PTAB

IPR2014-00770

BLD Services LLC v. LMK Technologies LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Device and Method for Repairing Pipes
  • Brief Description: The ’991 patent discloses a device and method for repairing the juncture between a main pipeline and a lateral pipeline. The invention utilizes a liner assembly and a hydrophilic gasket that, upon exposure to liquid, swells to create an impermeable seal between the liner and the host pipe.

3. Grounds for Unpatentability

Ground 1: Obviousness over Kiest/De neef Combination - Claims 1, 5-10, 11-26, 28, 30-35, and 37 are obvious over Kiest ’118, Kiest ’597, De neef 2006, and De neef 2002.

  • Prior Art Relied Upon: Kiest ’118 (Patent 6,994,118), Kiest ’597 (Patent 5,765,597), De neef 2006 (a product installation guide), and De neef 2002 (a product brochure).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the primary references, Kiest ’118 and Kiest ’597, disclose all major structural elements of the claimed pipe repair apparatus. Specifically, Kiest ’118 teaches a system for repairing main/lateral pipe joints using a bladder assembly and a liner assembly, with both main and lateral components, as required by independent claims 1, 11, 17, 23, and 31. Kiest ’118 further discloses using a hydrophilic band made of SWELLSEAL, a material that is "stretchable in the same fashion as rubber bands" and capable of swelling when exposed to liquid. The De neef 2006 and De neef 2002 references, which describe the commercial SWELLSEAL product, confirm that it is a hydrophilic paste or rubbery material used to create a compression seal that swells in the presence of water. Petitioner asserted these references collectively teach the claimed gasket comprising hydrophilic rubber. The positioning of the gasket at the pipe juncture for optimal sealing is taught by Kiest ’597. Dependent claims relating to compressibility, tube formation, and bladder expansion are also taught by the combination.
    • Motivation to Combine: A POSITA would combine Kiest ’118 and Kiest ’597 as both relate directly to repairing main/lateral pipe junctions. It would have been obvious to incorporate the teachings of De neef 2006 and De neef 2002, as they describe the specific properties of SWELLSEAL, a hydrophilic sealing material expressly recommended by Kiest ’118. The motivation was to use a well-known, commercially available hydrophilic sealant to create a reliable, water-tight seal at the pipe juncture, a known weak point prone to infiltration.
    • Expectation of Success: A POSITA would have had a high expectation of success because SWELLSEAL was a known material used for the exact purpose of creating water-activated seals in construction and pipeline applications. Combining it with a known liner repair system was a straightforward application of existing technologies to solve a known problem.

Ground 2: Obviousness over Kiest/De neef/Kiest ’663 - Claims 2, 3, and 4 are obvious over Kiest ’118, Kiest ’597, De neef 2006, and De neef 2002 in further view of Kiest ’663.

  • Prior Art Relied Upon: The same references from Ground 1, plus Kiest ’663 (Patent 5,794,663).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground builds upon the combination in Ground 1, which Petitioner argued establishes the foundation of a pipe repair system with a hydrophilic gasket. Kiest ’663 is introduced to teach the specific gasket structure recited in claims 2-4. Claim 2 requires the gasket to have a tubular portion and an outwardly extending flange portion. Petitioner asserted Kiest ’663 discloses gasket equivalents (e.g., gasket 150 in Figs. 16-17) that demonstrate this exact tubular and flanged structure. Claims 3 and 4, which recite the positioning of these tubular and flange portions, are allegedly taught by figures in Kiest ’663 showing the gasket positioned at the pipe juncture.
    • Motivation to Combine: A POSITA, starting with the general sealing concept from the Ground 1 references, would look to other pipe repair art to optimize the seal's shape and effectiveness. Petitioner argued a POSITA would combine the teachings of Kiest ’663 to create an improved seal by increasing the diameter of the sealing member's end via a flange, thereby requiring less expansion to form a tight seal against the host pipe.

Ground 3: Obviousness over Kiest/De neef/Kempenaers - Claims 6, 27, 29, and 36 are obvious over Kiest ’118, Kiest ’597, De neef 2006, and De neef 2002 in further view of Kempenaers.

  • Prior Art Relied Upon: The same references from Ground 1, plus Kempenaers (a technical document on SWELLSEAL pressure resistance).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground also builds upon the base combination from Ground 1, which teaches a compressible hydrophilic paste (SWELLSEAL). The Kempenaers reference, along with De neef 2006, is introduced to provide explicit teachings for the shape and application method of the paste recited in claims 27, 29, and 36. These claims require the hydrophilic paste to be in the form of a "band" or a "ring." Petitioner argued that both De neef 2006 and Kempenaers teach that SWELLSEAL should be applied as an "uninterrupted band" or is used in the form of a band, directly corresponding to the claim language.
    • Motivation to Combine: A POSITA using the SWELLSEAL paste taught by the primary references would consult technical literature like De neef 2006 and Kempenaers for best application practices. These references disclose applying the material in a continuous band or ring to ensure a complete and effective seal around the pipe. This represents a known and conventional method for applying such a sealant, making the combination obvious.

4. Key Claim Construction Positions

  • "paste": Petitioner argued this term is ambiguous. The petition contended that a cross-linking polymer disclosed in the prior art, which begins as a liquid, would necessarily achieve the consistency of a paste as it cures into a solid, thereby rendering the term indefinite. Petitioner further argued that the patent owner engaged in inequitable conduct by knowing that the recommended commercial product, SWELLSEAL, was a paste but failed to disclose this fact to the PTO during prosecution, instead arguing that the prior art taught a liquid.

5. Relief Requested

  • Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-37 of the ’991 patent as unpatentable.