PTAB

IPR2018-01379

Simpson Strong-Tie Company Inc. v. Oz-Post International, LLC

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1. Case Identification

2. Patent Overview

  • Title: Mounting Hardware with an Architectural Appearance
  • Brief Description: The ’998 patent is directed to mounting hardware, specifically a washer/nut assembly designed to imitate antique or decorative hardware, such as a rivet or pin head. The patent acknowledges that the invention is an "imitation" that can be fabricated from off-the-shelf components, including a standard washer, a hex nut, and a set screw.

3. Grounds for Unpatentability

Ground 1: Claims 1-8 are obvious over Camisasca in view of Crouch and Guillon.

  • Prior Art Relied Upon: Camisasca (Application # 2011/0214461), Crouch (Patent 4,621,230), and Guillon (Patent 6,764,114).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Camisasca discloses the core claimed apparatus: an anti-theft device comprising a "washer/nut member" (Camisasca's base member with a washer-like base and a nut-like threaded wall) and a threaded cap. Camisasca's device, however, is cylindrical. Petitioner asserted that Guillon teaches a similar anti-theft bushing with a hexagonal outer surface. To address the limitation that the cap be substantially flush with the washer/nut member's upper surface, Petitioner pointed to Crouch, which teaches a flush-fitting cap in an anti-tamper fastener to prevent unauthorized gripping and removal. The various internal surfaces (inner, intermediate, annular) were mapped to the structure of Camisasca’s base member, which provides a seat for a fastener head.
    • Motivation to Combine: A POSITA would combine these references because they are all from the same field of anti-tamper fasteners and address the same problems. A POSITA would modify Camisasca’s cylindrical device with Guillon's hexagonal shape as a simple design choice, as Guillon teaches that various shapes are possible. Furthermore, a POSITA would be motivated to make Camisasca's cap flush as taught by Crouch to improve the anti-tamper functionality by making the cap more difficult to grip, which is a known objective in the art.
    • Expectation of Success: A POSITA would have a reasonable expectation of success in combining these simple, known mechanical features, as their functions are well-understood and the result of the combination—a hexagonal, flush-cap fastener protector—would be entirely predictable.

Ground 2: Claim 2 is obvious over Camisasca in view of Crouch, Guillon, and Kwon.

  • Prior Art Relied Upon: Camisasca (Application # 2011/0214461), Crouch (Patent 4,621,230), Guillon (Patent 6,764,114), and Kwon (Korean Patent No. 20-0169430).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground builds upon the combination in Ground 1 to specifically address claim 2, which adds a "flange portion disposed radially external to the plurality of outer surfaces." Petitioner argued that Kwon explicitly discloses an anti-theft nut body with an integral bottom flange. Petitioner also contended that Camisasca itself suggests a flange, as its disclosure of welding the base to the wall would necessitate a flange-like structure to accommodate a fillet weld without fouling the internal threads.
    • Motivation to Combine: A POSITA would be motivated to add a flange, a common feature in hardware like nuts, to the device of Ground 1 for its known purpose of distributing pressure more evenly. Given that Kwon shows a flange on a similar anti-theft component and that Camisasca suggests other shapes and manufacturing methods (welding) are possible, adding a flange would be an obvious design modification.
    • Expectation of Success: Incorporating a well-known feature like a flange from Kwon onto the base washer/nut member of the combined Camisasca/Crouch/Guillon device would be a simple mechanical integration with predictable results, creating a standard flanged hex nut configuration.

Ground 3: Claims 1-7 are obvious over Huang in view of Lesesky.

  • Prior Art Relied Upon: Huang (Application # 2005/0053446) and Lesesky (Design Patent D581,778).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Huang discloses a "captive screw" assembly that is analogous to the claimed "washer/nut member." Huang's device has a cap with an enlarged annular skirt portion that acts as a washer and an upper portion that houses a screw head, acting as a nut. However, Huang’s cap is cylindrical. Lesesky is a design patent for a flanged hex nut. Petitioner contended that it would have been obvious to modify the cylindrical body of Huang's cap to have the hexagonal shape shown in Lesesky. The remaining claim limitations, including the various internal surfaces and the placement of a cap (the screw head) within the assembly, were mapped to the internal geometry of Huang's cap as it receives the screw.
    • Motivation to Combine: A POSITA would combine Huang and Lesesky because both relate to hardware components. Huang explicitly states that its disclosure is illustrative and that "changes may be made in detail, especially in matters of shape, size, and arrangement of parts." Modifying Huang's cylindrical cap to have a common hexagonal shape, as shown in Lesesky, would be a mere design choice or the simple substitution of one known hardware shape for another.
    • Expectation of Success: A POSITA would have a reasonable expectation of success because modifying the shape of a hardware component is a routine design activity. Choosing from a finite number of known shapes (like hexagonal for a nut) to apply to Huang's assembly would yield the predictable result of a hex-shaped captive screw assembly.

4. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-8 of Patent 9,957,998 as unpatentable.