Clim A Tech Industries Inc v. Ebert William

1. Case Identification

• Case #: IPR2017-01863
• Patent #: RE46,212
• Filed: July 28, 2017
• Petitioner(s): Clim-A-Tech Industries, Inc.
• Patent Owner(s): William A. Ebert
• Challenged Claims: 1-5, 15, 17-21

2. Patent Overview

• Title: Edge Protector Systems for Cathode Plates and Methods of Making Same
• Brief Description: The ’212 patent describes a U-shaped edge protector system for cathode plates used in electrowinning processes. The system is designed to prevent unwanted copper growth on the plate edges by using plastic strips with beveled ends that form mitered joints at the corners, which are then reinforced by injection-molding plastic over the joints.

3. Grounds for Unpatentability

Ground 1: Anticipation over Marley Plastics - Claims 1, 5, 15, 17, and 21 are anticipated under 35 U.S.C. §102(b) by Marley Plastics.

• Prior Art Relied Upon: Marley Plastics (WO 97/41280).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Marley Plastics discloses every element of the independent claims. Specifically, Marley Plastics teaches a U-shaped edge protector system for cathode plates comprising plastic side and bottom strips with beveled ends that form mitered corners (the claimed "junctures"). Crucially, to solve the problem of electrolyte infiltration at these mitered corners due to thermal expansion, Marley Plastics explicitly teaches injection-molding plastic corner pieces over the mitered joints, which directly corresponds to the claimed "molded corner piece...molded over said...juncture." The dependent claims reciting molding from "liquid plastic" were also allegedly disclosed.

Ground 2: Obviousness over Marley Plastics, Tetrault, and Santoyo - Claims 2-4 and 18-20 are obvious over Marley Plastics, alone or in combination with Tetrault, and further in view of Santoyo.

• Prior Art Relied Upon: Marley Plastics (WO 97/41280), Tetrault (Patent 2,343,161), and Santoyo (Patent 6,274,012).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the base system of Marley Plastics (mitered strips with over-molded corners). Dependent claims 2 and 18 add limitations for retainer strips attached to the cathode plate via pins inserted into apertures, allowing the edge protector to be slid onto the plate. Petitioner asserted that Santoyo explicitly teaches this exact mechanism, disclosing an inner core (retainer strip) with pins that engage apertures in the cathode plate, over which an edge protection sleeve is slid. The additional limitations in claims 3-4 and 19-20 (hanger bars, hook holes, stainless steel plate) were argued to be conventional elements also disclosed in both Marley Plastics and Santoyo.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine the teachings because Marley Plastics and Santoyo address the same problem of preventing copper deposition on cathode edges. A POSITA would have been motivated to incorporate Santoyo's superior retainer strip and sliding-sleeve design into the Marley Plastics system to achieve improved sealing and easier installation, which are predictable results.
  • Expectation of Success: Combining these known components for their known functions—Marley's over-molded corners for joint sealing and Santoyo's retainer strips for secure attachment—would have yielded predictable success.

Ground 3: Obviousness over Tetrault and Schoonover - Claims 1, 5, 15, 17, and 21 are obvious over Tetrault in view of Schoonover.

• Prior Art Relied Upon: Tetrault (Patent 2,343,161) and Schoonover (Patent 6,365,086).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner presented this as an alternative challenge using art not cited during prosecution. Tetrault was argued to disclose the basic elements of the independent claims except for the over-molding step; it teaches a protective frame for a cathode plate made of strips with beveled ends that form mitered corners. Schoonover was cited for teaching the missing element: a general method for strengthening framed structures by injection-molding plastic over the corner joints to increase strength and compensate for manufacturing tolerances.
  • Motivation to Combine: A POSITA, knowing of the mitered-corner edge protectors from Tetrault and the known problem of electrolyte leakage at such joints, would look to known strengthening techniques. Schoonover directly teaches that injection molding over corners is a solution for strengthening joints and improving tolerances in frames. A POSITA would therefore apply Schoonover’s method to Tetrault’s frame for the predictable benefits of a stronger, better-sealed corner.
  • Expectation of Success: Applying a known technique (Schoonover's over-molding) to a known device (Tetrault's frame) to solve a known problem (leaky joints) would have provided a high expectation of success.
• Additional Grounds: Petitioner asserted additional obviousness challenges, including that claims 1, 5, 15, 17, and 21 are obvious over Marley Plastics alone (as a fallback to anticipation); that dependent claims are obvious over Marley Plastics and the Marley Plastics Web Brochure; and that dependent claims are obvious over the Tetrault/Schoonover combination further in view of Santoyo and/or the Marley Plastics Web Brochure.

4. Key Claim Construction Positions

• "mating engagement": Petitioner argued this term should be construed as "direct contact." This construction was asserted to be critical to the anticipation and obviousness arguments, as it aligns with the prior art's disclosure of beveled strip ends that directly abut each other to form a mitered joint before any over-molding occurs. The petition cited the patent's own description of the terminations being in an "aligned, abutting relation."
• "juncture": Based on the construction of "mating engagement," Petitioner argued "juncture" should be construed as "a miter joint or a mitered corner." This interpretation supports the argument that the prior art's simple mitered joints are the claimed "junctures" over which plastic is molded.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) would be inappropriate. Although the primary reference, Marley Plastics, was cited during the reissue prosecution that led to the ’212 patent, Petitioner contended that the Patent Owner misled the Examiner and prevented a full consideration of the reference. The argument was that the Patent Owner mischaracterized Marley Plastics as teaching that mitered corners were "inoperative" while failing to mention the key disclosure where Marley Plastics teaches over-molding those very corners as the solution. Therefore, Petitioner argued the Examiner never substantively considered the specific anticipatory teachings presented in the petition.

6. Relief Requested

• Petitioner requested institution of an IPR and cancellation of claims 1-5, 15, and 17-21 of the ’212 patent as unpatentable.