`Trials@uspto.gov
`571-272-7822
`
`
`
`Paper No. 7
`Entered: August 22, 2018
`
`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 PGR2018-00034
`Patent 9,644,368 B1
`
`____________
`
`
`
`Before GEORGE R. HOSKINS, JAMES A. WORTH, and
`SCOTT C. MOORE, Administrative Patent Judges.
`
`HOSKINS, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Post-Grant Review
`35 U.S.C. § 324(a)
`
`
`
`
`
`
`
`PGR2018-00034
`Patent 9,644,368 B1
`
`
`INTRODUCTION
`I.
`Schul International Company, LLC (“Petitioner”) has filed a Petition
`(Paper 1, “Pet.”) pursuant to 35 U.S.C. §§ 321–329 to institute a post-grant
`review of claims 1–17 of U.S. Patent No. 9,644,368 B1 (“the ’368 patent”).
`Emseal Joint Systems, Ltd. (“Patent Owner”) has filed a Preliminary
`Response (Paper 6, “Prelim. Resp.”). Institution of post-grant review
`requires the information presented in the Petition to demonstrate that, if not
`rebutted, it is more likely than not that at least one challenged claim is
`unpatentable. 35 U.S.C. § 324(a). Applying that standard on behalf of the
`Director (37 C.F.R. § 42.4(a)), we institute a post-grant review to determine
`whether claims 1–17 of the ’368 patent are unpatentable, as described
`further below.
`
`BACKGROUND
`II.
`Real Parties in Interest and Related Proceedings
`A.
`Petitioner identifies itself as the real party in interest for this
`proceeding, with Steven R. Robinson being its member. Pet. 7. Patent
`Owner identifies itself as the real party in interest for this proceeding, and
`indicates Patent Owner is a wholly owned subsidiary of Sika Corporation,
`having Sika AG as a parent company. Paper 4, 2. The parties identify two
`consolidated U.S. District Court litigations as matters that might affect, or be
`affected by, a decision in this proceeding. Pet. 8; Paper 4, 2.
`The parties also identify PGR2017-00053 (“the ’053 PGR”) as a
`related matter to the present proceeding because the ’053 PGR concerns a
`challenge to U.S. Patent No. 9,528,262 B2, which claims benefit of the filing
`date of the ’368 patent as a continuation application. Pet. 8–9; Paper 4, 3.
`
`2
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`PGR2018-00034
`Patent 9,644,368 B1
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`
`The ’368 Patent
`B.
`The ’368 patent discloses a fire and water resistant expansion joint
`system. Ex. 1001, (54), 1:21–26. Figures 1 and 1A of the ’368 patent, for
`example, are reproduced below.
`
`
`
`
`Figure 1 illustrates expansion joint system 10 installed between concrete
`substrates 50, to accommodate thermal and/or seismic movements of
`substrates 50 relative to each other. Id. at 1:30–34, 4:37–52. The
`accommodation is provided by open celled foam 12, illustrated in the detail
`view of Figure 1A. Id. at 4:46–55. The accommodation is additionally
`provided by the bellows-type profile of waterproof elastomer coating 14, and
`fire-resistant intumescent material coating 16, on foam 12. Id. at 5:21–22,
`5:49–52, 5:59–67.
`Elastomer 14 resists the passage of water in one direction of
`system 10, from the top to the bottom in Figure 1. Id. at 3:28–35, 5:21–22,
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`Patent 9,644,368 B1
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`6:4–8. Fire retardant material 60, which is infused into foam 12, and
`intumescent material 16 resist the passage of fire in the opposite direction of
`system 10, from the bottom to the top in Figure 1. Id. at 4:55–58, 6:4–8. In
`an alternate embodiment illustrated in Figure 3, expansion joint system 30
`provides fire resistance in both directions, by providing intumescent
`material 16 on both sides of foam 12. Id. at 3:38–43, 6:35–49.
`Additional disclosures of the ’368 patent are discussed below in
`connection with Petitioner’s various written description challenges to the
`’368 patent claims.
`
`Related Applications to the ’368 Patent
`C.
`The ’368 patent issued from U.S. Patent Application Serial
`No. 14/278,210 (“the ’210 application”). Ex. 1001, (21).
`The ’210 application has at least one child application, U.S. Patent
`Application Serial No. 14/540,514 (“the ’514 application”), filed as a
`continuation of the ’210 application and issued as U.S. Patent
`No. 9,528,262 B2 (“the ’262 patent”). Ex. 2002, (10), (21), (63).
`The ’210 application was a continuation of U.S. Patent Application
`Serial No. 13/721,855 (“the ’855 application”). Ex. 1001, (63). The parent
`’855 application was a continuation of U.S. Patent Application Serial
`No. 12/622,574 (“the ’574 application”), and issued as U.S. Patent
`No. 8,739,495 B1 (“the ’9,495 patent”). Ex. 1013, (10), (21), (63). The
`parent ’574 application asserted priority to U.S. Provisional Application
`Serial No. 61/116,453 (“the ’453 application”), and issued as U.S. Patent
`No. 8,365,495 B1 (“the ’5,495 patent”). Ex. 1012, (10), (21), (60);
`Ex. 1009.
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`4
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`Patent 9,644,368 B1
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`
`The Challenged Claims of the ’368 Patent
`D.
`The ’368 patent contains 17 claims, all of which are challenged by
`Petitioner. Claims 1, 8, and 15 are independent. Claim 1 illustratively
`recites:
`1. An expansion joint system, comprising:
`foam;
`a fire retardant material infused into the foam; and
`wherein the expansion joint system is configured to facilitate
`compression of the system when installed between substrates,
`wherein the foam has a density when installed in a range of
`about 200 kg/m3 to about 700 kg/m3, and
`the system is capable of withstanding exposure to a
`temperature of about 540° C. at about five minutes, and
`the fire retardant infused foam is configured to pass testing
`mandated by UL 2079.
`Ex. 1001, 7:62–8:5 (some line breaks added).
`
`Proposed Grounds of Unpatentability
`E.
`Petitioner challenges claims 1–17 of the ’368 patent on the following
`proposed grounds.1 Pet. 28–29.
`
`
`1 We have re-stated Petitioner’s proposed written description grounds to
`focus on the claim limitations at issue, rather than the bases for Petitioner’s
`contentions. Our summary, further, identifies only the representative
`limitations of claim 1 at issue, except as noted. Our analysis below
`considers all of Petitioner’s contentions, and the limitations of other claims.
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`Patent 9,644,368 B1
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`
`Statute
`
`§ 112(a)
`
`§ 112(a)
`
`§ 112(a)
`
`Challenge
`Lack of written description for “the fire retardant
`infused foam is configured to pass testing mandated
`by UL 2079”
`Lack of written description for claims which do not
`require an intumescent material applied to a surface
`of the foam
`Lack of written description for “the foam has a
`density when installed in a range of about 200 kg/m3
`to about 700 kg/m3”
`Lack of written description for “the system is
`capable of withstanding exposure to a temperature of
`about 540° C. at about five minutes”
`Indefiniteness of “the fire retardant infused foam is
`configured to pass testing mandated by UL 2079”
`Indefiniteness of “the system is capable of
`withstanding exposure to a temperature of about
`540° C. at about five minutes”
`Indefiniteness of “configured to maintain fire
`resistance” (representative claim 8)
`Lack of enablement for a “fire retardant infused
`foam is configured to pass testing mandated by
`UL 2079”
`§ 102(a)(1) Anticipation by Hensley2
`
`§ 112(a)
`
`§ 112(b)
`
`§ 112(b)
`
`§ 112(b)
`
`§ 112(a)
`
`Claims
`
`1–17
`
`1–17
`
`1–17
`
`1–17
`
`1–17
`
`1–17
`
`8–17
`
`1–17
`
`1–17
`
`
`
`
`2 Ex. 1010, U.S. Patent No. 8,341,908 B1 to Hensley and Witherspoon,
`issued January 1, 2013.
`
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`
`III. LEVEL OF ORDINARY SKILL IN THE ART
`Petitioner contends a person having ordinary skill in the art pertaining
`to the ’368 patent “would have: (i) a bachelor’s degree in mechanical
`engineering; and/or (ii) 3–5 years [of] relevant technical experience in the
`expansion joint field.” Pet. 33–34. Patent Owner disagrees, and contends a
`person having ordinary skill in the art:
`would have a bachelor’s degree in mechanical engineering or a
`related academic discipline, in addition to at least 3–5 years of
`relevant technical experience in the expansion joint field or a
`related field and who has an understanding of expansion joint
`systems, joint sealing techniques and technologies including pre-
`compressed foam sealant technologies, fire retardant materials,
`as well as knowledge of standards for evaluating the performance
`aspects of such systems, techniques, and technologies, including
`movement and fire endurance testing under ASTM E-1399,
`ASTM E-119 and especially UL 2079.
`Prelim. Resp. 27–28.
`Based on the current record, Petitioner’s proposal appears to be too
`broad in contemplating that a bachelor’s degree in mechanical engineering,
`alone, is sufficient to achieve a level of ordinary skill in the art. At least
`some relevant technical experience in the expansion joint field, or a related
`field, would appear to be required. At the same time, Patent Owner’s
`proposal appears to be both vague and too narrow in requiring an
`“understanding” of several specific technologies that appear to overlap with
`one another, as well as related performance standards. We determine, based
`on our review of the ’368 patent and other evidence presented at this
`preliminary stage of the proceeding, that a person of ordinary skill in the art
`would have a bachelor’s degree in mechanical engineering or a related
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`academic discipline, in addition to 3–5 years of relevant technical experience
`in the expansion joint field or a related field.
`
`IV. POST-GRANT REVIEW TIMELINESS AND ELIGIBILITY
`Timeliness of the Petition
`A.
`A petition for post-grant review of a patent “may only be filed not
`later than the date that is 9 months after the date of the grant of the patent.”
`35 U.S.C. § 321(c). The ’368 patent was granted on May 9, 2017.
`Ex. 1001, (45). The Petition’s filing on February 9, 2018, therefore, was
`timely. See Pet. 28; Paper 3.
`
`Legal Standards for Post-Grant Review Eligibility
`B.
`The post-grant review provisions of 35 U.S.C. §§ 321–329 apply only
`to patents subject to the first-inventor-to-file provisions of the Leahy-Smith
`America Invents Act3 (“the AIA”).4 See AIA § 6(f)(2)(A) (“The
`amendments made by subsection (d) [enacting 35 U.S.C. §§ 321–329] . . .
`shall apply only to patents described in section 3(n)(1).”). The
`first-inventor-to-file provisions of the AIA apply to any patent issuing from
`an application that contains or contained at any time a claim to a claimed
`invention that has an effective filing date on or after March 16, 2013. See id.
`§ 3(n)(1). As pertinent to the ’368 patent, the term “effective filing date” for
`a claimed invention means:
`
`
`3 Pub. L. No. 112-29, 125 Stat. 284 (2011).
`4 These statutory provisions also apply in part to reviews of covered
`business method patents under AIA § 18, but Petitioner does not contend the
`’368 patent is such a patent.
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`Patent 9,644,368 B1
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`(A) if subparagraph (B) does not apply, the actual filing date of
`the [’368] patent . . . ; or
`(B) the filing date of the earliest application for which the
`[’368] patent . . . is entitled, as to [the claimed] invention, to a
`right of priority under section 119 . . . or to the benefit of an
`earlier filing date under section 120 . . . .
`35 U.S.C. § 100(i)(1).5 Entitlement to the benefit of an earlier application’s
`filing date under sections 119 and 120 is premised on disclosure of the
`claimed invention “in the manner provided by [35 U.S.C.] section 112(a)” in
`the earlier application. See 35 U.S.C. §§ 119(e)(1), 120.
`A “transition application” is an application actually filed on or after
`March 16, 2013, but asserting the benefit of an earlier application’s filing
`date prior to March 16, 2013. See, e.g., MPEP § 2159.04. Pursuant to the
`statutes discussed above, a patent that issues from a transition application is
`available for post-grant review “if the patent contains . . . at least one claim
`that was not disclosed in compliance with the written description and
`enablement requirements of § 112(a) in the earlier application for which the
`benefit of an earlier filing date prior to March 16, 2013 was sought.” U.S.
`Endodontics, LLC v. Gold Standard Instruments, LLC, Case PGR2015-
`00019, Paper 54, at 7–8 (PTAB Dec. 28, 2016) (quoting Inguran, LLC v.
`Premium Genetics (UK) Ltd., Case PGR2015-00017, Paper 8, at 11 (PTAB
`Dec. 22, 2015)).
`The test for sufficiency of a written description under 35 U.S.C.
`§ 112(a) is whether the earlier application’s disclosure “reasonably conveys
`to those skilled in the art that the inventor had possession of the claimed
`
`
`5 The filing date priority benefits provided in the other statutory provisions
`identified in § 100(i)(1)(B) do not apply to the ’368 patent.
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`subject matter as of the filing date.” Ariad Pharms., Inc. v. Eli Lilly & Co.,
`598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc).
`
`Post-Grant Review Eligibility of the ’368 Patent
`C.
`The ’210 application, from which the ’368 patent issued, was a
`transition application. The ’210 application was filed on May 15, 2014, after
`the March 16, 2013 effective date of post-grant review proceedings.
`Ex. 1001, (22). However, the ’210 application was a continuation of the
`’855 application filed on December 20, 2012, which was a continuation of
`the ’574 application filed on November 20, 2009, which asserted priority to
`the ’453 application filed on November 20, 2008. Ex. 1001, (63); Ex. 1013,
`(21), (22), (63); Ex. 1012, (21), (22), (60); Ex. 1009. Thus, the
`’210 application asserts the benefit of a filing date prior to March 16, 2013,
`via the parent ’855, ’574, and ’453 applications.
`Petitioner contends the ’368 patent disclosure is representative of the
`respective disclosures of each of its parent ’855, ’574, and ’453 applications,
`when assessing written description support for the ’368 patent claims.
`Pet. 10–12 (asserting the parent applications each contain “nearly identical
`specifications” and “nearly identical content” as the ’368 patent, “varying
`only in the claims, assertions of priority, and minor, non-material
`corrections”). According to Petitioner, based on the representative
`’368 patent disclosure, the effective filing date for the claimed inventions of
`the ’368 patent is the ’368 patent’s actual filing date of May 15, 2014. Id. at
`10–13. Therefore, Petitioner asserts the ’368 patent is eligible for post-grant
`review because that date is after March 16, 2013. Id.
`
`10
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`
`Patent Owner agrees with Petitioner’s contention that the ’368 patent
`disclosure is representative of the respective disclosures of each of its parent
`applications, when assessing written description support for the ’368 patent
`claims. Prelim. Resp. 12 (“[t]he ‘368 Patent and afore-referenced priority
`applications share a common specification,” and “reference herein to any
`‘specification’ includes the specification of the ‘368 Patent and of any
`priority applications/patents”). According to Patent Owner, based on the
`representative ’368 patent disclosure, the effective filing date for the claimed
`inventions of the ’368 patent is the parent ’453 application’s filing date of
`November 20, 2008. Id. at 6, 12. Therefore, Patent Owner asserts the
`’368 patent is not eligible for post-grant review because that date is before
`March 16, 2013. Id. at 6, 25.
`In deciding whether to institute post-grant review, we shall assume,
`pursuant to the parties’ agreement at this preliminary stage of the
`proceeding, that the ’368 patent disclosure is representative of the respective
`disclosures of each of the parent applications. For the following reasons, we
`determine, based on the present record, that the ’368 patent claims lack
`written description support in the ’368 patent disclosure — and, by proxy,
`the disclosures of the parent ’855, ’574, and ’453 applications. We thus
`conclude the ’368 patent is eligible for post-grant review because the
`effective filing date of the patent’s claims is May 15, 2014, which is after
`March 16, 2013.
`
`1.
`
`Lack of Written Description for “the foam has a density when
`installed in a range of about 200 kg/m3 to about 700 kg/m3”
`Petitioner contends the ’368 patent fails to provide written description
`support for a “foam [having] a density when installed in a range of about
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`200 kg/m3 to about 700 kg/m3.” Pet. 22–23, 57–58; see Ex. 1001, 7:67–8:2
`(claim 1), 8:44–46 (claim 8), 10:5–6 (claim 15). Patent Owner disagrees.
`Prelim. Resp. 53–61.
`Resolution of the parties’ dispute in this regard principally turns on
`the following disclosure in the ’368 patent:
`In each of the embodiments described herein, the infused
`foam laminate is constructed in a manner which insures that
`substantially the same density of fire retardant 60 is present in
`the product regardless of the final size of the product. The
`starting density of the infused foam is approximately 140 kg/m3.
`After compression, the infused foam density is in the range of
`200–700 kg/m3. After installation the laminate will cycle
`between densities of approximately 750 kg/m3 at the smallest
`size of the expansion joint to 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. The present invention is not limited to cycling in the
`foregoing ranges, however, and the foam may attain densities
`outside of the herein-described ranges.
`Ex. 1001, 6:54–7:3 (emphases added).
`Petitioner asserts the quoted ’368 patent disclosure fails to
`demonstrate possession of a foam having a density, when installed, in a
`range of about 200–700 kg/m3. Pet. 22–23, 57–58. Petitioner contends the
`disclosed range of 200–700 kg/m3 applies to a compressed density, not to an
`installed density, and the disclosure quoted above distinguishes between
`those two densities. Id. According to Petitioner, the quoted ’368 patent
`disclosure demonstrates possession of an installed density having a
`minimum of 400 kg/m3, so there is no support for an installed density of
`200–400 kg/m3. Id.
`
`12
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`
`Patent Owner asserts the ’368 patent disclosure quoted above
`demonstrates possession of a foam having a density, when installed, in a
`range of about 200–700 kg/m3. Prelim. Resp. 53–61. According to Patent
`Owner, the ’368 patent’s description of a “compressed” foam density of
`200–700 kg/m3 applies to the claimed “installed” foam because “once
`installed, the infused foam is always in compression to support the system in
`the joint, and allow it to cycle.” Id. at 53–54 (citing Ex. 1001, 4:3–16, 6:54–
`7:3). Patent Owner, in part, points to the “(or less)” parenthetical in the
`described “[a]fter installation” infused foam laminates having a density of
`“approximately 400–450 kg/m3 (or less).” Id. at 54 (quoting Ex. 1001,
`6:60–63). Patent Owner contends:
`[T]he [’368 patent] specification does not state, as Petitioner
`contends, that this installed and, therefore compressed, density
`(400–450 kg/m3) is required to pass the UL 2079 test program.
`To the contrary, there is no description that below this density
`the “resultant composite” (e.g., infused foam) would fail any
`aspect of UL 2079 testing. PHOSITA understands a “reasonable
`minimum” is not an absolute or required minimum. An
`“adequate . . . capacity” is a sufficient capacity, not a necessary
`capacity. Further, “can pass” is able to pass.
`Id. at 54–55. Patent Owner asserts the ’368 patent specification and
`prosecution history do not establish any clear intent to limit the invention to
`an installed foam density at or above 400 kg/m3. Id. at 55–56.
`We determine, based on the arguments and evidence presented at this
`stage of the proceeding, that the ’368 patent disclosure lacks written
`description support for a foam having a density, when installed, in a range of
`about 200–700 kg/m3. We agree with Petitioner’s, rather than Patent
`Owner’s, reading of the disputed ’368 patent disclosure at column 6, line 54
`through column 7, line 3. That disclosure indicates that “[a]fter installation
`
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`the laminate” will have a “minimum” density of approximately 400–
`450 kg/m3, “at the maximum size of the joint.” Ex. 1001, 6:60–67. On the
`present record, the described “laminate” appears to refer to the “compressed
`laminations 13 of open celled polyurethane foam 12 . . . infused with a fire
`retardant material 60,” as reflected in the claims. Id. at 4:46–52, 7:63–8:2
`(representative claim 1). The disputed ’368 patent disclosure goes on to
`indicate that the minimum density was experimentally determined “as a
`reasonable minimum which still affords adequate fire retardant capacity,
`such that the resultant composite can pass the UL 2079 test program,” a fire
`resistance safety standard which is also referenced in the claims. Id. at 2:12–
`32, 6:63–67, 8:4–5 (representative claim 1); Ex. 1006, 1. Based on these
`disclosures, and the present preliminary record of argument and evidence
`concerning them, we determine the ’368 patent disclosure fails to
`demonstrate that the inventors had possession of an installed foam density
`below approximately 400 kg/m3. Therefore, there is no written description
`of such a density in the range of about 200–400 kg/m3, which is covered by
`the ’368 patent claims.
`That determination is not inconsistent with the ’368 patent’s
`disclosure of a density “[a]fter compression” being “in the range of 200–
`700 kg/m3.” Ex. 1001, 6:59–60. The ’368 patent generally reflects various
`states of compression, both before installation and after installation. See,
`e.g., id. at 3:57–4:2, 4:13–15, 5:15–22, 5:49–6:4, 6:54–67, 7:4–25. Thus, we
`agree with Patent Owner that an installed density is one example of a
`compressed density. See id. at 3:57–4:2, 4:67–5:3, 6:54–67, 7:10–17.
`Nonetheless, based on the present record, we are not persuaded by Patent
`Owner’s argument that all of the ’368 patent’s compression density
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`disclosures necessarily relate to an installation density. See id. at 6:54–63.
`This is especially so given the specific disclosure concerning “a reasonable
`minimum” installation density being “adequate” to pass the UL 2079 test
`program. See id. at 6:63–67. The general disclosure of other possible
`installation densities, without specifying any particular densities, is similarly
`unpersuasive given the specific disclosure concerning a minimum
`installation density being needed to pass the UL 2079 test program. See id.
`at 6:60–63 (referring to “400–450 kg/m3 (or less),” but not in connection
`with passing the UL 2079 test program), 6:67–7:3 (stating “[t]he present
`invention is not limited to cycling in the foregoing ranges,” but not in
`connection with passing the UL 2079 test program).
`Patent Owner refers to the prosecution histories of the ’368 patent, the
`parent ’9,495 patent, the child ’262 patent, and U.S. Patent No.
`9,631,362 B2 (which like the ’368 patent ultimately claims benefit of the
`’453 application filing date). Prelim. Resp. 56–60 (citing Exs. 2020, 2021,
`2023, 2030, 2031). It is not clear whether Patent Owner’s citations are
`meant to support the assertion that the ’368 patent disclosure demonstrates
`possession of the claimed range of installed foam densities, or to support
`urging us to invoke our discretion to deny review under 35 U.S.C. § 325(d),
`or both. See id. We address § 325(d) in Section V.A infra.
`As to the merits, the cited prosecution history evidence establishes
`only that the respective Examiners: (a) appreciated the claims were directed
`to an “installed” density, which is a compressed density; and (b) concluded
`at least three cited prior art references (von Bonin, Baerveldt, and Illger) did
`not disclose or suggest the specifically claimed ranges of an installed foam
`density. See id. The cited prosecution history evidence does not reflect
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`consideration by the respective Examiners of the issue presented here, which
`is whether the ’368 patent’s disclosure demonstrates written description
`support for the claimed subject matter. See id. The cited prosecution history
`evidence does not bear on the merits of that issue.
`We have performed a limited review of the parent applications to the
`’368 patent to determine, based on the present record, whether they differ
`materially from the key disclosure of the ’368 patent at column 6, line 54 to
`column 7, line 3. Based on the present record, it appears that each of the
`parent ’855, ’574, and ’453 applications does not materially differ from that
`key disclosure of the ’368 patent. See Ex. 1015 ¶ 36 (the ’855 application);
`Ex. 1012, 6:38–53 (the ’5,495 patent, which issued from the
`’574 application); Ex. 1009 ¶ 31 (the ’453 application).
`For the foregoing reasons, on the present record, we determine the
`’368 patent disclosure fails to demonstrate possession of a foam having a
`density, when installed, in a range of about 200–700 kg/m3. By agreed-upon
`proxy, each one of the parent applications to the ’368 patent also fails to
`demonstrate such possession. Therefore, 35 U.S.C. § 100(i)(1)(B) does not
`apply here. Pursuant to 35 U.S.C. § 100(i)(1)(A), the effective filing date of
`the claimed inventions in the ’368 patent is the patent’s actual filing date of
`May 15, 2014. That date is after March 16, 2013, so the ’368 patent is
`eligible for post-grant review.
`
`Other Limitations of Issued Claims in the ’368 Patent
`2.
`Petitioner contends the ’368 patent disclosure fails to provide written
`description support for various other limitations of the issued claims in the
`’368 patent as a basis for post-grant review eligibility. Pet. 10–21, 23–25.
`
`16
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`PGR2018-00034
`Patent 9,644,368 B1
`
`Our determination that the ’368 patent disclosure fails to provide written
`description support for the claimed installed foam density range (see supra
`Section IV.C.1) is a sufficient basis for post-grant review eligibility. We,
`therefore, need not address whether the ’368 patent disclosure provides
`written description support for other limitations of the issued claims in the
`’368 patent to establish the post-grant review eligibility of the ’368 patent.
`
`Unissued Claims in the ’210 Application
`3.
`Petitioner additionally contends the ’368 patent is eligible for
`post-grant review because the ’210 application (which issued as the
`’368 patent) contained claims that, albeit unissued in the ’368 patent, had an
`effective filing date after March 16, 2013. Pet. 26–27; AIA §§ 3(n)(1) &
`6(f)(2)(A) (first-inventor-to-file provisions apply to any patent issuing from
`an application that “contained at any time” a claim having an effective filing
`date after March 16, 2013). Claim 8 of the ’210 application is representative
`of Petitioner’s position. Pet. 26–27.
`When claim 8 was newly added to the ’210 application, it recited “a
`fire retardant material in the foam.” Ex. 1014, 3 (emphasis added). The
`Examiner rejected that version of claim 8 as failing to comply with the
`written description requirement, on the basis that the quoted limitation “does
`not appear to be previously provided in the disclosure as ‘in the foam’ is
`much broader than the [originally] presented ‘infused in the foam’.”
`Ex. 1019, 3. The quoted limitation of claim 8 was then amended to recite “a
`fire retardant put into in the foam,” with accompanying remarks indicating
`that Patent Owner disagreed with the rejection. Ex. 1020, 3, 6–7 (emphasis
`added).
`
`17
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`PGR2018-00034
`Patent 9,644,368 B1
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`
`Patent Owner now points out that the amendment adding claim 8 to
`the ’210 application pertinently remarked that “[s]upport for [claim 8] may
`be found in the original specification at least at, e.g., Paragraphs [0014] to
`[0039], as well as in the original claims and figures.” Prelim. Resp. 6–7
`(citing Ex. 1014, 6–7). Patent Owner particularly relies on that remark as
`the basis for Patent Owner’s disagreement with the Examiner’s written
`description rejection. See id.
`Based on the present record, Patent Owner has not shown
`persuasively how the original ’210 application demonstrates Examiner error.
`Patent Owner’s citation to 26 of the 41 paragraphs of the original
`application, and to the “claims and figures” of the original application,
`without further specificity, is not persuasive. Ex. 1014, 6; Ex. 1003.
`Regardless, our determination that the ’368 patent disclosure fails to provide
`written description support for the claimed installed foam density range (see
`supra Section IV.C.1) is a sufficient basis for post-grant review eligibility.
`We, therefore, need not address the unissued claims further at this time.
`
`A.
`
`PROPOSED GROUNDS OF UNPATENTABILITY
`V.
`Lack of Written Description for “the foam has a density when
`installed in a range of about 200 kg/m3 to about 700 kg/m3”
`Petitioner asserts claims 1–17 of the ’368 patent are unpatentable
`under 35 U.S.C. § 112(a) for lack of written description support for a “foam
`[having] a density when installed in a range of about 200 kg/m3 to
`about 700 kg/m3.” Pet. 22–23, 57–58; see Ex. 1001, 7:67–8:2 (claim 1),
`8:44–46 (claim 8), 10:5–6 (claim 15). Patent Owner opposes Petitioner’s
`assertions. Prelim. Resp. 53–61. For the reasons provided in Section IV.C.1
`supra, we determine the information presented in the Petition demonstrates,
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`PGR2018-00034
`Patent 9,644,368 B1
`
`on the present record, that it is more likely than not that the ’368 patent
`disclosure lacks written description support for the density limitation.
`As to 35 U.S.C. § 325(d), we appreciate that the MPEP instructs
`Examiners to consider the written description requirement of 35 U.S.C.
`§ 112 when an applicant submits a claim amendment. See, e.g., MPEP
`§ 2163(II)(A)(3)(b) (“If the originally filed disclosure does not provide
`support for each claim limitation . . . a new or amended claim must be
`rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph,
`as lacking adequate written description . . . .”). Patent Owner asks that we
`assume the Examiner correspondingly considered the specific written
`description issue presented here, and further decided that issue in favor of
`Patent Owner, even though such consideration and decision are not
`expressly set forth in the prosecution history record. Invoking 35 U.S.C.
`§ 325(d) as a categorical matter to deny review on the basis of such an
`assumption would render 35 U.S.C. § 321(a) a nullity regarding post-grant
`review of compliance with the written description requirement. We decline
`to do so here. See also Ex. 2003, 17–19 (Decision to Institute in the
`’053 PGR, considering Patent Owner’s reliance on prosecution histories in
`relation to § 325(d), which we continue to maintain despite Patent Owner’s
`additional argument in the present proceeding). We, further, decline to
`exercise our discretion under § 325(d) in view of the strength of the
`argument presented by Petitioner.
`We, therefore, institute review of claims 1–17 of the ’368 patent as
`being unpatentable for lacking written description support for the density
`limitation.
`
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`
`B.
`
`Lack of Written Description for “the fire retardant infused foam is
`configured to pass testing mandated by UL 2079”
`Petitioner asserts claims 1–17 of the ’368 patent are unpatentable
`under 35 U.S.C. § 112(a) for lack of written description support for a foam
`infused with fire retardant material being configured to pass testing
`mandated by UL 2079. Pet. 13–19, 23–25, 42–45, 52–56. Patent Owner
`opposes Petitioner’s assertions. Prelim. Resp. 36–47, 51–53.
`
`Claim Construction: “pass testing mandated by UL 2079”
`1.
`The parties disagree concerning what it means for a material “to pass
`testing mandated by UL 2079,” as set forth in independent claims 1, 8, and
`15. See Pet. 35–39; Prelim. Resp. 31–35; Ex.
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