throbber

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________________
`
`
`SCHUL INTERNATIONAL COMPANY, LLC.,
`
`Petitioner,
`
`v.
`
`EMSEAL JOINT SYSTEMS, LTD.,
`
`Patent Owner.
`______________________
`
`Case No. PGR2017-_________________
`U.S. Patent 9,528,262 B2
`
`PETITION FOR POST-GRANT REVIEW
`
`
`
`1
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`

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`Table of Contents
`
`
`I.
`
`Introduction ......................................................................................................... 6
`
`II. Mandatory Notices (37 C.F.R. §42.8) ................................................................. 6
`
`A. Real Parties in Interest (37 C.F.R. §42.8(b)(1)) ......................................... 6
`
`B. Related Matters (37 C.F.R. §42.8(b)(2)) .................................................... 6
`
`C. Lead and Backup Counsel, and Service Information (37 C.F.R.
`§§42.8(b)(3), 42.8(b)(4) and 42.10(a)) ....................................................... 7
`
`D. Power of Attorney ...................................................................................... 8
`
`E. Payment of Fees ......................................................................................... 8
`
`III. Eligibility for Post-Grant Review ....................................................................... 9
`
`A. None of the written description or the priority applications provide
`written description support for “the foam including the fire retardant
`material is configured to pass testing mandated by UL 2079.” ...............11
`
`B. None of the written description or the priority applications provide
`written description support for an expansion joint system which does not
`include an intumescent material applied to a surface of the foam. ..........14
`
`C. None of the written description or the priority applications provide
`written description support for foam including the fire retardant with “a
`density when installed in a range of 200-700 kg/m3.” .............................16
`
`D. The written description and the priority applications improperly seek to
`incorporate the UL 2079 Tests by reference, and thus fail to provide
`written description support for an expansion joint system which “has an
`ability to withstand exposure to a temperature of about 540/1010° C. at
`about five minutes/two hours” and “foam including the fire retardant
`material is configured to pass testing mandated by UL 2079.” ...............17
`
`IV. Right to File and Grounds for Standing (37 C.F.R. §§42.201, 42.202,
`42.204(a)) .................................................................................................................19
`
`V. Identification of Challenge under 37 C.F.R. §42.204(b) and Relief Requested
`as to Each Claim ......................................................................................................20
`
`VI. Background and Summary of the ‘262 Patent ..................................................21
`
`A. Summary of the ‘262 Patent Written Description ....................................22
`
`B. Summary of the Prosecution History .......................................................25
`
`
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`2
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`VII. Claim Construction (37 C.F.R. §42.204(b)(3) ..................................................27
`
`A. “to withstand exposure” ...........................................................................27
`
`B. “to pass testing mandated by UL 2079.” ..................................................28
`
`VIII. .............................. Grounds of Unpatentability (37 C.F.R. §42.204(b)(4)-(5)).
`
`31
`
`A. Ground 1: Claims 1-43 lack written description under §112 of an
`expansion joint system where “the foam including the fire retardant
`material is configured to pass testing mandated by UL 2079.” ...............33
`
`B. Ground 2: Claims 1-43 lack written description under §112 of an
`expansion joint system which does not include an intumescent material
`applied to a surface of the foam. ..............................................................35
`
`1. The specification of the ‘262 patent, and of every application to which
`the ‘262 claims priority, discloses only an expansion joint system
`having an intumescent material applied to a surface of the foam. ...... 37
`
`2. Because the intumescent layer is unswervingly taught to be a part of
`the invention, the failure to include it as a limitation in the
`independent claims renders them invalid because they claim subject
`matter that was not disclosed in the written description. .................... 43
`
`C. Ground 3 Claims 1-43 lack written description under §112 of an
`expansion joint system as no incorporation by reference can be made of
`UL 2079 to augment the disclosure. .........................................................44
`
`1. Claims 1-43 lack written description under §112 of an expansion joint
`system as no incorporation by reference can be made of the UL 2079
`Tests to augment the disclosure as such material would be essential
`matter but is non-patent literature. ...................................................... 44
`
`2. Even if resort to the non-patent literature was permitted, the UL 2079
`Tests document provides no singular definition of “to pass” and it
`provides no definition of “withstand exposure.” ................................ 46
`
`D. Ground 4: Claims 1-43 lack written description under §112 as to the
`expansion joint system having foam with “a density when installed in a
`range of about 200 kg/m3 to about 700 kg/m3.” .......................................48
`
`E. Ground 5: Claims 1-43 lack written description under §112 as to the
`expansion joint system “has an ability to withstand exposure to a
`temperature of about 540/1010° C. at about five minutes/two hours.”....50
`
`
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`
`3
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`F. Ground 6: Claims 1-43 are indefinite under §112 as to the expansion joint
`system “has an ability to withstand exposure to a temperature of about
`540/1010° C. at about five minutes/two hours.” ......................................53
`
`G. Ground 7: Claims 1-43 lack enablement under §112 to provide an
`“expansion joint system [which] accommodates movement when
`installed between substrates, … and the expansion joint system has an
`ability to withstand exposure to a temperature of about 540 ° C. at about
`five minutes, and the foam including the fire retardant material is
`configured to pass testing mandated by UL 2079.” .................................55
`
`1. The broad scope of the claims requires broad disclosure. .................. 56
`
`2. There is no disclosure of a particular combination of foam and fire
`retardant, which is necessary in light of the broad scope. ................... 58
`
`3. The Patent Owner has established that their claimed invention cannot
`be arrived at by routine experimentation. ........................................... 61
`
`4. No working examples are provided .................................................... 62
`
`H. Ground 8: Because the ‘262 patent is not entitled to claim priority prior
`to November 13, 2014, claims 1-43 are anticipated by U.S. Patent
`8,341,908. .................................................................................................63
`
`10. The expansion joint system of claim 1, wherein the movement is in
`response to thermal effects on, or seismic movement of, the
`substrates. ............................................................................................ 67
`
`11. The expansion joint system of claim 1, wherein the expansion joint
`system has the ability to withstand exposure to a temperature of about
`1052° C. at about three hours to pass the UL 2079 testing. ................ 67
`
`12. The expansion joint system of claim 1, wherein the expansion joint
`system has the ability to withstand exposure to a temperature of about
`1093° C. at about four hours to pass the UL 2079 testing. ................. 67
`
`IX. Conclusion .........................................................................................................81
`
`
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`4
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`Exhibit List
`
`
`Exhibit Description
`1001 U.S. Patent 9,528,262 B1
`1002 US Endodontics, LLC v. Gold Standard Instruments, LLC, PGR2015-
`00019, Paper 54 (Dec. 28, 2016).
`1003 U.S. Appl. S/N 14/540,514 Specification, Abstract, Claims and
`Drawings as filed November 13, 2014.
`1004 U.S. Appl. S/N 14/540,514 Amendment and Response to Final Office
`Action Filed Concurrently with a Request for Continued Examination
`(August 31, 2016).
`1005 U.S. Appl. S/N 14/540,514 Notice of Allowance and Fee(s) Due
`(November 3, 2016).
`1006 American Heritage® Dictionary of the English Language, Fifth
`Edition. Copyright 2011 by Houghton Mifflin Harcourt Publishing
`Company (“withstand”).
`1007 Underwriter Laboratories, Inc.’s UL 2079 Tests for Fire Resistance of
`Building Joint Systems, Fourth Edition of October 21, 2004, as revised
`through June 30, 2008.
`1008 Original Complaint, Emseal Joint Systems, Ltd. v. Schul International
`Co., LLC and Steven R. Robinson; In the United States District Court
`for the District of New Hampshire (McAuliffe).
`1009 Original Complaint, Cause No. 1:14-CV-00359; Emseal Joint
`Systems, Ltd. v. Willseal, LLC, Ion Management, LLC, Brian J. Iske,
`and Steven R. Robinson; In the United States District Court for the
`District of New Hampshire (Barbadoro).
`1010 U.S. Provisional Patent Application 61/116,453.
`1011 U.S. Patent 8,341,908, issued January 1, 2013 to Hensley et al.
`1012 Amended Complaint, Cause No. 1:14-CV-00358; Emseal Joint
`Systems, Ltd. v. Willseal, LLC, Ion Management, LLC, Brian J. Iske,
`and Steven R. Robinson; In the United States District Court for the
`District of New Hampshire (McAuliffe).
`1013 U.S. Patent 9,644,368 to Witherspoon Issued on May 9, 2017.
`1014 U.S. Patent 8,365,495 to Witherspoon Issued on February 5, 2013.
`1015 U.S. Patent 8,739,495 to Witherspoon Issued on June 3, 2014.
`
`
`5
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`

`

`I.
`
`Introduction
`
`Pursuant to 35 U.S.C. §321 and 37 C.F.R. §42.200, Petitioner Schul
`
`International Company, LLC (“Schul”) petitions for post-grant review of claims 1-
`
`43, of U.S. Patent 9,528,262 (“the ‘262 patent”)(Exh. 1001), assigned to Emseal
`
`Joint Systems, Ltd. (“Emseal”). Claims 1, 13, 24, and 33, and all claims dependent
`
`therefrom (all claims 1-43), are unpatentable and should be cancelled because they
`
`lack adequate written description support under 35 U.S.C. §112(a), in the ‘262 patent
`
`itself as well as in the applications to which the ‘262 patent claims priority. Further,
`
`the claims are both indefinite and non-enabled under 35 U.S.C. §112(a) due to this
`
`inadequate written description. Further still, all claims are anticipated by the prior
`
`art under 35 U.S.C. §102(a). Because the claims are not supported by the written
`
`description, they are not entitled to the benefit of the filing dates of the cited priority
`
`applications. Thus, the ‘262 patent is eligible for post-grant review for several of the
`
`same reasons that its claims are invalid under 35 U.S.C. §112(a).
`
`
`II. Mandatory Notices (37 C.F.R. §42.8)
`
`A. Real Parties in Interest (37 C.F.R. §42.8(b)(1))
`
`Petitioner Schul International Company, LLC is the real party in interest. Its
`
`member is Steven R. Robinson.
`
`B. Related Matters (37 C.F.R. §42.8(b)(2))
`
`The ‘262 patent is currently being asserted against Petitioner by Patent Owner
`
`
`
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`6
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`in pending litigation originally field on 1:14-CV-00358; Emseal Joint Systems, Ltd.
`
`v. Schul International Co., LLC and Steven R. Robinson; In the United States District
`
`Court for the District of New Hampshire (McAuliffe) (Exh. 1008) and Cause No.
`
`1:14-CV-00359; Emseal Joint Systems, Ltd. v. Willseal, LLC, Ion Management,
`
`LLC, Brian J. Iske, and Steven R. Robinson; In the United States District Court for
`
`the District of New Hampshire (Barbadoro) (Exh. 1009). These were ultimately
`
`consolidated (collectively, after consolidation, the “Lawsuit”) and as amended to
`
`assert the ‘262 patent on August 28, 2017 in the U.S. District Court for New
`
`Hampshire, No. 1:14-cv-00358SM (Exh. 1012). Additionally, Patent Owner has
`
`patent applications pending that might be affected by this proceeding: Ser. Nos.
`
`14/927,047 filed on 10-29-2015; 15/386,907 filed on 12-21-2016; 15/494,069 filed
`
`on 04-21-2017; 15/494,809 filed on 04-24-2017; 15/583,239 filed on 05-01-2017;
`
`15/589,329 filed on 05-08-2017; 15/613,936 filed on 06-05-2017; 15/681,622 filed
`
`on 08-21-2017; and 15/681,492 which has not yet received a filing date; as well as
`
`any other patent applications claiming priority to Emseal’s Provisional S/N
`
`61/116,453 filed November 20, 2008 (Exh 1010). Petitioner is not aware of any
`
`other pending administrative matter or litigation that would affect, or be affected by,
`
`a decision in this proceeding.
`
`C. Lead and Backup Counsel, and Service Information (37 C.F.R.
`§§42.8(b)(3), 42.8(b)(4) and 42.10(a))
`
`Pursuant
`
`to 37 C.F.R. §§42.8(b)(3)(Lead and Backup Counsel),
`
`
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`7
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`42.8(b)(4)(Service Information) and 42.10(a)(counsel), Schul designates Gary
`
`Lambert (Reg. No. 35,925) as lead counsel and James E. Hudson III (Reg. No.
`
`41,081) and David J. Connaughton, Jr. (Reg. No. 67,275) as back-up counsel, and
`
`can be reached at:
`
`
`
`
`
`Lead counsel
`Gary E. Lambert
`USPTO Reg. No. 35,925
`Lambert & Associates
`92 State Street. Suite 200
`Boston, MA 02109
`Telephone: 617.720.0091
`Facsimile: 617.720.6307
`lambert@lambertpatentlaw.com
`
`
`Backup counsel
`James E. Hudson III
`USPTO Reg. No. 41,081
`Crain, Caton & James
`Five Houston Center
`1401 McKinney St., Suite 1700
`Houston, TX 77010
`Telephone: 713-752-8652
`Facsimile: 713.658.1921
`jhudson@craincaton.com
`
`David J. Connaughton, Jr.
`USPTO Reg. No. 67,275
`Lambert & Associates
`92 State Street. Suite 200
`Boston, MA 02109
`Telephone: 617.720.0091
`Facsimile: 617.720.6307
`connaughton@lambertpatentlaw.com
`
`
`D. Power of Attorney
`
`A power of attorney is filed herewith according to 37 C.F.R. §42.10(b).
`
`E. Payment of Fees
`
`The required fee of Fifty One Thousand One Hundred Fifty Dollars
`
`($51,150.00) as specified in 37 C.F.R. §42.15(b) has been paid at the time of filing.
`
`
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`8
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`The USPTO is hereby authorized to charge any fee deficiency or credit any
`
`overpayment to Deposit Account 12-0115 (Lambert & Associates).
`
`III. Eligibility for Post-Grant Review
`
`The written description of the ‘262 Patent, as well as the nearly identical
`
`written descriptions of the patent applications to which the ‘262 Patent claims
`
`priority, all fail to provide adequate support for claims 1-43 of the ‘262 Patent.
`
`Therefore, the ‘262 Patent cannot claim priority to these earlier applications, and it
`
`is entitled to a filing date of, at the earliest, November 13, 2014, after the critical
`
`date for the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`
`(2011)(“AIA”). The post-grant provisions of the AIA apply to any patent containing
`
`at least one claim with an effective date after March 16, 2013. See AIA, §3(n)(1)
`
`and 6(f)(2)(A). A claim may be entitled to an effective filing date of the actual filing
`
`date of an earlier-filed patent application only if the earlier-filed application fully
`
`supports the claimed invention in compliance with the written description
`
`requirement of 35 U.S.C. §112(a). See 35 U.S.C. §§100(i)(1), 119(e), and 120;
`
`Anascape, Ltd. v. Nintendo of Am. Inc., 601 F.3d 1333, 1335 (Fed. Cir. 2010) (“To
`
`obtain the benefit of the filing date of a parent application, the claims of the later
`
`filed application must be supported by the written description in the patent in
`
`sufficient detail that one skilled in the art can clearly conclude that the inventor
`
`invented the claimed invention as of the filing date sought.”). When a patent’s
`
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`9
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`claims are not adequately supported under §112 by a priority application, the
`
`effective filing date of those claims, for the purpose of post-grant review eligibility,
`
`is the actual filing date of the patent in question. E.g. US Endodontics, LLC v. Gold
`
`Standard Instruments, LLC, PGR2015-00019, Paper 54 at 11 (Dec. 28, 2016) (“[W]e
`
`agree with Petition that if claims 12-16 are shown to lack adequate §112 support in
`
`the ‘311 application and all of the earlier applications to which priority is claims, the
`
`effective filing date for those claims is the actual filing date of the ‘311
`
`application.”), attached hereto as Exhibit 1002.
`
`For purposes of simplicity, only the specification of the ‘262 Patent is cited to
`
`because the priority references contain the same content. The ‘262 patent is a
`
`continuation of U.S. Appl. S/N 14/278,210 filed May 15, 2014 (now U.S. Patent
`
`9,644,368) (Exh. 1013), which was itself a continuation of U.S. Appl. S/N
`
`13/721,855 filed December 20, 2012 (issued June 3, 2014 as 8,739,495) (Exh. 1015),
`
`which was a continuation of U.S. Appl. S/N 12/622,574 filed November 20, 2009
`
`(issued February 5, 2013 as U.S. Patent 8,365,495) (Exh. 1014), which claimed
`
`priority to Provisional S/N 61/116,453 filed November 20, 2008 (Exh. 1010). These
`
`non-provisional applications use a common specification, drawings, and abstract,
`
`varying only in the claims, assertions of priority, and minor, non-material
`
`corrections. In the present case, the challenged claims were not fully disclosed until
`
`made in an amendment on August 31, 2016.
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`10
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`Neither the application which issued as the ‘262 patent (Exh 1003) nor the
`
`priority documents (Exh. 1010 and 1013-15) provide a written description, required
`
`for each of claims 1-43, of an expansion joint system having “the foam including the
`
`fire retardant material is configured to pass testing mandated by UL 2079;” of an
`
`expansion joint system which does not include an intumescent material applied to a
`
`surface of the foam; and of an expansion joint system that “has an ability to withstand
`
`exposure to a temperature of about 540/1010º C. at about five minutes/two hours;”
`
`Moreover, the ‘262 lacks written description support as it erroneously attempts to
`
`incorporate essential material by reference, namely “UL 2079,” a non-patent
`
`reference. See 37 C.F.R. 1.57.
`
`A. None of the written description or the priority applications provide
`written description support for “the foam including the fire retardant
`material is configured to pass testing mandated by UL 2079.”
`
`This claim limitation of “the foam including the fire retardant material is
`
`configured to pass testing mandated by UL 2079” is new matter that was added in
`
`the August 31, 2016 claim amendments(Exh. 1004). None of the written description
`
`or the priority applications provide support for this claim element, and therefore the
`
`‘262 Patent is not entitled to claim priority to any prior applications. A person of
`
`ordinary skill would not have understood Emseal to have been in possession of any
`
`expansion joint wherein the foam including the fire retardant, alone, is configured to
`
`pass testing mandated by the UL 2079 Tests (2008) as is required by all claims.
`
`
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`11
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`There is no disclosure that foam including the fire retardant, by itself, has the
`
`capability to “pass” the UL 2079 Tests (2008). The priority references similarly
`
`provide no support for a foam including the fire retardant, alone, having any such
`
`property.
`
`Rather, the specification and priority documents teach it is the combination of
`
`intumescent coating, elastomer coating, and fire-retardant infused foam, identified
`
`therein as “the resultant composite,” that “can pass” the UL 2079 Tests (2008). The
`
`only reference to the claimed invention in connection with the UL 2079 Tests (2008)
`
`is found in the Detailed Description, which teaches “the resultant composite can pass
`
`UL 2079”; there is no teaching of merely the foam including the fire retardant
`
`material configured to pass testing mandated by the UL 2079 Tests (2008):
`
`This density of 400-450 kg/m3 was determined
`
`through
`
`experimentation, as a reasonable minimum which still affords adequate
`
`fire retardant capacity, such that the resultant composite can pass the
`
`UL 2079 test program.
`
`
`Exh. 1001, Col. 6, lines 63-67. This “composite,” which is taught to “pass” the UL
`
`2079 Tests (2008), is clearly defined earlier in the Detailed Description to include
`
`both an elastomer layer and a fire retardant intumescent layer, precluding the
`
`claimed limitation:
`
`The elastomer 14 is tooled or otherwise configured to create a
`
`"bellows," "bullet," or other suitable profile such that the elastomeric
`
`
`
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`12
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`

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`material can be compressed in a uniform and aesthetic fashion while
`
`being maintained in a virtually tensionless environment.
`
`
`
`The surface of the infused foam laminate opposite the surface coated
`
`with the waterproofing elastomer 14 is coated with an intumescent
`
`material 16. One type of intumescent material 16 may be a caulk having
`
`fire barrier properties. A caulk is generally a silicone, polyurethane,
`
`polysulfide, sylil-terminated-polyether, or polyurethane and acrylic
`
`sealing agent in latex or elastomeric base. Fire barrier properties are
`
`generally imparted to a caulk via the incorporation of one or more fire
`
`retardant agents. One preferred intumescent material 16 is 3M
`
`CP25WB+, which is a fire barrier caulk available from 3M of St. Paul,
`
`Minn. Like the elastomer 14, the intumescent material 16 is tooled or
`
`otherwise configured to create a "bellows" profile to facilitate the
`
`compression of the foam lamination.
`
`
`
`After tooling or otherwise configuring to have the bellows-type of
`
`profile, both the coating of the elastomer 14 and the intumescent
`
`material 16 are cured in place on the foam 12 while the infused foam
`
`lamination is held at the prescribed compressed width. After the
`
`elastomer 14 and the intumescent material 16 have been cured, the
`
`entire foam composite is removed from the fixture, optionally
`
`compressed to less than the nominal size of the material and packaged
`
`for shipment to the job site
`
`
`Exh. 1001, Col. 5, line 44 – Col. 6 (Emphasis added). See also Exh. 1010, [0024]-
`
`[0025] (“After the elastomer 14 and the intumescent material 16 have been cured,
`
`
`
`
`13
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`

`

`the entire foam composite is, removed from the fixture, optionally compressed to
`
`less than the nominal size of the material and packaged for shipment to the job site.”).
`
`There is certainly no teaching of foam which can “pass the UL 2079 test
`
`program” and it cannot be inferred or implied that the foam has this property because
`
`an additional fire-retardant intumescent layer is needed to provide adequate fire
`
`resistance to “pass” the UL 2079 Tests (2008). Therefore, none of the written
`
`description or priority references provide support for this claim element, and the
`
`effective filing date is, at best, November 13, 2014.
`
`B. None of the written description or the priority applications provide
`written description support for an expansion joint system which does
`not include an intumescent material applied to a surface of the foam.
`
`There is no support in the ‘262 or priority applications for an expansion joint
`
`system without an intumescent material layer, though all claims eliminate this key
`
`intumescent layer. The written description requirement is not satisfied when a
`
`patentee claims subject matter that eliminates key features taught in the
`
`specification. See ICU Med., Inc. v. Alaris Med. Sys., Inc., 558 F.3d 1368 (Fed. Cir.
`
`2009) (claims invalid where the patentee could not point to any disclosure in the
`
`patent specification which described a valve without a spike consistent with the
`
`claims, because the description only described a valve with a spike).
`
`Every claim of the ‘262 patent provides that the claimed invention can “pass
`
`testing mandated by UL 2079,” and because the disclosures of the ‘262 patent as
`
`
`
`
`14
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`

`

`well as the priority documents are explicit that the invention disclosed which can
`
`“pass the UL 2079 test program” is a resultant composite including an intumescent
`
`layer, any claim which lacks the intumescent layer lacks support from the written
`
`description. Thus, as a person of ordinary skill in the art would have only understood
`
`Emseal to have been in possession of an expansion joint system having an
`
`intumescent layer, not the foam only (claims 1 and 24) or foam and elastomer only
`
`(claims 13 and 33) expansion joints claimed.
`
`The specification of the ‘262 patent, and of every application to which the
`
`‘262 claims priority, discloses only an expansion joint system having an intumescent
`
`material applied to a surface of the foam. See Exh. 1001, Abstract; Exh. 1001, Col.
`
`3, line 26 – Col. 4, line 14; Exh. 1001, Col. 5, lines 49-51; Exh. 1001, Col. 5, line 63
`
`to Col. 6, line 4; Exh. 1001, Col. 6, line 13-26; Exh. 1001, Col. 6, lines 35-48. For
`
`example, the Abstract of each priority non-provisional:
`
`A fire resistant and water resistant expansion joint system comprises a
`
`compressed lamination of fire retardant infused open celled foam, one coat of
`
`an elastomeric waterproofing or water resistant material on the lamination,
`
`and another coat of an intumescent material on an opposing surface of
`
`the lamination, thereby providing fire resistance in one direction and water
`
`resistance in the opposite direction. The intumescent material may be further
`
`coated with a similar elastomeric material, thereby providing fire resistance
`
`in one direction and water resistance in both directions. In the alternative,
`
`the compressed lamination may comprise first and second opposing
`
`
`
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`15
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`

`layers of intumescent material thereon each having a respective layer of
`
`elastomeric material to provide both water resistance and fire resistance in
`
`both directions.
`
`Exh. 1001 (emphasis added); Exh. 1013-15 Abstract.
`
`
`
`The specification of the ‘262 patent, and of every application to which the
`
`‘262 claims priority, discloses only an expansion joint system having an intumescent
`
`material applied to a surface of the foam. Because this fire resistant layer which is
`
`taught to be essential to the invention is not claimed in the ‘262 patent, none of the
`
`written description or priority references provide support for this claim element and
`
`the claims are not entitled to claim priority to these priority references.
`
`C. None of the written description or the priority applications provide
`written description support for foam including the fire retardant with
`“a density when installed in a range of 200-700 kg/m3.”
`
`There is no support in the ‘262 Patent or the priority applications for foam
`
`including the fire retardant with “a density when installed in a range of 200-700
`
`kg/m3. Specifically, no installed density range between 200-400 kg/m3 is taught. The
`
`specification and priority documents teach that the foam density after compression
`
`is in the range of 200 kg/m3 to 700 kg/m3. Exh. 1001 Col. 6 lines 59-60. However,
`
`the specification immediately goes on to distinguish compression density from the
`
`claimed installation density, in the next sentence, clearly stating:
`
`After installation the laminate will cycle between densities of
`
`approximately 750 kg/m3 at the smallest size of the expansion joint to
`
`
`
`
`16
`
`

`

`approximately 400-450 kg/m3 (or less) at the maximum size of the joint.
`
`This
`
`density
`
`of
`
`400-450
`
`kg/m3 was
`
`determined
`
`through
`
`experimentation, as a reasonable minimum which still affords adequate
`
`fire retardant capacity, such that the resultant composite can pass the
`
`UL 2079 test program.
`
`
`Exh. 1001, Col. 6, lines 60-67.
`
`The specification clearly distinguishes “compressed” from “installed” as is
`
`demonstrated in the above citation. The specification therefore makes clear that in
`
`an installed state, the density ranges taught are between 400-750 kg/m3. There is no
`
`teaching of a foam, in an installed state, having a density less than 400 kg/m3. We
`
`are also told that a minimum density of 400 kg/m3 is required to for the foam of the
`
`composite to “pass the UL 2079 test program.” Therefore, the specification does not
`
`provide written description support for the claimed “the foam including the fire
`
`retardant material has a density when installed in a range of about 200 kg/m3 to about
`
`700 kg/m3” because, among other shortcomings, no installed density range between
`
`200-400 kg/m3 is taught. Therefore, none of the ‘262 patent written description or
`
`priority references provide support for this claim element and the claims are not
`
`entitled to claim priority to these priority reference.
`
`D. The written description and the priority applications improperly seek to
`incorporate the UL 2079 Tests by reference, and thus fail to provide
`written description support for an expansion joint system which “has an
`ability to withstand exposure to a temperature of about 540/1010°°°° C. at
`
`
`
`
`17
`
`

`

`about five minutes/two hours” and “foam including the fire retardant
`material is configured to pass testing mandated by UL 2079.”
`
`Claim elements in claims 1-43 impermissibly seek to incorporate the UL 2079
`
`Tests (2008) by reference to provide written description support. The UL 2079 Tests
`
`(2008) is cited to provide essential material (material needed to provide written
`
`description support) to the claims but is non-patent literature.
`
`It is impermissible for a non-patent literature document to be incorporated by
`
`reference to teach essential material. See 37 C.F.R. 1.57(d). Patent Owner relies on
`
`the alleged teaching from the UL 2079 Tests (2008) to support this claim element
`
`because none of the ‘262 Patent written description or any of the priority references
`
`teaches any expansion joint with the above claim limitation.
`
`Each claim includes a limitation of “has an ability to withstand exposure to a
`
`temperature of about 540/1010° C. at about five minutes/two hours” which Emseal
`
`has argued is somehow disclosed in the UL 2079 Tests (2008). Each claim also
`
`includes a limitation specifically addressed to the UL 2079 Tests (2008): “and the
`
`foam including the fire retardant material is configured to pass testing mandated by
`
`UL 2079.” The specification is silent on what is meant by “to withstand exposure to
`
`a temperature of about 540º C. at about five minutes” and by “configured to pass
`
`testing mandated by UL 2079.” Therefore, for the specification to possibly support
`
`these essential claim elements, the UL 2079 Tests (2008) must be presumed to be
`
`incorporated by reference. However, because the claim elements rely on the UL
`
`
`
`
`18
`
`

`

`2079 Tests (2008) as essential material, but the UL 2079 Tests (2008) is non-patent
`
`literature, the content cannot be incorporated by reference, and thus the written
`
`description and priority applications do not support these claim elements.
`
`Therefore, because the applications to which the ‘262 patent claims priority
`
`fail to support the claimed invention, the challenged claims (claims 1-43) are only
`
`entitled to, at best, an effective filing date of the ‘262 Patent’s filing date on
`
`November 13, 2014. The ‘262 patent is thus eligible for post-grant review under the
`
`AIA for any one of the same infirmities which render it invalid for failure to satisfy
`
`the written description requirements of 35 U.S.C. §112 as discussed in specific detail
`
`below. Neither the ‘262 patent nor any of its cited priority applications “clearly
`
`allow[s] persons of skill in the art to recognize the inventor invented what is
`
`claimed.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir.
`
`2010) (quotation omitted). The ‘262 Patent is subject to post grant review under the
`
`AIA.
`
`IV. Right to File and Grounds for Standing (37 C.F.R. §§42.201, 42.202,
`42.204(a))
`
`The present petition is being filed on or before the date that is nine-months
`
`after the date of the grant of the patent, which issued December 27, 2016, namely
`
`September 27, 2017. Under 37 C.F.R. §42.201, Petitioner Schul is not estopped
`
`from challenging claims 1-43, on the grounds identified herein and has not filed a
`
`
`
`
`19
`
`

`

`civil action challenging the validity of the patent.1 As established above in Section
`
`III, the patent for which review is sought is available for post-grant review.
`
`V.
`
`Identification of Challenge under 37 C.F.R. §42.204(b) and Relief
`Requested as to Each Claim
`
`Pursuant to 37 C.F.R. 42.204(b), Schul requests that all claims (claims 1-43)
`
`be cancelled for 1) failing to meet the requirements of §112, and/or 2) being
`
`anticipated u

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