PTAB

IPR2016-00278

Tyco Fire Products LP v. Victaulic Company

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1. Case Identification

2. Patent Overview

  • Title: Method for Joining Pipe Elements with Pre-Assembled Couplings
  • Brief Description: The ’165 patent relates to a method for joining pipe elements in an end-to-end relationship using mechanical pipe couplings that are maintained in a pre-assembled condition prior to installation.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1, 4-9, and 12-16 under §102(b)

  • Prior Art Relied Upon: Vieregge (German Patent Application No. DE 10006029 A1).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Vieregge discloses every limitation of the challenged claims. Vieregge taught a method of using a pre-assembled, two-segment pipe coupling where the segments are connected at both ends and held in a spaced relation sufficient to permit insertion of pipe ends. [Vieregge]’s figures showed that after pipe insertion, fasteners are tightened to draw the segments together, causing arcuate surfaces to engage the pipe. Petitioner further asserted that Vieregge disclosed the dependent claim features, including a flexible, resilient seal positioned within the coupling (claims 4, 12); a seal with a radially inward-projecting tongue (claims 5, 13); a seal with a pair of lips on opposite sides of the tongue (claims 6, 14); and lugs on the segments for receiving tightenable fasteners (claims 8, 16).

Ground 2: Obviousness of Claims 2 and 10 over Vieregge in view of Lane

  • Prior Art Relied Upon: Vieregge (German Patent Application No. DE 10006029 A1) and Lane (UK Patent Application No. GB 2218768 A).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground asserted that it would have been obvious to modify [Vieregge]’s coupling to include the claimed feature of deforming the coupling segments to conform to the pipe surfaces. While Vieregge provided the foundational pre-assembled coupling method, Lane taught a coupling with two segments made from a material with a low modulus of elasticity, specifically designed so that tightening the fasteners "deflected [the segments] radially inwards" and "deformed [them] into contact with the outer walls of the pipes."
    • Motivation to Combine: Petitioner contended that a person of ordinary skill in the art (POSITA) would combine [Vieregge]'s pre-assembled design with [Lane]'s teaching of deformable segments. The motivation was to achieve a predictable improvement in the coupling's seal and achieve a tighter fit around the joint, a well-known goal in the art of pipe couplings.
    • Expectation of Success: A POSITA would have a reasonable expectation of success because combining the known concepts of pre-assembly (Vieregge) and segment deformability (Lane) was a straightforward application of known technologies to achieve a predictable result.

Ground 3: Obviousness of Claims 3 and 11 over Vieregge in view of Katis, Tribe, or McLennan, confirmed by Lewis

  • Prior Art Relied Upon: Vieregge (German Patent Application No. DE 10006029 A1); Katis (Patent 3,329,446), Tribe (Patent 1,541,601), or McLennan (Patent 6,170,884); and Lewis (UK Patent Application No. GB 2211255 A).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground addressed claims 3 and 11, which require engaging the coupling's arcuate surfaces within circumferential grooves on the pipe ends. Petitioner argued that Vieregge taught fixing elements (e.g., knife-edge rings) that bite into plain-end pipes to prevent movement. The secondary references (Katis, Tribe, McLennan) were cited to show that using couplings with grooved pipes was a well-known and interchangeable alternative to using them with plain-end pipes. For example, Katis explicitly disclosed and illustrated both a grooved-pipe coupling (Fig. 3) and a plain-end, bite-type coupling (Fig. 4) as interchangeable designs.
    • Motivation to Combine: A POSITA would have been motivated to modify [Vieregge]’s coupling to engage grooved pipes because it was a simple and conventional substitution. The secondary references established that designing a coupling to engage either plain or grooved pipes was a known design choice, depending on the application, and did not require invention. Lewis was cited as confirmation that this combination was already known.
    • Expectation of Success: Success was expected because applying a pre-assembled coupling to a grooved pipe instead of a plain pipe was a "predictable variation" that involved substituting one known pipe-end-restraint mechanism for another.

  • Additional Grounds: Petitioner asserted an alternative obviousness challenge for claims 1, 4-9, and 12-16 based on Vieregge alone, arguing that even if Vieregge did not explicitly anticipate every limitation, any minor differences would have been obvious. Petitioner also asserted an additional obviousness challenge for claims 2 and 10 based on Vieregge in view of Webb (Patent 4,522,434), which, similar to Lane, taught deformable coupling segments.

4. Key Claim Construction Positions

  • Petitioner argued that two key phrases, central to the scope of the independent claims, should be construed to limit the coupling to exactly two segments. This construction was based on the specification's figures and prosecution history, where Patent Owner allegedly amended the claims to overcome prior art by excluding multi-segment couplings.
  • "Coupling having a plurality of coupling segments": Petitioner proposed this be construed as "a coupling that comprises two coupling segments."
  • "Coupling segments attached to one another at both ends": Petitioner proposed this be construed as "each end of the first segment is connected to each respective end of the second segment, and the coupling has no more than two segments." This construction was asserted to be critical to distinguish from prior art and non-elected embodiments of the ’165 patent itself (e.g., Figure 8).

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-16 of Patent 8,646,165 as unpatentable.