`
`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. PGR2018-_________________
`U.S. Patent 9,644,368
`
`PETITION FOR POST-GRANT REVIEW
`
`
`
`1
`
`
`
`
`
`
`
`

`

`Table of Contents
`
`
`I.
`
`Introduction ......................................................................................................... 7
`
`II. Mandatory Notices (37 C.F.R. §42.8) ................................................................. 7
`
`A. Real Parties in Interest (37 C.F.R. §42.8(b)(1)) ......................................... 7
`
`B. Related Matters (37 C.F.R. §42.8(b)(2)) .................................................... 8
`
`C. Lead and Backup Counsel, and Service Information (37 C.F.R.
`§§42.8(b)(3), 42.8(b)(4) and 42.10(a)) ....................................................... 9
`
`D. Power of Attorney ....................................................................................10
`
`E. Payment of Fees .......................................................................................10
`
`III. Eligibility for Post-Grant Review .....................................................................10
`
`A. The is no support in the ‘368 patent or priority documents for the claimed
`limitations of a fire retardant infused foam “configured to pass testing
`mandated by the UL 2079.”......................................................................13
`
`B. There is no support in the ‘368 patent or priority documents for an
`expansion joint system absent an intumescent material ...........................19
`
`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.” .............................22
`
`D. The written description and the priority applications improperly seek to
`incorporate the UL 2079 Tests by reference, and thus fail to provide what
`is asserted by Emseal to be written description support for elements in
`each of claims 1-17. ..................................................................................23
`
`E. During prosecution, the application which became the ‘368 patent
`contained a claim which had an effective filing date after March 16, 2013
`and thus the ‘368 patent is available for post-grant review. ....................26
`
`F. The effective filing date of claims 1-17 is after March 16, 2013, thus
`making the ‘368 patent eligible for post-grant review. ............................27
`
`IV. Right to File and Grounds for Standing (37 C.F.R. §§42.201, 42.202,
`42.204(a)) .................................................................................................................28
`
`V. Identification of Challenge under 37 C.F.R. §42.204(b) and Relief Requested
`as to Each Claim ......................................................................................................28
`
`VI. Background and Summary of the ‘368 Patent ..................................................30
`
`
`
`
`2
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`

`

`A. Summary of the ‘368 Patent Written Description ....................................30
`
`B. Summary of the Prosecution History .......................................................31
`
`VII. Claim Construction (37 C.F.R. §42.204(b)(3) ..................................................33
`
`A. “capable of withstanding exposure” .........................................................34
`
`B. “to pass testing mandated by UL 2079.” ..................................................35
`
`VIII. Grounds of Unpatentability (37 C.F.R. §42.204(b)(4)-(5)). ...........................39
`
`A. Ground 1: Claims 1-17 lack written description support under §112 for
`the claimed element “foam … is configured to pass testing mandated by
`UL 2079.” .................................................................................................42
`
`B. Ground 2: Claims 1-17 lack written description support under §112 for
`an expansion joint system absent an intumescent material. .....................45
`
`1. The specification of the ‘368 patent, and of every application to which
`the ‘368 claims priority, only discloses expansion joint systems
`having an intumescent material. .......................................................... 47
`
`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 for lack of adequate written
`description. .......................................................................................... 51
`
`C. Ground 3: Claims 1-17 lack written description support under §112
`because the UL 2079 cannot be incorporated by reference to augment the
`disclosure. .................................................................................................52
`
`1. Claims 1-17 lack written description support under §112 for the
`claimed expansion joint system because the UL 2079 Tests is essential
`material that is non-patent literature, and thus cannot be incorporated
`by reference. ........................................................................................ 53
`
`2. Even if incorporation by reference of 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/maintain fire resistance.” ..................................................... 55
`
`D. Ground 4: Claims 1-17 lack written description support under §112 as to
`an expansion joint system having foam with “a density when installed in
`a range of about 200 kg/m3 to about 700 kg/m3.” ....................................57
`
`E. Ground 5: Claims 1-17 lack written description support under §112 as to
`the expansion joint system “capable of withstanding exposure/ maintain
`
`
`
`
`3
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`

`

`fire resistance upon exposure to a temperature of about 540° C. at about
`five minutes.”............................................................................................59
`
`F. Ground 6: Claims 1-17 are indefinite under §112(a) because, as rejected
`during prosecution, the meaning of “pass testing mandated by UL 2079”
`is vague and indefinite. .............................................................................62
`
`G. Ground 7: Claims 1-17 are indefinite under §112 as to the expansion joint
`system “… at about five minutes.” ...........................................................64
`
`H. Ground 8: Claims 8-17 are indefinite under §112(a) as to the system
`“configured to maintain fire resistance.” ..................................................65
`
`I. Ground 9: Claims 1-17 lack enablement under §112(a). .........................66
`
`1. Wands Factor 8 favors a finding of non-enablement. ......................... 68
`
`2. Wands factors 4 and 1 favor a finding of non-enablement. ................ 69
`
`3. Wands factors 7 and 2 favor a finding of non-enablement ................. 71
`
`4. Wands factors 5 and 6 favor a finding of non-enablement. ................ 71
`
`5. Wands factor 3 favors a finding of non-enablement. .......................... 72
`
`J. Ground 10: Because the ‘368 patent is not entitled to claim priority prior
`to May 15, 2014, claims 1-17 are anticipated by U.S. Patent 8,341,908. 73
`
`IX. Conclusion .........................................................................................................84
`
`
`
`
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`
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`
`4
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`

`

`Exhibit List
`
`
`1003
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`1010
`1011
`
`Exhibit Description
`1001
`U.S. Patent 9,644,368 B1
`1002
`US Endodontics, LLC v. Gold Standard Instruments, LLC,
`PGR2015-00019, Paper 54 (Dec. 28, 2016).
`U.S. Appl. No. 14/278,210 as filed May 15, 2014.
`U.S. Appl. S/N 14/540,514 Notice of Allowance and Fee(s) Due
`(November 3, 2016).
`American Heritage® Dictionary of the English Language, Fifth
`Edition. Copyright 2011 by Houghton Mifflin Harcourt Publishing
`Company (“withstand”).
`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.
`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).
`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).
`U.S. Provisional Patent Application No. 61/116,453.
`U.S. Patent 8,341,908, issued January 1, 2013 to Hensley et al.
`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).
`U.S. Patent 8,365,495 to Witherspoon Issued on February 5, 2013.
`U.S. Patent 8,739,495 to Witherspoon Issued on June 3, 2014.
`U.S. Appl. No. 14/278,210 Amendment and Response to Non-Final
`Office Action (April 6, 2015).
`U.S. Appl. No. 13/721,855 as filed December 12, 2012.
`Dow Corning® 790 Silicone Building Sealant Product Information
`(2005).
`U.S. Appl. No. 13/721,855 Amendment and Response to Non-Final
`Office Action (December 9, 2013
`U.S. Appl. No. 14/278,210 Amendment and Response to Non-Final
`Office Action (August 18, 2016).
`
`1012
`1013
`1014
`
`1015
`1016
`
`1017
`
`1018
`
`
`
`
`5
`
`

`

`1019
`1020
`
`U.S. Appl. No. 14/278,210 Final Rejection (July 24, 2015)
`U.S. Appl. No. 14/278,210 Amendment and Response to Final
`Office Action (August 24, 2015).
`
`
`6
`
`
`
`
`
`
`

`

`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-
`
`17 of U.S. Patent 9,644,368 (“the ‘368 patent”)(Ex. 1001), assigned to Emseal Joint
`
`Systems, Ltd. (“Emseal”). Claims 1, 8, and 15, and all claims dependent therefrom
`
`(all claims 1-17), are unpatentable and should be cancelled because they lack
`
`adequate written description support under 35 U.S.C. §112(a) in the ‘368 patent
`
`specification itself as well as in the applications to which the ‘368 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 ‘368 patent claims
`
`are not supported by the patent’s specification or by the applications to which the
`
`‘368 patent claims priority, the ‘368 patent claims are not entitled to the benefit of
`
`the filing dates of the cited priority applications. Thus, the ‘368 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)
`
` 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.
`
`
`
`
`7
`
`

`

` Related Matters (37 C.F.R. §42.8(b)(2))
`
`The ‘368 patent is currently being asserted against Petitioner by Patent Owner
`
`in pending litigation originally filed on August 13, 2014 as Cause No. 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) (Ex. 1007) 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) (Ex.
`
`1008). These causes of action were ultimately consolidated by the U.S. District
`
`Court for New Hampshire in Cause No. 1:14-cv-00358SM (the “Lawsuit”) and on
`
`August 28, 2017, Patent Owner amended their complaint to assert the ‘368 patent
`
`against Petitioner. (Ex. 1011). 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 filed on 08-21-2017; as well as any other patent applications
`
`claiming priority to Emseal’s Provisional Application No. 61/116,453 filed
`
`November 20, 2008 (Ex. 1009). The Petitioner has also filed a petition for post grant
`
`review on U.S. 9,528,262 which is owned by Emseal and claims priority to the ‘368
`
`
`
`
`8
`
`

`

`patent, having case number PGR2017-0053. Petitioner is not aware of any other
`
`pending administrative matter or litigation that would affect, or be affected by, a
`
`decision in this proceeding.
`
` 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),
`
`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, who
`
`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
`
`9
`
`

`

`
`
` Power of Attorney
`
`
`
`A power of attorney is filed herewith according to 37 C.F.R. §42.10(b).
`
` Payment of Fees
`
`The required fee of Thirty-Nine Thousand Six Hundred Fifty Dollars
`
`($39,650.00) as specified in 37 C.F.R. §42.15(b) has been paid at the time of filing.
`
`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 specification of the ‘368 patent, as well as the nearly identical
`
`specifications of the patent applications to which the ‘368 patent claims priority, all
`
`fail to provide adequate written description support for claims 1-17 of the ‘368
`
`patent. Therefore, the ‘368 patent cannot claim priority to the filing dates of these
`
`earlier filed applications, and the ‘368 patent is entitled to a filing date of, at the
`
`earliest, May 15, 2014, a date which is 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). Therefore,
`
`the ‘368 patent is eligible for post-grant review.
`
`A claim may be entitled to an effective filing date of the actual filing date of
`
`
`
`
`10
`
`

`

`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 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 ‘368 patent is cited to
`
`because the priority references contain nearly identical content. The ‘368 patent is a
`
`continuation of U.S. Appl. No. 13/721,855 filed December 20, 2012 (issued June 3,
`
`2014 as 8,739,495) (Ex. 1013), which is a continuation of U.S. Appl. No. 12/622,574
`
`
`
`
`11
`
`

`

`filed November 20, 2009 (issued February 5, 2013 as U.S. Patent 8,365,495) (Ex.
`
`1012), which claims priority to Provisional Application No. 61/116,453 filed
`
`November 20, 2008 (Ex. 1009). These non-provisional applications use a common
`
`specification, drawings, and abstract, varying only in the claims, assertions of
`
`priority, and minor, non-material corrections, and the subject matter of these
`
`applications mirrors the material disclosed in the provisional application. In the
`
`patent at issue, the challenged claims were not fully disclosed until presented in an
`
`amendment on August 18, 2016.
`
`Neither the application which issued as the ‘368 patent (U.S. Appl. No.
`
`14/278,210) (Ex. 1003) nor the priority documents (Ex. 1009 and 1012-13) provide
`
`§112 written description support for any of allowed claims 1-17, an apparent, yet
`
`significant, oversight committed by the Patent Examiner. Neither the ‘368 patent nor
`
`the documents to which it claims priority provide support for an expansion joint
`
`system having the recited claim elements of “the fire retardant infused foam is
`
`configured to pass testing mandated by UL 2079” (Claim 1) or “the foam with the
`
`fire retardant material is configured to pass testing mandated by UL 2079” (Claims
`
`8 and 15); or support for an expansion joint system which does not include an
`
`intumescent material applied to a surface of the foam; an expansion joint system that
`
`“is capable of withstanding exposure to a temperature of about 540º C. at about five
`
`minutes;” (Claim 1) or for an expansion joint system “configured to maintain fire
`
`
`
`
`12
`
`

`

`resistance upon exposure to a temperature of about 540º C. at about five minutes”
`
`(Claims 8 and 15). Moreover, the ‘368 patent 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. Finally, during prosecution, the
`
`application which became the ‘368 patent contained a claim which had an effective
`
`filing date after March 16, 2013, and thus the ‘368 patent is available for post-grant
`
`review.
`
` The is no support in the ‘368 patent or priority documents for the
`claimed limitations of a fire retardant infused foam “configured to pass
`testing mandated by the UL 2079.”
`
`Independent claim 1 of the ‘368 patent recites, in part, “the fire retardant
`
`infused foam is configured to pass testing mandated by UL 2079,” and independent
`
`claim 8 and independent claim 15 of the ‘368 patent recite, in relevant part, “the
`
`foam with the fire retardant material is configured to pass testing mandated by UL
`
`2079.” Each of claims 2-7, 9-14, and 16-17 depends from one of independent claims
`
`1, 8, or 15, and thus each and every claim of the ‘368 patent requires one of the
`
`above-recited limitations. These limitations were added during prosecution of the
`
`‘368 patent and lack support in the specification or in any of the priority documents.
`
`(See Ex. 1019). Neither the written description of the ‘368 patent nor the applications
`
`to which it claims priority provide support for these claim elements, and therefore
`
`the ‘368 patent is not entitled to claim priority to these prior applications.
`
`
`
`
`13
`
`

`

`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. There is no disclosure that foam including the fire retardant,
`
`by itself, has the capability to “pass” testing mandated by UL 2079 (2008). Instead,
`
`the specification suggests that it is the arrangement of a fire resistant layer on at
`
`least one side of the fire retardant infused foam which provides fire resistance
`
`to the side of the expansion joint that it is applied. Were the foam sufficiently fire
`
`resistant on its own, it would be sufficiently fire resistant on both sides of the
`
`expansion joint, and no discussion of the directional fire resistance caused by the fire
`
`resistant layer would be required. The priority references similarly provide no
`
`support for a foam including the fire retardant, alone, having any such property.
`
`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 “is configured to pass testing mandated by”
`
`the UL 2079 Tests (2008). The foam, after being infused with fire retardant, is
`
`identified as “[t]he resultant uncompressed foam” (Col. 4, line 64 - Col. 5, line 3).
`
`Thereafter it is referenced only as “the infused foam” (Col. 6, line 58), “the infused
`
`foam laminate” (Col. 5, lines 21, 49), and “the foam laminate” (Col. 6, line 11). It
`
`is not referenced as a composite. The only reference to the claimed invention in
`
`
`
`
`14
`
`

`

`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 fire retardant infused foam being 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. (Emphasis added)
`
`
`Ex. 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
`
`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
`
`
`
`
`15
`
`

`

`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
`
`
`Ex. 1001, Col. 5, line 44 – Col. 6 line 4 (Emphasis added). Therefore, the only
`
`teaching of a joint with respect to UL 2079 is a composite which has a fire retardant
`
`infused foam, an elastomer layer, and an intumescent layer.
`
`
`
`Should Emseal attempt to argue that support for fire retardant infused foam
`
`being configured to pass testing mandated by UL 2079 is found in the parent
`
`application 13/721,855 as originally filed (the “’855 application”, Ex. 1015), it will
`
`be advancing a failing argument. At best Emseal could attempt to rely on claim 13
`
`as filed to allegedly support this limitation of claims 1-17 of the ‘368 patent. But
`
`
`
`
`16
`
`

`

`such reliance would be misplaced.
`
`
`
`
`
`
`
`
`
`
`
`Claim 1 of the ‘855 application reads:
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`1. A fire and water resistant expansion joint system, comprising:
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`foam;
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`a fire retardant material infused into the foam; and
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`a water resistant layer; wherein the fire and water resistant expansion joint
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`system is configured to define a profile to facilitate compression of the system
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`when installed between substrates.
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`Claim 13, which depends from claim 1 reads:
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`13. The fire and water resistant expansion joint system of claim 1, wherein the
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`foam has an infused foam density when compressed in a range of about 400 kg/m3
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`to about 450 kg/m3 such that the fire and water expansion joint system passes UL
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`2079 testing.
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`(Ex. 1015 p.11-12).
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`It would be incorrect and logically flawed to assert that because claim 13
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`recites an expansion joint that “passes UL 2079 testing” comprising a water resistant
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`layer and a fire retardant infused foam that when compressed, has a density of
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`between 400-450 kg/m3, that this claim thus teaches that the fire retardant infused
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`foam, alone, can pass testing mandated by UL 2079. Such an interpretation would
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`be contrary to the plain language of the claim.
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`Claim 13 does not state that the fire retardant infused foam can pass testing
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`mandated by UL 2079. Instead, the claim is consistent with each of Emseal’s
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`applications in this patent family, including the ‘368 specification, which states that
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`it is the expansion joint system that can pass testing mandated by UL 2079. Nothing
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`about the abilities of the fire retardant infused foam are discussed.
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`This potential assertion is further undermined as claim 13 of the ‘855
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`application does not teach that the fire retardant infused foam can pass UL 2079.
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`Instead, claim 13 of the ‘855 application claims this property in connection with a
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`structure which includes a water resistant layer. As one of skill in the art would
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`know, the claimed water resistant layer may impart some level of fire resistance to
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`the resulting composite. For example, the specification of the ‘368 patent (as well as
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`the ‘855 application) teaches that a preferred water resistant layer is Dow Corning
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`® 790. As shown in the attached product data sheet (Ex. 1016), Dow Corning® 790
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`is well known to provide a highly fire-resistant layer. See Ex. 1016, p.2 (Product
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`meets requirements of ASTM E-119). Therefore, no conclusions can be drawn about
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`the capabilities of the fire retardant foam absent the water resistant layer. Thus, claim
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`13 of the ‘855 application provides no teaching or written description support for
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`fire retardant infused foam, alone, configured to pass testing mandated by UL 2079,
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`as required by claims 1-17 of the ‘368 patent.
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`There is no teaching in either the ‘368 patent or any of the priority documents
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`of fire retardant infused foam, alone, that is “configured to pass testing mandated by
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`UL 2079” and it cannot be inferred or implied from the ‘368 patent or any of the
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`priority documents that the infused foam has this property because in each instance
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`where a system is alleged to “pass” testing mandated by the UL 2079 Tests (2008),
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`additional materials are added to the fire-retardant foam. Therefore, neither the
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`written description of the ‘368 patent nor the documents to which the ‘368 patent
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`claims priority provide support for the claim elements: “the fire retardant infused
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`foam is configured to pass testing mandated by UL 2079” (Claim 1) and “the foam
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`with the fire retardant material is configured to pass testing mandated by UL 2079,”
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`(Claim 8 and 15). Claims 1-17 are thus not adequately supported under §112 by any
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`of the claimed priority applications and their effective filing date is thus the actual
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`filing date of the ‘368 patent; May 15, 2014. Accordingly, claims 1-17 are eligible
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`for post-grant review. See US Endodontics, LLC v. Gold Standard Instruments at 11
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`(Dec. 28, 2016).
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` There is no support in the ‘368 patent or priority documents for an
`expansion joint system absent an intumescent material
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`There is no support in the ‘368 patent or in its priority applications for an
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`expansion joint system without an intumescent material layer, though all of the
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`claims of the ‘368 patent omit this key element. The written description requirement
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`is not satisfied when a patentee claims subject matter that eliminates key features
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`taught in the specification. See ICU Med., Inc. v. Alaris Med. Sys., Inc., 558 F.3d
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`1368 (Fed. Cir. 2009) (claims invalid where the patentee could not point to any
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`disclosure in the patent specification which described a valve without a spike
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`consistent with the claims, because the description only described a valve with a
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`spike).
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`Every claim of the ‘368 patent provides that the claimed invention can “pass
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`testing mandated by UL 2079,” but the disclosures of the ‘368 patent as well as the
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`priority documents are explicit that the disclosed invention which can “pass the UL
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`2079 test program” is a resultant composite including an intumescent layer.
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`Therefore, any claim which lacks the intumescent layer lacks support from the
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`written description. Thus, a person of ordinary skill in the art would have understood
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`Emseal to have been in possession only of an expansion joint system having fire
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`retardant infused foam, an elastomer, and an intumescent layer, and would not have
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`understood Emseal to have been in possession of an expansion joint system having
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`only foam and elastomer, as claimed.
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`The specification of the ‘368 patent, and of every application to which the
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`‘368 claims priority, discloses only expansion joint systems having an intumescent
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`material applied to at least one surface of the infused foam. See Ex. 1001, Abstract;
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`Col. 3, line 28 – Col. 4, line 15; Col. 5, lines 49-62; Col. 5, line 63 to Col. 6, line 4;
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`Col. 6, line 13-28; Col. 6, lines 35-49. For example, the Abstract of each priority
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`non-provisional recites:
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`A fire resistant and water resistant expansion joint system comprises a
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`compressed lamination of fire retardant infused open celled foam, one
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`coat of an elastomeric waterproofing or water resistant material on the
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`lamination, and another coat of an intumescent material on an
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`opposing surface of the
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`lamination, thereby providing fire
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`resistance in one direction and water resistance in the opposite
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`direction. The intumescent material may be further coated with a similar
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`elastomeric material, thereby providing fire resistance in one direction
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`and water resistance in both directions. In the alternative, the
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`compressed lamination may comprise first and second opposing
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`layers of intumescent material thereon each having a respective layer
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`of elastomeric material to provide both water resistance and fire
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`resistance in both directions.
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`Ex. 1001 (emphasis added); Ex. 1012-13 Abstract.
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`Neither the ‘368 patent nor any of the applications to which the ‘368
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`patent claims priority provide support for an expansion joint system without an
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`intumescent, fire resistant layer. Because this fire resistant layer is taught as an
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`essential feature of the invention yet is not claimed in any of the claims issued in the
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`‘368 patent, neithe