner” or “Flexitallic”) hereby respectfully petitions for institution of inter
`
`partes review of U.S. Patent No. 9,388,924 (the “'924 Patent”), titled “ALKY-ONE
`
`GASKET,” Ex. 1001. The '924 Patent is assigned on its face to Advanced Sealing,
`
`LLC, but assignment information available from the United States Patent and
`
`Trademark Office indicates the '924 Patent currently is assigned to Eriks N.V.
`
`("Patent Owner"). Ex. 1002.
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(B)
`A. REAL PARTY IN INTEREST
`The following real parties-in-interest are identified: Flexitallic Investments,
`
`Inc., which is the Petitioner in this matter; The Flexitallic Group, Inc.; FGI
`
`Acquisition Corp.; and The Flexitallic Group, SAS. The Flexitallic Group, SAS
`
`owns 100% of FGI Acquisition Corp., which owns 100% of The Flexitallic Group,
`
`Inc., which owns 100% of Flexitallic Investments, Inc.
`
`B. RELATED MATTERS
`There are no related matters involving Petitioner. Pending application
`
`15/204,521, filed July 7, 2016, and published as 2016/0319971 claims priority to
`
`the '924 Patent. Rejection and cancellation of claims 1-5 of the '924 Patent will
`
`prevent Patent Owner from claiming technologies in the public domain as its own
`
`and prevent it from asserting these invalid claims to exclude others in commerce.
`
`- 1 -
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,388,924
`
`PAYMENT OF FEES
`
`C.
`A payment of $23,000 may be charged against Deposit Account No. 20-
`
`1430. Thus, this Petition meets the fee requirements under 37 C.F.R. § 42.15 and
`
`35 U.S.C. § 312(a)(1).
`
`D. DESIGNATION OF LEAD COUNSEL
`Lead Counsel for Petitioner is David C. Holloway (Reg. No. 58,011), of
`
`Kilpatrick Townsend & Stockton LLP. Jennifer L. Blackburn (Reg. No. 53,994),
`
`also of Kilpatrick Townsend & Stockton LLP is Backup Counsel for Petitioner.
`
`SERVICE INFORMATION
`
`E.
`As identified in the attached Certificate of Service, a copy of this Petition, in
`
`its entirety, is being served to the address of the attorney or agent of record in the
`
`Patent Office for the '924 Patent. Counsel for Petitioner may be contacted via the
`
`methods below:
`
`David C. Holloway
`Registration No. 58,011
`Kilpatrick Townsend & Stockton LLP
`1100 Peachtree Street, Suite 2800
`Atlanta, GA 30309-4528
`(404) 815-6500 (telephone)
`(404) 541-3403 (facsimile)
`
`Jennifer L. Blackburn
`Registration No. 53,994
`Kilpatrick Townsend & Stockton LLP
`1100 Peachtree Street, Suite 2800
`Atlanta, GA 30309-4528
`(404) 815-6500 (telephone)
`(404) 541-3447 (facsimile)
`
`The following email address may be used for service and all
`
`communications to both Lead and Backup Counsel:
`
`Flexitallic-IPR@kilpatricktownsend.com
`
`- 2 -
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,388,924
`
`POWER OF ATTORNEY
`
`F.
`Pursuant to 37 C.F.R. § 42.10(b), a Power of Attorney executed by
`
`Petitioner appointing the above designated counsel is concurrently filed.
`
`III. REQUIREMENTS FOR INTER PARTES REVIEW
`This Petition meets all requirements under 37 C.F.R. § 42.104 for inter
`
`partes review of claims 1-5 of the '924 Patent.
`
`A. GROUND FOR STANDING
`Pursuant to 37 C.F.R. § 42.104(a), Petitioner certifies that the '924 Patent is
`
`available for inter partes review, and further certifies that Petitioner is not barred
`
`or estopped from requesting an inter partes review challenging the '924 Patent on
`
`the grounds identified herein. The '924 Patent has not been subject to a previous
`
`estoppel-based proceeding of the AIA, and Petitioner has never been served with a
`
`complaint for infringement based on the '924 Patent.
`
`IDENTIFICATION OF CHALLENGE
`
`B.
`Pursuant to 37 C.F.R. § 42.104(b), this Petition requests cancellation of
`
`claims 1-5 of the '924 Patent.
`
`Claims Challenged
`
`1.
`Claims 1-5 of the '924 Patent are challenged in this Petition.
`
`Background of the Technology
`
`2.
`At the time the application for the '924 Patent and its parent application were
`
`filed, gaskets for sealing opposing flange surfaces of pipes were well-known and
`
`- 3 -
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,388,924
`
`were used in a variety of applications. Ex. 1012, ¶18. At that time, a person of
`
`ordinary skill in the art designing gaskets for a particular application would have
`
`considered parameters such as the specific environment where the gasket would be
`
`used, the desired stress load on the gasket materials, and any industry standards or
`
`codes governing performance characteristics. Id. Generally, after a gasket designer
`
`selected a type of gasket for a particular sealing application, the designer would
`
`select materials and dimensions for the structural elements of the gasket. Id.
`
`a. High pressure sealing applications
`One type of sealing element frequently used in gaskets for high pressure
`
`sealing applications has a grooved core, known in the industry as a Kammprofile
`
`core. Id. ¶19. Kammprofile cores are solid, usually metal, with concentric
`
`serrations on the flange-facing surfaces and around a central aperture. Id.
`
`Kammprofile cores are combined with softer, compressible sealing materials that
`
`overlay the serrations and are forced into the gaps between serrations during
`
`sealing. Id. The serrations induce stress concentrations and minimize lateral
`
`movement of the sealing material while the solid metal core provides rigidity and
`
`blowout resistance. Id.
`
`b.
`Pipes carrying corrosive fluids are susceptible to damage from those fluids
`
`Corrosive fluid sealing applications
`
`in the form of chemical corrosion of the flange joint mating surfaces. Id. ¶20. Such
`
`- 4 -
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,388,924
`
`corrosion forms pitting, crevices, and other imperfections on the flange surfaces
`
`which weaken the seal and provide pathways for fluids to escape. Id.
`
`At the time of the purported invention, it was known in the art that when
`
`flange faces are pitted or corroded, even high-pressure Kammprofile gaskets
`
`cannot always provide adequate sealing. Id. ¶21. Moreover, it was known that the
`
`metal core of a Kammprofile gasket should be protected from corrosive fluids, for
`
`example by using a chemically resistant material to block the corrosive fluids from
`
`contacting the metal core. Id. Thus, it was known to include multiple seals in
`
`gaskets intended for use in corrosive environments. Id. For example, in one gasket
`
`known at that time a structure providing a primary seal for corrosive fluids was
`
`isolated from those fluids by additional chemically inert seals that filled flange
`
`imperfections to prevent fluid escape. Id. It was also known that different seals
`
`within the same gasket could have different sealing properties, such as different
`
`load bearing stress characteristics, sealing characteristics, and compressibility,
`
`which could be optimized for specific applications. Id.
`
`c.
`Several well-known principles of mechanical engineering apply to gasket
`
`General Mechanical Design
`
`design. Id. ¶22. As a general rule, when a gasket is used for sealing pipes
`
`conveying a fluid, the stress on the gasket in use should be equal to or greater than
`
`the pressure of the fluid flowing through the pipes. Id.
`
`- 5 -
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,388,924
`
`The relationship among stress, strain (i.e., relative deformation), and elastic
`
`modulus (an inherent material property) was well-known to a person skilled in the
`
`art at the time of the purported invention given the technology at issue. Id. ¶23. For
`
`example, if any two of stress, strain, and elastic modulus are known, the third can
`
`be easily determined. Id. Because elastic modulus is an inherent material property,
`
`selection of a material selects the elastic modulus. Id. For a desired stress load and
`
`a known material (i.e. a known elastic modulus), the relationship among stress,
`
`strain, and elastic modulus yields the relative deformation required to produce that
`
`stress. Id. From relative deformation needed to achieve the desired stress load,
`
`appropriate dimensions of the gasket material can be easily determined and
`
`optimized. Id.
`
`The relationship among the force applied to a material, the area over which
`
`the force is applied, and the resulting stress within the material was also well-
`
`known to a person skilled in the art. Id. ¶24. Specifically, the force required to
`
`compress a material decreases as the area over which the force is applied
`
`decreases. Id.
`
`A person skilled in the art designing a gasket at the time the '924 Patent or
`
`its parent application was filed would have selected a gasket structure, identified
`
`materials with properties appropriate for the application (e.g., chemical inertness,
`
`thermal stability, elastic modulus), sized those materials to provide the desired
`
`- 6 -
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,388,924
`
`internal stress and strains in use, and consulted and abided by codes and standards
`
`such as ASME. Id. ¶25.
`
`Prior Art
`
`3.
`The prior art, in addition to what would have been known a person of
`
`ordinary skill in the art at the time of invention, relied on are:
`
`• United States Patent Application Publication No. 2011/0156352
`
`(“Bond I”) and
`
`• United States Patent No. 9,551,422 (“Bond II”).
`
`Bond I is the published application of Bond II, and thus Bond I and Bond II
`
`disclose the same subject matter. Petitioner identifies both Bond I and Bond II
`
`because Bond I was amended slightly during prosecution (without adding new
`
`matter) and certain portions of the text and drawings unique to either Bond I or
`
`Bond II are cited herein. Because the subject matter is the same, Bond I and Bond
`
`II are treated as one reference, referred to collectively as "Bond," with citations to
`
`both references unless the cited text or drawing is unique to one reference.
`
`a.
`
`Bond I as Prior Art Under 35 U.S.C. § 102(a)(1) and §
`102(a)(2).
`
`Bond I was filed in the United States on December 22, 2010 and published
`
`on June 30, 2011. See Ex. 1003. Because the effective filing date of the '924 Patent
`
`is August 13, 2013 (as described further below), Bond I is prior art to the '924
`
`Patent pursuant to 35 U.S.C. § 102(a)(1), and no exceptions apply. Even if the '924
`
`- 7 -
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,388,924
`
`Patent is entitled to an effective filing date as of its earliest priority date, March 18,
`
`2011, Bond I is prior art to the '924 Patent pursuant to 35 U.S.C. § 102(a)(2), and
`
`no exceptions apply.
`
`b.
`Bond II was filed in the United States on December 22, 2010 and issued on
`
`Bond II as Prior Art Under 35 U.S.C. § 102(a)(2).
`
`January 24, 2017. See Ex. 1004. Bond II is prior art to the '924 Patent pursuant to
`
`35 U.S.C. § 102(a)(2), and no exceptions apply.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`
`C.
`Pursuant to 35 U.S.C. § 311, this Petition requests cancellation of claims 1-5
`
`of the '924 Patent in accordance with the following ground.
`
`1. Ground 1: Bond and the Knowledge in the Art
`Claims 1-5 of the '924 Patent are not patentable as obvious in view Bond and
`
`the knowledge of one of ordinary skill in the art.
`
`2. Overview of the Challenged Claims
`Claims 1-5 contain a seemingly complicated litany of method steps that
`
`“form” and “select” components to provide certain gasket functionalities with no
`
`detail on how to form or select those components. For example, claim 1 recites
`
`“forming a deformable pillow about the flange . . . [and] selecting the pillow
`
`material and the pillow thickness to provide a desired minimum inner zone stress
`
`level . . . .” But this is merely a verbose description of the routine process of
`
`- 8 -
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,388,924
`
`forming any gasket and the intrinsic mechanical relationship among the materials
`
`used to make the gasket and the resulting gasket properties.
`
`With one exception, the claims of the '924 Patent provide no quantities,
`
`specific materials, or performance parameters that the formed gasket would need to
`
`possess. Even claim 5, which recites “that the minimum intermediate zone
`
`minimum stress level is no more than 21% of the gasket stress level,” provides no
`
`detail on the “method” other than the relationship of the claimed stress levels.
`
`The claimed methods thus amount to nothing more than constructing a
`
`gasket having "desired" but unspecified properties suitable for common gasket
`
`applications by choosing unspecified and unclaimed materials and geometries.
`
`Bond
`
`3.
`As detailed below, Bond discloses forming gaskets having the same
`
`structure and made by selecting materials and geometries that achieve the
`
`inherently related characteristics recited in the challenged claims. Specifically, the
`
`intrinsic mechanical properties of the materials and geometries selected to make
`
`the gaskets described in Bond detail a method of forming a gasket having the same
`
`structure and intrinsic mechanical properties (such as sealing zones, stress levels,
`
`and sealing ability) as the gaskets formed by the methods at issue here.
`
`- 9 -
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,388,924
`
`4. Knowledge of Person of Ordinary Skill in the Art
`Persons of ordinary skill in the design and manufacture of gaskets would
`
`clearly understand the basic relationship among intrinsic mechanical properties,
`
`such as elastic moduli, stress, and strain. The person of ordinary skill would also
`
`readily recognize the role these intrinsic properties play in gasket design, including
`
`how changes in type of material and geometry impacts those properties and
`
`impacts a gasket’s design.
`
`Ultimate Question
`
`5.
`Whether claims 1-5 are unpatentable given the prior art at issue in Ground 1
`
`discloses a gasket having the structure recited in claims 1-5 and all gaskets are
`
`formed based on selection of materials and geometries in light of the relationship
`
`among the inherent mechanical properties of the materials and geometries chosen.
`
`IV. OVERVIEW OF THE '924 Patent
`A.
`PRIORITY DATE OF THE '924 Patent
`The '924 Patent was filed on August 13, 2013 and claims priority as a
`
`continuation-in-part to a now abandoned U.S. application filed on March 18, 2011
`
`and published as 2012/0235365 (the '365 application). Ex. 1001, Ex. 1006. The
`
`'924 Patent includes claims which find support in the '924 Patent, but which do not
`
`find support in the earlier '365 application. Ex. 1012, ¶29. The claims that lack
`
`support in the earlier '365 application have an effective filing date of August 13,
`
`2013, and thus the entire patent has an effective filing date of August 13, 2013. See
`
`- 10 -
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,388,924
`
`35 U.S.C. § 100(i). Because the effective filing date is after March 16, 2013, AIA
`
`35 U.S.C. § 102 and 103 apply to the '924 Patent.
`
`SUMMARY OF THE '924 Patent
`
`B.
`The '924 Patent describes gaskets for sealing flange surfaces of a pipe and
`
`methods of forming the gaskets.
`
`The specification of the '924 Patent
`
`describes a gasket structure that includes
`
`three concentric, ring-shaped portions, or
`
`"zones." Ex. 1012, ¶30.
`
`Figures 1 and 6 of the
`
`'924 Patent illustrate
`
`those zones. Id.
`
`The inner zone A
`
`and intermediate zone B
`
`have the same thickness, which is thicker than the outer zone C. Id. ¶31. Thus, in
`
`use, the compression of the inner and intermediate zones is greater than the
`
`compression of the outer zone. Outer zone C consists of a solid, serrated core 17
`
`with a flexible covering layer or facing 21. Id. Intermediate zone B and inner zone
`
`A both include a "deformable barrier pillow 15 that is a relatively soft,
`
`- 11 -
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,388,924
`
`compressible material.” Id. The pillow 15 is held in place by a flange 19, which
`
`extends from the serrated core 17 into the pillow 15. Id.
`
`The '924 Patent was filed with 20 claims directed to methods of forming and
`
`designing sealing gaskets. In response to a restriction requirement, the applicant
`
`elected to prosecute the twelve (12) claims directed to methods of forming gaskets
`
`and to withdraw the eight (8) claims directed to designing gaskets.
`
`In the first office action, two claims were allowed because the examiner
`
`found
`
`there is not [sic] teaching in the prior art of record that would,
`reasonably and absent impermissible hindsight, motivate one having
`ordinary skill in the art to modify the teachings of the prior art to
`incorporate "selecting a deformable pillow such that upon
`compression of the gasket to a thickness no less than the core
`thickness.
`
`Ex. 1010, p. 79-80 (Office Action issued Nov. 18, 2015, p. 6-7; Ex. 1002).
`
`Dependent claims 8, 9, and 10 were found to be allowable if re-written in
`
`independent form. Id. These claims all recited compressing the deformable pillow
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`material to a thickness no less than the core thickness. Id. at p. 65-66. In its
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`response, the applicant amended rejected claim 1 to include allowable claim 8,
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`rewrote claim 9 as new independent claim 21, and amended claim 10 to depend
`
`from claim 9. Id. at p. 92-98. Thus, all claims included a limitation directed to
`
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,388,924
`
`compressing the deformable pillow material to a thickness no less than the core
`
`thickness.
`
`
`
`The next office action allowed claims 1 and 21, and dependent claim 10,
`
`stating as reasons for allowance that
`
`There is not [sic] teaching in the prior art of record that would,
`reasonably and absent impermissible hindsight, motivate one having
`ordinary skill in the art to modify the teachings of the prior art to
`incorporate "selecting the pillow material and the pillow thickness to
`provide a desired minimum inner zone stress level when the
`deformable pillow material in the inner zone is compressed to a
`thickness to no less than the core thickness" in combination with the
`rest of claim 1.
`
`and
`
`There is not [sic] teaching in the prior art of record that would,
`reasonably and absent impermissible hindsight, motivate one having
`ordinary skill in the art to modify the teachings of the prior art to
`incorporate "the step of selecting the flange thickness to provide a
`desired minimum intermediate zone stress level when the intermediate
`zone is compressed to a thickness to no less than the core thickness"
`in combination with the rest of claim 21.
`
`Id. at 116-123. Thus, patentability of all issued claims of the '924 Patent was based
`
`on selecting materials and dimensions to achieve a desired result when the
`
`deformable pillow is compressed to a thickness no less than the core thickness.
`
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,388,924
`
`PERSON OF ORDINARY SKILL IN THE ART
`
`C.
`One of ordinary skill in the art at time of the actual filing date of the '924
`
`Patent and at the time of the filing of the priority application would have been
`
`someone with at a four (4)-year degree or equivalent in materials science or a
`
`related field, and at least two (2) years of industrial, academic, or practical
`
`exposure to gasket design. Ex. 1012 at ¶61. In lieu of a four (4)-year degree, the
`
`individual may have additional years of industry or practical experience, including,
`
`for example, 6 years of experience in gasket design. Id. at ¶62.
`
`D. CLAIM CONSTRUCTION
`Pursuant to 37 C.F.R. § 42.100(b), the claim terms of an unexpired patent
`
`subject to inter partes review shall receive the “broadest reasonable construction in
`
`light of the specification of the patent in which [they] appear.” See Cuozzo Speed
`
`Tech., LLC v. Lee, 136 S.Ct. 2131, 2142-43 (2016). In compliance with 37 C.F.R.
`
`§ 42.104(b)(4), Petitioner states that, in general, the “claims are presumed to take
`
`their ordinary and customary meaning.” See Changes to Implement Inter Partes
`
`Review Proceedings, Post-Grant Review Proceedings, and Transitional Program
`
`for Covered Business Method Patents, 77 Fed. Reg. 48699 (2012), Response to
`
`Comment 35.
`
`The constructions proposed below, and applied by Petitioner here, are
`
`consistent with the broadest reasonable interpretation in view of the specification.
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`Petition for Inter Partes Review of U.S. Patent No. 9,388,924
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`Because the standards of claim construction used by the Board and district courts
`
`differ, Petitioner reserves the right to present other interpretations if there is ever a
`
`litigation. As such, the constructions herein should be viewed only as interpreting
`
`the claims under the broadest reasonable interpretation standard.
`
`As alluded to above, the claims at issue include convoluted descriptions of
`
`the straightforward intrinsic mechanical relationships of materials and geometries
`
`that were well-known to a person of ordinary skill in the art. There are terms,
`
`however, within the claims that only make sense when viewed in the context of the
`
`gasket formation described in the specification. For example, the claims at issue
`
`often refer to the stresses within various regions or “zones" of the gasket which are
`
`only understandable if the geometries are defined. The following is a summary of
`
`the interpretation of those terms:
`
`1.
`
` “inner zone”/“inner, low stress liquid sealing zone”1
`
`
`
`1 Claim 2 uses "inner portion" and defines that term to be the deformable
`
`material extending radially inward from the flange to a gasket inner surface. Claim
`
`4 uses the term "the inner sealing zone," which seems to be a reference back to the
`
`"inner, low stress liquid sealing zone" previously recited in claim 4. Thus, "inner
`
`zone" in claims 1 and 4, "inner, low stress liquid sealing zone" in claims 1 and 4,
`
`"inner portion" in claim 2, and "inner sealing zone" in claim 4 all refer to the
`
`- 15 -
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,388,924
`
`Claims 1 and 4 both require some form of “inner zone.” Claim 1, for
`
`example, states “selecting the pillow material and the pillow thickness to provide a
`
`desired minimum inner zone stress level when the deformable pillow material in
`
`the inner zone is
`
`compressed . . . .”
`
`(emphasis added).
`
`As such, it is
`
`relevant where the
`
`“inner zone” is for
`
`the purpose of
`
`understanding the scope of the claim. Claims 1 and 4 both recite "an inner, low
`
`stress liquid sealing zone between the flange inner surface and the gasket inner
`
`surface." The description of the inner, low stress liquid sealing zone is consistent
`
`with "inner zone A" identified in Fig. 6 of the '924 Patent, reproduced here.
`
`Accordingly, a person of ordinary skill in the art at the time of the invention
`
`would understand the terms “inner zone,” “inner, low stress liquid sealing zone,”
`
`and the like to mean “the section of the deformable pillow between the flange inner
`
`
`
`section of the deformable mat