PTAB

IPR2021-00523

RECtorSeal LLC v. DiversiTech Corp

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Petition
petition Intelligence

1. Case Identification

2. Patent Overview

  • Title: Flaring and Swaging Bits, and Methods Using Same
  • Brief Description: The ’223 patent discloses rotary inserts for power tools, such as drills, used to form flares or swages in the ends of metallic tubes. The technology is primarily aimed at the Heating, Ventilation, and Air Conditioning (HVAC) industry for on-site pipe fitting.

3. Grounds for Unpatentability

Ground 1: Claims 1, 3-4, 7-8, 10, 12-13, and 16-17 are Anticipated and/or Obvious over Bordenave

  • Prior Art Relied Upon: Bordenave (French Patent No. 1,028,057).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Bordenave, which was not considered during prosecution, discloses all elements of the challenged independent claims. Bordenave teaches a tool for forming bulges and collars in pipes that includes a shank portion ("threaded teat 32b"), a stopper portion ("transverse blade 33b"), and a tip ("flat blade 37b"). Petitioner asserted that Bordenave’s tip has a rounded, continuous outer edge, extends along an axis of symmetry, tapers outward, and has a maximum radius at its base smaller than the stopper's radius, directly mapping to the limitations of claim 1.
    • Motivation to Combine (for §103 grounds): For any elements arguably not explicitly disclosed, Petitioner contended it would have been obvious to modify Bordenave. For example, while Bordenave describes a hand-cranked tool, a person of ordinary skill in the art (POSITA) would combine its insert with a standard rotary power tool to achieve the predictable result of faster and more efficient operation, especially since Bordenave itself discloses gear mechanisms common in power drills.
    • Expectation of Success: A POSITA would have had a high expectation of success in powering Bordenave’s insert with a drill, as this represents a simple and common substitution of a manual power source with a mechanical one for a known purpose.

Ground 2: Claims 2, 6, 9, 11, 15, and 18-20 are Obvious over Bordenave in View of Minor and Waite

  • Prior Art Relied Upon: Bordenave (French Patent No. 1,028,057), Minor (Patent 7,650,772), and Waite (G.B. Patent No. 560,324).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground addressed dependent claims directed to specific features like a "flared bottom portion" and "two stage portions." Petitioner argued that Minor, a rotary flaring tool, explicitly teaches these features. Minor discloses a "flared bottom portion" (ribs 36 at an angle 48) and a two-stage tip with different curvatures to guide the tool into a pipe and then properly engage it. Waite discloses a similar tool that operates at high speeds (1500 rpm), confirming the feasibility of such designs in powered applications. Petitioner asserted these teachings remedy any alleged deficiencies in Bordenave.
    • Motivation to Combine: A POSITA would combine Bordenave's general tool structure with Minor's specific flaring geometry for several reasons. First, it would predictably add flaring capability to Bordenave's tool, increasing its on-site versatility. Second, Minor teaches an improved, less abrupt method for forming flares that reduces the risk of damaging the tube end, an economic advantage a POSITA would have sought. Waite's disclosure of a high-speed tool would assure a POSITA that such a combination would function effectively with a power drill without needing complex features like rotatable dowels or lubrication taught by Minor.
    • Expectation of Success: The combination involved applying known design principles (Minor's flaring geometry) to a known tool type (Bordenave's rotary insert) to achieve a predictable improvement in functionality. This integration of established flaring techniques would have been a straightforward design modification with a high expectation of success.

4. Key Claim Construction Positions

  • "tapering": Petitioner argued this term should be given its plain and ordinary meaning of "progressively narrowing toward one end." This construction was asserted to be critical because Bordenave’s tip, described as having a "rounded" free end, would inherently become progressively narrower away from its axis of symmetry, thus meeting the "tapering outward" limitation.
  • "radius": Petitioner contended that in the context of the claims, "radius" refers to the line segment from the tool's axis of rotation to its outermost edge. The "maximum radius" of the tip's outer edge is therefore the maximum distance from the axis to the edge at the tip's base. This construction allowed Petitioner to map the dimensions of Bordenave's tip and stopper portion to the claimed limitations requiring the stopper radius to be greater than the tip's maximum radius.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under Fintiv was inappropriate. The parallel district court litigation was in its very early stages, with fact discovery not closing until January 2022 and an institution decision expected in August 2021, well before any significant investment by the court or parties. Petitioner noted its diligence in filing the petition just one week after receiving preliminary infringement contentions and six months before the statutory bar. It was also argued that the presiding district court judge consistently grants stays pending inter partes review (IPR), and that the PTAB's Final Written Decision (FWD) would issue before the scheduled trial date, promoting efficiency. Finally, Petitioner emphasized the strength of the petition, which relies on prior art never considered by the USPTO.

6. Relief Requested

  • Petitioner requested institution of an IPR and cancellation of claims 1–4, 6–13, and 15–20 of the ’223 patent as unpatentable.