Hirsch Glass Corp v. Cambria Co LLC

1. Case Identification

• Case #: IPR2022-00589
• Patent #: 9,993,942
• Filed: February 10, 2022
• Petitioner(s): Hirsch Glass Corp., d/b/a/ Spectrum Quartz
• Patent Owner(s): Cambria Company LLC
• Challenged Claims: 1-4, 6-35

2. Patent Overview

• Title: Processed Slabs, and Systems and Methods Related Thereto
• Brief Description: The ’942 patent discloses methods for making processed slabs, such as for countertops, from multiple different particulate mineral mixes. The process is intended to create slabs with veining patterns that emulate the appearance of natural quarried stone.

3. Grounds for Unpatentability

Ground 1: Obviousness over Benito Lopez and Liu - Claims 1-4, 6-11, and 14-35 are obvious over Benito Lopez in view of Liu.

• Prior Art Relied Upon: Benito Lopez (Application # 2015/0360507) and Liu (Chinese Application # CN 1718403 A).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Benito Lopez teaches nearly all elements of the challenged claims, including a method for manufacturing artificial stone slabs with distinct veins by dispensing multiple, different particulate mixes into a mold. However, Benito Lopez teaches dispensing the material while the mold is in a horizontal orientation. Petitioner asserted that Liu, which relates to manufacturing ceramic tiles, supplies the missing elements by teaching a process where different ceramic powders are sequentially poured into a vertically-oriented mold to create distinct layers. Liu further teaches covering the open end of the mold with a cap before adjusting the mold to a horizontal orientation for pressing, a process which creates through-thickness veins.
  • Motivation to Combine: Petitioner contended that a person of ordinary skill in the art (POSITA) would be motivated to combine these teachings due to a strong and persistent market demand for engineered stone that more realistically emulates natural stone. Petitioner argued that engineered stone and ceramic tile manufacturing are analogous arts, sharing similar processes and goals. A POSITA would therefore look to Liu’s well-documented vertical dispensing method as an obvious alternative to Benito Lopez’s horizontal method to achieve more desirable "tri-dimensional" veins that extend through the entire thickness of the slab.
  • Expectation of Success: A POSITA would have a reasonable expectation of success in implementing Liu’s vertical dispensing technique with the engineered stone materials of Benito Lopez. Petitioner asserted that vertical dispensing was a known technique in analogous fields and presented no significant technical hurdles that would have dissuaded a POSITA from making the combination.

Ground 2: Obviousness over Benito Lopez, Liu, and Toncelli ‘044 - Claims 12-13 are obvious over Benito Lopez in view of Liu and Toncelli ‘044.

• Prior Art Relied Upon: Benito Lopez (Application # 2015/0360507), Liu (Chinese Application # CN 1718403 A), and Toncelli ‘044 (Application # 2004/0032044).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground builds on the combination in Ground 1, which establishes a method for creating longitudinal veins. Petitioner argued that dependent claims 12 and 13, which recite a "transverse vein," are rendered obvious by the additional teachings of Toncelli ‘044. Toncelli ‘044 discloses a method for creating a "veined" effect in engineered stone by depositing a second, pigmented mineral mix onto the surface of a first mix before vibro-compression. Critically, Toncelli ‘044 teaches that a "comb or rake-like tool" can be used to create irregular grooves and patterns in the surface material, which Petitioner argued would be understood by a POSITA to include the formation of transverse veins.
  • Motivation to Combine: The motivation to add the teachings of Toncelli ‘044 is an extension of the primary motivation to better emulate natural stone. Since natural stone slabs often feature complex patterns with veins running in multiple directions (both longitudinal and transverse), a POSITA seeking to create a superior artificial product would be motivated to supplement the longitudinal vein-forming process of Benito Lopez and Liu with a known method for creating transverse veins. Toncelli ‘044 provides a direct and obvious method for achieving this supplemental effect.

• Additional Grounds: Petitioner asserted additional obviousness challenges based on permutations of the primary references (e.g., Liu in view of Benito Lopez; Liu in view of Benito Lopez and Toncelli ‘044), which relied on the same core logic, evidence, and motivation-to-combine arguments presented in the grounds summarized above.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §314(a) based on the Fintiv factors would be inappropriate. Petitioner asserted that the parallel district court litigation was in its early stages, with no trial date set and significant milestones like Markman briefing not yet completed. It was contended that the IPR is a more efficient and effective forum for resolving the patentability challenges, as the petition challenges all utility patent claims asserted in the litigation.

5. Relief Requested

• Petitioner requests that the Board institute an inter partes review (IPR) and cancel claims 1-4 and 6-35 of Patent 9,993,942 as unpatentable under 35 U.S.C. §103.