Trials@uspto.gov Paper 9
`571.272.7822 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 IPR2018-00975
`Patent 8,347,906 B1
`____________________
`
`
`Before RAE LYNN P. GUEST, TINA E. HULSE, and
`AVELYN M. ROSS, Administrative Patent Judges.
`
`ROSS, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`
`
`571.272.7822 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 IPR2018-00975
`Patent 8,347,906 B1
`____________________
`
`
`Before RAE LYNN P. GUEST, TINA E. HULSE, and
`AVELYN M. ROSS, Administrative Patent Judges.
`
`ROSS, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`
`
`
`IPR2018-00975
`Patent 8,347,906 B1
`
`
`INTRODUCTION
`I.
`Zurn Industries, LLC (“Petitioner”) filed a Petition requesting inter
`partes review of claims 14–29 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.”).
`We have authority to determine whether to institute an inter partes
`review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). An inter partes review may
`be instituted only upon a showing that “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). After considering the
`Petition, Preliminary Response, Petitioner’s Reply to the Patent Owner’s
`Preliminary Response (Paper 7, “Reply”), Patent Owner’s Sur Reply to
`Petitioner’s Reply (Paper 8, “Surreply”) and the evidence of record, we
`determine that Petitioner has demonstrated a reasonable likelihood of
`prevailing with respect to at least one claim challenged in the Petition.
`Accordingly, we institute an inter partes review.
`On April 24, 2018, the Supreme Court held that a final written
`decision under 35 U.S.C. § 318(a) must decide the patentability of all claims
`challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1360
`(2018); see Adidas AG v. Nike, Inc., 894 F.3d 1256, 1258 (Fed. Cir. 2018)
`(remanding for consideration of all challenged claims and asserted grounds
`set forth in the petition); see also USPTO, Guidance on the impact of SAS on
`AIA trial proceedings (Apr. 26, 2018), https://www.uspto.gov/patents-
`application-process/patent-trial-and-appeal-board/trials/guidance-impact-
`sas-aia-trial (“the PTAB will institute as to all claims or none [and] if the
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`PTAB institutes a trial, the PTAB will institute on all challenges raised in
`the petition.”). Accordingly, we institute inter partes review on all of the
`challenged claims and based on all of the grounds identified in the Petition.
`The following findings of fact and conclusions of law are not final,
`but are made for the purpose of determining whether Petitioner meets the
`threshold for initiating review. Any final decision shall be based on the full
`trial record, including any response timely filed by Patent Owner.
`Arguments not raised by Patent Owner in a timely filed response may be
`deemed waived, even if they were presented in the Preliminary Response.
`
`
`A. Related Proceedings
`The Petitioner identifies a concurrently filed petition for inter partes
`review, IPR2018-00973, as a related proceeding, in addition to a district
`court litigation styled Sioux Chief Mfg. Co., Inc. v. Zurn Indus., LLC and
`Rexnord Corporation, Case No. 1:18-cv-00163 (D. Del.). Pet. 1.
`
`
`The ’906 Patent (Ex. 1001)
`B.
`The ’906 patent is titled “Floor Drain Installation System.” Ex. 1001,
`1:1. The ’906 patent describes a floor drain installation system and methods
`for “installing inlet or outlet type utility fixtures such as drains or cleanouts.”
`Id. at 2:25–26. The installation system includes an adapter attached to
`conduit (or piping) and a coring sleeve. Id. at 2:26–28. The coring sleeve is
`configured to receive a plug or cover to seal the coring sleeve during a
`concrete pour. Id. at 2:29–51 (describing a plug or cap), 14:37–40
`(describing a “circular or disc shaped cover”). The plug and cover are sized
`to cover the bowl cavity of the coring sleeve and extend generally flush with
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`Patent 8,347,906 B1
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`an upper edge of the bowl. Id. at 16:3–7 (claim 1), 17:8–15 (claim 10),
`17:55–59 (claim 14), 18:55–60 (claim 21), 19:36–40 (claim 25), and 20:34–
`39 (claim 29). The coring sleeve is threaded and further configured to
`receive a utility fixture, such as a drain head, which may be raised or
`lowered so that the fixture is flush with the finished concrete slab. Id. 2:46–
`51. By way of example, Figures 1 and 2 of the ’906 patent are reproduced
`below.
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`Patent 8,347,906 B1
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`Figure 1 depicts an exploded illustration of the claimed utility access fixture
`installation system using the “plug” embodiment. As shown in Figure 1, the
`system includes an adapter 16 that may be attached to both the drain pipe 7
`and the utility access fixture, including coring sleeve 18 and plug 20. Id. at
`4:33–62. Figure 2 depicts an exploded illustration of a floor drain 5 that
`may be inserted into the coring sleeve to provide a utility access fixture that
`is flush with the finished floor. Id. at 4:41–66
`
`
`Illustrative Claims
`C.
`Claims 14, 21, 25, and 29 are the independent claims subject to the
`instant inter partes review. Claims 14 and 21 are illustrative of the claimed
`subject matter and are reproduced below:
`
`14. A method of installing a utility access fixture on a conduit
`in a slab of poured material, the utility access fixture having an
`externally threaded cylindrical stem and a head projecting
`radially outward from an upper end of the stem, the method
`comprising the steps of:
`a) connecting a coring sleeve to the conduit, the coring
`sleeve having a bowl formed at an upper end thereof and
`projecting radially outward from a lower, internally threaded
`coring sleeve stem, the bowl defining a bowl cavity;
`b) installing a utility access fixture in the coring sleeve by
`threading the externally threaded stem of the utility access fixture
`into the internally threaded coring sleeve stem such that the head
`of the utility access fixture is received within the bowl cavity of
`the coring sleeve;
`c) securing a cover over the utility access fixture, the cover
`sized such that an upper surface of the cover extends generally
`flush with an upper edge of the bowl and covers the bowl cavity;
`d) pouring the poured material around said conduit;
`e) finishing the poured material to a level generally flush
`with said upper surface of the cover to form the slab, the bowl
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`Patent 8,347,906 B1
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`and the cover acting in combination to form a void in the poured
`material;
`f) allowing the poured material to harden;
`g) removing the cover to provide access to the utility
`access fixture; and
`h) adjusting the height of the utility access fixture relative
`to the coring sleeve until an upper surface of the utility access
`fixture extends generally flush with a finished surface.
`Ex. 1001, 14:40–15:4.
`
`21. A utility access fixture installation system for mounting a
`utility access fixture in fluid communication with a conduit
`comprising:
`a) a utility access fixture having a fixture head projecting
`radially outward from a central fixture mounting stem, the
`conduit presenting a free end below the intended surface level of
`a poured slab,
`b) a coring sleeve having a lower portion connectable in
`fluid communication with said conduit and a bowl including an
`annular flange projecting outward from said lower portion and
`an annular wall projecting upward from an outer portion of said
`annular flange, said annular wall spaced outward from said
`coring sleeve stem by said annular flange, 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 plug removably positionable in said bowl cavity, prior
`to reception of the utility access fixture within said coring sleeve,
`said plug sized to extend across and cover said bowl cavity and
`such that an upper surface of said plug extends generally flush
`with an upper edge of said bowl; and
`d) wherein said fixture head of said utility access fixture is
`sized to extend across and cover said bowl cavity and is axially
`adjustable relative to said coring sleeve when said central fixture
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`mounting stem is received in said coring sleeve upon removal of
`said plug.
`Id. at 14:34–14:65.
`
`
`Evidence Relied Upon
`D.
`Petitioner identifies the following references as prior art in the
`grounds of unpatentability:
`
`(1) US 4,067,072 to Lewis B. Izzi, issued January 10, 1978
`(“Izzi”) (Ex. 1006).
`
`
`(2) EP 1 344 874 A2 to Lars Brandstrom, published
`September 17, 2003 (“Brandstrom”) (Ex. 1002).
`
`
`(3) US 2,324,545 to Bennett Svirsky, issued July 20, 1943
`(“Svirsky”) (Ex. 1003).
`
`
`(4) US 3,445,973 to Robert E. Stone, issued May 27, 1969
`(“Stone”) (Ex. 1004).
`
`
`(5) US 4,614,065 to David J. Papp, issued September 30,
`1986 (“Papp”) (Ex. 1005).
`
`
`(6) US 6,076,559 to Gregory N. Castillo et al., issued June
`20, 2000 (“Castillo”) (Ex. 1007).
`
`
`(7) US 4,620,330 to Lewis B. Izzi, Sr., issued November 4,
`1986 (“Izzi Sr.”) (Ex. 1020).
`The Petition is also supported by the Declaration of Mr. Matthew
`
`Isaac Stein. Ex. 1021.
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`The Asserted Grounds of Unpatentability
`E.
`Petitioner challenges the patentability of claims 14–29 of the ’906
`
`patent on the following grounds (see Pet. 4–5):
`
`Claim(s)
`14
`14
`
`20
`
`15–19
`
`14 and 15
`14 and 15
`15–19
`
`Basis
`35 U.S.C. § 103
`35 U.S.C. § 103
`
`35 U.S.C. § 103
`
`35 U.S.C. § 103
`
`35 U.S.C. § 103
`35 U.S.C. § 103
`35 U.S.C. § 103
`
`20
`
`35 U.S.C. § 103
`
`21–23 and 25–29
`24
`
`
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`35 U.S.C. § 103
`35 U.S.C. § 103
`
`References
`Izzi and Brandstrom
`Izzi, Brandstrom, and
`Svirsky
`Izzi, Brandstrom, Svirsky,
`and Papp
`Izzi, Brandstrom, Svirsky,
`Papp, and Stone
`Izzi and Castillo
`Izzi, Castillo, and Svirsky
`Izzi, Castillo, Svirsky,
`and Stone
`Izzi, Castillo, Svirsky,
`and Papp
`Izzi and Izzi Sr.
`Izzi, Izzi Sr., and Papp
`
`II. ANALYSIS
`We organize our analysis into several sections. In this section we
`discuss the applicable law. Then, in Section II. A., we address the level of
`skill in the art at the time of the invention. Next, we discuss claim
`construction (Section II. B.). In Section II. C., we address whether to
`exercise our discretion under 35 U.S.C. § 325(d). In Sections II. D–F, taking
`into account the information presented at this stage of the proceeding, we
`consider whether Petitioner makes out the threshold showing for inter partes
`review for the challenges to at least one claim based on the primary
`combination of Izzi and Brandstrom, i.e., Ground 1–4 (claims 14–20). In
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`Sections II. G–I, taking into account the information presented at this stage
`of the proceeding, we consider whether Petitioner makes out the threshold
`showing for inter partes review for the challenges to at least one claim based
`on the primary combination of Izzi and Castillo, i.e., Grounds 5–8 (claims
`14–20). In Sections II. J and K, taking into account the information
`presented at this stage of the proceeding, we consider whether Petitioner
`makes out the threshold showing for inter partes review for the challenges to
`at least one claim based on the primary combination of Izzi and Izzi Sr., i.e.,
`Grounds 9 and 10 (claims 21–29). And lastly, in Section II. L, we address
`Patent Owner’s arguments regarding secondary considerations of non-
`obviousness.
`“In an [inter partes review], the petitioner has the burden from the
`onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`Cir. 2016) (citing 35 U.S.C. § 312(a) (3) (“requiring inter partes review
`petitions to identify ‘with particularity. . . the evidence that supports the
`grounds for the challenge to each claim’”)). This burden of persuasion never
`shifts to the patent owner. See Dynamic Drinkware, LLC v. Nat’l Graphics,
`Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in
`inter partes review). Furthermore, a petitioner cannot satisfy its burden of
`proving obviousness by employing “mere conclusory statements.” In re
`Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).
`A claim is unpatentable under 35 U.S.C. § 103 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 of the invention to a
`person having ordinary skill in the art. KSR Int’l Co. v. Teleflex Inc., 550
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`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 ordinary skill in the art; and (4) objective evidence
`of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`Consideration of the Graham factors “helps inform the ultimate obviousness
`determination.” Apple Inc. v. Samsung Elecs. Co., 839 F.3d 1034, 1048
`(Fed. Cir. 2016) (en banc), cert. denied (Nov. 6, 2017). To prevail in an
`inter partes review, Petitioner must explain how the proposed combinations
`of prior art would have rendered the challenged claims unpatentable.
`At this preliminary stage, we determine whether the information
`presented shows a reasonable likelihood that Petitioner would prevail in
`establishing that at least one of the challenged claims would have been
`obvious over the proposed prior art.
`We analyze the challenges presented in the Petition in accordance
`with the above-stated principles.
`
`
`Level of Ordinary Skill in the Art
`A.
`We review the grounds of unpatentability in view of the
`understanding of a person of ordinary skill in the art at the time of the
`invention. Graham, 383 U.S. at 17. Petitioner submits that the ordinarily
`skilled artisan would have possessed “a bachelor’s degree in mechanical
`engineering (or its equivalent work experience or coursework) and one year
`of work experience related to the design, installation, evaluation, or the use
`of plumbing products or systems.” Pet. 14 (citing Ex. 1021 ¶¶ 33). Patent
`Owner does not disagree with Petitioner’s description of the level of
`
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`ordinary skill in the art. See generally Prelim. Resp. Patent Owner contends
`that “for the purposes of its Preliminary Response, Petitioner’s arguments
`fail even under its recited definition of a POSA.” Id. at 20.
`Based on the record currently presented, we accept Petitioner’s
`definition. 1 Further, we find that the prior art of record reflects 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). Any final determination pertaining to the
`level of ordinary skill in the art, however, shall be made on the full trial
`record.
`
`
`Claim Construction
`B.
`We must interpret the claims of the ’906 patent using the “broadest
`reasonable construction in light of the specification of the patent.” 37 C.F.R.
`§ 42.100(b) (2016); accord Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct.
`2131, 2144–46 (2016) (upholding the use of the broadest reasonable
`construction standard in inter partes review).
`Petitioner provides a proposed construction for the term “generally
`flush.” Pet. 6. According to Petitioner, “generally flush” means
`“approximately level or even with.” Id. Petitioner argues the specification
`supports its construction because it consistently describes as “flush” surfaces
`that are level or even with another surface. Id. (citing Ex. 1001, 7:58–62,
`9:10–11, Figs. 4, 6, and 7). Petitioner also argues that the prosecution
`
`
`1 For purposes of this Decision, we find that Mr. Stein is qualified to opine
`as to the knowledge of a person of ordinary skill in the art at the time of the
`invention. See Ex. 1021 ¶¶ 2–9 (statement of qualifications); id. at
`Appendices 1–2 (curriculum vitae).
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`history supports its construction. Id. at 7–8. Patent Owner does not provide
`an alternative construction and instead adopts Petitioner’s proposed
`construction for purpose of the Preliminary Response. See Prelim. Resp.
`20–21.
`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 (explaining “the cover 320
`may be constructed to snap in place within or over the receiver rim 67”).
`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 Nidec Motor Corp. v. Zhongshan Broad
`Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs.,
`Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly
`those terms need be construed that are in controversy, and only to the extent
`necessary to resolve the controversy.”)).
`
`
`35 U.S.C. § 325(d)
`C.
`Institution of an inter partes review is discretionary. See Harmonic
`Inc. v. Avid Tech, Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (explaining
`“the PTO is permitted, but never compelled, to institute an IPR
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`proceeding”). 35 U.S.C. § 325(d) provides that “[i]n determining whether to
`institute or order a proceeding . . . the 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.”
`In evaluating whether the same or substantially the same prior art or
`arguments were previously presented to the Office under § 325(d), the Board
`has considered a number of non-exclusive factors, including, for example:
`(a) the similarities and material differences between the asserted
`art and the prior art involved during examination;
`(b) the cumulative nature of the asserted art and the prior art
`evaluated during examination;
`(c) the extent to which the asserted art was evaluated during
`examination, including whether the prior art was the basis
`for rejection;
`(d) the extent of the overlap between the arguments made
`during examination and the manner in which Petitioner
`relies on the prior art or Patent Owner distinguished the
`prior art;
`(e) whether Petitioner has pointed out sufficiently how the
`Examiner erred in its consideration of the asserted prior art;
`and
`(f) the extent to which additional evidence and facts presented
`in the Petition warrant reconsideration of the asserted prior
`art or arguments.
`Becton, Dickinson & Co. v. B. Braun Melsungen AG, Case IPR2017-01586,
`slip op. 17–18 (PTAB Dec. 15, 2017) (Paper 8) (Informative) (“the Becton
`Dickinson factors”).
`Patent Owner contends that all six Becton Dickinson factors weigh
`against institution because the Petition relies on prior art and issues already
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`considered by the Patent Office. Prelim. Resp. 21–22. We are not
`persuaded for the reasons set forth below.
`Patent Owner’s arguments are three-fold. First, Patent Owner argues,
`with respect to claim 14, that the instant combination of Izzi in view of the
`secondary references, Brandstrom, Castillo, and/or Svirsky, are cumulative
`of the combination of references considered by the Examiner during
`prosecution of the ’906 patent. Id. at 23–29. Second, Patent Owner asserts
`that the combination advanced by Petitioner is cumulative over the prior art
`addressed by the Examiner in the reexamination of US Patent No. 7,735,512
`(“the ’512 patent”), the parent to the ’906 patent. Id. at 30–34. Lastly, and
`relevant to independent claims 21, 25, and 29, Patent Owner contends that
`during prosecution of the ’512 patent, the Examiner considered a
`combination of Izzi Sr. and a different Izzi reference (Izzi ’9392), which is
`similar to the combination presented by Petitioner for Grounds 9 and 10.
`As to the first argument, Patent Owner urges that while Izzi was not
`considered during the prosecution of the ’906 patent, the “Examiner stated
`that the prior art taught essentially all claimed features ‘but fail[ed] to
`disclose the cover removably positionable to extend across the bowl cavity
`above a top surface of the utility access fixture such that an upper surface of
`the cover extends generally flush with an upper edge of the bowl.’” Id. at
`24–25. Patent Owner notes the Examiner relied on Papp Jr.3 to describe a
`cover positioned over the utility fixture. Id. at 25. Therefore, Patent Owner
`reasons that, because Petitioner’s combination includes Izzi, which describes
`
`
`2 Lewis B. Izzi, US 4,146,939, issued April 3, 1979 (“Izzi ’939”).
`3 David J. Papp, Jr., US 4,883,590, issued November 28, 1989 (“Papp Jr.”).
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`all features except for the cover, and Brandstrom, Castillo4 and/or Svirsky,
`which each individually or collectively supply a cover, the presently asserted
`art is cumulative over the combination including Papp Jr. and the Examiner
`considered substantially the same combination as Petitioner proposes here.
`Id. at 27.
`During the ’906 prosecution, the Examiner considered the
`combination of Boosey5 and Papp Jr., among others. Ex. 2002, 3. The
`Examiner allowed claims to issue over the combination of Boosey and Papp
`Jr. because neither reference “disclose[d] the cover removably positionable
`to extend across the bowl cavity above a top surface of the utility access
`fixture such that an upper surface of the cover extends generally flush with
`an upper edge of the bowl.” Ex. 2004, 6. Rather, the Examiner determined
`that Papp Jr. taught a cover positioned across a cavity but not one that was
`flush with an upper edge of the bowl. Id. As discussed below in further
`detail, the cover in the prior art relied upon by Petitioner arguably has the
`feature found missing in the teachings of Papp Jr.—i.e., a cover that is flush
`with an upper edge of the bowl—and the prior art here was not evidence
`considered by the Examiner in the prosecution of the ’906 patent.
`Accordingly, the Examiner did not consider the same or substantially the
`same evidence and arguments now presented by the Petitioner.
`
`
`4 We agree that the combination of Izzi and Castillo (Grounds 5–6 as applied
`to claim 14) presents similar issues to those considered by the Office. But
`we further determine (see infra p. 30–31) that the combination of Izzi and
`Castillo, as presented by the Petitioner, fails to demonstrate a reasonable
`likelihood that each of the limitations of independent claim 14 would have
`been known or suggested by the prior art.
`5 Edward W.N. Boosey, US 2,471,301, issued May 24, 1949 (“Boosey”).
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`With respect to Patent Owner’s second argument, Patent Owner
`argues that the Izzi/Minnick6 combination, which was raised during the
`reexamination of the ’512 patent, is, for the most part, identical to the
`combination of references presented in the instant Petition. Prelim. Resp.
`30. Specifically, Patent Owner asserts that the primary reference Izzi is the
`same in both instances and that the secondary references—Minnick in the
`’512 reexamination and Brandstrom, Castillo, and/or Svirsky in this inter
`partes review—are each cited for the same teaching, i.e., a cover. Thus, in
`the reexamination, the Examiner considered an Izzi-plus-cover combination
`and here, the request for inter partes review is based on an Izzi-plus-cover
`combination.
`But this inquiry is not as simple as the Patent Owner suggests. We
`observe that in the ’512 reexamination, the Examiner’s stated reasons for
`allowance are that “the geometry and structural arrangement associated with
`the coring sleeve . . . and fixture . . . [of Izzi and Minnick] fail[] to satisfy the
`relative size requirements of claim 6.”7 Ex. 2015, 3. As Patent Owner
`illustrates effectively, the combination of Minnick and Izzi results in the
`cover placed over only the fixture and not the bowl cavity of the coring
`sleeve. Prelim. Resp. 31 (modifying Fig. 4 of Izzi and Fig. 6 of Minnick).
`
`
`6 Michael W. Minnick, US 6,687,925 B2, issued February 10, 2004
`(“Minnick”).
`7 Claim 6 of the ’512 reexamination was amended to include language nearly
`identical to that at issue here. Compare e.g., Ex. 1001, 17:55–59 with
`Ex. 2014, 2. Specifically, claim 6 recites a “plug sized to extend across and
`cover said bowl cavity with an upper surface of said plug extending
`generally flush with an upper edge of said bowl.” Ex. 2014, 2.
`16
`
`
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`IPR2018-00975
`Patent 8,347,906 B1
`
`Here, however, the Petitioner contends that Brandstrom or Castillo8, alone or
`in combination with Svirsky, suggests a cover that covers the bowl cavity of
`the coring sleeve and extends generally flush with the upper edge of the
`bowl cavity. See Pet. 16 (illustrating cover 27 extending across and flush
`with flange 9), 27 (suggesting cover plate 36 extending across the bowl
`shaped basin 17), 41 (modifying the cover of Castillo to extend across the
`rim 34 of barrel section 22 of Izzi), and 52 (combining Castillo and Svirsky
`in a similar manner as Brandstrom). Therefore, the Izzi-plus-cover
`combination presented by Petitioner in the instant inter partes review
`involves different prior art purporting to have a different structural
`arrangement than the combination considered by the Examiner.
`As to the third argument, Patent Owner contends that the present
`combination of Izzi and Izzi Sr. is substantially similar to the combination of
`Izzi ’939 and Izzi Sr. considered by the Examiner during the prosecution of
`the ’512 patent. Prelim. Resp. 34–37. In particular, Patent Owner states that
`the “Petitioner mimics the argument made by the Examiner during the
`prosecution of the ’512 Patent, arguing that the plug from Izzi Sr. could be
`applied to the drain in Izzi to render claims 21, 25, and 29 obvious” and fails
`“to identify any element or suggestion that was not already considered
`
`
`8 While we disagree with Petitioner’s assertion (see infra p. 30–33) that
`Castillo suggests modifying the protective cover to cover the bowl cavity
`and extend generally flush with the upper edge of the bowl cavity, as
`discussed in further detail below, the asserted combination of Izzi and
`Castillo (as modified in the figure at Pet. 47) and the combination of Izzi,
`Castillo and Svirsky, are not the same or substantially the same art or
`arguments as those before the Examiner.
`17
`
`
`
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`IPR2018-00975
`Patent 8,347,906 B1
`
`twice—or, in the case of Izzi Sr., thrice—by the Office.” Id. at 37 (footnote
`omitted).
`To obtain allowance, the Patent Owner amended the claims of the
`’512 patent to provide that the fixture head of the utility access fixture was
`received within the bowl cavity. See e.g., Ex. 2028, 2. Patent Owner further
`argues that “the drain plate or strainer plate of Izzi would not be considered
`a fixture head” and further that “Izzi [does not] disclose a fixture having ‘a
`fixture head received within said bowl cavity.” Id. at 17. These ’512 patent
`claims, ultimately allowed by the Examiner, did not include the structural
`arrangement associated with the coring sleeve and fixture—that is, a plug
`that covers the bowl cavity of the coring sleeve and extends generally flush
`with the upper edge of the bowl cavity—required by claims 21, 25, and 29
`of the ’906 patent. Furthermore, as the Petitioner explains, the disclosure in
`Izzi is different from the disclosure in Izzi ’939 in a significant way.
`Surreply 4. In particular, Petitioner argues that Izzi ’939 “does not include
`Figure 4 of Izzi which shows a utility access fixture positioned within a
`coring sleeve so that when a plug replaces the fixture, the plug extends
`across the bowl and flush with [the] upper edge,” claim limitations not
`present or at issue during the ’512 patent examination. Id. (citing Ex. 1006).
`Thus, the scope of the claims as well as the arguments and evidence at issue
`in the ’512 patent prosecution are not substantially similar to those presented
`by the Petitioner in the instant inter partes review.
`For the reasons set forth above, we decline to exercise our discretion
`to deny institution on this Petition under 35 U.S.C. § 325(d).
`
`
`
`
`18
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`IPR2018-00975
`Patent 8,347,906 B1
`
`
`D. Ground I – Challenges based on Izzi and Brandstrom (claim 14)
`Petitioner contends that the subject matter of claim 14 of the ’906
`
`patent is obvious over the combination of Izzi and Brandstrom. Pet. 15.
`
`1.
`
`Overview of the Prior Art
`a.
`Izzi (Ex. 1006)
`Izzi describes a three-part drain assembly “which has a novel
`
`interfitting structure enabling it to be used with different sized pipes” and a
`threaded drain assembly section that permits the drain plate to be adjusted to
`a desired height. Ex. 1006, Abstract; id. at 1:24–27. Figure 4, reproduced
`below illustrates one embodiment of Izzi.
`
`
`Figure 4 illustrates “a vertical central sectional view of the invention” (id. at
`1:50–52) where pipe P is connected to a barrel section 28 of a drain outlet 10
`(not labeled) (formed by inner and outer annular shoulders 18 and 20 and
`outwardly inclined bottom 26) which terminates at the horizontal rim 34. Id.
`at 1:65–2:10. Inserted into the barrel section 28 is the drain supporting
`
`
`
`19
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`IPR2018-00975
`Patent 8,347,906 B1
`
`collar 14 (not labeled) comprised of open barrel 52 (not labeled). The collar
`includes incline 56, external threads 54, and terminates at an outer rim 58,
`which supports a drain plate in a recess on the rim. Id. at 2:33–39. The
`height of the drain plate (and its supporting barrel) can be adjusted “with
`respect to the drain outlet 10 by means of the threads 54, 24 (Fig. 4).” Id. at
`2:40–44.
`
`
`Brandstrom (Ex. 1002)
`b.
`Brandstrom similarly describes a floor drainage system that permits
`
`vertical adjustment of an extension ring and has a cover “such that material
`from the construction, preferable cast compound, is prevented from falling
`down into the interior of the floor gully.” Ex. 1002 ¶ 10. The system
`includes:
`
`a gully member with a cup-shaped inlet portion, a tubular outlet
`portion and a substantially in a radial direction protruding flange
`on top of the inlet portion, and of an extension ring member with
`a tubular portion protruding down into the inlet portion of the
`gully member and a flange protruding substantially in a radial
`direction from the upper end of the tubular portion protruding
`upwards from said inlet portion, into the floor or roof structure
`with at least the flange of the extension ring substantially
`horizontal and flush with the top surface of the floor or roof
`structure.
`See id. ¶ 1. Figure 1 of Brandstrom illustrates these features and is
`reproduced below.
`
`
`
`20
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`IPR2018-00975
`Patent 8
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