Tandus Flooring Inc v. Interface Inc

1. Case Identification

• Case #: IPR2013-00333
• Patent #: 8,381,473
• Filed: June 20, 2013
• Petitioner(s): Tandus Flooring, Inc.
• Patent Owner(s): Interface, Inc.
• Challenged Claims: 1-58

2. Patent Overview

• Title: Connectors for Modular Floor Tiles
• Brief Description: The ’473 patent discloses connectors for joining adjacent modular floor covering units, such as carpet tiles. The connectors comprise a film with a single-sided adhesive layer and are used to link tiles together to create a "floating" floor covering that is not attached to the underlying subfloor.

3. Grounds for Unpatentability

Ground 1: Anticipation and Obviousness over Pacione - Claims 20, 29-31, 34-37

• Prior Art Relied Upon: Pacione (Patent 6,298,624), Robinson (Patent 3,241,662), Kobe (Patent 5,888,335), Narum (Patent 6,866,928), and Tape Pad Data Sheet (a 2003 3M technical data sheet).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Pacione, which teaches an installation of carpet pieces using "anchor sheets" as connectors, anticipates the limitations of independent claim 20. Pacione’s anchor sheets were described as "flexible but relatively rigid" sheets that can use adhesive to attach to the underside of carpet tiles, span adjacent tiles to prevent relative movement, and create a floating floor. For obviousness, Petitioner asserted that dependent claims reciting specific adhesive properties (e.g., bond strength, thickness) were disclosed in the secondary references.
  • Motivation to Combine (for §103 grounds): A person of ordinary skill in the art (POSITA) would have been motivated to modify Pacione’s system with the known adhesive tapes taught by Robinson, Kobe, Narum, or the Tape Pad Data Sheet. These secondary references disclose specific, desirable adhesive and film properties for carpet tape, and selecting among them to optimize performance would have been a matter of routine design choice.
  • Expectation of Success: A POSITA would have had a high expectation of success, as the secondary references teach adhesive tapes specifically designed for carpet installation with well-understood and predictable properties.

Ground 2: Obviousness over Kusuyama and Pacione - Claims 20, 30, 31, 34, 35, 37-39

• Prior Art Relied Upon: Kusuyama (JP Application # S49-30420) and Pacione (Patent 6,298,624), supplemented by various adhesive tape references.
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Kusuyama discloses the core connector structure of claim 20. It teaches "construction material plates" for mats or paneling that are joined by a backing film plate attached in an offset configuration, with an adhesive on the projecting portion to join adjacent plates. However, Kusuyama does not explicitly disclose using carpet tiles.
  • Motivation to Combine: A POSITA would combine Kusuyama’s system with Pacione’s teachings because Pacione explicitly discloses using a very similar "flexible but rigid" connector structure pre-attached in an offset configuration to carpet tiles. Given the structural and functional similarities, Petitioner argued it would have been obvious to apply Pacione’s teaching of using carpet tiles to the connector system of Kusuyama to achieve a floating carpet tile installation.
  • Expectation of Success: The combination was argued to be predictable, as both prior art systems rely on the same mechanical principle of using offset, stiff backings with adhesive to connect modular units into a contiguous surface.

Ground 3: Obviousness over Kinoshita/Pacione plus Underlayment Art - Claims 1-5, 19

• Prior Art Relied Upon: Kinoshita (JP Application # H5-163825) or Pacione (Patent 6,298,624), in view of Murphy (Patent 6,253,526) or Brodeur (Application # 2003/0104205).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Kinoshita and Pacione each teach the core elements of a floating carpet tile floor. Kinoshita discloses installing carpet tiles by linking them at their corners with adhesive tape pieces to prevent relative movement, without adhering them to the subfloor. Claims 1 and 19, however, additionally require an "intermediate substrate" beneath the tiles. Murphy and Brodeur both explicitly teach using underlayments (i.e., intermediate substrates) for carpet, including plastic films that serve as moisture barriers or cushions.
  • Motivation to Combine: A POSITA would have been motivated to use the underlayment of Murphy or Brodeur with the floating tile systems of Kinoshita or Pacione. It is a conventional and well-known practice in the flooring industry to install flooring products over an underlayment to provide moisture protection, sound dampening, and cushioning.
  • Expectation of Success: Combining a standard flooring underlayment with a floating carpet tile system would have been a straightforward integration of known elements for their intended purposes with a high expectation of success.
• Additional Grounds: Petitioner asserted numerous additional obviousness challenges based on various combinations of Kinoshita, Pacione, Lenti, and Kusuyama with secondary references teaching specific film and adhesive properties (e.g., Robinson, Pears, Kobe, Narum, Owen, Matthews).

4. Key Claim Construction Positions

• "relative movement": Petitioner argued this term, appearing in claim 1, should be construed broadly to encompass both horizontal (lateral) and vertical movement between adjacent tiles. The petition contended that either type of movement can lead to the formation of gaps and constitute an installation failure, as described in the specification.
• "sufficient shear strength...": This functional language, appearing in claims like 20 and 40, was argued to be directly tied to preventing the "relative movement" defined above. Therefore, any adhesive that prevents both lateral and vertical movement under normal use conditions would satisfy the limitation.
• "...200 pound-based rolling chair test": As the specification lacks a definition or protocol for this test (recited in claims 16-18), Petitioner argued it should be construed based on other quantitative properties disclosed in the patent. Specifically, it proposed that a film meeting the test would be one having a tensile strength between 160-270 MPa or an adhesive providing a bond strength between 5-100 ounces/inch.

5. Key Technical Contentions (Beyond Claim Construction)

• Priority Date Challenge: Petitioner contended that claims 1-15 and 19-58 were entitled to a priority date no earlier than an October 15, 2004 provisional application, rather than the September 19, 2000 date listed in the patent's priority chain. It was argued that key features—such as the "floating" installation not joined to a substrate, sufficient connector stiffness to project beyond a tile edge, and specific tensile strengths—lacked written description support in the earlier applications. Claims 16-18, reciting the "rolling chair test," were alleged to lack any support in the priority chain and thus constitute impermissible new matter.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-58 of Patent 8,381,473 as unpatentable under 35 U.S.C. §§ 102 and 103.