PTAB

IPR2022-00169

Hillman Group v. HY Ko Products Co LLC

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Petition

1. Case Identification

2. Patent Overview

  • Title: Key Duplication Machine
  • Brief Description: The ’133 patent discloses an integrated key duplication machine that includes an optical imaging system to identify a correct key blank for a master key and a cutting system to duplicate the master key using that blank.

3. Grounds for Unpatentability

Ground 1: Anticipation over Wills - Claims 1-6, 9-16, 18, 20, 21, 23, and 24 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, which issued more than 16 years before the ’133 patent’s filing date, discloses every element of the challenged claims. Wills describes an integrated key duplication machine comprising both an optical key blank identification system and a key cutting system. The identification system in Wills uses backlighting and a laser light beam to capture a key’s silhouette and surface features (keyway), which are then compared to a database to identify the correct blank. The cutting system uses a gripper mechanism with jaws (a retention panel) and cutter wheels to duplicate the key based on the captured information. Petitioner asserted that Wills discloses that the identification and cutting systems can operate individually but interact and share information, as required by independent claims 1, 11, and 24.
    • Key Aspects: Petitioner contended that Wills discloses a complete system, including an imaging device within a housing that images a key inserted via a slot, a retention mechanism (gripper with jaws), and a computer subsystem with a database and logic to compare key features, satisfying all limitations of the independent and dependent claims.

Ground 2: Obviousness over Wills and SpeedyPik - Claims 1-6, 9-16, 18, 20, 21, 23, and 24 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 July 2000 publication from The National Locksmith).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground was presented as an alternative, arguing that if Wills is found not to disclose a specific slot and retention mechanism where a portion of the key remains outside the housing during imaging, the combination with SpeedyPik would render this feature obvious. SpeedyPik was a well-known key duplication system that explicitly taught an optical imaging device with a slot for key insertion and a manually operated retention lever, where the key head remains outside the housing while the blade is imaged internally.
    • Motivation to Combine: A POSITA would combine SpeedyPik’s user-friendly slot insertion mechanism with the Wills system to make it easier to operate. Petitioner argued this would be a simple and predictable substitution of Wills’s drawer mechanism with a known alternative from a similar device to achieve the same purpose of holding a key for imaging.
    • Expectation of Success: A POSITA would have a high expectation of success, as both references relate to key imaging, and the combination would have produced the predictable result of a more convenient key holding mechanism for the Wills system.

Ground 3: Obviousness over Marchal and SpeedyPik - Claims 1-6, 11-16, 18, and 24 are obvious over Marchal in view of SpeedyPik under §103.

  • Prior Art Relied Upon: Marchal (Patent 4,666,351) and SpeedyPik.

  • Core Argument for this Ground:

    • Prior Art Mapping: Marchal disclosed a complete automatic key cutting machine but used a mechanical key identification system (a key follower tracing the master key and test slots to determine suitability). Petitioner argued that SpeedyPik supplied the missing "optical" identification system element. The combination of Marchal’s cutting apparatus with SpeedyPik’s optical scanner for keyway identification would result in the integrated machine claimed in the ’133 patent.
    • Motivation to Combine: A POSITA would be motivated to upgrade Marchal’s older, mechanical identification system with the more versatile and accurate optical imaging system of SpeedyPik. This combination would enhance the Marchal system's efficiency and allow it to duplicate a wider variety of keys than was possible with its limiting physical test slot, a clear advantage described in SpeedyPik itself.
    • Expectation of Success: Success would be expected and the results predictable, as combining known optical identification systems with known key cutting systems was a well-established practice in the art at the time.

  • Additional Grounds: Petitioner asserted that claims 9, 10, 20, and 21 are obvious over the combination of Marchal, SpeedyPik, and Wills, arguing that adding Wills's ability to discern the key's bitting pattern would be an obvious improvement to the Marchal/SpeedyPik system.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued against discretionary denial under both 35 U.S.C. §325(d) and §314(a) (Fintiv).
  • §325(d): Petitioner contended that the primary prior art references (Wills and SpeedyPik) were never cited as a basis for rejection by the Examiner during prosecution. While Marchal was listed in a large Information Disclosure Statement, it was never substantively addressed by the Examiner, meaning the Office never properly considered the arguments presented in the petition.
  • §314(a) (Fintiv): Petitioner argued the Fintiv factors strongly favor institution. Key arguments included that Petitioner will seek a stay of the co-pending district court litigation if the IPR is instituted, the petition was filed expeditiously (nearly seven months before the deadline), and Petitioner stipulated it would not pursue any instituted IPR invalidity ground in the district court.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-6, 9-16, 18, 20, 21, 23, and 24 of the ’133 patent as unpatentable.