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.: IPR2018-00031
`________________________________________________________
`
`DECLARATION OF MATTHEW ISAAC STEIN
`
`
`
`IPR2018-00031
`Petitioners Ex. 1102 p. 1
`
`

`

`
`
`
`
`
`Introduction
`
`DECLARATION OF MATTHEW ISAAC STEIN
`
`[0001]
`
`I, Matthew Isaac Stein, a citizen of the United States of America, have
`
`been retained by Downey Brand LLP, counsel for Petitioners ARTESIAN HOME
`
`PRODUCTS, INC. and ADR, INC. to provide expert testimony in the inter partes
`
`review of United States Patent No. 8,479,454 to Lenney et al. (hereinafter “the
`
`’454 Patent”).
`
`Qualifications
`
`[0002]
`
`I graduated from Massachusetts Institute of Technology (MIT), in 1978
`
`with a Bachelor of Science degree in Mechanical Engineering.
`
`[0003]
`
`Since 1994, I have been employed by Stein Design of Truckee, CA,
`
`where I am the owner, founder, and principal engineer. Over the prior 30+ years, I
`
`have designed scores of different products, several of which went on to become the
`
`top selling product in the world within their respective fields. I am a named
`
`inventor on twelve U.S. patents, and have provided testimony as an expert witness
`
`in 26 cases, all but four of which were patent and/or trade secret related. In my
`
`prior experience, I have been retained as an expert on behalf of both plaintiffs and
`
`defendants.
`
`[0004] During my employment as principal engineer for Stein Design, I have
`
`conducted product design and development, along with engineering analysis.
`
`Among others, products designed include drinking fountains, safety showers and
`
`eyewash, various water filters and filtration peripherals, medical filters, complex
`
`plastic housings, photovoltaic (PV) solar roofing panels, specialized foam
`
`
`
`2
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`IPR2018-00031
`Petitioners Ex. 1102 p. 2
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`

`

`
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`machines, paint application equipment, sonar equipment, and an innovative dollar
`
`bill stacking machine for handling multiple sizes of international currencies. I am
`
`also a licensed general contractor, specializing in residential “green building,”
`
`having built “green” homes in Hawaii during the period of 2002-2005. My work
`
`on these homes included specifying, and overseeing the installation of roofing and
`
`rain gutter systems on a number of homes. In the period of 2005-2007, I consulted
`
`for Applied Solar/Open Energy Corp. designing “Building
`
`Integrated
`
`Photovoltaic” (BIPV) solar roofing tiles for Applied Solar/Open Energy Corp,
`
`including sheet metal flashing systems to integrate roofing systems with the solar
`
`roofing panels. In the period of 2009-2010, I consulted for Active Roof
`
`Technologies, Inc., where I worked on the design of a double-walled roofing
`
`system that incorporated active solar space heating into sheet metal roofs. I also
`
`have extensive sheet metal experience starting with sheet metal design for Intellect
`
`in Hawaii in 1981-1982, then for Haws Company from 1986-1994, and since then
`
`as Stein Design working on projects for clients Acorn Engineering, Sierra Design
`
`Group and IGT. At Haws Company, a leading manufacturer of safety showers,
`
`emergency eyewashes, drinking fountains and industrial tempered water systems,
`
`in addition to a considerable body of sheet metal design work, I also worked on
`
`designs incorporating metal sieving, straining, and filtering as it pertained to safety
`
`showers, eyewashes, drinking fountains, and industrial tempered water systems. I
`
`have also designed medical filters (IV, chemotherapy dispensing, etc) for
`
`Healthtek, as well as water filters for Water safety Corporation and Safari Outdoor
`
`products.
`
`[0005]
`
`I am the author of the following publications:
`
`[0006] Geomagnetic Storms, EMP and Nuclear Armageddon. Nexus magazine,
`
`February/March 2012, Mapleton, Queensland, Australia.
`
`
`
`3
`
`IPR2018-00031
`Petitioners Ex. 1102 p. 3
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`

`

`
`
`[0007] When Disaster Strikes: A Comprehensive Guide for Emergency Planning
`
`and Crisis Survival. Published by Chelsea Green Publishing Company, White
`
`River Junction, VT, November 2011.
`
`[0008]
`
`Emergency Survival Kits. Mother Earth News magazine, Issue No. 243,
`
`December 2010/January 2011, Ogden Publications, Topeka, KS.
`
`[0009] Blending Solar Panels with Roof Profiles: Simulation Guides the Design
`
`of Innovative Solar Panel Frames, Reducing Molding Time, Material and Cost.
`
`ANSYS Advantage Magazine, Volume II, Issue 3, 2008, Canonsburg, PA.
`
`[0010] When Technology Fails: A Manual for Self-Reliance, Sustainability and
`
`Surviving the Long Emergency. Second edition, published by Chelsea Green
`
`Publishing Company, White River Junction, VT, 2008.
`
`[0011] No-Hassel Kitchen Appliance: Finite Element Analysis Helps Redesign a
`
`Countertop Water Filter. ANSYS Advantage Magazine, Volume I, Issue 2, 2007,
`
`Canonsburg, PA.
`
`[0012] Design Space in a Small Design Shop: Affordable Simulation Package is
`
`a Necessary Tool in Analyzing Complex Plastic Parts. ANSYS Solutions
`
`Magazine, Volume 3, Number 3, summer 2001, Canonsburg, PA.
`
`[0013] When Technology Fails: A Manual for Self-Reliance & Planetary
`
`Survival. First edition, published by Clear Light Books, Santa Fe, NM, 2000.
`
`[0014]
`
`Emergency Eyewashes & Showers: Tempered Water Systems Warming
`
`Up to a Good Idea. Occupational Health & Safety, Canada, 1993 Buyer’s Guide.
`
`
`
`4
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`IPR2018-00031
`Petitioners Ex. 1102 p. 4
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`

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`
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`[0015]
`
`Safety Showers Are in From the Cold: Several Options Are Available to
`
`Maintain Tempered Water in Shower and Eyewash Stations, Year Round. Safety &
`
`Health magazine, June, 1989.
`
`[0016] Based on the above qualifications I am considered an expert in the fields
`
`of sheet metal, filtration, and sieving.
`
`[0017]
`
`I have been retained by Petitioners’ counsel to determine whether the
`
`claims of the ’454 Patent are valid, and am being paid $300.00 per hour to review
`
`the patent at issue and prepare this declaration. I have no connection with
`
`Gutterglove, Inc. and do not have a stake, financial or otherwise, in whether the
`
`claims of the ’454 Patent are affirmed or cancelled.
`
`[0018]
`
`I have read and am familiar with the ’454 Patent, its prosecution history
`
`and the prior arts as detailed the petition.
`
`
`
`
`
`
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`5
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`IPR2018-00031
`Petitioners Ex. 1102 p. 5
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`

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`
`
`Summary of Opinions
`
`[0019] Ground 1: Claims 1–3, 12–14, 16, and 17 would have been obvious
`
`based on United States Patent No. 7,310,912 to Lenney et al. (“Lenney ’912”) in
`
`view of United States Patent No. 8,297,000 to Demartini (“Demartini”).
`
`[0020] Ground 2: Claims 1–3, 12–14, 16, and 17 would have been obvious
`
`based on Lenney ’912 in view of United States Patent Application Publication No.
`
`2007/0234647 to Higginbotham (“Higginbotham ’647”) and United States Patent
`
`No. 5,257,482 to Sichel (“Sichel”).
`
`
`
`
`
`
`
`6
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`IPR2018-00031
`Petitioners Ex. 1102 p. 6
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`

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`
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`Documents and Things Reviewed
`
`[0022]
`
`I have reviewed the following materials to prepare this report:
`
`a. United States Patent No. 8,479,454 to Lenney et al.
`
`b. File History of the ‘454 Patent
`
`c. United States Patent No. 8,297,000 to Demartini
`
`d. United States Patent No. 6,032,806 to Leone et al.
`
`e. United States Patent No. 546,042 to Van Horn
`
`f. United States Patent No. 7,310,912 to Lenney et al.
`
`g. United States Patent Application Publication No. 2007/0234647 to
`
`Higginbotham et al.
`
`h. United States Patent No. 5, 257,482 to Sichel
`
`i. United States Patent No. 2,689,017 to Schmid
`
`j. United States Patent No. 6,598,352 to Higginbotham
`
`k. United States Patent No. 9,021,747 to Lenney et al.
`
`l. United States Patent No. 4,959,932 to Pfeifer
`
`m. United States Patent No. 7,975,435 to Lenney et al.
`
`n. United States Patent No. 7,913,458 to Higginbotham
`
`o. United States Patent No. 2,674,961 to Lake
`
`p. United States Patent No. 5,417,793 to Bakula
`
`q. Claim Construction Order in Gutterglove, Inc. v. American Die et al.;
`
`Case No. 2:16-cv-02408-WHO, E.D. Cal.
`
`r. All other exhibits submitted with the Petition
`
`
`
`7
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`IPR2018-00031
`Petitioners Ex. 1102 p. 7
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`

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`
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`My Understanding of the Legal Principles
`
`[0023]
`
`I am not an attorney and do not expect to offer any opinions at trial or
`
`depositions regarding the law. I have, however, been informed of certain legal
`
`principles that I relied upon and used as a framework in reaching the opinions set
`
`forth in this report. These are summarized below.
`
`Anticipation under 35 U.S.C. § 102
`
`[0024]
`
`I understand that invalidity by anticipation requires that the four corners
`
`of a single, prior art document describe every element of the claimed invention.
`
`Further, I understand that, for an alleged prior art reference to anticipate a patent
`
`claim, the reference must disclose within its four corners all of the limitations of
`
`the claim arranged or combined in the same way as recited in the claim.
`
`[0025]
`
`I also understand that, for an alleged prior art reference to anticipate a
`
`patent claim, the reference must enable a person of ordinary skill in the art to make
`
`and use the claimed invention.
`
`[0026]
`
`I understand that a claim limitation may be present in an alleged prior art
`
`reference either expressly or inherently, but inherency may be established only if
`
`such limitation is necessarily present in the reference. I understand inherency
`
`cannot be established by probabilities or possibilities, and the mere fact that a
`
`certain thing may result from a given set of circumstances is not sufficient to
`
`establish inherency.
`
`Obviousness under 35 U.S.C. § 103(a)
`
`[0027]
`
`I am informed that a patent claim is invalid as obvious if, at the time the
`
`claimed invention was made, the differences between the prior art and the claimed
`
`
`
`8
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`IPR2018-00031
`Petitioners Ex. 1102 p. 8
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`

`

`
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`invention as a whole would have been obvious to a person of ordinary skill in the
`
`art. I am informed that the following factors are considered in determining
`
`whether a claimed invention is invalid as obvious over the prior art: (1) the scope
`
`and content of the prior art (i.e., the devices, technology, knowledge and practices
`
`that preexisted the invention), (2) the level of ordinary skill in the art, (3) the
`
`differences between the claimed invention and the prior art, and (4) any real-world
`
`facts, sometimes referred to as “secondary considerations” or “objective indicia,”
`
`that indicate the invention was obvious or not obvious, for example:
`
` commercial success of the invention, causally related to
`the invention itself rather than to companion factors, such
`as advertising or attractive packaging;
`
` copying of the invention by competitors as distinguished
`from their independent development;
`
` the invention’s satisfaction of a long-felt but hitherto
`unsatisfied need, despite the availability of the elements
`of the invention;
`
` acquiescence by the industry to the patent’s validity by
`honoring the patent through taking licenses;
`
` failed attempts by those skilled in the art to make the
`invention or achieve the objectives of the invention;
`
` praise for the invention, such as recognition of the
`invention as an advancement over the prior art by
`technically competent peers; and
`
` any other real-world facts that indicate the invention was
`obvious or not obvious.
`
`[0028] At this point in the inter partes review, I understand that counsel has not
`
`received any exhibits of secondary considerations from the Patent Owner. I
`
`reserve the right to supplement my opinion if the Patent Owner provides exhibits
`
`of secondary considerations.
`
`
`
`9
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`IPR2018-00031
`Petitioners Ex. 1102 p. 9
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`

`

`
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`Obviousness of a combination of prior art elements.
`
`[0029]
`
`I am informed that, in determining whether a combination of prior art
`
`elements renders a patent claim obvious, the proper inquiry is whether the
`
`combination would have been obvious to a person of ordinary skill in the art who
`
`was familiar with the prior art in the field and analogous prior art from other fields.
`
`I am informed that a claim composed of several elements is not proved obvious
`
`merely by demonstrating that each element existed somewhere in the prior art. I
`
`understand that there must be a reason why one of ordinary skill would have
`
`combined elements from different prior art references, or something else that
`
`would have prompted such a person to consider combining prior art elements. I
`
`understand that any need, design consideration or problem known in the field at the
`
`time of the alleged invention could provide a reason or motive to combine prior art
`
`elements in the claimed manner. I understand that the reason to combine an
`
`element from the prior art may derive from the fact that it is well known or
`
`commonly used in the art. I also understand that the reason to combine references
`
`may come from the background knowledge possessed by a person having ordinary
`
`skill in the art. I understand that a person of ordinary skill is also a person of
`
`ordinary creativity, and that the common sense of one skilled in the art may also
`
`provide a reason or motive to combine prior art elements to arrive at the claimed
`
`matter.
`
`[0030]
`
`I am informed that combining known elements according to known
`
`methods is likely to be obvious when it does nothing more than yield predictable
`
`results. That is, when a claimed invention is simply an arrangement of prior-art
`
`elements in which each element performs the function it was known to perform
`
`and provides the benefits that it provided in prior art devices, the claimed
`
`combination is obvious. I am also informed that choosing from a finite number of
`
`
`
`10
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`IPR2018-00031
`Petitioners Ex. 1102 p. 10
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`

`

`
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`identified, predictable solutions, with a reasonable expectation of success, is also
`
`likely to be obvious.
`
`
`
`Person of Ordinary Skill in the Art
`
`[0031]
`
`In my opinion, a person of ordinary skill in the art (“POSITA”) of the
`
`technology of the ’454 Patent and the applied references would have working
`
`knowledge of screen systems for filtering debris from a water-based flow. A
`
`POSITA would have a four-year degree in Mechanical Engineering, a related
`
`technical field, or equivalent work experience.
`
`[0032] Based on my education and my experience, I have at least the level of
`
`ordinary skill in the art.
`
`
`
`
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`
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`
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`11
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`IPR2018-00031
`Petitioners Ex. 1102 p. 11
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`
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`The ’454 patent
`
`[0033] 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.
`
`[0034] ’454 Patent FIG. 1 (annotated). Rain water runs downhill; the downhill
`
`direction is perpendicular to the long dimension of the gutter.
`
`
`
`’454 Patent FIG. 3 (annotated).
`
`
`
`
`
`
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`12
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`IPR2018-00031
`Petitioners Ex. 1102 p. 12
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`

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`Claim Constructions
`
`[0035]
`
`I understand that the Petitioners and the Patent Owner will have different
`
`constructions for a number of terms and the PTAB has not yet construed any
`
`disputed terms. I have reviewed the claim construction order in Gutterglove, Inc.
`
`v. American Die et al.; Case No. 2:16-cv-02408-WHO, E.D. Cal. I understand that
`
`the PTAB and district court can have different constructions of the same terms. I
`
`reserve the right to perform addition analyses based on the Patent Owner’s
`
`proposed construction and based on the PTAB’s preliminary constructions in the
`
`institution decision.
`
`[0036]
`
`I have been informed that the Petitioners propose the following
`
`constructions:
`
`Claim Terms
`
`Proposed Constructions
`
`including an extension overlapping on
`an upper edge of said screen
`
`screen being bent into a configuration
`including multiple crests alternating
`with multiple troughs
`
`coupled/coupling
`
`This phrase modifies “said rigid
`support.”
`
`screen being shaped into multiples high
`points and low points
`
`coupled together, such language should
`be interpreted broadly … directly
`together or … through intervening
`structures
`
`the end of something pointed or
`projecting
`
`tip
`
`
`
`
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`
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`13
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`IPR2018-00031
`Petitioners Ex. 1102 p. 13
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`

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`
`
`Overview of the Prior Art
`
`A.
`
`Lenny ’912
`
`[0037] 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).
`
`[0038] 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. Apertures in the floor allow the water to
`fall down through the channel and into the gutter, while
`debris is precluded from passing through the screen.
`
`Lenney ’912 Abstract.
`
`[0039] Along the same lines:
`
`The ribs are thus available to draw water through the screen
`by providing a wetted surface for capillary action forces to
`
`
`
`14
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`IPR2018-00031
`Petitioners Ex. 1102 p. 14
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`

`

`
`
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`assist in drawing water through fenestrations in the screen
`and down to the floor of the channel. Apertures in the
`channel are provided with sufficient size to allow the water
`collecting on the floor to drop through the apertures and into
`the rain gutter.
`
`Lenney ’912 col. 2:33–39.
`
`[0040]
`
`In my opinion, Lenney ’912 carries forward the wetted path concept for
`
`improving drainage of rainwater off a gutter screen into a gutter cavity.
`
`B.
`
`Demartini
`
`[0041] Demartini discloses a rain gutter cover with peaks and valleys to guide water
`
`in a downhill direction as it flows off of a roof “to converge any rain water running
`
`over the first portion 14,” Demartini col. 5:38–39, and the “first portion includes
`
`ribs forming multiple channels configured to converge water on the first portion,”
`
`Demartini Abstract. Demartini’s overall design includes a first portion 14, a nose
`
`portion 18 and a second portion 16.
`
`[0042] Demartini’s peaks and valleys of the first portion 14 extend from the end of
`
`the roof shingles 22 across the gutter 30 to the gutter lip 34:
`
`Demartini FIGS. 1, 2A and 4 (annotated).
`
`15
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`IPR2018-00031
`Petitioners Ex. 1102 p. 15
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`

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`
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`[0043] FIG. 4 of Demartini is the section view 4–4 of the first portion 14 of FIG.
`
`2A. The first portion 14 “includes ribs forming multiple channels configured to
`
`converge water on the first portion.”
`
`
`
`C.
`
`Sichel
`
`[0044] 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.
`
`
`
`Sichel FIG. 1.
`
`
`
`[0045] 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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`16
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`IPR2018-00031
`Petitioners Ex. 1102 p. 16
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`

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`
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`[0046] Sichel FIG. 2 (annotated). “[F]low-directing ribs and flow-interrupting bars
`
`promotes the flow of rain water into a gutter despite the relatively small
`
`dimensions of the apertures.” Sichel col. 1:45–46 (emphasis added). The
`
`apertures have are in a “general range of 4 to 30 square millimeters[.]” Sichel col.
`
`
`
`3:28–29.
`
`
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`17
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`IPR2018-00031
`Petitioners Ex. 1102 p. 17
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`
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`Sichel FIG. 3 (annotated).
`
`[0047] “It is believed that because of the height differential between ribs 24 and
`
`bars 25, the surface tension of the water, which might otherwise cause the water to
`
`flow as a sheet over the top of the screen, is disrupted.” Sichel col. 3:55–59
`
`(emphasis added).
`
`Sichel FIG. 4 (annotated).
`
`
`
`[0048] “In FIG. 4, the surface of the water is schematically depicted by phantom
`
`line W. As the surface of the moving water drops between the upper limits of ribs
`
`24, the water impinges on transverse bars 25 and the bars disrupt the flow as
`
`represented by arrows 30[.]” Sichel col. 3:59–63.
`
`[0049] In my opinion, a POSITA learns from Sichel that an arrangement of
`
`downhill ribs can avoid water from a heavy downpour sliding as a single sheet
`
`over a screen and missing a rain gutter. A POSITA learns that the downhill ribs
`
`channel the water.
`
`
`
`Higginbotham ’647
`
`[0050] Higginbotham ’647 is directed to a “gutter shield.” Higginbotham ’647
`
`Title.
`
`
`
`18
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`IPR2018-00031
`Petitioners Ex. 1102 p. 18
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`

`

`
`
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`The gutter shield device further comprises a filter element
`secured to the intermediate body portion. A surface of the filter
`element is arranged adjacent to the openings. A filtration
`element adapted to be mounted to a rain gutter is also provided.
`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).
`
`[0051]
`
`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).
`
`
`
`
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`19
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`IPR2018-00031
`Petitioners Ex. 1102 p. 19
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`

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`
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`Higginbotham ’647 FIG. 17 (annotated).
`
`[0052]
`
`From the description of FIG. 17 in paragraph 0104 (“water … is
`
`redirected into a downward flowing path”), the folded portions appear to run
`
`parallel to the long dimension of the gutter.
`
`[0053] 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, not in the gutter screen.
`
`[0054] Higginbotham ’647 recognizes a problem with a flat gutter shield.
`
`Higginbotham ’647 ¶ 0084 (“Perforated surfaces existing in a single plane… tend
`
`to channel water past perforations rather than down through them and into an
`
`underlying rain gutter”) (emphasis added).
`
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`20
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`IPR2018-00031
`Petitioners Ex. 1102 p. 20
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`[0055] A POSITA learned, from Higginbotham ’647, the following items
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`concerning rain gutter shield design:
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` gutter shield designs that exists in a single plane tend to allow water to
`skip over the gutter,
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` a valley (called a “folded portion[] of a continuous filter element” in
`Higginbotham ’647) designed into a rain gutter screen of a gutter
`shield is useful,
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` rainwater flowing into a fold of a micromesh screen will drain out
`through the bottom of the fold into the gutter,
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` collecting rainwater together increases downward pressure and
`downward pressure increases downward motion of that water, and
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` water draining over a screen that contacts an underlying member will
`wick downward into the gutter.
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`
`
`E.
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`Schmid
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`[0056] Schmid is directed to “roof drains adapted to accommodate abnormally large
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`amounts of water.” Schmid col. 1:2–4.
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`Schmid FIG. 3.
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`[0057] “The slots 46 in the upper section 40 of the strainer 38 are at an elevation
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`with relation to the reservatory 20 and the top of the roof to substantially increase
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`21
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`IPR2018-00031
`Petitioners Ex. 1102 p. 21
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`the head of the fluid in the reservatory 20 to carry off heavy rainfall due to
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`cloudbursts and the like[.]” Schmid col. 4:14–19 (emphasis added). From
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`Schmid, a POSITA understood that height of water provided a head of pressure to
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`improve drainage of rainwater from a roof.
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`
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`Summary of Prior Art Teachings of Pressure Head and Fluid Flow
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`[0058]
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`The concept of pressure head, meaning that the pressure of a standing
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`body of water is directly proportional to the body’s depth and density, has been
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`understood at least since Daniel Bernoulli first published his principle of the
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`conservation of energy in fluid flows within his book Hydrodynamica in 1738, and
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`the resulting Bernoulli Equation that was developed into its current form in the
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`18th, 19th, and 20th centuries. As discussed above, at least as early as Schmid,
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`issued September 14, 1954, inventors were well aware of the benefit of increasing
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`fluid depth to increase the driving force to cause fluids to flow through narrow
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`orifices of a screen or grating at higher velocities and flow rates than would
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`otherwise occur with prior shallower designs. As discussed above, Higginbotham
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`’647 and Sichel both acknowledged the benefit of using ribs or channels to
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`increase the fluid depths over screen orifices in order to generate higher fluid
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`pressures to help the draining fluids overcome surface tension effects, thus drive
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`more of the fluids through the drain orifices, rather than along a path in a direction
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`tangential to the screening materials, which would result in an undesirable fluid
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`bypass effect. In my opinion, had he not been aware of these principles already, a
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`POSITA would learn from Schmid, Higginbotham ’647, and Sichel to increase the
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`depth of a corrugation or channel to boost the fluid flow through a screen or
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`grating.
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`22
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`IPR2018-00031
`Petitioners Ex. 1102 p. 22
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`Invalidity Opinions
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`[0059] In my opinion, claims 1–3, 12–14, 16, and 17 of the ’454 Patent would have
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`been obvious over Lenney ’912 in view of Demartini (Ground 1).
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`[0060] In my opinion, claims 1–3, 12–14, 16, and 17 of the ’454 Patent would have
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`been obvious over Lenney ’912 in view of Higginbotham ’647 and Sichel (Ground
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`2).
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`[0061] For ease of reference, the limitations of claim 1 are labeled as follows:
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`Element Label Claim 1
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`1-a
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`1-b
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`1-c
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`1-d
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`1-e
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`1-f
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`1-g
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`1-h
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`1-i
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`
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`A gutter debris preclusion system comprising:
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`a substantially rigid support having an elongate form between a pair of
`lateral ends opposite each other;
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`a screen having a fenestrated configuration to allow water to pass
`therethrough while precluding the passage of debris sized larger than
`fenestrations in the screen;
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`said screen coupled to said rigid support and positioned overlying said
`support;
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`said screen extending along a length of said rigid support between said
`pair of lateral ends, wherein said rigid support is wider than said screen
`in a direction perpendicular to a length of said rigid support between
`said lateral ends,
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`said screen coupled to said rigid support with an upper portion of said
`rigid support on one side of said screen
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`including an extension overlapping on an upper edge of said screen;
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`said screen in contact with said support at a plurality of locations
`beneath said screen;
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`said rigid support includes a floor on a portion of said rigid support
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`23
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`IPR2018-00031
`Petitioners Ex. 1102 p. 23
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`
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`1-j
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`1-k
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`1-l
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`1-m
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`1-n
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`1-o
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`1-p
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`1-q
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`
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`located beneath said screen, said floor spaced from said screen, said
`floor including plurality of holes therein,
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`said floor including ribs extending up from said floor, said ribs in
`contact with said screen;
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`said ribs, are elongate in form and being oriented substantially parallel
`with each other and
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`extending between said lateral ends of said rigid support; and,
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`said screen being bent into a configuration including multiple crests
`alternating with multiple troughs,
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`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,
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`wherein said troughs extend substantially perpendicular to said ribs;
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`wherein said extension defines an upper portion of a slot, said upper
`edge of the said screen located within said slot and
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`with both portions of said crests of said screen and portions of said
`troughs of said screen received within said slot.
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`Ground 1:
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`[0062] A POSITA would have been motivated to modify Lenney ’912 Patent with
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`Demartini to create a wetted path by using a screen with peaks and valleys to
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`facilitate wetting in light rain. This modification is based on applying known
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`techniques to improve a similar device.
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`[0063] A POSITA would have been motivated to modify Lenney ’912 to produce
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`the structure of claim 1 including the features of 1-m, 1-n, 1-o, and 1-q in order to
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`facilitate wetting in light rain and complete a wetted path all the way from the
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`screen to the floor of the channel.
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`[0064] A POSITA reviewing Lenney ’912 would have had reason to impress
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`valleys on the screen to improve wetting based on the teachings of Demartini.
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`Improving wetting is consistent with a purpose of Lenney ’912 which is to
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`
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`24
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`IPR2018-00031
`Petitioners Ex. 1102 p. 24
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`“provid[e] a wetted surface for capillary action forces to assist in drawing water
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`through fenestrations in the screen and down to the floor of the channel.” Lenney
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`’912 col. 2:34–36. To the extent that Lenney ’912 does not disclose or suggest
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`how to improve wetting of the screen, a POSITA would have been motivated to
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`turn to a patent publication in the same field of gutter covers in order to improve
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`wetting of the surfaces over which rainwater drains.
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`[0065] At a minimum, use of the peaks and valleys of Demartini in the screen of
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`Lenney ’912 represents the application of a known technique to a similar device.
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`By impressing the peaks and valleys of Demartini on the screen of Lenney ’912, a
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`POSITA would be applying a known technique to improve a similar device in the
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`same way, e.g., channelizing water running off a roof improves wetting in a light
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`rain. Lenney ’912 seeks to avoid a rain gutter not being able to “carry water in a
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`desirable fashion off of the roof and away from the building.” Lenney ’912 col.
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`1:25–26 (emphasis added). Improving wetting improves carrying of water into the
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`gutter cavity. Lenney ’912 teaches that “[w]ith … [ribs] in contact with the screen,
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`adhesion forces in the water are beneficially utilized to provide a wetted path of
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`surface material wicking the water down through the screen along these legs where
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`the water is then further allowed to drop down into the gutter.” Lenney ’912 col.
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`1:65–2:3.
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`
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`25
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`IPR2018-00031
`Petitioners Ex. 1102 p. 25
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`[0066] Demartini provides a way of improving the availability of water to provide
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`
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`the desired wetted path at the screen/rib interface. Demartini teaches,
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`channels 36 help to converge any rain water running over
`the first portion 14 of cover 10. Of course, some of the
`rain will fall directly on the gutter cover. The illustrated
`configuration increases the volume of water at these
`locations, causing the water to flow in streams around
`nose portion 18 to second portion 16. This facilitates
`initial wetting of second portion 16, causing cover 10 to
`begin functioning sooner and in light rain.
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`Demartini col. 5:36–45 (emphasis added).
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`[0067] Demartini includes a final drainage feature called a “second portion” which
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`is a destination for the rainwater. Use of the channels of Demartini will cause the
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`screen of Lenney ’912 to “begin functioning sooner in light rain,” because valleys
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`in the screen will collect the water and