Hillman Group v. HY Ko Products Co LLC

1. Case Identification

• Case #: IPR2022-00168
• Patent #: 9,656,332
• Filed: November 9, 2021
• Petitioner(s): The Hillman Group, Inc.
• Patent Owner(s): Hy-Ko Products Company
• Challenged Claims: 1, 2, 4, 7-11, and 13

2. Patent Overview

• Title: Key Duplication Machine
• Brief Description: The ’332 patent describes an apparatus and method for an automated key duplication machine. The system uses an optical imaging device to capture both a backlit silhouette image and a surface-lit image of a master key to identify the correct key blank and subsequently create a duplicate.

3. Grounds for Unpatentability

Ground 1: Anticipation - Claims 1, 2, 4, 7-11, and 13 are anticipated by Wills under 35 U.S.C. §102.

• Prior Art Relied Upon: Wills (Patent 6,064,747).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Wills discloses every element of the challenged claims. Wills describes a key identification apparatus that uses a backlight (e.g., an LED array) to create a silhouette image of a master key, which is captured by a camera (e.g., a CCD). This silhouette image is analyzed to determine the key’s profile, length, and head shape to identify a proper key blank. Wills also explicitly discloses a second, additional light source (a laser line generator) that directs a light beam onto the key’s front surface to capture a second image. This second image is used to analyze surface features, such as the keyway milling pattern. The system is configured to capture the first image with the backlight on and the second image with the additional light on.
  • Key Aspects: Petitioner contended that Wills teaches the selective use of the second, surface-lit image. The system first analyzes the silhouette and only uses the surface scan "if necessary" to distinguish between key blanks with similar profiles but different surface features (e.g., different millings), directly mapping to the selective use limitation in claim 1.

Ground 2: Obviousness - Claims 1, 2, 4, 7-11, and 13 are obvious over Wills in view of SpeedyPik under 35 U.S.C. §103.

• Prior Art Relied Upon: Wills (Patent 6,064,747) and SpeedyPik (a key duplication system described in The National Locksmith, July 2000).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner presented this ground as an alternative, arguing that if the Board finds Wills does not explicitly disclose the "outer shell having a slot" and "retention mechanism" limitations of claim 1, these features are rendered obvious by SpeedyPik. SpeedyPik was a commercially available key duplication system that disclosed a housing with a front-facing slot for key insertion. It also featured a manually operated lever that acted as a retention mechanism to clamp the key in place for scanning. Combining SpeedyPik's simple slot and clamp with the advanced dual-imaging system of Wills would result in the claimed invention.
  • Motivation to Combine: A POSITA would combine the teachings to improve the usability of the Wills system. Petitioner argued it would have been obvious to replace Wills's more cumbersome drawer-based key holder with SpeedyPik’s simpler, well-known slot and lever mechanism. This would be a simple substitution of one known key-holding mechanism for another to achieve a more efficient and user-friendly device. Further, Wills itself suggests alternative key holding means, such as "clear protrusions," motivating a POSITA to look for other known, simple methods like that in SpeedyPik.
  • Expectation of Success: A POSITA would have a reasonable expectation of success, as the combination involves integrating two known technologies for their established functions—a key holder and a key imager. The result of placing a key in a slot for imaging would be entirely predictable.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under either 35 U.S.C. §325(d) or §314(a) (Fintiv) is inappropriate.
• §325(d) Argument: Denial is not warranted because the prior art was not substantively considered during prosecution. The ’332 patent underwent an abbreviated Track 1 examination where the Examiner was presented with an 1100-page Information Disclosure Statement containing over 400 references. The patent issued without any prior-art based rejections, indicating the Examiner did not and could not have substantively analyzed the key teachings of Wills or SpeedyPik (which was not cited at all).
• §314(a) (Fintiv) Argument: Denial based on a parallel district court case is not favored. Petitioner asserted it would seek a stay if the IPR is instituted, was diligent in filing the petition shortly after receiving infringement contentions, and noted that this IPR challenges claims not asserted in the district court case. Petitioner also stipulated it would not pursue any instituted IPR grounds in the district court, mitigating concerns of duplicative efforts. Finally, Petitioner argued the challenge is strong and raises a significant public interest in canceling an invalid patent.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1, 2, 4, 7-11, and 13 of the ’332 patent as unpatentable.