McWane Inc v. Tom Waugh

1. Case Identification

• Case #: IPR2014-00777
• Patent #: 8,567,155
• Filed: May 16, 2014
• Petitioner(s): McWane, Inc.
• Patent Owner(s): Tom W. Waugh
• Challenged Claims: 1-9

2. Patent Overview

• Title: Centrifugally Cast Pole and Method
• Brief Description: The ’155 patent relates to an elongated, hollow, conically tapered utility pole formed by centrifugal casting. The invention’s asserted novelty resides in the pole having both a “substantially uniform wall thickness” and an outer surface with a “plurality of asymmetric pimples.”

3. Grounds for Unpatentability

Ground 1: Obviousness over Waugh and Noirot - Claims 1-9 are obvious over Waugh in view of Noirot.

• Prior Art Relied Upon: Waugh (Patent 5,784,851) and Noirot (Patent 6,739,103).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Waugh, by the same inventor as the ’155 patent, discloses a nearly identical centrifugally cast, hollow, tapered utility pole. Waugh’s primary difference is its disclosure of a variable wall thickness. Noirot was cited to cure this deficiency, as it explicitly teaches an elongated, centrifugally cast hollow column with a “substantially uniform wall thickness throughout [its] periphery and straight sides.” Petitioner asserted that Waugh itself implies the existence of uniform-walled poles by presenting its variable-wall design as an improvement for specific applications.
  • Motivation to Combine: A POSITA would combine these references because both relate to centrifugally cast, hollow structural members used as vertical supports. Modifying Waugh's pole to have a uniform wall thickness as taught by Noirot would have been a simple and predictable design choice to create a pole for applications where the variable strength of Waugh was unnecessary. Petitioner emphasized that the Board's predecessor (the BPAI) had already affirmed the obviousness of this exact combination during the prosecution of the application leading to the ’155 patent.
  • Expectation of Success: Given that uniform wall thickness was a known design alternative for cast poles, a POSITA would have had a high expectation of success in producing Waugh’s pole with this feature.

Ground 2: Obviousness over Waugh, Noirot, McCombs, and Ludwig - Claims 1-9 are obvious over the combination of Waugh, Noirot, McCombs, and Ludwig.

• Prior Art Relied Upon: Waugh (Patent 5,784,851), Noirot (Patent 6,739,103), McCombs (Patent 5,175,971), and Ludwig (Patent 2,577,423).
• Core Argument for this Ground:
  • Prior Art Mapping: This combination builds on the core teachings of Waugh and Noirot. The key addition, Ludwig, was argued to explicitly teach the "pimples" limitation that was critical for allowance of the ’155 patent. Ludwig discloses texturing the interior surface of molds for centrifugally casting iron pipes using an "automatic peaning hammer." This process creates a pattern of indentations in the mold that results in a complementary pimpled exterior surface on the cast product. Critically, Ludwig taught that these pimples could be "indiscreetly arranged and irregularly contoured," thereby disclosing the claimed "asymmetric" feature. McCombs was included to further support that using a uniform wall thickness in utility poles was a well-known design choice.
  • Motivation to Combine: A POSITA would combine Ludwig with Waugh because both relate to the centrifugal casting of analogous hollow, ductile iron products (pipes and poles). Petitioner argued a POSITA would have understood that the "conventional centrifugal casting" method in Waugh would require a peened mold surface, as taught by Ludwig, to prevent molten material from slipping and causing defects. Applying Ludwig’s well-known and advantageous mold-peening technique to Waugh's process was therefore obvious.
  • Expectation of Success: The peening technique described in Ludwig was a long-established, conventional practice in the field of centrifugal casting, ensuring a high expectation of success in producing a pimpled surface on Waugh's pole.

Ground 3: Anticipation by Seamless Pole Webpage - Claims 1-3, 5-7, and 9 are anticipated by the Seamless Pole Webpage.

• Prior Art Relied Upon: "Seamless Pole Webpage" (a series of webpage entries from seamlesspole.com dated March 2006).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner asserted that this single prior art reference, published more than four months before the ’155 patent's filing date, disclosed every limitation of the challenged claims. The webpage described a "centrifugally cast" and "uniformly tapered" hollow pole. It explicitly stated the pole had a "uniform wall thickness of 0.22 inches." Furthermore, it described and depicted an "engineered surface that causes microturbulences," showing an image of a pole surface covered in a plurality of pimples that are visibly asymmetric in their location and arrangement. Petitioner argued this disclosure constituted a direct anticipation of the claimed invention under 35 U.S.C. §102.

• Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations including DIPRA (a 1999 publication from the Ductile Iron Pipe Research Association), which provided photographic evidence of the peen patterns and resulting asymmetric pimples on commercially produced ductile iron pipes, reinforcing the teachings of Ludwig.

4. Key Claim Construction Positions

• Product-by-Process Claims: Petitioner argued that claims 1-9 are product-by-process claims and that the process recitation ("formed by centrifugal casting") should not be given patentable weight. The argument was based on the assertion that the final product is not uniquely defined by the process and its features (e.g., pimples, uniform thickness) can be described in purely structural terms.
• "asymmetric pimples": Based on the prosecution history, Petitioner proposed that "asymmetric" should be construed broadly to mean not symmetrical in at least one respect, including shape, size, location, or orientation.
• "plurality of pimples": Petitioner asserted that "a plurality of [] pimples extending away therefrom" requires simply two or more pimples of any size extending from the pole's surface.

5. Key Technical Contentions (Beyond Claim Construction)

• Petitioner's central technical argument, supported by an expert declaration, was that the claimed "pimples" are not a novel invention but rather a known and necessary consequence of a standard manufacturing technique. The contention was that for decades, the interior surfaces of centrifugal casting molds have been intentionally "peened" (textured with dimples) to increase friction and prevent the molten metal from slipping, which would cause defects. This established peening process naturally imparts a complementary pimpled pattern onto the exterior of the final cast product.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-9 of Patent 8,567,155 as unpatentable.