PTAB

IPR2017-00977

Controls Southeast Inc v. QMax Industries LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Heat Transfer Between Tracer and Pipe
  • Brief Description: The ’156 patent discloses a metallic heat transfer element designed to improve thermal conductivity between a heating tube (a "tracer") and a process pipe. The element features a channel to receive the tracer and curved mounting surfaces that conform to the process pipe's contour.

3. Grounds for Unpatentability

Ground 1: Obviousness over Malone and Bilbro - Claims 1-4, 11, 13-17, 19-20 are obvious over Malone in view of Bilbro.

  • Prior Art Relied Upon: Malone (Patent 7,203,419) and Bilbro (Patent 3,331,946).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Malone disclosed the fundamental structure of the claimed invention: a metal foil (heat transfer element) extending over a heating cable (tracer) adjacent to an aluminum tube (process pipe). Malone’s foil included curved surfaces mating with the pipe and formed a channel with parallel walls and a curved ceiling to receive the cable. Petitioner contended that while Malone’s foil meets the core structural limitations, combining it with Bilbro’s teachings would render the claims obvious. Bilbro taught a prefabricated, rigid metal channel member containing heat transfer material to eliminate air gaps and improve installation. Petitioner asserted that modifying Malone’s flexible foil into a rigid element, as taught by Bilbro, would provide physical protection for the tracer, a feature recited in the claims. Further, Bilbro’s heat transfer material supplied the basis for the claimed use of "heat transfer cement."
    • Motivation to Combine: A POSITA would combine Bilbro’s prefabricated rigid channel with Malone’s system to facilitate an easier and improved installation of heat transfer material, a benefit explicitly stated in Bilbro. The similar shapes of Malone’s foil and Bilbro’s channel member would have suggested their interchangeability. A POSITA would also be motivated to incorporate Bilbro’s rigid structure to better protect the heating cable in Malone and use Bilbro’s heat transfer material to improve thermal efficiency, replacing the generic "adhesive" in Malone.
    • Expectation of Success: Given that both references operated in the same field of pipe heating and addressed analogous problems of heat transfer efficiency and installation, a POSITA would have had a reasonable expectation of success in combining their respective features.

Ground 2: Obviousness over Malone, Bilbro, and Mizuno - Claims 2-4, 7, 11, 12, and 20 are obvious over Malone in view of Bilbro and Mizuno.

  • Prior Art Relied Upon: Malone (Patent 7,203,419), Bilbro (Patent 3,331,946), and Mizuno (Japanese Patent Publication No. JP 2000-110985).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the Malone/Bilbro combination by adding Mizuno to address dependent claims requiring specific materials and manufacturing methods. Petitioner argued that Mizuno expressly taught forming a heat-conducting material for a tracing pipe from aluminum, extruded aluminum alloy, or cast metal. Mizuno also disclosed forming an oxide coating on the element. Therefore, it would have been obvious to a POSITA to make the heat transfer element of the Malone/Bilbro combination from aluminum (claim 2), extruded metal (claim 3), aluminum alloy (claims 4 and 11), or cast metal (claim 12), and to anodize it (claim 7), as explicitly suggested by Mizuno for the same purpose.
    • Motivation to Combine: A POSITA, seeking to implement the heat transfer element of the primary Malone/Bilbro combination, would have looked to known manufacturing techniques and materials for such components. Mizuno provided an explicit roadmap, teaching that extruded aluminum alloy is a suitable material for this exact application. The motivation was to use a known, effective, and predictable manufacturing process and material to create the desired heat transfer element.
    • Expectation of Success: A POSITA would have expected success in applying Mizuno's material and manufacturing teachings to the Malone/Bilbro structure, as these were standard and well-understood options in the art for creating components with desirable thermal and structural properties.

Ground 3: Obviousness over Malone, Bilbro, and Ikas - Claims 1 and 16 are obvious over Malone in view of Bilbro and Ikas.

  • Prior Art Relied Upon: Malone (Patent 7,203,419), Bilbro (Patent 3,331,946), and Ikas (Great Britain Patent No. 1,081,889).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground added Ikas to the Malone/Bilbro combination to strengthen the argument for using heat transfer cement and to meet limitations related to a "continuous heat transfer cement fill layer." Petitioner asserted that Ikas taught that coating contacting surfaces with a "suitable cement mortar" was of "great importance for the transmission of heat." Ikas also disclosed a layer of heat-conducting material with opposed concave surfaces between a pipe and a heating tube. This teaching directly mapped to the claimed "continuous... fill layer" having opposed concave surfaces, a key limitation in method claim 16.
    • Motivation to Combine: A POSITA would be motivated to use the cement mortar taught by Ikas in the Malone/Bilbro combination to achieve the explicit goal of improving heat transfer. Ikas explained this was a known and effective technique. The motivation was to optimize the thermal performance of the resulting heat transfer system, a primary goal in this field of art.
    • Expectation of Success: The combination was a simple application of a known heat transfer enhancement technique (Ikas's cement) to a known structure (the Malone/Bilbro element), leading to a high expectation of success in achieving improved thermal conductivity.

4. Key Claim Construction Positions

  • "a continuous heat transfer cement fill layer": Petitioner argued that because the term "continuous" is not defined in the specification, it should be given its broadest reasonable interpretation. Petitioner contended this term means "a heat transfer cement fill layer which is uninterrupted in at least one dimension." This construction was argued to be critical because it encompasses various configurations, including a layer that is continuous along its length, through its thickness, or around its circumference, which Petitioner alleged were disclosed in the prior art.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-4, 7, 11-17, 19, and 20 of the ’156 patent as unpatentable.