Paper No. ___
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`Metromont Corporation,
`Petitioner,
`v.
`Reigstad & Associates, Inc.,
`Patent Owner.
`____________
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 10,337,196
`Submitted via PTAB E2E on
`January 26, 2021
`
`

`

`Petition for IPR of USPN 10,337,196
`Challenging Claims 1-7, 9, 10, and 13.
`TABLE OF CONTENTS
`
`2.
`
`3.
`
`I.
`II.
`
`INTRODUCTION ........................................................................................... 6
`THE ’196 PATENT ......................................................................................... 8
`A.
`Overview ............................................................................................... 8
`B.
`Prosecution History .............................................................................13
`LEVEL OF ORDINARY SKLL IN THE ART ............................................18
`III.
`IV. CLAIM CONSTRUCTION ..........................................................................19
`A.
`The plain and ordinary meaning of “concrete” in the
`Challenged Claims is “a cement-based composite material.” ............19
`1.
`The “concrete” used to make the ’196 Patent’s pre-cast
`load-carrying floor structure would be a coarse aggregate
`concrete. ....................................................................................20
`The “concrete” used to fill the top-surface trenches
`described in the ’196 Patent would be concrete mortar. ...........22
`A POSA would have understood the ordinary meaning of
`“concrete” in view of the specification to be “a cement-
`based composite material.” .......................................................26
`Remaining claim terms. .......................................................................27
`B.
`SUMMARY OF CHALLENGES AND RELIEF REQUESTED ................27
`V.
`VI. GROUND A: CLAIMS 1-7 AND 9 ARE OBVIOUS IN VIEW OF
`GLEICH AND TUMIALAN. ........................................................................28
`A.
`Overview of Gleich. ............................................................................28
`B.
`Overview of Tumialan.........................................................................31
`C. Motivation for Combining Gleich and Tumialan. ..............................37
`D.
`Claim 1 ................................................................................................40
`1.
`[1pre] “A method for enhancing or repairing a pre-cast
`load-carrying concrete floor structure, wherein the load-
`carrying concrete floor structure includes a flange, two
`supporting members that support the flange, and a carbon
`
`

`

`2.
`
`3.
`
`4.
`
`Petition for IPR of USPN 10,337,196
`Challenging Claims 1-7, 9, 10, and 13.
`fiber grid disposed within the flange between the two
`supporting members, the method comprising:” ........................40
`[1a] “forming a trench at a top surface of the flange
`between the two supporting members that support the
`flange of the load-carrying concrete floor structure;” ..............42
`[1b] “arranging a reinforcement material into the trench
`to be above at least a portion of the carbon fiber grid
`disposed within the flange;” ......................................................43
`[1c] “applying a concrete bonding agent to an internal
`side surface of the trench; and” [1d] “filling the trench
`with concrete.” ..........................................................................44
`Claim 2 - “The method according to claim 1, wherein the
`reinforcement material includes at least one selected from a
`group consisting of a steel reinforcing bar, an epoxy-coated
`reinforcing bar, a carbon fiber bar, a carbon fiber epoxy-based
`reinforcing bar, and a stainless steel bar.” ...........................................47
`Claim 3 – “The method according to claim 1, wherein the
`trench is at least 1.5 inches deep from the top surface of the
`load-carrying concrete floor structure;” and Claim 6 – “The
`method according to claim 1, wherein the trench is at least 2
`inches deep from the top surface of the flange.” .................................47
`Claim 4 – “The method according to claim 1, wherein forming
`the trench includes forming the trench across a width of the top
`surface of the flange;” and Claim 5 – “The method according
`to claim 1, wherein forming the trench includes forming the
`trench across at least a half of a width of the top surface of the
`flange.” ................................................................................................49
`Claim 7 – “The method according to claim 1, further
`comprising forming a second trench at the top surface of the
`flange, wherein the trench and the second trench have a spacing
`between them.” ....................................................................................50
`Claim 9 – “The method according to claim 1, further
`comprising: roughening a surface of the trench.” ...............................51
`VII. GROUND B: CLAIMS 1-7 AND 9 ARE OBVIOUS IN VIEW OF
`GLEICH, TUMIALAN, AND SIKA PRODUCT SHEETS. ........................52
`A.
`Overview of Sika Product Sheets. .......................................................52
`
`G.
`
`E.
`
`F.
`
`H.
`
`I.
`
`

`

`C.
`
`D.
`E.
`
`1.
`2.
`3.
`
`Petition for IPR of USPN 10,337,196
`Challenging Claims 1-7, 9, 10, and 13.
`SikaTop 123 Product Sheet. ......................................................52
`Sika Armatec 110 Product Sheet. .............................................54
`A POSA would have considered the Sika Product Sheets
`together. .....................................................................................55
`B. Motivation for Combining Gleich, Tumialan, and Sika Product
`Sheets. ..................................................................................................57
`Claim 1 ................................................................................................60
`1.
`[1pre], [1a], and [1b]. ................................................................60
`2.
`[1c] “applying a concrete bonding agent to an internal
`side surface of the trench;” and [1d] “filling the trench
`with concrete.” ..........................................................................60
`Claims 2-7. ..........................................................................................61
`Claim 9 – “The method according to claim 1, further
`comprising: roughening a surface of the trench.” ...............................62
`VIII. GROUND C: CLAIMS 10 AND 13 ARE OBVIOUS IN VIEW OF
`GLEICH, TUMIALAN, AND REIS (AND GLEICH, TUMIALAN,
`SIKA PRODUCT SHEETS, AND REIS). ....................................................64
`A.
`Overview of Reis. ................................................................................64
`B. Motivation for Combining Gleich, Tumialan, and Reis. ....................67
`C.
`Claim 10 and Claim 13. .......................................................................69
`IX. CONCLUSION ..............................................................................................74
`A.
`Real Parties-In-Interest (37 C.F.R. § 42.8(b)(1)) ................................75
`B.
`Related Matters (37 C.F.R. § 42.8(b)(2)) ............................................75
`1.
`Administrative Matters .............................................................75
`2.
`Judicial Matters .........................................................................75
`Lead and Back-up Counsel (37 C.F.R. § 42.8(b)(3)) ..........................76
`Service Information (37 C.F.R. § 42.8(b)(4)) .....................................76
`
`C.
`D.
`
`

`

`Petition for IPR of USPN 10,337,196
`Challenging Claims 1-7, 9, 10, and 13.
`PETITIONER’S EXHIBIT LIST
`
`Exhibit
`Ex-1001
`
`Description
`U.S. Patent No. 10,337,196 to Reigstad et al.
`
`Ex-1002
`
`Declaration of Dr. Antonio Nanni
`
`Ex-1003
`
`Ex-1004
`
`Harry A. Gleich, Carbon Fiber Reinforcing: Making Double Tees
`in Parking Structures Lighter and Stronger, Structure Magazine
`(July 2006).
`
`J. Gustavo Tumialan, et al., Case Study: Strengthening of Parking
`Garage Decks with Near-Surface-Mounted CFRP Bars, Journal
`of Composites for Construction, 11(5): 523-530
`(September/October 2007)
`
`Ex-1005
`
`Prosecution History of U.S. Application No. 15/945,318
`
`Ex-1006
`
`U.S. Patent No. 5,044,139 to Mills
`
`Ex-1007
`
`Ex-1008
`
`Ex-1009
`
`Ex-1010
`
`U.S. Patent Publication No. 2012/0073231 to Hemphill
`SikaTop® 123 PLUS Product Data Sheet (Edition 8.2003;
`Identification no. 188)
`Sika Armatec® 110 EpoCem® Product Data Sheet (Edition
`8.2003; Identification no. 182)
`
`Excerpts from: Response to Freedom of Information Request No.
`12238 for Port Authority Bus Terminal, Port Authority of NY &
`NJ (Aug. 18, 2011) (available at:
`https://corpinfo.panynj.gov/files/uploads/
`documents/freedom-of-information/foi-fulfilled-requests/12238-
`C.pdf)
`
`Ex-1011
`
`E. M. Reis, et al., Non-Destructive Radiographic Evaluation and
`Repairs to Pre-Stressed Structure Following Partial Collapse,
`Forensic Engineering 2012: Gateway to a Safer Tomorrow
`(ASCE 2013)
`
`1
`
`

`

`Petition for IPR of USPN 10,337,196
`Challenging Claims 1-7, 9, 10, and 13.
`
`Ex-1012
`
`Ex-1013
`
`Ex-1014
`
`ASCE Library Webpage for Forensic Engineering 2012: Gateway
`to a Safer Tomorrow, available at https://ascelibrary.org/doi/book
`/10.1061/9780784412640.
`
`Dustin B. Ward, et al., Prestress losses of double-tee girders cast
`with lightweight self-consolidating concrete, 7 Journal of
`Building Engineering 133-142 (June 2016).
`
`D. B. Thatcher, et al., Structural Lightweight Concrete
`Prestressed Girders and Panels, Research Report 1852-1, Center
`for Transportation Research – The University of Texas at Austin
`(January 2002).
`
`Ex-1015
`
`U.S. Patent No. 3,670,504 to Hayes et al.
`
`Ex-1016
`
`U.S. Patent No. 4,889,666 to Kawasaki.
`
`Ex-1017
`
`U.S. Patent No. 7,658,797 to Guevara et al.
`
`Ex-1018
`
`Ex-1019
`
`Ex-1020
`
`Ex-1021
`
`P. Kumar Mehta, et al., Concrete: Microstructure, Properties and
`Materials, McGraw Hill 3rd ed. (October 20, 2001)
`
`Paul J. Burke, et al., Effects of elevated temperature on near
`surface mounted and externally bonded FRP strengthening
`systems for concrete, 35 Cement & Concrete Composites 190-199
`(2013).
`
`ICRI Technical Guideline No. 310.2R-2013, Selecting and
`Specifying Concrete Surface Preparation for Sealers, Coatings,
`Polymer Overlays, and Concrete Repair (October 2013)
`
`Sika Refurbishment: ICRI Award Winning Projects 1998-2013,
`available at https://usa.sika.com/content/dam/dms/us01/w/
`Refurbishment-ICRI-Award-Winning-Projects-1998-2013.pdf.
`
`Ex-1022
`
`Declaration of Harry A. Gleich
`
`Ex-1023
`
`Declaration of J. Gustavo Tumialan
`
`Ex-1024
`
`Certificate of registration and renewal certificate, U.S. Trademark
`Reg. No. 2,938,685 for the mark C-GRID.
`
`2
`
`

`

`Petition for IPR of USPN 10,337,196
`Challenging Claims 1-7, 9, 10, and 13.
`
`Ex-1025
`
`Certificate of registration and associated renewal, U.S. Trademark
`Reg. No. 2,897,938 for the mark C-GRID REINFORCED &
`Design.
`
`Ex-1026
`
`Curriculum Vitae of Dr. Antonio Nanni
`
`Ex-1027
`
`Ex-1028
`
`John M. Carson, Carbon fibre grid improves precast concrete,
`JEC Magazine #38 (Jan./Feb. 2008), available at
`http://www.jeccomposites.com/print/knowledge/international-
`composites-news/carbon-fibre-grid-improves-precast-concrete.
`
`AltusGroup joins PCI as supplier associate member, Press
`Release (March 5, 2014), available at
`https://altusprecast.com/altusgroup-joins-pci-as-supplier-
`associate-member/.
`
`3
`
`

`

`Petition for IPR of USPN 10,337,196
`Challenging Claims 1-7, 9, 10, and 13.
`GLOSSARY OF TERMS
`
`DEFINITION
`Metromont Corporation
`Reigstad & Associates, Inc.
`
`TERM
`“Petitioner”
`“Patent Owner”
`“Reigstad”
`“Board”
`“IPR”
`“POSA”
`
`“’196 Patent”
`
`“Challenged Claims”
`
`“Gleich”
`
`USPTO Patent Trial and Appeal Board
`Inter Partes Review
`Person of ordinary skill in the art at the time of
`the invention.
`U.S. Patent No. 10,337,196 to Reigstad, et al.
`(Ex-1001)
`Claims 1-7, 9, 10, and 13 of U.S. Patent No.
`10,337,196.
`Harry A. Gleich, Carbon Fiber Reinforcing:
`Making Double Tees in Parking Structures
`Lighter and Stronger, Structure Magazine (July
`2006) (Ex-1003).
`J. Gustavo Tumialan, et al., Case Study:
`Strengthening of Parking Garage Decks with
`Near-Surface-Mounted CFRP Bars, Journal of
`Composites for Construction, 11(5): 523-530
`(September/October 2007) (Ex-1004).
`“SikaTop 123 Product Sheet” SikaTop® 123 PLUS Product Data Sheet
`(Edition 8.2003; Identification no. 188) (Ex-
`1008)
`Sika Armatec® 110 EpoCem® Product Data
`Sheet (Edition 8.2003; Identification no. 182)
`(Ex-1009)
`SikaTop® 123 PLUS Product Data Sheet
`(Edition 8.2003; Identification no. 188) (Ex-
`1008); and
`
`“Tumialan”
`
`“Sika Armatec 110 Product
`Sheet”
`
`“Sika Product Sheets”
`
`4
`
`

`

`“Reis”
`
`Petition for IPR of USPN 10,337,196
`Challenging Claims 1-7, 9, 10, and 13.
`Sika Armatec® 110 EpoCem® Product Data
`Sheet (Edition 8.2003; Identification no. 182)
`(Ex-1009).
`E. M. Reis, et al., Non-Destructive Radiographic
`Evaluation and Repairs to Pre-Stressed Structure
`Following Partial Collapse, Forensic
`Engineering 2012: Gateway to a Safer
`Tomorrow (ASCE 2013) (Ex-1011)
`
`5
`
`

`

`Petition for IPR of USPN 10,337,196
`Challenging Claims 1-7, 9, 10, and 13.
`Petitioner seeks Inter Partes Review of Claims 1-7, 9, 10, and 13 of U.S.
`
`Patent No. 10,337,196 (“Challenged Claims”), which is available for IPR. Petitioner
`
`is not barred or estopped from requesting an IPR. 37 C.F.R. §42.104(a).
`
`I.
`
`INTRODUCTION
`The ’196 Patent is directed to a method for enhancing or repairing a precast
`
`load-carrying concrete floor structure. The claimed method involves forming a
`
`trench on the top surface of the concrete floor structure, arranging a reinforcement
`
`material (e.g., a reinforcing bar) in the trench, applying a bonding agent to the
`
`internal surface of the trench, and filling the trench with concrete. This process was
`
`well-known long before the ’196 Patent’s invention and is referred to in the art as
`
`near-surface-mounting (“NSM”). As a result, the ’196 Patent was allowed only after
`
`independent Claim 1 was amended to require that these known NSM reinforcing
`
`steps were applied specifically to a precast load-carrying structure having an
`
`embedded carbon fiber grid (“C-Grid®”):
`
`6
`
`

`

`Petition for IPR of USPN 10,337,196
`Challenging Claims 1-7, 9, 10, and 13.
`Although none of the references considered during prosecution disclosed C-
`
`Grid® reinforced load-carrying concrete floor structures, these precast structures
`
`were well-known more than a decade before the ’196 Patent’s invention. As shown
`
`below, Petitioner’s lead reference—Gleich (Ex-1003)—discloses a C-Grid®
`
`reinforced concrete “double tee” with each of the “load-carrying concrete floor
`
`structure” elements recited in Claim 1:
`
`Gleich – C-Grid® Double Tee (annotated)
`It would have been obvious at the time of the invention to apply known NSM
`
`reinforcement techniques to existing C-Grid® precast concrete double tees. In
`
`particular, Petitioner’s secondary reference—Tumialan (Ex-1004)—discloses a
`
`well-known NSM method for enhancing and repairing reinforced load-carrying
`
`concrete structures that includes every method step recited in Claim 1. Ex-1002,
`
`¶¶73-81, 89-107. As demonstrated in the Petition, it would have been obvious to use
`
`7
`
`

`

`Petition for IPR of USPN 10,337,196
`Challenging Claims 1-7, 9, 10, and 13.
`Tumialan’s method to enhance and/or repair the C-Grid® double tees disclosed in
`
`Gleich. Ex-1002, ¶¶82-107.
`
`Applying Tumialan’s method to Gleich’s double tee renders every step of
`
`independent Claim 1 obvious. Likewise, every step recited in the challenged
`
`dependent claims is rendered obvious by Gleich, Tumialan, and/or additional
`
`references cited in the grounds presented herein. The Challenged Claims in the ’196
`
`Patent are therefore obvious under 35 U.S.C. § 103. Accordingly, for the reasons
`
`provided herein, Petitioner requests institution of Inter Partes Review and
`
`cancellation of the Challenged Claims.
`
`II.
`
`THE ’196 PATENT
`A.
`Overview
`The ’196 Patent (Ex-1001) is generally directed to methods for enhancing or
`
`repairing a precast concrete floor structure. Ex-1001, Abstract. The methods
`
`described in the specification involve forming trenches on a top surface of the
`
`concrete floor structure and installing reinforcement materials (e.g., steel or carbon
`
`reinforcing bars) in the trenches. Id., Abstract, 1:38-51. This process enhances the
`
`concrete floor structure’s ability to withstand tension and/or compression under
`
`loading and, according to the ’196 Patent, extends the lifespan of the concrete floor
`
`structure. Id., 1:34-37, 9:21-28.
`
`8
`
`

`

`Petition for IPR of USPN 10,337,196
`Challenging Claims 1-7, 9, 10, and 13.
`The ’196 Patent’s method can be applied to “precast load-carrying concrete
`
`systems,” which are often used in the construction of “floor and roof systems,
`
`parking structures, and bridges.” Ex-1001, 1:17-19, 8:23-28 (emphasis added). In
`
`particular, the specification illustrates a precast concrete floor structure (210)
`
`defining a flange (220) supported by a pair of supporting members (230a, 230b)
`
`(also referred to as “stems”). Ex-1001, 1:21-24, 6:53-55, 8:60-9:45. As shown in the
`
`cross-sectional illustration of Figure 2A, the flange (220) defines a top surface (221)
`
`opposite the bottom surface from which the supporting members (230a, 230b)
`
`extend downwardly. Id. Precast concrete floor structures of the type depicted in
`
`Figure 2A are known in the construction industry as “double tees” and can be
`
`assembled side by side to form larger structures (e.g., a multi-level parking deck).
`
`Ex-1001, 8:63-66; Ex-1002, ¶34; Ex-1003, 11 (illustration and discussion of precast
`
`concrete double tees); Ex-1007, ¶0001, 0007, Figs. 1-4; Ex-1011, 1015-1016, 1022-
`
`1023 (discussion and illustration of double tee stems).
`
`’196 Patent - Figure 2A
`
`9
`
`

`

`Petition for IPR of USPN 10,337,196
`Challenging Claims 1-7, 9, 10, and 13.
`The ’196 Patent notes that the flanges of these precast double tees have
`
`historically been reinforced with a welded steel wire mesh embedded in the concrete.
`
`Ex-1001, 7:53-59. However, by the time of the invention, carbon fiber grids (“C-
`
`Grid®”)1 were being used in place of steel mesh due to their better corrosion
`
`properties. Id. The specification describes its method in the context of enhancing or
`
`repairing concrete floor structures constructed with this C-Grid® reinforcement. Id.,
`
`8:35-50, 10:15-36. The specification also emphasizes that the method can be applied
`
`to existing construction structures while leaving the enhanced precast concrete floor
`
`structures in place (i.e., “without separating the load-carrying concrete floor
`
`structure from the construction structure”). Id., 8:23-34.
`
`The ’196 Patent’s enhancement/repair method is illustrated in Figures 2B-2D
`
`of the specification. Ex-1001, 8:60-62. In the first step, shown in Figure 2B below,
`
`trenches (240) are formed at the top surface (221) of the flange (220). Id., 9:6-8 and
`
`29-31. The trenches (240) are formed by “cutting into the top surface 221,” which
`
`may be accomplished by “saw cutting” or “hydro-demolition.” Id., 9:39-40 and 52-
`
`1 “C-GRID” and “C-GRID REINFORCED” were registered as trademarks in 2005
`
`and 2004, respectively. Ex-1024; Ex-1025. These marks are now owned by
`
`Chomarat North America, LLC, which manufactures carbon and epoxy grid
`
`products for reinforcing concrete structures under the C-GRID® brand. Id.
`
`10
`
`

`

`Petition for IPR of USPN 10,337,196
`Challenging Claims 1-7, 9, 10, and 13.
`54. The specification notes that the trenches (240) can have a depth—measured from
`
`the top surface (221) of the flange (220)—of at least 1.5 inches, at least 2.0 inches,
`
`or a depth “otherwise as required by design” in order to accommodate a
`
`reinforcement material to be placed in each trench. Id., 9:39-51.
`
`’196 Patent - Figure 2B
`The trenches (240) can be formed “all of the way from one end of the top
`
`surface 221 to the opposing end of the top surface 221” (as shown in Figure 2B
`
`above) or such that only “a part of the top surface 221 has the trench 240 formed
`
`therein.” Ex-1001, 9:29-38. In particular embodiments, the trenches (240) maybe
`
`formed “across a width of the top surface 221 of the flange 220” or “across at least
`
`a half of a width of the top surface of the flange 220.” Id., 9:54-57. The ’196 Patent
`
`also notes that two or more trenches (240) “may be formed at any appropriate
`
`spacing,” typically “12-48 inches” apart. Id., 9:57-66.
`
`In the next step, shown in Figure 2C below, a reinforcement material (250) is
`
`placed at the bottom of the trench (240). Ex-1001, 9:9-10 and 65-66. The
`11
`
`

`

`Petition for IPR of USPN 10,337,196
`Challenging Claims 1-7, 9, 10, and 13.
`reinforcement material (250) “may include at least one of a steel reinforcing bar, an
`
`epoxy-coated reinforcing bar, a carbon fiber bar, a carbon fiber epoxy-based
`
`reinforcing bar, or combinations thereof.” Id., 9:67 to 10:3. The specification also
`
`indicates that the reinforcement material (250) should be disposed “over the C-grid”
`
`within the concrete floor structure (210). Id., 4:54 to 5:13.
`
`’196 Patent - Figure 2C
`
`The final steps are reflected in Figure 2D below. A concrete bonding agent
`
`(260) is first applied to an internal side surface (241) of each of the trenches (240).
`
`Ex-1001, 9:10-13, 10:4-8. Thereafter, the rest of the trench is filled with concrete
`
`(270) over the concrete bonding agent (260). Id. Optionally, the trench surfaces may
`
`be roughened (e.g., by sandblasting) before the trenches (240) are filled with
`
`concrete (270). Id., 9:18-20. According to the ’196 Patent, the resulting concrete
`
`floor structure (210) possesses enhanced resistance to failure and an extended
`
`lifespan. Id., 1:34-37, 9:21-28.
`
`12
`
`

`

`Petition for IPR of USPN 10,337,196
`Challenging Claims 1-7, 9, 10, and 13.
`
`’196 Patent - Figure 2D
`Prosecution History
`B.
`The ’196 Patent issued from U.S. Patent Application No. 15/945,318 (“’318
`
`Application”), filed on April 4, 2018, and claims the benefit of U.S. Provisional
`
`Application No. 62/481,176, filed April 4, 2017. Ex-1001, (21), (22), (60).
`
`The ’318 Application was filed with 24 original claims, of which original
`
`Claims 1, 17, 19, and 22 were independent. Ex-1005, 101-105. Following a
`
`restriction requirement, Claims 9 and 11-24 were withdrawn, leaving original
`
`Claims 1-8 and 10 to be prosecuted. Id., 48. Among the elected claims, only Claim
`
`1 was independent and appeared originally as follows:
`
`Ex-1005, 101.
`
`13
`
`

`

`Petition for IPR of USPN 10,337,196
`Challenging Claims 1-7, 9, 10, and 13.
`In the only office action, the Examiner rejected Claims 1-8 and 10 as obvious
`
`in view of U.S. Patent No. 5,044,139 to Mills (Ex-1006, “Mills”) and U.S. Patent
`
`Publication No. 2012/0073231 to Hemphill (Ex-1007, “Hemphill”). Ex-1005, 48-
`
`51. Mills is generally directed to a “method for repairing damaged post-tensioned or
`
`pre-tensioned concrete structures by removing steel tendons and forming new
`
`concrete post-tensioned beams in their place.” Ex-1006, Abstract. In particular,
`
`Mills’ method involved forming trenches at a top surface of a concrete slab (Ex-
`
`1006, 3:51-4:11), placing rebar into the trenches (Ex-1006, 4:66-5:26), applying
`
`epoxy to the internal side surface of the trenches (Ex-1006, 5:39-45), and filling the
`
`trenches with concrete (Ex-1006, 5:46-47). See Ex-1005, 49-51 (application of Mills
`
`to Claim 1).
`
`Although the Examiner did not regard Mills’ concrete slab as defining a
`
`“flange” as recited in Claim 1, the Examiner concluded that Hemphill would have
`
`rendered the recited flange obvious when considered in combination with Mills. Ex-
`
`1005, p. 49. Specifically, the Examiner pointed to Hemphill’s disclosure of precast
`
`double tees (Ex-1007, Figs. 3-4) and concluded that it would have been obvious to
`
`modify the floor structure of Mills to include the double tee flanges of Hemphill (and
`
`therefore to apply Mills’ trenching and reinforcement method to the modified floor
`
`structure). Ex-1005, p. 49. As noted in the office action, “[n]o new or unpredictable
`
`results would be obtained from modifying [a] floor structure requiring repair to
`
`14
`
`

`

`Petition for IPR of USPN 10,337,196
`Challenging Claims 1-7, 9, 10, and 13.
`comprise another known concrete floor configuration, such as a double-T
`
`configuration.” Id.
`
`In response to the office action, Patent Owner did not contest that the steps
`
`recited in original Claim 1 would have been obvious in view of Mills and Hemphill.
`
`Id., 32-36. Instead, Patent Owner amended Claim 1 as follows:
`
`Ex-1005, 27.
`
`In its response to the office action, Patent Owner emphasized that Mills and
`
`Hemphill failed to disclose (i) a carbon fiber grid positioned in a flange and (ii) a
`
`reinforcement material in the trench and arranged “to be above at least a portion of
`
`the carbon fiber grid in the flange.” Ex-1005, 32-35. Patent Owner first argued that
`
`Mills was directed to a method for removing existing steel tendons from a concrete
`
`structure and replacing them with a new post-tensioned beam. Id., 33; see also Ex-
`
`1006, Abstract, 1:10-15. According to Patent Owner, Mills was therefore “not
`
`directed towards enhancing a concrete structure that has the carbon fiber grid” and
`
`15
`
`

`

`Petition for IPR of USPN 10,337,196
`Challenging Claims 1-7, 9, 10, and 13.
`failed to disclose “the required process of arranging a reinforcement material into
`
`the trench to be above at least a portion of the carbon fiber grid.” Ex-1005, 33.
`
`Patent Owner next argued that “while Mills addresses replacing damaged steel
`
`tendons that is tensioned to support the concrete slab, Hemphill [was] merely
`
`concerned with replacing a corroded metal clip at the gap between two adjacent
`
`concrete structures.” Ex-1005, 35. Although Hemphill disclosed the use of a
`
`composite material positioned at a gap between adjacent T-shaped concrete planks,
`
`Patent Owner emphasized there would be “no apparent reason for one of skill in the
`
`art to make a trench in a single T-shaped plank and place the composite material . .
`
`. in the trench of the single T-shaped plank.” Id., 35. Patent Owner also argued that
`
`“Mills and Hemphill do not recognize that a concrete floor structure with carbon
`
`fiber grid (or C-Grid®) as supported material can lead to catastrophic failure, such
`
`as the . . . floor structure rupturing or breaking apart abruptly.” Id., 35.
`
`Following Patent Owner’s claim amendments, the Examiner allowed the
`
`pending claims. Ex-1005, pp. 11-15. In the Notice of the Allowance, the Examiner
`
`concluded that “[a]lthough the individual elements of the load-carrying floor
`
`structure [were] known in the prior art, there would be no reason to modify the prior
`
`art without relying on improper hindsight.” Ex-1005, p. 14. The renumbered claims
`
`(1-15) were thus issued in U.S. Patent No. 10,337,196. The claims of the ’196 Patent
`
`challenged in this Petition are reflected below.
`
`16
`
`

`

`Claim
`Element
`[1pre]
`
`[1a]
`
`[1b]
`
`[1c]
`
`[1d]
`
`[2]
`
`[3]
`
`[4]
`
`[5]
`
`[6]
`
`Petition for IPR of USPN 10,337,196
`Challenging Claims 1-7, 9, 10, and 13.
`
`Challenged Claims
`
`1. A method for enhancing or repairing a pre-cast load-carrying
`concrete floor structure, wherein the load-carrying concrete floor
`structure includes a flange, two supporting members that support the
`flange, and a carbon fiber grid disposed within the flange between
`the two supporting members, the method comprising:
`forming a trench at a top surface of the flange between the two
`supporting members that support the flange of the load-carrying
`concrete floor structure;
`arranging a reinforcement material into the trench to be above at
`least a portion of the carbon fiber grid disposed within the flange;
`applying a concrete bonding agent to an internal side surface of the
`trench; and
`filling the trench with concrete.
`
`2. The method according to claim 1, wherein the reinforcement
`material includes at least one selected from a group consisting of a
`steel reinforcing bar, an epoxy-coated reinforcing bar, a carbon fiber
`bar, a carbon fiber epoxy-based reinforcing bar, and a stainless steel
`bar.
`
`3. The method according to claim 1, wherein the trench is at least 1.5
`inches deep from the top surface of the load-carrying concrete floor
`structure.
`
`4. The method according to claim 1, wherein forming the trench
`includes forming the trench across a width of the top surface of the
`flange.
`
`5. The method according to claim 1, wherein forming the trench
`includes forming the trench across at least a half of a width of the top
`surface of the flange.
`
`6. The method according to claim 1, wherein the trench is at least 2
`inches deep from the top surface of the flange.
`
`17
`
`

`

`[7]
`
`[9]
`
`[10]
`
`[13]
`
`Petition for IPR of USPN 10,337,196
`Challenging Claims 1-7, 9, 10, and 13.
`7. The method according to claim 1, further comprising forming a
`second trench at the top surface of the flange, wherein the trench and
`the second trench have a spacing between them.
`
`9. The method according to claim 1, further comprising: roughening
`a surface of the trench.
`
`10. The method according to claim 1, the method further comprising:
`arranging a horizontal reinforcement member below a bottom
`surface of the flange, and connecting a first end of the horizontal
`reinforcement member to a side of one of the supporting members.
`
`13. The method according to claim 10, wherein the horizontal
`reinforcement member includes at least one selected from a group
`consisting of a steel reinforcing bar, an epoxy-coated reinforcing bar,
`a carbon fiber bar, a carbon fiber epoxy-based reinforcing bar, and a
`combination thereof.
`
`III. LEVEL OF ORDINARY SKLL IN THE ART
`As confirmed by Petitioner’s expert, Dr. Antonio Nanni, a person of ordinary
`
`skill in the art at the time of the invention (“POSA”) would have had: at least a
`
`bachelor’s degree in Civil Engineering, Architectural Engineering, Mechanical
`
`Engineering, or a related technical field, and at least three years of experience in the
`
`structural design of reinforced or prestressed concrete strengthening alternatives. Ex-
`
`1002, ¶¶27-28. Additional work experience in relevant work industries could
`
`compensate for less education or an education in a different field, and advanced
`
`education or degrees may similarly compensate for less work experience. Id.
`
`18
`
`

`

`Petition for IPR of USPN 10,337,196
`Challenging Claims 1-7, 9, 10, and 13.
`
`IV. CLAIM CONSTRUCTION
`The Challenged Claims must be construed according to the standard set forth
`
`in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R. §
`
`42.100(b) (2019). Under Phillips, claim terms are afforded “their ordinary and
`
`customary meaning.” Phillips, 415 F.3d at 1312. “[T]he ordinary and customary
`
`meaning of a claim term is the meaning that the term would have to a person of
`
`ordinary skill in the art in question at the time of the invention.” Id., 1313.
`
`“Importantly, the person of ordinary skill in the art is deemed to read the claim term
`
`not only in the context of the particular claim in which the disputed term appears,
`
`but in the context of the entire patent, including the specification.” Id. To ascertain
`
`how a person of ordinary skill would have understood the claim language, both
`
`intrinsic and extrinsic evidence may be consulted, with emphasis on the intrinsic
`
`evidence. Id., 1314, 1317. Extrinsic evidence, while relevant, is less significant and
`
`must be “considered in the context of the intrinsic evidence.” Id., 1317, 1319.
`
`A.
`
`The plain and ordinary meaning of “concrete” in the Challenged
`Claims is “a cement-based composite material.”
`Claim 1 recites a “method for enhancing or repairing a pre-cast load-carrying
`
`concrete floor structure” in which a trench formed on the top surface of the floor
`
`structure is filled “with concrete.” Ex-1001, 23:16-30 (emphasis added). Although
`
`the ’196 Patent does not define “concrete,” both intrinsic and extrinsic evidence
`
`indicate that the ordinary meaning of “concrete”—as it would have been understood
`
`19
`
`

`

`Petition for IPR of USPN 10,337,196
`Challenging Claims 1-7, 9, 10, and 13.
`by a POSA in view of the specification—is a “cement-based composite material.”
`
`Ex-1002, ¶¶51-64.
`
`The ’196 Patent uses the term “concrete” interchangeably to describe both (i)
`
`concrete material used to form a pre-cast load-carrying floor structure (coarse
`
`aggregate concrete) an