PTAB

IPR2016-00423

EuRamax Intl Inc v. InVisaFLow LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Low Profile Attachment for Emitting Water
  • Brief Description: The ’195 patent discloses a drainage attachment for directing water from a source, such as a downspout. The invention purports to increase fluid dynamic flow by featuring a body that transitions from a circular inlet to a wider, rectangular, low-profile outlet end.

3. Grounds for Unpatentability

Ground 1: Claims 1-11 are obvious over Francis

  • Prior Art Relied Upon: Francis (Patent 2,397,655).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Francis, which discloses a fitting for a street gutter drain pipe, teaches every structural element of claim 1. Francis describes a fitting with a circular inlet, a rectangular outlet, and a transitional section that increases in width and decreases in height. Petitioner contended that Francis’s teaching that the outlet height is "considerably less than" the inlet height, combined with its figures, discloses or renders obvious the claimed orientation where the outlet’s top portion is positioned below the inlet’s central longitudinal plane. The dependent claims were argued to be obvious based on Francis’s disclosure of using metal (claim 2), adapting the inlet to a pipe (claims 3-5, 7, 10), and having a polygonal outlet (claim 6).
    • Motivation to Combine (for §103 grounds): This ground asserted obviousness based on a single reference. The motivation was to modify Francis based on its own explicit teachings. Francis teaches that it is desirable to have a discharge end with less height to maintain the strength of the curb structure it passes through. Petitioner argued a person of ordinary skill in the art (POSITA) would have been motivated by this teaching to further reduce the outlet height, which would result in the claimed low-profile configuration.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success because Francis expressly teaches that its outlet can be proportioned with lesser height and greater width while maintaining the same cross-sectional area as the inlet, ensuring uniform flow capacity.

Ground 2: Claims 1-11 are obvious over Farmer

  • Prior Art Relied Upon: Farmer (Patent 1,239,373).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Farmer, which describes a nozzle for a street sprinkling machine, explicitly discloses a drainage attachment meeting all limitations of the challenged claims. Petitioner highlighted that the Examiner's Reasons for Allowance for the ’195 patent identified several features as novel, all of which Petitioner argued are expressly taught and depicted in Farmer. Specifically, Farmer was argued to show an inlet with a center point defining a longitudinal axis, a transitional body, and an outlet where the top portion is positioned below that axis, and where the outlet width is greater than the inlet width to disperse water.
    • Motivation to Combine (for §103 grounds): As a single-reference ground, the argument was that Farmer’s disclosed nozzle was itself obvious. Petitioner argued the claimed features are simple geometric components explicitly shown in Farmer’s figures and described in its specification.
    • Expectation of Success: Success was expected because Farmer provides a complete, functional design for a water-emitting nozzle that inherently possesses the structural characteristics recited in the claims.

Ground 3: Claims 1-11 are obvious over Francis in view of Farmer

  • Prior Art Relied Upon: Francis (Patent 2,397,655), Farmer (Patent 1,239,373).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground used Francis as the base reference for a drainage attachment and combined it with the teachings of Farmer for a specific outlet configuration. Francis disclosed the overall structure and purpose of a drainage fitting, while Farmer provided an explicit example of a nozzle with a very low-profile, wide outlet designed to throw water in a flat sheet.
    • Motivation to Combine: A POSITA seeking to improve the Francis drainage fitting would combine it with Farmer’s nozzle design. Petitioner argued both patents address the common problem of managing water flow. A POSITA would be motivated to decrease the height of the Francis outlet (as Francis itself suggests for strengthening the curb) by adopting the low-profile, wide-outlet configuration from Farmer to better disperse water and further enhance structural integrity.
    • Expectation of Success: A POSITA would expect success in combining these references, as it involved applying known water dispersion principles from Farmer’s nozzle to Francis’s analogous drainage attachment to yield the predictable result of improved flow and a stronger surrounding structure.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including combining Francis with Sweers (Patent 5,658,092) for claims 8-9 to add an interior slot attachment member, combining Farmer with Hicks (Patent 3,640,465) for claim 9 to replace threads with a slot-type quick-connect coupling, and combining Francis, Farmer, and Sweers for claims 8-9.

4. Key Claim Construction Positions

  • "outlet opening top portion": Petitioner proposed this term should be construed as "an uppermost structure of the outlet opening extending between first and second lateral structures." Petitioner noted that this was consistent with the patent’s figures and description of a rectangular outlet. The petition also addressed the Patent Owner’s different construction from related litigation ("the space defined above the second plane...") and argued the claims were obvious under either interpretation.
  • "thereby reducing the effects of erosion...": Petitioner argued this phrase at the end of claim 1 is a non-limiting statement of intended result, not a patentable structural limitation. Petitioner contended that the claim covers a device itself, not what the device does, and that patentability must depend on the recited structure.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-11 of the ’195 patent as unpatentable.