Panduit Corp v. Corning

1. Case Identification

• Case #: IPR2017-00029
• Patent #: 8,538,226
• Filed: October 6, 2016
• Petitioner(s): Panduit Corp.
• Patent Owner(s): Corning Optical Communications LLC
• Challenged Claims: 1-13 and 32-48

2. Patent Overview

• Title: Fiber Optic Equipment Guides and Rails Configured with Stopping Position(s), and Related Equipment and Methods
• Brief Description: The ’226 patent discloses a fiber optic equipment management system featuring guides and rails that allow equipment trays to slide within a chassis. The core technology involves integrating at least one stopping member, such as a leaf spring, within the guide to engage with a complementary member on the equipment rail, thereby providing defined stopping positions during the tray's movement.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1-3, 6-8, 10-13, 37-43, and 45-48 under 35 U.S.C. §102 over Smrha

• Prior Art Relied Upon: Smrha (Patent 7,570,861).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Smrha, despite being considered during prosecution, fully anticipated the challenged claims and was misapplied by the Examiner. Smrha disclosed an adapter panel arrangement with sliding panel sections (fiber optic equipment) that move along guides (66) via elongated rails (64). The key "stopping member" limitation was met by Smrha’s stop arrangement (68), which included a flexible projection (70) on the guide that functioned as a leaf spring engaging detents (72, 74) on the rail. Petitioner asserted this structure met all limitations of independent claim 1.
  • Key Aspects: A central contention was that the Examiner overlooked or misconstrued Smrha's disclosure, particularly its "reverse embodiment," where detents are formed on the guide and a projection is on the rail. Petitioner argued this reverse embodiment explicitly taught the front and rear pull-out limiting members required by independent claim 37.

Ground 2: Obviousness of Claims 9, 32-34, 36, and 44 under 35 U.S.C. §103 over Smrha

• Prior Art Relied Upon: Smrha (Patent 7,570,861).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground targeted claims requiring specific functional characteristics or method steps that were obvious modifications of Smrha's teachings. For method claim 32, which recites releasing a detent from a first stopping member and engaging a second, Petitioner argued that Smrha's reverse embodiment already taught two spaced-apart detents on a guide providing distinct stop positions. Modifying Smrha by placing two spaced-apart projections on the guide to engage a single detent on the rail was presented as an obvious variant. For claim 9, which recites a specific force range for the leaf spring, Petitioner asserted that selecting a spring force is a simple and routine design choice.
  • Motivation to Combine (Modify): A POSITA would modify Smrha's design to achieve the known and predictable result of multiple stopping positions for a sliding member. Switching the locations of projections and detents between the guide and rail was argued to be a simple rearrangement of known, interchangeable parts to accomplish the same function.
  • Expectation of Success: Success would have been expected, as the modification involved swapping complementary mechanical components (projections and detents) whose functions were well understood in the art.

Ground 3: Obviousness of Claims 4-5 and 35 under 35 U.S.C. §103 over Smrha in view of Barnes

• Prior Art Relied Upon: Smrha (Patent 7,570,861) and Barnes (Patent 7,171,099).
• Core Argument for this Ground:
  • Prior Art Mapping: Smrha was asserted to teach the fundamental system of a sliding fiber optic equipment tray within guides, including intermediate stopping positions. However, for claims requiring a "pull-out limiting member" at an end of the guide to prevent complete removal of the tray, Petitioner relied on Barnes. Barnes taught a cable management panel with a drawer slide that explicitly included a "positive stop arrangement" (90) with stop structures (94) on the ends of the center rail to prevent the drawer from being fully separated from the chassis.
  • Motivation to Combine: A POSITA would combine Barnes’s positive stop feature with Smrha’s sliding tray system for the predictable purpose of preventing damage to delicate fiber optic cables. Complete removal of a tray from the chassis, as allowed in Smrha, could tangle or damage connected cables. Adding the hard stops taught by Barnes was argued to be a common-sense solution to this known problem, providing both fiber protection and installer convenience.
  • Expectation of Success: A POSITA would have a high expectation of success, as incorporating a mechanical end-stop into a sliding rail system is a fundamental and predictable engineering practice.

4. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-13 and 32-48 of the ’226 patent as unpatentable under 35 U.S.C. §§ 102 and 103.