PTAB

IPR2019-00517

Välinge Innovation AB v. Innovations4Flooring Holding N.V.

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1. Case Identification

2. Patent Overview

  • Title: Floor Panel with Integrated Locking System
  • Brief Description: The ’868 patent relates to floor panels with integrated mechanical locking systems that provide both vertical and horizontal coupling between adjacent panels. The invention describes opposing coupling parts on panel edges, featuring upward and downward tongues and grooves with specific geometries, including aligning edges and locking surfaces, to create a secure, glueless connection.

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 contended that Nilsson, when its various disclosed embodiments are considered together as explicitly directed by the reference itself, teaches every element of the challenged claims. Petitioner argued that Nilsson's general embodiment for a resilient floorboard (e.g., Figure 7c) discloses the fundamental structure of the claimed floor panel, including a core, opposing coupling parts with upward/downward tongues and grooves, and aligning edges. For the specific limitations of a "locking element" on the downward tongue and a "counter-locking element" on the upward flank (elements [1.12] and [1.13]), Petitioner mapped these to tongue 91 and tongue groove 92 shown in Nilsson's Figure 9a. The mapping for Claim 2 was largely identical, differing only where Claim 1 recites the term "resilient."
    • Motivation to Combine (for §103 grounds): Petitioner argued that Nilsson itself provides the explicit motivation to combine the features of its different figures. Nilsson states that the locking/counter-locking embodiments (shown in Figure 9a) "may be combined with the locking surface angle...that is more than 90°" (as shown in embodiments like Figures 6a-8c) in order "to obtain an increased vertical locking." Petitioner asserted that a Person of Ordinary Skill in the Art (POSITA) would thus be directly motivated by Nilsson's own disclosure to incorporate the locking elements of Figure 9a into the panel structure of Figure 7c to improve its vertical locking strength.
    • Expectation of Success (for §103 grounds): A POSITA would have had a reasonable expectation of success in making this combination. The use of bulge-and-recess features to create mechanical interlocks was a well-known and predictable technique in the flooring art for enhancing vertical coupling. Given Nilsson's explicit instruction to combine these features for that exact purpose, the outcome would have been predictable.
    • Key Aspects: The core of Petitioner's argument rested on first establishing a later priority date for the ’868 patent to qualify Nilsson as prior art, and then leveraging Nilsson's own text as an explicit roadmap for combining its disclosed features to arrive at the claimed invention.

4. Key Claim Construction Positions

  • Petitioner contended that the claim term "extends in the direction of the normal" required construction to resolve ambiguity. It proposed the construction "extends in the direction of the normal with a converging orientation." This construction was argued to be critical for distinguishing surfaces that actively contribute to locking strength (by converging toward the normal) from surfaces that are merely oriented in the same general direction. Petitioner asserted that both the ’868 patent specification and Nilsson disclose such converging surfaces to increase tensile strength and provide vertical locking.

5. Key Technical Contentions (Beyond Claim Construction)

  • The central contention underpinning the entire petition was that the ’868 patent is not entitled to its earliest claimed priority date. Petitioner argued that the "locking element" and "counter-locking element" (claim elements [1.12] and [1.13]) constituted new matter first introduced in the PCT/NL2010/050365 application filed on June 14, 2010. The earlier applications in the priority chain (a 2009 Dutch application and a 2009 PCT application) allegedly lacked written description support for these specific features on the downward tongue and upward flank. This "break" in the priority chain would establish an effective filing date of June 14, 2010, thereby making Nilsson, which claims priority to a September 4, 2009 provisional application, available as prior art under pre-AIA 35 U.S.C. § 102(e).

6. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial would be inappropriate.
  • Under §314(a), Petitioner asserted that it had not previously challenged the ’868 patent in any prior AIA trial.
  • Under §325(d), Petitioner acknowledged that a publication of Nilsson was submitted in an Information Disclosure Statement (IDS) during the prosecution of the ’868 patent. However, it argued that the reference was never substantively addressed, analyzed, or applied by the Examiner. Therefore, the Examiner did not consider the specific invalidity arguments presented in the petition, making denial under §325(d) unwarranted.

7. Relief Requested

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