PTAB

IPR2014-00772

BLD Services LLC v. LMK Technologies LLC

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Device and Method for Pipe Repair
  • Brief Description: The ’992 patent discloses devices and methods for repairing the juncture between a main pipeline and a lateral pipeline. The invention involves a liner assembly and an inflatable bladder, and critically features a hydrophilic gasket or paste that swells upon exposure to liquid to create a watertight seal between the new liner and the host pipe.

3. Grounds for Unpatentability

Ground 1: Obviousness over Kiest/De neef Combination - Claims 1-4 and 6-16 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 combination of Kiest ’118 and Kiest ’597 discloses all primary elements of the challenged claims. Specifically, these references teach a method for repairing a main/lateral pipe juncture using a liner assembly impregnated with a curable resin and positioned by an inflatable bladder. Kiest ’118 explicitly discloses using a hydrophilic material, such as SWELLSEAL, applied as bands on the liner to form a seal. The De neef 2006 and De neef 2002 references, which are product literature for SWELLSEAL, are cited to confirm that this specific material is a hydrophilic "paste" that swells on contact with water to create a seal, directly teaching the key limitation of the ’992 patent. Kiest ’597 further teaches positioning a gasket directly at the juncture between the main and lateral pipes.
    • Motivation to Combine: A POSITA would combine Kiest ’118 and Kiest ’597 as both relate directly to the same field of cured-in-place pipe (CIPP) repair at lateral connections. The motivation to incorporate the teachings of the De neef references is explicit, as Kiest ’118 itself recommends using SWELLSEAL. A POSITA seeking to improve the seal at a known weak point (the pipe juncture), as taught by Kiest ’597, would be motivated to use the hydrophilic paste system described in Kiest ’118 and the De neef literature to prevent water infiltration, a well-known problem in the field.
    • Expectation of Success: A POSITA would have a high expectation of success. The combination involves applying a well-known commercial sealant (SWELLSEAL) for its intended purpose (creating a water-activated seal) within an established pipe repair framework (the Kiest liner/bladder system) to solve a known industry problem (leaks at pipe junctures).

Ground 2: Obviousness over Kiest/De neef/Kempenaers/Study Combination - Claim 5 is obvious over Kiest ’118, Kiest ’597, De neef 2006, De neef 2002, Kempenaers, and Kiest ’99 Study.

  • Prior Art Relied Upon: All references from Ground 1, plus Kempenaers (a technical paper on SWELLSEAL) and Kiest ’99 Study (a case study on trenchless pipe repair).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground specifically targets dependent claim 5, which requires the hydrophilic paste to be applied as a "ring or band" around the liner juncture. Petitioner asserted the base combination from Ground 1 already teaches this limitation. Kiest ’118 describes applying the hydrophilic material in "circular bands." Kiest ’597 teaches a gasket "shaped like a donut." The De neef references instruct that SWELLSEAL paste "must be applied in an uninterrupted band." The additional references reinforce this teaching. The Kiest ’99 Study discusses creating a "watertight seal at the connection point," and Kempenaers explicitly teaches the application of SWELLSEAL in the form of a band.
    • Motivation to Combine (for §103 grounds): The motivation for adding Kempenaers and the Kiest ’99 Study is to further demonstrate that applying a hydrophilic sealant as a continuous band or ring at a pipe connection was a common and well-understood technique for ensuring a watertight seal. As all references address the same technical problem of preventing infiltration in CIPP repairs, a POSITA would look to such studies and technical data sheets to optimize the application method of the chosen sealant, leading directly to the ring/band configuration of claim 5.
    • Expectation of Success: The expectation of success would be high, as forming a sealant into a continuous ring or band to create a gasket is a fundamental sealing principle. The additional references simply confirm the suitability and known application method for SWELLSEAL in this exact context.

4. Key Claim Construction Positions

  • "paste": Petitioner argued this term is critical, as the patent owner allegedly secured allowance of the ’992 patent by distinguishing prior art as disclosing a "liquid" rather than a "paste." Petitioner contended the term is ambiguous and that the prior art, particularly the De neef references describing SWELLSEAL, explicitly teaches a hydrophilic "paste." Therefore, the distinction made during prosecution was improper, and the prior art directly anticipates or renders obvious this limitation.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-16 of Patent 8,667,992 as unpatentable under 35 U.S.C. §103.