Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper No. 8
`Entered: September 6, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`DONNELLY DISTRIBUTION LLC
`and
` RAIMONDI S.P.A.,
`Petitioner,
`v.
`RUSSO TRADING CO., INC.,
`Patent Owner.
`
`Case IPR2019-00761
`Patent 9,279,259 B1
`
`
`
`
`
`
`
`
`
`Before ANDREI IANCU, Under Secretary of Commerce for Intellectual
`Property and Director of the United States Patent and Trademark Office,
`SALLY C. MEDLEY, and KEVIN W. CHERRY,
`Administrative Patent Judges.
`CHERRY, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`

`

`IPR2019-00761
`Patent 9,279,259 B1
`
`I. INTRODUCTION
`A. Background
`Donnelly Distribution LLC and Raimondi S.P.A. (“Petitioner”) filed a
`Petition (Paper 2, “Pet.”) to institute an inter partes review of claims 6 and 7
`(the “challenged claims”) of U.S. Patent No. 9,279,259 B1 (Ex. 1001, “the
`’259 Patent”). Russo Trading Co., Inc. (“Patent Owner” or “Russo
`Trading”) did not file a Preliminary Response. We have authority to
`consider the Petition and determine whether to institute review under
`35 U.S.C. § 314 and 37 C.F.R. § 42.4(a), which provide that an inter partes
`review may not be instituted unless the information presented in the Petition
`“shows that there is a reasonable likelihood that the petitioner would prevail
`with respect to at least 1 of the claims challenged in the petition.” Having
`considered the arguments and the associated evidence presented in the
`Petition, for the reasons described below, we institute inter partes review of
`all of the challenged claims on the grounds set forth in the Petition.
`
`B. Related Proceedings
`Petitioner informs us that the ʼ259 Patent is involved in litigation in
`Russo Trading Company, Inc., v. Donnelly Distribution LLC, No. 18-CF-
`1851-JPS (E.D. Wis.). Pet. 7; Ex. 1014. This litigation has been stayed
`pending the outcome of this proceeding. See Ex. 3001.
`
`C. The ʼ259 Patent
`The ’259 Patent issued from Application Serial Number 14/823,085
`(“the ’085 application”) filed August 11, 2015. Ex. 1001, [21], [22]. The
`
`2
`
`

`

`IPR2019-00761
`Patent 9,279,259 B1
`’085 application is a continuation-in-part of Application Serial Number
`14/718,131 (“the ’131 application”) filed on May 21, 2015.1 Id. at [63].
`The ʼ259 Patent “relates generally to tiles and more specifically to a
`tile lippage removal system.”2 Ex. 1001, 1:14–15. The ʼ259 Patent explains
`that when laying tiles, it is important not to exert a lateral force which tends
`to spread the tiles away from each other, such that the tile edges are no
`longer parallel to each other, which is unacceptable. Id. at 1:21–28. The
`desired lippage removal system provides only a downward force that does
`not mar a top of the tiles or cause lateral movement of the tiles, which causes
`oozing of tile glue. Id. at 1:30–35.
`The ʼ259 Patent describes various designs for a tile lippage removal
`system with an exemplary embodiment of a cap depicted in Figure 3A,
`reproduced below.
`
`
`1 Petitioner argues, with supporting evidence, that the ’259 Patent is not
`entitled to the filing date of the ’131 application. Pet. 19–21 (citing
`Ex. 1004 ¶¶ 91–95). Patent Owner has not yet contended that the ’259
`Patent is entitled to the earlier filing date of the ’131 application. See
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1379–80
`(Fed. Cir. 2015). The Board thus treats the ’259 patent as having an
`effective filing date of August 11, 2015. See Ex. 1001, [22].
`2 The Tile Council of North America states that the American National
`Standards Institute (ANSI) Standard A108.02, § 4.3.7 explains: “Lippage
`refers to differences in elevation between edges of adjacent tile modules.”
`See Tile Council of North America, Inc. Website, available at
`https://www.tcnatile.com/faqs/175-lippage.html (last visited Sept. 3, 2019)
`(Ex. 3002)
`
`3
`
`

`

`IPR2019-00761
`Patent 9,279,259 B1
`
`
`Figure 3A is a top perspective view of a design of a “threaded cap of a
`tile lippage removal system.” Id. at 2:23–24. Threaded cap 13 includes an
`inverted cup 29 and a plurality of grip extensions 31. Id. at 3:13–15. A
`plurality of sight openings 37 are formed through inverted cup 29 to form a
`plurality of ribs. Id. at 3:19–20. The plurality of sight openings 37 allow a
`distance between two adjacent tiles 100 to be viewed through threaded cap
`13. Id. at 3:67–4:2; Fig. 1. A hub 33 extends from a top of inverted cup 29.
`Id. at 3:15–16. “A female thread 35 is formed through a center of the hub 33
`to threadably receive [a] threaded shaft 20.” Id. at 3:16–18. An exemplary
`threaded shaft 20 is depicted in Figure 2, reproduced below.
`
`4
`
`

`

`IPR2019-00761
`Patent 9,279,259 B1
`
`
`Figure 2 is a perspective view of a spacer post of a tile lippage
`removal system. Id. at 2:18–19. Spacer post 10 includes base member 16,
`spacer member 18 and threaded shaft 20. Id. at 2:59–60. A bottom of
`threaded shaft 20 extends from a top of spacer member 18. Id. at 3:3–4. A
`bottom of spacer member 18 extends from a top of base member 16. Id. at
`2:61–62. A break away connection 22 is made between spacer member 18
`and base member 16 that allows spacer member 18 to be separated from
`base member 16. Id. at 2:62–3:1. In order not to exert a lateral force on the
`tiles, spacer member 18 has a thickness, which is less than a gap between
`two adjacent tiles. Id. at 3:2–3, Fig. 1.
`
`D. Challenged Claims
`Of the challenged claims, claim 6 is independent. Claim 7 depends
`from claim 6.
`Claims 6 and 7 are reproduced below:
`6. A tile lippage removal system comprising:
`a spacer post includes a base member, a spacer member
`and a threaded shaft, a bottom of said spacer member extends
`
`5
`
`

`

`IPR2019-00761
`Patent 9,279,259 B1
`from a top of said base member, a bottom of said threaded shaft
`extends from a top of said spacer member; and
`a threaded cap includes a substantially cone shaped
`portion having an inverted orientation and a hub, a plurality of
`sight openings are formed through said cone shaped portion to
`form a plurality of ribs, said plurality of ribs are disposed
`between said plurality of sight openings, said hub extends from
`a top of said substantial cone shaped portion, a female thread is
`formed through a center of said hub, a plurality of grip portions
`are formed on a perimeter of said hub, said female thread is sized
`to threadably receive said threaded shaft.
`
`
`
`7. A tile lippage removal system of claim 6 wherein:
`a break away connection is formed between said base
`member and said threaded shaft.
`
`Ex. 1001, 4:39–57.
`
`
`E. Asserted Grounds of Unpatentability
`Petitioner challenges claims 6 and 7 of the ʼ259 Patent on the
`following grounds:
`
`6
`
`

`

`IPR2019-00761
`Patent 9,279,259 B1
`
`Basis Challenged Claims
`§ 1033
`6, 7
`§ 103
`6, 7
`§ 103
`6, 7
`
`
`References
`Lai,4 Irvine,5 and Candela-Garrigós6
`Lai and Sarajian7
`Irvine, Lai, and Sarajian
`
`F. Level of Ordinary Skill
`Petitioner proposes that a person of ordinary skill
`would be (1) someone with a Bachelor’s degree (or equivalent)
`in any study area and at least two years of experience in the art
`of laying tiles, or (2) someone with at least four years of
`experience in the art of laying tiles, with particular emphasis in
`tile leveling.
`
`Pet. 36–37 (citing Ex. 1004 ¶¶ 53–54). For purposes of this Decision, we
`adopt Petitioner’s proposed level of ordinary skill.
`
`
`3 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. § 103. Because the effective filing date
`of the ’259 patent—regardless of whether it is entitled to priority to the ’131
`application—is after the effective date of the applicable AIA amendment, we
`refer to the AIA version of 35 U.S.C. § 103.
`4 Lai et al., CN 204139562 U, pub. Feb. 4, 2015, filed Sept. 19, 2014
`(Ex. 1006, “Lai”). Also included in the record is a certificate of translation
`(Ex. 1007) and an English language translation of Lai (Ex. 1008). All
`citations are to Ex. 1008.
`5 Irvine et al., WO 2014/022889 A1, pub. Feb. 13, 2014, filed Aug. 8, 2013
`(Ex. 1009, “Irvine”).
`6 Candela-Garrigós, ES 1 138 645 U, pub. Apr. 22, 2015, filed Apr. 2, 2015
`(Exhibit 1010, “Candela-Garrigós”). Also included in the record is a
`certificate of translation (Ex. 1011) and an English language translation of
`Candela-Garrigós (Ex. 1012). All citations are to Ex. 1012.
`7 Sarajian et al., US 2016/0369518 A1, pub. Dec. 22, 2016, filed June 17,
`2015 (Ex. 1013, “Sarajian”).
`
`7
`
`

`

`IPR2019-00761
`Patent 9,279,259 B1
`
`G. Claim Interpretation
`We interpret a claim “using the same claim construction standard that
`would be used to construe the claim in a civil action under 35 U.S.C.
`282(b).” 37 C.F.R. § 42.100(b).8 Under this standard, we construe the claim
`“in accordance with the ordinary and customary meaning of such claim as
`understood by one of ordinary skill in the art and the prosecution history
`pertaining to the patent.” Id. Furthermore, at this stage in the proceeding,
`we expressly construe the claims only to the extent necessary to determine
`whether to institute inter partes review. See Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir.
`2017) (“[W]e need only construe terms ‘that are in controversy, and only 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))).
`Petitioner proposes constructions for the terms “spacer member,”
`“substantially cone shaped portion,” “hub,” “grip portions,” and “a plurality
`of ribs.” Pet. 23–43. Having filed no response, Patent Owner does not
`address Petitioner’s proposed constructions, nor does it offer any
`constructions of its own. At this time, we determine that no express
`construction is necessary. We note that this determination does not preclude
`
`
`8 The Office has changed the claim construction standard in AIA
`proceedings to replace the broadest reasonable interpretation (“BRI”)
`standard with the same claim construction standard used in a civil action in
`federal district court. Changes to the Claim Construction Standard for
`Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal
`Board, 83 Fed. Reg. 51340 (Oct. 11, 2018). The change applies to petitions
`filed on or after November 13, 2018. Id. The present Petition was filed on
`March 1, 2019, so we construe the claims in accordance with the federal
`district court standard, now codified at 37 C.F.R. § 42.100(b).
`
`8
`
`

`

`IPR2019-00761
`Patent 9,279,259 B1
`the parties from arguing their proposed constructions of the claims during
`trial. Indeed, the parties are hereby given notice that claim construction, in
`general, is an issue to be addressed at trial. A final determination as to claim
`construction will be made at the close of the proceeding, after any hearing,
`based on all the evidence of record. The parties are expected to assert all of
`their claim construction arguments and evidence in the Petition, Patent
`Owner’s Response, Petitioner’s Reply, or otherwise during trial, as
`permitted by our rules.
`
`II. DISCUSSION
`A. Obviousness Based On Lai, Irvine, and Candela-Garrigós
`Petitioner challenges claims 6 and 7 of the ’259 Patent under 35
`U.S.C. § 103 as unpatentable over Lai, Irvine, and Candela-Garrigós.
`Pet. 39–52. We begin our analysis with an overview of Lai, Irvine, and
`Candela-Garrigós, and then discuss the Petitioner’s contentions for each of
`the claims. Petitioner relies on the Declaration of Frederick M. Hueston in
`support of its contentions. See Ex. 1004.9
`
`1. Overview of Lai
`Lai is entitled “Tile Leveling Device.” Ex. 1008 [54]. Lai discloses
`with respect to Figure 1, reproduced below, a tile leveling device with only
`two parts, namely, a body 2 and a base 1. Id. ¶ 16.
`
`
`9 Exhibit 1004 is the Declaration of Frederick M. Hueston, dated
`February 28, 2019. Petitioner submitted a corrected version of Exhibit 1004
`on March 11, 2019, correcting the exhibit number labeled on the exhibit.
`See Paper 4, 2. All citations are to the corrected version.
`
`9
`
`

`

`IPR2019-00761
`Patent 9,279,259 B1
`
`
`
`
`Figure 1 is an exploded view of a tile leveling device. Id. ¶ 18.
`The tile leveling device depicted in Figure 1 includes base 1 having
`bottom plate 11 and a connecting rod 12 arranged on bottom plate 11 and
`provided with connecting threads 121. Id. ¶ 22. The bottom of connecting
`rod 12 is provided with linear groove breaking point 122 that “is structurally
`weaker than other parts of the connecting rod 12 so as to allow the
`connecting rod 12 to be separated from the bottom plate 11” at linear groove
`breaking point 122. Id. ¶ 24. The tile leveling device also includes body 2,
`a vertically through connecting passageway 22 formed in body 2, and
`“internal threads 221 for screw engagement with the connecting threads 121
`on the connecting rod 12.” Id. ¶ 22, Fig. 3. Lai’s body 2 includes tapered
`cylinder 23 and a round cylinder 24 that is coaxially arranged at the top end
`of the tapered cylinder 23, an “inner cavity of the round cylinder 24 forms
`the connecting passageway 22 and is provided with the internal threads
`221.” Id. ¶ 23, Fig. 3. Lai’s body 2 also includes “two side plates 25 [that]
`are arranged at two opposing sides of the round cylinder 24 and extend
`
`10
`
`

`

`IPR2019-00761
`Patent 9,279,259 B1
`downwardly to be integrally connected, respectively, with the external side
`of the tapered cylinder 23 . . . to rapidly tighten the body 2 with the base 1.”
`Id. ¶ 25.
`
`2. Overview of Irvine
`Irvine is entitled “Tile Leveller and Spacing System,” and “relates to a
`system for levelling and spacing tiles.” Ex. 1009 [54] ¶ 2. Irvine’s system
`includes a tile leveller 40, as seen in the relevant portion of Figure 1,
`reproduced below. Id. ¶¶ 50, 52, Fig. 1.
`
`
`Figure 1 is a (partial) “exploded perspective view of a tile spacer and
`levelling system” and shows details of a tile leveller 40. Id. ¶ 21.
`Tile leveller 40 includes tile top surface engagement portion 42
`having four vertical struts 44 extending therefrom, which connect to a
`central portion 46. Id. ¶ 53. Struts 44 define viewing apertures 45 so the tile
`“installer has a clear and largely unobstructed view of the tiles and spacer.
`Id. This allows the installer to visually check that the tiles remain engaged
`with the tile alignment portion 32 and the tile leveller 40, both before and
`after the tile leveller has been applied against the tiles.” Id.
`
`11
`
`

`

`IPR2019-00761
`Patent 9,279,259 B1
`
`3. Overview of Candela-Garrigós
`Candela-Garrigós is entitled “Coiled Unit,” and relates to a device that
`is suitable to playing marbles indoors. Ex. 1012 [54] 3:9–10. Candela-
`Garrigós explains that the game of marbles is difficult to play indoors
`because a hole must be provided into which the marbles are introduced. Id.
`at 2:13–14. With prior art devices it could not be seen whether the tiles on
`which the game is played are placed on a slope due to irregularities in the
`floor underneath and when four tiles are placed together simultaneously, the
`joints are not visible. Id. at 2:24–3:2. Because indoor floors may not be
`level, the device includes a hollow hemispherical “female (5)” that has
`window (8), as seen in Figure 1, reproduced below. Id. at 3:13–14.
`
`
`
`
`Figure 1 is an “axiometric view of the female [part].” Id. at 4:5.
`Candela-Garrigós further provides that “the unit can be used for
`placing tiles in the same manner as detailed in ES 2530622[10], which is
`
`10 Mr. Hueston explains that ES 2530622 (Ex. 1026) is a Spanish language
`translation of the English language patent EP 2549030 B1 to Eluteri
`(Ex. 1027, “Eluteri”). Ex. 1004 ¶ 139. Eluteri is entitled “A device for
`correct laying of floor tiles.” Ex. 1027 [54]. Eluteri teaches a unit, just as
`that of Candela Garrigós, with a base from which a vertical blade protrudes,
`supporting a threaded stem in the upper position. The cap is a knob
`provided with a central cylindrical conduit with internal threaded walls,
`
`12
`
`

`

`IPR2019-00761
`Patent 9,279,259 B1
`incorporated herein by reference.” Id. at 5:9–10. Window (8) in
`“female (5)” “makes it possible to observe whether the tiles are correctly
`aligned among themselves and, better yet, the introduction of a level into the
`window makes it possible to ensure that the tiles are not on a slope due to
`irregularities of the floor.” Id. at 5:11–14. The device also includes a “male
`(1)” having threaded shank (2) and base (3), which is supported on the floor,
`threaded shank (2) extends through a hole (7) in “female (5)” to adjust a
`height of the “female (5)” with respect to the floor. Id. at 4:10–18, Fig. 2.
`
`4. Discussion
`The preamble of claim 6 recites “[a] tile lippage removal system.”11
`Petitioner contends that Lai discloses the type of tile leveling system claimed
`in claim 6. See Pet. 40. Claim 6 recites “a spacer post includes a base
`member, a spacer member and a threaded shaft.” Petitioner contends that
`Lai’s tile leveling device includes a spacer post through Lai’s disclosure of
`base 1 having a bottom plate 11 (base member), a connecting rod 12 (spacer
`
`
`adapted to receive the threaded stem portion. Ex. 1027 ¶ 39. The operation
`of the Eluteri device, which was specifically incorporated by reference into
`Candela Garrigós, is described at Ex. 1027 ¶¶ 52–60. As described in those
`paragraphs of Eluteri, the base is placed beneath the tiles and the stem
`protrudes between the tiles. Id. The knob is screwed onto the threaded
`upper portion of the stem and is rotated until the base of the knob is engaged
`against the upper surface of the two adjacent tiles. Id. Upon further
`rotation, the two tiles are strictly tightened between the base and the flange,
`thereby stabilizing the position of the tiles. Id. This achieves leveling
`between the two tiles. Id. ¶ 75.
`11 Petitioner argues that the claim 6 recitation in the preamble of “tile lippage
`removal system” is a misnomer because “the purpose of the system is to
`avoid lippage rather than remove it.” Pet. 1, n. 1. Petitioner thus refers to
`the system of the ’259 Patent as a “tile leveling system.” Id.
`
`13
`
`

`

`IPR2019-00761
`Patent 9,279,259 B1
`member), and connecting threads 121. Pet. 40–41. According to Petitioner,
`because the bottom of Lai’s connecting rod 12 has a rectangular cross
`section, that “extend[s] from the gap between two adjacent tiles,” Lai’s
`“rectangular part of the connecting rod serves as a spacer between the base
`11 and the threaded post 121.” Pet. 41 (citing Ex. 1008 ¶ 30; Ex. 1004
`¶ 108). Claim 6 also recites “a bottom of said spacer member extends from
`a top of said base member, a bottom of said threaded shaft extends from a
`top of said spacer member.” Petitioner argues Lai discloses this limitation
`through its disclosure that “the bottom end of the connecting rod 12 is
`connected integrally to the upper surface of the bottom plate 11,” and
`because Lai’s Figure 1 shows the bottom of the threaded portion 121
`extending from the rectangular portion of the connecting rod. Pet. 41 (citing
`Ex. 1008 ¶ 29; Ex. 1004 ¶ 111).
`Claim 6 further recites “a threaded cap includes a substantially cone
`shaped portion having an inverted orientation and a hub.” Petitioner argues
`Lai discloses this limitation because Figure 1 of Lai “shows a body 2 with
`internal threads 221,” and shows body 2 having “a tapered cylinder (cone-
`shaped portion) 23” and “a round cylinder (hub) 24.” Pet. 41–42 (citing
`Ex. 1008 ¶ 23). Petitioner contends that Lai’s tapered cylinder “is in the
`shape of the surface of a frustum of a right circular cone.” Pet. 41–42 (citing
`Ex. 1004 ¶ 113).
`Claim 6 further recites “said hub extends from a top of said substantial
`cone shaped portion.” Petitioner argues Figure 1 of Lai teaches this
`limitation by depicting “cylindrical hub 24 extending from the top of tapered
`cylinder (cone-shaped portion) 23.” Pet. 42 (citing Ex. 1008 ¶ 23).
`
`14
`
`

`

`IPR2019-00761
`Patent 9,279,259 B1
`Claim 6 further recites “a female thread is formed through a center of
`said hub . . . said female thread is sized to threadably receive said threaded
`shaft.” Petitioner contends that this limitation is described in Figure 3 of
`Lai, “which shows an internal female thread 221 formed through the center
`of the hub 24,” and is disclosed in paragraph 22 of Lai, which states that
`“connecting passageway 22 is provided with internal threads 221 for screw
`engagement with the connecting threads 121 on the connecting rod 12.”
`Pet. 42–43 (citing Ex. 1008 ¶ 22).
`Claim 6 further recites “a plurality of grip portions are formed on a
`perimeter of said hub.” Petitioner considers that this limitation is met by Lai
`because Figure 1 of Lai “shows side plates 25 formed on the perimeter of the
`hub 24,” and because Lai refers to plates 25 as “an operating handle,” and
`discloses that “a force can be applied onto the two side plates 25 to rapidly
`tighten the body 2 with the base 1.” Pet. 42 (citing Ex. 1008 ¶ 25).
`Petitioner submits that Lai’s side plates 25 are consistent with what Patent
`Owner has identified in its infringement allegations provided with the
`complaint in the underlying district court litigation. See id. at 43–44 (citing
`Ex. 1004 ¶ 125).
`Claim 6 further recites “a plurality of sight openings are formed
`through said cone shaped portion to form a plurality of ribs, said plurality of
`ribs are disposed between said plurality of sight openings.” Petitioner
`explains that Lai does not disclose this limitation (see Pet. 42), but that based
`on the “teachings of the secondary reference (Irvine) and the tertiary
`reference (Candela-Garrigós) . . . it would have been obvious to a POSITA
`to modify Lai . . . to place a plurality of sight openings in the substantially
`
`15
`
`

`

`IPR2019-00761
`Patent 9,279,259 B1
`cone shaped portion of Lai, with a plurality of ribs formed therebetween.”
`Pet. 44.
`Specifically, Petitioner argues that Irvine discloses a substantially
`cone shaped cap 40 similar to that of Lai that is used to eliminate lippage
`from tiles. Pet. 45 (citing Ex. 1009, Abstract and Fig. 1). Petitioner asserts
`that there are “a plurality of openings (45) formed through the surface of the
`substantially cone shaped cap between the plurality of struts (44) that serve
`as the claimed plurality of ribs.” Pet. 45 (citing Ex. 1009 ¶ 53). Petitioner
`contends that Irvine provides motivation for using sight openings on the cap
`“so the installer has a clear and largely unobstructed view of the tiles and
`spacer.” Pet. 45 (citing Ex. 1009 ¶ 53). According to Petitioner, “[t]he
`motivation to provide a clear and unobstructed view of the tiles and their
`spacing below the cap provides a recognized and predictable benefit in light
`of what would be a simple addition of the sight openings of Irvine into the
`solid cone surface of Lai.” Pet. 46 (citing Ex. 1004 ¶ 134). Petitioner
`asserts that Irvine’s use of a different type of cap tightening mechanism
`“does not make any difference in the motivation for providing openings in
`the walls of the cap. The view through the sight openings is the same in
`either case.” Pet. 47 (citing Ex. 1004 ¶ 136).
`Petitioner asserts, moreover, “Candela-Garrigós (Ex. 1010) also
`teaches the advantage of a sight opening in the wall of the cap in a tile
`leveling device that has the cap engaging the post of the base with a threaded
`arrangement.” Pet. 47. Petitioner contends that Candela-Garrigós discloses
`an opening 8 in cap 5 “to allow the installer to observe whether the tiles
`therebeneath are properly aligned.” Pet. 49 (citing Ex. 1012, 3:20–22 and
`5:10–12). According to Petitioner, “Lai, Irvine and Candela-Garrigós are
`
`16
`
`

`

`IPR2019-00761
`Patent 9,279,259 B1
`specifically pertinent to the particular problem with which the invention was
`involved because they are all directed to tile leveling systems, and because
`they are all directed to cap and base-type tile leveling systems.” Pet. 49–50
`(citing Ex. 1004 ¶¶ 34–35 and 101–103). Petitioner concludes that because
`Candela-Garrigós teaches that the desira[bility] of a way to see
`the tiles beneath the cap is also present in the cap of a threaded
`screw-type cap and base levelling system, it would have been
`obvious to combine the sight openings in the cone shaped portion
`of the cap of the tile leveling system of Irvine with the cone
`shaped portion of the cap of the tile leveling system Lai and
`predictably achieve the same desirable results touted by Irvine.
`
`Pet. 52 (citing Ex. 1004 ¶ 150).
`
`Patent Owner has not yet presented any arguments addressing
`Petitioner’s obviousness contentions for this claim.
`On this record, for purpose of deciding the limited question of
`whether to institute this inter partes review, Petitioner has sufficiently
`shown that Lai accounts for the preamble (to the extent it is limiting), “a
`spacer post includes a base member, a spacer member and a threaded shaft,”
`“a bottom of said spacer member extends from a top of said base member, a
`bottom of said threaded shaft extends from a top of said spacer member,” “a
`threaded cap includes a substantially cone shaped portion having an inverted
`orientation and a hub,” “said hub extends from a top of said substantial cone
`shaped portion,” and “a female thread is formed through a center of said
`hub . . . said female thread is sized to threadably receive said threaded
`shaft.” Ex. 1008 ¶¶ 22, 23, 29, 30, Fig. 1, 3; Ex. 1004 ¶¶ 108, 111, 113. In
`particular, we note that, although Lai refers to item 23 of Figure 1 as a
`“tapered cylinder,” Mr. Hueston has reasonably opined that this is cone-
`shaped. Ex. 1004 ¶ 123. Petitioner has also sufficiently shown that the side
`
`17
`
`

`

`IPR2019-00761
`Patent 9,279,259 B1
`plates 25 of Lai would meet the grip portions limitation, in view of Patent
`Owner infringement contentions that identify flange structures as meeting
`the “a plurality of grip portions are formed on a perimeter of said hub
`limitation” and Mr. Hueston’s testimony. Ex. 1014, 38; Ex. 1004 ¶ 125;
`Ex. 1008 ¶ 25.
`Petitioner has also sufficiently shown that Irvine and Candela-
`Garrigós would account for the claimed “a plurality of sight openings are
`formed through said cone shaped portion to form a plurality of ribs, said
`plurality of ribs are disposed between said plurality of sight openings.”
`Ex. 1009 ¶ 53, Fig. 1; Ex. 1012, 3:20–22 and 5:10–12. Petitioner has also
`sufficiently shown that Lai and Irvine are in the same field of endeavor as
`the claimed invention. See Ex. 1008, [54] (“Tile leveling device”); Ex. 1009
`¶ 2 (“The present invention relates to tiling. In a particular form the present
`invention relates to a system for levelling and spacing tiles.”). Petitioner has
`also shown sufficiently that Candela-Garrigós is analogous art to the claimed
`invention. In particular, we note that Candela-Garrigós specifically states
`that it can be used for “placing tiles,” and incorporates by reference Eluteri
`(Ex. 1027), which, as explained above, describes a device for the correct
`laying of floor tiles. Ex. 1027 ¶ 1; see supra at 12 n.9. Finally, Petitioner
`has shown an adequate motivation to combine Irvine and Candela-Garrigós
`with Lai. Specifically, Petitioner has identified specific teachings in both
`Irvine and Candela-Garrigós that teach the benefits of adding sight openings
`to floor leveling devices such as Lai. See Ex. 1009 ¶ 53 (explaining Struts
`44 define viewing apertures 45 so the tile “installer has a clear and largely
`unobstructed view of the tiles and spacer. This allows the installer to visually
`check that the tiles remain engaged with the tile alignment portion 32 and
`
`18
`
`

`

`IPR2019-00761
`Patent 9,279,259 B1
`the tile leveller 40, both before and after the tile leveller has been applied
`against the tiles.” ); Ex. 1012, at 5:11–14 (Window (8) in “female (5)”
`“makes it possible to observe whether the tiles are correctly aligned among
`themselves and, better yet, the introduction of a level into the window makes
`it possible to ensure that the tiles are not on a slope due to irregularities of
`the floor.”). We note that Mr. Hueston has reasonably opined that a person
`of ordinary skill in the art would have been motivated to incorporate the
`viewing windows of Irvine and Candela-Garrigós with reasonable
`expectation of success. Ex. 1004 ¶¶ 127–150. Patent Owner has not yet
`presented any evidence of objective indicia of non-obviousness, which we
`would consider in determining whether the claims are obvious.
`Accordingly, at this stage of the proceeding, we determine Petitioner
`has demonstrated a reasonable likelihood that claim 6 would have been
`obvious over Lai, Irvine, and Candela-Garrigós.
`Petitioner also contends that claim 7 would have been obvious over
`Lai, Irvine, and Candela-Garrigós. See Pet. 43. In particular, Petitioner
`notes that Lai discloses that “connecting rod 12 is provided with a breaking
`point (i.e., the linear grooves 122), the strength of this position is the
`weakest, so that the connecting rod 12, together with the body 2 in threaded
`connection therewith, will be separated from the bottom plate 11 at this
`position.” Id. (citing Ex. 1008 ¶ 31). We note that Patent Owner has not yet
`presented any arguments addressing the limitations of this claim. As we
`explained above, Petitioner has sufficiently accounted for the limitations of
`independent claim 6, and has sufficiently shown a motivation to combine the
`references with a reasonable expectation of success. Based on the evidence
`noted above, Petitioner has also sufficiently shown that Lai accounts for the
`
`19
`
`

`

`IPR2019-00761
`Patent 9,279,259 B1
`additional limitations of claim 7. Ex. 1008 ¶ 31. Accordingly, we determine
`that the Petition provides the requisite showing, at this stage, that claim 7
`would have been obvious over Lai, Irvine, and Candela-Garrigós.
`
`5. Summary
`We determine, based on the current record, that the Petition shows a
`reasonable likelihood that Petitioner would prevail with respect to the
`contention that claims 6 and 7 would have been obvious over Lai, Irvine,
`and Candela-Garrigós.
`
`B. Obviousness Based on Lai and Sarajian
`Petitioner challenges claims 6 and 7 of the ’259 Patent under 35
`U.S.C. § 103 as unpatentable over Lai and Sarajian. Pet. 53–58. As Lai is
`discussed above in section II.A.1, we begin with an overview of Sarajian.
`We then turn to Petitioner’s contentions for the claims.
`
`1. Overview of Sarajian
`Sarajian is entitled “Floor Leveling Device,” and relates to “devices
`for leveling floor tiles.” Ex. 1013, [54], ¶ 1. Sarajian’s floor leveling device
`20 includes a base 24 and a cap 28, which are depicted in an assembled
`condition in Figure 2, reproduced below. Id. ¶ 18.
`
`20
`
`

`

`IPR2019-00761
`Patent 9,279,259 B1
`
`
`Figure 2 is a “side view of the floor leveling device.” Id. ¶ 8.
`Base 24 includes a stem 36 having a threaded portion and cap 28
`includes a body 92 having a threaded bore 112 that “receives and engages
`the threaded portion 76 of the stem 36.” Id. ¶ 25. Cap 28 also includes a
`plurality of flanges that extend radially outward from the body 92 and a
`plurality of apertures 100 positioned between two adjacent flanges 96. Id.
`¶¶ 26–27. Apertures 100 “allow a user to view portions of the tiles beneath
`the cap 28 to see, for example, if grout is squeezing out between the tiles
`underneath the cap 28.” Id. ¶ 27.
`
`2. Discussion
`Petitioner asserts that “Lai teaches each and every limitation of claims
`6 and 7 of the ’259 Patent except for the presence of a plurality of sight
`openings to form a plurality of ribs therebetween.” Pet. 53. Petitioner relies
`on the mapping to Lai discussed above in Section II.A.4. Pet. 53. Petitioner
`contends that Sarajian “discloses the same type of floor leveling device as is
`disclosed by Lai” including a cap having a substantially cone-shaped portion
`
`21
`
`

`

`IPR2019-00761
`Patent 9,279,259 B1
`with an internal female thread that receives