PTAB

IPR2022-00087

Esdec Inc v. Unirac Inc

Key Events

Petition

petition Intelligence

Title: Snap-On Structural Connector
Brief Description: The ’542 patent describes a solar panel assembly and mounting system. The system comprises a connector with side walls and recesses, a structural member that engages with the connector, and a solar panel mounted on the structural member.

Prior Art Relied Upon: Kufner (European Patent Publication No. 1,930,668).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Kufner, which discloses a mounting rail system for solar modules, teaches all limitations of the challenged claims. Kufner's clip element 3 was identified as the claimed "connector," including a base (8), side walls (spring legs 7), and recesses formed by claw-shaped corners (6) and latching tabs (11). Kufner’s mounting rail 2 was identified as the "structural member" received in the connector’s recesses. Petitioner asserted that Kufner’s upwardly curved corners (claws 81), which are formed integrally with the base and extend between the side walls, constitute the claimed "structural support." For claims requiring a slider and clamp, Petitioner mapped these elements to Kufner’s clip element 44 (slider) and module clamp 52.
- Key Aspects: This ground asserted that a single prior art reference rendered all challenged claims obvious, establishing the foundational elements for subsequent combination-based grounds.

Prior Art Relied Upon: Kufner (European Patent Publication No. 1,930,668) and Wu (Chinese Patent Publication No. CN101387151A).
Core Argument for this Ground:
- Prior Art Mapping: This ground relied on Kufner for the base connector and structural member (rail) as in Ground 1. Petitioner argued that Wu, which discloses a mounting rail with a sliding block and clamp, supplies the limitations for a "slider slidably engageable with the structural member" and an attachable "U-shaped" clamp. Specifically, Petitioner proposed inserting Wu's engaging slide block 5 (the slider) into the receiving channel 92 of Kufner's aluminum rail 91 (the structural member). Wu’s intermediate clamp 10, which attaches to the slider via a bolt and has two flanges, was argued to meet the clamp limitations.
- Motivation to Combine: Petitioner argued a POSITA would combine Kufner and Wu because both relate to mounting photovoltaic devices and share structural similarities. A POSITA would have been motivated to use Wu's slider in Kufner's rail channel as a simple, known substitution to create a removably and adjustably mounted system.
- Expectation of Success: A POSITA would have a reasonable expectation of success because the combination merely required sizing Wu's slider to fit the dimensions of Kufner's receiving channel, a predictable and routine design choice.

Prior Art Relied Upon: Kufner (European Patent Publication No. 1,930,668) and Jakudo (Japanese Patent Publication No. JPH 2000220268).
Core Argument for this Ground:
- Prior Art Mapping: Similar to Ground 2, this ground used Kufner for the primary connector and rail system. Petitioner argued Jakudo provides an alternative disclosure for the slider and clamp elements. Petitioner proposed inserting Jakudo's square-shaped sliding portion 3a (the slider) into the receiving channel 92 of Kufner's aluminum rail 91. Jakudo’s U-shaped upper fastening part 4, which attaches to the slider and secures a solar module, was argued to meet the limitations of the claimed clamp.
- Motivation to Combine: The motivation was analogous to Ground 2. Petitioner argued a POSITA would be motivated to combine the references as they are from the same technical field and the combination represents a simple substitution of known components (a slider into a rail) to achieve the predictable result of an adjustable mounting system.
- Expectation of Success: Success was expected because the combination involved choosing from a finite number of predictable solutions, primarily sizing Jakudo's slider to fit within Kufner's rail, which was well within the skill of a POSITA.

"a first recess" and "a second recess": Petitioner proposed this term be construed by its plain and ordinary meaning as "a depression or crevice on a surface." This construction was argued to be consistent with the specification and allows Kufner’s structure, formed by various protrusions like flanges and ridges on the side walls of its clip element, to be mapped to the claimed recesses.
"the clamp is U-shaped and includes two flanges that extend in opposite directions": Petitioner proposed this term be given its plain and ordinary meaning, which it argued would encompass both upright and inverted U-shapes. This construction was asserted to be consistent with a POSITA's understanding and relevant to the structures disclosed in the prior art, such as the "cupped" clamps in Kufner and the fastening parts in Wu and Jakudo.

Petitioner argued that the Board should not exercise its discretion to deny institution under 35 U.S.C. § 325(d). The core argument was that the grounds raised in the petition are not the same or substantially the same as art or arguments previously considered by the USPTO during prosecution of the ’542 patent. Petitioner emphasized that the Examiner never considered any of the primary references asserted (Kufner, Wu, or Jakudo) or the accompanying expert testimony.

Petitioner requests institution of an inter partes review and cancellation of claims 1-4, 6, and 8-19 of the ’542 patent as unpatentable.