PTAB

IPR2022-00582

Hirsch Glass Corp v. Cambria Co LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Processed Slabs, and Systems and Methods Related Thereto
  • Brief Description: The ’303 patent discloses processed mineral slabs used for countertops and tiles, featuring complex veining patterns designed to emulate natural quarried stone like marble. The technology involves forming synthetic slabs from a mixture of particulate mineral material (e.g., quartz), a resin binder, and pigments.

3. Grounds for Unpatentability

Ground 1: Obviousness over Bigi and Benito Lopez - Claims 1-4, 8-11, 13-15, and 18-20 are obvious over Bigi in view of Benito Lopez.

  • Prior Art Relied Upon: Bigi (WO 2005/097447) and Benito Lopez (Application # 2015/0360507).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the combination of Bigi and Benito Lopez disclosed all limitations of the challenged claims. Benito Lopez taught a method for manufacturing large artificial stone slabs from materials like quartz and resin, creating veins that extend through the slab’s length, width, and thickness to emulate natural stone. Bigi, while directed to ceramic tiles, taught an apparatus and method for creating specific, natural-looking decorative patterns, including a primary vein separating other veins, using different, substantially unmixed materials deposited in a predefined pattern. Petitioner asserted that a POSITA would apply the specific veining design from Bigi to the quartz slab manufacturing process of Benito Lopez. The claimed slab dimensions (at least 2x6 feet) were argued to be an obvious design choice driven by commercial demand for standard countertop sizes, a scale readily achievable by the Benito Lopez process.
    • Motivation to Combine: A POSITA would combine these references to satisfy market demand for more realistic and varied veining patterns in engineered quartz slabs. Petitioner contended that creating processed slabs and decorative ceramic tiles were analogous arts, as both fields seek to mimic the appearance of natural stone. Given that Benito Lopez itself referenced the "ceramic sector," a POSITA would naturally look to teachings like Bigi for improved aesthetic designs to apply to the well-known quartz slab manufacturing process.
    • Expectation of Success: A POSITA would have a reasonable expectation of success in combining the references because both involved distributing finely ground mineral materials to form patterns. Applying Bigi's apparatus design for pattern creation to the quartz and resin mixtures of Benito Lopez was presented as a straightforward integration of known technologies for a predictable result.

Ground 2: Obviousness over Bigi, Benito Lopez, and Toncelli ’044 - Claims 5-7, 12, 16, and 17 are obvious over Bigi and Benito Lopez in view of Toncelli ’044.

  • Prior Art Relied Upon: Bigi (WO 2005/097447), Benito Lopez (Application # 2015/0360507), and Toncelli ’044 (Application # 2004/0032044).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the combination of Bigi and Benito Lopez to address dependent claims requiring "transverse" veins that intersect the primary lengthwise veins. Petitioner argued that Toncelli ’044 taught the desirability of creating a "veined effect" to better emulate natural stone, which often has such intersecting patterns. Toncelli disclosed creating irregular grooves on the slab surface with a "comb or rake-like tool" before applying a dyed mixture, a method a POSITA would understand could be used to create transverse veins. Additionally, Bigi disclosed a "further hopper" that could be arranged transversely to deposit material across the primary veins. This teaching, added to the base combination, rendered the transverse vein limitations obvious.
    • Motivation to Combine: The primary motivation was to create a more authentic and aesthetically pleasing product that better mimicked natural marble, which commonly features transverse or intersecting veins. To meet this well-known industry goal, a POSITA would have been motivated to supplement the lengthwise veining process of Benito Lopez and Bigi with a known technique for adding transverse veins, such as that taught by Toncelli.
    • Expectation of Success: A POSITA would expect success because Toncelli's method of creating surface veins was independent of and easily added to the slab-forming process of Benito Lopez. It represented a known technique to achieve a desired, predictable aesthetic enhancement.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under Fintiv would be improper. It was asserted that the parallel district court litigation was in its early stages, with no trial date set and key events like Markman briefing not yet complete. Petitioner contended that the IPR would be a more efficient forum for resolving the patentability challenges, especially since the contemporaneously filed petitions challenged all asserted utility patent claims in the litigation.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-20 of the ’303 patent as unpatentable under 35 U.S.C. §103.