PTAB

IPR2019-01161

Guardiar Solutions Inc v. RSA Protective Technologies LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Anti-Ram System and Method of Installation
  • Brief Description: The ’865 patent describes an anti-ram bollard structure comprising one or more bollards secured to a base made of intersecting structural members. The base is designed for installation in a shallow excavation to avoid subsurface utilities and is configured to resist rotation upon vehicle impact.

3. Grounds for Unpatentability

Ground 1: Obviousness over Kogyo and Carlyle - Claims 1-4, 15-20, and 31-35 are obvious over Kogyo in view of Carlyle.

  • Prior Art Relied Upon: Kogyo (Japanese Application Publication H11-61746) and Carlyle (U.K. Application Publication GB2229472A).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued Kogyo taught the core elements of the claimed bollard structure, including an energy-absorbing system with support columns (bollards) secured to a rectangular base frame of intersecting structural members. Kogyo’s base receives impact forces from the bollards and is recessed relative to a road surface. Petitioner asserted that Carlyle explicitly taught mounting a similar bollard structure in a shallow excavation (6.5 inches deep), which falls within the ’865 patent’s claimed range for a "shallow" installation (3 to 14 inches).
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSA) would combine Kogyo’s anti-ram structure with Carlyle’s shallow mounting depth to solve the well-known problem of installing security bollards in urban environments with existing subsurface utilities. This combination addressed the need to avoid deep, costly, and disruptive excavations, which was a primary motivation in the field at the time.
    • Expectation of Success: The combination involved applying a known installation depth from Carlyle to a standard bollard base design from Kogyo. A POSA would have had a high expectation of success, as this would predictably result in a functional shallow-mount bollard system without altering the fundamental anti-ram principles of Kogyo's design.

Ground 2: Obviousness over Kogyo, Carlyle, and Cold-Formed Steel Design - Claims 5-14 and 21-30 are obvious over Kogyo in view of Carlyle and Cold-Formed Steel Design.

  • Prior Art Relied Upon: Kogyo, Carlyle, and Cold-Formed Steel Design (a 2000 technical manual by Wei Wen Yu).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground targeted dependent claims reciting specific structural member types (e.g., tubes, pipes, angles, channels, plates). Petitioner argued that while Kogyo disclosed a base made from "channel section steel," the Cold-Formed Steel Design manual demonstrated that using a variety of structural shapes, including tubes and angles, was common practice in structural framing.
    • Motivation to Combine: A POSA building the bollard system of Kogyo and Carlyle would naturally refer to a standard industry guide like Cold-Formed Steel Design to select appropriate, commonly available, and cost-effective structural components. The choice of a specific shape (e.g., tube vs. channel) was argued to be a simple design choice based on desired strength, weight, and cost, rather than an inventive step.
    • Expectation of Success: Substituting one well-known structural shape for another was a routine engineering task. The performance characteristics of these standard shapes were well understood, ensuring a predictable and successful outcome.

Ground 3: Obviousness over Kogyo, Carlyle, and Hill - Claims 1-4, 15-20, and 31-35 are obvious over Kogyo in view of Carlyle and Hill.

  • Prior Art Relied Upon: Kogyo, Carlyle, and Hill (U.K. Application Publication GB2282838A).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground was presented as an alternative, positing that if Kogyo’s structure were interpreted as a single bollard, Hill taught the obviousness of creating a system with a "plurality of bollards." Hill disclosed a vehicle barrier with multiple, connected barrier arms to deter "ram raiders," explicitly teaching that "many more arms...can be provided."
    • Motivation to Combine: Security applications frequently require a continuous line of barriers rather than a single post. A POSA would be motivated by Hill’s teachings to connect multiple Kogyo-type units to form a more extensive and robust perimeter defense, a common and foreseeable modification for any modular barrier system.
    • Expectation of Success: Linking modular security units was a known technique for expanding a protective barrier. A POSA would expect that connecting multiple Kogyo units, as suggested by the principles in Hill, would predictably result in a larger barrier with combined strength.
  • Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations including Hill and Cold-Formed Steel Design (Ground 4) and adding Glaesener (Patent 3,881,697) for its teachings on rebar members (Ground 5), relying on similar design modification and combination rationales.

4. Key Claim Construction Positions

  • For the purposes of the IPR, Petitioner stated it would apply the claim constructions adopted by the District Court in the co-pending litigation (RSA Protective Technologies, LLC v. Secure USA, Inc. and Guardiar Solutions Inc.). Key adopted constructions included defining "base" as "the structure supporting the bollard" and "shallow excavation" by its functional characteristics and dimensions disclosed in the specification. Petitioner’s strategy was to argue obviousness even under the Patent Owner’s preferred constructions.

5. Key Technical Contentions (Beyond Claim Construction)

  • A central argument underpinning all grounds was the concept of simultaneous invention as objective evidence of obviousness. Petitioner presented four examples of other shallow-mounted bollard systems (disclosed in Rogers, Darcy, SecureUSA 2002 Project Designs, and Tomasetti 2004 Design) that were allegedly developed independently by third parties between March 2002 and May 2004. Petitioner argued this near-simultaneous development of systems containing the same five basic elements as the ’865 patent demonstrated that the claimed solution was merely the product of ordinary engineering skill responding to a known market need.

6. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-35 of the ’865 patent as unpatentable.