Fasteners for Retail Inc v. RTC Industries Inc

1. Case Identification

• Case #: IPR2019-00994
• Patent #: 9,895,007
• Filed: April 18, 2019
• Petitioner(s): Fasteners for Retail, Inc.
• Patent Owner(s): RTC Industries, Inc.
• Challenged Claims: 1, 2, 8, 10-16, 18-22, and 24-26

2. Patent Overview

• Title: Product Management Display System
• Brief Description: The ’007 patent discloses a product management display system for merchandising products on a retail shelf. The system includes a front rail, one or more dividers with a floor, a pusher mechanism to advance products, and a front lock on the divider to secure its position on the rail.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1, 2, 10, and 12 under 35 U.S.C. §102 by Merit

• Prior Art Relied Upon: Merit (Patent 7,395,938).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Merit, which discloses a retail display divider system, teaches every limitation of independent claim 1. Merit’s system includes a front mounting member (front rail), a divider base (divider floor), a spring-urged pusher, and a front lock in the form of a resilient latching extension. Petitioner asserted this latch is located at the front of the divider, is accessible by a user's finger through an opening even when products are on the shelf, and is shiftable between a locked position (preventing movement) and an unlocked position (permitting slidable movement). For dependent claims, Petitioner contended Merit’s lock protrusion acts as a cam surface (claim 2), can be configured to extend upwardly (claim 10), and its mounting member has a tongue-and-groove engagement (claim 12). This argument relies on the Patent Owner's proposed claim construction for "moves the floor out of engagement."

Ground 2: Obviousness of Claims 1, 2, 10, and 12 under 35 U.S.C. §103 over Merit in view of Alves

• Prior Art Relied Upon: Merit (Patent 7,395,938) and Alves (Application # 2008/0296241).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground was presented as an alternative to Ground 1, based on Petitioner’s proposed construction that "moves the floor out of engagement" means "moves the floor out of contact." While Merit discloses all other limitations, Alves was cited to teach a locking mechanism that slightly lifts the divider out of contact with the front rail when unlocked.
  • Motivation to Combine: Petitioner argued a person of ordinary skill in the art (POSITA) would combine Merit with Alves to improve the ease of repositioning dividers. Alves explicitly teaches that its lifting mechanism reduces the forces between the rail and divider, enabling "easy and quick arrangement." A POSITA would be motivated to apply this known technique to Merit’s system to achieve the predictable benefit of easier sliding.
  • Expectation of Success: A POSITA would have a high expectation of success, as both references are in the same field of adjustable merchandising displays. Merit itself discloses an embodiment with a mechanical pull-to-release lock, and Petitioner argued a POSITA would understand that such a mechanism could easily be designed to slightly lift the divider, as taught by Alves.

Ground 3: Obviousness of Claim 8 under §103 over Merit in view of Howerton

• Prior Art Relied Upon: Merit (Patent 7,395,938) and Howerton (Application # 2005/0218094).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground argued that claim 8, which adds a "pusher extender that can rotate to one or more positions" to the system of claim 1, is obvious. Merit provides the base system of claim 1. Howerton was cited for its teaching of a pusher with a rotatable faceplate that can be oriented vertically for narrow products or horizontally for wider products.
  • Motivation to Combine: A POSITA would be motivated to incorporate Howerton’s rotatable pusher extender into Merit’s system to solve the known problem of adapting a single pusher design for products of various widths. This modification provides increased versatility, a desirable and well-known feature in the art.
  • Expectation of Success: The combination would be a simple and predictable substitution. Petitioner argued that mounting Howerton’s faceplate onto Merit’s pusher paddle would require no significant modification to the rest of Merit’s system and would predictably result in an adjustable pusher.

• Additional Grounds: Petitioner asserted numerous other obviousness challenges. These grounds relied on combinations of Merit with Rataiczak (Application # 2008/0017598) to add a toothed locking mechanism (claim 11); Bernardin (Patent 5,111,942) to add a front product barrier and ensure lock accessibility (claims 13, 14); and various three- and four-way combinations of these references to meet limitations in other dependent claims (e.g., claims 15, 16, 19-22, 24-26).

4. Key Claim Construction Positions

• "front end": Petitioner argued this term should be given its plain and ordinary meaning as "the end closest to or in contact with the front rail," and not be narrowly limited to only the front edge or surface. This construction is allegedly supported by patent figures showing the lock mechanism residing within a cavity at the front end, but behind the absolute front surface.
• "front lock moves the floor out of engagement with the front rail": Petitioner presented arguments under two constructions. Under its own proposed construction, "engagement" means "contact," a limitation taught by Alves but not Merit. Under the Patent Owner’s apparent construction, "engagement" means "fixed with respect to," a limitation Petitioner argued is met by Merit alone.

5. Key Legal & Technical Contentions

• Priority Date Challenge: Petitioner argued that the challenged claims are not entitled to a priority date earlier than September 2, 2011. It contended that earlier priority applications in the chain fail to provide adequate written description for key limitations common to all independent claims, specifically a "front end of the divider floor having a front lock" that is shiftable and accessible. This contention is critical, as it establishes that the primary prior art references, all published before 2011, are valid prior art.

6. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under §314(a), noting that the related district court litigation was stayed early, with no claim construction or trial date scheduled. Further, Petitioner contended that the asserted prior art was not cumulative to that considered during prosecution. Although the references were submitted to the USPTO by the Patent Owner, they were part of a submission of over one thousand documents and were never substantively discussed by the Examiner, who allegedly relied on an incorrect, earlier priority date.

7. Relief Requested

• Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1, 2, 8, 10-16, 18-22, and 24-26 of the ’007 patent as unpatentable.