PTAB

IPR2018-01053

Moen, Inc. v. Kohler Co.

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1. Case Identification

  • Case #: IPR No. Unassigned
  • Patent #: 9,677,256
  • Filed: May 10, 2018
  • Petitioner(s): Moen, Inc.
  • Patent Owner(s): Kohler Co.
  • Challenged Claims: 7-16

2. Patent Overview

  • Title: Shower Bar System
  • Brief Description: The ’256 patent relates to a shower bar system that includes a fixed overhead shower, a handshower, and a transfer valve assembly for directing water flow to either shower member. The invention describes a "tube-in-tube" assembly where a shower bar acts as an outer pipe containing separate internal pipes for supplying water to the transfer valve and returning water from the valve to the overhead shower.

3. Grounds for Unpatentability

Ground 1: Claims 7 and 8 are anticipated by Lu under 35 U.S.C. §102.

  • Prior Art Relied Upon: Lu (Chinese Utility Model Patent Publication # 201248644Y).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Lu, which was not considered during prosecution, discloses every element of independent claim 7. Lu teaches a complete "drilling-free shower system" with a fixed showerhead (lotus seedpod shower head A), a handshower (shower sprinkler B), and a connection to a water supply. Petitioner asserted Lu’s shower bar assembly—comprising a rod body (1) containing two independent internal pipes (11, 12)—is the claimed shower bar with an outer pipe and two internal flow paths. Furthermore, Lu’s diverter valve (3) was argued to be the claimed "transfer valve assembly," as it includes a valve body (valve seat 31), a valve member (valve core 32), and an actuator (valve knob 33) operable by a user to direct water to either the fixed showerhead or the handshower. Petitioner contended dependent claim 8 is also anticipated because Lu’s internal pipes (11 and 12) are positioned within the outer pipe (rod body 1) and define the first and second flow paths as required.

Ground 2: Claims 9-16 are obvious over Lu in view of Bors under 35 U.S.C. §103.

  • Prior Art Relied Upon: Lu (Chinese Utility Model Patent Publication # 201248644Y) and Bors (Application # 2009/0255588).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that Lu teaches the foundational shower system as recited in the base claims, while Bors supplies the missing element of independent claim 9: an "adjustable supply assembly." Specifically, Bors discloses an "adjustable locking spout shank" for plumbing fixtures like shower heads. This assembly includes an adapter (nipple body 300) and a supply member (spout shank 200) that is movable along an axis to adjust the installation length. Petitioner argued that combining Lu's shower system with Bors's adjustable supply assembly would result in the system claimed in claim 9. The limitations of dependent claims 10-16 were also argued to be taught by the combination, with Bors disclosing the through-wall mounting, a "mounting collar" (first mounting nut 106), an O-ring for a watertight seal (216), and a threaded connection for coupling to a supply pipe.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Lu and Bors to improve Lu's design. Both references are in the same field (plumbing), address the same problem of connecting a fixture through a wall, and Bors explicitly states its adjustable shank is applicable to shower heads. Bors teaches a solution to the known problem of accommodating varying wall thicknesses without cutting pipes, a modification that would provide a predictable and desirable benefit to Lu's system, particularly in the remodeling applications Lu contemplates.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success in this combination. The components are standard plumbing parts, and Bors’s threaded, adjustable assembly could be readily integrated with the water inlet of Lu's shower system. This would predictably yield a shower system with an adjustable installation length, providing a secure and stable final product without requiring significant modification or undue experimentation.

4. Key Claim Construction Positions

Petitioner asserted that several claim terms should be given broad interpretations, which were central to mapping the prior art onto the claims.

  • "transfer valve assembly" (Claim 7): Proposed as "a valve assembly capable of adjusting fluid flow." This broad construction allowed Petitioner to argue that Lu's simple diverter valve (3) meets the limitation.
  • "valve body," "valve member," "actuator" (Claim 7): Proposed as "a housing for the transfer valve assembly," "a component of a valve," and "an element engageable by a user," respectively. These constructions were used to map Lu’s valve seat (31), valve core (32), and valve knob (33) to the claimed elements.
  • "mounting collar" (Claim 12): Proposed as "a collar capable of engaging with a mounting surface." This construction was key to arguing that Bors's first mounting nut (106) teaches the claimed mounting collar, as it engages the wall surface to secure the assembly.

5. Relief Requested

  • Petitioner requested that the Board institute an inter partes review and issue a final written decision cancelling claims 7-16 of Patent 9,677,256 as unpatentable.