Conex Universal Limited v. RLS LLC

1. Case Identification

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

2. Patent Overview

• Title: Crimp Pipe Fitting
• Brief Description: The ’992 patent discloses a crimp pipe fitting for mechanically joining tubes. The fitting features a metal tube wall forming a cylindrical portion positioned between an annular O-ring channel and a flared end, which together form an "exterior locating cradle" to guide a crimping tool.

3. Grounds for Unpatentability

Ground 1: Obviousness of Claims 1, 2, 6, 8, and 10 over Elkhart

• Prior Art Relied Upon: Elkhart Products' CD (publicly distributed engineering drawings from Elkhart Products Corp. ("EPC")) and Elkhart Products' Manual (an EPC installation 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 allegedly showed a crimp fitting with a metal tube wall forming a cylindrical portion adjacent to an O-ring channel, with a flared portion (sloped shoulder) at the other end. The combination of the flared portion and the O-ring channel protrusion formed a valley-like depression, or an "exterior locating cradle," to constrain a crimping tool. The drawings also allegedly disclosed the required relative wall thicknesses and a 45° flare angle. The accompanying Elkhart Manual confirmed the fitting was made of copper or copper alloy, satisfying the limitation of dependent claim 2.
  • Motivation to Combine (for §103 grounds): A person of ordinary skill in the art (POSITA) would combine the Elkhart CD and Manual as they both described the same EPC XPress press fitting product.
  • Expectation of Success (for §103 grounds): A POSITA would expect to successfully apply the material specifications from the Manual to the fitting design shown in the engineering drawings, as they pertained to the same commercial product.

Ground 2: Obviousness of Claims 3 and 4 over Elkhart in view of Material Standards

• Prior Art Relied Upon: Elkhart Products' CD, Elkhart Products' Manual, Mechanical Engineers' Handbook (3d Ed., 2006), and the 2004 ASME Boiler & Pressure Vessel Code.
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon Ground 1, addressing the limitations in claims 3 and 4 related to the tube wall being "annealed to a grain size" within specific ranges (0.005 to 0.070 mm for claim 3; 0.015 to 0.035 mm for claim 4). Petitioner asserted that while Elkhart disclosed the base fitting, the Mechanical Engineers' Handbook and the ASME Code provided standard, well-known data on material properties for copper and copper alloys. Both standards allegedly disclosed acceptable grain sizes for annealed copper-based alloys that overlap with and encompass the ranges recited in the claims.
  • Motivation to Combine (for §103 grounds): A POSITA designing a copper alloy fitting as taught by Elkhart would be motivated to consult standard industry references like the Mechanical Engineers' Handbook and the ASME Code to determine appropriate manufacturing parameters, such as annealing grain size, to ensure the product was suitable for its intended engineering applications.
  • Expectation of Success (for §103 grounds): A POSITA would have a high expectation of success in applying standard, published annealing grain size parameters to the manufacture of a known copper alloy fitting.

Ground 3: Obviousness of Claims 1, 2, 5, 6, and 8 over Viegener in view of Industry Standards

• Prior Art Relied Upon: Viegener (Patent 6,805,385), BS EN1254-1 (a 1998 British Standard for copper fittings), and the Elkhart Products' Manual.
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Viegener taught the core structure of the claimed fitting: a press fitting with a cylindrical portion located between an O-ring channel ("anchoring groove") and a shoulder portion, which collectively constrain a press tool. To meet the wall thickness limitations of claim 1 and claim 5 (second wall thickness being less than the first, and specifically less than 82%), Petitioner relied on the BS EN1254-1 standard. This standard allegedly taught that for wrought copper alloy fittings, the wall thickness of a groove (e') could be as little as 55% of the main wall thickness (e), satisfying the claimed ratio. The Elkhart Manual was cited to show that making a fitting of Viegener's design from copper (claim 2) was a well-known and obvious choice.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Viegener's fitting design with the BS EN1254-1 standard to ensure quality and proper dimensional tolerances. To select a material, the POSITA would look to similar products in the field, such as those in the Elkhart Manual, and find that copper was a standard and suitable choice.
  • Expectation of Success (for §103 grounds): A POSITA would expect to successfully apply standard wall thickness ratios and common materials to the known fitting design of Viegener to improve its quality and manufacturability.
• Additional Grounds: Petitioner asserted additional obviousness challenges, including claims 9 and 10, based on various combinations of the Elkhart, Viegener, BS EN1254-1, Mechanical Engineers' Handbook, and ASME Code references, relying on similar arguments and motivations to combine.

4. Key Claim Construction Positions

• "cylindrical tube portion": Petitioner argued this term should be construed to mean "a section of the fitting that has... straight parallel sides," excluding conical or tapered shapes. This construction was based on alleged prosecution history disavowal, where the applicant distinguished the invention from prior art with a "tapered part" by arguing the tapered part was "necessarily... non-cylindrical."
• "exterior locating cradle": As this is not a standard term of art, Petitioner proposed construing it based on its component words and function to mean "a groove or valley-like structure on the exterior surface of the fitting that provides points of axial constraint to locate the crimping tool." This cradle is allegedly formed between the protrusions of the O-ring channel and the flared portion.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) would be improper. Although the 2004 ASME Boiler & Pressure Vessel Code was before the Examiner during prosecution, it was never applied in combination with the other references asserted in the petition (Elkhart, Viegener, BS EN1254-1, Mechanical Engineers' Handbook). Therefore, Petitioner contended that the grounds presented in the petition were substantially different from those previously considered by the USPTO.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-6 and 8-10 of the ’992 patent as unpatentable.