UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`COOPER CROUSE-HINDS, LLC
`Petitioner
`
`v.
`
`CMP PRODUCTS LIMITED,
`Patent Owner
`
`____________
`
`Case IPR2018-00994
`Patent 8,872,027
`
`____________
`
`Filed: August 15, 2018
`
`
`PATENT OWNER CMP PRODUCTS LIMITED’S PRELIMINARY
`RESPONSE
`
`
`
`
`
`

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`TABLE OF CONTENTS
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`Page No.
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`I.
`II.
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`INTRODUCTION AND SUMMARY OF THE RESPONSE ....................... 1
`THE ‘027 PATENT ......................................................................................... 5
`STATE OF THE INDUSTRY PRIOR TO THE INVENTION ............................... 5
`THE DISCLOSURE OF THE ‘027 PATENT .................................................. 8
`SUMMARY OF THE PROSECUTION HISTORY OF THE ‘027 PATENT .......12
`III. CLAIM CONSTRUCTION ..........................................................................17
`1.
`“Cable Gland” ...........................................................................17
`2.
`“Plurality of Cores of Cable” ....................................................19
`3.
`“Elongated Dispenser” ..............................................................20
`4.
`“Resin Well” .............................................................................21
`IV. THE PETITION FAILS TO ASSERT A BASIS FOR INSTITUTING A
`TRIAL ............................................................................................................22
`PETITIONER MUST DEMONSTRATE A REASONABLE LIKELIHOOD IT
`WOULD PREVAIL ..................................................................................22
`THE BOARD MUST TAKE INTO ACCOUNT WHETHER SUBSTANTIALLY
`THE SAME PRIOR ART OR ARGUMENTS WERE CONSIDERED BY THE PTO
` .............................................................................................................22
`THE LAW ON OBVIOUSNESS .................................................................24
`THE LEVEL OF SKILL IN THE ART .........................................................25
`V. GROUND 1: THE COMBINATION OF BABIARZ AND EVERITT FAILS
`TO RENDER CLAIMS 1, 2, 4 AND 10-13 OBVIOUS ...............................26
`THE DIFFERENCE BETWEEN BABIARZ AND EVERITT AND THE CLAIMED
`INVENTIONS ..........................................................................................26
`1.
`Babiarz ......................................................................................26
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`Patent Owner’s Preliminary Response – IPR2018-00994
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`2.
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`3.
`
`2.
`The CHICO SpeedSeal Product Manual ..................................30
`Everitt ........................................................................................33
`3.
`THE COMBINATION OF BABIARZ AND EVERITT FAILED TO DISCLOSE
`MULTIPLE ELEMENTS OF CLAIMS 1, 2, 4 AND 10-13 .............................39
`1.
`The Combination Does Not Disclose “at least one flexible
`barrier member having at least one respective aperture
`therethrough adapted to stretch to engage a plurality of cores of
`a cable...” Claim Element 1[7] ..................................................40
`The Combination of Babiarz and Everitt Does Not Disclose a
`“Curable Liquid Component” in a cable gland Claim Element
`1[1] ............................................................................................42
`The Combination of Babiarz And Everitt Would Not Disclose
`or Teach the Recited “Second Barrier Apparatus” or “Dispenser
`Apparatus” Claim Element 1[6] ...............................................44
`PETITIONER PROVIDES NO RATIONALE TO COMBINE BABIARZ AND
`EVERITT ................................................................................................45
`PETITIONERS’ HINDSIGHT ANALYSIS WOULD NOT HAVE
`MOTIVED ONE OF ORDINARY SKILL TO COMBINE BABIARZ
`WITH EVERITT ..................................................................................48
`VI. GROUND 2 FAILS TO PROVIDE ANY RATIONALE BASIS TO
`RENDER CLAIM 5 OBVIOUS....................................................................49
`VII. GROUND 3: THE COMBINATION OF BABIARZ, EVERITT, AND
`WIDMAN FAIL TO TEACH OR DISCLOSE THE ELEMENTS OF
`CLAIMS 14-19 OF THE ‘027 PATENT ......................................................50
`THE SCOPE AND CONTENT OF WIDMAN .................................................50
`1. Widman’s Membrane (Like Everitt) Fails to Disclose the
`Claimed “flexible barrier member…” ......................................50
`2. Widman Does not Disclose a Curable Liquid Component to
`Expel Air ...................................................................................51
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`Patent Owner’s Preliminary Response – IPR2018-00994
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`3. Widman Does Not Disclose an Aperture that Engages the Cores
`of a Cable ..................................................................................52
`PETITIONER FAILS TO PROVIDE ANY RATIONALE TO COMBINE BABIARZ,
`EVERITT AND WIDMAN...........................................................................54
`PETITIONER FAILS TO DEMONSTRATE HOW THE COMBINATION OF
`WIDMAN, BABIARZ AND EVERITT RENDER OBVIOUS ELEMENTS OF CLAIMS
`14-19 ....................................................................................................56
`1.
`There is No Disclosure of the “flexible barrier member” or
`“engaging a plurality of cores of a cable” Claim Elements
`14[8], 16[2] and 16[3] ...............................................................56
`2. Widman, Babiarz and Everitt Do Not Teach Dispensing a
`Curable Liquid to Expel Air from the Cable Gland Claim
`Elements 14[10], 16(preamble) and 16[1] ................................57
`THE NATIONAL ELECTRIC CODE (“NEC”) DOES NOT PROVIDE A
`MOTIVATION FOR ARRIVING AT THE CLAIMED INVENTIONS ................59
`VIII. GROUND 4: THE COMBINATION OF 3M AND WIDMAN FAIL TO
`RENDER CLAIMS 1, 2, 4, 14 AND 16-19 OBVIOUS ...............................60
`THE 3M PRODUCT CATALOG ................................................................60
`THERE IS NO RATIONALE TO COMBINE 3M WITH WIDMAN ..................61
`THE COMBINATION OF 3M AND WIDMAN FAILS TO DISCLOSE ESSENTIAL
`ELEMENTS OF CLAIMS 1, 2, 4, 14 AND 16-19 ........................................62
`IX. GROUND 5: THE COMBINATION OF 3M, WIDMAN AND DUNN
`FAILS TO RENDER CLAIM 5 OBVIOUS .................................................64
`X. GROUND 6: THE COMBINATION OF 3M, WIDMAN AND EVERITT
`FAILS TO RENDER CLAIMS 10-13 AND 15 OBVIOUS .........................64
`XI. SECONDARY CONSIDERATIONS WEIGH AGAINST A FINDING OF
`OBVIOUNESS ..............................................................................................64
`CROUSE-HINDS COPIED CMP PRODUCTS’ CABLE GLANDS ...................65
`INDUSTRY PRAISE WEIGHS IN FAVOR OF NON-OBVIOUSNESS ..............66
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`XII. CONCLUSION ..............................................................................................68
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`Patent Owner’s Preliminary Response – IPR2018-00994
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`TABLE OF AUTHORITIES
`
`Page No.
`
`
`Alcon Research, Ltd. v. Apotex, Inc.,
`687 F.3d 1362 (Fed. Cir. 2012) ............................................................................. 47
`
`Amkor Technology, Inc. v. U.S. Int’l Trade Commission,
`692 F.3d 1250 (Fed. Cir. 2012) ............................................................................. 45
`
`Apple Inc. v. Samsung Elecs. Co., Ltd.,
`839 F.3d 1034, 1053 (Fed. Cir. 2016) ................................................................. 66
`
`CFMT, Inc. v. Yieldup Intern. Corp.,
`349 F.3d 1333, 1342 (Fed. Cir. 2003) .................................................................... 24
`
`Crocs, Inc., v. International Trade Comm’n,
`598 F.3d 1294 (Fed. Cir. 2010) .............................................................................. 45
`
`Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131 (2016) ............................................................................................. 17
`
`
`Elbit Sys. of Am., LLC v. Thales Visionix, Inc.,
`881 F.3d 1354 (Fed. Cir. 2018)............................................................................... 26
`
`Eurand, Inc. v. Mylan Pharms., Inc. (In re Cyclobenzaprine Hydrochloride
`Extended-Release Capsule Patent Litig.),
`676 F.3d 1063, 1079 (Fed. Cir. 2012 ....................................................................... 65
`
`Gen. Plastics Industry Co., Ltd. v. Canon Kabushiki Kaisha
`IPR2016-01357, Paper 19, at 16-17 (PTAB Sept. 6, 2017) .................................. 22
`
`Graham v. John Deere, Co.,
`383 U.S. 1 (1966) ..................................................................................................... 24
`
`In Re Cronyn,
`890 F.2d 1159, 1160 (Fed. Cir. 1989) ................................................................. 29
`
`In Re Royka,
`490 F.2d 981, 985 (CCPA 1974) ............................................................................. 25
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`
`In Re Smith Int'l, Inc.,
`871 F.3d 1375, 1382-83 (Fed. Cir. 2017) ............................................................... 17
`
`In Re Vans,
`844 F.3d 1359, 1361 (Fed. Cir. 2017) ............................................................... 41, 56
`
`Insite Vision, Inc. v. Sandoz, Inc.,
`783 F.3d 853, 859 (Fed. Cir. 2015).......................................................................... 49
`
`Intelligent Bio-Systems, Inc., v. Illumina Cambridge Ltd.
`821 F.3d 1359 (Fed. Cir. 2016)............................................................................... 25
`
`Intercontinental Great Brands LLC v. Kellogg N. Am. Co.,
`869 F.3d 1336 (Fed. Cir. 2017)................................................................................ 65
`
`Intri-Plex Technologies, Inc v. Saint-Gobain Performance Plastics,
`IPR2014-00309 ....................................................................................................... 65
`
`KSR Int’l. Co. v. Teleflex,
`550 U.S. 398, 401, 418, 420 (2007) .................................................................. 24, 45
`
`Phillips v. AWH Corp.,
`415 F.3d 1303, 1327 (Fed. Cir. 2005) ..................................................................... 21
`
`Plantronics, Inc. v. Aliph, Inc.,
`724 F.3d 1343, 1355 (Fed. Cir. 2013) .................................................................... 64
`
`Prism Pharma Co. v. Choongwee Pharma Corp.,
`IPR2014-00315, Paper 14 (July 8, 2014) ............................................................... 22
`
`Proctor & Gamble Co. v. Teva Pharm. USA, Inc.,
`566 F.3d 989, 994 (Fed. Cir. 2009) ......................................................................... 49
`
`The Scotts Company, LLC v. ENCAP, LLC,
`Case IPR 2013-00491 (Paper 9) (PTAB, Feb. 5, 2013) ......................................... 62
`
`Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contractors USA, Inc.,
`617 F.3d 1296, 1306 (Fed. Cir. 2010) .................................................................. 65
`
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`
`Vandenberg v. Dairy Equip. Co.,
`740 F.2d 1560, 1567 (Fed. Cir. 1984) .................................................................... 65
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`
`
`Exhibit 2001
`CMP0008
`
`Exhibit 2002
`CMP0684
`
`Exhibit 2003
`CMP0692
`
`Exhibit 2004
`CMP0704
`
`Exhibit 2005
`CMP0727
`
`Exhibit 2006
`CMP0747
`
`Exhibit 2007
`CMP0793
`
`Exhibit 2008
`CMP0849
`
`Exhibit 2009
`CMP0861
`
`Exhibit 2010
`CMP-0863
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`Patent Owner’s Preliminary Response – IPR2018-00994
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`EXHIBIT LIST
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`U.S. Patent 8,872,027 (“the ‘027 Patent”) pages CMP0001-
`
`File History of the ‘027 Patent
`
`Brochure for Terminator II TMCX
`
`
`
`
`
`pages CMP0009-
`
`pages CMP0685-
`
`U.S. Patent 8,692,139 (“the ‘139 Patent”)
`
`pages CMP0693-
`
`U.S. Patent 8,969,741 (“the ‘741 Patent”)
`
`pages CMP0705-
`
`GB Patent 2 258 350
`
`
`
`Declaration of Lee Frizzell
`
`
`
`
`
`Complaint for Patent Infringement
`
`Brochure for CMP Rapid Ex
`
`CMP Installation Guide
`
`
`
`
`
`
`
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`
`
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`
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`pages CMP0728-
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`pages CMP0748-
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`pages CMP0794-
`
`pages CMP0850-
`
`pages CMP0862-
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`I.
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`Patent Owner’s Preliminary Response – IPR2018-00994
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`INTRODUCTION AND SUMMARY OF THE RESPONSE
`Patent Owner CMP Products Limited (“CMP”) respectfully requests that the
`
`Petition of Cooper Crouse-Hinds, LLC (“Petitioner”) for inter partes review (“IPR”)
`
`of Claims 1, 2, 4, 5, and 10-19 of the ‘027 Patent be denied in its entirety. The ‘027
`
`Patent solves at least two problems. First, the inventions solve the problem of safely
`
`mixing hazardous components of a curable liquid material and introducing the
`
`material directly between individual cores of a cable in a cable gland without
`
`exposing users to hazardous components of the curable liquid material. (Ex. 2001,
`
`‘027 Patent). It is important that the curable liquid material not only flow between
`
`the individual cores of the cable to prevent the creation of air gaps, but cure relatively
`
`quickly. Second, the inventions created a flexible barrier member to engage the
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`cores of a cable solving the problem of ensuring that the curable liquid material does
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`not flow/leak too far down the cores of a cable, because that would create undesirable
`
`air gaps.
`
`Prior art techniques to solve this problem in other devices that are not cable
`
`glands (such as conduit sealing fittings) used fiber wool material to create a sponge-
`
`like dam. However, fiber wool material is porous and creates undesirable air gaps.
`
`Further, prior art techniques included a barrier that surrounds the outer diameter of
`
`a cable but fail to seal the gaps between individual cores. One of the prior art
`
`references relied upon by the Petitioner, Everitt, recognized (but failed to solve) the
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`problem: “This type of pressure seal tends to leak as not all the gaps in the seal are
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`Patent Owner’s Preliminary Response – IPR2018-00994
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`reliably filed by the sealing compound.” (Ex. 1005, Col. 42-44).
`
`The invention represents an advance in the field in that it is easier to apply a
`
`liquid resin in a cable gland as a barrier to explosions and prevent flames from
`
`propagating through the gap in the cores of a cable. It was necessary to recognize
`
`that air gaps were a problem with the prior art, but a liquid resin could drive out air
`
`gaps between the cores of a cable. (Ex. 2002, Prosecution History at CMP0086, ¶9).
`
`(For ease of reference, Patent Owner herewith submits the prosecution history as a
`
`bates numbered exhibit, since Petitioner’s Exhibit 1002 lacks sequential numbering).
`
`It was also necessary to recognize that this could be achieved most efficiently by
`
`preventing the liquid resin from running down the gaps between the cores of a cable.
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`(Id.). Thus, the inventions improve upon the prior art by utilizing a flexible barrier
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`member having “at least one respective aperture therethrough adapted to stretch to
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`engage a plurality of cores of a cable to provide a barrier to passage of said curable
`
`liquid material along said cores.” (Ex. 2001, Claims 1 and 14). During the
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`prosecution of the ‘027 Patent, Mr. Mood, a person knowledgeable and experienced
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`in the field of encapsulation and design of cable glands, explained the benefit of the
`
`inventions:
`
`The invention provides a system that represents an advance in this field,
`that is easier to apply to create a cable gland that is effective as an
`explosion stopper, to block flames and gases emanating from an
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`Patent Owner’s Preliminary Response – IPR2018-00994
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`explosion from migrating through the gland. This is accomplished with
`a liquid resin system for use as the barrier material in the cable gland.
`(Ex. 2002, CMP0086, ¶9) Mr. Mood further stated that the prior art lacks disclosure
`
`of “a stretchy barrier with a hole sized so that it stretches around multiple conductors
`
`to form a barrier to the progression of resin filler along the outer surfaces of multiple
`
`conductors, and that this contribution to the art would not have been obvious to a
`
`person of ordinary skill in the art at the time it was invented.” (Id., CMP0086, ¶15).
`
`The Examiner agreed, finding that “[t]here is no motivation to combine the
`
`arts of record in order to establish a prima facie case of obviousness.” (Id.,
`
`CMP0042-43). The basis for allowance of the claims was found in the inventive
`
`feature of “at least one flexible barrier member having at least one respective
`
`aperture therethrough adapted to stretch to engage a plurality of cores of a cable to
`
`provide a barrier to passage of said curable liquid material along said cores.” (Id.).
`
`Petitioner’s argument on obviousness essentially amounts to the selection of
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`various items from different pieces of prior art and cobbling them together to form
`
`the claimed inventions (Petition at p. 80). Even at that, the combinations completely
`
`lack recited limitations of the claims. As explained herein, neither Babiarz, Widman
`
`nor Everitt, alone or in combination, disclose a membrane which “engages a plurality
`
`of cores of a cable to provide a barrier of passage of said curable liquid material
`
`along said cores” as well as other limitations. Moreover, the Petition falls short of
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`providing the necessary rationale required to combine the prior art which forms the
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`Patent Owner’s Preliminary Response – IPR2018-00994
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`basis of Grounds 1 through 6 of the Petition.
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`It has been said that “imitation is the sincerest form of flattery.” Many things
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`in a few words, Charles Colton (1820). As explained in CMP’s Complaint for patent
`
`infringement against Petitioner, Petitioner looked at CMP’s products and copied the
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`claimed “flexible barrier member”:
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`
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`
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`(Ex. 2003, Brochure at p. 4). Furthermore, Petitioner touted the benefits of the
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`“flexible cable gland,” stating in its advertising material that the “gland contains
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`integral dam to facilitate liquid pour” and “its unique design features, coupled with
`
`the new fast curing “CHICO® LiquidSeal compound makes the Terminator™
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`IITMCX cable gland the easiest and safest solution available.” (See e.g. Ex. 2002,
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`CMP0091, ¶25).
`
`
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`Petitioner has failed to meet its burden of showing a reasonable likelihood that
`
`it would prevail on the merits. Accordingly, CMP respectfully requests the full
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`denial of the Petition.
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`Patent Owner’s Preliminary Response – IPR2018-00994
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`
`II. THE ‘027 PATENT
`The ‘027 Patent “relates to a filler assembly for cable glands and relates
`
`particularly, but not exclusively, to such a filler assembly for filling cable glands for
`
`use in hazardous areas.” (Ex. 2001, Col. 1:14-17). The ‘027 Patent claims priority
`
`to PCT No. PCT/GB 2010/050989 filed on June 14, 2010, which claims priority to
`
`European Patent Application No. 09168430.8 filed on August 21, 2009. The ‘027
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`Patent issued on October 28, 2014.
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`STATE OF THE INDUSTRY PRIOR TO THE INVENTION
`
`The Petitioner’s background section ignores the discrete use for cable glands.
`
`(Petition at pp. 7-12). Cable glands are a type of coupling used to connect electric
`
`cables to an enclosure, typically, used in hazardous environments, such as oil rigs
`
`and oil refineries. (Ex. 2007, Frizzell Decl. , ¶15). Cable gland assemblies generally
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`provide a means for terminating cables to connect to junction boxes, control centers,
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`panel boards, etc. (Ex. 2004, U.S. Patent No. 8,692,139, 1:24-32). Within the cable
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`gland, the outer layer of the cable is stripped away to expose the various cores or
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`individual wires contained within the cable. (Id.). This is referred to as a
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`terminating cable. (Ex. 2007, ¶16-17). The cable is connected to an enclosure where
`
`the individual cores are connected to an electrical device like a switch, circuit
`
`breaker, or the like:
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`Patent Owner’s Preliminary Response – IPR2018-00994
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`(Ex. 2007, ¶37) (annotated). It is imperative to seal cables entering a junction box
`
`in hazardous environments by encapsulating the cores of the cables to prevent
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`explosive gases from traveling through the gap between the cables. (Ex. 2007, ¶19-
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`20). A cable terminating at a junction box, at the time of the inventions, typically
`
`had an outer sheath of either metal or thick plastic which houses one or more cores:
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`(Ex. 2007, ¶ 28) (annotating Ex. 2009, page 3). Gasses and flames can enter the
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`Patent Owner’s Preliminary Response – IPR2018-00994
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`gaps between the cores in the cable. (Ex. 2007, ¶18-20).
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`
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`Prior to the inventions, cable glands were packed with an epoxy putty
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`material, which acted as a barrier against explosions:
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`Traditionally the barrier material used in cable glands has been an
`epoxy putty material that is mixed, moulded into place and then allowed
`to set. This is not only slow, but it is difficult to pack into a cable gland
`so well that any air is expelled and displaced by the putty.
`(Ex. 2002, CMP0085, ¶7; Ex. 2001, Col. 1:18-27). “The cure time of the putty like
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`material is chosen to be relatively long, in order to enable it to be manipulated into
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`the spaces between the individual conductors before curing becomes advanced.”
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`(Ex. 2001, Col. 1:29-33).
`
`
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`Additional problems existed. For example, air voids often develop during
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`application of the epoxy material which proved to be highly detrimental in the event
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`of an explosion: “…[a]ir can become trapped within the cable gland by the filler
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`material which may cause the barrier formed by the filler material to fail in the event
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`of an explosion.” (Id., Col. 1:39-43).
`
`
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`Attempts to address the problem of using a resinous material in a cable gland
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`were met with failure because prior art “would cause material to flow along the
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`conductors along the interior of the cable, which would prevent the cable gland from
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`being sufficiently filled to expel all of the air from the cable gland to avoid air voids.”
`
`(Id., Col. 1:44-54) (referring to GB 765082).
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`Prior to the present inventions, it was also understood that a wool fiber
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`
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`material could be used to fill gaps between the cores of a cable. (Ex. 2007, ¶10-11
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`and ¶27; See also Ex. 2002, CMP0085). However, the fiber material had several
`
`drawbacks that even Petitioner’s own patents recognized:
`
`Conventional damming materials include fiber materials that require
`the cable gland assembly to be disassembled to place the fiber materials
`therein. In addition, these fiber damming materials generally require a
`large volume to contain the material therein. Accordingly, the use of a
`fiber damming material is time-consuming and cumbersome for a user
`to assemble.
`(Ex. 2005, ‘741 Patent, Col. 1:34-45). Petitioner, two years after the ‘027 Patent
`
`was filed, recognized that the solution to the fiber dam problem was not found with
`
`a flexible barrier member: “these rubber glands generally had limitations in their
`
`performance.” (Id.). Simply stated, many others (including Petitioner) tried – and
`
`failed – to reach the solutions of the ‘027 Patent.
`
`THE DISCLOSURE OF THE ‘027 PATENT
`
`The invention relates to “a filler assembly for filling a cable gland” including
`
`“a dispensing apparatus for a curable liquid material” used in conjunction with a
`
`“[flexible] barrier member for restricting the extent of penetration of said curable
`
`liquid material along said cores.” (Id., Col. 1:62-2:14; Col. 1:57-62).
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`(Ex. 2007, ¶28) (citing Ex. 2009, page 4)
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`
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`Importantly, the ‘027 Patent solved the problem of dispensing a curable liquid
`
`material along the individual cores of a cable in a cable gland. The advantages were
`
`explained during prosecution:
`
`[The prior art] also does not disclose a barrier member having at least
`one respective aperture therethrough for engaging at least one core of
`a cable for restricting the extent of penetration of the curable liquid
`material along the cores of the cable.
`As a result of this difference, the present invention has the advantage
`over [the prior art] that highly flowable liquid material can be quickly
`dispensed between individual cores of the cable, such that air can be
`expelled from the spaces between the cores of the cable. As a result, the
`formation of air voids in the cured flowable material, which could
`otherwise form paths for flames or pressure in the event of an explosion,
`is minimised. The barrier member restricts the extent of penetration of
`the liquid material along the cores of the cable, thereby enabling the
`curable liquid material to be held in position to set between the cores of
`the cable, even if highly flowable liquid material is used. This enables
`a cable gland to be more rapidly sealed by means of the present
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`Patent Owner’s Preliminary Response – IPR2018-00994
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`invention than the arrangement of [the prior art] and to be used in
`hazardous environments.
`(Ex. 2002) (emphasis added).
`
`
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`The ‘027 Patent utilizes a dispensing apparatus to introduce the liquid material
`
`into the small chamber of a cable gland. The dispenser insures that users do not
`
`contact the hazardous component of the curable liquid material:
`
`
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`
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`(Ex. 2001, Fig. 1, Col. 2:15-20) (annotated). The dispenser utilizes a first barrier
`
`which, when opened, initiates mixing of the first and second components in the
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`sealed package. (Id., See e.g. Col. 2:4-5). The inventions also include a second
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`barrier that, when opened, permits mixed curable material to be dispensed from the
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`sealed package: “[T]his provides the advantage that the first and second components
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`of the curable liquid material can be mixed in a sealed container comprising the first
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`Patent Owner’s Preliminary Response – IPR2018-00994
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`and second compartments, thus enabling the use to avoid coming into contact with
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`harmful components of the curable liquid material.” (Id., Col. 2:15-45; Col. 3:33-
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`35, Col. 4:46-54). The specification further describes a nozzle which is inserted into
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`the space between individual cores of the cable for delivering the curable liquid
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`material. (Id., See e.g., Col. 4:54-59; Ex. 2007, ¶34).
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`The use of liquid resin offers an advantage over the prior epoxy putty-like
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`materials: “This therefore provides the advantage of enabling more rapid formation
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`of a filled cable gland incorporating the material, while also allowing the liquid
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`material to be introduced into the cable gland in such a way that the air is expelled
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`from the cable gland to avoid air voids, which could lead to failure of the cable
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`gland in the event of an explosion.” (Ex. 2001, Col. 2:26-32) (emphasis added).
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`The invention also includes a “flexible barrier member” restricting the extent
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`the curable liquid flows along the cable cores:
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`The provision of at least one barrier member for restricting the extent
`of penetration of said curable liquid material along the cable cores
`provides the advantage of enabling highly flowable curable liquid
`material to be used, while also enabling filling of the cable gland.
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`(Ex. 2001, Col. 2:40-44). At the time of the inventions, there was a need for a
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`flexible barrier member adapted to stretch to engage a plurality of cores of a cable,
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`rather than just the cable itself, to provide a barrier of passage of a curable liquid
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`material along the cores. (See e.g. Ex. 2007, ¶25, ¶29, and ¶47) The flexible barrier
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`Patent Owner’s Preliminary Response – IPR2018-00994
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`member is shown in Fig. 2:
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`(Ex. 2001, Fig. 2) (annotated). The flexible barrier member (red) acts as a seal to
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`limit the passage of the curable liquid material (green) along the plurality cores of a
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`cable. “The aperture in the seal 32 is sized such that it stretches to pass around the
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`core conductors 20 to tightly engage the core conductors 20 to form a reasonably
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`effective barrier to passage of the material 6 along the space defined between the
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`core conductors 20 and the compound tube 26.” (Ex. 2001, Col. 4:14-21 and 37-
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`45) (emphasis added).
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`SUMMARY OF THE PROSECUTION HISTORY OF THE ‘027 PATENT
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`The prosecution history proves helpful in understanding the invention of the
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`‘027 Patent. In an Office Action mailed June 17, 2013, the Examiner alleged the
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`claims were obvious
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`in view of EP434105 (“Kaptein”) combined with
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`WO2008/029165 (Hand) (Ex. 2002, CMP00438-446). The Examiner recognized
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`Patent Owner’s Preliminary Response – IPR2018-00994
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`“Kaptein does not disclose a barrier member,” and instead relied on Hand. (Id.,
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`CMP0442).
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`Kaptein
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`Hand
`(Ex. 2002, Hand, Fig. 1 (CMP0489); Ex. 2002, Kaptein, Fig. 2 (CMP0544))
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`(annotated).
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`Patent Owner’s Preliminary Response – IPR2018-00994
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`Applicant subsequently amended the recited “barrier member” in claims 1 and
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`10 to overcome the rejections:
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`(b) at least one flexible barrier member having at least one respective
`aperture therethrough adapted to stretch to engage a plurality of for
`engaging at least one cores of a cable to provide a barrier to passage,
`wherein the barrier member is adapted to restrict the extent of
`penetration of said curable liquid material along said cores and includes
`a conical portion clamped between two surfaces of the cable gland and
`terminating in a planar portion.
`(Ex. 2002, CMP0077-80). Claim 16 was amended in the same manner. (Id.).
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`Applicant expressed that “[the prior art] does not disclose a barrier member having
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`at least one respective aperture therethrough for engaging one core of a cable for
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`restricting the extent of penetration of the curable liquid along the cores of the cable.”
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`(Id., CMP0316-17).
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`
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`Applicant relied on the declaration of Geoffrey I. Mood, a person of skill in
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`the art at the time of the invention. (Ex. 2002, CMP0083-108). He explained that,
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`“where the cable construction is such that gaps exists between the sheath or outside
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`the sheath, a rubber seal cannot be relied upon to work.” (Id., CMP0085, ¶7(d)).
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`Mr. Mood distinguished the claimed “flexible barrier member” from the prior art on
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`the basis that the “flexible barrier member” was designed to stretch to engage the
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`cores and prevent the passage of the liquid into the gaps between the cores. (Id.,
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`CMP0090, ¶21).
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`Patent Owner’s Preliminary Response – IPR2018-00994
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`
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`(Id., ¶21, Ex. C) (annotated).
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`Mr. Mood also provided reasons for why the inventions of the ‘027 Patent
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`were not obvious:
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`• “There is no teaching or suggestion to use a barrier such as [the prior art]
`with multiple conductors and in fact such a barrier would not be approved
`if used alone. [The prior art] itself teaches that when a hardenable
`compound is used, the barrier should have form a gap with the conductors
`so the compound can exude into the gap between the smallest diameter of
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`Patent Owner’s Preliminary Response – IPR2018-00994
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`the barrier and the conductors. This is unlike the present invention where
`the conductors touch the seal and the seal stretches from conductor to
`conductor to block flow of the hardenable compound from flowing
`outside of the well in the gland where the compound is injected.” (Id.,
`CMP0087-88, ¶14) (emphasis added)
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`• “It is my opinion that a person of ordinary skill in the art would believe
`that neither the seal nor barrier of Hand would work to contain a liquid
`resin,...” (Id., CMP0088, ¶15)
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`• “There is no disclosure or suggestion of providing a resin dam of stretchy
`material or using a liquid curable material.” (Id., CMP0090, ¶20)
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`The Examiner allowed the claims because there was “no obvious combination
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`of the closest arts of record…[and] there is no motivation to combine the arts of
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`record in order to establish a prima facie case of obviousness.” (Ex. 2002,
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`CMP0042-43). The Examiner provided specific reasons for allowance:
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`As per claims 1 and 10, the following limitation, in context, makes
`claim 1 inventive: at least one flexible barrier member having at least
`one respective aperture therethrough adapted to stretch to engage a
`plurality of cores of a cable to provide a barrier to passage of said
`curable liquid material along said cores.
`(