PTAB

IPR2022-00520

Esdec Inc v. Unirac Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Universal End Clamp
  • Brief Description: The ’273 patent describes a clamp assembly for securing a module, such as a photovoltaic solar module, to a support member. The assembly comprises a slider placed on the support member, a clamp, and a fastener, which work together to resist loads and prevent the module from sliding.

3. Grounds for Unpatentability

Ground 1: Obviousness over Suzuki and Brown - Claims 4-6 and 8-10 are obvious over Suzuki in view of Brown.

  • Prior Art Relied Upon: Suzuki (Japanese Patent Publication No. 2009-52278) and Brown (Patent 7,621,487).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Suzuki, which describes an attaching fixture for solar modules, discloses most elements of the challenged claims. Suzuki’s “leg members” function as the claimed “slider,” its “placing member 3” and “securing member 4” collectively form the “clamp,” and its “placing member bolt 2” is the “fastener.” Petitioner argued that Suzuki’s clamp includes downward-extending arms (“constraining pieces 3f”) that engage with a groove or channel on the rising face of the slider, thereby teaching the slot limitation of independent claims 4 and 6. For dependent claim 8, Suzuki’s supported faces that contact the roof board were argued to be a “keeper member” that centers the slider.
    • Motivation to Combine: Petitioner argued that to the extent Suzuki’s groove is not considered a “slot,” a person of ordinary skill in the art (POSITA) would combine Suzuki with Brown. Brown discloses a twist lock for pipe holders with a retainer having enclosed slots to receive upward-extending arms. A POSITA would modify Suzuki’s slider to include enclosed slots like those in Brown to receive the downward-extending arms of Suzuki’s clamp. The motivation would be to provide greater structural stability and a more “snug and lasting fit,” as the purpose of Suzuki’s arms is to engage the slider like a hat.
    • Expectation of Success: A POSITA would have a reasonable expectation of success in this combination, as incorporating enclosed slots to receive arms is a well-known mechanical design choice for providing stability, and Brown is analogous art. The modification would have yielded predictable results.

Ground 2: Anticipation and Obviousness over Kambara - Claims 4-6 and 8 are anticipated by or obvious over Kambara.

  • Prior Art Relied Upon: Kambara (Application # 2012/0192962).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Kambara, which discloses a mounting member for a solar array, anticipates every limitation of independent claim 4. Petitioner mapped Kambara’s “second member 22” combined with its “bolt lock 24b” to the claimed “slider,” which engages the flanges of the support member (“first member 21”). Kambara’s “third member 23” was mapped to the “clamp,” and its “fixing member 24” to the “fastener.” For the key slot limitation, Petitioner asserted that the “second guide portion 22f” on Kambara's slider—a channel formed by two projections—functions as a slot that accepts the downward-extending arms (“sidewalls 23c”) of the clamp. Dependent claim 5, requiring at least two arms, was allegedly met by Kambara’s two sidewalls. Dependent claim 8 was allegedly met by the interior portions of the slider’s legs, which act as keeper members to center the slider.
    • Motivation to Combine (for §103 grounds): While asserting anticipation for claim 4, Petitioner argued that dependent claim 6, which requires at least two slots, would have been obvious over Kambara. A POSITA would modify Kambara’s slider by adding two additional projections parallel to the existing ones to create a second, distinct slot. This modification would provide further structural stability when the clamp engages the slider, particularly if the slider were short and a single slot provided insufficient support.
    • Expectation of Success: This modification was presented as a simple, obvious design choice to improve stability, which a POSITA could have made without undue experimentation and with predictable results.

4. Key Claim Construction Positions

  • “slider”: Petitioner argued this term is expressly defined in the ’273 patent specification as “any number of means for securing a clamp assembly to a support such as a rail that wraps around a support system and engages with the underside of flanges on the support system.” This broad definition was central to mapping Suzuki’s leg members and Kambara’s second member/bolt lock combination to the claimed slider.
  • “clamp”: Petitioner relied on the specification’s express definition of “clamp” as “any number of means for securing a device to a support.” This allowed Petitioner to argue that multiple components in the prior art, such as Suzuki’s placing and securing members, collectively constitute a clamp.
  • “slot”: Petitioner asserted the plain meaning of “slot” includes narrow apertures, grooves, or channels. This interpretation supported the argument that Suzuki’s groove and Kambara’s guide portion meet the slot limitation.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued against discretionary denial under both §325(d) and §314(a) (Fintiv).
  • Under §325(d), Petitioner contended that the grounds are not the same or substantially the same as those raised during prosecution, as the examiner never considered Suzuki, Brown, or Kambara.
  • Regarding Fintiv, Petitioner stated its intent to seek a stay in the co-pending district court litigation. Further, it argued that the trial date was scheduled for more than six months after the statutory deadline for an institution decision, and the court had not yet issued any substantive orders, conducted claim construction, or overseen expert discovery related to the ’273 patent.

6. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 4-6 and 8-10 of the ’273 patent as unpatentable.