PTAB

IPR2022-00620

FRameless Hardware Co LLC v. CR Laurence Co Inc

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Key Events
Petition

1. Case Identification

2. Patent Overview

  • Title: Rail, Stile, Mullion, Door and Wall Jamb Assemblies for Framing Glass Doors and Wall Partitions
  • Brief Description: The ’413 patent relates to rail assemblies for releasably securing glass panels in structures like doors and partitions. The invention describes a system comprising a rail body, a "spring action clamping member," and screws which, when actuated, create a wedging force to clamp the glass panel securely within the rail.

3. Grounds for Unpatentability

Ground 1: Obviousness over Sprague ’905 and Trainor - Claim 8 is obvious over Sprague ’905 in view of Trainor.

  • Prior Art Relied Upon: Sprague ’905 (Patent 6,434,905) and Trainor (Patent 5,069,010).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Sprague ’905, which shares the same inventor as the challenged patent, anticipates all limitations of independent claim 1, from which the challenged claim 8 depends. Sprague ’905 was argued to teach a rail assembly with a housing (rail body) having mutually opposed inclined surfaces, a unitary clamp member that flexes to provide a clamping force (spring action clamping member), and a screw that actuates the member to create a wedging clamp. Petitioner contended that Trainor teaches the sole additional limitation of claim 8: a rail body surrounded by "decorative cladding." Trainor discloses longitudinally extending side cladding members that extend over the rail's exterior surfaces to provide a "clean, finished appearance."
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine the functional clamping mechanism of Sprague ’905 with the aesthetic cladding of Trainor for the predictable purpose of enhancing the appearance of the assembly. Petitioner argued this was a simple and common design choice to improve product aesthetics.
    • Expectation of Success: A POSITA would have a high expectation of success, as the combination merely involved applying a known decorative cover, as taught by Trainor, to the exterior of the rail system disclosed in Sprague ’905, a straightforward and predictable modification.

Ground 2: Obviousness over Sprague ’905 and Sprague ’780 - Claim 8 is obvious over Sprague ’905 in view of Sprague ’780.

  • Prior Art Relied Upon: Sprague ’905 (Patent 6,434,905) and Sprague ’780 (Patent 7,302,780).
  • Core Argument for this Ground:
    • Prior Art Mapping: As in Ground 1, Petitioner relied on Sprague ’905 to teach all limitations of base claim 1. To meet the "decorative cladding" limitation of claim 8, Petitioner cited Sprague ’780, another patent from the same inventor. Sprague ’780 explicitly teaches that "conventional cladding, such as brass plates, may be placed over the exposed surfaces of the housing" to provide an attractive finish where the rail assembly might be visible.
    • Motivation to Combine: A POSITA seeking to improve the aesthetics of the functional assembly in Sprague ’905 would be motivated to incorporate the cladding taught in Sprague ’780. Both patents address similar rail systems, and using cladding to decorate such systems was a known technique to enhance their commercial appeal.
    • Expectation of Success: The combination was presented as predictable, involving the straightforward application of an adhesive-backed cladding (per Sprague ’780) to the housing of the Sprague ’905 device, with no technical challenges that would undermine an expectation of success.

Ground 3: Obviousness over Girardy and Trainor - Claim 8 is obvious over Girardy in view of Trainor.

  • Prior Art Relied Upon: Girardy (French Publication No. FR2367178A1) and Trainor (Patent 5,069,010).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Girardy serves as an alternative primary reference that teaches all elements of independent claim 1. Girardy discloses a metal frame for glass doors containing a rail body with inclined side walls, a U-shaped clamping element that fits within it, and screws that move the clamping element upward to create a wedging effect against a glass plate. The "decorative cladding" element of claim 8 was again mapped to the side cladding cover members taught in Trainor for providing a finished appearance.
    • Motivation to Combine: A POSITA would be motivated to combine the functional clamping assembly of Girardy with the aesthetic solution from Trainor for the same reason as in Ground 1: to improve the visual appearance of the hardware, a common design objective in the field of architectural fittings.
    • Expectation of Success: The proposed combination was argued to be a predictable integration of known elements. Applying the decorative covers from Trainor to the rail body of Girardy would have been a simple, straightforward task for a POSITA with a high likelihood of achieving the desired aesthetic improvement.
  • Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations of Girardy with Sprague ’780 and Girardy with Sprague ’905, relying on similar theories for combining a primary clamping mechanism with a secondary reference teaching decorative cladding.

4. Key Claim Construction Positions

  • "decorative cladding" (claim 8): Petitioner proposed this term be construed to mean "a decorative covering." This construction was based on the plain and ordinary meaning of the words, supported by a dictionary definition of "cladding" as "something that covers or overlays." Petitioner argued this construction is consistent with the specification of the ’413 patent, which describes cladding being affixed to a main channel to cover holes and provide a "pleasing esthetic appearance." This relatively broad construction is central to the obviousness arguments, as it encompasses the "cover members" and "brass plates" described in the prior art.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claim 8 of Patent 9,074,413 as unpatentable under 35 U.S.C. §103.