PTAB

IPR2023-01196

Brycer LLC v. Tegris Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Web-Based Registry System for Tracking Asset Compliance
  • Brief Description: The ’966 patent discloses a computer-implemented method and system for using a web-based registry and management software to track the requisite inspection compliance of an owned asset. While the claims recite a fire hydrant as an exemplary asset, the specification states any owned asset may be substituted.

3. Grounds for Unpatentability

Ground 1: Claims 8-16 are obvious over Key in view of Chauhan, Sweeney, and McKinney.

  • Prior Art Relied Upon: Key (Application # 2002/0029222), Chauhan (WO 2004/104891), Sweeney (Application # 2005/0021449), and McKinney (Application # 2004/0230455).
  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that the combination of these complementary references renders all challenged claims obvious. Key, the primary reference, was asserted to disclose the core of the claimed invention: a web-enabled, centralized "jurisdiction online management system" for tracking required inspections of various assets (e.g., boilers, elevators). Key’s system allegedly provides remote, password-protected access for different user classes—including asset owners, inspectors, and approval authorities ("controlling jurisdiction")—to a database with real-time data. It further discloses analyzing database records to schedule upcoming inspections, sending notifications to users, and providing inspection templates.

    • Petitioner contended that the secondary references supply the remaining claim limitations, which were well-known functionalities in the art. Chauhan was argued to teach applying such a management system specifically to "fire hydrant inspections," making it obvious to adapt Key’s general system to this specific, interchangeable asset type. Sweeney allegedly discloses features for online management of construction assets, including receiving bids from contractors, presenting a compilation of bids to the asset owner for selection, and generating reports that include details like repair costs and scheduling information. This was mapped to claim limitations regarding receiving bids for inspection and notifying the owner of associated costs. McKinney was argued to teach a compliance verification system where homeowners can select service providers of their choice from a list of qualified personnel, including those in a particular geographic area to improve efficiency. This was mapped to the limitations requiring owner selection of an inspector based on attributes including proximity to the asset.

    • For dependent claims, Petitioner argued that features like updating a deadline date after an inspection (claim 9), receiving bids (claim 10), scheduling based on availability (claim 11), including photographs in reports (claim 12), setting a remedy deadline (claim 13), receiving bids for repairs (claim 14), scheduling repairs (claim 15), and compiling a compliance report (claim 16) are all disclosed or rendered obvious by the combined teachings of Key and Sweeney, representing predictable and logical additions to Key's base system.

    • Motivation to Combine: Petitioner asserted a person of ordinary skill in the art (POSITA) would combine these references to improve the functionality of Key's base system. The references are all within the same field of online asset management and compliance. A POSITA would have been motivated to apply Key's efficient, web-based system to fire hydrants, as taught by Chauhan, to address the known need for managing such safety equipment. Furthermore, a POSITA would incorporate the bidding, cost-reporting, and scheduling features of Sweeney and the owner-selection and proximity-based logic of McKinney to create a more comprehensive, user-friendly, and commercially desirable inspection management platform. The combination represents the predictable integration of known solutions to solve known problems in the field.

    • Expectation of Success: Petitioner argued a POSITA would have had a reasonable expectation of success in combining the references. The proposed combination involves the application of conventional computer, database, and web technologies to automate well-established business practices for asset inspection and compliance tracking. The integration of these known elements would have yielded predictable results.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under 35 U.S.C. §314(a) is unwarranted based on an analysis of the Fintiv factors. The parallel district court case was described as being in its infancy, with no trial date set, no discovery conducted, and no substantive court investment. Petitioner noted the median time-to-trial in the district is 53.5 months, making it highly unlikely a trial would occur before a Final Written Decision (FWD). Petitioner also stipulated that if the IPR is instituted, it will not pursue the same invalidity grounds in district court, mitigating concerns of overlap and inefficiency.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 8-16 of the ’966 patent as unpatentable under 35 U.S.C. §103.