Tyco Fire Products LP v. Victaulic Co

1. Case Identification

• Case #: IPR2016-00279
• Patent #: 8,646,165
• Filed: December 12, 2015
• Petitioner(s): Tyco Fire Products LP
• Patent Owner(s): Victaulic Company
• Challenged Claims: 1-16

2. Patent Overview

• Title: Method of Securing Pipe Elements
• Brief Description: The ’165 patent relates to a method for joining pipe elements end-to-end using pre-assembled mechanical pipe couplings. The method involves inserting pipe ends into a pre-assembled coupling and then tightening fasteners to secure the joint.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1, 3-4, 7-9, 11-12, and 15-16 by Lewis under §102(b)

• Prior Art Relied Upon: Lewis (UK Application # GB 2211255 A).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Lewis, which describes pre-assembled couplings for pipe joints, discloses every limitation of the challenged claims. Lewis teaches a method of using a coupling with a segmented annular housing that is supplied to the user in a pre-assembled state with fasteners loosely positioned. This configuration supports the segments in a spaced relation, permitting the insertion of pipe ends into the central space. After insertion, the fasteners are tightened, drawing the coupling segments towards one another to engage and seal the pipe ends. Petitioner asserted that Lewis’s disclosure of using couplings with either grooved or shouldered pipe ends anticipates claims 3 and 11, and its disclosure of a flexible, elastomeric sealing ring anticipates claims 4 and 12.
  • Key Aspects: The core of this ground is that Lewis describes the entire claimed method: providing a ready-to-use, pre-assembled coupling that simplifies the process of joining pipes by eliminating the need for disassembly and reassembly in the field.

Ground 2: Obviousness of Claims 1-16 over Lewis under §103(a)

• Prior Art Relied Upon: Lewis (UK Application # GB 2211255 A).
• Core Argument for this Ground:
  • Prior Art Mapping: As an alternative to anticipation, Petitioner argued that all challenged claims would have been obvious over the teachings of Lewis. For claims 5-6 and 13-14, which recite a sealing ring with a "tongue extending circumferentially," Petitioner contended this feature is taught by an alternative gasket embodiment in Lewis (Fig. 11) that includes a solid central rib. This rib functions as a stop to prevent pipe ends from being pushed past their optimal position during assembly.
  • Motivation to Combine (for §103 grounds): A person of ordinary skill in the art (POSITA) would have been motivated to incorporate the central rib from Lewis's alternative gasket into its primary embodiment. Lewis explicitly states that "modifications of detail can be made within the scope of the invention," suggesting the interchangeability of its disclosed components.
  • Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success in using the ribbed gasket, as its function was to solve the known problem of proper pipe positioning during assembly, a predictable improvement.

Ground 3: Obviousness of Claims 2 and 10 over Lewis in view of Lane or Webb

• Prior Art Relied Upon: Lewis (UK Application # GB 2211255 A), Lane (UK Application # GB 2218768 A), and Webb (Patent 4,522,434).
• Core Argument for this Ground:
  • Prior Art Mapping: Claims 2 and 10 add the limitation of "deforming said coupling segments so as to conform the curvature of said arcuate surfaces... to said outer surfaces of said pipe elements." Petitioner argued Lewis teaches the base pre-assembled coupling method. Lane and Webb both teach that coupling segments can be made from materials, such as ductile iron or plastic, with a low modulus of elasticity. These references describe that upon tightening fasteners, the segments are designed to flex or deflect radially inward, causing them to conform to the outer surface of the pipes.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Lewis’s pre-assembled coupling with the deformable segment technology taught by Lane or Webb to solve a known problem: achieving a tighter, more reliable seal around the pipe joint. The combination simply applies a known technique (deformable segments) to a known system (pre-assembled couplings) to achieve a predictable result.
  • Expectation of Success (for §103 grounds): Success was expected because both Lane and Webb explicitly describe the intended function and predictable outcome of using deformable materials in pipe couplings.
• Additional Grounds: Petitioner asserted a separate ground that claims 2 and 10 are obvious over Lewis in combination with Webb, which relied on a similar theory of combining a known deformable coupling technology with Lewis's pre-assembled method.

4. Key Claim Construction Positions

• Petitioner argued for constructions that limit the challenged claims to couplings having exactly two segments, based on prosecution history.
  • "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."
• The basis for these proposed constructions was the Patent Owner's election of a species during prosecution that was limited to embodiments depicted in Figures 2 and 3 of the ’165 patent (both showing two-segment couplings), thereby disclaiming embodiments with more than two segments (like Figure 8).

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-16 of the ’165 patent as unpatentable.