VäLinge Innovation Ab v. Innovations4FlooRing Holding NV

1. Case Identification

• Case #: IPR2019-00517
• Patent #: 10,053,868
• Filed: January 10, 2019
• Petitioner(s): Välinge Innovation AB
• Patent Owner(s): Innovations 4 Flooring Holding N. V.
• Challenged Claims: 1-2

2. Patent Overview

• Title: Floor Panel
• Brief Description: The ’868 patent discloses floor panels with integrated mechanical locking systems. The system uses interlocking coupling parts on opposite edges of a panel, featuring upward and downward tongues and grooves, to achieve both vertical and horizontal locking with an adjacent panel.

3. Grounds for Unpatentability

Ground 1: Claims 1 and 2 are obvious over Nilsson

• Prior Art Relied Upon: Nilsson (Patent 8,365,499)
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Nilsson, a single prior art reference, discloses all limitations of the challenged claims. The core of the argument was that Nilsson teaches a floor panel with a central core, resilient coupling parts on opposite edges, and the claimed geometry of upward/downward tongues, grooves, and flanks. Specifically, Petitioner asserted that Nilsson’s Figure 7c shows the general panel structure with interlocking tongues and grooves, while Figure 9a discloses a specific "locking element" (tongue 91) on a downward tongue and a "counter-locking element" (groove 92) on an upward flank, which correspond to the final limitations of the challenged claims. Petitioner also contended that Nilsson discloses surfaces on the tongues that extend in the direction of the normal (with a converging orientation) to provide vertical locking, as claimed.
  • Motivation to Combine (for §103 grounds): The petition asserted that this is a case of obviousness based on a single reference, but it required combining teachings from different embodiments within Nilsson. Petitioner argued that Nilsson itself provided the explicit motivation for this combination. Nilsson allegedly states that the locking and counter-locking elements shown in its Figure 9a embodiment "may be combined" with the locking surface angle shown in its other embodiments (like Figure 7c) "to obtain an increased vertical locking in the position where the locking surface cooperates." Therefore, a person of ordinary skill in the art (POSITA) would have been directly motivated by Nilsson’s own disclosure to apply the specific locking features of Figure 9a to the panel structure of Figure 7c.
  • Expectation of Success (for §103 grounds): A POSITA would have had a reasonable expectation of success in combining these features because such elements (bulges on a downward tongue and corresponding recesses on an upward flank) were well known in the art for improving vertical locking, and Nilsson explicitly taught this combination to achieve that predictable result.

4. Key Claim Construction Positions

• Petitioner argued that the claim term "extends in the direction of the normal" required construction. Based on the ’868 patent’s specification, which describes this feature as increasing tensile strength, Petitioner contended the term should be construed to mean "extends in the direction of the normal with a converging orientation." This construction was asserted to be necessary to distinguish from surfaces that might have a vector component in the normal's direction but are actually directed away from it, which would not provide the claimed locking function.

5. Key Technical Contentions (Beyond Claim Construction)

• A central contention of the petition was that the ’868 patent’s challenged claims were not entitled to their earliest claimed priority date, breaking the chain of priority. Petitioner argued that the claimed "locking element" and "counter-locking element" were new matter first introduced in the June 14, 2010 PCT application (’365 PCT). The two earlier priority applications allegedly lacked written description support for these limitations. This "break" in priority established an effective filing date of June 14, 2010, which rendered Nilsson (with a priority date of September 4, 2009) valid prior art under pre-AIA 35 U.S.C. §102(e).

6. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion to deny institution under 35 U.S.C. §314(a) or §325(d).
• Regarding §314(a), Petitioner stated it had not previously challenged the ’868 patent in any prior America Invents Act (AIA) trial.
• Regarding §325(d), Petitioner acknowledged that the publication of Nilsson was listed in an Information Disclosure Statement (IDS) during prosecution. However, it argued that the Examiner never substantively addressed or applied Nilsson, and the claims were allowed without any prior art rejections. Therefore, denial would be inappropriate as the arguments presented in the petition were not previously considered.

7. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1 and 2 of Patent 10,053,868 as unpatentable.