Broad Ocean Technologies, Inc. v. Regal Beloit America, Inc.

1. Case Identification

• Case #: Not Yet Assigned
• Patent #: 5,954,476
• Filed: January 27, 2017
• Petitioner(s): Broad Ocean Technologies, Inc.
• Patent Owner(s): Regal Beloit America, Inc.
• Challenged Claims: 1-11

2. Patent Overview

• Title: Snap-Fit Blower Housing Assembly and Seal Method
• Brief Description: The ’476 patent discloses a blower housing assembly, such as for a furnace, where a housing cover and housing body are connected via a releasable snap-fit mechanism. The connection relies on a ridge on the housing body engaging a corresponding channel on the housing cover to allow for repeated assembly and disassembly.

3. Grounds for Unpatentability

Ground 1: Anticipation and Obviousness over '840 patent - Claims 1-3, 6, and 8 are unpatentable under §102(a) and/or §103 over a single reference.

• Prior Art Relied Upon: Canadian Patent No. 2195840 (“’840 patent”).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the ’840 patent, which was not before the USPTO during prosecution, discloses every element of independent claims 1, 6, and 8. The ’840 patent teaches a housing for HVAC components with two shells that join via a "rabbet connection" to allow for repeated opening and closing for repair. This connection, like the ’476 patent, uses a projecting ridge with an apex on one shell that matingly engages with a corresponding channel on the other shell. Petitioner contended this structure is identical to the claimed "ridge" with a "radially external wall having an apex" and the "housing cover" with portions that "matingly engage" the ridge. The dependent claims adding a "channel" (claim 2) and a "sloping section" (claim 3) are also allegedly disclosed in the '840 patent's figures and description of the rabbet connection.
  • Motivation to Combine (for §103 grounds): As an alternative to anticipation, Petitioner asserted that it would have been obvious to use the ’840 patent's teachings. Since the ’840 patent and the ’476 patent address the identical problem of creating a releasable housing for HVAC components and use the same snap-fit solution, all claimed features would have been obvious over the ’840 patent alone.
  • Key Aspects: The core of the argument is that the ’840 patent is a direct analog that was overlooked by the examiner and discloses the exact same simple, mechanical snap-fit structure for the exact same purpose.

Ground 2: Obviousness over '840 patent in view of '517 patent - Claims 4-5, 7, and 9-11 are obvious over the combination.

• Prior Art Relied Upon: ’840 patent and U.S. Patent No. 4,865,517 (“’517 patent”).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds upon the ’840 patent's disclosure of the basic snap-fit assembly. Petitioner argued that the additional limitations of the remaining dependent claims are well-known features taught by the ’517 patent. The ’517 patent, which was cited during prosecution, teaches a "Blower With Clam Shell Housing" and explicitly discloses an "air cavity" (claim 4), a "gasket" (claims 5, 7, 9, 11), and alignment "guide pins" and "pin holes" (claim 10). Petitioner contended that adding these known elements to the basic structure of the ’840 patent would have been an obvious design choice.
  • Motivation to Combine: A POSITA would combine the teachings of the ’840 and ’517 patents to achieve predictable and well-understood results. Both patents are in the same field of blower housings. A POSITA would be motivated to add a gasket from the ’517 patent to the ’840 housing to improve the seal, add an air cavity to accommodate manufacturing tolerances, and add guide pins to ensure proper alignment during assembly. Petitioner noted the USPTO itself had previously made similar obviousness rejections using the ’517 patent for these very features.
  • Expectation of Success: A POSITA would have had a high expectation of success in making these modifications, as they involve the simple, predictable incorporation of standard mechanical components (gaskets, pins) to improve sealing and alignment.

4. Key Claim Construction Positions

• apex: Petitioner argued that under the broadest reasonable interpretation, "apex" means "a tip or edge formed where two surfaces meet." This construction is based on the plain and ordinary meaning, dictionary definitions, and the patent's own figures. This broad definition is crucial because it ensures the structures shown in the ’840 patent (and the Barnard patent from the original prosecution) meet the limitation, contrary to the patent owner's narrower arguments during prosecution.
• matingly engage: Petitioner proposed this term means "to join and releasably fit parts together." The emphasis is on the "releasable" nature of the connection, which is described throughout the ’476 patent as a key feature that allows for repeated disassembly and maintenance. This construction aligns the claimed invention with the function described in the ’840 patent, which also focuses on a connection that allows for "repeated closing and opening."

5. Key Technical Contentions (Beyond Claim Construction)

• Prosecution History Estoppel and Prior Art Mischaracterization: A central contention is that the ’476 patent was issued based on an erroneous argument made by the applicants during prosecution. The applicants distinguished the Barnard prior art by arguing its "apex" extended "axially" rather than "radially." Petitioner contended this was a mischaracterization and that Barnard’s apex, like that of the ’476 patent, extends radially. This alleged error is presented as the primary reason the claims were allowed. Petitioner argued the newly presented ’840 patent, which also clearly shows a radially-extending apex, definitively proves the unpatentability of the claimed subject matter.

6. Relief Requested

• Petitioner requests institution of an inter partes review (IPR) for claims 1-11 of the ’476 patent and cancellation of these claims as unpatentable.