PTAB

IPR2021-01379

Esdec Inc v. Unirac Inc

Key Events

Petition

petition

Case #: IPR2021-01379
Patent #: 7,434,362
Filed: August 27, 2021
Petitioner(s): EcoFasten Solar, LLC; Wencon Development, Inc. d/b/a Quickmount PV Corporation; and Esdec, Inc.
Patent Owner(s): Unirac, Inc.
Challenged Claims: 3-7, 9-10, 13, 15-23

Title: System for Removably and Adjustably Mounting a Device on a Surface
Brief Description: The ’362 patent describes a system for mounting photovoltaic modules or other flat panels on a surface, such as a roof. The system generally comprises a "footing grid" of keepers anchored to the surface, at least one "dual track rail" removably mounted on the footing grid, and one or more "clamps" for securing the module to the rail.

Prior Art Relied Upon: Hideyuki (Japanese Publication No. JPH 10-122125A) and Donauer (German Publication No. DE29616947U1).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Hideyuki, which describes a "Mounting Platform for Solar Energy Utilizing Equipment," discloses nearly all limitations of the challenged claims. Hideyuki's leg securing frames, support brackets, and frame securing brackets formed a "footing grid" with "keepers." Its "vertical frames" served as the claimed "dual track rail," and its "holding brackets" functioned as the claimed "clamps."
- Motivation to Combine: Petitioner contended that Hideyuki’s clamps (holding brackets 59) were suitable only for modules with specific lipped edges. A person of ordinary skill in the art (POSITA) would combine Hideyuki with Donauer by substituting Hideyuki’s specialized clamps with Donauer’s more versatile clamping profiles (02 and 03). This substitution would allow for mounting various module types, including those without lipped edges, and would provide a more stable and aesthetically pleasing installation with smaller gaps between modules.
- Expectation of Success: A POSITA would have a high expectation of success, as this involved the simple substitution of one known type of clamp for another to achieve the predictable result of mounting a different style of solar panel.

Prior Art Relied Upon: Masami (Japanese Publication No. 11-013238) and Ullman (Patent 6,360,491).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner asserted that Masami, which discloses a "Frame for Solar Battery Module," teaches a complete mounting system analogous to the ’362 patent. Masami’s mounting brackets (7) formed the "footing grid," its vertical rails (4) were the "dual track rail," and its module side covers (22) and horizontal rails (5) collectively functioned as the "clamps."
- Motivation to Combine: To the extent Masami's clamping mechanism was considered distinct, a POSITA would have been motivated to replace it with the clamps from Ullman. Ullman discloses end clamps (76) and bi-module clamps (78) that could be attached directly to Masami's vertical rails. This modification would streamline the system by eliminating Masami's separate horizontal rails, thereby reducing component count, lowering costs, and simplifying installation.
- Expectation of Success: The combination was argued to be a predictable substitution of known components. A POSITA would only need to adapt the fastening hardware of Ullman's clamps to fit Masami's rails, a routine design choice with a clear expectation of success in achieving a simpler, removable mounting system.

Prior Art Relied Upon: Masami (Japanese Publication No. 11-013238) and Nobuyuki (Japanese Publication No. 09-250219).
Core Argument for this Ground:
- Prior Art Mapping: The argument relied on Masami as the primary system, as detailed in Ground 2. Nobuyuki was introduced to provide an alternative, improved clamping element.
- Motivation to Combine: Both Masami and Nobuyuki aimed to solve the problem of creating an easily adjustable solar panel mounting system. Petitioner argued a POSITA would have found it obvious to modify Masami's system by incorporating Nobuyuki's side cover members (41) as clamps. This would streamline the installation process and improve workability by using fewer parts, directly addressing the stated objectives of both references.
- Expectation of Success: Given the functional and structural similarities between the systems, a POSITA would have a reasonable expectation of success. The combination would yield the predictable result of a more efficient and adjustable mounting assembly.
Additional Grounds: Petitioner asserted anticipation of claims 3-6 and 10 under 35 U.S.C. §102 over Hideyuki. Petitioner also asserted anticipation of claims 3, 9, 10, and 13 under §102 over Nobuyuki, noting that related claims were previously cancelled as anticipated by Nobuyuki in a prior reexamination.

"one or more clamps variably positionable on the dual track rail and footing grid": Petitioner argued this term should be given its plain and ordinary meaning, which is that the clamps are "positionable on or in relation to" the rail and/or grid, regardless of intervening elements. Critically, Petitioner asserted that the claim language does not require the clamp to directly connect to or engage both the rail and the footing grid simultaneously. This position was based on the patent's specification and a prior Patent Trial and Appeal Board (PTAB) decision in the Jac-Rack Reexamination, which rejected a narrower construction proposed by the Patent Owner.

Petitioner argued that the Board should not exercise its discretion to deny institution under 35 U.S.C. § 325(d) for two primary reasons:
- New Art and Arguments: Three of the asserted grounds relied on prior art references (Hideyuki, Donauer, and Ullman) that were never considered during the original prosecution or the subsequent Jac-Rack reexamination.
- Examiner Error: During the prior reexamination, the Examiner adopted an erroneously narrow claim construction for the "variably positionable" clamp limitation. Petitioner contended that this error was material to patentability and that the Board should reconsider the art in light of the proper, broader construction, which the PTAB itself had previously endorsed.

Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 3-7, 9-10, 13, and 15-23 of the ’362 patent as unpatentable.