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` Request for Reconsideration
` U.S. Pat. No. 9,909,302 Docket No. 62354/00000
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________
`
`WILLIAM SYKES,
`Petitioner,
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`v.
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`SMART VENT PRODUCTS, INC.,
`Patent Owner
`____________________________
`
`Case IPR2019-01061
`Patent 9,909,302
`____________________________
`
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`PETITIONER’S REQUEST FOR RECONSIDERATION
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`COMES NOW William Sykes (“Petitioner”) and for his Request for
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`Reconsideration states as follows.
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`A.
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`Background
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`Petitioner filed a Petition for Inter Partes review of U.S. Patent No.
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`9,909,302. On October 21, 2019, the Board issued a Decision denying
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`institution of Inter Partes Review. Petitioner respectfully submits this
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`Request for Reconsideration in response.
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` Request for Reconsideration
` U.S. Pat. No. 9,909,302 Docket No. 62354/00000
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`B. Claims 1 and 12 and their dependent Claims (3 and 18)
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`In response to the Board’s Decision of October 21, 2019, Paper 11,
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`Petitioner respectfully withdraws his request for Inter Partes Review of
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`Claims 1, 3, 12, and 18.
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`C. Denial of Institution of Inter Partes Review of Claims 7 and
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`11.
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`In response to the Board’s Decision of October 21, 2019, Paper 11,
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`Petitioner respectfully requests that the Board reconsider its Denial of
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`institution of Inter Partes Review. In particular, Petitioner respectfully
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`submits that the Board overlooked the incorporation of materials by
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`reference related to the claimed limitation of “0.5-5 pounds per square inch”
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`in Claim 7 and its dependent Claim 11, and how those materials would
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`provide one skilled in the art with prior art anticipation of the claimed
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`limitation.
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`D. Argument
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`The Board has denied institution of an Inter Partes review of Claims 7
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`and 11 of the ‘302 patent.
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`Claim 7 of the ‘302 patent teaches the uncoupling of the panel from
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`the frame by applying 0.5-5.0 pounds per square inch of force. The Board
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`has stated that “Petitioner’s evidence is insufficient to demonstrate that
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` U.S. Pat. No. 9,909,302 Docket No. 62354/00000
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`Shook discloses, or the combination of Shook and Malitsky teach or suggest,
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`uncoupling the panel from the frame by applying 0.5-5.0 pounds per square
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`inch of pressure on either side of the panel. Instead, the evidence to which
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`Petitioner directs us merely discloses that Shook’s shutter 30 moves about a
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`swing arc in response to a floodwater pressure differential in or across duct
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`15. . . [and] [t]he cited portion of Shook is silent as to the amount of applied
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`pressure required to uncouple the panel from the frame . . .” Paper 11, page
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`13.
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`Despite that finding, however, Petitioner respectfully submits that the
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`range limitation in Claim 7 for uncoupling the panel from the frame is
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`incorporated by reference in Shook an Malitsky, as well as within the ‘302
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`patent, and more importantly is well known to those skilled in the art; that
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`limitation would be well known by one reasonably skilled in the art of
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`designing and building flood vents for crawl spaces, as those disclosed in the
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`‘302 patent.
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`Incorporation by reference provides anticipatory prior art. “To
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`incorporate material by reference, the host document must identify with
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`particularity what specific material it incorporates and clearly indicate
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`where that material is found in the various documents.” Advanced System
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`Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000).
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` U.S. Pat. No. 9,909,302 Docket No. 62354/00000
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`And when making that determination, the standard that applies is that of
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`“one reasonably skilled in the art.” Id. At 1283.
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`Flood vents are designed to be compliant with government
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`regulations, specifically those promulgated by the Federal Emergency
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`Management Agency. The ‘302 patent, Shook, and Malitsky all
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`acknowledge this and incorporate that knowledge in the art by reference.
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`The ‘302 patent itself specifically cites to, in OTHER
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`PUBLICATIONS:
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`FEMA, Openings in Foundation Walls and Walls of Enclosures,
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`Technical Bulletin, Aug. 1, 2008, and
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`FEMA, Non-Residential Floodproofing, Technical Bulletin, Apr. 3,
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`1993.
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`Shook directly teaches that FEMA requirements provide the impetus
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`for the inventive steps taken in designing flood vents:
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`“To eliminate or at least reduce damage due to flooding,
`several building code entities as well as the federal government
`have developed rules and regulations requiring structures
`with enclosed spaces located below defined flood plain
`levels to include automatic equalization of interior and exterior
`hydrostatic pressure caused by floodwaters. The rules and
`regulations require structures to be designed and built to
`allow floodwaters to move in and out of a structure freely. The
`Federal Emergency Management Agency (FEMA) requires
`compliance with FEMA Technical Bulletin 1-93. Other governmental
`agencies required compliance with the International
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` U.S. Pat. No. 9,909,302 Docket No. 62354/00000
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`Building Code and/or ASME 24-05 and 24-98.”
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`Shook, Ex. 1002, 1:13-24.
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`And Malitksy acknowledges the same state of the art:
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`“With the advent of major flooding issues throughout
`many areas of the United States, national agencies such as
`Federal Emergency Management Administration (FEMA)
`and National Flood Insurance Program (NFIP), a flood insurance
`division of FEMA, have set out to that building codes
`mandate that new and existing structures install flood and air
`ventilation systems within the foundations.
`To date, within FEMA defined flood zones, in order
`to obtain building permits and flood insurance for structures,
`whether newly constructed or substantially renovated that
`incorporate crawl spaces and/or unfinished basements,
`FEMA and the NFIP now require the installation of flood
`vents.”
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`Malitksy, Ex. 1003, 1:[0003]-[0004].
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`Malitksy further states that the Malitsky invention was specifically
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`designed to:
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`“comply with, or be adaptable to, the following standards, including
`but not limited to:
`“FEMA/FIA Technical Bulletin TB 1-93 "Engineered
`Opening Requirements";
`American Society of Construction Engineers
`(ASCE) 24-05 "Flood Resistant Design and Construction";
`and
`FEMA National Flood Insurance Program Regulations
`44 CFR 60.3”
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`Malitsky, Ex. 1003, 1:[0016]-[0019].
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` Request for Reconsideration
` U.S. Pat. No. 9,909,302 Docket No. 62354/00000
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`The state of the art for flood vents and flood vent designs is therefore
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`disclosed, and incorporated by reference, in the ‘302 patent, Shook, and
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`Malitsky. Further, each of the ‘302 patent, Shook, and Malitsky specifically
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`refer to that state of the art and those governmentally-mandated
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`requirements.
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`And that state of the art, well known by those skilled in the art, is
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`those guidelines and restrictions promulgated by FEMA in its publications
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`related to flood mitigation and the use of flood vents. Those guidelines and
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`regulations of FEMA are materials that the Board may take judicial notice
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`of as public specifically allowable under F.R.E. 201. See 37 CFR § 42.62.
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`The public records provided by FEMA related to the design and state of the
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`art related to flood vents is therefore properly before the Board. And, as
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`noted above, the ‘302 patent as well as Shook and Malitsky all acknowledge
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`and incorporate by reference FEMA’s standards and guidance for flood
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`vents and flood vent design.
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`FEMA provides well-known calculations for determining hydrostatic
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`loads as a result of standing water and in particular for floodwater openings.
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`See, e.g., https://www.fema.gov/media-library-data/20130726-1518-20490-
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`6246/05_fema_p550_ch3.pdf at 3.3 (Hydrostatic Loads). Those guidelines
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`provide that:
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` U.S. Pat. No. 9,909,302 Docket No. 62354/00000
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`Lateral hydrostatic force is calculated by the following: fstat = ½ γ ds2
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`Where
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`fstat = Hydrostatic force per unit width (lb/ft) resulting from flooding
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`against vertical element;
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`γ = Specific weight of water (62.4 lb/ft3 for freshwater and 64 lb/ft3
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`for saltwater).
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`The conversion of lbs/ft to pounds per square inch provides that the
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`pressure, at one foot of water depth on a vertical surface is 0.434 pounds per
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`square inch. In order to comply with FEMA requirements, therefore, any
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`flood vent design must be able to allow the equalization of hydrostatic
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`pressure on either side of the flood vent at or close to the FEMA-mandated
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`limits. It would be obvious, therefore, to one skilled in the art to provide a
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`flood vent that opens (or releases) upon a pressure differential between the
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`interior and exterior of a crawl space that meets or exceeds the pressure
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`differential at or exceeding the minimum requirements defined by FEMA.
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`FEMA dictates, and dictated prior to the filing of the ‘302
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`application, that flood vents that that comply with FEMA requirements
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`maintain a maximum of one foot of difference in height between the water
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`depth in an enclosed crawl space and the exterior of a structure. FEMA has
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` U.S. Pat. No. 9,909,302 Docket No. 62354/00000
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`dictated that a one (1) foot differential is critical to the guidelines for
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`providing flood protection:
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`“The purpose of this requirement is to satisfy the performance
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`expectation that the difference in water levels between the interior and
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`exterior will not exceed 1 foot as water begins to rise and as floodwaters
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`recede from the site.” FEMA TB-1, p. 14, https://www.fema.gov/media-
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`library-data/20130726-1502-20490-9949/fema_tb_1__1_.pdf.
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`It was well understood by those skilled in the field of flood vents,
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`therefore, that a flood vent must be able to equilibrate pressure on either
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`side of a flood vent once water pressure reached a certain value. A flood
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`vent, under FEMA guidelines, must be able to allow the flow of water to
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`limit the water height differential on either side of the flood vent to the
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`FEMA-restricted guideline of one foot.
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`The claimed limitations of Claim 7 and dependent Claim 11,
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`therefore, are not just well known in the art, they are required by limitations
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`set by FEMA and well understood by those designing and producing flood
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`vents. The FEMA requirements and limitations are not just required, they
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`are (and were) well known in the art, and understood by those skilled in the
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`art to apply to flood vents designed to comply with FEMA guidelines as
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`those disclosed in the ‘302 application admittedly must.
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` Request for Reconsideration
` U.S. Pat. No. 9,909,302 Docket No. 62354/00000
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`In sum, FEMA requirements demand that crawl space flood vents
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`limit the height between the interior and exterior of a crawl space to one
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`foot of height differential. It was well known in the art that those
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`limitations applied to crawl space vents, and each of the ‘302, Shook, and
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`Malitsky references clearly incorporate by reference those limitations.
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`Those limitation are therefore anticipatory, and warrant the institution of an
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`Inter Partes review of Claims 7 and 11 of the ‘302 patent.
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`E.
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`CONCLUSION
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`For the reasons stated above, Petitioner respectfully requests that the
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`Board reconsider its denial of October 21, 2019, and institute an Inter Partes
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`review of Claims 7 and 11 of U.S. Pat. No. 9,909,302.
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`Dated: November 20, 2019
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`Respectfully submitted,
`/Duncan G. Byers/
`Duncan G. Byers
`Registration No. 50,707
`Attorney for William Sykes
`Patten, Wornom, Hatten & Diamonstein
`12350 Jefferson Ave.
`Suite 300
`Newport News, VA 23602
`Telephone: (757) 223.4474
`Fax: (757) 249.1627
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` Request for Reconsideration
` U.S. Pat. No. 9,909,302 Docket No. 62354/00000
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`CERTIFICATE OF SERVICE
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`I hereby certify that this foregoing pleading has been filed electronically via
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`the PTAB electronic filing system, and that I have also served, electronically, a
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`copy of the foregoing via electronic mail to:
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`Mark D. Passler, Esq.
`Brice Dumais, Esq.
`Akerman LLP
`777 South Flagler Drive
`Suite 1100, West Tower
`West Palm Beach, FL 33401
`ip@ackerman.com
`Brice.dumais@akerman.com
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