Trials@uspto.gov
`571.272.7822
`
`
`
`
` Paper 9
` Entered: November 8, 2018
`
`
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`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ZURN INDUSTRIES, LLC,
`Petitioner,
`
`v.
`
`SIOUX CHIEF MFG. CO., INC.,
`Patent Owner.
`____________
`
`Case IPR2018-00973
`Patent 8,347,906 B1
`____________
`
`
`Before RAE LYNN P. GUEST, TINA E. HULSE, and AVELYN M. ROSS,
`Administrative Patent Judges.
`
`HULSE, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`
`
`
`
`
`571.272.7822
`
`
`
`
` Paper 9
` Entered: November 8, 2018
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ZURN INDUSTRIES, LLC,
`Petitioner,
`
`v.
`
`SIOUX CHIEF MFG. CO., INC.,
`Patent Owner.
`____________
`
`Case IPR2018-00973
`Patent 8,347,906 B1
`____________
`
`
`Before RAE LYNN P. GUEST, TINA E. HULSE, and AVELYN M. ROSS,
`Administrative Patent Judges.
`
`HULSE, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`
`
`
`
`
`
`IPR2018-00973
`Patent 8,347,906 B1
`
`I. INTRODUCTION
`Zurn Industries, LLC (“Petitioner”) filed a Petition requesting an inter
`partes review of claims 1–13 of U.S. Patent No. 8,347,906 B1 (Ex. 1001,
`“the ’906 patent”). Paper 1 (“Pet.”). Sioux Chief Mfg. Co., Inc. (“Patent
`Owner”) filed a Preliminary Response to the Petition. Paper 6 (“Prelim.
`Resp.”). With our authorization, Petitioner filed a Reply to the Preliminary
`Response (Paper 7, “Reply”), and Patent Owner filed a Surreply (Paper 8,
`“Surreply”).
`We have authority under 35 U.S.C. § 314, which provides that an
`inter partes review may not be instituted “unless . . . there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.” 35 U.S.C. § 314(a). Upon considering
`the arguments and evidence, we determine that Petitioner has not established
`a reasonable likelihood that it would prevail in showing that at least one of
`the challenged claims of the ’906 patent is unpatentable. Accordingly, we
`decline to institute an inter partes review of claims 1–13 of the ’906 patent.
`Related Proceedings
`A.
`Patent Owner has asserted the ’906 patent against Petitioner in a
`pending lawsuit styled Sioux Chief Mfg. Co. v. Zurn Industries, LLC, No.
`1:18-cv-00163 (D. Del.). Pet. 1; Paper 4, 2.
`Petitioner has concurrently filed a petition for inter partes review
`challenging claims 14–29 of the ’906 patent (IPR2018-00975).
`The ’906 Patent
`B.
`The ’906 patent relates to a system for installing drain fixtures in
`concrete slabs or floors using a concrete coring adaptor around which the
`slab is poured. Ex. 1001, 1:13–17. A drain is typically funnel shaped,
`with a tapered upper drain head and a lower step adapted for connecting
`
`1
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`IPR2018-00973
`Patent 8,347,906 B1
`the drain to an adaptor for a drain pipe in the ground. Id. at 1:28–32. The
`drain head includes a grate at the upper end to prevent large pieces of
`debris from clogging the drain pipe. Id. at 1:32–34.
`According to the specification, a typical prior art installation
`assembly includes a female threaded adaptor that is attached to a vertically
`extending drain pipe. Id. at 1:35–37. A drain with a threaded lower
`section is threaded into the adaptor. Id. at 1:37–38. Then the height of the
`drain may be minimally adjusted up or down by threading the drain further
`into or out of the adaptor. Id. at 1:38–44. Drains and drain adaptors,
`which are typically installed before pouring the surrounding concrete slab,
`are ideally installed at the proper height and so the grate is flush with the
`finished floor surface. Id. at 1:45–50.
`The specification describes various disadvantages to the prior art
`drain assemblies. For example, plumbers often cover the drains with tape
`or plastic to protect them from being damaged or filled with concrete. Id. at
`1:50–53. Time is then required to clean the drains and remove the covering
`after the floor has been poured. Id. at 1:53–55. Moreover, prior art drain
`assemblies often cannot be adjusted once the concrete is poured around the
`drains and set without chipping away the concrete. Id. at 1:63–2:16.
`Thus, the specification states “there is an existing need for a system
`for installing floor drains that provides for easy installation, reduces damage
`to drain heads during and after pouring the surrounding slab, and provides a
`ready means for later height adjustment.” Id. at 2:17–21.
`
`2
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`IPR2018-00973
`Patent 8,347,906 B1
`
`Illustrative Claim
`C.
`Petitioner challenges claims 1–13 of the ’906 patent, of which claims
`1 and 10 are independent claims. Claim 1 is illustrative and is reproduced
`below:
`
`1. A system for mounting a utility access fixture in fluid
`communication with a conduit, the conduit presenting a free
`end below the intended surface level of a poured slab, the
`mounting system comprising:
`a) a utility access fixture having a fixture head projecting
`radially outward from a central fixture mounting stem,
`b) a coring sleeve having a lower portion connectable in
`fluid communication with said conduit and a bowl
`projecting outward from said lower portion, said bowl
`defining a bowl cavity surrounding and opening centrally
`into a bore extending through said lower portion of said
`coring sleeve; said coring sleeve sized to removably
`receive the utility access fixture therein with the fixture
`head received within said bowl cavity and the central
`fixture mounting stem extending into said bore extending
`through said lower portion of said coring sleeve, and
`c) a cover removably positionable to extend across said bowl
`cavity above a top surface of the utility access fixture
`received within the coring sleeve such that an upper
`surface of said cover extends generally flush with an
`upper edge of said bowl.
`Ex. 1001, 15:54–16:7.
`The Asserted Grounds of Unpatentability
`D.
`Petitioner challenges the patentability of claims 1–13 of the ’906
`patent on the following grounds:
`
`3
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`IPR2018-00973
`Patent 8,347,906 B1
`References
`Izzi1 and Castillo2
`
`Izzi, Castillo, and Stone3
`
`Izzi, Castillo, and Papp4
`
`Basis
`§ 103
`
`§ 103
`
`§ 103
`
`Izzi, Castillo, Papp, and Stone
`
`§ 103
`
`Izzi and Svirsky5
`
`Izzi, Svirsky, and Stone
`
`Izzi, Svirsky, and Papp
`
`§ 103
`
`§ 103
`
`§ 103
`
`Izzi, Svirsky, Papp, and Stone
`
`§ 103
`
`Claims challenged
`1, 2, 8, and 9
`
`3, 4, and 5
`
`7, 10, and 11
`
`6, 12, and 13
`
`1, 2, 8, and 9
`
`3, 4, and 5
`
`7, 10, and 11
`
`6, 12, and 13
`
`
`Petitioner also relies on the Declaration of Matthew Isaac Stein
`(Ex. 1021) to support its assertions.
`II. ANALYSIS
`Person of Ordinary Skill in the Art
`A.
`Petitioner asserts that a person of ordinary skill in the art would have
`had at least a bachelor’s degree in mechanical engineering or its equivalent
`and one year of work experience related to the design, installation,
`evaluation, or use of plumbing products or systems. Pet. 18 (citing Ex. 1021
`
`
`1 Lewis B. Izzi, US 4,067,072, issued Jan. 10, 1978 (“Izzi,” Ex. 1006).
`2 Castillo et al., US 6,076,559, issued June 20, 2000 (“Castillo,” Ex. 1007).
`3 Robert E. Stone, US 3,445,973, issued May 27, 1969 (“Stone,” Ex. 1004).
`4 David J. Papp, US 4,614,065, issued Sept. 30, 1986 (“Papp,” Ex. 1005).
`5 Bennet Svirsky, US 2,324,545, issued July 20, 1943 (“Svirsky,” Ex. 1003).
`
`4
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`IPR2018-00973
`Patent 8,347,906 B1
`¶ 31). Patent Owner does not comment on Petitioner’s definition other than
`to say Petitioner’s arguments fail under its definition. Prelim. Resp. 17–18.
`On this record, we adopt Petitioner’s definition of the level of
`ordinary skill in the art. We also note that the prior art itself demonstrates
`the level of skill in the art at the time of the invention. See Okajima v.
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific
`findings regarding ordinary skill level are not required “where the prior art
`itself reflects an appropriate level and a need for testimony is not shown”)
`(quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158,
`163 (Fed. Cir. 1985)).
`
`Claim Construction
`B.
`We must interpret the claims of the ’906 patent according to the
`broadest reasonable construction in light of the specification of the patent in
`which they appear. 37 C.F.R. § 100(b) (2016); Cuozzo Speed Techs., LLC v.
`Lee, 136 S. Ct. 2131, 2142 (2016) (affirming applicability of broadest
`reasonable construction standard to inter partes review proceedings). Under
`that standard, and absent any special definitions, we generally give claim
`terms their ordinary and customary meaning, as would be understood by one
`of ordinary skill in the art at the time of the invention. See In re Translogic
`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definitions
`for claim terms must be set forth with reasonable clarity, deliberateness, and
`precision. See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`The term “generally flush” appears in each of the challenged claims.
`Petitioner asserts the broadest reasonable interpretation of “generally flush”
`is “approximately level or even with.” Pet. 6 (citing Ex. 1021 ¶ 51).
`Petitioner argues the specification supports its construction because it
`consistently describes as “flush” surfaces that are level or even with another
`
`5
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`IPR2018-00973
`Patent 8,347,906 B1
`surface. Id. (citing Ex. 1001, 7:58–62, 9:10–11, Figs. 4, 6, and 7).
`Petitioner also argues that the prosecution history supports its construction.
`Id. at 7–8. Petitioner further contends that Patent Owner has incorrectly
`construed “generally flush” to include a device where “a peripheral edge of
`the plug head extends just over the upper edge of the receiver bowl.” Id. at 6
`(citing Ex. 1009). Patent Owner does not contest Petitioner’s construction at
`this stage of the proceeding and applies Petitioner’s construction. Prelim.
`Resp. 18.
`On this record, we determine that the specification supports
`Petitioner’s construction of “generally flush.” We note, however, that the
`specification also states that the upper surface of the plug is typically
`positioned “to extend flush” with the upper edge of the receiver bowl, but
`that it is “foreseen that the plug 20 could be sized such that a peripheral edge
`of the plug head 75 extends just over the upper edge 67 of the receiver bowl
`52.” Ex. 1001, 6:28–32; see also id. at 15:9–13 (teaching a cover that “may
`be constructed to snap in place within or over the receiver rim”).
`Accordingly, at this stage of the proceeding, we construe the term “generally
`flush” to mean “approximately level or even with,” which includes a cover
`that could extend just over the upper edge of the receiver bowl.
`We determine that it is unnecessary to construe any other term for
`purposes of this Decision. See Wellman, Inc. v. Eastman Chem. Co., 642
`F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to
`the extent necessary to resolve the controversy.’”) (quoting Vivid Techs.,
`Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
`C. Whether to Exercise Our Discretion Under 35 U.S.C. § 325(d)
`Institution of inter partes review is discretionary. See Harmonic Inc.
`v. Avid Tech, Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (explaining “the
`
`6
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`IPR2018-00973
`Patent 8,347,906 B1
`PTO is permitted, but never compelled, to institute an IPR proceeding”). In
`particular, § 325(d) states “[i]n determining whether to institute or order a
`proceeding under this chapter, . . . [t]he Director may take into account
`whether, and reject the petition or request because, the same or substantially
`the same prior art or arguments previously were presented to the Office.”
`Patent Owner argues that we should exercise our discretion to deny
`institution under § 325(d) because substantially the same prior art or
`arguments were previously presented to the Office. Prelim. Resp. 19–35.
`Specifically, Patent Owner argues that Izzi and Papp were already
`considered by the Office during prosecution of the ’906 patent and during
`reexamination of its parent patent. Prelim. Resp. 19–20. Patent Owner also
`argues that Castillo and Svirsky are cumulative of prior art previously before
`the Examiner. Id. at 20.
`Although we agree most of the asserted references were before the
`Office or cumulative of art previously before the Office during prosecution
`of the ’906 patent or its parent, we need not reach the issue of whether to
`exercise our discretion in light of our determination below that Petitioner has
`not demonstrated a reasonable likelihood of prevailing on any of its
`challenged grounds.
`D. Obviousness over Izzi and Castillo
`Petitioner asserts that claims 1, 2, 8, and 9 of the ’906 patent are
`unpatentable as obvious over Izzi and Castillo, and that claims 3–7 and 10–
`13 are unpatentable as obvious over Izzi, Castillo, and one or more other
`references. Pet. 19–57. Patent Owner opposes Petitioner’s assertion.
`Prelim. Resp. 35–52. On this record, we determine that Petitioner has not
`established a reasonable likelihood that it would prevail in showing the
`challenged claims are unpatentable as obvious over the cited references.
`
`7
`
`
`
`IPR2018-00973
`Patent 8,347,906 B1
`
`Izzi (Ex. 1006)
`1.
`Izzi relates to a drain structure assembly made of plastic with internal
`surfaces sloped in the direction of flow to allow for greater drainage flow
`and minimize sludge or waste build-up. Ex. 1006, 1:3–7. Izzi states an
`important object of the invention is to provide a three-part plastic drain
`assembly where each part is threaded so the strainer drain plate may be
`adjusted to any desired height. Id. at 1:24–27.
`Figure 4, reproduced below with further annotations in red, is a cross-
`sectional view of one embodiment of the invention:
`
`
`Figure 4 depicts a two-part assembly embodiment of the invention where
`only drain plate supporting collar 14 is used with drain outlet 10. Id. at
`1:50–54. Drain plate 62 may be vertically adjusted with respect to drain
`outlet 10 by means of the threads 54 and 24. Id. at 2:40–44.
`Castillo (Ex. 1007)
`2.
`Castillo relates to detachable protective covers useful for installing
`plumbing fixtures. Ex. 1007, 1:11–14. Castillo states that during the
`construction process, the tops of fixtures must be protected during the
`
`8
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`IPR2018-00973
`Patent 8,347,906 B1
`pouring and setting of the concrete floor. Id. at 1:20–25. Moreover, to
`assure a substantially planar floor surface after the concrete has been placed
`and cured, the height of the drains must often be adjusted and space must be
`reserved around the fixture to allow for that adjustment. Id. at 1:25–29.
`Castillo states the prior art did not accommodate conventional
`plumbing fixtures such as floor drains and cleanouts. Id. at 1:42–49. Thus,
`plumbers often wrap drains with tape to protect the fixtures, which is time
`consuming and labor intensive. Id. at 1:50–55. Castillo states “[w]hat is
`needed is a disposable cover which securely attaches to the plumbing fixture
`prior to floor construction, provides simple and rapid access to the fixture
`upon completion of the floor, and reserves sufficient annular space around
`the fixture for final adjustment.” Id. at 2:2–6.
`One preferred embodiment of the cover of Castillo is shown in
`Figures 5A and 5B, reproduced below:
`
`
`Figures 5A and 5B show plastic casing 20 with second perforation 50
`immediately beneath flanges 30 for the locking tabs. Id. at 5:4–7. The top
`portion is substantially cylindrical in shape and the remainder of
`downwardly-depending skirt 24 tapers outward from second perforation 50.
`
`9
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`IPR2018-00973
`Patent 8,347,906 B1
`According to Castillo, this embodiment “provides the added advantage of
`allowing easy and rapid access to both the cover and the annular space
`surrounding the underlying pipe and plumbing apparatus.” Id. at 5:12–15.
`As such, a plumber can make the necessary adjustments to the underlying
`apparatus before filling in the annular space and finishing construction of the
`floor. Id. at 5:15–19.
`Figures 6A, 6B, and 6C depict the use of the cover and are reproduced
`below:
`
`
`
`
`As shown in Figure 6A, the protective cover is pressed onto the drain fixture
`until the locking tabs (shown as item 30 in Figure 5B) engage the drain
`fixture head. Id. at 6:1–3. Once the concrete floor is poured and set, the
`detachable lid can be removed from the top of the protective cover, as shown
`in Figure 6B. Id. at 6:3–7. If there is a second perforation (shown as item
`50 in Figure 5B), as shown in Figure 6C, the top portion of the plastic casing
`can be removed, exposing the space around the fixture and allowing vertical
`adjustment as required for the fixture. Id. at 6:7–11.
`Analysis
`3.
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which the
`
`10
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`IPR2018-00973
`Patent 8,347,906 B1
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations, including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art; (3)
`the level of skill in the art; and (4) objective evidence of nonobviousness.
`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`“[A] patent composed of several elements is not proved obvious
`merely by demonstrating that each of its elements was, independently,
`known in the prior art.” KSR, 550 U.S. at 418. “[I]t can be important to
`identify a reason that would have prompted a person of ordinary skill in the
`relevant field to combine the elements in the way the claimed new invention
`does.” Id. Moreover, a person of ordinary skill in the art must have had a
`reasonable expectation of success of doing so. PAR Pharm., Inc. v. TWi
`Pharms., Inc., 773 F.3d 1186, 1193 (Fed. Cir. 2014).
`Petitioner asserts that each limitation of the challenged claims is
`taught by the combination of Izzi and Castillo (along with one or more
`references for certain claims). Pet. 19–57. Specifically, Petitioner asserts
`that Castillo teaches “a protective cover ‘designed to securely yet releasably
`connect with conventional plumbing fixtures, such as the adjustable floor
`drain illustrated in FIG. 1.’” Id. at 27. Petitioner also asserts it would have
`been obvious to combine the cover of Castillo with the drain of Izzi because
`Castillo’s cover “protects the top of the fixture during pouring and setting of
`the concrete floor” and both Castillo and Izzi teach adjustable drain
`assemblies. Id. at 28. Petitioner depicts the combination as reproduced
`below:
`
`11
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`IPR2018-00973
`Patent 8,347,906 B1
`
`
`
`Id. at 29. As shown above, Petitioner’s depiction shows the cover of
`Castillo spanning across the width of the drain outlet of Izzi.
`Petitioner also asserts that the prior art recognized the problem of
`cement entering the drain and identified the solution as applying a cover to
`the drain. Id. Accordingly, Petitioner asserts a person of ordinary skill in
`the art would have understood a cover was a well-known way to solve the
`problem of cement entering a drain. Id.
`Having considered the arguments and evidence, we determine on this
`record that Petitioner has not shown sufficiently that the combination of Izzi
`and Castillo teaches or suggests the “cover” limitation of independent claims
`1 and 10. Claims 1 and 10 require a cover that extends across the bowl
`cavity of the coring sleeve such that the upper surface of the cover extends
`generally flush with the upper edge of the bowl cavity. Ex. 1001, 16:3–7.
`The removable portion of Castillo’s cover relied on by Petitioner (and
`depicted in Figure 6C) does not extend across the bowl cavity of the coring
`sleeve of Castillo. Ex. 1007, Fig. 6C. Rather, the removable portion of
`Castillo’s cover extends across the drain fixture only. Id. Thus, neither
`Castillo nor Izzi teaches the claimed cover.
`
`12
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`IPR2018-00973
`Patent 8,347,906 B1
`To show the combination of references, however, the Petition depicts
`Castillo’s cover as extending across both the drain fixture and the bowl
`cavity of Izzi. Pet. 29. Because the cover that Petitioner relies on in Castillo
`extends across the drain fixture only (see id., relying on the detachable
`portion only of the cover in Fig. 6C), we find this depiction to misrepresent
`Castillo. The Petition fails to recognize this difference and, therefore, fails
`to explain how the combination of Izzi and Castillo teaches or suggests the
`claimed cover, which requires it to extend across and be generally flush with
`the bowl cavity.
`Petitioner’s expert, Mr. Stein, notes that Castillo teaches a removable
`cap to protect drain fixtures from damage and debris, while also ensuring a
`suitable gap in the concrete surface to allow for final adjustment in height to
`ensure its top surface is approximately flush with the finished concrete
`height. Ex. 1021 ¶ 98. But the portion of Castillo’s cover that Petitioner
`relies on does not, by itself, allow for the final adjustment in height. It is
`that portion combined with the skirt portion of the cover (i.e., the cover
`shown in Figures 5A and 5B) that allows access to the annular space around
`the underlying drain. See Ex. 1007, 5:4–19, Figs. 5A, 5B, 6C. Because
`Petitioner does not rely on the entire cover of Castillo for its challenge, we
`are not persuaded by Mr. Stein’s reasoning.
`Petitioner has, therefore, failed to demonstrate how the combination
`of Izzi and Castillo teaches the “cover” limitation of the claims. To the
`extent Petitioner asks us to fill in the missing limitation based on common
`sense, we decline to do so on this record, particularly where that limitation
`was central to the examiner’s reasoning in the Notice of Allowance. See Ex.
`2004, 6 (allowing the claims based in part because the prior art failed to
`disclose the cover limitation); see also Arendi S.A.R.L. v. Apple Inc., 832
`
`13
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`IPR2018-00973
`Patent 8,347,906 B1
`F.3d 1355, 1363 (Fed. Cir. 2016) (requiring supporting evidence and a
`reasoned explanation to supply a missing limitation that goes to the heart of
`an invention based on common sense).
`Accordingly, we are not persuaded that Petitioner has shown a
`reasonable likelihood of prevailing on its assertion that claims 1, 2, 8, and 9
`are unpatentable as obvious over Izzi and Castillo. Because Petitioner does
`not assert that Stone or Papp teaches the claimed cover limitation, we are not
`persuaded that Petitioner has made a sufficient showing as to claims 3–7 and
`10–13, as well. Pet. 36–57.
`E. Obviousness over Izzi and Svirsky
`Petitioner asserts that claims 1, 2, 8, and 9 of the ’906 patent are
`unpatentable as obvious over Izzi and Svirsky, and that claims 3–7 and 10–
`13 are unpatentable as obvious over Izzi, Svirsky, and one or more other
`references. Pet. 19–57. On this record, we determine that Petitioner has not
`established a reasonable likelihood that it would prevail in showing the
`challenged claims are unpatentable as obvious over the cited references.
`We incorporate here our findings above regarding the disclosure of
`
`Izzi.
`
`Svirsky (Ex. 1003)
`1.
`Svirsky relates to pipe plugs of the elastic or expansible type.
`Ex. 1003, 1:1–2. Svirsky explains that when installing floor drains and
`testing plumbing for leaks, plumbers usually “rough in the plumbing” before
`testing. Id. at 1:3–7. In roughing in the plumbing, the plumber adds a cap to
`the drain pipe, and the cap is removed after the tile mechanic has applied the
`tar paper. Id. at 1:9–13. In tarring the paper to the drain pipe, the tar is
`slushed onto the paper threads adjacent the cap and onto the cap. Id. at
`1:14–16. Svirsky states that when the plumber attempts to remove the cap to
`
`14
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`IPR2018-00973
`Patent 8,347,906 B1
`substitute the floor drain for the cap, the cap is so firmly affixed to the drain
`pipe that any effort to unscrew it from the drain pipe may result in that pipe
`becoming unscrewed from the trap. Id. at 1:14–23. Moreover, cement,
`plaster, and foreign matter may enter and clog the drain through the strainer
`plate. Id. at 1:30–35.
`Svirsky teaches an expandable plug assembly with a cover plate that
`is attached and that protects the drain recess from the entrance of foreign
`matter. Id. at 1:67–75. Figure 2 of Svirsky is reproduced below:
`
`
`Figure 2 depicts cover plate 36 attached to the plug assembly via
`screw 35. The plumbing system may have water introduced into it under
`pressure to test for leaks. Id. at 4:4–9. The plumber then returns to install
`the finished plumbing and removes the plug assembly and substitutes the
`cover for a strainer plate. Id. at 4:14–17.
`Analysis
`2.
`Petitioner asserts the combination of Izzi and Svirsky teaches each
`limitation of the challenged claims (along with other cited references for
`certain claims). Pet. 57–72. Specifically, for independent claims 1 and 10,
`
`15
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`IPR2018-00973
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`Petitioner asserts Svirsky teaches a generally flush cover, and a person of
`ordinary skill in the art “would have recognized that there was a need for
`covers to protect drains from concrete during installation.” Id. at 59.
`Petitioner asserts Svirsky discloses “a suitable alternative option for
`covering a drain during installation.” Id. (citing Ex. 1021 ¶ 141).
`Accordingly, Petitioner asserts it would have been obvious to try applying a
`cover to prevent cement from entering the drain instead of using tape. Id. at
`59–60 (citing Ex. 1021 ¶¶ 142–143.
`Having considered the arguments and evidence, we are not persuaded
`that Petitioner has shown sufficiently that the combination of Izzi and
`Svirsky teaches the claimed “cover” limitation. As with the combination of
`Izzi and Castillo, Petitioner fails to explain why a person of ordinary skill in
`the art reading Svirsky, which teaches a drain cover, would have extended
`that cover across the bowl cavity of Izzi. Petitioner repeatedly states the
`prior art was aware of the use of covers to solve the problem of cement
`entering the drain. Id. at 60. But Petitioner does not explain how or why a
`person of ordinary skill in the art reading Izzi and Svirsky would extend the
`cover of Svirsky across the coring sleeve bowl of Izzi. Petitioner’s rationale
`that Svirsky’s cover would protect the drain from cement is achieved by
`covering the drain fixture alone, as recognized in Svirsky. Ex. 1003, 3:67–
`72 (“[T]he safety cover plate 35 is attached to the stem 27 by means of the
`screw 35, thus completely protecting the drainage recess 14 from the
`entrance of foreign matter.”). Thus, Petitioner does not offer any persuasive
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`16
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`IPR2018-00973
`Patent 8,347,906 B1
`reason why a person of ordinary skill in the art would have extended the
`cover of Svirsky across the bowl cavity of Izzi. 6
`As above with Izzi and Castillo, we are not inclined on this record to
`fill in a key missing limitation of the claims without explanation from
`Petitioner or its declarant. See Ex. 2004, 6 (allowing claims because the
`prior art failed to disclose the cover limitation); see also Arendi, 832 F.3d at
`1363. Accordingly, we are not persuaded that Petitioner has shown a
`reasonable likelihood of prevailing on its assertion that claims 1, 2, 8, and 9
`are unpatentable as obvious over Izzi and Svirsky. Because Petitioner does
`not assert that Stone or Papp teaches the claimed cover limitation, we are not
`persuaded that Petitioner has made a sufficient showing as to claims 3–7 and
`10–13, as well. Pet. 60–72.
`III. CONCLUSION
`For the foregoing reasons, we conclude that Petitioner has not
`established a reasonable likelihood of prevailing on its assertion that claims
`1–13 of the ’906 patent are unpatentable.
`
`
`6 We acknowledge that in IPR2018-00975, we found Petitioner established
`a reasonable likelihood of prevailing on its challenge over the combination
`of Izzi, Brandstrom (EP 1 344 874 A2, published Mar. 7, 2003), and
`Svirsky. In that case, unlike here, Petitioner and its declarant sufficiently
`explained why a person of ordinary skill in the art, reading Brandstrom,
`would have extended the cover across the bowl of Izzi’s coring sleeve. See,
`e.g., IPR2018-00975, Ex. 1021 ¶ 110. Petitioner, however, does not rely on
`Brandstrom in this ground and, therefore, offered no such explanation here.
`We will not make arguments on behalf of Petitioner; nor will we incorporate
`arguments made in another proceeding. Thus, our decision in this
`proceeding is not inconsistent with our decision in IPR2018-00975.
`17
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`IPR2018-00973
`Patent 8,347,906 B1
`
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the Petition is denied as to all challenged claims of
`the ’906 patent and no trial is instituted.
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`18
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`IPR2018-00973
`Patent 8,347,906 B1
`
`PETITIONER:
`
`Johanna M. Wilbert
`Louis A. Klapp
`Michael T. Piery
`QUARLES & BRADY LLP
`johanna.wilbert@quarles.com
`louis.klapp@quarles.com
`michael.piery@quarles.com
`
`
`PATENT OWNER:
`
`Ryan D. Dykal
`Mark D. Schafer
`SHOOK, HARDY & BACON L.L.P.
`rdykal@shb.com
`mschafer@shb.com
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`19
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