PTAB

IPR2019-01162

Guardiar Solutions, Inc. v. RSA PROTECTIVE TECHNOLOGIES, LLC

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1. Case Identification

2. Patent Overview

  • Title: Anti-Ram System and Method of Installation
  • Brief Description: The ’865 patent describes a shallow-mount anti-ram bollard system. The system features a base comprising intersecting structural members that is installed in a shallow excavation, with one or more bollards secured to the base to resist rotational forces from vehicle impact.

3. Grounds for Unpatentability

Ground 1: Obviousness over Draht - Claims 1-3, 15-19, and 31-35 are obvious over Draht.

  • Prior Art Relied Upon: Draht (German Patent Application Publication DE 3412354 A1).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Draht, which discloses a "drive-through prevention element," teaches all limitations of the independent claims. Draht’s system includes posts (bollards), a base frame made of intersecting structural members (posts and edges), and is designed for shallow mounting where it is covered by soil (supporting media). Petitioner asserted Draht’s structure, particularly its use of a plow-type blade and its engagement with the ground upon impact, is designed to resist rotation and transmit forces to the base, rendering the claimed invention obvious.
    • Motivation to Combine (for §103 grounds): This ground is based on a single reference.
    • Expectation of Success (for §103 grounds): This ground is based on a single reference.

Ground 2: Obviousness over Rogers - Claims 1-3, 14-19, and 30-34 are obvious over Rogers.

  • Prior Art Relied Upon: Rogers (Patent 7,040,836).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that Rogers teaches a "turntable barrier system" that meets all limitations of the independent claims. This system includes impact elements (bollards) mounted on a turntable frame structure (base) with intersecting supports. Petitioner argued Rogers explicitly discloses a system for minimal excavation depth (12-18 inches), the use of a concrete pad layer (supporting media) retained by the frame, and a design intended to arrest impacting vehicles by transferring the load to the base, thereby resisting rotation. Both circular and rectangular frame embodiments were identified as meeting the claim limitations.
    • Motivation to Combine (for §103 grounds): This ground is based on a single reference.
    • Expectation of Success (for §103 grounds): This ground is based on a single reference.

Ground 3: Obviousness over Draht in view of Cold-Formed Steel Design - Claims 5-14 and 21-30 are obvious over Draht in view of Cold-Formed Steel Design.

  • Prior Art Relied Upon: Draht (German Patent Application Publication DE 3412354 A1) and Cold-Formed Steel Design (a 2000 technical publication by Wei Wen Yu).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground built upon the teachings of Draht for the basic bollard structure. The challenged dependent claims add limitations specifying the types of structural members used (e.g., tubes, pipes, angles, channels, plates). Petitioner argued that the Cold-Formed Steel Design publication demonstrates that these specific shapes were all well-known, conventional components for structural framing long before the ’865 patent.
    • Motivation to Combine (for §103 grounds): A POSITA, seeking to implement the bollard system taught by Draht, would combine its teachings with the well-known structural shapes disclosed in Cold-Formed Steel Design as a matter of routine design choice to create a functional and robust frame.
    • Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success, as substituting one known type of structural support for another (e.g., using a tube or channel instead of the I-beam disclosed in Draht) was a predictable and common engineering practice.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including combining Draht with Carlyle (U.K. Application # GB2229472A) to teach specific base height dimensions (claims 4, 20); combining Rogers with Carlyle for the same purpose; combining Rogers with Cold-Formed Steel Design to teach specific member shapes (claims 5-13, 21-29); and combining Rogers with Glaesener (Patent 3,881,697) to explicitly teach rebar members extending between adjacent bollards (claim 35).

4. Key Claim Construction Positions

  • Petitioner stated that, solely for the purposes of the IPR, it agreed to apply the claim constructions adopted by the district court in co-pending litigation. Key constructions included:
    • "bollard structure": "a structure that contains one or more bollards."
    • "base": "the structure supporting the bollard."
    • "plurality of [structural] members which intersect and are tied together": "at least two structural members, which pass or lie across each other and are attached or fastened to one another."
    • "supporting media": "concrete or soil."

5. Key Technical Contentions (Beyond Claim Construction)

  • Simultaneous Invention: A central theme of the petition was that the claimed shallow-mount bollard system was the product of ordinary engineering skill, not invention. Petitioner provided evidence of alleged simultaneous invention, arguing that at least four different entities (disclosed in Rogers, Darcy, SecureUSA 2002 Project Designs, and Tomasetti 2004 Design) independently created and developed functionally identical bollard systems between 2002 and 2004, driven by market demand for shallow-mount solutions to avoid underground utilities. This, Petitioner argued, is persuasive evidence of obviousness.

6. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-35 of Patent 8,215,865 as unpatentable.