PTAB

IPR2016-00276

Tyco Fire Products LP v. Victaulic Co Of America

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1. Case Identification

2. Patent Overview

  • Title: Pre-assembled Pipe Coupling
  • Brief Description: The ’799 patent discloses mechanical couplings for joining pipe elements in an end-to-end relationship. The invention focuses on couplings provided in a pre-assembled state, comprising multiple segments that are held together by adjustably tightenable connection members around a flexible, resilient sealing ring, allowing for easy insertion of pipe ends before final tightening.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1, 3-7, 9, 12-13, and 16-18 under 35 U.S.C. §102 by Vieregge

  • Prior Art Relied Upon: Vieregge (German Application # DE 10006029 A1).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Vieregge discloses every element of the challenged claims. Specifically, Vieregge describes a pre-assembled coupling housing composed of multiple partial rings or "half-shells" (the claimed "plurality of segments") connected end-to-end by adjustable connecting elements like nuts and bolts. This housing surrounds an annular seal (the claimed "sealing member") and is configured to receive pipe ends. Petitioner asserted that Vieregge's disclosure of the segments being supported by the seal in a spaced-apart relationship to allow pipe insertion prior to tightening meets the "preassembled state" limitations of claim 1. Petitioner further mapped the features of dependent claims, such as the sealing ring’s lips, sidewalls, and tongue, to specific embodiments and figures within Vieregge.

Ground 2: Obviousness of Claim 2 under 35 U.S.C. §103 over Vieregge in view of Katis

  • Prior Art Relied Upon: Vieregge (German Application # DE 10006029 A1) and Katis (Patent 3,329,446).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner contended that claim 2 adds the limitation that at least one pipe element has a circumferential groove engaged by surfaces on the coupling segments. While Vieregge teaches a coupling that engages plain-end pipes, Katis explicitly discloses a coupling with inturned flanges that engage annular grooves in pipe ends to prevent longitudinal movement. Petitioner argued that Vieregge provides the base pre-assembled coupling structure, and Katis supplies the missing element of engaging a grooved pipe.
    • Motivation to Combine: A POSITA would combine Vieregge and Katis because the use of couplings for either plain-end pipes or grooved pipes were well-known and interchangeable alternatives in the art for achieving the same goal of securing pipes. Katis itself demonstrates this interchangeability by showing couplings for both grooved and plain pipe ends. Modifying Vieregge’s design to accommodate grooved pipes would have been an obvious way to increase the coupling’s versatility, representing a simple substitution of one known pipe engagement method for another.
    • Expectation of Success: The combination would have been a predictable variation. A POSITA would have had a high expectation of success in applying the known technique from Katis to the coupling of Vieregge, as it would require little to no modification of the fundamental coupling structure to engage a groove rather than a plain surface.

  • Additional Grounds: Petitioner asserted that claims 1 and 3-18 are obvious over Vieregge alone, arguing that any minor linguistic differences between the prior art's disclosure and the claim language would have been obvious modifications. Petitioner also asserted additional obviousness challenges against claim 2 based on combining Vieregge with Tribe (Patent 1,541,601) or McLennan (Patent 6,170,884), which similarly taught the known interchangeability of couplings for grooved and plain-end pipes.

4. Key Claim Construction Positions

  • "Coupling comprising a plurality of segments": Petitioner proposed this phrase be construed as "a coupling that comprises at least two segments." This construction was argued to be consistent with the specification and prosecution history, where the patent owner distinguished the invention from single-piece or hinged couplings by emphasizing the use of multiple, separable segments.
  • "Preassembled state wherein said segments are attached to one another by said [adjustably tightenable] connection members": Petitioner proposed the construction "the coupling in the preassembled state has two or more adjustably tightenable connection members that attach each segment to another segment." This was based on the patent owner's election during prosecution of a species limited to embodiments where segments are joined at both ends by such members, thereby disclaiming couplings joined by a hinge at one end.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-18 of the ’799 patent as unpatentable.