`
`
`
`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 8,479,454
`Filing Date: September 23, 2010
`Issue Date: July 9, 2013
`Title: SUPPORTED MESH DEBRIS PRECLUSION SYSTEM FOR GUTTERS
`
`________________________________________________________
`
`Inter Partes Review No.: IPR2018-00030
`________________________________________________________
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,479,454
`UNDER 35 U.S.C. §§ 42.1–100, ET SEQ.
`(Claims 1–3, 12–14, 16, and 17)
`
`
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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 ’454 PATENT ........................................................... 8
`A.
`Subject Matter and Claims ................................................................... 8
`B.
`Prosecution History ............................................................................ 12
`V. PERSON OF ORDINARY SKILL IN THE ART ....................................... 17
`VI. CLAIM CONSTRUCTION ......................................................................... 18
`VII. SUMMARY OF THE PRIOR ART ............................................................. 23
`
`A. Lenney ’912 ....................................................................................... 23
`
`B. Higginbotham ’647 ............................................................................ 25
`
`C. Leone .................................................................................................. 29
`
`D Van Horn ............................................................................................ 31
`
`E.
`Schmid ................................................................................................ 32
`
`F.
`Pressure Head ..................................................................................... 33
`VIII. INVALIDITY ARGUMENTS ..................................................................... 34
`
`Ground 1 ....................................................................................................... 34
`
`Ground 2 ....................................................................................................... 39
`IX. LIMITATION-BY-LIMITATION ANALYSIS .......................................... 46
`
`Claim 1 ......................................................................................................... 46
`
`Claim 2 ......................................................................................................... 62
`
`Claim 3 ......................................................................................................... 62
`
`Claim 12 ....................................................................................................... 64
`
`Claim 13 ....................................................................................................... 69
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`Claim 14 ....................................................................................................... 70
`
`Claim 16 ....................................................................................................... 71
`
`Claim 17 ....................................................................................................... 76
`X.
`CONCLUSION ............................................................................................ 78
`XI. CERTIFICATE OF WORD COUNT .......................................................... 78
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`–2–
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`
`Exhibit No.
`1001
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`1002
`1003
`1004
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`1005
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`1006
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`1007
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`1008
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`1009
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`1010
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`1011
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`1012
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`1013
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`EXHIBIT LIST
`
`Description
`United States Patent No. 8,479,454 to Lenney et al. (hereinafter
`“’454 Patent”)
`Declaration of expert Matthew Isaac Stein, P.E.
`File History of the ’454 Patent
`United States Patent No. 7,310,912 to Lenney et al. (hereinafter
`“Lenney ’912”)
`United States Patent Application Publication No. 2007/0234647
`to Higginbotham (hereinafter “Higginbotham ’647”)
`United States Patent No. 546,042 to Van Horn (hereinafter “Van
`Horn”)
`United States Patent No. 6,598,352 to Higginbotham (hereinafter
`“Higginbotham ’352”)
`United States Patent No. 6,032,806 to Leone et al. (hereinafter
`“Leone”)
`United States Patent No. 2,689,017 to Schmid (hereinafter
`“Schmid”)
`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”)
`United States Patent No. 9,021,747 to Lenney et al. (hereinafter
`“’747 Patent”)
`Claim Construction Order in Gutterglove, Inc. v. American Die et
`al.; Case No. 2:16-cv-02408-WHO, E.D. Cal.
`The American Heritage Dictionary of the English Language,
`1976, Houghton Mifflin, Boston
`
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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. 8,479,454 and to cancel
`claims 1–3, 12–14, 16, and 17 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 ’454
`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. 9,021,747 (“’747 Patent”) in the same action: Case No. 2:16-cv-
`02408 WHO.
`Petitioners concurrently will file another petition for inter partes review of
`the ’454 patent, IPR2018-00031. Petitioners will also file a petition for inter
`partes review of the ’747 patent, IPR2018-00015.
`
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`3.
`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)
`
`
`Lead and Backup Counsel
`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 ’454
`patent is available for an 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
`In accordance with 35 U.S.C. § 311, Petitioners request cancellation of
`claims 1–3, 12–14, 16, and 17 of United States Patent No. 8,479,454 to Lenney et
`al. in view of the following ground:
`
`Ground 1: Claims 1–3, 12–14, 16, and 17 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 Application Publication No. 2007/0234647
`to Higginbotham (Ex. 1005, “Higginbotham ’647”) and United States Patent No.
`546,042 to Van Horn (Ex. 1006, “Van Horn”).
`
`Ground 2: Claims 1–3, 12–14, 16, and 17 are rendered obvious under 35 U.S.C.
`§ 103 over Lenney ’912 in view of United States Patent No. 6,032,806 to Leone et
`al. (Ex. 1008, “Leone”) and Van Horn.
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`IV. OVERVIEW OF THE ’454 PATENT
`A.
`Subject Matter and Claims
`The ’454 Patent is directed to a gutter screen that rests or is attached to slots
`in a tab-and-floor arrangement. A tab 40 fits under roof shingles so that the screen
`20 and floor 50 are suspended over the gutter cavity. The floor 50 includes ribs 58
`that run parallel to the long dimension of the gutter.
`
`
`’454 Patent FIG. 1 (annotated by Petitioners). Rain water runs downhill; the
`downhill direction is perpendicular to the long dimension of the gutter.
`
`
`’454 Patent FIG. 3 (showing end view of tab 40, floor 50 with ribs 58 and screen
`20) (annotated by Petitioners).
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`The independent claims are claims 1, 12 and 16. Petitioners submit that
`claim 1 is representative. Differences in claims 12 and 16 compared to claim 1
`will be treated after the discussion of claim 1.
`Claim 1 claims an assembly including a support with ribs and a screen. The
`ribs run parallel to the long dimension of the gutter the assembly rests on. These
`elements were known before 2009.
`For example, Lenney ’912 illustrates an assembly including a tab 40 a floor
`56 with ribs 60 and a screen 20.
`
`
`
`Lenney ’912 (annotated by Petitioners).
`Lenney ’912 is incorporated by reference in the background section of the
`’454 Patent. See the ’454 Patent col. 1:37–39. Lenney ’912 comments favorably
`on the performance of Higginbotham ’352.1
`[P]rior art gutter debris guards utilize some form of screen
`which allows water to pass through but precludes debris. …
`With [] fine mesh screens, water is [] not adequately allowed to
`pass through the screen and water spills over the gutters,
`preventing the gutter from functioning at all.
`
`
`1 To distinguish two Higginbotham references discussed in this petition, “Higginbotham ’647”
`refers to United States Patent Application Publication No. 2007/0234647. “Higginbotham ’352”
`refers to United States Patent No. 6,598,352.
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`The patent to Higginbotham (U.S. Pat. No. 6,598,352)
`teaches one solution to this problem. In particular, the screen is
`supported from below by a series of vertical legs that extend up
`to elliptical heads which support the screen thereon. With the
`elliptical heads of the legs in contact with the screen, adhesion
`forces in the water are beneficially utilized to provide a wetted
`path of surface material wicking the water down through the
`screen[.]
`
`Lenney ’912 col. 1:41–2:3 (emphasis added). Thus, the inventors of the ’454
`Patent recognized the benefit of an underlying structure (“vertical legs that extend
`up to elliptical heads which support the screen thereon.”)
`
`
`Higginbotham ’352 FIG. 9 (annotated by Petitioners). The ’454 Patent background
`incorporates Lenney ’912, and Lenney ’912 discusses Higginbotham ’352 as
`quoted above, see Lenney ’912 col. 1:67–2:1. Higgenbotham ’352 teaches a
`wetted path concept to promote water wicking down through the screen; this
`concept was adopted by Lenney ’912.
`Petitioners emphasize that FIG. 9 of Higginbotham ’647 ’352 illustrates to
`POSITA the desirability of debris such as leaves flowing with the rainwater off the
`roof over a screen with the rainwater entering the screen by “wicking the water
`down,” Lenney ’912 col. 1:67–2:1, while the leaves pass over the screen without
`entering the gutter.
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`The mesh of the ’454 Patent is corrugated into a plurality of crests 22 and
`troughs 24 that run perpendicular to the direction of the ribs 58.
`
`
`The ’454 Patent FIGS. 5 and 7 (front elevation views showing crests 22 and
`troughs 24) (annotated by Petitioners).
`The petitioned grounds for institution of IPR focus particular attention on
`these crests and troughs.
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`Prosecution History
`
`B.
`United States Patent Application No. 12/924,326 (hereinafter “AN
`12/924,326”), which matured into the ’454 Patent, was filed on September 23,
`2010 claiming benefit to United States Provisional Patent Application No.
`61/277,406, which was filed on September 23, 2009.
`Anticipation Rejection
`Claim 1 was rejected under 35 U.S.C. § 102(a) in a non-final office action
`dated July 2, 2012 (hereinafter “Office Action”) as anticipated by Higginbotham
`’352. Ex. 1003 at p. 76. Patent Owners amended in the face of the Higginbotham
`’352-based rejection, as discussed below. The Office Action refers to FIGS. 7, 10,
`and 1 of Higginbotham ’352. Ex. 1003 at pp. 76–77.
`Claim 1, as filed on September 28, 2010, included the feature “said screen
`being bent into a configuration including multiple crests alternating with multiple
`troughs, with said troughs closer to said rigid support than said crests and with at
`least some of said troughs in contact with said rigid support.” Ex. 1003 at p. 151.
`No Legal Basis for Double-Patenting Rejection over 35 U.S.C. § 102(b)
`References
`The Office Action rejected the claims under the doctrine of double patenting
`as anticipated or obvious. Ex. 1003 at pp. 81–82 (“at least one examined
`application claim is either anticipated by, or would have been obvious over, the
`reference claim(s)”). That is, the claims were rejected as anticipated or obvious for
`double patenting over the claim or claims of each of United States Patent No.
`7,975,435 to Lenney (hereinafter “Lenney ’435”), of which the corresponding
`application was published on July 10, 2008, and Lenney ’912 which issued on
`December 25, 2007. Ex. 1003 at p. 82 (Office Action item 4 refers to Lenney ’435
`and item 6 refers to Lenney ’912).
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`In the rejection, the Examiner stated “[c]laims 1–20 are rejected on the
`ground of nonstatutory obviousness-type double patenting as being unpatentable
`over claim 1 of U.S. Patent No. 7310912. Although the conflicting claims are not
`identical, they are not patentably distinct from each other because the scope of
`claims 1–20 are encompassed by the scope of claim 1 of patent 7310912.” Ex.
`1003 at p. 82 (emphasis added).
`The Examiner stated a “timely filed terminal disclaimer … may be used to
`overcome an actual or provisional rejection based on a nonstatutory double
`patenting ground[.]” Ex. 1003 at p. 82. However, a terminal disclaimer cannot
`remove a reference as prior art. See In re Bartfeld, 925 F.2d 1450, 1453 (Fed. Cir.
`1991) (“[t]he purpose of a terminal disclaimer is … not to remove a reference as
`prior art”). Lenney ’912 was patented on December 25, 2007, more than one year
`before the filing date (September 23, 2009) of the provisional application to which
`the ’454 Patent claims benefit. In other words, Lenney ’912 is a 102(b) reference
`against AN 12/924,326. Hence, the double-patenting rejection did not have a basis
`in law.
`
`The purpose of a terminal disclaimer is to limit the term
`of a patent, not to remove a reference as prior art. See In re
`Braithwaite, 379 F.2d 594, 603, 154 USPQ 29, 36 (CCPA
`1967) (Smith, J., concurring) (quoting remarks of PTO
`Commissioner Brenner: “if the ... claimed invention is clearly
`obvious in view of the teachings of the prior art ... then a patent
`should not be granted even if affidavits, terminal disclaimers,
`and the like are presented by the applicant, since such papers
`cannot change what is obvious so it may become unobvious and
`therefore a patentable invention”).
`
`
`In re Bartfeld, 925 F.2d at 1453–54 (emphasis added).
`The Examiner stated the pending claims as anticipated or obvious over
`Lenney ’912. See Ex. 1003 at p. 81; see also p. 82 (“the scope of claims 1–20 are
`
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`encompassed by the scope of claim 1 of patent 7310912.”). However, the
`Examiner apparently did not recognize that Lenney ’912 was a 35 U.S.C. § 102(b)
`prior art reference eligible to include in a 35 U.S.C. § 103 rejection. The Examiner
`did not recognize that the doctrine of double patenting, which doctrine is not based
`on 35 U.S.C. § 102(b) art, was not applicable. See In re Braithwaite, 379 F.2d
`594, 603 (CCPA 1967) (“If section 103 were applicable then obviously there
`would be no need for this type of ‘double patenting.’”) (Smith, J., concurring)
`(internal quotes in original).
`Petitioners’ reliance on Lenney ’912 as the basis of a 35 U.S.C. § 103
`rejection is not redundant with the Examiner’s consideration of Lenney ’912
`because the basis of the Examiner’s treatment of Lenney ’912 did not rest on law.
`Patent Owner did not traverse the Examiner’s finding that claims 1–20 were
`unpatentable over Lenney ’912. Rather, Patent Owner filed a terminal disclaimer
`listing Lenney ’912 on January 2, 2013. Ex. 1003 at pp. 48–50.
`Thus Lenney ’912 was placed on record by the Examiner as rendering the
`AN 12/924,326 claims unpatentable as anticipated or obvious. Patent Owner
`acquiesced in this characterization of unpatentability by responding to the
`Examiner’s terminal disclaimer statement filing the terminal disclaimer of January
`2, 2013 without traverse. This terminal disclaimer has no effect on the availability
`of Lenney ’912 as a reference in this petition.
`An interview was held on November 30, 2012; in the interview summary the
`Examiner notes “attorney also points out that the ribs are non-parallel to the
`undulations of the screen,” Ex. 1003 at p. 72. This feature was part of claim 13 at
`the time of the July 2012 Office Action, which rejected claim 13 under double
`patenting in view of Lenney ’912. Ex. 1003 at p. 153. Therefore, on the record,
`the Examiner viewed “ribs [that] are non-parallel to the undulations of the screen”
`as obvious over Lenney ’912.
`
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`Patent Owner, in a response filed January 2, 2013 (hereinafter “January 2013
`Response”) disputed yet amended in the face of the anticipation rejection of claim
`1 over Higginbotham ’352. Ex. 1003 at pp. 56–65. Claim 1, rejected as
`anticipated, included the feature “said screen being bent into a configuration
`including multiple crests alternating with multiple troughs, with said troughs closer
`to said rigid support than said crests and with at least some of said troughs in
`contact with said rigid support.” Ex. 1003 at p. 151.
`A notice of allowance was mailed by the Patent Office on March 22, 2013.
`Ex. 1003 at p. 20.
`The application of Lenney ’912 in this petition is in agreement with the
`Examiner’s view that the pending AN 12/924,326 claims were obvious over
`Lenney ’912 claim 1 (and thus the disclosure of the Lenney ’912 specification).
`However, Petitioners respectfully point out the Examiner’s mis-step of accepting a
`terminal disclaimer as disposing of a 35 U.S.C. § 102(b) reference that the
`Examiner viewed as a bar to patentability. The Examiner recognized Lenney ’912
`as a patentability bar to the pending AN 12/924,326 claims, but improperly applied
`a double patenting rejection against the pending claims.
`Petitioners anticipate that Patent Owner may argue for dismissal of the
`petition ground based on Lenney ’912. Patent Owner may allege Lenney ’912 is
`redundant to grounds previously considered by the Patent Office. Petitioners
`submit that a 35 U.S.C. § 103 ground based on Lenney ’912 has not been
`considered heretofore by the Patent Office, because the Examiner’s issuance of an
`inapplicable double patenting rejection was not channeled in the proper
`examination process of 35 U.S.C. § 103 to protect the public. A terminal
`disclaimer does not remove or overcome a 35 U.S.C. § 102(b) reference. There is
`an examination mistake here that can be corrected by IPR. Specifically, the
`attempted disposal of a 35 U.S.C. § 102(b) reference that the Examiner viewed as
`
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`barring patentability coupled with no substantive reply by the Examiner to the
`Patent Owner’s “ribs are non-parallel” claim and argument in the November 30,
`2012 interview is a mistake that can be corrected by IPR.
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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.”) ¶ 0030. 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.2
`
`
`including an extension overlapping on an upper edge of said screen
`The phrase “including an extension overlapping on an upper edge of said
`
`screen;” appears in the fourth paragraph (excluding permeable) of claim 1. ’454
`Patent col. 9:9–10. The phrase immediately follows “said screen” without any
`comma. It is unclear whether the phrase modifies “said screen,” “said rigid
`support,” or “an upper portion of said rigid support.” Hence, the phrase requires
`construction.
`
`By the literal reading of the claim, the phrase modifies “said screen” because
`it immediately follows said screen without any comma. However, the phrase does
`not modify “said screen” because such construction is unintelligible and
`contradicts the specification and the claim itself. If the phrase were to modify
`“said screen,” the entire limitation would read as said screen includes an extension
`overlapping on an upper edge of itself. One object being overlapping part of itself
`is unintelligible unless the object is folded 180 degrees, but the specification does
`not show the screen is folded in such a manner.
`
`
`2 Petitioners have submitted a claim construction order of the ’454 Patent by a District Court as
`Exhibit 1012 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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`Such a construction also contradicts another limitation in claim 1, which
`recites, “wherein said extension defines an upper portion of a slot, said upper edge
`of the said screen located within said slot and with both portions of said crests of
`said screen and portions of said troughs of said screen received within said slot.”
`’454 Patent col. 9:27–31. “Wherein said extension defines an upper portion of a
`slot” indicates that the extension is part of the rigid support and “said screen
`located within said slot” indicates that the extension is not part of the screen
`because the screen is located within the slot defined by the extension.
`Hence, the phrase “including an extension overlapping on an upper edge of
`said screen” modifies either “said rigid support,” or “an upper portion of said rigid
`support.” Either construction comports with the specification and the claim.
`Under BRI, the phrase should modify “said rigid support” because it is the broader
`construction. In addition, claim 3 recites “wherein said upper portion of said rigid
`support is provided in the form of a tab extending from said extension adjacent
`said slot to a tip defining an uppermost edge of said tab.” This indicates that the
`extension is not part of the upper portion of the rigid support. Hence, it is the rigid
`support, not its upper portion, that includes the extension.
`Applicants believe the “extension” in claim 1 refers to the unlabeled ledge
`above slot 32 in FIG. 4:
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`screen being bent into a configuration including multiple crests
`alternating with multiple troughs
`This claim phrase includes the terms “bent,” “crests,” and “troughs.”
`Bent: past participle of bend. Ex. 1013, The American Heritage Dictionary
`of the English Language, 1976, Houghton Mifflin, Boston (hereinafter
`“Dictionary”).
`Bend: “1. To bring (a bow) into tension by drawing it with a string. 2. a. To
`cause to assume a curved or angular shape. b. To force to assume a different shape
`or direction. 3. To cause to swerve from a straight line; turn; deflect.”
`Crest: “4. a. The top of something, as a mountain or wave; peak; summit. b.
`A ridge.” Dictionary.
`Trough: “3. A long, narrow depression, as between waves or ridges.”
`Dictionary.
`From the specification:
`• Beneficially, the overall mesh 20 is not entirely planar, but rather is
`bent into an undulating corrugated contour.
`’454 Patent col. 4:12–15.
`
`• Most preferably, the crests 20 and troughs 24 are substantially
`perpendicular to the longest dimension of the mesh 20 and support 30
`extending between the lateral ends 36 of the support 30.
`’454 Patent col. 4:25–34.
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`• “With such an undulating configuration, the corrugated mesh 20 or
`other screen material beneficially channels water falling off of the
`roof R into concentrated flows within the troughs 24.”
`’454 Patent col. 4:34–37.
`
`• “By concentrating the water flowing down off of the shingles S of the
`roof R into channels between the crests 20 and within the troughs 24
`this weight of the water is concentrated. The concentrated water is
`then more likely to release from the corrugated mesh 20 and fall down
`into the gutter G.”
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`20
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`’454 Patent col. 4:45–50.
`
`• FIGS. 5–12:
`
`
`The specification illustrates different examples of bent screen with crests
`and troughs in FIGS. 5–12 and provides that those configurations “can be …
`inverted.” ’454 Patent col. 8:37–40. Based on FIGS. 5–12 and the description,
`crests and troughs can be pointed (FIG. 5), flat (FIG. 6), curved (FIG. 12), or in
`irregular shapes (FIGS. 7-11). Under BRI, Petitioners submit that a “crest” is
`merely a higher point compared to a reference level and a “trough” is merely a
`lower point compared to a reference level.
`Proposed construction of “screen being bent into a configuration including
`multiple crests alternating with multiple troughs:” “screen being shaped into
`multiple high points and low points.”
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`21
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`coupled/coupling
`Patent Owner provided a broad definition for this term. ‘747 Patent col.
`7:52–60 (“coupled together, such language should be interpreted broadly …
`directly together or … through intervening structures.”).
`
`tip
`Tip: “1. The end or extremity of something, especially of something pointed
`or projecting. 2. A piece or attachment meant to be fitted to the end of something,
`as acap or ferrule.” Dictionary.
`“The tab 40 includes a top surface 41 opposite a bottom surface 43 which
`are generally parallel with each other. However, these surfaces 41, 43 preferably
`have a slight taper so that a tip 42 of the tab 40 most distant from the front edge 60
`of the support 30 is slightly thinner than portions of the tab 40 adjacent the floor 50
`of the support 30.” ’454 Patent col. 6:67–7:5 (emphasis added).
`“The ribs 58 preferably taper to a point so that the ribs 58 have a greater
`thickness adjacent the floor 50 than at tips of the ribs 58. The tips of the ribs 58
`define those portions of the support 30 which come into contact with the
`corrugated mesh 20, at troughs 24 on the corrugated mesh 20.” ’454 Patent col.
`6:67–7:5 (emphasis added).
`Proposed construction of “tip:” “the end of something pointed or
`projecting.”
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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 23, 2009.3
`A. Lenney ’912
`Lenney ’912 discloses a rain gutter screen assembly with many of the
`features claimed in the ’454 Patent including a screen and a rigid support including
`a floor with ribs that extend upward to come in contact with the screen.
`
`
`Lenney ’912 FIG. 2 (annotated by Petitioners). Lenney ’912 further discloses:
`Ribs extend from the floor up to an upper plane of the
`channel in which the screen is supported. The ribs have
`sufficient height to remain in contact with the screen. Water is
`drawn through the screen and along the ribs down to the floor
`of the recess.
`
`Lenney ’912 Abstract. Along the same lines:
`The ribs are thus available to draw water through the
`screen by providing a wetted surface for capillary action forces
`
`
`3 Petitioners do not concede that the claims are entitled to the priority date of September 23,
`2009.
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`23
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`to assist in drawing water through fenestrations in the screen
`and down to the floor of the channel.
`
`Lenney ’912 col. 2:33–39. Thus Lenney ’912 carries forward the wetted path
`concept from Higginbotham ’352 for improving drainage of rainwater off a gutter
`screen into a gutter cavity. Stein Decl. ¶ 0039.
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`B. Higginbotham ’647
`Higginbotham ’647 is directed to a “gutter shield.” Higginbotham ’647
`Title.
`
`The filtration element comprises a plurality of interwoven
`threads defining a first substantially planar surface and at least
`one substantially planar extending portion extending at an
`angle to the first substantially planar surface. The at least one
`substantially planar extending portion may be a folded portion.
`
`Higginbotham ’647 Abstract. (emphasis added). Thus, Higginbotham ’647 teaches
`a gutter shield including a screen “plurality of interwoven threads” for keeping
`debris out of a rain gutter and the screen includes a valley “folded portions.”
`Examples of folded portions are shown in FIGS. 16 and 17.
`
`
`Higginbotham ’647 FIG. 16 (annotated by Petitioners).
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`Higginbotham ’647 FIG. 17 (annotated by Petitioners). From the description of
`FIG. 17 in paragraph 0104 (“water … is redirected into a downward flowing
`path”).
`Higginbotham ’647 also discloses “rain water will flow off roof member 74
`through stainless steel micro mesh filtration member 71 contacting upraised
`bumps, such as 48 and 51, and being diverted downward by these planes down
`through perforations 70 into an underlying rain gutter 72.” Higginbotham ’647 ¶
`0094 (internal quotation marks omitted). In addition, Higginbotham ’647 teaches
`that accumulating water provides increased pressure to cause the water to drain.
`Higginbotham ’647 ¶ 0088 (“water directing properties by means of water
`adhesion and water pressure (due to water volume existent in said wells)”). The
`wells of Higginbotham ’647 are in a support structure through which the rainwater
`drains, see id. ¶ 0088, FIG. 3A and FIG. 4, not in the gutter screen.
`Higginbotham ’647 recognizes a problem with a flat gutter shield.
`Higginbotham ’647 ¶ 0084 (“Perforated surfaces existing in a single plane… tend
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`to channel water past perforations rather than down through them and into an
`underlying rain gutter”) (emphasis added).
`A POSITA learned, from Higginbotham ’647, the following items
`concerning rain gutter shield design:
`• gutter s