PTAB
IPR2019-00310
Nelson Products, Inc. v. Bal Seal Engineering, Inc.
1. Case Identification
- Patent #: 8,166,623
- Filed: November 12, 2018
- Petitioner(s): Nelson Products, Inc.
- Patent Owner(s): Bal Seal Engineering, Inc.
- Challenged Claims: 1-33
2. Patent Overview
- Title: Method For Controlling Connect And Disconnect Forces Of A Connector
- Brief Description: The ’623 patent discloses a method and apparatus for a latching connector. The connector uses a pin that slidably engages a housing, with a radial canted coil spring seated in grooves in both the pin and housing to control the forces required for connection and disconnection.
3. Grounds for Unpatentability
Ground 1: Obviousness over Guertin, the ’462 Patent, and the ’276 Patent - Claims 1-12, 25, 27, 29-31 and 33 are obvious over Guertin in view of the ’462 Patent and the ’276 Patent.
- Prior Art Relied Upon: Guertin (Patent 5,433,247), the ’462 Patent (Patent 4,655,462), and the ’276 Patent (Patent 5,139,276).
- Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Guertin taught the fundamental structure of the challenged claims: a breakaway coupling with a pin-like member (section 12), a housing (section 14), corresponding grooves, and a canted coil spring (76) to create a connection force that is substantially lower than the disconnection force. However, Guertin’s pin is hollow for fuel passage. The ’462 Patent was cited to teach the use of a solid body rod (136) in a similar push-pull mechanism with a canted coil spring, making the substitution for Guertin’s hollow pin an obvious design choice. Furthermore, the ’276 Patent was cited to teach that modifying the "turn angle" (i.e., the concave or convex orientation) of a radial canted coil spring allows for the precise control and variation of connection/disconnection forces.
- Motivation to Combine: A person of ordinary skill in the art (POSITA) would have been motivated to combine the teachings to improve upon Guertin's connector. A POSITA would replace Guertin's hollow pin with the solid body pin taught by the ’462 Patent for applications not requiring fluid passage, a simple substitution of one known element for another. A POSITA would also have been motivated to apply the teachings of the ’276 Patent to Guertin’s spring to predictably achieve a greater disconnect force, which is a stated goal of such breakaway connectors.
- Expectation of Success: A POSITA would have had a reasonable expectation of success because combining these elements involved applying known techniques (using a solid pin, modifying spring orientation) to a known connector type to achieve predictable results (a robust connector with tailored latching forces).
Ground 2: Obviousness over Richards, the ’276 Patent, and DM3M - Claims 1-12, 25, 27, 29-31 and 33 are obvious over Richards in view of the ’276 Patent and DM3M.
Prior Art Relied Upon: Richards (Patent 5,570,719), the ’276 Patent (Patent 5,139,276), and DM3M (Bal Seal Catalog No DM3m Rev. A, published July 17, 1992).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner asserted that Richards taught a breakaway hose coupling with most of the claimed features, including a first housing (18) acting as a pin, a second housing (20), registering grooves (52, 54), and a radial canted-coil spring (56) to releasably hold the components together. As with Guertin, Richards’s pin is hollow. Petitioner argued that both the ’462 Patent and the DM3M catalog taught using solid body pins in similar latching connectors, rendering the modification of Richards obvious. DM3M was also cited for teaching specific spring dimension ratios (e.g., coil width to height of 1.04 or less) as a design choice. The ’276 Patent was again relied upon to teach the use of a "turn angle" to control forces, which a POSITA could apply to Richards's spring.
- Motivation to Combine: A POSITA would combine these references to create a connector with specific, predictable performance characteristics. The motivation to substitute a solid pin from DM3M or the ’462 Patent into Richards's design was presented as an "obvious to try" scenario with a finite number of simple choices (solid or hollow). A POSITA would be motivated to incorporate the teachings of the ’276 Patent and the dimensional parameters from DM3M to preselect and optimize the connect/disconnect forces, a stated objective of the Richards reference.
- Expectation of Success: The combination would predictably yield a connector with the desired properties, as it involved the application of established principles of spring mechanics and connector design.
Additional Grounds: Petitioner asserted additional obviousness challenges against claims 13-24, 26, 28, and 32. These grounds built upon the core combinations above by adding the ’078 Patent (Patent 5,108,078) to teach a retainer attached to the housing to form a sidewall of the housing groove, and by adding DM3M to the Guertin combination to teach a spring contacting two tapered surfaces of the pin groove.
4. Key Technical Contentions (Beyond Claim Construction)
- A central technical contention was that the examiner in a previous ex parte reexamination erred in finding that the connectors in Guertin and Richards were designed for use with axial canted coil springs and were unsuitable for radial springs. Petitioner presented new evidence, including expert declarations and industry documents, to demonstrate that the springs disclosed and used in the Guertin and Richards devices were, in fact, radial canted coil springs, directly contradicting the examiner's previous findings and supporting the proposed combinations.
5. Arguments Regarding Discretionary Denial
- Petitioner argued that institution was proper and that discretionary denial under §325(d) would be inappropriate. The petition emphasized that it presented new evidence and specific prior art combinations that were not previously considered during the ex parte reexamination of the ’623 patent. Petitioner contended that the examiner never addressed the obviousness of the challenged claims over the specific combinations cited in the petition (e.g., Guertin/’462/’276 or Richards/’276/DM3M), and therefore the petition raised new questions of patentability.
6. Relief Requested
- Petitioner requested the institution of an inter partes review and the cancellation of claims 1-33 of Patent 8,166,623 as unpatentable.