PTAB

IPR2019-01061

Sykes, William v. Smart Vent Products, Inc.

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1. Case Identification

2. Patent Overview

  • Title: Flood Vent Having a Panel
  • Brief Description: The ’302 patent discloses a flood vent system designed to equalize hydrostatic pressure on a building's foundation during a flood. The system features a panel coupled to a frame by connectors, which are configured to uncouple the panel from the frame when a predetermined fluid pressure (0.5-5.0 PSI) is applied, thereby creating an unobstructed opening.

3. Grounds for Unpatentability

Ground 1: Obviousness over Shook in view of Malitsky - Claims 1-3, 7, 9, 11, 12, and 18 are obvious over Shook in view of Malitsky.

  • Prior Art Relied Upon: Shook (Patent 8,308,396) and Malitsky (Application # 2012/0174501).
  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that Shook taught a flood vent with nearly all the core features of the challenged claims, including a frame (housing), a panel (shutter), and "first connectors" that releasably couple the panel to the frame. Shook’s releasable coupling comprises a fin on the shutter that interacts with at least one tab on the sill, which hampers the shutter's movement until overcome by floodwater pressure. Petitioner contended that Shook failed to explicitly teach the "second connectors" of independent claim 1, which couple the frame to the structure. However, Petitioner asserted that Malitsky disclosed this missing element by teaching a frame assembly with opposing ribs that removably retain a door assembly, which is analogous to the claimed second connectors.

      For independent claim 7, which recites a "metal panel" and a pressure range of 0.5-5.0 PSI, Petitioner argued that Shook’s shutter functions as the claimed metal panel and that its releasable coupling mechanism inherently operates within the claimed pressure range to achieve its purpose. For independent claim 12, which claims connectors that uncouple the entire frame from the structure, Petitioner mapped this to the combination of Shook’s frame and Malitsky's teachings of opposing ribs that removably retain the entire assembly. Petitioner asserted that other dependent claims were rendered obvious by additional disclosures within Shook and Malitsky, such as Shook’s fin-and-tab system corresponding to the "bumps" recited in claims 3, 11, and 18.

    • Motivation to Combine: Petitioner argued that a person of ordinary skill in the art (POSITA) would combine Shook with Malitsky to improve the functionality of Shook's flood vent. A POSITA would have recognized the benefit of incorporating a well-known retention mechanism, like the removable retaining ribs taught by Malitsky, into Shook's design to provide a means of releasably coupling the entire frame assembly to a structure. This would have been a simple and predictable modification to add a known feature from one prior art device to another to achieve a known benefit.

    • Expectation of Success: Petitioner asserted that a POSITA would have had a reasonable expectation of success in combining the references. The combination involved integrating simple, known mechanical elements (Shook’s releasable shutter and Malitsky’s retaining ribs) for their predictable functions. No specialized skill or undue experimentation would have been required to implement Malitsky's retention mechanism into Shook's flood vent frame.

4. Key Technical Contentions (Beyond Claim Construction)

  • Petitioner advanced a central argument that the "one or more first connectors" recited in the ’302 patent were merely an obvious variation of the "tabs" disclosed in the earlier, co-owned Shook patent. Petitioner argued that during the prosecution of Shook, the applicant disclaimed the patentability of using "tabs as a catch type device," characterizing it as an "obvious matter of design choice." Petitioner contended that because the Patent Owner disavowed the patentability of the tab structure in the parent patent family, it was now estopped from recapturing this disclaimed subject matter by claiming it functionally as "connectors" in the ’302 patent. This argument framed the claims of the '302 patent as an impermissible attempt to patent a disclosed, but disclaimed, feature of the prior art Shook patent.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-18 of the ’302 patent as unpatentable.