COnex Universal Ltd v. RLS LLC

1. Case Identification

• Case #: IPR2019-00590
• Patent #: 9,145,992
• Filed: January 22, 2019
• Petitioner(s): Conex Universal Ltd
• Patent Owner(s): RLS LLC
• Challenged Claims: 1-6, 8-10

2. Patent Overview

• Title: Crimp Fitting for Pipes and Tubes
• Brief Description: The ’992 patent discloses press-fit pipe fittings that are mechanically coupled to tubes using a crimping tool. The fittings feature a metal tube wall forming a cylindrical tube portion, an adjacent annular O-ring channel, and a flared portion, which together create an "exterior locating cradle" to properly position and constrain the crimping tool during installation.

3. Grounds for Unpatentability

Ground 1: Obviousness over Elkhart CD and Elkhart Manual - Claims 1, 2, 6, 8, and 10 are obvious over the Elkhart Products’ CD in view of the Elkhart Products’ Manual.

• Prior Art Relied Upon: Elkhart Products’ CD (a collection of engineering drawings) and Elkhart Products’ Manual (an installation and specifications manual).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the Elkhart engineering drawings (specifically the "Elkhart Slip Coupling Drawing") disclose all limitations of independent claim 1. The drawings show a crimp fitting with a metal tube wall forming an O-ring channel portion adjacent to a cylindrical tube portion. The fitting also includes a sloped shoulder portion that functions as the claimed "flared portion." Together, the raised O-ring channel and the flared portion form a valley-like depression that serves as an "exterior locating cradle" to constrain a crimping tool on the cylindrical portion. The drawings also allegedly disclose the claimed wall thickness relationships. Dependent claims are met as the fitting was made of a copper alloy (claim 2), used an elastic O-ring (claim 6), could include an insertion stop (claim 8), and was symmetrical (claim 10).
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine the Elkhart CD and Manual because the manual explicitly describes the installation and specifications for the exact fittings shown in the engineering drawings on the CD.
  • Expectation of Success: Success was expected because the references describe a commercially available product and its intended use.

Ground 2: Obviousness over Elkhart, Mechanical Engineers’ Handbook, and ASME Code - Claims 3 and 4 are obvious over the Elkhart Products’ CD and Manual in view of the Mechanical Engineers’ Handbook and/or the 2004 ASME Boiler & Pressure Vessel Code.

• Prior Art Relied Upon: Elkhart Products’ CD, Elkhart Products’ Manual, Mechanical Engineers' Handbook (Third Edition), and 2004 ASME Boiler & Pressure Vessel Code (ASME Code).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds upon the combination in Ground 1. For claims 3 and 4, which require the tube wall to be annealed to a specific grain size range, Petitioner contended these properties were disclosed in standard industry references. The Mechanical Engineers’ Handbook and the ASME Code both provide tables of standard material properties for annealed copper and copper alloys, including nominal average grain sizes. These disclosed ranges overlap with and encompass the ranges recited in claims 3 (0.005 to 0.070 mm) and 4 (0.015 to 0.035 mm).
  • Motivation to Combine: A POSITA, when manufacturing the copper alloy fitting shown in Elkhart, would be motivated to consult standard references like the Mechanical Engineers’ Handbook and ASME Code to select appropriate material properties, such as temper and grain size, to ensure the fitting was suitable for general engineering applications.
  • Expectation of Success: A POSITA would have a high expectation of success in applying well-established, standard grain size specifications for copper to a known fitting design.

Ground 3: Obviousness over Viegener, BS EN1254-1, and Elkhart Manual - Claims 1, 2, 5, 6, and 8 are obvious over Viegener in view of BS EN1254-1 and the Elkhart Products’ Manual.

• Prior Art Relied Upon: Viegener (Patent 6,805,385), BS EN1254-1 (a British Standard for copper fittings), and the Elkhart Products’ Manual.
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Viegener discloses a press fitting with the core structural elements of claim 1: an O-ring channel ("anchoring groove"), an adjacent cylindrical portion ("circumferential groove"), and a flared shoulder. These elements form a valley to receive and constrain a crimping tool. To meet the wall thickness limitation of claim 5 (second wall thickness less than 82% of the first), Petitioner pointed to BS EN1254-1, which specifies that for wrought copper alloy fittings, the wall thickness of a groove can be as low as 55% of the adjacent wall thickness. The Elkhart Manual was cited to show that making fittings like Viegener’s from copper was common.
  • Motivation to Combine: A POSITA would be motivated to combine the teachings of the BS EN1254-1 standard with the fitting design of Viegener to improve or maintain the quality and manufacturability of the fitting by applying industry-standard dimensions.
  • Expectation of Success: A POSITA would reasonably expect to successfully apply standard dimensional ratios from BS EN1254-1 to the analogous structures in Viegener’s fitting, as both relate to copper alloy pipe fittings.
• Additional Grounds: Petitioner asserted additional obviousness challenges, primarily by combining Viegener with the Mechanical Engineers' Handbook and the ASME Code to challenge claims requiring specific annealed grain sizes, leveraging similar arguments as in Ground 2.

4. Key Claim Construction Positions

• "cylindrical tube portion": Petitioner proposed this term be construed as "a section of the fitting that is elongated and hollow, and has the profile of a cylinder—i.e., a geometrical figure with straight parallel sides and a circular cross section (within acceptable manufacturing tolerances)."
  • Petitioner argued this narrow construction is required by prosecution history estoppel, asserting that the applicant distinguished the claimed invention from prior art with "tapered" or "conical" portions by emphasizing its "cylindrical" nature, thereby disavowing non-parallel shapes from the claim scope.
• "exterior locating cradle": Petitioner proposed this term be construed as "a groove or valley-like structure on the exterior surface of the fitting that provides points of axial constraint to locate the crimping tool...in preparation for the crimping process."

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) would be improper. Although the 2004 ASME Code was considered by the examiner during original prosecution, the petition combines it with numerous other references that were not before the examiner (e.g., Elkhart CD/Manual, Viegener, Mechanical Engineers' Handbook). Petitioner contended that these new combinations present arguments that are substantially different from those considered during prosecution.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-6 and 8-10 of the ’992 patent as unpatentable under 35 U.S.C. §103.