PTAB

IPR2022-00174

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 ’920 patent discloses an identification system for duplicating keys. The system uses an optical imaging device to capture an image of a master key, logic to determine the key pattern from the image, and a cutting member to create a duplicate key.

3. Grounds for Unpatentability

Ground 1: Claims 1-2, 4-9, 18-20, and 22-25 are anticipated by Wills

  • Prior Art Relied Upon: Wills (Patent 6,064,747).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Wills, which teaches a "Method and Apparatus for Using Light to Identify a Key," discloses every element of the challenged claims. Wills describes a key identification machine with an outer shell and a slot for key insertion. A slidable drawer functions as both a retention mechanism and a key positioner, moving linearly into the housing to place the key for imaging. An internal camera (the optical imaging device) captures a backlit profile of the key. This image is then analyzed by a computer subsystem (logic) to identify the correct key blank for duplication. Petitioner further contended that Wills’s use of a light beam to trace a key's profile and determine its "shallowest depth" inherently measures the key's thickness, thus anticipating the limitations of claim 18.

Ground 2: Claims 10-12 and 17 are anticipated by Cimino

  • Prior Art Relied Upon: Cimino (Patent 4,899,391).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Cimino's "Automatic Key Identification System" discloses all limitations of claims 10, 11, 12, and 17. Cimino teaches a key holder subsystem that serves as a retention mechanism, configured to receive only the blade of a key. Internal springs within the holder act as a key positioner, aligning the key horizontally while exposing its tip end. Cimino’s optical system, comprising a lens and video camera, is explicitly configured to record a "head-on profile," or tip view, of the master key. Petitioner argued this captured image is inherently a cross-sectional view of the master key, as required by claim 12.

Ground 3: Claims 18-20 and 22-25 are obvious over Wills in view of Schmalfuss

  • Prior Art Relied Upon: Wills (Patent 6,064,747), Schmalfuss (European Patent EP0053730B1).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that Wills alone renders claim 18 and its dependents obvious or anticipated. However, to the extent the Board might find Wills does not explicitly teach an "imaging system configured to measure a thickness" (limitation 18c), Schmalfuss remedies this deficiency. Schmalfuss describes a fully automatic key recognizer that uses an imaging system to capture transverse and longitudinal profiles, from which an analyzer calculates key features, including "profile thickness."
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Wills and Schmalfuss to improve key recognition accuracy. Wills already analyzes a key's surface information to help identify it. Adding Schmalfuss's explicit thickness measurement would be a simple, commonsense step to incorporate an additional physical attribute, thereby improving the system's ability to distinguish between a database of key blanks.
    • Expectation of Success: A POSITA would have a high expectation of success. Both references teach using optical systems to capture key images and identify physical attributes. Integrating Schmalfuss's thickness calculation into Wills's existing image analysis framework would be a predictable combination of known techniques to achieve an improved, more reliable key identification system.

  • Additional Grounds: Petitioner asserted additional challenges, including anticipation of various claims by Lector Pro Manual (a product manual for a key identification system), Speedypik Article (a 2000 article in The National Locksmith), and Schmalfuss. Petitioner also raised further obviousness grounds combining these references with each other and with Wills and Cimino.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued against discretionary denial under 35 U.S.C. §325(d), asserting that the cited prior art, while listed in an Information Disclosure Statement, was never substantively addressed by the examiner during a fast-tracked (Track 1) prosecution.
  • Petitioner also argued against denial under 35 U.S.C. §314(a) and the Fintiv factors. It stated its intent to seek a stay in the co-pending litigation, noted the petition was filed expeditiously despite the court's "rocket docket," and stipulated that it would not pursue any instituted inter partes review (IPR) grounds in the district court action.

5. Relief Requested

  • Petitioner requests institution of an IPR and cancellation of claims 1-2, 4-7, 9-12, 14-15, 17-20, and 22-25 of the ’920 patent as unpatentable.