`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________________________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`ARTESIAN HOME PRODUCTS, INC. and ADR, INC.
`Petitioners
`
`v.
`
`GUTTERGLOVE, INC.,
`Patent Owner.
`
`U.S. Patent 9,021,747
`Filing Date: September 3, 2010
`Issue Date: May 5, 2015
`Title: CORRUGATED MESH GUTTER LEAF PRECLUSION SYSTEM
`
`________________________________________________________
`
`Inter Partes Review No.: IPR2018-00015
`________________________________________________________
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 9,021,747
`UNDER 35 U.S.C. §§ 42.1-100, ET SEQ.
`
`(Claims 1–6 and 16–20)
`
`
`
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`1
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`I.
`II.
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`
`
`TABLE OF CONTENTS
`INTRODUCTION .......................................................................................... 4
`COMPLIANCE WITH FORMAL REQUIREMENTS ................................. 4
`A. Mandatory Notices Under 37 C.F.R. §§ 42.8(b)(1)-(4) ....................... 4
`B.
`Proof of Service on the Patent Owner .................................................. 5
`C.
`Power of Attorney ................................................................................ 6
`D. Standing ................................................................................................ 6
`E.
`Fees ...................................................................................................... 6
`III. SUMMARY OF CHALLENGE .................................................................... 7
`IV. OVERVIEW OF THE ’747 PATENT ........................................................... 8
`A.
`Subject Matter and Claims ................................................................... 8
`B.
`Prosecution History ............................................................................ 11
`V. PERSON OF ORDINARY SKILL IN THE ART ....................................... 12
`VI. CLAIM CONSTRUCTION ......................................................................... 13
`VII. SUMMARY OF THE PRIOR ART ............................................................. 16
`
`A. Lenney ’912 ....................................................................................... 16
`
`B. Leone .................................................................................................. 18
`
`C. Van Horn ............................................................................................ 19
`
`D. Pfeifer ................................................................................................. 20
`
`E. Higginbotham ..................................................................................... 22
`
`F.
`Sichel .................................................................................................. 24
`
`G.
`Schmid ................................................................................................ 25
`
`H.
`Pressure Head ..................................................................................... 26
`VIII. APPLICATION OF PRIOR ART TO THE CHALLENGED CLAIMS ..... 27
`
`Ground 1 ....................................................................................................... 27
`
`Ground 2 ....................................................................................................... 46
`
`Ground 3 ....................................................................................................... 47
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`Ground 4 ....................................................................................................... 60
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`Ground 5 ....................................................................................................... 61
`IX. CONCLUSION ............................................................................................ 70
`X.
`CERTIFICATE OF WORD COUNT .......................................................... 70
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`2
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`
`Exhibit
`No.
`
`EXHIBIT LIST
`
`Description
`
`1001 United States Patent No. 9,021,747 to Lenney et al. (hereinafter “’747
`Patent”)
`1002 Declaration of expert Matthew Isaac Stein, P.E. (hereinafter “Stein
`Decl.”)
`1003
`Part of File History of the ’747 Patent
`1004 United States Patent No. 7,310,912 to Lenney et al. (hereinafter “Lenney
`‘912”)
`1005 United States Patent Application Publication No. 2007/0234647 to
`Higginbotham et al. (hereinafter “Higginbotham”)
`1006 United States Patent No. 546,042 to Van Horn (hereinafter “Van Horn”)
`1007 United States Patent No. 5,257,482 to Sichel (hereinafter “Sichel”)
`1008 United States Patent No. 6,032,806 to Leone et al. (hereinafter “Leone”)
`1009 United States Patent No. 2,689,017 to Schmid (hereinafter “Schmid”)
`1010 United States Patent No. 4,959,932 to Pfeifer (hereinafter “Pfeifer”)
`1011
`Plaintiff And Counterdefendant Gutterglove, Inc.’s Disclosure Of
`Asserted Claims And Infringement Contentions; Case No. 2:16-cv-
`02408-WHO, E.D. Cal. (hereinafter “Infringement Contentions”)
`1012 United States Patent No. 8,479,454 to Lenney et al. (hereinafter “’454
`Patent”)
`Claim Construction Order in Gutterglove, Inc. v. American Die et al.;
`Case No. 2:16-cv-02408-WHO, E.D. Cal.
`File History of United States Patent Application No. 15/096,126.
`The American Heritage Dictionary of the English Language, 1976,
`Houghton Mifflin, Boston
`
`1014
`1015
`
`1013
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`3
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`I.
`
`INTRODUCTION
`
`Petitioners Artesian Home Products, Inc. and ADR, Inc. (“Artesian and
`ADR” or “Petitioners”) hereby petition the Patent Trial and Appeal Board to
`institute an inter partes review (“IPR”) of U.S. Patent No. 9,021,747 and to cancel
`claims 1–6 and 16–20 as unpatentable.
`
`
`II. COMPLIANCE WITH FORMAL REQUIREMENTS
`A. Mandatory Notices Under 37 C.F.R. §§ 42.8(b)(1)-(4)
`1.
`Real Party-In-Interest
`
`Artesian Home Products, Inc. and ADR, Inc. are the real parties-in-interest.
`
`2.
`
`Related Matters
`
`Gutterglove, Inc. (“Gutterglove”), the patent owner, has asserted the ’747
`Patent against Petitioners in an action, Gutterglove, Inc. v. Valor Gutter Guard et
`al., Case No. 2:16-cv-02408 WHO, pending in the United States District Court, for
`the Eastern District of California (the “Action”). Gutterglove has also asserted
`U.S. Patent No. 8,479,454 (“’454 Patent”) in the same action: Case No. 2:16-cv-
`02408 WHO.
`
`Petitioners will file two petitions for inter partes review of the ’454 patent,
`IPR2018-00030 and IPR2018-00031.
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`3.
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`Lead and Backup Counsel
`
`Lead Counsel
`Michael Thomas
`Reg. No. 40840
`Downey Brand LLP
`621 Capitol Mall, 18th Floor,
`Sacramento, CA 95814
`mthomas@downeybrand.com,
`(916) 441-1000 (phone)
`(916) 441-2100 (fax)
`
`
`
`
`Backup Counsel
`John Costello
`Reg. No. 36110
`Costello Law Corporation
`2267 Lava Ridge Court, Suite 210,
`Roseville, CA 95661
`jcostello@costellolawcorp.com
`(916) 441-2234 (phone)
`(916) 441-4254 (fax)
`
`Thomas A. Sexton
`Reg. No. 57070
`Downey Brand LLP
`800 W. California Avenue, Suite 110
`Sunnyvale, CA 94086
`tsexton@downeybrand.com
`(408) 701-6132 (phone)
`
`Fredrick S. Tsang
`Reg. No. 68680
`Downey Brand LLP
`800 W. California Avenue, Suite 110
`Sunnyvale, CA 94086
`ftsang@downeybrand.com
`(408) 701-6180 (phone)
`
`
`B.
`
`Proof of Service on the Patent Owner
`
`As identified in the Certificate of Service to be filed, a copy of this Petition
`in its entirety is being served to the Patent Owner’s attorney of record at the
`address listed in the USPTO’s records by overnight courier pursuant to 37 C.F.R.
`§ 42.6.
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`5
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`C.
`
`Power of Attorney
`
`Powers of attorney are being filed with the designation of counsel in
`accordance with 37 C.F.R. § 41.10(b).
`
`D.
`
`Standing
`
`In accordance with 37 C.F.R. § 42.104(a), Petitioners certify that the ’747
`patent is available for IPR and that Petitioners are not barred or estopped from
`requesting an IPR challenging the patent claims on the grounds identified in this
`Petition.
`
`E.
`
`Fees
`
`The undersigned authorizes the Director to charge the fee specified by 37
`C.F.R. ¶ 42.15(a) and any additional fees that might be due in connection with this
`Petition to Deposit Account No. 041583.
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`III. SUMMARY OF CHALLENGE
`
`Petitioners request cancellation of claims 1–6 and 16–20 of United States
`Patent No. 9,021,747 to Lenney et al. (Ex. 1001) in view of the following grounds:
`
`Ground 1: Claims 1–6 and 16–20 are rendered obvious under 35 U.S.C. § 103
`over United States Patent No. 7,310,912 to Lenney et al. (Ex. 1004, “Lenney
`’912”) in view of United States Patent No. 6,032,806 to Leone et al. (Ex. 1008,
`“Leone”), and United States Patent No. 546,042 to Van Horn (Ex. 1006, “Van
`Horn”).
`
`Ground 2: Claim 18 is rendered obvious under 35 U.S.C. § 103 over Lenney ‘912
`in view of Leone and United States Patent No. 5, 257,482 to Sichel (Ex. 1007
`“Sichel”).
`
`Ground 3: Claims 1–3 and 16–18 are rendered obvious under 35 U.S.C. § 103
`over Van Horn in view of Leone, United States Patent Application Publication No.
`2007/0234647 to Higginbotham et al. (Ex. 1005, “Higginbotham”), and Lenney
`’912.
`
`Ground 4: Claim 18 is rendered obvious under 35 U.S.C. § 103 over Van Horn in
`view of Leone and United States Patent No. 5, 257,482 to Sichel.
`
`Ground 5: Claims 4–6 and 19–20 are rendered obvious under 35 U.S.C. § 103
`over Van Horn in view of Leone, Higginbotham, Lenney ’912, and United States
`Patent No. 4,959,932 to Pfeifer (Ex. 1010, “Pfeifer”).
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`IV. OVERVIEW OF THE ’747 PATENT
`A.
`Subject Matter and Claims
`The ’747 Patent is directed to a gutter screen that rests above a rain gutter
`and has a purpose of keeping leaves out of the gutter. Three characteristics sought
`in the ’747 Patent are strength, flow capacity, and debris preclusion; these are
`addressed using a corrugated fine mesh screen with the corrugations oriented in a
`downhill direction. These claim features were well known before 2009.
`Strength
`Strength is a characteristic sought by the inventors of the ’747 Patent.
`Strength is provided to the filter member by providing a
`corrugated form …. Thus, these corrugations greatly resist
`flexing along the gutter where the mesh would otherwise be
`most susceptible to bending.
`
`’747 Patent col. 2:11–20. Van Horn taught that rain gutter shield corrugations add
`strength to the shield. Van Horn col. 2:73–74 (“The corrugations strengthen the
`shield”). The corrugations of Van Horn form watercourses in a downhill direction.
`Van Horn col. 2:66–70 (“I corrugate … as clearly shown in Figs. 2 and 3 to form
`watercourses b2”). Van Horn’s FIGS. 1 and 2 show that the watercourses b2 are in
`a downhill direction, the same as the ’747 Patent.
`Flow Rate
`A heavy downpour of rain was of particular concern. See ’747 Patent col.
`7:40–43 (“[I]t is important that the gutter G can effectively perform when such
`heavy downpours occur so that the gutters G can perform to their full design
`capacity.”). Leone impressed alternating ridges and channels onto a screen to
`address a flow rate problem. Leone col. 6:8–10 (“The ridges increase the surface
`area of the screen without increasing the overall dimensions of the screen, thus
`improving flow capacity.” (emphasis added)).
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`Debris Preclusion with Fine Mesh Screen
`The inventors of the ’747 Patent used a fine mesh screen and explained that
`“hole size between adjacent wires/threads forming the corrugated mesh 20 can be
`selected according to various different design considerations including the debris
`present in the environment where the system is to be installed.” ’747 Patent col.
`4:64–5:1. The ’747 Patent states that “corrugated mesh 20 is preferably formed as
`a woven screen of stainless steel wire….” ’747 Patent col. 4:41–42 (emphasis
`added). Yet, the ’747 Patent incorporates by reference Lenney ’912 (’747 Patent
`col. 1:38–39), which was published more than one year before the earliest filing
`date of the ’747 Patent. Lenney ’912 describes a “screen 20 is formed of stainless
`steel woven wire [so that] leaf stems are precluded from sticking in the
`fenestrations[.]” Lenney ’912 col. 4:10–16 (emphasis added).
`Thus, Lenney ’912, Leone, and Van Horn addressed the problems of
`strength, flow rate, and debris preclusion later faced by the inventors of the ’747
`Patent.
`A figure from the ’747 Patent is now reviewed to provide context for the
`claim terms and claim functions.
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`’747 Patent FIGS. 1 and 7 (annotated by Petitioners).
`In the embodiment of FIG. 1, a corrugated mesh 20 is coupled to a gutter G
`by a lower strip 40 and the fine mesh material is partially under roof shingles. The
`mesh 20 has an upper edge 26, a lower edge 28, and crests 22 and valleys 24.
`Petitioners have annotated this figure particularly showing that rain water runs
`downhill and that the downhill direction is perpendicular to the long axis of the
`gutter. The “corrugations extend perpendicular to a long axis of the gutter and
`parallel with a direction that water is migrating off of the roof[.]” ’747 Patent col.
`2:16–18.
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`Prosecution History
`
`B.
`United States Patent Application No. 12/807,394 (hereinafter “AN
`12/807,394”), which matured into the ’747 Patent, was filed on September 3, 2010
`claiming benefit of United States Provisional Patent Application No. 61/275,943
`filed on September 4, 2009 and also claiming benefit of United States Provisional
`Patent Application No. 61/277,441 filed on September 23, 2009.
`The Patent Office issued a non-final rejection on October 17, 2012. Ex.
`1003 at p. 140. Patent Owner filed amended claims with arguments on April 7,
`2013. Ex. 1003 at p. 120. The Patent Office issued a final rejection on May 20,
`2013. Ex. 1003 at p. 104. An interview was held on November 7, 2013. Ex. 1003
`at p. 101. A non-final rejection was issued on November 20, 2013. Ex. 1003 at p.
`84. Patent Owner filed amended claims and argument on May 19, 2014. Ex. 1003
`at p. 67. The Patent Office issued a non-final rejection on July 11, 2014. Ex. 1003
`at p. 57. An interview was held on December 9, 2014. Ex. 1003 at p. 38. The
`Patent Owner filed claim amendments and argument on December 10, 2014. Ex.
`1003 at p. 40. The Patent Owner filed an information disclosure statement listing
`Van Horn on December 22, 2014. Ex. 1003 at p. 29. The Patent Office issued a
`notice of allowance on January 6, 2015. Ex. 1003 at p. 10.
`In subsequent examination of United States Patent Application No.
`15/096,126 (a continuation application of AN 12/807,394), the Patent Office
`rejected a claim feature “said sheet of fine mesh material being corrugated with
`ridges extending at least part of the way from said upper edge to said lower edge”
`in an anticipation rejection over Sichel. See Ex. 1014 at p. 132. Patent Owner
`amended the claims in an attempt to overcome the rejection. See Ex. 1014 at pp.
`36–42.
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`V.
`
`PERSON OF ORDINARY SKILL IN THE ART
`A person of ordinary skill in the art (“POSITA”) would have a four-year
`degree in mechanical engineering or equivalent experience. Ex. 1002, Declaration
`of Matthew Isaac Stein (hereinafter “Stein Decl.”) ¶ 0034. In addition, the prior art
`gives an indication of the ordinary skill in the art.
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`VI. CLAIM CONSTRUCTION
`In an inter partes review, the Board construes claim terms according to their
`broadest reasonable construction (“BRI”) in light of the specification. 37 C.F.R. §
`42.100(b). Under the BRI standard, claim terms are given their ordinary and
`accustomed meaning as would be understood by one of ordinary skill in the art in
`the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
`1257 (Fed. Cir. 2007). Petitioners provide the following specific constructions
`where BRI may not be entirely clear.1
`adjacent
`The term “adjacent” has the meanings “close to, next to; lying near;
`adjoining.” Ex. 1015, The American Heritage Dictionary of the English Language,
`1976, Houghton Mifflin, Boston (hereinafter “Dictionary”). The ’747 Patent uses
`the term “adjacent” with a number of shades of meaning. Some of Patent Owner’s
`uses of the term “adjacent” refer to items which extend or exist at some distance
`from any boundary, e.g., “hole size between adjacent wires,” col. 4:64–65,
`“amplitude diminished or eliminated adjacent the upper edge,” col. 5:27–29,
`“weave compressed adjacent the upper edge,” col. 5:36–39, “portions of the
`corrugated mesh 20 adjacent the troughs,” col. 7:21–23. A bead 50 apparently
`extends beyond a surface defined by the trough bottoms, and the region of bead
`bonding is described as “troughs 24 and portions … adjacent the troughs 24”, col.
`7:21–23. Here, “adjacent” means a zone of space. In order to emphasize
`proximity, the Patent Owner uses a compound phrase: “this bend could be directly
`adjacent the pocket 32 or could be spaced further from the pocket 32,” col. 7:1–4
`(emphasis added).
`
`
`1 Petitioners have submitted a claim construction order of the ’747 Patent by a District Court as
`Exhibit 1013 for the Board’s reference, but Petitioners believe that the claim construction under
`BRI in this IPR should be different from the claim construction of the District Court.
`
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`Proposed construction of “adjacent”: “close to or next to”.
`fine mesh
`The specification of the ’747 patent does not define what “fine mesh” is, but
`provides an example of a “fine mesh” and explains what the fine mesh does. See
`’747 patent col. 4:39–43 (“The corrugated mesh 20 provides the function of
`allowing water to pass into the gutter G while precluding debris from passing into
`the gutter G. This corrugated mesh 20 is preferably formed as a woven screen of
`stainless steel wire or other wire/thread of suitable material.”). The Dictionary
`definition of mesh is “a net or network.” The ’747 patent does not define how fine
`(i.e. how small the openings) the mesh needs to be to filter debris of various sizes
`and types. Hence, under BRI, the mesh only needs to be suitable for filtering
`typical debris in a rain gutter setting.
`Proposed construction of “fine mesh”: “screen suitable for filtering debris in
`a rain gutter setting”.
`coupling
`The ’747 Patent provided a definition for this term. ’747 Patent col. 7:52–60
`(“coupled together, such language should be interpreted broadly … directly
`together or … through intervening structures.”).
`plate
`The Dictionary definition of “plate” is a sheet of hammered, rolled, or cast
`metal. The ’747 Patent refers to various thin structural members as “plates”, such
`as “upper plate 43”, “lower plate 44”, “stop plate 45”, and “clamp plate 46” in FIG.
`5. ’747 Patent col. 5:63–6:29. The term plate does not have a narrow meaning of
`a planar structure, since the clamp plate 46 has a curving shape and is bent. ’747
`Patent FIGS. 5 and 6 and col. 6:24 (“causes the clamp plate 46 to flex slightly”).
`Proposed construction of “plate”: “a thin structural member”
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`corrugated with ridges
`The Dictionary definition of “corrugate” is “to shape into folds or parallel
`and alternating ridges and grooves.” The Dictionary definition of “ridge” is “the
`long, narrow upper section or crest of something: ridge of a wave.” The
`specification illustrates different examples of corrugation in FIGS. 7–13 and
`provides that those configurations “can be inverted and provided upside down.”
`’747 Patent col. 5:18–20. Based on FIGS. 7–13 and the description, ridges and
`valleys can be pointed (FIG. 7), flat (FIG. 10), curved (“sinusoidal” col. 5:15), or
`in irregular shapes (FIG. 13). Under BRI, Petitioners submits that a “ridge” is
`merely a higher point compared to a reference level.
`Proposed construction of “corrugated with ridges”: “parallel folds
`comprising some high points and low points.”
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`VII. SUMMARY OF THE PRIOR ART
`Each of the references cited herein qualifies as prior art under 35 U.S.C. §
`102(b) because each was published over a year before September 4, 2009.2
`
`A. Lenney ’912
`Invented by the same inventors, Lenney ’912 is incorporated by reference in
`the ’747 patent and is admitted by the Patent Owner as prior art in the background
`section of the ’747 Patent. ’747 Patent col. 1:37–39. Lenney ’912 discloses a leaf
`preclusion system with many of the features claimed in the ’747 Patent, including a
`screen of fine mesh material, an upper support with a tab to fit under shingles and a
`recess to hold the screen, and a lower support with a recess to hold the screen. See,
`e.g., Lenney ’912 FIG. 1. Lenney ’912 also discloses a floor with ribs that extend
`upward to come in contact with the screen. Id.
`
`
`
`Lenney ’912 FIG. 2 (annotated by Petitioners).
`Although a floor with ribs (or similar underlying support structure) is not
`recited in claim 1 of the ’747 Patent, the claim does not preclude any screen system
`
`2 Petitioners do not concede that the claims are entitled to the priority date of September 4, 2009.
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`that includes an underlying support structure because the claim uses the open
`ended language “comprising.” Gillette Co. v. Energizer Holdings Inc., 405 F.3d
`1367, 1371–73 (Fed. Cir. 2005). In addition, Patent Owner has asserted claim 1
`and other claims of the ’747 Patent against a product which includes a screen
`supporting member. See Ex. 1011, Infringement Contentions, Appendix A at p. 7.
`Patent Owner alleges that ribs are found in the accused product. See id. at p. 2
`(Patent Owner’s caption: “Ribs extend upwardly form the floor … of the rigid
`support.”). Thus, Patent Owner’s interpretation of the claim scope of ’747 Patent
`claim 1 can include an underlying structure supporting a screen.
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`B. Leone
`Leone was not cited in the prosecution of AN 12/924,326.
`Leone is concerned with filtering “a mixture of clay and water”. Leone col.
`1:36–37. Similar to the ’747 Patent, Leone discloses a corrugated screen that
`forms channels that are parallel to the direction of the water flow:
`
`
`Leone FIG. 1 (annotated by Petitioners). Both Leone and the inventors of the ’747
`Patent faced the problem of increasing rate of flow through a screen. Stein Decl. ¶
`0045. Similar to the claimed feature of “corrugated with ridges” in the ’747
`Patent, Leone describes using a screen having “a triangular configuration” forming
`“ridges” to increase surface area and thus increase the flowrate through the screen.
`Leone col. 6:38–52.
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`C. Van Horn
`Van Horn creates a gutter cover out of a metallic plate having a plane
`portion a inserted under roof shingles and a convexed outer portion b. Van Horn
`corrugates “part of the tangent base a of the shield … to form watercourses b2”.
`Van Horn col. 2:67–70.
`
`
`Van Horn FIG. 2 (illustrating corrugations which “strengthen” and form downhill
`“watercourses” b2). Van Horn col. 2:73–77.
`Van Horn illustrates that corrugated gutter covers with ridges of the
`corrugations being in line with the downhill flow of rain water was known about
`100 years before 2009. Stein Decl. ¶ 0047. Van Horn’s downhill-oriented
`watercourses avoid interfering with the free flow of water off the roof. “My
`invention has for its object …[a] device for protecting the trough or gutter without
`interfering at all with the free flow of water from the roof[.]” Van Horn col. 1:18–
`22 (emphasis added).
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`D. Pfeifer
`Pfeifer discloses a rain gutter screen. See Pfeifer Title and FIG. 3.
`
`
`
`Pfeifer FIG. 3 (annotated by Petitioners).
`The front and back edges of the gutter screen [use] a flexible,
`bondable material for attachment to the roof support portion
`and the eave gutter end edge.
`
`Pfeifer Abstract.
`Pfeifer discloses an upper edge of a screening 6 attached to a roof
`attachment tab 4. Pfeifer FIG. 3. A corresponding lower edge of the screening 6 is
`attached to longitudinal support member 9 and longitudinal gutter attachment
`section 10. Pfeifer FIG. 2.
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`Pfeifer FIG. 2 (annotated by Petitioners). As shown in the figure above, the
`attachment section 10, which includes 8 and 9 is in the shape of a letter “T.” See
`also Peifer FIG. 1). Pfeiffer teaches a POSITA that rain gutter screening can be
`frictionally attached to a gutter lip with a longitudinal section in the form of a letter
`“T.” Stein Decl. ¶ 0051.
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`E. Higginbotham
`Higginbotham is directed to a rain gutter shield used in the field of
`preventing “debris from entering into the open top end of a gutter,” Higginbotham
`¶ 0003. The gutter shield includes wells, the wells are perforated U-shaped
`depressions in an underlying support; the perforated wells assist in moving water
`downward into the gutter. See, e.g., Higginbotham FIG. 4 items 25, 32, 29. The
`U-shaped depressions increase water pressure in the perforated wells and assist in
`moving water downward into the gutter:
`Incorporating the upward extending planes and perforated wells
`found in the flexible insertable filter skeleton of my prior art
`[United States Patent No. 6,598,352 to Higginbotham] into the
`main body of the present invention, in the above described
`manner, achieves the same water directing properties by means
`of water adhesion and water pressure (due to water volume
`existent in said wells) ….
`
`Higginbotham ¶ 0088 (emphasis added).
`The gutter shield may include an “insertable stainless steel wire cloth,”
`Higginbotham ¶ 0093, and a “downward extending portions 79 [which] are folded
`portions,” Higginbotham ¶ 0104. “The mesh screen may define a mesh between
`80 and 280[.]” Higginbotham ¶ 0027. A mesh of 80 wires per inch gives
`approximately 6,400 holes per square inch. Stein Decl. ¶ 0056. Higginbotham
`notes the stiffness of the wire cloth. Higginbotham 0080 (“will not be dislodged
`by wind due to the natural stiffness present in wire cloths”).
`
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`22
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`Higginbotham FIG. 17. Higginbotham teaches a POSITA that one or more valleys
`can be impressed into a screen of stainless steel wire cloth, that rainwater will enter
`the valleys, and that water pressure helps water move downward. Stein Decl. ¶
`0055.
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`23
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`
`
`F.
`
`Sichel
`Sichel was not cited in the prosecution of AN 12/924,326.
`Sichel describes a gutter screen of “flexible, open-mesh construction, having
`spaced, flow-directing ribs extending in directions parallel with the slope of the
`roof[.]” Sichel Abstract (emphasis added).
`
`
`Sichel FIG. 1. The apertures in the screen have dimensions in the “general range
`of 4 to 10 millimeters and widths of 1 to 3 millimeters.” Sichel col. 2:7–8. The
`screen “upper portion 20b extends upwardly beneath the lower course of shingles,
`following the same slope as that of roof 10” Sichel col. 2:51–52.
`
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`24
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`
`G. Schmid
`Schmid was not cited in the prosecution of AN 12/924,326.
`Schmid is directed to “roof drains adapted to accommodate abnormally large
`amounts of water.” Schmid col. 1:2–4.
`
`
`Schmid FIG. 3. “The slots 46 in the upper section 40 of the strainer 38 are at an
`elevation with relation to the reservatory 20 and the top of the roof to substantially
`increase the head of the fluid in the reservatory 20 to carry off heavy rainfall due to
`cloudbursts and the like[.]” Schmid col. 4:14–19 (emphasis added). From
`Schmid, a POSITA would have understood that height of water provided a head of
`pressure to improve drainage of rainwater from a roof.
`
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`25
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`
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`H.
`
`Pressure Head
`The concept of pressure head, meaning that the pressure of a standing body
`of water is directly proportional to the body’s depth and density, has been
`understood at least since Daniel Bernoulli first published his principle of the
`conservation of energy in fluid flows within his book Hydrodynamica in 1738, and
`the resulting Bernoulli Equation that was developed into its current form in the
`18th, 19th, and 20th centuries. Stein Decl. ¶ 0065. As discussed above, at least as
`early as Schmid, issued September 14, 1954, inventors were well aware of the
`benefit of increasing fluid depth to increase the driving force to cause fluids to
`flow through narrow orifices of a screen or grating at higher velocities and flow
`rates than would otherwise occur with prior shallower designs. Stein Decl. ¶ 0065.
`As discussed above, both Higginbotham and Sichel acknowledged the benefit of
`using channels in a screen to increase the fluid depth and resulting pressure over
`screen orifices in order to generate higher fluid pressures to help the draining water
`to overcome surface tension effects, thus drive more of the water through the
`screen orifices, rather than along a path in a direction tangential to the screen
`materials, which would result in an undesirable fluid bypass effect. Stein Decl. ¶
`0065. Had a POSITA not been aware of these principles already, he would have
`learned from Schmid, Sichel, and Higginbotham to increase the depth of a
`corrugation or channel to boost the fluid flow through a screen or grating. Stein
`Decl. ¶ 0065.
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`VIII. APPLICATION OF PRIOR ART TO THE CHALLENGED CLAIMS
`Ground 1: Claims 1–6, 16–20 of the ’747 Patent would have been obvious over
`Lenney ’912 in view of Leone, and Van Horn
`
`
`The inventors of the ’747 Patent faced problems of:
`• keeping leaves out of a gutter,
`• flow rate of a gutter screen during a heavy downpour of rain and
`• strength of the gutter screen.
`Stein Decl. ¶ 0069. As explained in further detail below, those considerations are
`merely typical problems faced in designing a rain gutter system. Stein Decl. ¶
`0069.
`The inventors of the ’747 Patent addressed these problems with a fine mesh
`screen and corrugations in the fine mesh screen. Stein Decl. ¶ 0070. Yet the’747
`Patent’s solutions to these problems are the exact same solutions taught in the prior
`art to keep leaves out of the gutter, to increase the flow rate of a screen, and to
`strengthen the screen. Stein Decl. ¶ 0070. For example, Lenney ’912 taught to use
`a woven screen of stainless steel wire, Leone taught to use corrugations to improve
`flow rate of water through a screen, and Van Horn taught to orient corrugations in
`a gutter shield in the downhill direction and that the corrugations would improve
`strength of the gutter shield. Stein Decl. ¶ 0070.
`Thus, a POSITA would have been motivated to use Lenney ’912 including
`the Lenney ’912 woven screen of stainless steel wire to keep debris such as leaf
`stems out of a gutter. Stein Decl. ¶ 0071. A POSITA would have been motivated
`to modify Lenney ’912 with the corrugations of Leone to improve the flow rate of
`rain water through the screen in a heavy downpour. Stein Decl. ¶ 0071. A
`POSITA would also have learned from Van Horn to orient the corrugations from
`Leone in a downhill direction. Stein Decl. ¶ 0071.
`
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`Fine Mesh Screen
`A POSITA would have understood that a rain gutter would need a screen to
`prevent debris from accumulating in and blocking the gutter. Stein Decl. ¶ 0072.
`A POSITA would also have understood that the opening of the screen would need
`to be sufficiently small to filter typical debris such as leaves and stems. Stein Decl.
`¶ 0072.
`The inventors of the ’747 Patent used a fine mesh screen. See ’747 Patent
`col. 4:64–5:1(describing corrugated mesh 20). The ’747 Patent background
`section incorporates Lenney ’912. ’747 Patent col. 1:38–39. Lenney ’912 provides
`a mesh to stop, for example, “leaf stems” from passing into a gutter. See Lenney
`’912 col. 4:13–16. Thus Lenney ’912 provides a mesh with a screen size
`appropriate for a “leaf preclusion system.” ’747 Patent Title. Stein Decl. ¶ 0073.
`Providing a preferred example of “fine mesh,” the ’747 Patent states that
`“corrugated mesh 20 is preferably formed as a woven screen of stainless steel
`wire” ’747 Patent col. 4:41–42 (emphasis added). Lenney ’912 describes a
`“screen 20 is formed of stainless steel woven wire.” Lenney ’912 col. 4:10–11
`(emphasis added). Since the ’747 Patent incorporates Lenney ’912 by reference
`and since the ’747 Patent states that the type of screen used in Lenney ’912 is a
`preferred example of fine mesh, Lenney ’912 discloses a “fine mesh” no matter
`what the claim construct